(63) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, 7, 10, 11, and 41
[Docket No.: PTO-C-2005-0013]
RIN 0651-AB55
Changes to Representation of Others Before the
United States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
adopting new rules governing the conduct of disciplinary
investigations, issuing warnings when closing such investigations,
disciplinary proceedings, non-disciplinary transfer to disability
inactive status and reinstatement to practice before the Office. The
Office is adopting a new rule regarding recognition to practice before
the Office in trademark cases. The Office also is adopting a new rule
to address a practitioner's signature and certificate for
correspondence filed in the Office. These changes will enable the
Office to better protect the public from practitioners who do not
comply with the Office's ethics rules and from incapacitated
practitioners.
DATES: Effective Date: September 15, 2008.
FOR FURTHER INFORMATION CONTACT: Harry I. Moatz ((571) 272-6069),
Director of Enrollment and Discipline (OED Director), directly by
phone, by facsimile to (571) 273-6069 marked to the attention of Mr.
Moatz, or by mail addressed to: Mail Stop OED-Ethics Rules, U.S. Patent
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
SUPPLEMENTARY INFORMATION: Congress granted express authority to the
Office to "establish regulations, not inconsistent with law, which * * *
may govern the recognition and conduct of agents, attorneys, or other
persons representing applicants or other parties before the Office."
35 U.S.C. 2(b)(2)(D). Congress also provided that the "Director may,
after notice and opportunity for a hearing, suspend or exclude, either
generally or in any particular case, from further practice before the
Patent and Trademark Office, * * * any * * * agent, or attorney shown
to be incompetent or disreputable, or guilty of gross misconduct, or
who does not comply with the regulations established under section
2(b)(2)(D) of this title, or who shall, by word, circular, letter, or
advertising, with intent to defraud in any manner, deceive, mislead, or
threaten any applicant or prospective applicant, or other person having
immediate or prospective business before the Office. The reasons for
any such suspension or exclusion shall be duly recorded." 35 U.S.C.
32. In so doing, Congress vested express and implied authority with the
Office to prescribe rules of procedure that are applicable to
practitioners recognized to practice before the Office.
On December 12, 2003, the Office published Changes to
Representation of Others Before the United States Patent and Trademark
Office, a Notice of Proposed Rule Making in the Federal Register (68 FR
69441), 1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) proposing to amend
parts 1 and 2 of the rules and procedures governing patent and
trademark prosecution (Title 37 of the Code of Federal Regulations),
reserving part 10 and introducing part 11. Included in the proposed
rules for part 11 were rules governing the conduct of investigations,
disciplinary proceedings, issuing warnings, disciplinary proceedings,
reinstatement, recognition to practice before the Office in trademark
cases, and a practitioner's signature and certificate for
correspondence filed in the Office - principally rules 11.2, 11.3, 11.5,
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and 11.14 through 11.61. One hundred sixty-three written comments were
received. After reviewing the written comments, the Office decided to
revise a number of the rules published in the December 12, 2003 Notice.
The Office published Changes to Representation of Others Before the
United States Patent and Trademark Office, a Supplemental Notice of
Proposed Rule Making (SNPR), on February 28, 2007, in the Federal
Register (72 FR 9196), 1316 Off. Gaz. Pat. Office 123 (Mar. 27, 2007)
regarding rules 11.1, 11.2, 11.3, 11.5, and 11.14 through 11.61 and
requested additional comments on those revised proposed rules. The
Office received fifteen comments from professional and intellectual
property organizations, law firms, individual practitioners and members
of the public. Many of the revised proposed rules were similar to the
approach of the current regulations. Other revised proposed rules were
intended to introduce new disciplinary procedures for practitioners who
have been suspended or disbarred in other disciplinary jurisdictions
for ethical or professional misconduct, practitioners convicted of
serious crimes, and practitioners having disability issues.
The December 12, 2003 Notice also proposed changes to the ethics
rules governing the conduct of recognized patent practitioners and
others practicing before the Office as well as rules governing
enrollment of recognized practitioners. Following receipt and
consideration of the comments, provisions included in the December 12,
2003 Notice regarding enrollment were adopted in final rules on July
26, 2004. See Changes to Representation of Others Before the United
States Patent and Trademark Office, Final Rule, published in the
Federal Register, 69 FR 35428 (June 24, 2004), 1288 Off. Gaz. Pat.
Office 109 (November 16, 2004). Comments on proposed changes to the
substantive ethics rules remain under consideration by the Office, and
it is expected that the ethics rules will be the subject of a later,
separate notice.
In addition, several rules proposed in the December 12, 2003 Notice
are directly or indirectly dependent on the development of electronic
systems to implement rules governing annual fees, § 11.8, and
continuing legal education, §§ 11.12 and 11.13. For example,
proposed §§ 11.8(d), 11.12 and 11.13 are directly dependent on
development of the systems, whereas proposed § 11.11(b) through
11.11(f) are indirectly dependent on the development. Further
consideration of rules dependent on implementing electronic systems
awaits completion of the development and implementation of the systems.
Accordingly, the rules below do not refer to §§ 11.8(d),
11.11(b) through 11.11(f), 11.12 and 11.13.
The primary purposes for adopting procedures for disciplining
practitioners who fail to conform to adopted standards and non-
disciplinary procedures for transferring practitioners to disability
inactive status include affording practitioners due process, protecting
the public, preserving the integrity of the Office, and maintaining
high professional standards.
These final rules will be applied only prospectively, not
retroactively. In implementing the foregoing, with respect to
investigations, the rules will be applied to the future actions in
pending investigations and in investigations commencing on or after the
effective date of the final rules. With respect to disciplinary
proceedings that have already been commenced by filing a complaint
under 37 CFR 10.134 before the effective date of the final rules, the
final rules will not apply. Instead, these disciplinary proceedings
will continue under the rules in effect on the date the complaint under
§ 10.134 was filed. With regard to disciplinary proceedings commenced after
the effective date of the rules, the final rules will apply. With regard to
§ 11.5, the final rule will be applied only prospectively to assignments
and licenses written on or after the effective date of the final rules.
Discussion of Specific Rules
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Title 37 of the Code of Federal Regulations, Parts 1, 2, 7, 11 and
41, are revised by amending §§ 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 2.18, 2.19,
2.24, 2.33, 2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 7.25,
7.37, 11.1, 11.2, 11.3, 11.5 and 41.5, and adding §§ 11.14 through 11.99 as
follows:
Sections 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 2.18, 2.19, 2.24, 2.33,
2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 7.25, 7.37:
Sections 1.4(d)(3), 1.4(d)(4)(i), 1.4(d)(4)(ii)(C), 1.8(a)(2)(iii)(A),
1.9(j), 2.2(c), 2.11, 2.17(a)-(c), 2.18(a), 2.19(b), 2.24, 2.33(a)(3),
2.101(b), 2.102(a), 2.105(b)(1) and (c)(1), 2.111(b), 2.113 (b)(1),
2.119(d), 2.161(b)(3), 2.193(c)(2), 7.25(a) and 7.37(b)(3) are revised
to change or add an appropriate cross-reference to Part 11 or change a
cross-reference to an appropriate section in Part 11.
Section 11.1: The definitions of "disqualified," "Federal agency,"
"Federal program" and "Serious Crime" are added to the definitions, and
the definitions of "attorney or lawyer" and "State" are revised.
"Disqualified," which appears in § 11.24, would mean any action that
prohibits a practitioner from participating in or appearing before the
program or agency, regardless of how long the prohibition lasts or the
specific terminology used. "Federal program" is defined as meaning any
program established by an Act of Congress or administered by a Federal
agency and "Federal agency" is defined as meaning any authority of the
executive branch of the Government of the United States.
The definition of "attorney or lawyer" is revised to correct an
error. The Office published a final rule in the Federal Register of
June 24, 2004 (69 FR 34428) entitled "Changes to Representation of
Others Before the United States Patent and Trademark Office." In that
final rule, there was an inadvertent omission of the word "not"
preceding the term "under" in the first sentence of the definition of
"attorney or lawyer" in § 11.1. An attorney or lawyer in good
standing with the highest court of a State should not also be "under
an order of any court or Federal agency suspending, enjoining,
restraining, disbarring or otherwise restricting the attorney from
practice before the bar of another State or Federal agency." The
definition is corrected by inserting "not" before "under" in the
first sentence.
The definition of state is revised to clarify that state includes
Commonwealths and territories of the United States, as well as the
fifty states and the District of Columbia. Thus, the "court of * * *
any State" in § 11.25(a) would include any courts of the fifty
states, the District of Columbia, and Commonwealths and territories of
the United States.
Section 11.2: Section 11.2 provides for the appointment and duties
of the Director of Enrollment and Discipline (OED Director), as well as
petitions for review of decisions of the OED Director. Section 11.2(a)
is revised to delete provisions for appointment of an OED Director in
the event the OED Director is absent or recuses himself or herself from
a case, as provision for these circumstances by rule is believed to be
unnecessary.
Section 11.2(b)(4) is revised to provide for conducting
investigations of matters involving possible grounds for discipline of
practitioners. Except in matters meriting summary dismissal, the OED
Director will afford an accused practitioner an opportunity to respond
to a reasonable inquiry before a disposition is recommended or
undertaken. Section 11.2(b)(5) is added to include among the OED
Director's duties the initiation of a disciplinary proceeding and
performance of such other duties in connection with investigations and
disciplinary proceedings as may be necessary, provided the consent of a
panel of three members of the Committee on Discipline is first obtained
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when required. Section 11.2(b)(6) is added to provide among the OED
Director's duties oversight of the preliminary screening of information
and closing investigations as provided for in § 11.22.
The titles of §§ 11.2(c) and 11.2(d) are revised to limit
the petition provisions of these subsections to matters "regarding
enrollment or recognition." Section 11.2(c) is revised to provide that
a petition to the OED Director be accompanied by payment of the fee set
forth in § 1.21(a)(5)(i). A sentence in § 11.2(d) proposed in
December 2003 providing that "[a] decision dismissing a complaint or
closing an investigation is not subject to review by petition" has
been deleted from § 11.2(d).
Section 11.2(d) also is revised to provide that a petition under
this section must be accompanied by the fee set forth in § 1.21(a)(5)(ii),
that a petition not filed within thirty days may be dismissed as untimely,
that briefs and supporting memoranda must accompany the petition, and that
an oral hearing will not be granted except when considered necessary by the
USPTO Director.
Section 11.2(e) is added to provide for filing a petition to invoke
supervisory authority of the USPTO Director in disciplinary matters in
appropriate circumstances. For example, a person dissatisfied with a
decision dismissing a grievance or closing an investigation may
petition the USPTO Director to exercise supervisory authority over the
OED Director. The procedure in subsection (e) is comparable to the
supervisory review procedure in § 1.181 and assures supervisory
review when appropriate. No fee is required for a petition to invoke
the supervisory authority of the USPTO Director in disciplinary matters.
A petition under § 11.2(e) must contain a statement of the
facts involved and the point or points to be reviewed and the action
requested. Briefs or memoranda in support of the petition must
accompany the petition. Where facts are to be proven, the proof in the
form of affidavits or declarations (and exhibits, if any) must
accompany the petition. The OED Director may be directed by the USPTO
Director to file a reply to the petition, supplying a copy to the
petitioner. An oral hearing will not be granted except when considered
necessary by the USPTO Director. The filing of a petition will not stay
an investigation, disciplinary proceeding or other proceedings. The
petition may be dismissed as untimely if it is not filed within thirty
days of the mailing date of the action or notice from which relief is
requested. Any request for reconsideration of the decision of the USPTO
Director may be dismissed as untimely if not filed within thirty days
after the date of said decision.
Section 11.3: Section 11.3(a), which provides for suspension of
rules, in essence, continues the provisions of former § 10.170 that
could be applied to regulations addressing procedures. For example, the
provisions of this section may be invoked by an applicant for § 11.7 for
completing an application for registration where events beyond
applicant's control, such as a flood or fire, prevented applicant from
supplying information to complete an application. The inclusion of
§ 11.3(a) should not be construed as an indication that there could
ever be any extraordinary situation when justice requires waiver of a
disciplinary rule.
Section 11.3(b) is added to provide that no petition under this
section may stay a disciplinary proceeding unless ordered by the USPTO
Director or a hearing officer.
Section 11.5: The sole paragraph of § 11.5 is renumbered as
§ 11.5(a). Section 11.5(a) substantially continues the provisions
of § 11.5, except that "applications" has been changed to "matters" at
the end of the first sentence.
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Subsection 11.5(b) is added to define practice before the Office as
including a law-related service that comprehends any matter connected
with the presentation to the Office or any of its officers or employees
relating to a client's rights, privileges, duties, or responsibilities
under the laws or regulations administered by the Office for the grant
of a patent or registration of a trademark, or for enrollment or
disciplinary matters. The section provides that nothing in § 11.5
prohibits a practitioner from employing or retaining non-practitioner
assistants under the supervision of the practitioner to assist the
practitioner in matters pending or contemplated to be presented before
the Office.
Section 11.5(b)(1) provides a definition of practice before the
Office in patent matters, which includes preparing and prosecuting any
patent application, consulting with or giving advice to a client in
contemplation of filing a patent application or other document with the
Office, drafting the specification or claims of a patent application;
drafting an amendment or reply to a communication from the Office that
may require written argument to establish the patentability of a
claimed invention; and drafting a communication for a public use,
interference, reexamination proceeding, petition, appeal to the Board
of Patent Appeals and Interferences, or other proceeding. This section
also provides that registration to practice before the Office in patent
cases sanctions the performance of those services which are reasonably
necessary and incident to the preparation and prosecution of patent
applications or other proceeding before the Office involving a patent
application or patent in which the practitioner is authorized to
participate. The services are identified as including consideration of
the advisability of relying upon alternative forms of protection which
may be available under state law, and drafting an assignment or causing
an assignment to be executed in contemplation of filing or prosecution
of a patent application if the practitioner is filing or prosecuting
the patent application, and assignment does no more than replicate the
terms of a previously existing oral or written obligation of assignment
from one person or party to another person or party.
Section 11.5(b)(2) provides a definition of practice before the
Office in trademark matters which includes consulting with or giving
advice to a client in contemplation of filing a trademark application
or other document with the Office; preparing and prosecuting an
application for trademark registration; preparing an amendment or
response which may require written argument to establish the
registrability of the mark; and conducting an opposition, cancellation,
or concurrent use proceeding; or conducting an appeal to the Trademark
Trial and Appeal Board.
The provision in proposed rule 11.5(b)(3) regarding a
practitioner's conduct occurring in a non-practitioner capacity has
been withdrawn as being unnecessary. The provisions of revised proposed
§ 11.19 would cover misconduct occurring in a non-lawyer or non-
agent capacity. Section 11.19 identifies several grounds for
discipline, including, but not limited to, conduct that violates a
mandatory disciplinary rule of the USPTO Code of Professional
Responsibility and a conviction of a serious crime.
Section 11.14: Section 11.14 is added to set forth who may practice
before the Office in trademark and other non-patent cases. Section
11.14(a), in essence, continues present practice under § 10.14(a) except
as noted in the following discussion. The last sentence of § 11.14(a) adds
a provision that registration as a patent practitioner does not entitle an
individual to practice before the Office in trademark matters. An attorney
who is no longer a member in good standing of the bar of the highest court
of one state and not admitted to the bar in another state is not entitled
to practice before the Office in trademark matters on the basis of the
attorney's registration as a patent practitioner.
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Thus, a practitioner registered with the Office as a patent
attorney, but suspended or disbarred in the only state where the
practitioner had been admitted to practice law, may not rely on the
registration to continue to practice before the Office in trademark
matters. Similarly, a practitioner registered as a patent attorney, but
suspended or disbarred in the only state where the practitioner had
been admitted to practice law, may not revert to registration as a
patent agent prior to January 1, 1957, to continue to practice before
the Office in trademark cases.
Section 11.14(b) continues the present practice under § 10.14(b).
A second sentence has been added to § 11.14(b) to assure clarity under the
present practice that, but for the one exception in the first sentence of
this section, registration as a patent agent does not itself entitle an
individual to practice before the Office in trademark matters.
Section 11.14(c) is added to continue the present practice under
§ 10.14(c), except as further clarified by the following
provisions. The first sentence of § 11.14(c) is revised to provide
that a foreign attorney or agent not a resident of the United States
who seeks reciprocal recognition must file a written application for
reciprocal recognition under paragraph (f) of § 11.14 and prove to
the satisfaction of the OED Director that he or she is possessed of
good moral character and reputation.
Sections 11.14(d) and (e) continue the present practices under
former sections 10.14(d) and (e), except as noted in the following
discussion. In § 11.14(e), "on behalf of a client" has been added
to the end of the first sentence to make it clear that no individual is
permitted to represent others before the Office in trademark matters
other than those specified in paragraphs (a), (b), and (c) of this
section.
Section 11.14(f) is added to expressly provide for filing an
application for reciprocal recognition under § 11.14(c). This
section codifies the practice of requiring an individual seeking
reciprocal recognition under § 11.14(c) to apply in writing to the
OED Director for reciprocal recognition and pay the fee specified in
§ 1.21(a)(1)(i).
Section 11.15: Section 11.15 is added to provide for refusal to
recognize a practitioner. This section continues the present practice
under former § 10.15. The second sentence makes clear that a
practitioner who is suspended or excluded is not entitled to practice
before the Office in patent, trademark, or other non-patent matters
while suspended or excluded.
Sections 11.16-11.17: Sections 11.16-11.17 are reserved.
Section 11.18: Section 11.18(a) is added to continue the present
practice under former § 10.18(a), and extend the practice to all
documents filed with a hearing officer in a disciplinary proceeding.
But for specified exceptions, every document filed with the Office or a
hearing officer in a disciplinary proceeding must bear a signature,
personally signed by such practitioner, in compliance with § 1.4(d)(1).
Section 11.18(b)(1) is added to continue the present practice of
providing that a party presenting a paper certifies to the truthfulness
of the content of his or her submissions to the Office. The term "party"
is not limited to practitioners, and includes applicants. The provisions
of § 11.18(b)(1) continue the present practice under § 10.18(b)(1), except
for extending the practice to submissions to a hearing officer in a
disciplinary proceeding. Inasmuch as the hearing officer may be employed by
another Federal agency, extension of the provisions of this section to
submission to the hearing officer is believed to be appropriate. The
provisions of § 11.18(b)(1) continue the present practice under
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§ 10.18(b)(1) except as follows. Section 11.18(b)(1) is clarified to
prohibit "willfully and knowingly" making false, fictitious or fraudulent
statements or representations or "willfully and knowingly" making or
using a false writing or document knowing the same to contain any
false, fictitious, or fraudulent statement or entry. This section
repeats an obligation all parties submitting papers to the Office
otherwise have under 18 U.S.C. 1001. This section applies the statutory
standard of conduct applicable to the submission of material facts in
courts to proceedings in the Office and to disciplinary proceedings.
Section 11.18(b)(1) also provides that whoever violates the
provisions of § 11.18(b)(1) is subject to penalties in criminal
statutes in addition to those under 18 U.S.C. 1001. Inasmuch as an
offending paper may have little or no probative value, § 11.18(b)(1)
provides that violation of the rule may jeopardize the probative value
of the paper.
Unlike § 10.18(b)(1), § 11.18(b)(1) does not provide that
violations of paragraph (b)(1) may jeopardize the validity of the
application or document inasmuch as the conditions for valid
application are set by statute. Similarly, unlike § 10.18(b)(1),
§ 11.18(b)(1) does not provide that violations of paragraph (b)(1)
may jeopardize the validity or enforceability of any patent, trademark
registration, or certificate resulting therefrom. It is unnecessary
that the regulation remind parties of any civil jeopardy to which they
are subject for a violation of paragraph (b)(1).
Section 11.18(b)(2) is added to provide that a party submitting a
paper certifies to the best of the party's knowledge, information and
belief, formed after an inquiry reasonable under the circumstances,
that the paper is not being presented for any improper purpose, that
other legal contentions therein are warranted by existing law or by a
nonfrivolous argument for the establishment of new law, that
allegations and factual contentions have evidentiary support, and that
denials of factual contentions are warranted on the evidence or are
reasonably based on a lack of information or belief. Section
11.18(b)(2) continues the current practice under former § 10.18(b)(2)
except for substitution of "any proceeding" for prosecution in subsection
11.18(b)(2)(i).
Section 11.18(c) is added to provide a non-exhaustive list of
sanctions or actions the USPTO Director may take, after notice and
reasonable opportunity to respond, for a violation of paragraph
(b)(2)(i) through (b)(2)(iv) of § 11.18. Section 11.18(c) continues
some of the sanctions under former § 10.18(c), including precluding
a party or practitioner from submitting a paper, or presenting or
contesting an issue; requiring a terminal disclaimer; or terminating
the proceedings in the Office. Section 11.18(c) adds specific sanctions
and actions, for example, striking the offending paper, referring a
practitioner's conduct to the Director of Enrollment and Discipline for
appropriate action; affecting the weight given to the offending paper;
and terminating the proceedings in the Office.
These sanctions in § 11.18(c) conform to those discussed in
conjunction with the 1993 Amendment to Rule 11 of the Federal Rules of
Civil Procedure. The commentary to the 1993 Amendment indicated that a
court "has available a variety of possible sanctions to impose for
violations, such as striking the offending paper; * * * referring the
matter to disciplinary authorities." Like Rule 11 of the Fed. R. Civ.
P., the provisions in § 11.18 do not attempt to exhaustively
enumerate the factors that should be considered or the appropriate
sanctions. The Office anticipates that in taking action under § 11.18
in applying sanctions, it would use the proper considerations utilized in
issuing sanctions or taking action under Rule 11. Consideration may be
given, for example, to whether the improper conduct was willful or
negligent; whether it was part of a pattern of activity, or an isolated
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event; whether it infected an entire application, or only one particular
paper; whether the person has engaged in similar conduct in other matters;
whether the conduct was intended to injure; what effect the conduct had on
the administrative process in time and expense; whether the responsible
person is trained in law; what is needed to deter that person from
repetition in the same case; and what is needed to deter similar conduct by
others. All of these in a particular case may be proper considerations.
See, 28 U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm. Notes, 1993 Amendments,
Subdivisions (b) and (c).
Section 11.18(d) is added to continue the present practice under
former § 10.18(d) of providing notice that any practitioner violating
the provisions of § 11.18 may also be subject to disciplinary action.
Section 11.19: Section 11.19 is added to set forth the disciplinary
jurisdiction of the Office. Section 11.19(a) sets forth a list of
practitioners who are subject to the disciplinary jurisdiction of the
Office. These include practitioners administratively suspended, all
practitioners engaged in practice before the Office; practitioners
registered to practice before the Office in patent cases; inactivated
practitioners, practitioners authorized to take testimony; and
practitioners who have been transferred to disability inactive status,
reprimanded, suspended, or excluded from the practice of law. Inasmuch
as these rules are being adopted before the adoption of § 11.11(b)
regarding administrative suspension and § 11.11(c) regarding
administrative suspension, in connection with continuing education and
annual fees, § 11.19(a) does not reference those actions. Instead,
§ 11.19(a) references practitioners inactivated under § 10.11.
Also practitioners who have resigned are subject to such jurisdiction
with respect to conduct undertaken prior to the resignation and conduct
in regard to any practice before the Office following the resignation.
Section 11.19(b) is added to set forth the grounds for discipline
and grounds for transfer to disability inactive status. The grounds for
discipline include conviction of a serious crime, § 11.19(b)(1);
discipline on ethical grounds imposed in another jurisdiction or
disciplinary disqualification from participating in or appearing before
any Federal program or agency, § 11.19(b)(2); and failure to comply
with any order of a Court disciplining a practitioner, § 11.19(b)(3);
or any final decision of the USPTO Director in a disciplinary matter;
violation of the mandatory Disciplinary Rules identified in sections
10.20(b), § 11.19(b)(4); or violation of the oath or declaration taken by
the practitioner, § 11.19(b)(5).
Section 11.19(b)(2) is added to set forth grounds for transfer to
disability inactive status. The grounds include being transferred to
disability inactive status in another jurisdiction; being judicially
declared incompetent, being judicially ordered to be involuntarily
committed after a hearing on the grounds of insanity, incompetency or
disability, or being placed by court order under guardianship or
conservatorship; or filing a motion requesting a disciplinary proceeding
be held in abeyance because the practitioner is suffering from a disability
or addiction that makes it impossible for the practitioner to adequately
defend the charges in the disciplinary proceeding.
Section 11.19(c) is added to set forth the manner for handling
petitions to disqualify a practitioner. This section continues the
present practice under former § 10.130(b).
Section 11.19(d) is added to provide for the OED Director to refer
the existence of circumstances suggesting unauthorized practice of law
to the authorities in the appropriate jurisdiction(s).
Section 11.20: Section 11.20 is added to set forth the disciplinary
sanctions the USPTO Director may impose on a practitioner after notice
and opportunity for a hearing, as well as to set forth transfer to
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disability inactive status. Section 11.20(a)(2) provides for exclusion
from practice before the Office. Suspension may be imposed for a period
that is appropriate under the facts and circumstances of the case.
Section 11.20(a)(3) provides for reprimand, including both public and
private reprimand.
Section 11.20(a)(4) provides for probation in lieu of or in
addition to any other disciplinary sanction. The order imposing
probation sets forth in writing the conditions of probation as well as
whether, and to what extent, the practitioner is required to notify
clients of the probation. The order also establishes procedures for the
supervision of probation. Violation of any condition of probation is
cause for the probation to be revoked, and the disciplinary sanction to
be imposed for the remainder of the probation period. Revocation of
probation occurs after an order to show cause why probation should not
be revoked is resolved adversely to the practitioner.
Section 11.20(b) is added to provide that the USPTO Director may
require a practitioner to make restitution either to persons
financially injured by the practitioner's conduct or to an appropriate
client's security trust fund, or both, as a condition of probation or
of reinstatement. The restitution is limited to the return of unearned
practitioner fees or misappropriated client funds. The rule does not
contemplate restitution for the value of an invention or patent.
Section 11.20(c) is added to set forth transfer to disability
inactive status. This section provides that the USPTO Director may,
after notice and opportunity for a hearing, and where grounds exist to
believe a practitioner has been transferred to disability inactive
status in another jurisdiction, or has been judicially declared
incompetent; judicially ordered to be involuntarily committed after a
hearing on the grounds of incompetency or disability, or placed by
court order under guardianship or conservatorship, transfer the
practitioner to disability inactive status.
Section 11.21: Section 11.21 is added to codify the practice of
issuing warnings. This section provides that a warning is not a
disciplinary sanction. This section also provides that the "OED
Director may conclude an investigation with the issuance of a
warning," which "shall contain a brief statement of facts and
imperative USPTO Rules of Professional Conduct relevant to the facts."
Inasmuch as a warning is not a disciplinary sanction, a warning would
not be made public.
Section 11.22: Section 11.22 is added to set forth provisions
regarding the conduct of investigations of possible grounds for
discipline. Section 11.22(a) authorizes the OED Director to investigate
possible grounds for discipline. This section provides that an
investigation may be initiated when the OED Director receives a
grievance, information or evidence from any source suggesting possible
grounds for discipline. The section further provides that neither
unwillingness nor neglect by a grievant to prosecute a charge, nor
settlement, compromise, or restitution with the grievant, shall in
itself justify abatement of an investigation.
Section 11.22(b) provides for reporting information or evidence
concerning possible grounds for discipline to the OED Director. Any
person possessing information or evidence concerning possible grounds
for discipline of a practitioner may report the information or evidence
to the OED Director, who may request that the report be presented in
the form of an affidavit or declaration.
Section 11.22(c) provides that information or evidence coming from
any source that presents or alleges facts suggesting possible grounds
for discipline of a practitioner will be deemed a grievance.
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Section 11.22(d) provides for preliminary screening of information
or evidence. This section provides that the "OED Director shall
examine all information or evidence concerning possible grounds for
discipline of a practitioner."
Section 11.22(e) provides for notifying a practitioner of an
investigation. The section provides that the "OED Director shall
notify the practitioner in writing of the initiation of an
investigation into whether a practitioner has engaged in conduct
constituting possible grounds for discipline."
Section 11.22(f) provides for the OED Director requesting
information and evidence in the course of an investigation. Subsection
11.22(f)(1) provides that in the course of conducting an investigation,
the OED Director may request information or evidence regarding possible
grounds for discipline of a practitioner from the grievant, the
practitioner, or any person who may reasonably be expected to provide
information and evidence needed in connection with the grievance or
investigation.
Subsection 11.22(f)(2) provides that the OED Director may request
information and evidence regarding possible grounds for discipline of a
practitioner from a non-grieving client either after obtaining the
consent of the practitioner or upon a finding by a Contact Member of
the Committee on Discipline, appointed in accordance with § 11.23(d),
that good cause exists to believe that the possible ground for discipline
alleged has occurred with respect to non-grieving clients. This section
further provides that "[n]either a request for, nor disclosure of, such
information shall constitute a violation of any of the Mandatory
Disciplinary Rules identified in § 10.20(b) of Part 10 of this Subsection."
Section 11.22(g) provides where the OED Director makes a request
under paragraph (f)(2) of this section to the Contact Member of the
Committee on Discipline, the Contact Member will not, with respect to
the practitioner connected to the OED Director's request, participate
in the Committee on Discipline panel that renders a probable cause
decision.
Section 11.22(h) sets forth the actions the OED Director may take
upon the conclusion of an investigation. The OED Director may close an
investigation without issuing a warning or taking disciplinary action,
issue a warning to the practitioner, institute formal charges upon
approval of the Committee on Discipline, or enter into a settlement
agreement with the practitioner and submit the same for approval to the
USPTO Director.
Section 11.22(i) provides for closing investigation without issuing
a warning or taking disciplinary action. There are four circumstances
under this section when the OED Director must terminate an
investigation and decline to refer a matter to the Committee on
Discipline. Under § 11.22(i)(1), the OED Director closes an
investigation without issuing a warning or disciplinary action upon
determining that either the information or evidence is unfounded. Under
§ 11.22(i)(2), the OED Director closes the investigation without
issuing a warning or taking disciplinary action when it is determined
that the information or evidence relates to matters not within the
jurisdiction of the Office. Under § 11.22(i)(3), the OED Director
closes the investigation without issuing a warning or taking
disciplinary action upon determining that as a matter of law, the
conduct about which information or evidence has been obtained does not
constitute grounds for discipline, even if the conduct may involve a
legal dispute. Under § 11.22(i)(2)(4), the OED Director closes the
investigation without issuing a warning or taking disciplinary action
when the available evidence is insufficient to conclude that there is
probable cause to believe that grounds exist for discipline.
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Section 11.23: Section 11.23 is added to provide for a Committee on
Discipline. Section 11.23(a) provides for the Committee to be appointed
by the USPTO Director. The Committee on Discipline consists of at least
three employees of the Office, and none of the Committee members are
permitted to report directly or indirectly to the OED Director or any
employee designated by the USPTO Director to decide disciplinary
matters. This section further provides that each Committee member must
be a member in good standing of the bar of the highest court of a
State. The Committee members select a Chairperson from among themselves.
Three Committee members constitute a panel of the Committee.
Section 11.23(b) sets forth the powers and duties of the Committee
on Discipline. The Committee is empowered and has the duty to meet in
panels at the request of the OED Director and, after reviewing evidence
presented by the OED Director, by majority vote of the panel, determine
whether there is probable cause to bring charges under § 11.32
against a practitioner; and to prepare and forward its own probable
cause findings and recommendations to the OED Director.
Section 11.23(c) provides that no discovery is authorized of, and
no member of the Committee may be required to testify about
deliberations of, the Committee or of any panel.
Section 11.24: Section 11.24 is added to provide procedures for
reciprocal discipline of a practitioner. Section 11.24(a) provides that
a practitioner who is subject to the disciplinary jurisdiction of the
Office and has been publicly censured, publicly reprimanded, subjected
to probation, disbarred or suspended in another jurisdiction, or has
been disciplinarily disqualified from participating in or appearing
before any Federal program or agency shall notify the OED Director in
writing of the same. This section also provides that a practitioner is
deemed to be disbarred if he or she is disbarred, excluded on consent,
or has resigned in lieu of a disciplinary proceeding.
Section 11.24(a) further provides for the OED Director, upon
receiving notification that a practitioner subject to the disciplinary
jurisdiction of the Office has been disciplined, to obtain a certified
copy of the record or order regarding the public censure, public
reprimand, probation, disbarment, suspension or disciplinary
disqualification and file the same with the USPTO Director. The
information received by the OED Director may come from any source, and
therefore, the actions by OED Director are independent of whether the
practitioner has self-reported. Without Committee on Discipline
authorization, the OED Director can file a complaint complying with
§ 11.34 with the USPTO Director against the practitioner predicated
upon the public censure, public reprimand, probation, disbarment,
suspension or disciplinary disqualification, and request the USPTO
Director to issue a notice and order as set forth in § 11.24(b).
Under § 11.24(a) regarding a practitioner who has been
disqualified from participating in or appearing before any Federal
program or agency, the program or agency need not use the term
"disqualified" to describe the action. For example, an agency may use
analogous terms, such as "suspend," "decertify," "exclude,"
"expel," or "debar" to describe the practitioner's disqualification
from participating in the program or the agency.
Section 11.24(b) provides a procedure for initiating a reciprocal
disciplinary proceeding. Under this section, the USPTO Director, upon
receipt of a certified copy of the record or order regarding the
practitioner, issues a notice directed to the practitioner in
accordance with § 11.35 and to the OED Director. The notice
includes (1) a copy of the record or order regarding the public
censure, public reprimand, probation, disbarment, suspension, or
disciplinary disqualification; (2) a copy of the complaint; and (3) an
order directing the practitioner to file a response with the USPTO
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Director and the OED Director, within forty days of the date of the
notice, establishing a genuine issue of material fact predicated upon
the grounds set forth in §§ 11.24(d)(1)(i) through (d)(1)(iv)
that the imposition of the identical public censure, public reprimand,
probation, disbarment, suspension or disciplinary disqualification
would be unwarranted and the reasons for the claim. In conformity with
the changes to § 11.24(a), "disciplined" has been changed to
"censured, publicly reprimanded, subjected to probation, disbarred,
suspended" in the first sentence of this section; "public censure,
public reprimand, probation," has been added to § 11.24(b)(1); and
"publicly censured, publicly reprimanded, placed on probation," has
been added to § 11.24(b)(3)(i).
Section 11.24(c) sets forth the effect of a stay in another
jurisdiction on a reciprocal disciplinary proceeding occurring in the
Office. Under this section, if the discipline imposed by another
jurisdiction, probation or disciplinary disqualification imposed in the
Federal program or agency has been stayed, any reciprocal discipline
imposed by the USPTO may be deferred until the stay expires. In
conformity with the changes to § 11.24(a), "discipline" has been
changed to "censure, public reprimand, probation, disbarment,
suspension or disciplinary disqualification" in § 11.24(c).
Section 11.24(d) provides for a hearing and imposition of
discipline. Under this section the USPTO Director hears the matter on
the documentary record and imposes the identical discipline unless the
USPTO Director determines that there is a genuine issue of material
fact of the nature set forth in §§ 11.24(d)(1)(i) through (iv).
In conformity with the changes to § 11.24(a), each occasion of
"discipline" has been changed to "censure, public reprimand,
probation, disbarment, suspension or disciplinary disqualification" in
the second sentence of this section.
The situation identified in § 11.24(d)(1)(i) is that the
procedure elsewhere was so lacking in notice or opportunity to be heard
as to constitute a deprivation of due process. The situation identified
in § 11.24(d)(1)(ii) is that there was such infirmity of proof
establishing the conduct as to give rise to the clear conviction that
the Office could not, consistently with its duty, accept as final the
conclusion on that subject. The situation in § 11.24(d)(1)(iii) is
that the imposition of the same discipline by the Office would result
in grave injustice. The situation in § 11.24(d)(1)(iv) is that the
practitioner was not the person involved in the prior disciplinary
matter. In conformity with the changes to § 11.24(a),
"discipline" has been changed to "censure, public reprimand,
probation, disbarment, suspension or disciplinary disqualification" in
§ 11.24(d)(1)(iii).
Under § 11.24(d)(2), if the USPTO Director determines that
there is no genuine issue of material fact, the USPTO Director enters
an appropriate final order. If the USPTO Director is unable to make
such a determination because there is a genuine issue of material fact,
the complaint is referred to a hearing officer for disposition and the
practitioner is directed to file an answer to the complaint.
Section 11.24(e) provides for the effect of the adjudication in
another jurisdiction or Federal agency or program. This section sets
forth that a final adjudication in another jurisdiction or Federal
agency or program that a practitioner, whether or not admitted in that
jurisdiction, has been guilty of misconduct shall establish a prima
facie case for discipline or probation for purposes of a disciplinary
proceeding in this Office. In conformity with the changes to § 11.24(a),
"discipline" has been changed to "censure, public reprimand, probation,
disbarment, suspension or disciplinary disqualification" in this section.
Section 11.24(f) sets forth the only circumstance when reciprocal
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discipline may be imposed nunc pro tunc. This section provides for
imposing reciprocal discipline only upon the practitioner's request and
only if the practitioner promptly notified the OED Director of his or
her censure, public reprimand, probation, disbarment, suspension or
disciplinary disqualification in another jurisdiction, and establishes
by clear and convincing evidence that the practitioner voluntarily
ceased all activities related to practice before the Office and
complied with all provisions of § 11.58. This section further
provides that the effective date of any censure, public reprimand,
probation, disbarment, suspension, or disciplinary disqualification
imposed nunc pro tunc shall be the date the practitioner voluntarily
ceased all activities related to practice before the Office and
complied with all provisions of § 11.58. In conformity with the
changes to § 11.24(a), "discipline" has been changed to
"censure, public reprimand, probation, disbarment, suspension" in the
first sentence. In conformity with the changes to § 11.24(a), in
the second sentence, "censure, public reprimand, probation," has been
inserted before "suspension"; a comma has been inserted after
"suspension"; "or" has been inserted between "suspension" and
"disbarment"; and "or disciplinary disqualification" has been added
Section 11.24(g) provides for reinstatement following a reciprocal
discipline proceeding. Under this section, a practitioner may petition
for reinstatement under conditions set forth in § 11.60 no sooner
than completion of the period of reciprocal discipline imposed, and
compliance with all provisions of § 11.58.
Section 11.25: Section 11.25 is added to provide a procedure for
interim suspension and discipline, after notice and opportunity for a
hearing on the documentary record, based upon conviction of committing
a serious crime. The first sentence of § 11.25(a) provides that
upon being convicted of a crime in a court of the United States, any
state, or a foreign country, a practitioner subject to the disciplinary
jurisdiction of the Office shall notify the OED Director in writing of
the same within thirty days from the date of such conviction. If the
crime is not a serious crime, the OED Director processes the matter in
the same manner as any other information or evidence of a possible
violation of the Mandatory Disciplinary Rules identified in § 10.20(b)
of Part 10. The reference to the Mandatory Disciplinary Rules
of Part 10 will obtain until such time as the Rules of Professional
Conduct are adopted, at which time this section will be amended to
reference the imperative Rules of Professional Conduct.
The second sentence of § 11.25(a) provides that the OED
Director, upon being advised or learning that a practitioner subject to
the disciplinary jurisdiction of the Office has been convicted of a
crime, must make a preliminary determination whether the crime
constitutes a serious crime warranting interim suspension. The third
sentence of § 11.25(a) provides that where the crime is a serious
crime, the OED Director will file with the USPTO Director proof of the
conviction and request that the USPTO Director issue a notice and order
as set forth in § 11.25(b)(2) of this section. The fourth sentence
of § 11.25(a) provides that the OED Director must also, without
Committee on Discipline authorization, file with the USPTO Director a
complaint against the practitioner complying with § 11.34,
predicated upon the conviction of a serious crime. The fifth sentence
of § 11.25 provides that in the event the crime is not a serious
crime, the OED Director must process the matter in the same manner as
any other information or evidence of a possible violation of an
imperative Rule of Professional Conduct coming to the attention of the
OED Director.
Section 11.25(b) provides a procedure for imposing interim
suspension and referral for disciplinary proceeding in the case of a
practitioner convicted of a serious crime. Section 11.25(b)(1) provides
that the USPTO Director has authority to place a practitioner on
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interim suspension, after a hearing on the documentary record.
Section 11.25(b)(2) provides for notifying the practitioner
convicted of commission of a serious crime with notice of the
proceeding. The USPTO Director issues a notice to the practitioner in
accordance with § 11.35(a), (b) or (c), and to the OED Director.
The notice contains a copy of the court record, docket entry, or
judgment of conviction; a copy of the complaint; and an order directing
the practitioner to inform the USPTO Director and OED Director, within
thirty days of the date of the notice, of any genuine issue of material
fact that the crime did not constitute a serious crime, that the
practitioner is not the individual found guilty of the crime, or that
the conviction was so lacking in notice or opportunity to be heard as
to constitute a deprivation of due process.
Section 11.25(b)(3) provides procedures for a hearing on and entry
of a final order on the OED Director's request for interim suspension.
The request for interim suspension is heard by the USPTO Director on
the documentary record unless the USPTO Director determines that the
practitioner's response establishes a genuine issue of material fact
that the crime did not constitute a serious crime, the practitioner is
not the person who committed the crime, or the conviction was so
lacking in notice or opportunity to be heard as to constitute a
deprivation of due process. If the USPTO Director determines that there
is no genuine issue of material fact regarding those defenses an
appropriate final order is entered regardless of the pendency of any
criminal appeal. Conversely, if the USPTO Director is unable to make
such determination because there is a genuine issue of material fact,
the USPTO Director would enter a final order dismissing the request for
interim suspension and referring the complaint to a hearing officer for
a hearing. Under the latter circumstances, the USPTO Director would
also direct the practitioner to file an answer to the complaint in
accordance with § 11.36. Section 11.25(b)(4) provides the USPTO
Director with authority to terminate an interim suspension when it is
in the interest of justice, and upon a showing of extraordinary
circumstances, after affording the OED Director an opportunity to
respond to the request to terminate interim suspension.
Section 11.25(b)(5) provides a procedure whereby the USPTO
Director, upon entering an order for interim suspension, refers the
complaint to the OED Director for institution of a formal disciplinary
proceeding for an initial decision recommending the final disciplinary
sanction to be imposed. The hearing officer, however, shall stay the
disciplinary proceeding until all direct appeals from the conviction
are concluded. Review of the initial decision of the hearing officer
shall be pursuant to § 11.55.
Section 11.25(c) sets forth the standard for proving conviction and
guilt. Section 11.25(c)(1) addresses conviction in the United States.
Under this section, for purposes of a hearing for interim suspension
and a hearing on the formal charges in a complaint filed as a
consequence of the conviction, a certified copy of the court record,
docket entry, or judgment of conviction in a court of the United States
or any state establishes a prima facie case by clear and convincing
evidence that the practitioner was convicted of the crime and that the
conviction was not lacking in due process. Section 11.25(c)(2)
addresses conviction in a foreign country. For purposes of a hearing
for interim suspension and on the formal charges filed as a result of a
finding of guilt, a certified copy of the court record, docket entry,
or judgment of conviction in a court of a foreign country establishes a
prima facie case by clear and convincing evidence that the practitioner
was convicted of the crime and that the conviction was not lacking in
due process. Nothing in this section precludes the practitioner from
demonstrating in any hearing for interim suspension that there is a
genuine issue of material fact to be considered when determining if the
elements of a serious crime were committed in violating the criminal
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law of the foreign country and whether a disciplinary sanction should
be entered.
Section 11.25(d) provides that if the USPTO Director determines
that the crime is not a serious crime, the complaint is to be referred
to the OED Director for investigation under § 11.22 and appropriate
processing.
Section 11.25(e) provides a procedure for reinstatement upon
reversal or setting aside a finding of guilt or a conviction. Under
§ 11.25(e)(1), if the practitioner demonstrates that the underlying
finding of guilt or conviction of serious crimes has been reversed or
vacated, the order for interim suspension is to be vacated and the
practitioner be placed on active status unless the finding of guilt was
reversed or the conviction was set aside with respect to less than all
serious crimes for which the practitioner was found guilty or
convicted. Vacating the interim suspension does not terminate any other
disciplinary proceeding then pending against the practitioner, the
disposition of which is determined by the hearing officer on the basis
of all available evidence other than the finding of guilt or
conviction. Section 11.25(e)(2) sets forth the reinstatement procedure
for a practitioner convicted of a serious crime. The practitioner
petitions for reinstatement under conditions set forth in § 11.60
no sooner than five years after being discharged following completion
of service of his or her sentence, or after completion of service under
probation or parole, whichever is later.
Section 11.25(f), which pertains to notifying clients and others of
a practitioner's interim suspension, by providing that an interim
suspension under this section constitutes a suspension of the
practitioner for the purpose of § 11.58. Therefore, the
practitioner must notify clients and others in accordance with § 11.58.
Section 11.26: Section 11.26 is added to introduce provisions for
settlement in disciplinary matters. Under this section a settlement
conference may occur between the OED Director and the practitioner
before or after a complaint is filed under § 11.34. Any offers of
compromise and any statements made during the course of settlement
discussions are not admissible in subsequent proceedings. The OED
Director may recommend to the USPTO Director any settlement terms
deemed appropriate, including steps taken to correct or mitigate the
matter forming the basis of the action, or to prevent recurrence of the
same or similar conduct. A settlement agreement is effective only upon
entry of a final decision by the USPTO Director.
Section 11.27: Section 11.27 is added to provide a procedure for
excluding a practitioner on consent. Section 11.27(a) provides that a
practitioner who is the subject of an investigation or a pending
disciplinary proceeding based on allegations of grounds for discipline,
and who desires to resign, may only do so by consenting to exclusion
and delivering to the OED Director an affidavit declaring the consent
of the practitioner to exclusion. The content of the affidavit is set
forth in §§ 11.27(a)(1)(i) through 11.27(a)(3)(ii). Section
11.27(b) provides a procedure for the USPTO Director to review, and if
appropriate, approve the exclusion on consent. Upon approval, the USPTO
Director enters an order excluding the practitioner on consent and
providing other appropriate actions. Upon entry of the order, the
excluded practitioner must comply with the requirements set forth in
§ 11.58. Under § 11.27(c), when an affidavit under § 11.27(a)
is received after a complaint under § 11.34 has been filed, the OED
Director notifies the hearing officer. The hearing officer then enters an
order transferring the disciplinary proceeding to the USPTO Director, who
may enter an order excluding the practitioner on consent. Section 11.27(d)
provides for reinstatement following exclusion on consent. Under this
section, a practitioner excluded on consent under this section may not
petition for reinstatement for five years. This section provides that an
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excluded practitioner who intends to reapply for admission to practice
before the Office must comply with the provisions of § 11.58, and apply
for reinstatement in accordance with § 11.60. This section provides
that failure to comply with the provisions of § 11.58 constitutes
grounds for denying an application for reinstatement.
Section 11.28: Section 11.28 is added to provide procedures for
addressing disciplinary proceedings involving an incapacitated
practitioner. Section 11.28(a) provides a procedure for holding a
disciplinary procedure in abeyance because of a practitioner's
incapacitation due to a current disability or addiction. Under
§ 11.28(a)(1), in the course of a disciplinary proceeding, before the
date set for a hearing, the practitioner may file a motion requesting
the hearing officer to enter an order holding such proceeding in
abeyance based on the contention that the practitioner is suffering
from a disability or addiction that makes it impossible for the
practitioner to adequately defend the charges in the disciplinary
proceeding. The required content of the motion is set forth in
§ 11.28(a)(1)(i). The time for filing and serving the OED Director's
response, and the content of the response are set forth in
§ 11.28(a)(1)(ii). Section 11.28(a)(2) provides a procedure for
disposition of the practitioner's motion. Upon granting the
practitioner's motion, the OED Director transfers the practitioner to
disability inactive status and publishes notice. The order may provide
that, in the case of addiction to drugs or intoxicants, the
practitioner will not be returned to active status absent satisfaction
of specified conditions. Upon receipt of the order, the OED Director
transfers the practitioner to disability inactive status, gives notice
to the practitioner, causes notice to be published, and gives notice to
appropriate authorities in the Office that the practitioner has been
placed on disability inactive status. The practitioner is required to
comply with the provisions of § 11.58, and not engage in practice before
the Office in patent, trademark and other non-patent law until a
determination is made of the practitioner's capability to resume
practice before the Office in a proceeding under §§ 11.28(c) or
11.28(d). A practitioner on disability inactive status must seek
permission from the OED Director to seek employment authorized under
§ 11.58(e). Permission will be granted only if the practitioner has
complied with all the conditions of §§ 11.58(a) through
11.58(d) applicable to disability inactive status. In the event that
permission is granted, the practitioner must fully comply with the
provisions of § 11.58(e).
Section 11.28(b) provides a procedure whereby a practitioner
transferred to disability inactive status in a disciplinary proceeding
may move for reactivation once a year beginning at any time not less
than one year after the initial effective date of inactivation, or once
during any shorter interval provided by the order issued pursuant to
§ 11.28(a)(2) or any modification thereof. If the motion is
granted, the disciplinary proceeding is resumed under a schedule
established by the hearing officer. Section 11.28(c) sets forth the
content of the practitioner's motion for reactivation.
Section 11.28(d) provides a procedure whereby the OED Director may
move to terminate a prior order holding a pending disciplinary
proceeding in abeyance and resume a disciplinary proceeding. The OED
Director bears the burden of showing by clear and convincing evidence
that the practitioner is able to defend himself or herself, and the
hearing officer will hold an evidentiary hearing if there is any
genuine issue as to one or more material facts.
Section 11.28(e) provides for a hearing officer to take appropriate
action if, in deciding a motion under § 11.28(b) or § 11.28(d),
the hearing officer determines that there is good cause to believe the
practitioner is not incapacitated from defending himself or herself, or
is not incapacitated from practicing before the Office. The appropriate
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action may include entry of an order directing the reactivation of the
practitioner and resumption of the disciplinary proceeding.
Section 11.29: Section 11.29 is added to provide for reciprocal
transfer or initial transfer to disability inactive status of
practitioners. Section 11.29(a) provides for notification of the OED
Director. Section 11.29(a)(1) addresses transfer to disability inactive
status in another jurisdiction as grounds for reciprocal transfer by
the Office. Within thirty days of being transferred to disability
inactive status in another jurisdiction a practitioner subject to the
disciplinary jurisdiction of the Office is required to notify the OED
Director in writing of the transfer. Upon notification from any source
that a practitioner subject to the disciplinary jurisdiction of the
Office has been transferred to disability inactive status in another
jurisdiction, the OED Director is required to obtain a certified copy
of the order and file it with the USPTO Director together with a
request that the practitioner be transferred to disability inactive
status, including the specific grounds therefor, and a request that the
USPTO Director issue a notice and order as set forth in § 11.29(b).
Section 11.29(a)(2) sets forth as grounds for initial transfer to
disability inactive status, situations where a practitioner has been
involuntarily committed, there is an adjudication of incompetency, or
there is a court-ordered placement of a practitioner under guardianship
or conservatorship. Within thirty days of being judicially declared
incompetent, being judicially ordered to be involuntarily committed
after a hearing on the grounds of incompetency or disability, or being
placed by court order under guardianship or conservatorship in another
jurisdiction, a practitioner subject to the disciplinary jurisdiction
of the Office must notify the OED Director in writing of the transfer.
Upon notification from any source that a practitioner subject to the
disciplinary jurisdiction of the Office has been transferred to
disability inactive status in another jurisdiction, the OED Director is
required to obtain a certified copy of the order and file it with the
USPTO Director along with the requests described in 11.29(a)(1).
Section 11.29(b) provides for serving notice on a practitioner to
show cause why transfer to disability inactive status should not occur.
The OED Director issues the notice, comporting with § 11.35,
directed to the practitioner upon receiving the information and
requests from the OED Director. The notice contains a copy of the order
or declaration from the other jurisdiction. The notice also contains an
order directing the practitioner to inform the USPTO Director and OED
Director, within 30 days from the date of the notice, a) his or her
response to the OED Director's request to transfer to disability status
which shall establish any genuine issue of material fact supported by
affidavit based on the grounds set forth in § 11.29(d) (1) through
(4) that the transfer to disability inactive status would be
unwarranted and the reasons therefor.
Section 11.29(c) addresses the effect of stay of transfer or of a
stay of a judicially declared incompetence, judicially ordered
involuntary commitment on the grounds of incompetency or disability, or
court-ordered placement under guardianship or conservatorship. This
section provides that in the event the transfer, judicially declared
incompetence, judicially ordered involuntary commitment on the grounds
of incompetency or disability, or court-ordered placement under
guardianship or conservatorship in the other jurisdiction has been
stayed, any reciprocal transfer or transfer by the Office may be
deferred until the stay expires.
Section 11.29(d) provides for a hearing and transfer to disability
inactive status. The request for transfer to disability inactive status
shall be heard by the USPTO Director on the documentary record unless
the USPTO Director determines that there is a genuine issue of material
fact, in which case the USPTO Director may deny the request. Upon the
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expiration of 30 days from the date of the notice pursuant to the
provisions of § 11.29(b), the USPTO Director shall consider any
timely filed response and impose the identical transfer to disability
inactive status unless the practitioner demonstrates by clear and
convincing evidence and the USPTO Director finds there is a genuine
issue of material fact by clear and convincing evidence that: (1) The
procedure was so lacking in notice or opportunity to be heard as to
constitute a deprivation of due process; (2) there was such infirmity
of proof establishing the transfer to disability status, judicial
declaration of incompetence, judicial order for involuntary commitment
on the grounds of incompetency or disability, or placement by court
order under guardianship or conservatorship that the USPTO Director
could not, consistent with the Office's duty, accept as final the
conclusion on that subject; (3) the imposition of the same disability
status or transfer to disability status by the USPTO Director would
result in grave injustice; or (4) the practitioner is not the
individual transferred to disability status, judicially declared
incompetent, judicially ordered for involuntary commitment on the
grounds of incompetency or disability, or placed by court order under
guardianship or conservatorship.
One example that it would be a grave injustice to impose disability
status or transfer to disability status might be that the reason no longer
exists for the original transfer to disability inactive status, judicial
declaration of incompetence, judicial order to be involuntarily
committed on the grounds of incompetency or disability, or placement by
court order under guardianship or conservatorship. A further example
would be that the practitioner was not the person transferred to
disability inactive status, judicially declared incompetent, judicially
ordered to be involuntarily committed on the grounds of incompetency or
disability, or placed by court order under guardianship or
conservatorship. If the USPTO Director determines that there is no
genuine issue of material facts with regard to any of the elements of
§§ 11.29 (d)(1) through (4), the USPTO Director shall enter an
appropriate final order. If the USPTO Director is unable to make that
determination because there is a genuine issue of material fact, the
USPTO Director shall enter an appropriate order dismissing the OED
Director's request for such reason.
Section 11.29(e) provides for the effect of adjudication in other
jurisdictions. This section provides that in all other aspects, a final
adjudication in another jurisdiction that a practitioner is transferred
to disability inactive status, is judicially declared incompetent, is
judicially ordered to be involuntarily committed on the grounds of
incompetency or disability, or is placed by court order under
guardianship or conservatorship establishes the disability for purposes
of a reciprocal transfer to or transfer to disability status before the
Office.
Section 11.29(f) provides that a practitioner who is transferred to
disability inactive status under this section shall be deemed to have
been refused recognition to practice before the Office so that the
agency's final order may be reviewed under 35 U.S.C. 32.
Section 11.29(g) provides for an order imposing reciprocal transfer
to disability inactive status or order imposing initial transfer to
disability inactive status. Under this section, an order by the USPTO
Director imposing reciprocal transfer to disability inactive status, or
transferring a practitioner to disability inactive status is effective
immediately for an indefinite period until further order of the USPTO
Director. A copy of the order transferring a practitioner to disability
inactive status is served upon the practitioner, the practitioner's
guardian, and/or the director of the institution to which the
practitioner has been committed in the manner the USPTO Director may
direct. A practitioner reciprocally transferred or transferred to
disability inactive status must comply with the provisions of § 11.58,
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and must not engage in practice before the Office in patent, trademark
and other non-patent law unless and until reinstated to active status.
Section 11.29(h) provides for confidentiality of the proceeding and
that orders transferring a practitioner to disability status be public.
Under § 11.29(h)(1) all proceedings under § 11.29 involving
allegations of disability of a practitioner are kept confidential
unless and until the USPTO Director enters an order reciprocally
transferring or transferring the practitioner to disability inactive
status. Under § 11.29(h)(2), the OED Director must publicize any
reciprocal transfer to disability inactive status or transfer to
disability inactive status in the same manner as for the imposition of
public discipline.
Section 11.29(i) addresses activities provided for under § 11.58(e)
of practitioners on disability inactive status. A practitioner
on disability inactive status must seek permission from the OED
Director to engage in an activity authorized under § 11.58(e).
Permission will be granted only if the practitioner has complied with
all the conditions of §§ 11.58(a) through 11.58(d) applicable
to disability inactive status. In the event that permission is granted,
the practitioner must fully comply with the provisions of § 11.58(e).
Section 11.29(j) provides for reinstatement from disability
inactive status. Section 11.29(j)(1) provides that no practitioner
reciprocally transferred or transferred to disability inactive status
under § 11.29 may resume active status except by order of the OED
Director. Section 11.29(j)(2) provides that a practitioner reciprocally
transferred or transferred to disability inactive status is entitled to
petition the OED Director for transfer to active status once a year, or
at whatever shorter intervals the USPTO Director may direct in the
order transferring or reciprocally transferring the practitioner to
disability inactive status or any modification thereof. Section
11.29(j)(3) provides that upon the filing of a petition for transfer to
active status, the OED Director may take or direct whatever action is
deemed necessary or proper to determine whether the incapacity has been
removed, including a direction for an examination of the practitioner
by qualified medical or psychological experts designated by the OED
Director. The expense of the examination is paid and borne by the
practitioner. Section 11.29(j)(4) provides that with the filing of a
petition for reinstatement to active status, the practitioner will be
required to disclose the name of each psychiatrist, psychologist,
physician and hospital or other institution by whom or in which the
practitioner has been examined or treated since the transfer to
disability inactive status. The practitioner must furnish the OED
Director with written consent for the release of information and
records relating to the incapacity if requested by the OED Director.
Section 11.29(j)(5) provides that the OED Director may direct that the
practitioner establish proof of competence and learning in law, which
proof may include passing the registration examination. Section
11.29(j)(6) provides that the OED Director shall grant the petition for
transfer to active status upon a showing by clear and convincing
evidence that the incapacity has been removed. Section 11.29(j)(7)
provides that if a practitioner reciprocally transferred to disability
inactive status on the basis of a transfer to disability inactive
status in another jurisdiction, the OED Director may dispense with
further evidence that the disability has been removed and may
immediately direct reinstatement to active status upon such terms as
are deemed proper and advisable. Section 11.29(j)(8) provides that if a
practitioner transferred to disability inactive status on the basis of
a judicially declared incompetence, judicially ordered involuntary
commitment on the grounds of incompetency or disability, or court-
ordered placement under guardianship or conservatorship has been
declared to be competent, the OED Director may dispense with further
evidence that the incapacity to practice law has been removed and may
immediately direct reinstatement to active status.
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Sections 11.30 through 11.31: Sections 11.30 through 11.31 are
reserved.
Section 11.32: Section 11.32 is added to provide a procedure for
instituting a disciplinary proceeding. Section 11.32, in essence,
continues the provisions of former § 10.132, except as noted in the
following discussion. Section 11.32(a) authorizes the OED Director to
convene a meeting of "a panel of the Committee on Discipline," as
opposed to a "meeting of the Committee on Discipline" provided for in
former § 10.132, and § 11.32(a) provides that the meeting may
be convened after an investigation is conducted and after complying,
where necessary, with the provisions of 5 U.S.C. 558(c), if "the OED
Director is of the opinion that grounds exist for discipline under
§ 11.19(b)(3)-(5)." The panel of the Committee then determines as
specified in § 11.23(b) whether a disciplinary proceeding shall be
instituted.
Section 11.33: Section 11.33 is reserved.
Section 11.34: Section 11.34 is added to provide for the content
and sufficiency of a complaint. Section 11.34, in essence, continues
the provisions of former § 10.134, except as noted in the following
discussion. Section 11.34(a)(2) provides that the complaint must give a
plain and concise description of the respondent's "alleged grounds for
discipline" instead of the "alleged violations of the Disciplinary
Rules by the practitioner" found in former § 10.134(a)(2). Section
11.34(a)(3) adds a provision that the complaint state the time "not
less than thirty days from the date the complaint is filed" for
respondent to file an answer.
Section 11.34(b) provides that the complaint will be deemed
sufficient if it fairly informs the respondent of "any grounds for
discipline, and where applicable, Mandatory Disciplinary Rules
identified in § 10.20(b) of Part 10 of this Subsection that form
the basis for the disciplinary proceeding," whereas former § 10.134(b)
provided that the complaint must fairly inform the respondent
of "any violation of the Disciplinary Rules which form the basis for
the disciplinary proceeding." The reference to the Mandatory
Disciplinary Rules of Part 10, instead of the imperative Rules of
Professional Conduct, will obtain until such time as the Rules of
Professional Conduct are adopted, at which time reference will be made
to the imperative Rules of Professional Conduct. Section 11.34(c) adds
a provision that "[t]he complaint shall be filed in the manner
prescribed by the USPTO Director."
Section 11.35: Section 11.35 is added to provide for service of the
complaint. Section 11.35, in essence, continues the provisions of
former § 10.135, except as noted in the following discussion.
Section 11.35(a)(2) provides for serving a complaint on a respondent by
mailing a copy of the paper by "other delivery service" to
respondent. The use of "other delivery service that provides the
ability to confirm delivery or attempted delivery," in addition to
first class mail and "Express Mail," recognizes additional delivery
services not recognized when former § 10.135 was adopted. Section
11.35(a)(4) adds a provision for delivery of a complaint "[i]n the
case of a respondent who resides outside the United States, by sending
a copy of the complaint by any delivery service that provides ability
to confirm delivery or attempted delivery, to: (i) [a] respondent who
is a registered practitioner at the address provided to OED pursuant to
§ 11.11; or (ii) [a] respondent who is a nonregistered practitioner
at the last address for the respondent known to the OED Director."
Unlike the provision of former § 10.135(b), § 11.35 does not
require a second attempt to serve the complaint by any one of the
procedures in § 11.35(a) before service is effected by publication.
Section 11.35(b) provides for service by publication "for two
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consecutive weeks," instead of the "four consecutive weeks" required
by former § 10.135(b), and the time for filing an answer is set at
"thirty days from the second publication of the notice." Section
11.35(b) also provides that "[f]ailure to timely file an answer will
constitute an admission of the allegations in the complaint in
accordance with paragraph (d) of § 11.36, and the hearing officer
may enter an initial decision on default." Section 11.35(c), which
addresses serving a copy of a complaint on the attorney known to
represent a respondent, provides that service on the attorney is in
lieu of service on the respondent in the manner provided for in
sections 11.35(a) or (b).
Section 11.35(b) provides a procedure for accomplishing service if
a copy of the complaint cannot be delivered to the respondent through
any one of the procedures in § 11.35(a). In these circumstances,
the OED Director serves the respondent by causing an appropriate notice
to be published in the Official Gazette for two consecutive weeks, in
which case, the time for filing an answer shall be thirty days from the
second publication of the notice. Section 11.35(b) provides that
failure to timely file an answer will constitute an admission of the
allegations in the complaint in accordance with § 11.36(d), and the
hearing officer may enter an initial decision on default.
Section 11.35(c) provides that if the respondent is known to the
OED Director to be represented by an attorney under § 11.40(a), a
copy of the complaint is to be served on the attorney in lieu of the
respondent in the manner provided for in § 11.35(a) or § 11.35(b).
Section 11.36: Section 11.36 is added to provide for the
respondent's answer to a complaint. Section 11.36, in essence,
continues the provisions of former § 10.136, except as noted in the
following discussion. Section 11.36(a) provides that the minimum thirty
days for filing an answer runs "from the date the complaint is
filed."
In § 11.36(b), the first sentence provides that when filing the
answer with the hearing officer, it is to be filed "at the address
specified in the complaint." In § 11.36(c), the third sentence
requires respondent to state affirmatively any intent to raise a
disability as a mitigating factor. The last three sentences in
§ 11.36(c) provide: that "if respondent intends to raise a special
matter of defense or disability, the answer shall specify the defense
or disability, its nexus to the misconduct, and the reason it provides
a defense or mitigation"; that "a respondent who fails to do so
cannot rely on a special matter of defense or disability"; and that
"the hearing officer may, for good cause, allow the respondent to file
the statement late, grant additional hearing preparation time, or make
other appropriate orders." Disability, such as mental disability or
chemical dependency, including alcoholism or drug abuse, would be a
mitigating factor only if the respondent practitioner makes an adequate
showing of nexus and mitigation. Such a showing would be expected to
include (1) medical evidence that the practitioner is affected by a
chemical dependency or mental disability; (2) evidence that the
chemical dependency or mental disability substantially caused the
misconduct; (3) the practitioner's recovery from the chemical
dependency or mental disability is demonstrated by a meaningful and
sustained period of successful rehabilitation; (4) the recovery
arrested the misconduct; and (5) recurrence of the misconduct is
unlikely. These are substantially the same standards as those set forth
Section 9.32(i) of the American Bar Association Standards for Imposing
Lawyer Sanctions (1992). Section 11.36(d) provides that the hearing
officer need receive no further evidence with respect to an allegation
that is not denied by a respondent in the answer inasmuch as the
allegation is deemed to be admitted and may be considered proven.
Section 11.36(e) provides for entry of a default judgment if an answer
is not timely filed.
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Section 11.37: Section 11.37 is reserved.
Section 11.38: Section 11.38 is added to provide for a contested
case. Section 11.38, in essence, continues the provisions of former
§ 10.138.
Section 11.39: Section 11.39 is added to provide for a hearing
officer, the appointment and responsibilities of the hearing officer,
and review of a hearing officer's interlocutory orders and stays.
Section 11.39, in essence, continues the provisions of former § 10.139,
except as noted in the following discussion. Section 11.39(a),
in addition to providing for the appointment of a hearing officer by
the USPTO Director under 5 U.S.C. 3105, also provides for a hearing officer
appointed under 35 U.S.C. 32. The hearing officer conducts the disciplinary
proceedings.
Section 11.39(b) provides that the hearing officer be independent
of improper influence by requiring that the officer "not be subject to
first level or second level supervision by the USPTO Director or his or
her designee," "not be subject to supervision of the person(s)
investigating or prosecuting the case," "not be an individual who has
participated in any manner in the decision to initiate the
proceedings," and "not have been employed under the immediate
supervision of the practitioner." The hearing officer must be admitted
to practice law and have suitable experience and training to conduct
the hearing, reach a determination, and render an initial decision in
an equitable manner. Section 11.39(b)(11) authorizes the hearing
officer to impose against a party any of the sanctions provided in Rule
37(b)(2) of the Federal Rules of Civil Procedure in the event that said
party or any attorney, agent or designated witness of that party fails
to comply with a protective order made pursuant to § 11.44(c).
Section 11.39(c)(8) provides that the hearing officer has authority
to adopt procedures and modify procedures for the orderly disposition
of proceedings and sets forth a hearing officer's responsibilities.
Section 11.39(c)(10) provides that the hearing officer has authority to
promote not only the efficient and timely conduct of a disciplinary
proceeding, but also to promote the impartiality of the proceeding.
Section 11.39(d) provides for the hearing officer issuing an
initial decision "normally* * * within nine months of the date a
complaint is filed," instead of the six-month period used in former
§ 10.139(c). Section 11.39(d) provides for the initial decision
issuing more than nine months after a complaint in the same
circumstances contemplated by former § 10.139(c).
Section 11.39(f) provides that if the OED Director or a respondent
seeks review of an interlocutory order of a hearing officer under
§ 11.39(b)(2), any time period set by the hearing officer for taking
action shall not be stayed unless ordered by the USPTO Director or the
hearing officer. The language appearing in proposed § 11.39(f),
"any time period set by the hearing officer for taking action shall
not be stayed" has been changed to "any time period set by the
hearing officer for taking action shall not be stayed." The hearing
officer sets times for the OED Director and respondent to act under
§§11.39(c)(5) and (c)(8), but not for the hearing officer to
act. Accordingly, the language was changed sua sponte to conform to the
hearing officer's recited responsibilities.
Section 11.39(g) prohibits the hearing officer from engaging in ex
parte discussions with any party on the merits of the complaint,
beginning with appointment and ending when the final agency decision is
issued.
Section 11.40 is added to provide for representation of the
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respondent and the OED Director. Section 11.40(a), in essence,
continues the provisions of former § 10.140(a). Section 11.40(b)
provides for the OED Director to be represented by the Deputy General
Counsel for Intellectual Property and Solicitor, and attorneys in the
Office of the Solicitor. The attorneys representing the OED Director in
disciplinary proceedings must not consult with the USPTO Director, the
General Counsel, or the Deputy General Counsel for General Law
regarding the proceeding. The General Counsel and the Deputy General
Counsel for General Law must remain screened from the investigation and
prosecution of all disciplinary proceedings in order that they be
available as counsel to the USPTO Director in deciding disciplinary
proceedings, unless access is appropriate to perform their duties.
After a final decision is entered in a disciplinary proceeding, the OED
Director and attorneys representing the OED Director shall be available
to counsel the USPTO Director, the General Counsel, and the Deputy
General Counsel for General Law in any further proceedings, for
example, as they arise in a United States District Court or the United
States Court of Appeals for the Federal Circuit.
Section 11.41: Section 11.41 is added to provide for filing of
papers. Section 11.41, in essence, continues the provisions of former
§ 10.141 except as noted in the following discussion. The first
sentence of § 11.41(a) provides that the provisions of not only
§ 1.8, but also § 2.197, do not apply to disciplinary proceedings.
The first sentence of former § 10.141 has been moved
to be the second sentence of § 11.41(a). Section 11.41(b) provides
that all papers filed after entry of an initial decision by the hearing
officer are to be filed with the USPTO Director and that a copy of the
paper shall be served on the OED Director. The provision of former
§ 10.141(c) has been moved to be the third sentence of § 11.41(b).
Section 11.42: Section 11.42 is added to provide for service of
papers other than a complaint in a disciplinary proceeding. Section
11.42, in essence, continues the provisions of former § 10.142
except as noted in the following discussion. Sections 11.42(a)(2) and
11.42(b)(2) provide for serving a paper on the respondent's attorney,
or upon a respondent who is not represented, by mailing a copy of the
paper by "other delivery service" to the attorney or the respondent.
The use of "other delivery service," in addition to first class mail
and "Express Mail," recognizes additional delivery services not
recognized when former § 10.142 was adopted. Similarly, § 11.42(c)(2)
provides for the respondent serving a paper on the representative of
the OED Director by mailing a copy by "other delivery service."
Section 11.43: Section 11.43 is added to provide for motions. In
essence, § 11.43 continues the provisions of former § 10.143.
Section 11.44: Section 11.44 is added to provide for hearings in
disciplinary proceedings. Except as noted in the following discussion,
§ 11.44, in essence, continues the provisions of former § 10.144.
The third sentence of § 11.44(a) provides that the hearing
officer will set the time and place for the hearing. In doing so, the
hearing officer should normally give preference to a Federal facility
in the district where the Office's principal office is located or
Washington, DC, inasmuch as the practitioner is practicing before the
Office. Nevertheless, the hearing officer should also give due regard
to the convenience and needs of the parties, witnesses, or their
representatives. The fifth sentence of § 11.44(a) provides that in
cases involving an incarcerated respondent, any necessary oral hearing
may be held at the location of incarceration. The seventh sentence of
§ 11.44(a) provides that the hearing be conducted as if the
proceeding were subject to 5 U.S.C. 556. In some instances, such as
when the OED Director and respondent reach a settlement, an oral
hearing is unnecessary, and therefore, no oral hearing is conducted.
The eighth sentence of § 11.44(a) provides that a copy of the
transcript shall be provided to the OED Director and the respondent at
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the expense of the Office.
Section 11.44(b) provides that when the respondent to a
disciplinary proceeding fails to appear at the hearing after a notice
of hearing has been given by the hearing officer, the hearing officer
may deem the respondent to have waived the right to a hearing and may
proceed with the hearing in the absence of the respondent.
Section 11.44(c) provides that a hearing under this section will
not be open to the public except that the hearing officer may grant a
request by a respondent to open his or her hearing to the public and make
the record of the disciplinary proceeding available for public inspection,
provided, a protective order is entered to exclude from public
disclosure information which is privileged or confidential under
applicable laws or regulations.
Section 11.45: Section 11.45 is added to provide for amendment of
pleadings. This section permits the OED Director to amend the complaint
to include additional charges with the authorization of the hearing
officer, but without authorization from the Committee on Discipline.
The amended charges may be based upon conduct committed before or after
the complaint was filed. If amendment of the complaint is authorized,
the hearing officer must authorize amendment of the answer. To avoid
prejudice by the amendments to any party, reasonable opportunity is
given to meet the allegations in the complaint or answer as amended,
and the hearing officer makes findings on any issue presented by the
complaint or answer as amended.
Sections 11.46-11.48: Sections 11.46-11.48 are reserved.
Section 11.49: Section 11.49 is added to provide each party's
burden of proof. This section, in essence, continues the provisions of
former § 10.149.
Section 11.50: Section 11.50 is added to provide for applicable
rules of evidence. This section, in essence, continues the provisions
of former § 10.150.
Section 11.50(c), which provides for discovery of government
documents, in essence, continues the provisions for former § 10.150(c)
and further specifies that the discovery "include[es], but [is] not limited
to, all papers in the file of a disciplinary investigation," which are
admissible without extrinsic evidence of authenticity.
Section 11.51: Section 11.51 is added to provide for the use of
depositions. Except as noted in the following discussion, § 11.51,
in essence, continues the provisions of former § 10.151. The last
sentence in § 11.51(a), "[d]epositions may not be taken to obtain
discovery, except as provided for in paragraph (b) of this section,"
is not found in former § 10.151, and has been added to § 11.51(a)
to preclude the use of depositions to obtain discovery that the hearing
officer has not authorized.
Section 11.52: Section 11.52 provides for discovery. Except as
noted in the following discussion, § 11.52, in essence, continues
the provisions of former § 10.152. Section 11.52, like former § 10.152,
requires a party to establish that discovery is reasonable and
relevant. However, § 11.52 does not specify that the party seeking
discovery must do so "in a clear and convincing manner." It is
sufficient that the party establish that discovery is reasonable and
relevant. Section 11.52(b)(1), unlike former § 10.152(b), does not
prohibit reasonable and relevant discovery that will be used solely for
cross-examination.
Section 11.53: Section 11.53, which provides for proposed findings
and conclusions as well as post-hearing memorandum, in essence
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continues the provisions of former § 10.153.
Section 11.54: Section 11.54 provides for proposed findings and
conclusions as well as post-hearing memoranda. Except as noted in the
following discussion, § 11.54, in essence, continues the provisions
of former § 10.154. To codify long-standing practice, § 11.54(a)(2)
adds a provision specifically referencing inclusion of "an
order of default judgment" in the decision, and for the hearing
officer to transmit the entire record to the OED Director after issuing
the decision. To improve efficiencies, § 11.52(a)(2) provides for
the hearing officer to transmit a copy of the decision to the OED
Director, instead of transmitting copies to both the OED Director and
the OED Director's representative. To conform with the inclusion of
"an order of default judgment" in the decision, the last sentence of
§ 11.52(a)(2) also provides that in the absence of an appeal to the
USPTO Director, the decision of the hearing officer, including a
default judgment, will, without further proceedings, become the
decision of the USPTO Director thirty days from the date of the
decision of the hearing officer. Section 11.54(b) provides that in
determining any sanction after a finding that a practitioner has
violated a ground for discipline, the following four factors must be
considered if they are applicable: (1) Whether the practitioner has
violated a duty owed to a client, to the public, to the legal system,
or to the profession; (2) whether the practitioner acted intentionally,
knowingly, or negligently; (3) the amount of the actual or potential
injury caused by the practitioner's misconduct; and (4) the existence
of any aggravating or mitigating factors.
Section 11.55: Section 11.55 is added to provide a procedure for
appealing a decision to the USPTO Director. While § 11.55, in
essence, continues a number of the provisions of former § 10.155,
numerous provisions have been added to clarify and codify procedures.
For example, beginning with the second sentence, § 11.55(a)
provides: that the "appeal shall include the appellant's brief;" that
"[i]f more than one appeal is filed, the party who files the appeal
first is the appellant for purpose of this rule;" "[i]f appeals are
filed on the same day, the respondent is the appellant;" "[i]f an
appeal is filed, then the OED Director shall transmit the entire record
to the USPTO Director;" that "[a]ny cross-appeal shall be filed
within fourteen days after the date of service of the appeal pursuant
to § 11.42, or thirty days after the date of the initial decision
of the hearing officer, whichever is later;" that "[t]he cross-appeal
shall include the cross-appellant's brief;" that "[a]ny appellee or
cross-appellee brief must be filed within thirty days after the date of
service pursuant to § 11.42 of an appeal or cross-appeal;" and
that "[a]ny reply brief must be filed within fourteen days after the
date of service of any appellee or cross-appellee brief."
Section 11.55(b) provides that an appeal or cross-appeal must
include exceptions to the decisions of the hearing officer and
supporting reasons for those exceptions, and that any exception not
raised will be deemed to have been waived and will be disregarded by
the USPTO Director in reviewing the initial decision.
Section 11.55(c) provides specific information regarding where
briefs are filed, the content and arrangement of briefs, and paper
size. Section 11.55(d) sets page limit lengths for briefs, as well as
other requirements. Section 11.55(e) provides that the USPTO Director
may refuse entry of a nonconforming brief. Section 11.55(g) proscribes
filing further briefs or motions unless permitted by the USPTO
Director. Section 11.55(i) provides that in the absence of an appeal by
the OED Director, failure by the respondent to appeal under the
provisions of this section shall be deemed to be both acceptance by the
respondent of the initial decision and waiver by the respondent of the
right to further administrative or judicial review.
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Section 11.56: Section 11.56 is added to provide for a decision of
the USPTO Director. Section 11.56, in essence, continues the provisions
of former § 10.156, except as noted in the following discussion.
The second sentence of § 11.56(a) provides that the USPTO Director
may, in addition to affirming, reversing or modifying the initial
decision of the hearing officer, "remand the matter to the hearing
officer for such further proceedings as the USPTO Director may deem
appropriate."
Section 11.56(b) provides that the final decision of the USPTO
Director may, in addition to the actions authorized in former § 10.156(b),
reverse or modify the initial decision. This section also provides that
a "final decision suspending or excluding a practitioner shall require
compliance with the provisions of § 11.58;" and that the "final
decision may also condition the reinstatement of the practitioner upon
a showing that the practitioner has taken steps to correct or mitigate
the matter forming the basis of the action, or to prevent recurrence of
the same or similar conduct."
Section 11.56(c) adds several provisions not set forth in former
§ 10.156. The respondent and the OED Director are limited to making
a single request for reconsideration or modification of the decision by
the USPTO Director, and the request must be filed within twenty days
from the date of entry of the decision. No request for reconsideration
or modification will be granted unless the request is based on newly
discovered evidence or error of law or fact, and the requester must
demonstrate that any newly discovered evidence could not have been
discovered any earlier by due diligence. The request has the effect of
staying the effective date of the order of discipline in the final
decision. The decision by the USPTO Director is effective on its date
of entry.
Section 11.57: Section 11.57 is added to provide for review of the
final decision of the USPTO Director. Section 11.57, in essence,
continues the provisions of former § 10.157, except as noted in the
following discussion. Section 11.57(a) provides that review of final
decisions of the USPTO Director is available by petition filed in the
United States District Court for the District of Columbia in accordance
with the court's local rule. Section 11.57(a) draws the practitioner's
attention to the necessity of serving the USPTO Director and complying
with service requirements of Rule 4 of the Federal Rules of Civil
Procedure and 37 CFR 104.2.
Section 11.57(b), unlike former § 10.156(b), provides that
except for a request for reconsideration in § 11.56(c), "an order
for discipline in a final decision will not be stayed except on proof
of exceptional circumstances."
Section 11.58: Section 11.58 is added to set forth the duties of a
disciplined or resigned practitioner. Section 11.58, in essence,
continues the provisions of former § 10.158, except as noted in the
following discussion. Section 11.58, in addition to referring to a
practitioner who is excluded or suspended, also refers to practitioners
who have resigned. Practitioners who resign are those addressed in
§ 11.11(e). Section 11.58(a) provides that an excluded, suspended
or resigned practitioner will not be automatically reinstated at the
end of his or her period of exclusion or suspension, that they must
comply with the provisions of this section and §§ 11.12 and
11.60 to be reinstated, and that failure to comply with the provisions
of this section may constitute both grounds for denying reinstatement
or readmission and be cause for further action, including seeking
further exclusion, suspension, and for revocation of any pending
probation.
Section 11.58(b)(1)(i) requires the practitioner to file, within
thirty days after the date of entry of the order of exclusion,
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suspension, or acceptance of resignation, a notice of withdrawal as of
the effective date of the exclusion, suspension or acceptance of
resignation in each pending patent and trademark application, each
pending reexamination and interference proceeding, and every other
matter pending in the Office, together with a copy of the notices sent
pursuant to sections 11.58(b) and 11.58(c).
Section 11.58(b)(1)(iii) requires that the practitioner give notice
to state and Federal jurisdictions and administrative agencies to which
the practitioner is admitted to practice and clients "of the
practitioner's consequent inability to act as a practitioner after the
effective date of the order; and that, if not represented by another
practitioner, the client should act promptly to substitute another
practitioner, or to seek legal advice elsewhere, calling attention to
any urgency arising from the circumstances of the case." Section
11.58(b)(1)(iii) requires practitioners to "provide notice to the
practitioner(s) for all opposing parties (or, to the parties in the
absence of a practitioner representing the parties) in matters pending
before the Office of the practitioner's exclusion, suspension or
resignation and, that as a consequence, the practitioner is
disqualified from acting as a practitioner regarding matters before the
Office after the effective date of the suspension, exclusion or
resignation, and state in the notice the mailing address of each client
of the excluded, suspended or resigned practitioner who is a party in
the pending matter."
Section 11.58(b)(1)(iv) requires the practitioners to "deliver to
all clients having immediate or prospective business before the Office
in patent, trademark or other non-patent matters any papers or other
property to which the clients are entitled, or shall notify the clients
and any co-practitioner of a suitable time and place where the papers
and other property may be obtained, calling attention to any urgency
for obtaining the papers or other property."
Section 11.58(b)(1)(v) requires practitioners to "relinquish to
the client, or other practitioner designated by the client, all funds
for practice before the Office, including any legal fees paid in
advance that have not been earned and any advanced costs not
expended."
Section 11.58(b)(1)(vii) requires practitioners to "serve all
notices required by paragraphs (b)(1)(ii) and (b)(1)(iii) of this
section by certified mail, return receipt requested, unless mailed
abroad. If mailed abroad, all notices shall be served with a receipt to
be signed and returned to the practitioner."
Section 11.58(b)(2) provides that within forty-five days after
entry of the order of suspension, exclusion, or of acceptance of
resignation, the practitioner must file with the OED Director an
affidavit of compliance certifying that the practitioner has fully
complied with the provisions of the order, § 11.58, and with
Mandatory Disciplinary Rules identified in § 10.20(b) of Part 10
for withdrawal from representation. Appended to the affidavit of
compliance must be copies of specified documents, a schedule regarding
bank accounts in which the practitioner holds or held as of the entry
date of the order any client, trust, or fiduciary funds for practice
before the Office, a schedule describing the practitioner's disposition
of all client and fiduciary funds for practice before the Office, proof
of proper distribution of the funds and closing of the accounts, a list
of all other state, Federal and administrative jurisdictions to which
the practitioner is admitted to practice, and an affidavit providing
information specified in § 11.58(b)(2)(vi).
Section 11.58(c) provides that after entry of the order of
exclusion or suspension, or acceptance of resignation, the practitioner
is proscribed from accepting any new retainer regarding immediate or
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prospective business before the Office, or engaging as a practitioner
for another in any new case or legal matter regarding practice before
the Office. The practitioner will be granted limited recognition for a
period of thirty days. During the thirty-day period of limited
recognition, the practitioner is to conclude work on behalf of a client
on any matters that were pending before the Office on the date of entry
of the order of exclusion or suspension, or acceptance of resignation.
If such work cannot be concluded, the practitioner must so advise the
client so that the client may make other arrangements.
Section 11.58(d) requires the practitioner to keep and maintain
records of the various steps taken under § 11.58 so that proof of
compliance with this section and with the exclusion or suspension order
will be available in any subsequent proceeding. The OED Director will
require the practitioner to submit such proof as a condition precedent
to the granting of any petition for reinstatement.
Section 11.58(e) continues the practice under former § 10.158(c)
for an excluded and suspended practitioner to act as a paralegal
for another practitioner, and extending the practice to resigned
practitioners and practitioners on disability inactive status.
Section 11.58(f) continues the practice under former § 10.158(d)
proscribing reinstatement of excluded and suspended practitioners who act
as a paralegal or perform services under § 11.58(e) unless they satisfy
specified conditions, and extends the practice to resigned practitioners
and practitioners on disability inactive status.
Section 11.59: Section 11.59 is added to improve information
dissemination to protect the public from disciplined practitioners.
Section 11.59(a) provides for informing the public of the disposition
of each matter in which public discipline has been imposed and of any
other changes in a practitioner's registration status. Public
discipline is identified as exclusion, including exclusion on consent,
suspension, and public reprimand. In the usual circumstances, the OED
Director would give notice of public discipline and the reasons for the
discipline to disciplinary enforcement agencies in the state where the
practitioner is admitted practice, to courts where the practitioner is
known to be admitted, and the public. The final decision of the USPTO
Director would be published if public discipline is imposed. A redacted
version of the final decision would be published if a private reprimand
is imposed. Changes in status, such as suspended, excluded, or
disability inactive status, would also be published.
Section 11.59(b) provides that the OED Director's records of every
disciplinary proceeding where a practitioner is reprimanded, suspended,
or excluded, including when said sanction is imposed by default
judgment, shall be made available to the public upon written request,
unless the USPTO Director orders that the proceeding or a portion of
the record be kept confidential. This section further provides that
information may be withheld as necessary to protect the privacy of
third parties or as directed in a protective order issued pursuant to
§ 11.44(c). This section also provides that the record of a
proceeding that results in a practitioner's transfer to disability
inactive status shall not be available to the public.
Section 11.59(c) provides that an order excluding a practitioner on
consent under § 11.27 and the affidavit required under paragraph
(a) of § 11.27 shall be available to the public unless the USPTO
Director orders that the proceeding or a portion of the record be kept
confidential. The section also provides that information in the order
and affidavit may be withheld as necessary to protect the privacy of
third parties or as directed in a protective order under § 11.44(c)(2).
This section also provides that the affidavit required under § 11.27(a)
shall not be used in any other proceeding except by order of the USPTO
Director or upon written consent of the practitioner.
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Section 11.60: Section 11.60 is added to address petitions for
reinstatement by excluded, suspended or resigned practitioners. Section
11.60 continues the practices of former § 10.160, except as noted
in the following discussion. In addition to referencing suspended and
excluded practitioners throughout the section, as did former § 10.160,
§ 11.60 also specifically references and applies the provisions
to a resigned practitioner. Section 11.60(a) prohibits the practitioners
from resuming the practice of patent, trademark, or other non-patent law
before the Office until reinstated by order of the OED Director or the
USPTO Director.
Section 11.60(b) provides that excluded or suspended practitioners
are eligible to apply for reinstatement only upon expiration of the
period of suspension or exclusion and the practitioner's full
compliance with § 11.58. An excluded practitioner can be eligible
to apply for reinstatement no earlier than at least five years from the
effective date of the exclusion. The section also provides that a
resigned practitioner can be eligible to petition for reinstatement and
must show compliance with § 11.58 no earlier than at least five
years from the date the practitioner's resignation is accepted and an
order is entered excluding the practitioner on consent.
Section 11.60(c) provides for filing a petition for reinstatement
with the OED Director accompanied by the fee required by § 1.21(a)(10).
A practitioner who has violated any provision of § 11.58 is not eligible
for reinstatement until a continuous period of the time in compliance with
§ 11.58 that is equal to the period of suspension or exclusion has elapsed.
A resigned practitioner is not eligible for reinstatement until compliance
with § 11.58 is shown. If a practitioner who is not eligible for
reinstatement files a petition, or if the petition is insufficient or
defective on its face, the OED Director may dismiss the petition. Otherwise
the OED Director considers the petition for reinstatement. The practitioner
seeking reinstatement has the burden of proof by clear and convincing
evidence. The evidence must be included in or accompany the petition.
The evidence must establish: that the practitioner has the good moral
character and reputation, competency, and learning in law required
under § 11.7 for admission; that resumption of practice before the
Office will not be detrimental to the administration of justice or
subversive to the public interest; and that the practitioner has
complied with the provisions of § 11.58 for the full period of the
suspension, or at least five years if the practitioner resigned or was
excluded.
Section 11.60(d)(1) provides for the OED Director to grant a
petition for reinstatement where the practitioner has complied with
§§11.60(c)(1) through (c)(3) by entering an order for
reinstatement conditioned on payment of the costs of the disciplinary
proceeding to the extent set forth in § 11.60(d)(2). Section
11.60(d)(3) provides for granting relief, in whole or part, from an
order assessing costs on grounds of hardship, special circumstances, or
other good cause. Good cause may include, for example, the disciplinary
proceeding costs in excess of $1,500 incurred by the practitioner were
not anticipated because the disciplinary proceeding began before the
effective date of these rules and concluded thereafter. Under the old
rules, the maximum cost that could be recovered was $1,500.
Section 11.60(e) provides that where the OED Director finds the
practitioner is unfit to resume the practice of patent law before the
Office, the practitioner is first provided with an opportunity to show
cause in writing why the petition should not be denied. If unpersuaded
by the practitioner's showing, the OED Director must deny the petition.
The OED Director may require the practitioner, in meeting the
requirements of § 11.7, to take and pass an examination under § 11.7(b),
ethics courses, and/or the Multistate Professional Responsibility
Examination. The OED Director must provide findings, together with the
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record. The findings must include specified information regarding "Prior
Proceedings."
Section 11.60(f) provides for resubmission of petitions for
reinstatement if a petition for reinstatement is denied. A petition for
reinstatement may not be resubmitted until the expiration of at least
one year following the denial unless the order of denial provides
otherwise.
Section 11.61: Section 11.61 is added to provide savings clauses
and continues the current practice under former § 10.161, except as
discussed below. Section 11.61(c) provides that sections 11.24, 11.25,
11.28 and 11.34 through 11.57 apply to all proceedings in which the
complaint is filed on or after the effective date of these regulations.
Section 11.61(c) also provides that § 11.26 and 11.27 apply to
matters pending on or after the effective date of these regulations.
Section 11.61(d) provides that sections 11.58 through 11.60 apply to
all cases in which an order of suspension or exclusion is entered or
resignation is accepted on or after the effective date of these
regulations.
Sections 11.62 - 11.99. Sections 11.62-11.99 are reserved.
Section 41.5: Section 41.5(e) would be revised to change a cross-
reference to § 11.22.
Response to comments: The Office published a notice proposing
changes to the Office's rules governing disciplinary proceedings for
attorneys, registered patent agents and persons granted limited
recognition to practice before the Office. See Changes to
Representation of Others Before the United States Patent and Trademark
Office; Notice of proposed rule making, 68 FR 69442 (Dec. 12, 2003),
1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) (proposed rule). The
Office received one hundred forty-seven comments (from intellectual
property organizations and patent practitioners) in response to this
notice. The Office thereafter published a supplemental notice of
proposed rule making for the rules governing disciplinary proceedings.
See Changes to Representation of Others Before The United States Patent
and Trademark Office, Supplemental Notice of Proposed Rule Making, 72
FR 9196 (Feb. 28, 2007), 1316 Off. Gaz. Pat. Office 123 (Mar. 27, 2007)
(supplemental proposed rule). The Office received fourteen comments
(from intellectual property organizations and patent practitioners) in
response to this notice. The Office's responses to the comments follow:
Comment 1: Two comments suggested that the word "add" in the
instructions for the amendment to § 11.1 be changed to "revise"
inasmuch as a definition of "State" was contained in the section in
the rules adopted June 24, 2004.
Response: The suggestion in the comment has been adopted.
Comment 2: A comment inquired as to the meaning of "other
proceedings" in § 11.2(c), and suggested that the rule either
permit the Director to stay other proceedings or to stay the
proceedings based on good and sufficient reasons presented by a
prospective registrant in a petition.
Response: The suggestion has not been adopted. This section, like
§ 1.181(f), makes clear that the filing of a petition does not
operate to stay any other proceeding. Thus, a petition by an applicant
for registration who has paid the $1600 application fee and is seeking
review of the decision requiring the payment, would not stay another
proceeding in the Office regarding the same applicant, such as the
processing of the individual's application to take the registration
examination. No rule is believed necessary to enable the OED Director,
where appropriate, to coordinate other proceedings within the OED
Director's jurisdiction.
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Comment 3: Two comments suggested that clarification is required
regarding whether a fee is needed for a petition under § 11.2(e).
Response: No clarification is believed necessary. Section 11.2(e)
does not provide for or otherwise refer to a fee to invoke the
supervisory authority of the USPTO Director in appropriate
circumstances in a disciplinary matter. Therefore, no fee for the
petition is required in disciplinary matters.
Comment 4: One comment, after noting that § 11.3 as revised to
eliminate a prohibition against petitioning to waive a disciplinary
rule and the explanation for the revision, suggested the elimination of
provisions in § 11.3 for suspensions of the rules.
Response: The disciplinary rules containing the ethical standards
of practice for practitioners will be only one of several subjects
addressed in Part 11. Part 11 currently includes, inter alia, rules
addressing registration to practice, rules addressing investigations
and rules for disciplinary procedures. Section 11.3 in Part 11, like
§ 1.183 in Part 1, provides both a procedure for requesting
suspension of a rule, and a standard upon which the decision is made.
Comment 5: A comment noted that § 11.3 no longer provides
immunity for complainants, witnesses, and disciplinary counsel, that
the lack of immunity is contrary to longstanding policy found in Rule
12 of the Model Rules of Lawyer Disciplinary Enforcement for the
reasons explained in the Commentary to Rule 12, and recommended that
this section provide absolute immunity for complainants, witnesses and
OED personnel.
Response: While we appreciate the provisions of Rule 12 of the
Model Rules of Lawyer Disciplinary Enforcement and the expressed
reasons for providing immunity, it is beyond the authority of the USPTO
Director to provide immunity by rule. For example, as discussed below
regarding § 11.18, all persons filing written communications with
the Office, including complainants, are subject to the provisions of 18
U.S.C. 1001. The Office cannot provide complainants with immunity from
violation of a criminal law.
Comment 6: One comment observed that the first sentence of § 11.5
could be construed to imply that preparation and prosecution
privileges do not encompass practice before the Board of Patent Appeals
and Interferences inasmuch as an ex parte proceeding before the Board
arguably is not prosecution of a patent application. The comment
suggested revising the language to read "including representing
applicants in patent matters before the Board of Patent Appeals and
Interferences."
Response: The suggestion to revise § 11.5(a) is adopted in
part. In the first sentence, the word "applications" has been changed
to "matters," and the sentence now provides for keeping a register of
the names of attorneys and agents who are "recognized as entitled to
represent applicants having prospective or immediate business before
the Office in the preparation and prosecution of patent matters." The
change is inclusive of representing applicants before the Board of
Patent Appeals and Interferences in a patent matter.
Comment 7: Two comments suggested that "or retaining" be added
after "employing" in the last sentence of § 11.5(b). One comment
pointed out that the addition conforms to Rule 5.3(a) of the American
Bar Association's Rules of Professional Conduct. The other comment
pointed out that a practitioner may retain, as opposed to employ, a
non-practitioner assistant, under the supervision of the practitioner
to prepare presentations to the Office.
Response: The suggestion to add "or retaining" after
"employing" in the last sentence of § 11.5(b) has been adopted.
Comment 8: Two comments presented similar suggestions for
replacement of the phrase "in preparation of said presentations" in
the last sentence of § 11.5(b). One comment suggested replacing the
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phrase with "in matters pending or contemplated to be presented before
the Office"; the other suggested using "matters pending or
contemplated to be presented to the Office." Both comments suggested
the change would more accurately define the activities and be
consistent with other language in this section. A third comment
suggested the non-practitioner should be broadened to include a person
or entity which is not technically the practitioner's employee or on
the practitioner's payroll, and who may be an independent contractor
who communicates or consults with a client in working with a
practitioner.
Response: The two similar suggestions for replacement of the phrase
"in preparation of said presentations" have been adopted by replacing
phrase with "matters pending or contemplated to be presented to the
Office" in the last sentence of § 11.5(b).
The suggestion to broaden the non-practitioner to include a person
or entity which is not technically the practitioner's employee or on
the practitioner's payroll to communicate or consult with clients
working for the practitioner has not been adopted. The persons and
entities would not be subject to a practitioner's supervision, and
absent supervision or other controls, could be engaged in the
unauthorized practice of law by providing unsupervised and incorrect
legal advice. The Office's Disciplinary Rules prohibit a practitioner
from aiding another in the unauthorized practice of law. See 37 CFR
10.47. Persons or entities engaging in the unauthorized practice of law
will be reported to the authorities in the appropriate jurisdiction(s).
See § 11.19(d). The persons and entities contemplated by the
suggestion are beyond the ambit of the Office's Disciplinary Rules.
Under the suggestion, the practitioners have no supervisory authority
over the persons or entities, and therefore could violate the
Disciplinary Rules for non-supervision or aiding unauthorized practice
of law. Thus, the Office could not protect the public from the actions
of the persons or entities, though Congress has made the USPTO Director
responsible for protecting the public from the misdeeds of those who
practice before the Office.
Comment 9: One comment urged that § 11.5 places unnecessary and
improper restrictions on practitioners who may work with non-
practitioner invention developers who communicate or consult with
clients who may want to file documents with the Office. The comment
said it is unreasonable and improper for the Office to interfere with
the relationship between invention promoters and practitioners by
restricting practitioners from working with non-practitioners,
including invention promoters who may consult or communicate with
clients regarding their inventions, so long as legal advice and the
filing of patent applications, attending hearings, etc. remain the
responsibility of the practitioner. The comment suggested changes to
§ 11.5 to eliminate the following "overly broad" language: law-
related services "that comprehend[] any matter connected with the
presentation to the Office," the preparation of necessary documents
"in contemplation of filing the documents" with the Office, and
"communicating with * * * a client concerning matters pending or
contemplated to be presented before the Office" in § 11.5(b);
"consulting with * * * a client in contemplation of filing a patent
application or other document with the office" in § 11.5(b)(1).
The comment urged that a person who may have prospective business
before the Office may want to utilize both lay and legal service
providers in connection with his invention, including non-practitioners
who merely assemble information to provide non-legal services at a much
lower cost than practitioners would charge.
Response: The Office disagrees that § 11.5 places unnecessary
and improper restrictions on practitioners who may work with non-
practitioners who communicate or consult with clients. Nothing in the
rule prevents a person having prospective business before the Office
from utilizing both lay and legal service providers in connection with
that person's invention. Non-practitioners who assemble information to
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provide only non-legal services at a cost may continue to provide non-
legal services. However, non-practitioners who, for example, provide
law-related services "that comprehend[] any matter connected with the
presentation to the Office" or prepare necessary documents, such as
patent applications, "in contemplation of filing the documents" with
the Office must be employed or retained by the practitioner and under
the practitioner's supervision. The suggestion to change the language
of § 11.5 to enable non-practitioners to consult or communicate
with clients regarding their inventions, and enable clients to obtain
services at lower cost than practitioners can provide has not been
adopted. Contrary to the comment, assembly of information is not always
a non-legal service; for example, providing a list of patent references
found in a search of the prior art is a non-legal service whereas
transmitting information to the practitioner to use to describe the
invention in a patent application is a legal service. The value of
competent legal service and advice, including communications,
consultations, and assembly of information for inventors can be
significantly more valuable than its cost. Its value may be more
significant for unsophisticated inventors who need expert evaluation of
the merits or real prospects of legal protection for their invention.
The Office "frequently finds itself challenged by so-called `invention
promoters' who exploit unsophisticated inventors, heap every invention
with praise regardless of the merits or the real prospects of legal
protection, and entice inventors into engagement agreements filled with
hollow guarantees of patent protection and promises of royalty-bearing
licenses that seldom yield anything of any significant value." Bender
v. Dudas, 490 F.3d 1361, 1363 (Fed Cir. 2007). A practitioner working
with an unsupervised non-practitioner facilitates such practices. For
example, in Bender, the Court found "[a]t no point did Gilden [a
practitioner] consult with the inventors regarding the filing of a
design patent application or the embellished drawings." Id. at 1364.
At a minimum, it is necessary that the practitioner representing the
client not only consult with the client, but also that the consultation
"otherwise advise[] that inventor on how best to proceed in his or her
particular case." Id. at 1365. Non-practitioners are not entitled to
provide legal advice or otherwise practice law. To the extent practice
of law includes a law-related service that comprehends any matter
connected with the presentation to the Office, the preparation of
necessary documents in contemplation of filing the documents with the
Office, and communicating with * * * a client concerning matters
pending or contemplated to be presented before the Office as in
§ 11.5(b), a practitioner authorized by relevant law must provide the
legal services. For example, consultation with a client in
contemplation of filing a patent application or other document with the
Office as in § 11.5(b)(1) requires a registered practitioner to
provide the services. A practitioner may not circumvent the
Disciplinary Rules through the actions of another. See 37 CFR
10.23(b)(2). For example, a non-practitioner who is neither employed
nor retained by the practitioner, or who is not under the supervision
of the practitioner, may not assist the practitioner in matters pending
or contemplated to be presented to the Office.
Comment 10: Several comments responded to the Office's inquiry
whether the rules "should explicitly provide for circumstances in
which a patent agent's causing an assignment to be executed might be
appropriate incidental to preparing and filing an application." Two
comments pointed out that § 11.5(b)(1) would be internally
inconsistent if patent agents could provide advice about "alternative
forms of protection that may be available under state law" but not
prepare and file assignments in connection with the applications they
have prepared. One comment suggested that the Office lacks the
authority to, and should not, prohibit a patent agent or registered
patent attorney licensed only by the Office from preparing an
assignment for an application he or she is prosecuting, while another
comment recommended that the rule explicitly provide for preparing
assignments and licenses for patent applicants and patentees. One
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comment said that it has been the Office's position that a registered
patent agent could both prepare a patent assignment or license if not
prohibited by state law and submit the assignment or license for
recordation, and recommended that this position be explicitly stated in
the rules. The comment also urged that the rule follow the practice of
states that permit paraprofessionals, such as patent agents to complete
and modify assignment and license documents under an attorney's
supervision. The comment pointed out that allowing these types of
activities is particularly important in a corporate environment where
only one or two form agreements may be used in certain clearly defined
situations. One comment suggested it is unnecessary for the Office to
explicitly provide for appropriate circumstances when a patent agent
may prepare an assignment and/or cause an assignment to be executed not
only because these activities are incidental to the preparation and
prosecution of patent applications or incidental to the record for an
issued patent, but also because of the Office's long-standing position
a registered patent agent may prepare a patent assignment and cause
such assignment to be executed if not prohibited by state law. One
comment objected to a requirement that if a document is submitted for
recordation by an attorney or agent, that the attorney or agent
submitting the document must be separately licensed by the state bar in
which the assignor and/or assignee lives, in addition to being licensed
by the Office. Two comments inquired how the transfer of rights in the
U.S. invention from a foreign inventor to a foreign company should be
handled. One comment suggested the attorney or agent who is handling
the substantive prosecution needs to be able to act fast to resolve
ownership questions, for example to file a terminal disclaimer, or, for
example, to ensure the correctness of the assignment recordation
affirmations that the prosecuting attorney or agent makes when
submitting the assignee's name on the issue fee transmittal sheet.
Several comments cited impracticalities and difficulties if a patent
agent is unable to prepare assignments, for example, where the
application to be assigned has multiple inventors living in different
states, hiring an attorney for each state simply to cause an assignment
to be executed in such State would be an unnecessary administrative
burden. One comment suggested that agents be allowed to select, not
draft or vary, one or more form assignments by having the Office adopt
standard form assignments, and that the Office establish well-defined,
common, specific "safe harbor" situations in which agents can
recommend such standard forms to their clients.
Response: The filing of an assignment, while not legally required
for prosecution, is no doubt "reasonably necessary and incident to"
prosecution of a patent application. This is true to enable an assignee
of record of the entire interest to control prosecution of the
application to the exclusion of the assignor. See 37 CFR 1.33(b)(4) and
3.71.
The diverse comments regarding the authority of practitioners to
preparing assignments and licenses for patent applicants and patentees
demonstrate the necessity for the Office to provide for appropriate
circumstances when registered practitioners, including patent agents,
may do so. Inasmuch as numerous situations involving assignments arise,
the Office is not attempting by rule to explicitly identify all
circumstances when a registered practitioner may prepare or cause an
assignment to be signed. Instead, the provisions of § 11.5(b)(1)
are written to broadly outline the circumstances when a practitioner
may prepare an assignment for patent applicants and patentees by virtue
of the practitioner's registration.
There is no statute or rule requiring training in contract law as a
condition to be registered as a patent agent. No comment suggested any
means whereby patent agents could receive adequate training and the
competence to provide legal advice could be confirmed. Absent adequate
training, a person drafting an assignment could overlook issues for
which lawyers have received training. For example, in addition to
preparing an assignment form, it may be necessary to advise whether the
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inventor is obligated to assign the invention, and if so, to whom. It
may be necessary to resolve ownership questions, for example, to file a
terminal disclaimer where there is no previously existing employment
agreement or where an employment agreement contains no obligation to
assign patent rights. In some situations, assignments lead to serious
complexities, which can impact title and prevent patent enforcement.
Patent agents are not empowered by their registration to provide advice
about title and enforcement of patents. Accordingly, it is appropriate
to set forth authority of practitioners to prepare an assignment or
cause an assignment to be executed by virtue of their registration.
Preparing an assignment or causing an assignment to be executed is
appropriate only when they are reasonably necessary and incidental to
the preparation and prosecution of a patent application, or other
proceeding before the Office involving a patent application or patent
in which the practitioner is authorized to participate. The patent
application may be, for example, a provisional, nonprovisional or
reissue application. Other proceedings include, for example, an
interference or reexamination proceeding. A practitioner, by virtue of
being registered, may prepare an assignment or cause it to be signed in
the foregoing circumstances if in drafting the assignment the
practitioner does no more than replicate the terms of a previously
existing oral or written obligation of assignment from one person or
party to another person or party. Registration does not authorize a
registered practitioner to recommend or determine the terms to be
included in an assignment. The practitioner is not authorized to select
or recommend a particular form assignment from among standard form
assignments. Registration does not authorize a practitioner to draft an
assignment or other document in circumstances that do not contemplate a
proceeding before the Office involving a patent application or patent.
For example, where an assignment is prepared in contemplation of
selling a patent or in contemplation of litigation, there is no
proceeding before the Office. When, after a patent issues, there is no
proceeding before the Office in which the patent agent may represent
the patent owner, drafting an assignment or causing the assignment to
be signed are not activities reasonably necessary and incidental to
representing a patent owner before the Office.
Section 11.5(b)(1) provides circumstances in which a registered
practitioner may prepare an assignment or cause an assignment to be
executed. The assignment must be reasonably necessary and incidental to
filing and prosecuting a patent application for the patent owner or the
practitioner represents the patent owner after the patent issues in a
proceeding before the Office. In drafting the assignment the
practitioner must not do more than replicate the terms of a previously
existing oral or written obligation of assignment from one person or
party to another person or party. Thus, where a previously existing
written employment agreement between an inventor and the employing
corporation contains one or more clauses obligating an inventor to
assign to the company inventions made in the course of employment, a
practitioner may draft an assignment wherein the provisions replicate
those of the employment agreement.
Contrary to several comments, the Office has not taken the position
that a registered patent agent could prepare a patent assignment or
license for a patent if not prohibited by state law. The Office's long-
standing position has been that "[p]atent agents * * * cannot * * *
perform various services which the local jurisdiction considers as
practicing law. For example, a patent agent could not draw up a
contract relating to a patent, such as an assignment or a license, if
the state in which he/she resides considers drafting contracts as
practicing law." See General Information Concerning Patents,
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.uspto.gov/web/offices/pac/doc/general/index.html.
Drawing up an assignment for an issued patent is not necessarily always
reasonably necessary and incidental to filing or prosecuting a patent
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application or other proceeding before the Office involving a patent. For
example, where a first party is selling and a second party is purchasing a
patent, the transfer of patent rights between the parties is not a
proceeding before the Office. Drafting an assignment for either party
would be beyond the scope of recognition practice before the Office.
A license is neither reasonably necessary nor incidental to filing
or prosecuting a patent application or a proceeding before the Office
involving a patent. Under Office rules only an assignee of the entire
interest, not a licensee, may revoke previous powers in a patent
application and be represented by a registered practitioner of the
assignee's own selection. See 37 CFR 1.36. Similarly, the rules do
not authorize a licensee to control the representation of a party
in a reexamination or interference proceeding. Accordingly, the Office
has not authorized patent agents to draft license agreements in
contemplation of filing or prosecuting patent applications or conduct
proceedings before the Office regarding issued patents.
The suggestion to follow the practice of most states permitting
paraprofessionals, such as patent agents, to complete and modify
assignment and license documents under an attorney's supervision need
not be adopted. Although 35 U.S.C. 152, 202, 204 and 261 refer to
assignment or licensure of patents or patent rights, assignments and
licenses are forms of contracts, which are creatures of state, not
Federal law. Contracts are enforceable under state law. The authority
to prepare contracts and provide advice regarding the terms to include
in contracts is subject to the state law regarding who is authorized to
practice law. It is unnecessary for the Office to authorize
practitioners to comply with state laws permitting paraprofessionals to
act under the supervision of an attorney where the State's authority to
control the acts are not preempted by Federal law. It is not apparent
from any comment that corporations or other organizations using few
agreements in certain clearly defined situations have been or would be
adversely impacted by the lack of an Office rule permitting patent
agents to complete and modify documents assignment and license
documents under an attorney's supervision.
No state was identified as prohibiting paraprofessionals from
modifying assignments and license documents under a lawyer's
supervision. Modifying assignment and license documents could
necessitate expert knowledge of state principles for which registered
practitioner status does not prepare agents. Whereas a corporation or
other organization may employ paraprofessionals, including patent
agents, to act under a lawyer's supervision, the attorney would remain
responsible for the completed or modified document. There remains,
however, registered patent agents who are self-employed and do not act
under a lawyer's supervision. Adopting a rule requiring registered
patent agents to act under the supervision of lawyers to modify
assignment and license documents does not address in a satisfactory
manner when patent agents may prepare the documents in reliance on
their registration to practice before Office. Thus, the circumstances
contemplated in the suggestion do not obtain for all patent agents
practicing before the Office. Inasmuch as assignments and licenses are
the creation of state, not Federal, statute, authority to prepare these
agreements and provide advice regarding the terms to include in them is
subject to the state law regarding who is authorized to practice law.
In a corporate or other organizational environment, where only one
or two form agreements may be used in certain clearly defined
situations, the provisions of § 11.5(b)(1) allowing a practitioner
to replicate the terms of the form agreements support efficiencies
sought by all interested parties. Section 11.5(b)(1) is not limited to
practitioners employed by a corporation or practitioners acting under
the supervision of a lawyer. The practitioners may be self-employed or
in firms. Section 11.5(b)(1) permits any registered practitioner to
replicate the terms of the form agreements for an assignment in
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contemplation of filing or prosecuting a patent application, and submit
the same to the Office for recordation in connection with a
concurrently filed or pending patent application. For example, where an
inventor and investor, each possibly represented by their own counsel,
have reached terms for assignment of an invention in contemplation of
filing a patent application, a patent agent may draft the assignment if
the agent does no more than replicate the terms of the previously
existing oral or written assignment agreement between the inventor and
investor. It is not necessary for the registered practitioner to be
under the supervision of a lawyer to provide the service inasmuch as
the agent is functioning as a scrivener.
It is not and has not been the intent of the Office to require the
agent or attorney physically submitting a document for recordation to
be separately licensed by the state bar in which the assignor and/or
assignee lives. Additionally, there is no requirement that the attorney
submitting a document for recordation in the Office be registered to
practice before the Office. The recordation of documents is a
ministerial act by the Office. The Office does not require the person
or party submitting the document be registered to practice before the
Office. For example, an assignment or license document may be submitted
to the Office for recordation by a patent or trademark owner, a
registered patent agent or a registered patent attorney who is
separately licensed in a state other than the state wherein the
attorney practices. However, whoever submits an assignment or license
is responsible for ensuring the correctness of thesubmitted documents.
See 37 CFR 11.18. Likewise, the registered practitioner submitting the a
transmittal sheet is responsible for ensuring the correctness of the
contents of the sheet, including any representation that a party
identified as an assignee is in the assignee. See § 11.18.
Comments regarding the transfer of rights in the United States of
inventions from a foreign inventor to a foreign company implicitly
address an invention that occurs abroad. Any transfer of rights would
likely arise under foreign law, which would determine the appropriate
person to draft any original assignment or license reflecting the
transfer of rights. A patent agent may draft assignment that transfers
rights in the United States that merely replicates the provisions of
the previously existing oral or written obligation of assignment in a
foreign country between the persons or parties. In the absence of a
previously existing obligation of assignment in a foreign country, an
attorney, presumably after consultation with the client, could draft
the assignment for the client.
Suggestions that administrative burdens caused by not permitting
patent agents to prepare assignments would justify permitting agents to
draft assignments are unpersuasive. A typical situation cited is the
administrative burden incurred when there is an application having
multiple inventors living in different states if it is necessary to
hire an attorney for each state simply to cause an assignment to be
executed in such state instead of having an agent draft the assignment.
The comments commonly assumed that all agents are competent to provide
the legal services and the invention is to be assigned. First, there is
no requirement that patent agents be trained in contract law to be
registered to practice before the Office in patent cases. Absent
adequate training, the client may not receive the legal advice and
service the client has every right to expect. The possible temporary
"convenience" of having a practitioner inadequately trained in the
legal service the practitioner provides does not outweigh the need for
competence. A practitioner is prohibited from handling a legal matter
which the practitioner knows or should know that the practitioner is
not competent to handle, without associating with another practitioner
who is competent to handle it. See 37 CFR 10.77(b). Therefore, clients
represented by a practitioner would be disserved by that practitioner
if the practitioner is not competent to provide advice whether multiple
inventors living in different states are subject to the contract laws
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of all the states or one state, whether the inventors are obligated to
assign the invention, whether the inventors should assign as opposed to
license the invention absent a legal obligation to assign, and other
legal implications of any agreement. Burdens may arise for
practitioners and clients when the clients are not competently advised
about available legal options, such as licensure or assignment, as well
as the benefits, terms and costs of each option. The convenience of
having a registered practitioner provide a legal service for which no
training is required for registration does not outweigh the benefits of
obtaining competent legal advice and assistance.
The Office is not adopting the suggestion to allow agents to
select, but not draft or vary, one or more form assignments by adopting
standard form assignments, and that the Office establish well-defined,
common situations, that would be specific "safe harbor" situations in
which agents can recommend such standard forms to their clients. The
very suggestion demonstrates the necessity for clients to receive
competent legal advice before they sign any document transferring
rights. There are numerous employment situations as well as other
contractual and non-contractual situations requiring legal analysis and
advice regarding whether and when an inventor is obligated to assign an
invention, transfer shop rights in an invention, or license an
invention. The situations are subject to state law, which varies from
state to state. It would be inappropriate for the Office to adopt
standard form assignments or adopt "safe harbors" inasmuch as no form
or harbor could address or anticipate all possible terms and
situations. Though the comment did not recommend that adoption of
standard licensing forms and safe harbors for licensing, such action by
the Office would be similarly imprudent. The fact that legal reference
books provide numerous forms, rather than a single one, demonstrates
that there is no standard for assignments or licenses, for which a
"safe harbor" could be provided. Competent legal training is
necessary to assess whether any rights in an invention should be
transferred by assignment or license, as well as the terms for the
transfer.
Comment 11: Two comments urged that the weight of authority holds
that a patent agent may not advise about the content of alternate forms
of state intellectual property protection. One comment urged that the
USPTO lacks jurisdiction over state law forms of intellectual property
protection, under state law, patent agents are not licensed to provide
such advice. One comment made the same observation for a registered
lawyer who is not licensed in the state where he or she is practicing.
Response: The Office is not expanding its jurisdiction over state
law forms of intellectual property protection. Thus, § 11.5(b)(1)
does not provide for a patent agent advising about the content of
alternate state forms of intellectual property protection. Section
11.5(b)(1), consistent with Supreme Court precedent, provides for
"considering the advisability of relying upon alternative forms of
protection which may be available under statute law." In Sperry v.
State of Florida ex rel Florida Bar, 373 U.S. 379, 83 S.Ct. 1322
(1963), the Supreme Court said that the preparation and prosecution of
patent applications for others constitutes the practice of law, which
"inevitably requires the practitioner to consider and advise his
clients as to the patentability of their inventions under the statutory
criteria, 35 U.S.C. 101 - 103, 161, 171, as well as to consider the
advisability of relying upon alternative forms of protection which may
be available under state law." Id. 373 U.S. at 383, 83 S.Ct. at 1323.
Patent agents should consider the advisability of relying on the
alternative forms of protection available under statute law. Inasmuch
as the state laws are public, agents should refer clients to the
statutes and suggest that the client consult with an attorney of the
client's choice in the state whether the statute has been adopted about
the alternative forms of protection available under statute law. The
same would obtain for a registered patent attorney who is not licensed
in the state where the attorney is practicing unless the state where
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the attorney is practicing has authorized the attorney to provide legal
services. For example, if the attorney is "corporate counsel" or
"in-house counsel" and is licensed to practice law in another state,
the attorney may provide legal advice about the state's statutes to the
attorney's corporate employer if the state where the attorney is
practicing has authorized the attorney to provide legal services for
the attorney's employer in the state where the attorney is practicing.
Comment 12: One comment expressed doubt that listing explicit
circumstances in which a patent agent may or may not participate is
either necessary or helpful. Another comment urged that the "includes,
but is not limited to" language in § 11.5 is vague and indefinite
since it does not put the public on notice as to what else would
constitute patent practice before the Office, that the Office needs to
define exactly what constitutes the practice of patent law subject to
USPTO jurisdiction, and that the rule be amended to define practice before
the Office as prosecution of patent applications before the Office,
preparing assignments and licenses for patent applicants and patentees
and rendering opinions on validity and infringement for clients.
Response: The Office will not attempt by rule to define exactly
what constitutes practice of patent law that is subject to the Office's
jurisdiction. The scope of activities involved in practice of patent
law before the Office is not necessarily finite, and is subject to
change as the patent statute changes and rules are promulgated to the
implement statutory changes. Instead, § 11.5(b)(1) is written to
provide that registration to practice before the Office in patent cases
sanctions the performance of those services which are reasonably
necessary and incident to the preparation and prosecution of patent
applications or other proceedings before the Office involving a patent
application or patent in which the practitioner is authorized to
participate. The services are identified as including considering the
advisability of relying upon alternative forms of protection which may
be available under statute law, and drafting an assignment or causing
an assignment to be executed for the patent owner in contemplation of
filing or prosecution of a patent application for the patent owner, or
the practitioner represents the patent owner after a patent issues in a
proceeding before the Office, and in drafting the assignment the
practitioner does no more than replicate the terms of a previously
existing oral or written obligation of assignment from one person or
party to another person or party.
The suggestion to define practice before the Office as prosecution
of patent applications before the Office has not been adopted. Inasmuch
as practice before the Office in patent cases also includes, for
example, representing a patent owner seeking reexamination of an
application or before the Board of Appeals and Interferences, limiting
practice before the Office to only prosecuting patent applications
would be inappropriately narrow.
The suggestion to define practice before the Office as rendering
opinions on validity and infringement for clients has not been adopted.
Whether a validity opinion involves practice before the Office depends
on the circumstances in which the opinion is sought and furnished. For
example, an opinion of the validity of another party's patent when the
client is contemplating litigation and not seeking reexamination of the
other party's patent could not be reasonably necessary and incident to
the preparation and prosecution of patent applications or other
proceedings before the Office involving a patent application or patent.
In such situations, the opinion may constitute unauthorized practice of
law. See Mahoning Cty. Bar Assn. v. Harpman, 608 N.E.2d 872 (Ohio
Bd.Unauth.Prac. 1993). Similarly, a validity opinion for the sale or
purchase of the patent is neither the preparation nor the prosecution
of a patent application. Likewise, the opinion is not a proceeding
before the Office involving a patent application or patent.
Registration to practice before the Office in patent cases does not
authorize a person to provide a validity opinion that is not reasonably
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necessary and incident to representing parties before the Office. In
contrast, a validity opinion issued in contemplation of filing a
request for reexamination would be in contemplation of a proceeding
before the Office involving a patent. Due to registration to practice
before the Office in patent cases, a practitioner may issue a validity
opinion in contemplation of filing a request for reexamination.
In no circumstance would practice before the Office include the
rendering of opinions on infringement. Under the law, the Office has no
authority to resolve infringement cases. Thus, registration to practice
before the Office in patent cases does not include authority to render
infringement opinions. See Mahoning Cty. Bar Assn. v. Harpman, supra.
Comment 13: One comment suggested that the Office not adopt the
last sentence of § 11.14(a), "[r]egistration as a patent attorney
does not itself entitle an individual to practice before the Office in
trademark matters," inasmuch as any attorney meeting the qualification
of being a member in good standing of a State or Federal Bar can
practice before the Office in trademark cases. Another comment queried
why registration as a patent attorney does not itself entitle an
individual to practice before the Office in trademark matters.
Response: To clarify the intent of the last sentence of § 11.14(a),
the term "attorney" has been changed to "practitioner."
The sentence now reads "[r]egistration as a patent practitioner does
not itself entitle an individual to practice before the Office in
trademark matters." Whether a practitioner registered on or after
January 1, 1956, has been registered as a patent attorney or patent
agent, the practitioner's registration as an attorney or agent does not
in itself entitle the practitioner to practice before the Office in
trademark matters. To qualify to practice before the Office in
trademark matters since January 1, 1956, a person must be an attorney
meeting the statutory qualification of 5 U.S.C. 500 of being a member
in good standing of the bar of the highest court of a State. However,
the Office's recognition of a lawyer to practice before the Office in
trademark matters does not authorize the attorney to engage in the
practice of law where the attorney is not authorized to practice law.
See § 11.14(d), and its predecessor rules, 10.14(d) and 2.14(d).
Inasmuch as membership in a bar of a Federal court is not a qualifying
criteria set forth in 5 U.S.C. 500 to practice before a Federal agency,
it does not qualify a person to practice before the Office in trademark
cases. A person lacking membership in good standing in the bar of the
highest court of a state may not practice before the Office in
trademark matters, even if the person is registered with the Office as
a patent attorney. For example, a registered patent attorney who is
suspended or disbarred on ethical grounds from practice of law or
suspended on nonethical grounds, such as non-payment of annual dues, in
State A, the only jurisdiction where the attorney was admitted to
practice law, may not continue to practice before the Office in
trademark matters following the effective date of the suspension or
disbarment.
Further, a nonlawyer registered as a patent agent after January 1,
1956, is not qualified to practice before the Office in trademark
matters. A person who was registered as a patent agent after January 1,
1956, and thereafter became an attorney who has remained in good
standing with the bar of the highest court of a state may practice
before the Office in trademark cases, even if the person never changed
his or her registration status with the Office.
Furthermore, a person registered as a patent agent before January
1, 1956, who changed his or her registration status at any time to
registered patent attorney cannot revert after 1956 to being a patent
agent registered before January 1, 1956. If such a person does not
maintain his or her membership in good standing with the bar of the
highest court of a state, the person becomes an agent at that time and
is not entitled to continue to represent others before the Office in
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trademark matters. Although the Office does not believe any person who
was registered as a patent agent before January 1, 1956, has
continuously remained registered as an agent and continues at this time
to be so registered, the note at the end of § 11.14(a), which
grandfathers their authorization to practice before the Office in trademark
cases, has been maintained for the benefit of any such practitioners.
Comment 14: A comment urged that § 11.14(a) is inconsistent
with 5 U.S.C. 500(b), inasmuch as § 11.14(a) does not require
attorneys to apply for recognition to practice, whereas section 500(b)
can be construed as requiring an attorney to file with the Office a
written declaration setting forth the attorney's current qualification.
Response: Inasmuch as nothing in 5 U.S.C. 500(b) directs any agency
to require a written declaration setting forth an attorney's current
qualification, the lack of such a requirement in § 11.14(a) is
consistent with section 500(b). Except in the electronic filing of
documents in trademark matters, the Office does not require an attorney
to declare that he or she is currently qualified. If any change to the
practice should occur, the change would be set forth in Part 2 of the
Rules of Practice.
Comment 15: One comment sought clarification whether § 11.18(b)(1)
refers to "all disciplinary proceedings or only to those under section
11.32."
Response: The provisions of § 11.18(b)(1) are inclusive of all
disciplinary proceedings, including those instituted under § 11.32.
This is made clear by § 11.18(a), which provides in pertinent part,
that it is for "all documents filed in the Office in * * * other non-
patent matters, and all documents filed with a hearing officer in a
disciplinary proceeding." For example, documents filed in the Office
in "other non-patent matters" includes documents filed in disciplinary
actions under §§ 11.24 through 11.26, and appeals under 11.55 in a
disciplinary proceeding.
Comment 16: One comment recommended that § 11.18(b)(1) be
amended to exclude complainants from its purview, as complainants
should have immunity in disciplinary matters. The comment pointed out
that Rule 12 of the Model Rules of Lawyer Disciplinary Enforcement of
the American Bar Association provides for absolute immunity for members
of the agency, complainants and witnesses although in a context of
coordination with local law enforcement.
Response: The recommendation to provide complainants with immunity
has not been adopted. While the rationale for providing complainants
with immunity is appreciated, all persons filing written communications
with the Office, including complainants, are subject to the provisions
of 18 U.S.C. 1001, which provides, in pertinent part:
[W]hoever, in any matter within the jurisdiction of the
executive * * * branch of the Government of the United States,
knowingly and willfully - (1) falsifies, conceals, or covers up by
any trick, scheme, or device a material fact; (2) makes any
materially false, fictitious, or fraudulent statement or
representation; or (3) makes or uses any false writing or document
knowing the same to contain any materially false, fictitious, or
fraudulent statement or entry; shall be fined under this title,
imprisoned not more than 5 years.
The Office is without statutory authority to waive the foregoing
statutory provisions, even for complainants submitting a grievance.
Legislation granting immunity to complainants would first have to be
enacted into law before any regulation could be adopted applying the
law to complainants in the disciplinary process.
Comment 17: A comment suggested that the mandatory language in
§ 11.18(b), pertaining to "disciplinary proceeding" may conflict
with § 11.22(b), which provides that the OED Director may request
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that a grievant verify via affidavit information indicating possible
grounds for discipline.
Response: The mandatory language of § 11.18(b)(2) pertaining to
a "disciplinary proceeding" is not seen as conflicting with § 11.22(b),
which pertains to a grievance which may initiate an investigation. An
investigation and a disciplinary proceeding are distinct processes. An
investigation may be initiated when a grievance is received suggesting
possible grounds for discipline. See § 11.22(a). A disciplinary proceeding
is initiated generally after an investigation under § 11.22. See § 11.32.
A disciplinary proceeding also may be initiated in accordance with § 11.24,
pertaining to reciprocal discipline, and § 11.25(b), pertaining to
interim suspension and discipline based on conviction of committing a
serious crime.
Comment 18: One comment queried the meaning of the terms
"unnecessary delay" or "needless increase" in § 11.18(b)(2)(i),
and suggested that they be further defined. The comment suggested that
if the terms are directed to prosecution laches, such laches is
effectively diluted, if not eliminated, by the provisions in 35 U.S.C.
154 for a 20-year patent term. The comment also suggested that there
could be good and sufficient reasons for a delay, such as poverty and
that a practitioner's advice to a client to file an application to keep
the case alive should not be regarded as unnecessary delay.
Response: The suggestion that the terms be further defined has not
been adopted. The relevant language of § 11.18(b)(2)(i), "not
being presented for any improper purpose, such as to harass someone or
to cause unnecessary delay or needless increase in the cost of" is
taken from Rule 11 of the Federal Rules of Civil Procedure. Rule 11,
titled "Signing of Pleadings, Motions, and Other Papers;
Representations to Court; Sanctions," provides, in pertinent part,
"(b) Representations to Court. By presenting to the court (whether by
signing, filing, submitting, or later advocating) a pleading, written
motion, or other paper, an attorney or unrepresented party is
certifying that to the best of the person's knowledge, information, and
belief, formed after an inquiry reasonable under the circumstances, (1)
it is not being presented for any improper purpose, such as to harass
or to cause unnecessary delay or needless increase in the cost of
litigation." The case law under Rule 11 construing the terms
"unnecessary delay" or "needless increase" provides practitioners
with sufficient guidance for construing the use of the same terms in
§ 11.18(b)(1)(i). Contrary to the suggestion, the provisions of
§ 11.18(b)(1)(i) cover an array of different situations occurring
in both patent and trademark proceedings. For example, the provision
applies to: Third party filing a paper requesting withdrawal of an
applicant's previously published patent application from issue to
consider prior art; to a third party filing papers in an applicant's
patent application to assert that the third party owns the claimed
invention and discharging the practitioner engaged by the applicant to
prosecute the application; as well as to a third party filing a notice
of express abandonment in an applicant's patent or trademark
application. Applicants having legally sufficient reasons to properly
file continuing applications may do so in compliance with
§ 11.18(b)(1)(i).
Comment 19: Two comments noted that § 11.19(a) referenced "all
practitioners administratively suspended under § 11.11(b);" "all
practitioners inactivated under § 11.11(c);" and "[p]ractitioners
who have resigned under § 11.11(e)," but these sections were not
included in the Supplemental Notice of Proposed Rule making.
Response: While sections 11.11(b), 11.11(c) and 11.11(e) were
included in the Notice of Proposed Rule making published in 2004, these
sections have not been adopted at this time. Accordingly, reference to
these sections is deleted from § 11.19(a) at this time.
Instead of referring to practitioners inactivated under 11.11(c),
§ 11.19(a) refers to practitioners inactivated under § 10.11.
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Comment 20: One comment suggested that § 11.19(b) appears to
disclaim Federal pre-emption, that the comments make clear that the
authority of State or other local Bar Associations is not diminished,
and that § 11.19(b) is not necessarily inconsistent with that
authority.
Response: Contrary to the comment, nothing in § 11.19(b)
disclaims Federal preemption. As stated in § 11.1, "Nothing in
this part shall be construed to preempt the authority of each State to
regulate the practice of law, except to the extent necessary for the
Patent and Trademark Office to accomplish its Federal objectives." The
USPTO Director is entitled to and does regulate the conduct of patent
practitioners before the Office. The USPTO Director's authority is not
intended to and does preempt the authority of states to discipline
attorneys." Kroll v. Finnerty, 242 F.3d 1359 (C.A.Fed. 2001).
Comment 21: One comment agreed with the conviction of crimes as a
basis for discipline, but suggested that "serious crime" in
§ 11.19(b)(1) be further clarified in order to give the notice as to what
constitutes the scope of a "serious crime."
Response: The suggestion that "serious crime" be further
clarified has not been adopted. The definition of "serious crime" is
believed to provide the public with adequate notice of those crimes
that constitute a serious crime in the jurisdiction where the crime
occurs. The first part of the definition of "serious crime," "any
criminal offense classified as a felony under the laws of the United
States, any state or any foreign country where the crime occurred,"
informs the public that they must look to the definition of felony in
the jurisdiction where the crime occurred. The second part of the
definition, "any crime a necessary element of which, as determined by
the statutory or common law definition of such crime in the
jurisdiction where the crime occurred, includes interference with the
administration of justice, false swearing, misrepresentation, fraud,
willful failure to file income tax returns, deceit, bribery, extortion,
misappropriation, theft, or an attempt or a conspiracy or solicitation
of another to commit a `serious crime' " identifies for the public
that non-felony crimes involving one of eleven elements would
constitute a "serious crime." The definition is derived from the
definitions of "serious crime" included in Rule 19(C) of the American
Bar Association Model Rules for Lawyer Disciplinary Enforcement and
Rule I(B) of the American Bar Association Model Federal Rules of
Disciplinary Enforcement. It is appreciated that criminal conduct may
be a misdemeanor in one jurisdiction and a felony in another.
Nevertheless, practitioners should conduct themselves in all
jurisdictions to comport with the laws of the jurisdiction in which
they are located.
Comment 22: Several comments observed that the references to the
"imperative USPTO Rules of Professional Conduct," "§§ 11.100
et seq." or similar language in sections 11.19(b)(4), 11.19(c),
11.22(f)(2) and 11.25 have no meaning since the Office has not adopted
the rules it proposed in December 2003, and suggested that the
expression be changed to "USPTO Rules of Professional Conduct as set
forth in §§ 10.20 to 10.112 of Part 10 of this Subchapter"
until the new disciplinary rules are adopted.
Response: The suggestion to replace the reference to "imperative
USPTO Rules of Professional Conduct" until the rules are adopted has
been adopted, inasmuch as the disciplinary procedural rules are being
adopted before the adoption of USPTO Rules of Professional Conduct. The
current USPTO Code of Professional Responsibility in §§ 10.20
through 10.112 remains in effect until USPTO Rules of Professional
Conduct are adopted. As is made clear in 37 CFR 10.20, not all of the
rules of the USPTO Code of Professional Responsibility set forth in
§§10.20 to 10.112 of Part 10 are mandatory. Some of the rules
are aspirational. See 37 CFR 10.20(a). The Mandatory Disciplinary Rules
of the Code of Professional Responsibility are identified in 37 CFR
10.20(b). The mandatory rules identified in § 10.20(b) are those
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that are referenced in sections 11.19(b)(4), 11.19(c), 11.22(f)(2),
11.25(a), 11.34(b), 11.58(b)(2) and 11.58(f)(1)(ii) until the Rules of
Professional Conduct are adopted. In addition to replacing references
to "imperative USPTO Rules of Professional Conduct," references to
§ 11.100 et seq, §§11.100 through 11.806," and the like
will be replaced. Sections 11.19(b)(4), 11.19(c), 11.22(f)(2),
11.25(a), 11.34(b), 11.58(b)(2) and 11.58(f)(1)(ii) are revised to
refer to "Mandatory Disciplinary Rules identified in § 10.20(b)."
Section 10.20(b) identifies the Mandatory Disciplinary Rules as
§§10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77,
10.78, 10.84, 10.85, 10.87-10.89, 10.92, 10.93, 10.101-10.103, 10.111,
and 10.112 of Part 10 of this Subchapter.
Comment 23: One comment inquired whether § 11.19(b)(3) meant
that a disciplined practitioner who does not comply with proposed Rule
11.58(b) can again be disciplined upon seeking reinstatement because he
or she did not comply with Rule 11.58(b), and whether the same obtained
for a State Court that stipulates how the practitioner should wind up
his or her business after a disciplinary action. The comment suggested
that further clarification is necessary.
Response: The comment correctly recognized that a practitioner may
be disciplined for failure to comply with an order issued by a court or
a final decision issued by the USPTO Director disciplining the
practitioner. For example, a suspended practitioner who continues to
practice law in the jurisdiction where the practitioner has been
suspended is subject to additional disciplinary action for practicing
law with a suspended license.
Comment 24: One comment suggested that the language of § 11.20(a)(3)
be changed to afford the public with notice that both private and public
reprimand exist.
Response: The suggestion has been adopted by inserting "private or
public" before "reprimand".
Comment 25: One comment said the Office should not limit
restitution in § 11.20(b) to preclude an award of prejudgment
interest, and suggested that the phrase ", along with any prejudgment
interest" be added after "misappropriated client funds." Another
comment pointed out that Rule 10(A)(6) of the Model Rules of Lawyer
Disciplinary Enforcement (MRLDE) does not limit restitution.
Response: The suggestion has not been adopted. The restitution
contemplated by § 11.20(b) is limited to the fees a client paid to
a practitioner for the practitioner's legal services that were not
earned, and client's funds that were delivered to and misappropriated
by the practitioner. For example, where a client delivers funds to a
practitioner to cover the practitioner's fee for filing a patent
application as well as the Office's filing fee, and the practitioner
neglects to file the application, the practitioner may be required to
make restitution of funds for the filing fee and funds advanced for the
practitioner's fee. The MRLDE presumes a disciplinary structural scheme
operating under the aegis of the highest court in a state. The Office,
unlike the MRLDE, is an agency in a department of an executive branch
of the Federal Government. The Office operates within its statutory
authority granted by Congress. It lacks statutory authority to
resolve legal disputes over fees or funds, or to award prejudgment
interest. A client seeking prejudgment interest should consult with an
attorney of the client's choice regarding available legal remedies,
including enforcement of court-awarded judgments.
Comment 26: One comment suggested that § 11.21 be amended to
require the OED Director to provide a hearing before a hearing officer
prior to issuance of a warning. Two comments suggested that the
recipient of the warning be permitted to demand a hearing as a form of
appeal, particularly if any aspect of this is public or is deemed to
adversely reflect upon the practitioner's fitness as a lawyer. To
address the foregoing, the comments suggested additional language be
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added to § 11.23(b)(1) to provide a review process, or adoption of
Rule 10(A)(5) of the Model Rules of Lawyer Disciplinary Enforcement
(MRLDE) to require the practitioner's consent and the approval of the
chair of a hearing committee.
Response: The suggestions have not been adopted as they are
believed to be unnecessary. An avenue for review in a warning is
already afforded by the rules. See § 11.2(e), which provides for
filing a petition "to the USPTO Director to invoke the supervisory
authority of the USPTO Director in appropriate circumstances in
disciplinary matters." Section 11.21 clearly provides that the warning
is not public and is not a disciplinary action. Accordingly, no aspect
of the warning adversely reflects upon the practitioner's fitness
before the Office. Nevertheless, the review process afforded by
§ 11.2(e) provides adequate protection of a warned-practitioner's due
process rights.
Comment 27: One comment suggested that a warning under § 11.21
appears to be inconsistent with § 11.2(b)(4), which provides that,
unless the action to be taken as the result of an investigation is a
summary dismissal of the matter, the OED Director must give a
practitioner an opportunity to be heard or an opportunity to appeal
from the warning.
Response: The comment misconstrues the provisions of § 11.2(b)(4).
Section 11.2(b)(4) contemplates issuance of a summary dismissal without
an investigation. A summary dismissal would be appropriate where,
for example, a grievant seeks the intervention of the Office to collect
a debt a practitioner allegedly owes the grievant. Section 11.21
contemplates that the "OED Director may conclude an investigation with a
warning." Accordingly, the OED Director may not summarily dismiss a
grievance and issue a warning to the practitioner without an investigation.
If a grievant supplements the grievance with sufficient facts to
demonstrate that there are possible grounds for disciplinary action, an
investigation would then ensue with the possibility of being concluded with
a warning or other authorized disposition. If, following an investigation,
the OED Director concludes that there is insufficient evidence to believe a
disciplinary rule has been violated, but the investigated matter
provides the practitioner with an opportunity to ensure conformity with
the Office's disciplinary rules, the OED Director may issue a warning.
The warning is neither public nor a sanction. The investigation
provided the practitioner with an opportunity to be heard. A
practitioner dissatisfied with the warning may petition to invoke the
supervisory authority of the USPTO Director pursuant to § 11.2(e).
Comment 28: One comment suggested that § 11.22 provide for
operations as set forth in Rule 4(B)(6) (provide grievant notice of the
status of disciplinary proceedings at all stages of the proceedings,
copies of the same notices and orders the respondent receives as well
as copies of respondent's communications to the agency, except
information that is subject to another client's privilege); Rule
4(B)(13) (refer appropriate cases to an Alternatives to Discipline
Program pursuant to MRLDE Rule 11(G), to a central intake office, or to
any of the component agencies of the comprehensive system of lawyer
regulation established by MRLDE Rule 1); Rule 11(A) (evaluation of the
information received); and Rule 11(B)(3) (provide for review of
disciplinary counsel's recommended disposition other than a dismissal
or a referral to the Alternatives to Discipline Program shall be
reviewed by the chair of a hearing committee) of the ABA's Model Rules
of Lawyer Disciplinary Enforcement (MRLDE).
Response: The suggestion to provide grievants by rule with the
mechanisms and proceedings set forth in MRLDE Rules 1(B), 4(B)(6) and
(13), 11(A) and 11(B)(3) has not been adopted. To the extent
"disciplinary proceeding" in MRLDE Rule 1(B) contemplates
investigations or other proceedings covered by the Privacy Act, 5
U.S.C. 552a, protected records may not be disclosed unless the subject
of the record consents or one of twelve exceptions apply. The
exceptions do not enable the Office to provide a grievant with status
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information about investigations or proceedings, or to routinely
distribute copies of all communications the respondent receives from
and sends to the OED. One of the twelve exceptions permits protected
information to be released as a routine use to persons who can be
expected to provide information needed in connection with a grievance.
In accordance with the authorized routine use of information, OED may
provide a grievant with a copy of the respondent's communication to
obtain the grievant's input needed in connection with the grievance.
Regarding the suggestion to adopt MRLDE Rule 4(B)(13), the Office has
neither the resources nor means for creating an Alternatives to
Discipline Program or "component agencies" for lawyer regulation. In
appropriate circumstances, the Office may commend a receptive
practitioner to the same or similar programs operated by state bars or
other agencies in the state where the practitioner is located.
Regarding the suggestion to adopt MRLDE Rule 11(A), the OED Director
evaluates all information received regarding possible grounds for
discipline. If the person is not subject to the jurisdiction of the
Office, the matter is referred to the appropriate entity. If the
information is true and would not constitute misconduct or incapacity,
the matter is dismissed. If the practitioner is subject to the Office's
jurisdiction and the information alleges facts which, if true, would
constitute possible grounds for discipline, an investigation is
conducted. At the conclusion of the investigation, the matter is
evaluated and the OED Director may close the matter without taking
further action, issue a warning under § 11.21, settle the matter
under § 11.26, proceed with exclusion on consent in accordance with
§ 11.27, or pursue disciplinary action in accordance with § 11.32.
Regarding the suggestion to adopt MRLDE Rule 11(B)(3), a
recommendation by the OED Director to discipline or pursue a
disciplinary proceeding against a practitioner is subject to review.
For example, no disciplinary proceeding under § 11.34 can be
instituted without the Committee on Discipline finding probable cause
under § 11.32, and no settlement or exclusion on consent can occur
without the concurrence of the USPTO Director in accordance with §§ 11.26
and 11.27, respectively. Further, practitioners dissatisfied with a
warning issued by the OED Director under § 11.21 may use the provisions of
§ 11.2(e) to petition to invoke the supervisory authority of the USPTO
Director in disciplinary matters.
Comment 29: One comment suggested that § 11.22(d) be amended to
provide that the evidence the OED Director considers includes evidence
indicating that a grievable offense did not occur.
Response: It is unnecessary to mention in § 11.22 that the OED
Director considers evidence tending to negate a finding that a
violation occurred. The OED Director necessarily considers such
evidence. Evidence tending to negate the occurrence of a violation is
considered, for example, when an investigation is closed without a
warning or taking disciplinary action as in § 11.22(i)(1). The OED
Director, when terminating an investigation under §§ 11.22(i)(2),
11.22(i)(3) and 11.22(i)(4), also may consider such evidence.
Comment 30: One comment observed that § 11.22(f)(1) would allow
the OED Director to request financial books and records, including the
nonpublic and proprietary records of a corporation or law firm, as well
as attorney-client privileged information, and recommended limiting
document inspection to an examination of escrow accounts and trust
accounts for compliance with proposed Rule 11.115(a).
Response: The suggestion to limit the rule to permitting inspection
of only escrow and trust accounts has not been adopted. Records
required to be kept by law are "public records" outside the scope of
the Fifth Amendment protection. In Shapiro v. United States, 335 U.S.
1, 68 S.Ct. 1375, 92 L.Ed. 1787 (1948), the court concluded that
records and documents-sales invoices, sales books, ledgers, inventory
records, contracts and sales records - required to be kept by valid
regulations of the Office of Price Administration - could be subpoenaed
by the Price Administrator without violating the individual's right
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against self-incrimination. The required records doctrine has been
applied in numerous and various circumstances, including records an
attorney is required to maintain pertaining to client funds. See, for
example, Andresen v. Bar Association of Montgomery County, 305 A.2d 845
(Md. 1973), cert denied, 414 U.S. 1065, 94 S.Ct. 572, 38 L.Ed.2d 470
(1973). Under § 10.112(c)(3), a practitioner is required to
"maintain complete records of all funds, securities and other
properties of a client coming into the possession of the
practitioner." Regardless of the repository of client property, these
are the financial records anticipated for review if issues arise as to
the preservation and proper handling of client property.
Comment 31: One comment suggested that § 11.22(f) be amended to
provide safeguards to ensure that information in disciplinary
investigations will be kept secure and confidential, free from requests
from other government agencies or from the public under the Freedom of
Information Act.
Response: The suggestion to amend § 11.22(f) to provide
safeguards to ensure the security and confidentiality of the received
information has not been adopted as it is believed to be unnecessary.
Section 11.22 need not provide safeguards because information collected
in an investigation is placed into a Privacy Act system of records, in
this case COMMERCE/PAT-TM-2, Complaints, Investigations and
Disciplinary Proceedings Relating to Registered Patent Attorneys and
Agents, published at 70 FR 69522. Further the Privacy Act of 1974, 5
U.S.C. 552a, provides numerous protections for those records. Regarding
the requests for release of these records under the Freedom of
Information Act (FOIA), Privacy Act records may not be disclosed unless
one of the subject parties of the record consents or one of twelve
exceptions apply. One of the twelve exceptions provides for information
that is releasable under FOIA. This is a statutory exception that
cannot be altered by rule making. Generally, the information is
protected from disclosure by FOIA exemptions 5 and 6. See 5 U.S.C.
552(b)(5) and (6), respectively. Thus, the collected information is
subject to the numerous protections of the Privacy Act, and will not be
released to FOIA requests as provided for under current Federal law.
Comment 32: One comment, pertaining to § 11.23, objected to the
Committee on Discipline drawing any adverse inference when finding
probable cause against a practitioner if the inference is based solely
upon that practitioner's refusal to produce information in response to
a request for information by the OED Director. The comment addressed a
statement in the "Discussion of Specific Rules" in the SNPR about the
ability of the Committee to "draw an adverse inference from the
practitioner's refusal to provide information or records in determining
whether probable cause exists to believe a disciplinary rule has been
violated." 72 FR 9200.
Response: While we appreciate an objection to a finding of probable
cause if it is based solely on a practitioner's refusal to produce
information, the "Discussion of Specific Rules" did not state that
such a finding is justified where it is based "solely" on refusal to
produce information in response to a request for information. During an
investigation, a practitioner is given the opportunity to provide
answers to a reasonable inquiry, and where appropriate, produce records
that are not protected by the attorney-client privilege or other
protections. When the practitioner refuses to answer or provide
unprivileged information, the OED Director still has the burden of
providing the members of the Committee panel with sufficient evidence
to determine that there is probable cause to bring charges that
practitioner engaged in conduct involving grounds for discipline. See
§ 11.23(b)(1). When the OED Director provides such sufficient,
uncontested evidence, the Committee panel may properly find probable
cause relying on the evidence presented by the OED Director, inferences
drawn from that evidence, as well as adverse inferences drawn from the
practitioner's refusal to answer the inquiry or produce unprivileged
information. A practitioner's reliance on the Fifth Amendment to not
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answer or provide information may not preclude such inferences. Baxter
v. Palmigiano, 425 U.S. 308, 318, 96 S.Ct. 1551, 1558, 47 L.Ed.2d 810
(1976) ("[T]he Fifth Amendment does not forbid adverse inferences
against parties to civil actions when they refuse to testify in
response to probative evidence offered against them."); AGC, Maryland
v. DiCicco, 802 A.2d 1014 (Md. 2002); In re Henley, 518 S.E.2d 418
(Ga. 1999).
Comment 33: Two comments expressed concern with regard to
§ 11.22(f)(2) that a client may waive the attorney-client privilege,
as well as related protections by disclosing information to the OED
Director. One comment suggested adding the following sentence to
§ 11.22(f)(2): "The OED Director shall not request information or
evidence from a non-grieving client absent either written consent of
the practitioner or a signed acknowledgement from the non-grieving
client acknowledging that complying with the request could jeopardize
the privileged or confidential nature of information disclosed to the
OED Director as well as other information on the same subject." Both
comments suggested that in any request of a non-grieving client to
provide information to the Office, the request be accompanied by a
notice clearly warning that disclosure to the Office could waive any
attorney-client privilege or other protection.
Response: The suggestion in the comment to add a sentence to
§ 11.22(f)(2) requiring a signed acknowledgement of the non-grieving
client has not been adopted. Requiring the OED Director to obtain the
written consent of the client before requesting information would not
only make investigations inefficient, but also unduly complicate an
investigation. By having to first obtain the non-grieving client's
written consent, the process of requesting and obtaining the consent
would be time-consuming. It also provides a practitioner with an
opportunity to communicate and dissuade the client from cooperating with
the investigation, and otherwise obstruct the investigation. Requesting
information and documents from practitioners, as well as from non-grieving
clients is intended to enable the OED Director, and ultimately the Office,
to efficiently and effectively ascertain whether grounds for disciplining
a practitioner exist. The OED Director, when requesting information from
complaining clients of lawyers or registered patent agents, has frequently
informed the clients that providing the requested information may waive
attorney-client privilege or other protection. The Office will expand
the practice to any occasion when the OED Director requests a non-
grieving client to provide information by accompanying the request with
a notice clearly warning that disclosure to the Office could waive any
attorney-client privilege or other protection.
Comment 34: A comment suggested, presumably with regard to § 11.22,
that provision be made for an appeals mechanism, such as Rule 31
of the Model Rules of Lawyer Disciplinary Enforcement, whereby a
grievant who is dissatisfied with the disposition of a matter by the
OED Director may seek review, within a specified period, by an
authority which may approve, modify or disapprove the dismissal, or
direct that the matter be investigated by the OED Director.
Response: It is unnecessary to provide an appeal mechanism limited
to enabling a grievant, dissatisfied with the disposition of a matter,
to obtain review of the matter. The provisions of § 11.2(e) for a
petition to invoke the supervisory authority of the USPTO Director in
disciplinary matters provide the suggested mechanism without addition
of another rule. Grievants will be informed of the mechanism under
§ 11.2(e) whereby they may obtain review of the disposition of the
matter they grieve.
Comment 35: One comment suggested that the Office should avoid
devotion of time and effort to investigating regarding "importune
grievances" by amending § 11.22(h)(2) to add ", such as matters
arising in proceedings in Federal or state courts of original or
appellate jurisdiction or other tribunals not within the Office."
Response: The suggestion to add language to § 11.22(h)(2) to
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provide that "matters arising in proceedings in Federal or state
courts of original or appellate jurisdiction or other tribunals [are]
not within the Office" has not been adopted. Neither the grounds for
discipline, nor the jurisdiction of the Office to discipline
practitioners is limited to conduct occurring "within the Office."
The grounds for discipline include conduct that may involve proceedings
in Federal or state courts or other tribunals, such as conviction of a
serious crime, discipline on ethical grounds imposed in another
jurisdiction, disciplinary disqualification from participating in or
appearing before any Federal program or agency, and failure to comply
with any order of a court disciplining the practitioner.
Comment 36: One comment opined that § 11.22(h)(4) can be read
to unduly limit the circumstances under which the OED Director can
close an investigation, and suggested that it be broadened by revising
the section to read as follows: "There is insufficient clear and
convincing evidence for a reasonable fact finder to conclude that there
is probable cause to believe that grounds exist for discipline."
Response: The suggestion to add language to § 11.22(h)(4) to
provide that there must be "insufficient clear and convincing
evidence" has not been adopted. The suggested language actually limits
the circumstances under which the OED Director, with the concurrence of
the Committee on Discipline, may bring a disciplinary action by raising
the level of proof from "probable cause" to "clear and convincing."
The burden of proof before a grand jury to initiate a criminal
proceeding is "probable cause," not "clear and convincing evidence."
Moreover, there is nothing in the language of § 11.22(h)(4) that should
be understood or construed as permitting the "clear and convincing
evidence" standard to be read into this section.
Comment 37: One comment recommended that the panels of the
Committee on Discipline referenced in § 11.23(a) not exceed three
members, and, citing the McKay Report,(1) that each panel have a
majority of non-Office employee members, and that no panel should
function without one attorney practitioner member and one registered
patent agent member. Another comment suggested that one member of the
Committee be required to be a member of the public with experience
representing clients before the Office.
Response: The recommendation that the Committee on Discipline
panels not exceed three members is consistent with the rule as
proposed, and no change to the last sentence of § 11.23(a) appears
necessary.
The suggestions to require one or more non-Office employees or a
member of the public to be on the Committee on Discipline have not been
adopted as they are highly impractical for several reasons. First,
adjudication of disciplinary proceedings is considered to be an
inherently governmental function and the Federal Government may not
contract for inherently governmental functions. See generally Federal
Acquisition Regulation Part 7.5, and specifically § 7.503(c)(2).
Further, there must be a mechanism to compensate those serving on the
panel. It is impermissible to contract to pay the non-government
employee panel members. In addition, even if it were permissible to add
panel members by contract, such an arrangement would necessitate
approval of a charter for the arrangement under the Federal Advisory
Committee Act. The Federal Advisory Committee Act prohibits a
collaborative group that is established or utilized by the government
to provide advice or recommendations to an agency unless a charter is
approved by the General Services Administration. See 5 U.S.C. App 2
section 1 et seq. Even if a charter is approved, the non-government
employee panel members may provide only advice or recommendations; they
may not adjudicate whether there is probable cause to bring disciplinary
action against a practitioner.
An alternative approach to paying the members would be to make the
private practitioners Special Government Employees (SGEs) during their
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period of service. See 18 U.S.C. 202. As SGEs, the practitioners would
be Government employees during their period of service, and the Federal
Advisory Committee Act would no longer apply. The Committee panels
would then be groups comprised solely of Government employees, which
are not subject to the Federal Advisory Committee Act. See 41 CFR 102-
3.40(h). Appointment of private practitioners as SGEs would require a
Federal statute creating such authority. For example, Patent Public
Advisory Committee members may be appointed as SGEs under the authority
of 35 U.S.C. 5. Currently the Office has no such statutory authority.
Again, the non-government employee panel members may provide only advice
or recommendations; they may not adjudicate whether there is probable
cause to bring disciplinary action against a practitioner.
However, this solution has a significant drawback. Private
practitioners would be subject to many of the ethical rules of
Government employees during their periods of service. See generally
Summary of Government Ethics Rules for SGEs, Justice Management
Division, February 6, 2006. Practitioners serving for greater than 60
days in the proceedings 365 days would be prohibited from receiving
fees for representing anyone with a matter pending before the
Government, and from acting as an attorney or agent for a party
pursuing a claim, such as a patent application, before the Government.
See 18 U.S.C. 203 and 205, respectively. While SGEs may serve up to 130
days in any 365-day period, the restrictions of 18 U.S.C. 203 and 205
are triggered at the 60-day point. Practitioners would be effectively
barred from patent and trademark work by this provision. Additionally,
the arrangement is not beneficial to the Office. If members of the
panel could only serve 60 days or less in a year, the Office would have
to find and appoint members frequently, and panel members would not
develop the expertise that comes with lengthier service.
Second, including panel members from private practice would be
extremely difficult due to screening for conflicts of interest. For
example, if practitioner Smith is subject to review by a Committee
panel, it is necessary to screen for conflicts between Smith and the
panel members, and disclosure of the practitioner's identity of the
panel members from private practice to ascertain such conflicts could
violate the Privacy Act, as discussed below. Further, it would be
necessary to ensure that panel members from private practice are
impartial, for example, that they do not represent clients with
interests adverse to Smith's clients. The Office does not know, and
cannot compel Smith to disclose, the names of all of Smith's clients to
facilitate a conflicts check of panel members from private practice.
Even if Smith's clients were known, this could result in review of
lists involving hundreds of clients. Using Office employees as panel
members avoids this significant workload.
Third, while the McKay Report does urge that disciplinary officials
be independent, the report does not specifically urge that those who
administer discipline be non-government employees. Rather, the
recommendation for independence of disciplinary officials rests in
distinguishing judicial regulation from self-regulation, not
distinguishing employees from non-employees. See the McKay Report at
recommendations 1, 5, and 6. The two primary reasons cited by the McKay
Report are one, that the disciplinary process should be directed solely
by disciplinary policy and not influenced by the politics of bar
associations, and two, that the process be free from even the
appearance of conflicts of interest or impropriety. See the McKay
Report, introduction to recommendations 5 and 6. Neither of these
factors suggests non-government employees have greater independence
than employees. Further, the McKay Report is focused on judicial
regulation of disciplinary systems to avoid self-regulation by state
bars, whereas attorneys and agents practicing before a Federal
administrative agency are regulated by that agency.
The McKay Report criticizes self-regulation of the legal
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profession. Including private practitioners as members of the Office's
Committee on Discipline adds an element of self-regulation. The
practitioners, who could only serve a limited number of days per year,
would remain a part of private practice, and would have less
independence than the full-time employees of the Office.
In addition to the foregoing, release of information regarding an
investigation to a member of the public on a panel would be
inconsistent with the Privacy Act, 5 U.S.C. 552a. There are twelve
exceptions under the Freedom of Information Act whereby information may
be released with authorization. To the extent the suggestion
contemplates attorneys and patent agents employed by other Government
agencies, implementation would be operationally impractical. In view of
the comments, the Office also considered and rejected having one or
more members of the public serving in an advisory role to the panels as
the panels consider whether there is probable cause. The Office
appreciates the benefits that could accrue from including members of
the public on the panels, including an increased credibility of the
disciplinary process in the eyes of the public. There are a number of
reasons the suggestions are not feasible. As already noted, non-
employees may not make inherently governmental decisions, such as
finding probable cause to bring disciplinary proceedings thereby
authorizing the proceedings to be initiated. Disclosure of the
grievances, investigation files and deliberations to members of the
public is not authorized as a routine use of the system of records
under which these documents are maintained, and is inconsistent with
the Privacy Act. Further, no practical or feasible means is apparent or
suggested for adequately screening the public for conflicts of interest
with the practitioner and the practitioner's clients before disclosing
records or information to the member of the public. The Office does not
know all the clients of a practitioner and the members of the public,
or even prior relationships between the practitioner and member of the
public. Therefore, the Office could not ascertain the existence of
potential or actual conflicts without obtaining the information
voluntarily from each party, which is unlikely to occur. Therefore
requiring a member of the public to be on each panel is neither legally
nor realistically possible. The Office is considering establishing an
advisory committee for the OED Director to provide advice regarding
enrollment and disciplinary matters and will seek public input into the
formation and role of such a committee.
Comment 38: One comment suggested that language be inserted in
§ 11.23 to provide that a complaint should not be approved unless
sufficient probable cause exists for a fact finder to conclude "by
clear and convincing evidence" that a violation has occurred.
Response: The suggestion to add "by clear and convincing
evidence" to § 11.23 has not been adopted. The Office has used,
and continues to use, a probable cause standard to initiate a
disciplinary action. The "probable cause" standard differs from, and
is not inclusive of, the "clear and convincing evidence" standard. A
complaint is approved only after the Committee on Discipline,
independent of the OED Director, reviews the record and information
provided by the OED Director. A disciplinary proceeding is instituted
under § 11.34 when the OED Director files a complaint, and the OED
Director thereafter has the burden of proving the case against a
practitioner by clear and convincing evidence. Use of the probable
cause standard, as opposed to a "clear and convincing evidence"
standard to initiate a disciplinary proceeding is appropriate. The
Office, like the states and the District of Columbia, complies with due
process standards applicable to administrative enforcement proceedings.
All or most of the procedures specified in the ABA's Model Rules for
Lawyer Disciplinary Enforcement, which were devised in light of
applicable due process and similar constraints, have been followed
by many states. Under those rules a screening body, independent of the
disciplinary counsel, determines whether probable cause exists
warranting formal charges. See Restatement (Third) of the Law Governing
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Lawyers Current through August 2007, Chapter 1, Regulation Of The Legal
Profession, Topic 2, Process Of Professional Regulation, Title C,
Professional Discipline Introductory Note. Probable cause is sufficient
to institute civil proceedings. See Professional Real Estate Investors,
Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49, 63, 113 S.Ct.
1920, 1929 (1993) ("Probable cause to institute civil proceedings
requires no more than a `reasonabl[e] belie[f]' that there is a chance
that [a] claim may be held valid upon adjudication" quoting Hubbard v.
Beatty & Hyde, Inc., 178 N.E.2d 485, 488 (Mass. 1961)). A probable
cause determination is not a constitutional prerequisite to a charging
decision in a criminal matter. Gerstein v. Pugh, 420 U.S. 103, 123, 95
S.Ct. 854, 868 (1974). Therefore, probable cause is an appropriate
standard for the Office to use to initiate disciplinary proceedings.
Comment 39: One comment suggested with regard to § 11.23(b)
that the OED Director be required to present to the Committee on
Discipline evidence that tends to negate the conclusion that a
disciplinary violation occurred by inserting the phrase "including
evidence that tends to negate the conclusion that a violation has
occurred."
Response: The suggestion to insert the phrase "including evidence
that tends to negate the conclusion that a violation has occurred"
into § 11.23(b)(1) has not been adopted. The Office agrees and
follows the practice suggested by the comment. That is, the
investigation file is available to the Committee as it considers all
the available evidence. It long has been the OED Director's practice to
make available to the Committee the entire investigation file,
including every statement and document the practitioner has presented
to explain his or her conduct. Thus, the Committee has the opportunity
to consider evidence negating the conclusion that a disciplinary
violation occurred and the insertion of the phrase is unnecessary.
Comment 40: One comment recommended that the provisions of § 11.24
be expanded to permit reciprocal disciplinary proceedings to also
be initiated upon notice that a practitioner has been subject to public
censure or public reprimand, probation, or placed on disability
inactive status by a state or by a Federal court.
Response: The recommendation to expand reciprocal disciplinary
procedures to circumstances when a practitioner has been subjected to
public censure or public reprimand, probation, or placed on disability
inactive status has been adopted in part. The phrase "publicly
censured, publicly reprimanded, subjected to probation," has been
inserted in the first sentence of § 11.24(a) after "being" (first
occurrence) and before "disbarred." The same or similar language has
been inserted into the third and fourth sentences of § 11.24(a), as
well as in sections 11.24(b), 11.24(b)(1), 11.24(b)(3), 11.24(c),
11.24(d), 11.24(d)(1)(iii), 11.24(d)(1)(iv), 11.24(e), and 11.24(f) to
enable the sections to be consistent in scope and application.
The recommendation to include practitioners placed on disability
inactive status by a state or by a Federal court has not been adopted.
Typically, states provide that where a lawyer has been judicially
declared incompetent or committed to a mental hospital after a judicial
hearing, or where a lawyer has been placed by court order under
guardianship or conservatorship, or where a lawyer has been transferred
to disability inactive status in another jurisdiction, the state's
highest court, upon proper proof of the fact, is authorized to enter an
order transferring the lawyer to disability inactive status. A copy of
the order must be served, in the manner the court may direct, upon the
lawyer, his or her guardian or conservator, and the director of the
institution to which the lawyer is committed. In some jurisdictions,
the court suspends the lawyer instead of transferring the lawyer to
disability inactive status. While the nature of the proceeding is
protective of the public, in no sense is the proceeding disciplinary in
nature. Accordingly, it would be inappropriate to include a court's
placement of a practitioner on disability inactive status in a
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reciprocal disciplinary rule.
The Office does share the concern implicit in the comment that a
practitioner placed on disability inactive status may not be competent
to represent others before the Office. Therefore, a practitioner who
has been suspended or placed on disability inactive status in another
jurisdiction should not continue to practice before the Office unless
and until the practitioner is restored to active status in the
jurisdiction where the practitioner first obtained disability inactive
status.
Comment 41: Several comments suggested that the scope of crime
required by the first sentence of § 11.25(a) to be reported is too
broad. One comment queried whether particular conduct, such as jay
walking and traffic offenses, would be included. One comment suggested
that the administrative burden of requiring practitioners to report and
the OED Director to process crimes as trivial as traffic violations
dictates that a notification requirement encompassing a narrower scope
of convictions should be adopted, and recommended adopting a
notification rule requiring notification of "serious crimes"
excluding "misdemeanor traffic offenses or traffic ordinance
violations, not including the use of alcohol or drugs."
Response: The recommendation to narrow the scope of crimes
reportable upon conviction has not been adopted. The definition of
crime in § 11.1 provides the public with notice of the criminal
conduct that must be reported to the OED Director upon conviction. The
burdens on practitioners and the OED Director are reasonable. The
Office, unlike state courts that adopt disciplinary procedure rules,
cannot direct court clerks, judges or prosecuting attorneys to report
the criminal conviction of an attorney or registered patent agent to
the Office. A number of jurisdictions require attorneys to self-report
that they have been found guilty of a crime or plead guilty to a
criminal charge. For example, see Rule IX, Section 10(a) of the rules
governing the District of Columbia Bar. The scope of reportable crimes
in the first sentence of § 11.25(a) should be broad and expansive,
as it is simply information that the OED Director should have available
in the OED Director's continuing responsibility to oversee the good
moral character of a practitioner and fitness in other respects
necessary to continue to have the privilege to continue in the practice
before the Office. If the crime is not a "serious crime," the OED
Director will process the matter in the same manner as any other
information coming to the attention of OED.
Comment 42: One comment suggested, with regard to § 11.25, that
a "serious crime" violating some Federal or State law includes all
"crimes" because § 11.1 defines "crime" as including "any
offense declared to be a felony by Federal or State law" and a
violation of foreign law is only a "serious crime" and never a
"crime." The comment also suggested that if any felony is a "serious
crime," the reporting requirement may be too broad and
administratively burdensome, and recommended limiting the reporting
requirement to "crimes involving moral turpitude," deleting the
definition of "serious crimes," and including violations of foreign laws
as "crimes."
Response: The suggestions regarding "serious crime" have not been
adopted. While a "criminal offense classified as a felony under the
laws of the United States, or any state * * * where the crime
occurred" is, by definition in § 11.1, a "serious crime," all
crimes are not serious crimes. For example, numerous criminal offenses
under the laws of the United States and states are misdemeanors, not
felonies. Only certain types of misdemeanors may qualify as a "serious
crime." By definition, a misdemeanor is a serious crime only if a
necessary element of the crime "includes interference with the
administration of justice, false swearing, misrepresentation, fraud,
willful failure to file income tax returns, deceit, bribery, extortion,
misappropriation, theft, or an attempt or a conspiracy or solicitation
of another to commit a `serious crime'." See § 11.1, "Serious
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Crime." As not all misdemeanors involve any of the foregoing elements,
not all misdemeanors can be a serious crime, and not every crime that
violates some Federal or State law is a "serious crime." Likewise, a
violation of foreign law is not necessarily a "serious crime." For
example, to be a serious crime, the foreign law violated must be a
criminal law that is classified as a felony in the foreign country.
The second sentence of § 11.25(a) distinguishes between "serious
crimes," as the triggering event for Reciprocal Discipline, and
"crime," as it refers to the self-reporting aspect of the first
sentence of § 11.25(a). The definition of "serious crime" is
necessarily a higher standard than the definition of "crime." The
higher threshold for "serious crime" conduct is beyond that for which
there is a continuing presumption of fitness. It follows that the
reporting requirement is neither too broad nor administratively
burdensome. Conviction of a "serious crime" overcomes and thereby
triggers an immediate or expedited review of such conduct to protect
the public, the profession and the Office from unfit and unacceptable
practitioners by the imposition of discipline in an expedited fashion.
Unlike "moral turpitude," the definition of serious crime identifies,
by an objective standard, crimes for which interim suspension is
appropriate.
Comment 43: One comment took issue with § 11.25(c) providing a
practitioner with forty days to challenge the appropriateness of the
entry of interim suspension where the practitioner has been convicted
of a serious crime. The comment pointed out that given the
conclusiveness of the criminal conviction under § 11.25(c), a long
response time is not warranted in these cases because delay in these
proceedings risks harm to the public.
Response: The suggestion has been adopted to shorten the time a
practitioner subject to interim suspension proceedings for conviction
of a serious crime has to challenge the appropriateness of the entry of
such a suspension. The Office concurs that a long response time is not
warranted in these cases because delay in these proceedings risks harm
to the public. Inasmuch as some registered practitioners are located
abroad, adequate time must be provided to receive and reply to the
notice. Accordingly, the reply period has been changed in
§ 11.25(b)(2)(iii) to thirty days, which is the same time provided for
responding to a complaint in a disciplinary proceeding.
Comment 44: One comment noted a typographical error in the first
sentence of § 11.26 when reference should have been made to § 11.34
instead of § 11.24.
Response: The suggestion to change the reference in the first
sentence of § 11.26 from § 11.24 to § 11.34 has been adopted.
Comment 45: One comment recommended that § 11.34 require that
the complaint list the specific PTO Rule(s) allegedly violated by
adding the phrase "including citation to every imperative USPTO Rules
of Professional Conduct allegedly violated" to the end of § 11.34(a)(2).
Response: The recommendation to require the complaint to list the
specific Office Rules of Professional Conduct that are alleged to be
violated has not been adopted, as it is unnecessary. Listing the rules
allegedly violated is provided for in § 11.34(b), which requires
the complaint "fairly informs the respondent of any grounds for
discipline, and where applicable, the Mandatory Disciplinary Rules
identified in § 10.20(b) of Part 10 of this Subsection that form
the basis for the disciplinary proceeding." It is, and has long been,
the practice to specifically list the Office rules allegedly violated
by the practitioner's conduct.
Comment 46: Two comments urged the time provided in § 11.36(a)
for answering a complaint should be measured from the date the
complaint is served on the respondent, rather than the date it is filed
to assure that respondents have an appropriate time within which to
answer a complaint.
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Response: The suggestion to revise the time for filing an answer to
be measured from the date the complaint is served has not been adopted.
The current procedure used in disciplinary proceedings, measuring the
time for filing an answer from the date the complaint is filed, is the
same procedure used for prosecution of patent and trademark matters.
Practitioners are familiar with the procedure, and practitioners may
and do obtain extensions of time to file an answer. No difficulties
have arisen with its operation in disciplinary matters. The current
procedure provides all parties with a date certain from which to
measure when a response is due. Inasmuch as service of the complaint
may be by mail, and not all complaint recipients sign for delivered
mail, changing the period to be measured from the date of service would
necessitate elimination of service by first class mail. It has not been
apparent that any benefit currently unavailable would be obtained by
the change.
Comment 47: Two comments urged, presumably with regard to § 11.39,
that the USPTO Director adopt a policy of always appointing
administrative law judges as hearing officers to maintain the requisite
independence of the process.
Response: The Office appreciates and understands the need for the
hearing officer to be independent. The Patent Statute provides that the
USPTO "Director shall have the discretion to designate any attorney
who is an officer or employee of the United States Patent and Trademark
Office to conduct the hearing required by this section." See 35 U.S.C.
32. Accordingly, the provisions of § 11.39(a) have been written to
be consistent with the statute. The USPTO's current practice is to use
administrative law judges from EPA as the hearing officer in
disciplinary matters; however, the statute does not require
administrative law judges from outside the agency be employed.
Furthermore, a hearing officer cannot be subject to first level or
second level supervision by either the USPTO Director or OED Director,
or his or her designee. See § 11.39(b). Thus, where an employee of
the Office is appointed under 35 U.S.C. 32 to conduct a disciplinary
proceeding, the employee cannot be subject to first level or second
level supervision by either the USPTO Director or OED Director, or his
or her designee.
Comment 48: One comment suggested amending § 11.43 to provide
for "motions, including all prehearing motions commonly filed under
the Federal Rules of Civil Procedure, shall be filed with the
administrative law judge."
Response: The suggestion presumably pertains to the first sentence
of § 11.43, which provided that "[m]otions shall be filed with the
hearing officer." The suggestion has been adopted to the extent that the
phrase ", including all prehearing motions commonly filed under the Federal
Rules of Civil Procedure, shall" has been substituted for "may" in the
first sentence of § 11.43. Inasmuch as this section, as well as sections
11.39, 11.41, and other sections, reference a hearing officer, the
suggestion to limit the applicability of this section to an administrative
law judge has not been accepted.
Comment 49: One comment urged that § 11.44 be amended to
require an oral hearing before the hearing officer should the
practitioner request one in writing. The comment suggested that a
practitioner should have, and probably constitutionally does have, an
absolute right to have a hearing to confront witnesses and present
evidence.
Response: The comment that the hearing officer not have authority
to overrule a practitioner's request for an oral hearing is
unpersuasive. The argument presumes that there are genuine issues of
material fact. Under § 11.44, an oral hearing would occur where
there is a genuine issue of material fact. However, an oral hearing
would be unnecessary where, for example, there is a settlement, or the
practitioner fails to file an answer and the hearing officer enters an
order default judgment. Similarly, an oral hearing is unnecessary if a
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summary judgment is appropriate and entered. "The case law in this
Circuit is clear that an agency is not required to hold an evidentiary
hearing where it can serve absolutely no purpose. In such a
circumstance, denial of a hearing may be proper even though the statute
provides for adjudicatory proceedings. The agency, however, carries a
heavy burden of persuasion." Indep. Bankers Assoc. of Georgia v. Bd.
Of Governors of the Fed. Reserve System, 516, F.2d 1206, 1120 (D.C.
Cir. 1975). See also Altenheim German Home v. Turnock, 902 F.2d 582,
585 (7th Cir. 1990) (there is no right to an evidentiary hearing unless
there is a genuine issue of material fact); Consolidated Oil & Gas. v.
FERC, 806 F.2d 275, 279 (DC Cir. 1986) (quoting Municipal Light Boards
v. FPC, 450 F.2d 1341, 1345 (D.C. Cir. 1971), cert. denied, 405 U.S.
989, 92 S.Ct. 1251, 31 L.Ed. 455 (1972)) ("An agency may dispose of a
controversy on the pleadings without an evidentiary hearing when the
opposing presentations reveal that no dispute of fact is involved
* * *"); Puerto Rico Aqueduct Sewer Auth. v. USEPA, 35 F.3d 600, 608 (1st
Cir. 1994) (quoting John D. Companos & Sons, Inc. v. FDA, 854 F.2d 510,
552 (D.C. Cir. 1988)) "Summary judgment may be entered not only for
failure to comply with precise regulations, but also `on the basis of
manifest noncompliance with general statutory or regulatory provisions
* * *'". Clearly, a practitioner who has entered into a settlement,
failed to answer a properly served complaint, or failed to raise a
genuine dispute of material facts should not have an absolute right to
an oral hearing to confront witnesses and present evidence.
Comment 50: One comment stated that § 11.44(c) conflicts with
long-standing policy of the American Bar Association that disciplinary
proceedings be public. The policy is set forth in Rule 16(C) of the
Model Rules of Lawyer Disciplinary Enforcement (MRLDE). Section
11.44(c) proposed that disciplinary proceedings, in effect, be public
at the election of the respondent. The comment pointed out that
mistrust that can develop when a governmental function is not
functioning openly - even when it is functioning well. The comment
acknowledged the need for confidentiality of matters prior to the
filing and service of a petition for discipline to protect the
respondent from publicity regarding unfounded accusations, that by
keeping the investigative process confidential, the Office ensures that
allegations of misconduct will continue to be thoroughly investigated
and scrutinized, and that a case will not proceed if the allegations
are frivolous or there is a lack of sufficient evidence of wrongdoing
to warrant the initiation of disciplinary proceedings under §§ 11.32
and 11.34. The comment further stated that once a finding of
probable cause has been made, there is no longer a danger that the
allegations against the practitioner are frivolous. The comment also
recommended the addition of provisions providing for the imposition of
protective orders where necessary set forth in Rule 16(E) of the MRLDE
to address valid concerns regarding confidential and privileged
information.
Response: The recommendation to adopt the provisions of Rules 16(C)
and 16(E) of the MRLDE has not been adopted. The recommended change is
not a logical extension of the rule proposed in Supplemental Notice of
Proposed Rule Making on February 28, 2007, in the Federal Register (72
FR 9196). However, the recommendation will be further considered and
public comment solicited to address a rule that would adopt the
provisions of Rules 16(C) and 16(E) of the MRLDE.
Comment 51: Two comments suggested that the hearing officer's
authority to exclude evidence under § 11.50(a) should be expanded
from excluding "irrelevant, immaterial, or unduly repetitious"
evidence to authority to exclude evidence if its "probative value is
substantially outweighed by the danger of unfair prejudice, confusion
of the issues, or by considerations of undue delay, waste of time, or
needless presentation of cumulative evidence." This is the standard
that applies under Fed. R. Evid. 403. One comment suggested that the
Federal Rules of Evidence should apply, given the final appeal to the
U.S. District Court for the District of Columbia. Another comment
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suggested that the Office follow Rule 18 of the American Bar
Association's Model Rules of Lawyer Disciplinary Enforcement to provide
for the applicability of state rules of evidence in disciplinary
proceedings, except as otherwise provided in the Office rules.
Response: The suggestions to modify § 11.50 have not been
adopted. The language in § 11.50, "Agency may exclude evidence
that is irrelevant, immaterial, or unduly repetitious," is derived
from 5 U.S.C. 556(d). The explanation the Office provided in 1985 for
not adopting the same or similar suggestions still obtains and is
reproduced below.
"The PTO has explained in both the advance notice (49 FR 10020,
column 2) and the notice of proposed rule making (49 FR 33801, columns
1 and 2) why it cannot adopt the Federal Rules of Evidence in
disciplinary cases. The `Federal Rules of Evidence * * * do not apply
to administrative proceedings * * *.' Davis, Administrative Law
Treatise, § 14.01 (Supp. 1970). The controlling law is set out in 5
U.S.C. 556(d) which provides in part: `Any oral or documentary evidence
may be received, but the agency as a matter of policy shall provide for
the exclusion of irrelevant, immaterial, or unduly repetitious
evidence. A sanction may not be imposed or rule or order issued except
on consideration of the whole record or those parts thereof cited by
an[y] party and supported by and in accordance with the reliable,
probative, and substantial evidence.' It appears to be the concern of
some of the comments that the Administrative Procedure Act does not
articulate an appropriate standard of evidence and that hearsay may be
admitted. Suffice it to say that many adjudications occur daily under
the Administrative Procedure Act, including disciplinary proceedings.
The following language appearing in an opinion of the Eleventh Circuit
in TRW-United Greenfield Division v. National Labor Relations Board,
716 F.2d 1391, 1994 (11th Cir. 1983), may be helpful:
"At the hearing the ALJ refused to allow five additional
employees to testify that other employees `told them that such a
statement had been made. TRW contends it was denied a full and fair
hearing by the exclusion of this testimony. The general rule is that
administrative tribunals are not bound by the strict rules of
evidence governing jury trials. Opp Cotton Mills, Inc. v.
Administrator of Wage & Hour Div., 312 U.S. 126, 155, 61 S.Ct. 524,
537, 85 L.Ed. 624 (1971). Thus, the admission of testimony which
would be deemed incompetent in judicial proceedings would not
invalidate the administrative order. Tagg Bros. & Moorhead v. United
States, 280 U.S. 420, 442, 50 S.Ct. 220, 225, 74 L.Ed. 524 (1930).
But this assurance of a desirable flexibility in administrative
procedure does not go so far as to justify orders without a basis in
evidence having rational probative force. Mere uncorroborated
hearsay or rumor does not constitute substantial evidence.
Consolidated Edison Co. v. N.L.R.B., 305 U.S. 197, 230, 59 S.Ct.
206, 217, 83 L.Ed. 126 (1938). Therefore, the hearsay testimony of
other employees would not have amounted to substantial evidence
sufficient to support a finding for the company. We find that TRW
was not denied a full and fair hearing by the judge's refusal to
admit hearsay testimony.'
"See also Steadman v. Securities and Exchange Commission, 450
U.S. 91, 98 n.17 (1981); Richardson v. Perales, 402 U.S. 389, 410-
411 (1971); Brown v. Gamage, 377 F.2d 154, 158 (D.C. Cir.), cert.
denied, 389 U.S. 858 (1967); Annotation, Hearsay Evidence In
Proceedings Before Federal Administrative Agencies, 6 ALR Fed 76
(1971); and Davis, Hearsay in Administrative Proceedings, 32 Geo.
Wash. L. Rev. 689 (1964)."
Comment 52: One comment took issue with the last sentence of
§ 11.51(b), which permits the hearing officer to refuse to admit
deposition testimony that both the OED Director and the practitioner
agree is admissible. The comment suggested that the phrase "Unless the
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parties agree otherwise," be placed at the beginning of the last
sentence.
Response: The suggestion to permit deposition testimony to be
entered into the record if the parties agree has not been adopted. The
rules should not limit the ability of the hearing officer to handle the
proceedings, especially if the officer finds a reasonable basis to
believe that the demeanor of the witness is involved.
Comment 53: One comment objected to the provision in § 11.52(e)
permitting the hearing officer to decide not to require pretrial
disclosures of witnesses, exhibits, and the like. The comment urged
that pre-trial disclosures should be mandatory absent either agreement
of the parties to waive pre-trial disclosures or a showing of "good
cause" by a party seeking to avoid them by replacing the phrase "The
hearing officer may" with "Absent good cause shown, the hearing
officer shall".
Response: The suggestion that § 11.52(e) be amended to remove
the hearing officer's discretion to require pretrial disclosure has not
been adopted. This section should not limit the ability of the hearing
officer under § 11.39(c) to manage the hearing, including whether
to require pretrial disclosures. In proceedings under former
§ 10.152(e), administrative law judges frequently required pretrial
disclosures in proceedings. The provisions of § 11.52(e) are not
inconsistent with some states.
Comment 54: One comment said that § 11.52(f), which provides
that after a witness testifies for a party, if the opposing party
requests, the party may be required to produce, prior to cross-
examination, any documents relied upon by the witness in giving his or
her testimony, is a burdensome discovery, which will only delay the
proceedings, and suggested deletion of this section.
Response: The suggestion to delete § 11.52(f) has been adopted.
In addition to the lack of a definition of "written statement," the
provision could be burdensome for both parties. For example, if a
witness studied a "written statement" several days before the hearing
and did not bring it to the proceeding, the hearing officer could grant
a recess to allow the party to get the statement and provide the
opposing party time to review the statement before the witness is
cross-examined. The proceeding should not be so prolonged for each
witness. However, the deletion of this subsection should not be
construed as prohibiting the hearing officer from exercising discretion
to assure a fair hearing. For example, after a witness testifies for a
party, the hearing officer may grant the opposing party's motion, prior
to cross-examination, to produce any documents the witness reviewed
during direct examination or to refresh the witness's memory.
Comment 55: One comment suggested that the framework adopted by the
American Bar Association in Rule 10(C) of the Model Rules of Lawyer
Disciplinary Enforcement (MRLDE) for imposing lawyer sanctions replace
the provisions of § 11.54(b) for imposing sanctions. The comment
pointed out that the 1986 Standards for Imposing Lawyer Sanctions has
been widely adopted and utilized in state disciplinary systems. Another
comment suggested that due to inapplicability, each factor of § 11.54(b)
should not be mechanically addressed, and the rule should reflect as much.
Response: The suggestion has been substantially adopted. The wide
adoption and utilization of the framework of MRLDE Rule 10(C) in state
disciplinary systems for imposing sanctions would benefit the Office by
providing the precedent and consistency for imposing practitioner
sanctions in the Office's discipline system that are necessary for
fairness to the public and the practitioners. The provision of MRLDE
Rule 10(C)(1), "whether the practitioner has violated a duty owed to a
client, to the public, to the legal system, or to the profession," has
been substituted in § 11.54(b)(1) for "[t]he public interest."
The "duty owed * * * to the public" is inclusive of the "[t]he
public interest" factor of former § 10.154(b)(1). The "duty owed
* * * to the legal system, or to the profession" is broader than, but
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inclusive of, the "integrity of the legal patent profession" of
former § 10.154(b)(4). The duty owed to the legal system and
profession includes integrity with regard to the Office in patent,
trademark and other non-patent matters, as well as duties beyond
integrity owed to the entire legal system, including to the Office. The
duty owed to "a client" introduces a new consideration to consider
when imposing a sanction.
The provision of MRLDE Rule 10(C)(2), "whether the practitioner
acted intentionally, knowingly, or negligently," has been substituted
in § 11.54(b)(2) for "[t]he seriousness of the grounds for
discipline." Actions committed intentionally, knowingly, or
negligently implicitly are serious for a practitioner, and the
substituted language is generally comparable in scope to the factor in
former § 10.154(b). The substitution also provides the Office
disciplinary system and courts with clear and well-understood actions
to focus upon when imposing sanctions.
The provision of MRLDE Rule 10(C)(3), "the amount of the actual or
potential injury caused by the practitioner's misconduct," has
replaced the factor of former § 11.54(b)(3), "the deterrent
effects deemed necessary." No one factor of MRLDE Rule 10(C) is
expressed in terms of being a deterrent effect. Rather, all the
factors together may have a deterrent effect.
The provision of MRLDE Rule 10(C)(4), "[t]he existence of any
aggravating or mitigating factors," has been substituted for the
factor of former § 11.54(b)(4), "any extenuating circumstances."
The words "mitigating factors" are comparable with the "extenuating
circumstances" of former § 10.54(b)(5). The inclusion of "any
aggravating * * * factor" introduces a new consideration for imposing
a sanction.
The Office concurs with the observation that inasmuch as all factors
do not necessarily obtain in each case, they need not be addressed.
Therefore, § 11.54(b) provides for their consideration "if applicable."
In substantially adopting the framework of MRLDE Rule 10(C), the
Office notes its anticipation that existing precedent applying the
factors under former § 10.154(b) could still be relied upon with
regard to the application of analogous factors in § 11.54(b). Also,
in adopting this framework, it is appropriate that the Office present
below the American Bar Association's commentary accompanying the
standards. The commentary provides guidance that may and can be
consulted and considered by the Office, courts, the OED Director and
the representatives of the OED Director when imposing or recommending
sanctions. The commentary that follows has been modified for
applicability to disciplinary proceedings in the Office: These
standards provide a framework to guide the courts and disciplinary
agencies, including disciplinary counsel, in imposing sanctions,
thereby providing the flexibility to select the appropriate sanction in
each particular case of practitioner misconduct. The sanction imposed
may depend on the presence of aggravating or mitigating factors. The
following lists of aggravating and mitigating circumstances are found
in Standard 9 of the American Bar Association's Standards for Imposing
Lawyer Sanctions. Aggravating factors include: Prior disciplinary
offenses; dishonest or selfish motive; a pattern of misconduct;
multiple offenses; bad faith obstruction of the disciplinary proceeding
by intentionally failing to comply with rules or orders of the
disciplinary agency; submission of false evidence, false statements or
other deceptive practices during disciplinary process; refusal to
acknowledge wrongful nature of conduct; vulnerability of victim;
substantial experience in the practice of law; and indifference to
making restitution. Mitigating factors include: absence of prior
disciplinary record, absence of dishonest or selfish motive; personal
or emotional problems; timely good faith effort to make restitution or
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to rectify consequences of misconduct; full and free disclosure to
disciplinary board or cooperative attitude toward proceedings;
inexperience in the practice of law; character or reputation; physical
or mental disability or impairment; delay in disciplinary proceedings;
interim rehabilitation; imposition of other penalties or sanctions;
remorse; and remoteness of prior offenses. The Standards for Imposing
Lawyer Sanctions set forth a comprehensive system for determining
sanctions, permitting flexibility and creativity in assigning sanctions
in particular cases of practitioner misconduct. Use of the Standards
will help achieve the degree of consistency in the imposition of lawyer
discipline necessary for fairness to the public and the bar.
Comment 56: One comment stated that it appears that the USPTO
Director's review of the hearing officer's decision is a de novo
decision but the standard of the decision is not explicitly stated in
§ 11.56, and suggested clarifying the matter by inserting "de
novo" between "shall" and "decide," or specifying some other
standard that is deemed appropriate.
Response: The suggestion to specify in § 11.56(a) that the
decision of the USPTO Director, upon appeal from the initial decision
of the hearing officer, is de novo has been adopted in part. Section
11.56(a) is revised to add a sentence providing that on appeal from the
initial decision, the USPTO Director has authority to conduct a de novo
review of the factual record. This is consistent with Administrative
Procedure Act (APA). The Office is empowered by the APA, 5 U.S.C 551,
et seq. to conduct an independent review of the factual record before
it. "On appeal from or review of the initial decision, the agency has
all the powers which it would have in making the initial decision
except as it may limit the issues on notice or by rule." 5 U.S.C.
557(b).
Comment 57: One comment said that the Director's decision is not
always as thorough as the hearing officer's decision, and suggested
adding to § 11.56(a), maybe after the second sentence, "The initial
decision is adopted unless modified."
Response: The suggestion to add a provision that the "initial
decision is adopted unless modified" has not been adopted. The current
practice is that each individual decision of the USPTO Director
indicates those instances, and to what extent, the USPTO Director
adopts the findings of fact and law of the administrative law judge
hearing the matter. Under § 11.55(b), exceptions to the hearing
officer's decision and supporting reasons must be included in the
appeal if they are to be preserved. Therefore, the USPTO Director need
not consider or adopt portions of the hearing officer's decision to
which no exception has been filed. It is more prudent that the Office
continue with that practice rather than change the rule.
Comment 58: One comment said that the duties set forth in § 11.58
that apply to lawyers who have resigned or who have been excluded
or suspended should apply to lawyers placed on disability inactive
status. Rule 27 of the American Bar Association's Model Rules for
Lawyer Disciplinary Enforcement provides that, in state disciplinary
proceedings, a lawyer placed on disability inactive status must notify
clients, co-counsel and opposing counsel of the transfer and must also
comply with other notice, record retention and rules relating to
withdrawal from cases and return of client property and fees. The
comment noted that such notice is protective of clients.
Response: Section 11.28(a)(2) provides that a practitioner on
disability inactive status "shall comply with the provisions of § 11.58."
Nevertheless, the recommendation that the duties set forth in § 11.58
that apply to lawyers who have resigned or who have been excluded or
suspended should apply to lawyers placed on disability inactive status has
been construed as suggesting that § 11.58 specifically reference those on
disability inactive status. The suggestion has been adopted and expanded to
all practitioners, lawyers as well as patent agents, on disability inactive
status. Reference to a "practitioner transferred to disability inactive
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status" or "transfer to disability inactive status," as appropriate, has
been added to §§11.58(a), 11.58(b), 11.58(b)(1), 11.58(b)(1)(i),
11.58(b)(1)(ii), 11.58(b)(1)(iii), 11.58(b)(2)(vi), 11.58(c), 11.58(d),
11.58(e), 11.58(e)(1), 11.58(e)(3), 11.58(f), 11.58(f)(1)(i),
11.58(f)(1)(ii) and 11.58(f)(2)(ii). Further, the title of § 11.58
has been revised to be "Duties of disciplined or resigned practitioner, or
practitioner on disability inactive status."
Comment 59: One comment regarding § 11.58(b)(1)(ii) doubted
that the Office intended to require, for example, a large law firm to
notify every client with business before the Office of the discipline
or exclusion of a practitioner who, though designated by the firm
through its customer number, nonetheless has no substantive involvement
in prosecuting that client's application. The comment suggested that
such notice should be required only if the practitioner was
substantively involved, as in 37 CFR 1.56, in any business of the
client before the Office.
Response: The suggestion to limit notification of suspension or
exclusion to only those clients for whom the practitioner is
substantively involved in prosecuting that client's application has not
been adopted. It is the intent of the Office to require the
practitioner, not the firm, to notify all clients the practitioner
represents having immediate or prospective business before the Office
in patent, trademark and other non-patent matters of the order of
exclusion, suspension or resignation and of the practitioner's
consequent inability to act as a practitioner after the effective date
of the order. Consistent with compliance with the ethical duties of the
firm's members, the firm must enable the practitioner to notify the
clients, for example, by identifying every client and every client's
applications in which the practitioner, though designation by the
firm's customer number(s), has a power of attorney or authorization of
agent. The requirement obtains whenever and however the practitioner is
given a power of attorney to represent the client. The Office
appreciates that a firm may include all practitioners in the firm or
all partners on every power of attorney, including appointment through
use of a firm's customer number. The practitioner, by virtue of a power
of attorney, may represent all clients who have appointed the
practitioner, irrespective of whether the practitioner is substantively
involved in the client's case. The practitioner may share in the fees
the client pays to the firm, even if the practitioner is not
substantively involved in the client's applications before the Office.
The client is entitled to know whether a practitioner empowered to
represent the client has been disciplined.
The Office does not require that a power of attorney filed in a
patent or trademark application include an appointment of all
practitioners who are partners or associates in firm. The power of
attorney filed in a patent or trademark application may be limited to a
particular practitioner or group of practitioners. In the latter case,
a practitioner in a large firm who is given a power of attorney in only
a small number of the firm's cases may comply with the provisions of
§ 11.58(b)(1)(ii) by providing notice only to the clients in a
small number of cases from whom the practitioner received a power of
attorney.
Comment 60: Two comments pointed out that § 11.58(b)(2)(vi)
refers to "§ 11.11(a)," a designation not included in the July
2004 rules, and requested clarification.
Response: Section 11.58(b)(2)(vi) should have referenced "§ 11.11"
because subsections have not been added to § 11.11 since it was adopted.
Therefore, the reference has been changed to § 11.11.
Comment 61: One comment regarding § 11.58(b) observed that some
suspended or excluded practitioners may not satisfy the conditions for
reinstatement, and suggested adding a third provision, "to provide tax
records or other proof of employment during discipline period" to
§ 10.160(c).
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Response: The suggestion to add a subsection to § 11.58(b)
requiring suspended and excluded practitioners to provide tax records
or other proof of employment during the period the discipline period
has not been adopted. A suspended and excluded practitioner is
prohibited from "engag[ing] in any practice of patent, trademark and
other non-patent law before the Office." See § 11.58(a). The
practitioner must "not hold himself or herself out as authorized to
practice law before the Office," § 11.58(b)(3); "not advertise
the practitioner's availability or ability to perform or render legal
services for any person having immediate or prospective business before
the Office," § 11.58(b)(4), and "not render legal advice or
services to any person having immediate or prospective business before
the Office as to that business," § 11.58(b)(5). The practitioner
seeking reinstatement has the burden of proof by clear and convincing
evidence, and a practitioner who has violated any provision of § 11.58
is not eligible for reinstatement. See § 11.60(c). If the OED
Director has good cause to believe a suspended or excluded practitioner
has continued to practice before the Office after being ordered
suspended or excluded, the rules are sufficiently broad to permit the
OED Director to request records showing the sources of a practitioner's
income and employment following the order of suspension or exclusion.
Comment 62: One comment recommended that § 11.59(a) be revised
to include reports to the American Bar Association's National Lawyer
Regulatory Data Bank (NLRDB), the only national repository of
information concerning public disciplinary sanctions imposed against
lawyers and other regulatory actions from all states and the District
of Columbia, some Federal courts and some Federal agencies. The comment
noted that the NLRDB has been receiving reports of public regulatory
actions from the USPTO since 2001 and was referenced in the originally
proposed rules under its former name, the National Discipline Data
Bank.
Response: The recommendation to revise § 11.59(a) to
specifically include reporting to the NLRB has not been adopted. It is
not necessary for this section to specify every agency, institution or
other member of the public to which reports are sent regarding the
lawyers being disciplinarily sanctioned. The NLRB is within the scope
of the public to whom public disciplinary sanctions imposed against
lawyers have been and will continue to be reported.
Comment 63: One comment noted that § 11.59(c) provides that the
affidavit that accompanies a request for exclusion on consent is
confidential, while the order of exclusion is public. The comment
recommended that the admissions leading to the sanction should be known
inasmuch as the sanction imposed is public and keeping admissions
private may serve to further public distrust of these proceedings. In
support thereof, the comment noted that under Rules 21(E) and 10(D) of
the American Bar Association's Model Rules of Disciplinary Enforcement,
an affidavit accompanying a petition for discipline on consent that
would result in a public sanction is public, unless covered by a
protective order. The comment also noted that a disciplined
practitioner is protected by the statement in § 11.59 (c) that the
affidavit cannot be used in any other proceeding except by order of the
USPTO Director or with the practitioner's written consent.
Response: The recommendation to revise § 11.59(c) to provide
that admissions leading to the agreed upon sanction should be made
known to the public unless covered by a protective order is adopted in
part. This section is revised to provide that unless the USPTO Director
orders that the proceeding or portion of the record be kept
confidential, both the order excluding a practitioner and the affidavit
required under § 11.27(a) will be available to the public. There
are two exceptions. Information from the order or affidavit may be
withheld as necessary to protect the privacy of third parties or as
directed in a protective order under § 11.44(c). This section
continues to provide that the affidavit shall not be used in any other
proceeding except by order the USPTO Director or upon written consent
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of the practitioner.
Comment 64: One comment suggested that inasmuch as records
regarding a warning are not to be made available to the public this be
made clear by inserting into § 11.59(b) after "be kept confidential" the
phrase "or it concerns a warning issued under Section 11.21".
Response: The suggestion to add the phrase "or it concerns a
warning issued under § 11.21" to § 11.59(b) has not been adopted. The
suggested phrase implies that matters concerning a warning are other than
confidential and are protected only by reason of the suggested phrase.
Section 11.59 need not provide safeguards because information collected in
an investigation is placed into a Privacy Act system of records, in this
case COMMERCE/PAT-TM-2, Complaints, Investigations and Disciplinary
Proceedings Relating to Registered Patent Attorneys and Agents,
published at 70 FR 69522. Furthermore, the Privacy Act of 1974, 5
U.S.C. 552a, provides numerous protections for those records. Regarding
the requests for release of these records under the Freedom of
Information Act (FOIA), Privacy Act records may not be disclosed unless
the subject of the record consents or one of twelve exceptions apply.
One of the twelve exceptions provides for information that is
releasable under FOIA. This is a statutory exception that cannot be
altered by rule making. Generally, the information in investigation
files, including warnings, is protected from disclosure by FOIA
exemptions 5 and 6. See 5 U.S.C. 552(b)(5) and (6), respectively. Thus,
information regarding a warning, including the warning, is among the
collected information that is subject to the numerous protections of
the Privacy Act, and will not be released to FOIA requesters as
provided for under current Federal law.
Comment 65: One comment noted that some people may not have
satisfied the conditions for reinstatement, and suggested adding "(3)
to provide tax records or other proof of employment during discipline
period" to § 11.60(c).
Response: The suggestion to add a provision to § 11.60(c)
requiring suspended or excluded practitioners to provide tax records or
other proof of employment during the period of discipline has not been
adopted. An excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status is prohibited
from practicing before the Office. See § 11.58(a). The practitioner
must keep and maintain records of the steps taken under § 11.58 to
provide proof in a subsequent proceeding, such as reinstatement, of
compliance with the provisions of § 11.58. See § 11.58(d). The OED
Director must seek evidence of compliance with § 11.58. See § 11.58(d).
If the practitioner acts as a paralegal or performs services under
§ 11.58(e), to be reinstated the practitioner must file an affidavit
explaining the acts performed in that capacity and show compliance with
the provisions of § 11.58. See § 11.58(f). A practitioner who has violated
any provision of § 11.58 is ineligible for reinstatement. See § 11.60(c).
If the showing is insufficient, the OED Director may request additional
showings, including, where appropriate, evidence of employment as a
paralegal. The evidence sought may include any written employment agreement
and income tax withholding statements for the relevant time period.
Rule Making Considerations
Regulatory Flexibility Act
The Deputy General Counsel for General Law, United States Patent
and Trademark Office, certified to the Chief Counsel for Advocacy,
Small Business Administration, that the changes in this final rule will
not have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The provisions of the
Regulatory Flexibility Act relating to the preparation of a regulatory
flexibility analysis are not applicable to this final rule because the
rule will not have a significant economic impact on a substantial
number of small entities. The primary purpose of the rule changes is to
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bring the USPTO's disciplinary procedural rules for practitioners in
line with the American Bar Association Model Rules, American Bar
Association Model Rules for Lawyer Disciplinary Enforcement, American
Bar Association Model Federal Rules of Disciplinary Enforcement and
rules adopted by other Federal agencies. This will ease the
practitioners' burden in learning and complying with USPTO regulations.
The rule eliminates a fee of $130 for petitions in disciplinary
cases to enable petitioners to invoke the supervisory authority of the
USPTO Director.
The rule removes the $1500 cap on disciplinary proceeding costs
that can be assessed, as a condition of reinstatement, against a
practitioner who has been suspended or excluded from practice before
the Office. Approximately five of the roughly 35,000 practitioners
petition for reinstatement each year, and approximately two of these
petitions occur under circumstances where disciplinary proceeding costs
may be assessed. These changes, therefore, will not affect a
substantial number of practitioners.
Executive Order 13132
This notice of proposed rule making does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866
This notice of proposed rule making has been determined to be not
significant for purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This notice of final rule making involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.). This notice of final rule making contains revisions that
the United States Patent and Trademark Office (USPTO) is adopting to
the rules governing the conduct of professional responsibility
investigations and disciplinary proceedings. The principal impact of
the changes in this notice of final rule making is on registered
practitioners. The information collections involved in this final rule
have been previously reviewed and approved by OMB under OMB control
numbers 0651-0012 and 0651-0017. The revisions do not affect the
information collection requirements for 0651-0012 and 0651-0017, so the
USPTO is not resubmitting these collections to OMB for review and
approval.
The title, description, and respondent description of the currently
approved information collections for 0651-0012 and 0651-0017 are shown
below with estimates of the annual reporting burdens. Included in the
estimates is the time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the
collection of information.
OMB Number: 0651-0012.
Title: Admittance to Practice and Roster of Registered Patent
Attorneys and Agents Admitted to Practice Before the Patent and
Trademark Office (USPTO).
Form Numbers: PTO-158, PTO-158A, PTO-275, PTO-107A, PTO-1209, PTO-
2126, PTO-2149 and PTO-2150.
Type of Review: Approved through December of 2010.
Affected Public: Individuals or households, businesses or other
for-profit, Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents: 72,122.
Estimated Time per Response: 5 minutes to 40 hours.
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Estimated Total Annual Burden Hours: 89,475 hours.
Needs and Uses: The information in this collection is necessary for
the United States Patent and Trademark Office to comply with Federal
regulations, 35 U.S.C. 2(B)(2)(d). The Office of Enrollment and
Discipline collects this information to insure compliance with the
USPTO Code of Professional Responsibility, 37 CFR 10.20-10.112. This
Code requires that registered practitioners maintain
complete records of clients, including all funds, securities, and
other properties of clients coming into his/her possession, and render
appropriate accounts to the client regarding such records, as well as
report violations of the Code to the USPTO. The registered practitioners
are mandated by the Code to maintain proper documentation so that they can
fully cooperate with an investigation in the event of
a report of an alleged violation and so that violations are prosecuted
as appropriate.
OMB Number: 0651-0017.
Title: Practitioner Records Maintenance, Disclosure, and Discipline
Before the United States Patent and Trademark Office (USPTO).
Form Numbers: None.
Type of Review: Approved through July of 2010.
Affected Public: Individuals or households, businesses or other
for-profit, Federal Government, and state, local, or tribal
governments.
Estimated Number of Respondents: 532.
Estimated Time per Response: 2 hours to 60 hours.
Estimated Total Annual Burden Hours: 10,402 hours.
Needs and Uses: The information in this collection is necessary for
the United States Patent and Trademark Office to comply with Federal
regulations, 35 U.S.C. 6(a) and 35 U.S.C. 2(B)(2)(d). The Office of
Enrollment and Discipline collects this information to insure
compliance with the USPTO Code of Professional Responsibility, 37 CFR
10.20-10.112. This Code requires that registered practitioners maintain
complete records of clients, including all funds, securities, and other
properties of clients coming into his/her possession, and render
appropriate accounts to the client regarding such records, as well as
report violations of the Code to the USPTO. The registered
practitioners are mandated by the Code to maintain proper documentation
so that they can fully cooperate with an investigation in the event of
a report of an alleged violation and so that violations are prosecuted
as appropriate.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Harry I. Moatz, Director of Enrollment and Discipline, Mail
Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450, or to the Office of Information and
Regulatory Affairs, Office of Management and Budget, New Executive
Office Building, Room 10202, 725 17th Street, NW., Washington, DC
20503, Attention: Desk Officer for the United States Patent and
Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
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37 CFR Part 1
Administrative practice and procedure, Patents.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, International registration,
Trademarks.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
. For the reasons set forth in the preamble, the United States Patent and
Trademark Office is amending 37 CFR parts 1, 2, 7, 10, 11 and 41 as
follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2)(D).
2. In § 1.4, revise paragraphs (d)(3) and (d)(4)(i), and add
paragraph (d)(4)(ii)(C) to read as follows:
§ 1.4 Nature of correspondence and signature requirements.
* * * * *
(d) * * *
(3) Forms. The Office provides forms to the public to use in
certain situations to assist in the filing of correspondence for a
certain purpose and to meet certain requirements for patent
applications and proceedings. Use of the forms for purposes for which
they were not designed is prohibited. No changes to certification
statements on the Office forms (e.g., oath or declaration forms,
terminal disclaimer forms, petition forms, and nonpublication request
form) may be made. The existing text of a form, other than a
certification statement, may be modified, deleted, or added to, if all
text identifying the form as an Office form is removed. The
presentation to the Office (whether by signing, filing, submitting, or
later advocating) of any Office form with text identifying the form as
an Office form by a party, whether a practitioner or non-practitioner,
constitutes a certification under § 11.18(b) of this chapter that
the existing text and any certification statements on the form have not
been altered other than permitted by EFS-Web customization.
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(4) Certifications. (i) Section 11.18 certifications: The
presentation to the Office (whether by signing, filing, submitting, or
later advocating) of any paper by a party, whether a practitioner or
non-practitioner, constitutes a certification under § 11.18(b) of
this subchapter. Violations of § 11.18(b)(2) of this subchapter by
a party, whether a practitioner or non-practitioner, may result in the
imposition of sanctions under § 11.18(c) of this subchapter. Any
practitioner violating § 11.18(b) of this subchapter may also be
subject to disciplinary action. See §§ 11.18(d) and 11.804(b)(9) of this
subchapter.
(ii) * * *
(C) Sanctions: Violations of the certifications as to the signature
of another or a person's own signature, set forth in paragraphs
(d)(4)(ii)(A) and (B) of this section, may result in the imposition of
sanctions under § 11.18(c) and (d) of this chapter.
* * * * *
. 3. Revise § 1.8(a)(2)(iii)(A) to read as follows:
§ 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(iii) * * *
(A) Correspondence filed in connection with a disciplinary proceeding
under part 11 of this chapter.
* * * * *
. 4. Revise § 1.9(j) to read as follows:
§ 1.9 Definitions.
* * * * *
(j) Director as used in this chapter, except for part 11 of this
chapter, means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office.
* * * * *
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
. 5. The authority citation for 37 CFR part 2 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
. 6. Revise § 2.2(c) to read as follows:
§ 2.2 Definitions.
* * * * *
(c) Director as used in this chapter, except for part 10 and part
11, means the Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office.
* * * * *
. 7. Revise § 2.11 to read as follows:
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§ 2.11 Applicants may be represented by an attorney.
Representation before the Office is governed by § 11.14 of this
chapter. The Office cannot aid in the selection of an attorney.
. 8. Revise § 2.17(a) through (c) to read as follows:
§ 2.17 Recognition for representation.
(a) When an attorney as defined in § 11.1 of this chapter
acting in a representative capacity appears in person or signs a
document in practice before the United States Patent and Trademark
Office in a trademark case, his or her personal appearance or signature
shall constitute a representation to the United States Patent and
Trademark Office that, under the provisions of § 11.14 and the law,
he or she is authorized to represent the particular party in whose
behalf he or she acts. Further proof of authority to act in a
representative capacity may be required.
(b) Before any non-lawyer, as specified in § 11.14(b) of this
chapter, will be allowed to take action of any kind with respect to an
application, registration or proceeding, a written authorization from
the applicant, registrant, party to the proceeding, or other person
entitled to prosecute such application or proceeding must be filed.
(c) To be recognized as a representative, an attorney as defined in
§ 11.1 of this chapter may file a power of attorney, appear in
person, or sign a document on behalf of an applicant or registrant that
is filed with the Office in a trademark case.
* * * * *
. 9. Revise § 2.18(a) to read as follows:
§ 2.18 Correspondence, with whom held.
(a) If an attorney transmits documents, or a written power of
attorney is filed, the Office will send correspondence to the attorney
transmitting the documents, or to the attorney designated in the power
of attorney, provided that the attorney is an attorney as defined in
§ 11.1 of this chapter.
* * * * *
. 10. Revise § 2.19(b) to read as follows:
§ 2.19 Revocation of power of attorney; withdrawal.
* * * * *
(b) If the requirements of § 10.40 of this chapter are met, an
attorney authorized under § 11.14 to represent an applicant,
registrant or party in a trademark case may withdraw upon application
to and approval by the Director.
. 11. Revise § 2.24 to read as follows:
§ 2.24 Designation of domestic representative by foreign applicant.
If an applicant is not domiciled in the United States, the
applicant may designate by a document filed in the United States Patent
and Trademark Office the name and address of some person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark. If the applicant does not file a
document designating the name and address of a person resident in the
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United States on whom may be served notices or process in proceedings
affecting the mark, or if the last person designated cannot be found at
the address given in the designation, then notices or process in
proceedings affecting the mark may be served on the Director. The mere
designation of a domestic representative does not authorize the person
designated to prosecute the application unless qualified under
paragraph (a), (b) or (c) of § 11.14 of this subchapter and authorized
under § 2.17(b).
. 12. Revise § 2.33(a)(3) to read as follows:
§ 2.33 Verified statement.
(a) * * *
(3) An attorney as defined in § 11.1 of this chapter who has an
actual or implied written or verbal power of attorney from the
applicant.
* * * * *
. 13. Revise § 2.101(b) introductory text to read as follows:
§ 2.101 Filing an opposition.
* * * * *
(b) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file an
opposition addressed to the Trademark Trial and Appeal Board and must
serve a copy of the opposition, including any exhibits, on the attorney
of record for the applicant or, if there is no attorney, on the
applicant or on the applicant's domestic representative, if one has
been appointed, at the correspondence address of record in the Office.
The opposer must include with the opposition proof of service pursuant
to § 2.119 at the correspondence address of record in the Office.
If any service copy of the opposition is returned to the opposer as
undeliverable, the opposer must notify the Board within ten days of
receipt of the returned copy. The opposition need not be verified, but
must be signed by the opposer or the opposer's attorney, as specified
in § 11.1 of this chapter, or other authorized representative, as
specified in § 11.14(b) of this chapter. Electronic signatures
pursuant to § 2.193(c)(1)(iii) are required for oppositions filed
through ESTTA under paragraphs (b)(1) or (2) of this section.
* * * * *
. 14. Revise § 2.102(a) introductory text to read as follows:
§ 2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file in the
Office a written request, addressed to the Trademark Trial and Appeal
Board, to extend the time for filing an opposition. The written request
need not be verified, but must be signed by the potential opposer or by
the potential opposer's attorney, as specified in § 11.1 of this
chapter, or authorized representative, as specified in § 11.14(b)
of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii)
are required for electronically filed extension requests.
* * * * *
. 15. Revise § 2.105(b)(1) and (c)(1) to read as follows:
§ 2.105 Notification to parties of opposition proceeding(s).
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* * * * *
(b) * * *
(1) If the opposition is transmitted by an attorney, or a written
power of attorney is filed, the Board will send the notification to the
attorney transmitting the opposition or to the attorney designated in
the power of attorney, provided that the person is an "attorney" as
defined in § 11.1 of this chapter.
(c) * * *
(1) If the opposed application contains a clear indication that the
application is being prosecuted by an attorney, as defined in § 11.1
of this chapter, the Board shall send the documents described in this
section to applicant's attorney.
* * * * *
. 16. Revise § 2.111(b) to read as follows:
§ 2.111 Filing petition for cancellation.
* * * * *
(b) Any person who believes that he, she or it is or will be
damaged by a registration may file a petition, addressed to the
Trademark Trial and Appeal Board, for cancellation of the registration
in whole or in part. Petitioner must serve a copy of the petition,
including any exhibits, on the owner of record for the registration, or
on the owner's domestic representative of record, if one has been
appointed, at the correspondence address of record in the Office. The
petitioner must include with the petition for cancellation proof of
service, pursuant to § 2.119, on the owner of record, or on the
owner's domestic representative of record, if one has been appointed,
at the correspondence address of record in the Office. If any service
copy of the petition for cancellation is returned to the petitioner as
undeliverable, the petitioner must notify the Board within ten days of
receipt of the returned copy. The petition for cancellation need not be
verified, but must be signed by the petitioner or the petitioner's
attorney, as specified in § 11.1 of this chapter, or other
authorized representative, as specified in § 11.14(b) of this
chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are
required for petitions submitted electronically via ESTTA. The petition
for cancellation may be filed at any time in the case of registrations
on the Supplemental Register or under the Act of 1920, or registrations
under the Act of 1881 or the Act of 1905 which have not been published
under section 12(c) of the Act, or on any ground specified in section
14(3) or (5) of the Act. In all other cases, the petition for
cancellation and the required fee must be filed within five years from
the date of registration of the mark under the Act or from the date of
publication under section 12(c) of the Act.
* * * * *
. 17. Revise § 2.113(b)(1) to read as follows:
§ 2.113 Notification of cancellation proceeding.
* * * * *
(b) * * *
(1) If the petition for cancellation is transmitted by an attorney,
or a written power of attorney is filed, the Board will send the
notification to the attorney transmitting the petition for cancellation
or to the attorney designated in the power of attorney, provided that
person is an "attorney" as defined in § 11.1 of this chapter.
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* * * * *
. 18. Revise § 2.119(d) to read as follows:
§ 2.119 Service and signing of papers.
* * * * *
(d) If a party to an inter partes proceeding is not domiciled in
the United States and is not represented by an attorney or other
authorized representative located in the United States, the party may
designate by document filed in the United States Patent and Trademark
Office the name and address of a person resident in the United States
on whom may be served notices or process in the proceeding. If the
party has appointed a domestic representative, official communications
of the United States Patent and Trademark Office will be addressed to
the domestic representative unless the proceeding is being prosecuted
by an attorney at law or other qualified person duly authorized under
§ 11.14(c) of this subchapter. If the party has not appointed a
domestic representative and the proceeding is not being prosecuted by
an attorney at law or other qualified person, the Office will send
correspondence directly to the party, unless the party designates in
writing another address to which correspondence is to be sent. The mere
designation of a domestic representative does not authorize the person
designated to prosecute the proceeding unless qualified under
§ 11.14(a), or qualified under § 11.14(b) and authorized under § 2.17(b).
* * * * *
. 19. Revise § 2.161(b)(3) to read as follows:
§ 2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
* * * * *
(b) * * *
(3) An attorney as defined in § 11.1 of this chapter who has an
actual or implied written or verbal power of attorney from the owner.
* * * * *
. 20. Revise § 2.193(c)(2) to read as follows:
§ 2.193 Trademark correspondence and signature requirements.
* * * * *
(c) * * *
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any document by a party, whether a
practitioner or non-practitioner, constitutes a certification under
§ 11.18(b) of this chapter. Violations of § 11.18(b)(2) of this
chapter by a party, whether a practitioner or non-practitioner, may
result in the imposition of sanctions under § 11.18(c) of this
chapter. Any practitioner violating § 11.18(b) may also be subject
to disciplinary action. See §§11.18(d) and 11.23(c)(15).
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
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. 21. The authority citation for 37 CFR part 7 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
. 22. Revise § 7.25(a) to read as follows:
§ 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for §§2.22, 2.23, 2.130, 2.131, 2.160 through
2.166, 2.168, 2.173, 2.175, 2.181 through 2.186 and 2.197, all sections
in part 2 and all sections in parts 10 and all sections in part 11 of
this chapter shall apply to an extension of protection of an
international registration to the United States, including sections
related to proceedings before the Trademark Trial and Appeal Board,
unless otherwise stated.
* * * * *
. 23. Revise § 7.37(b)(3) to read as follows:
§ 7.37 Requirements for a complete affidavit or declaration of use
in commerce or excusable nonuse.
* * * * *
(b) * * *
(3) An attorney as defined in § 11.1 of this chapter who has an
actual written or verbal power of attorney or an implied power of
attorney from the holder.
* * * * *
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
. 24. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.
. 25. The undesignated center heading, "Individuals Entitled to Practice
Before the Patent and Trademark Office," is removed.
§ 10.14 [Removed and reserved]
. 26. Section 10.14 is removed and reserved.
§ 10.15 [Removed and reserved]
. 27. Section 10.15 is removed and reserved.
§ 10.18 [Removed and reserved]
. 28. Section 10.18 is removed and reserved.
. 29. The undesignated center heading "Investigations and Disciplinary
Proceedings" is removed.
§ 10.130-10.145 [Removed and reserved]
. 30. Sections 10.130 through 10.145 are removed and reserved.
§ 10.149-10.161 [Removed and reserved]
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. 31. Sections 10.149 through 10.161 are removed and reserved.
§ 10.170 [Removed and reserved]
. 32. Section 10.170 is removed and reserved.
PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
. 33. The authority citation for 37 CFR part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32.
. 34. Amend § 11.1 to add the definitions of "Disqualified,"
"Federal program," "Federal agency," "Mandatory Disciplinary
Rule," and "Serious crime," and revise the definitions of "Attorney
or lawyer" and "State" as follows:
§ 11.1 Definitions.
* * * * *
Attorney or lawyer means an individual who is a member in good
standing of the highest court of any State, including an individual who
is in good standing of the highest court of one State and not under an
order of any court or Federal agency suspending, enjoining,
restraining, disbarring or otherwise restricting the attorney from
practice before the bar of another State or Federal agency. A non-
lawyer means a person who is not an attorney or lawyer.
* * * * *
Disqualified means any action that prohibits a practitioner from
participating in or appearing before the program or agency, regardless
of how long the prohibition lasts or the specific terminology used.
Federal agency means any authority of the executive branch of the
Government of the United States.
Federal program means any program established by an Act of Congress
or administered by a Federal agency.
* * * * *
Mandatory Disciplinary Rule is a rule identified in § 10.20(b)
of this chapter as a Disciplinary Rule.
* * * * *
Serious crime means:
(1) Any criminal offense classified as a felony under the laws of
the United States, any state or any foreign country where the crime
occurred; or
(2) Any crime a necessary element of which, as determined by the
statutory or common law definition of such crime in the jurisdiction
where the crime occurred, includes interference with the administration
of justice, false swearing, misrepresentation, fraud, willful failure
to file income tax returns, deceit, bribery, extortion,
misappropriation, theft, or an attempt or a conspiracy or solicitation
of another to commit a "serious crime."
* * * * *
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State means any of the 50 states of the United States of America,
the District of Columbia, and any Commonwealth or territory of the
United States of America.
* * * * *
. 35. Revise §§11.2(a), (b)(4), (c) and (d) and add paragraphs
(b)(5), (b)(6) and (e) to read as follows:
§ 11.2 Director of the Office of Enrollment and Discipline.
(a) Appointment. The USPTO Director shall appoint a Director of the
Office of Enrollment and Discipline (OED Director). In the event of a
vacancy in the office of the OED Director, the USPTO Director may
designate an employee of the Office to serve as acting OED Director.
The OED Director shall be an active member in good standing of the bar
of the highest court of a State.
(b) * * *
(4) Conduct investigations of matters involving possible grounds
for discipline of practitioners coming to the attention of the OED
Director. Except in matters meriting summary dismissal, no disposition
under § 11.22(h) shall be recommended or undertaken by the OED
Director until the accused practitioner shall have been afforded an
opportunity to respond to a reasonable inquiry by the OED Director.
(5) With the consent of a panel of three members of the Committee
on Discipline, initiate disciplinary proceedings under § 11.32 and
perform such other duties in connection with investigations and
disciplinary proceedings as may be necessary.
(6) Oversee the preliminary screening of information and close
investigations as provided for in § 11.22.
(c) Petition to OED Director regarding enrollment or recognition.
Any petition from any action or requirement of the staff of OED
reporting to the OED Director shall be taken to the OED Director
accompanied by payment of the fee set forth in § 1.21(a)(5)(i) of
this chapter. Any such petition not filed within sixty days from the
mailing date of the action or notice from which relief is requested
will be dismissed as untimely. The filing of a petition will neither
stay the period for taking other action which may be running, nor stay
other proceedings. The petitioner may file a single request for
reconsideration of a decision within thirty days of the date of the
decision. Filing a request for reconsideration stays the period for
seeking review of the OED Director's decision until a final decision on
the request for reconsideration is issued. A final decision by the OED
Director may be reviewed in accordance with the provisions of paragraph
(d) of this section.
(d) Review of OED Director's decision regarding enrollment or
recognition. A party dissatisfied with a final decision of the OED
Director regarding enrollment or recognition may seek review of the
decision upon petition to the USPTO Director accompanied by payment of
the fee set forth in § 1.21(a)(5)(ii) of this chapter. Any such
petition to the USPTO Director waives a right to seek reconsideration
from the OED Director. Any petition not filed within thirty days after
the final decision of the OED Director may be dismissed as untimely.
Briefs or memoranda, if any, in support of the petition shall accompany
the petition. The petition will be decided on the basis of the record
made before the OED Director. The USPTO Director in deciding the petition
will consider no new evidence. Copies of documents already of record before
the OED Director shall not be submitted with the petition. An oral hearing
will not be granted except when considered necessary by the USPTO Director.
Any request for reconsideration of the decision of the USPTO Director
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may be dismissed as untimely if not filed within thirty days after the
date of said decision.
(e) Petition to USPTO Director in disciplinary matters. Petition
may be taken to the USPTO Director to invoke the supervisory authority
of the USPTO Director in appropriate circumstances in disciplinary
matters. Any such petition must contain a statement of the facts
involved and the point or points to be reviewed and the action
requested. Briefs or memoranda, if any, in support of the petition must
accompany the petition. Where facts are to be proven, the proof in the
form of affidavits or declarations (and exhibits, if any) must
accompany the petition. The OED Director may be directed by the USPTO
Director to file a reply to the petition, supplying a copy to the
petitioner. An oral hearing will not be granted except when considered
necessary by the USPTO Director. The mere filing of a petition will not
stay an investigation, disciplinary proceeding or other proceedings.
Any petition under this part not filed within thirty days of the
mailing date of the action or notice from which relief is requested may
be dismissed as untimely. Any request for reconsideration of the
decision of the USPTO Director may be dismissed as untimely if not
filed within thirty days after the date of said decision.
. 36. Revise § 11.3 to read as follows:
§ 11.3 Suspension of rules.
(a) In an extraordinary situation, when justice requires, any
requirement of the regulations of this Part which is not a requirement
of statute may be suspended or waived by the USPTO Director or the
designee of the USPTO Director, sua sponte, or on petition by any
party, including the OED Director or the OED Director's representative,
subject to such other requirements as may be imposed.
(b) No petition under this section shall stay a disciplinary
proceeding unless ordered by the USPTO Director or a hearing officer.
Subpart B - Recognition to Practice Before the USPTO
. 37. Revise § 11.5 to read as follows:
§ 11.5 Register of attorneys and agents in patent matters;
practice before the Office.
(a) A register of attorneys and agents is kept in the Office on
which are entered the names of all individuals recognized as entitled
to represent applicants having prospective or immediate business before
the Office in the preparation and prosecution of patent applications.
Registration in the Office under the provisions of this part shall
entitle the individuals so registered to practice before the Office
only in patent matters.
(b) Practice before the Office. Practice before the Office
includes, but is not limited to, law-related service that comprehends
any matter connected with the presentation to the Office or any of its
officers or employees relating to a client's rights, privileges,
duties, or responsibilities under the laws or regulations administered
by the Office for the grant of a patent or registration of a trademark,
or for enrollment or disciplinary matters. Such presentations include
preparing necessary documents in contemplation of filing the documents
with the Office, corresponding and communicating with the Office, and
representing a client through documents or at interviews, hearings, and
meetings, as well as communicating with and advising a client
concerning matters pending or contemplated to be presented before the
Office. Nothing in this section proscribes a practitioner from
employing or retaining non-practitioner assistants under the
supervision of the practitioner to assist the practitioner in matters
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pending or contemplated to be presented before the Office.
(1) Practice before the Office in patent matters. Practice before
the Office in patent matters includes, but is not limited to, preparing
and prosecuting any patent application, consulting with or giving
advice to a client in contemplation of filing a patent application or
other document with the Office, drafting the specification or claims of
a patent application; drafting an amendment or reply to a communication
from the Office that may require written argument to establish the
patentability of a claimed invention; drafting a reply to a
communication from the Office regarding a patent application; and
drafting a communication for a public use, interference, reexamination
proceeding, petition, appeal to or any other proceeding before the
Board of Patent Appeals and Interferences, or other proceeding.
Registration to practice before the Office in patent cases sanctions
the performance of those services which are reasonably necessary and
incident to the preparation and prosecution of patent applications or
other proceeding before the Office involving a patent application or
patent in which the practitioner is authorized to participate. The
services include:
(i) Considering the advisability of relying upon alternative forms
of protection which may be available under state law, and
(ii) Drafting an assignment or causing an assignment to be executed
for the patent owner in contemplation of filing or prosecution of a
patent application for the patent owner, where the practitioner
represents the patent owner after a patent issues in a proceeding
before the Office, and when drafting the assignment the practitioner
does no more than replicate the terms of a previously existing oral or
written obligation of assignment from one person or party to another
person or party.
(2) Practice before the Office in trademark matters. Practice
before the Office in trademark matters includes, but is not limited to,
consulting with or giving advice to a client in contemplation of filing
a trademark application or other document with the Office; preparing
and prosecuting an application for trademark registration; preparing an
amendment which may require written argument to establish the
registrability of the mark; and conducting an opposition, cancellation,
or concurrent use proceeding; or conducting an appeal to the Trademark
Trial and Appeal Board.
§ 11.12-11.13 [Added and Reserved]
. 38. Add and reserve §§ 11.12 and 11.13.
. 39. Add §§ 11.14 and 11.15 to read as follows:
§ 11.14 Individuals who may practice before the Office in
trademark and other non-patent matters.
(a) Attorneys. Any individual who is an attorney as defined in
§ 11.1 may represent others before the Office in trademark and
other non-patent matters. An attorney is not required to apply for
registration or recognition to practice before the Office in trademark
and other non-patent matters. Registration as a patent practitioner
does not itself entitle an individual to practice before the Office in
trademark matters.
(b) Non-lawyers. Individuals who are not attorneys are not
recognized to practice before the Office in trademark and other non-
patent matters, except that individuals not attorneys who were
recognized to practice before the Office in trademark matters under
this chapter prior to January 1, 1957, will be recognized as agents to
continue practice before the Office in trademark matters. Except as
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provided in the preceding sentence, registration as a patent agent does
not itself entitle an individual to practice before the Office in trademark
matters.
(c) Foreigners. Any foreign attorney or agent not a resident of the
United States who shall file a written application for reciprocal
recognition under paragraph (f) of this section and prove to the
satisfaction of the OED Director that he or she is registered or in
good standing before the patent or trademark office of the country in
which he or she resides and practices and is possessed of good moral
character and reputation, may be recognized for the limited purpose of
representing parties located in such country before the Office in the
presentation and prosecution of trademark matters, provided: the patent
or trademark office of such country allows substantially reciprocal
privileges to those permitted to practice in trademark matters before
the Office. Recognition under this paragraph shall continue only during
the period that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not be
construed as sanctioning or authorizing the performance of any act
regarded in the jurisdiction where performed as the unauthorized
practice of law.
(e) No individual other than those specified in paragraphs (a),
(b), and (c) of this section will be permitted to practice before the
Office in trademark matters on behalf of a client. Any individual may
appear in a trademark or other non-patent matter in his or her own
behalf. Any individual may appear in a trademark matter for:
(1) A firm of which he or she is a member,
(2) A partnership of which he or she is a partner, or
(3) A corporation or association of which he or she is an officer
and which he or she is authorized to represent, if such firm,
partnership, corporation, or association is a party to a trademark
proceeding pending before the Office.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under paragraph (c) of this section, in addition
to providing evidence satisfying the provisions of paragraph (c) of
this section, shall apply in writing to the OED Director for reciprocal
recognition, and shall pay the application fee required by § 1.21(a)(1)(i)
of this subchapter.
§ 11.15 Refusal to recognize a practitioner.
Any practitioner authorized to appear before the Office may be
suspended, excluded, or reprimanded in accordance with the provisions
of this Part. Any practitioner who is suspended or excluded under this
Part shall not be entitled to practice before the Office in patent,
trademark, or other non-patent matters while suspended or excluded.
§ 11.16-11.17 [Added and Reserved]
. 40. Add and reserve §§ 11.16 and 11.17.
. 41. Add § 11.18 to read as follows:
§ 11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, and all documents filed with a hearing
officer in a disciplinary proceeding, except for correspondence that is
required to be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Office must bear a
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signature, personally signed by such practitioner, in compliance with
§ 1.4(d)(1) of this subchapter.
(b) By presenting to the Office or hearing officer in a
disciplinary proceeding (whether by signing, filing, submitting, or
later advocating) any paper, the party presenting such paper, whether a
practitioner or non-practitioner, is certifying that -
(1) All statements made therein of the party's own knowledge are
true, all statements made therein on information and belief are
believed to be true, and all statements made therein are made with the
knowledge that whoever, in any matter within the jurisdiction of the
Office, knowingly and willfully falsifies, conceals, or covers up by
any trick, scheme, or device a material fact, or knowingly and
willfully makes any false, fictitious, or fraudulent statements or
representations, or knowingly and willfully makes or uses any false
writing or document knowing the same to contain any false, fictitious,
or fraudulent statement or entry, shall be subject to the penalties set
forth under 18 U.S.C. 1001 and any other applicable criminal statute,
and violations of the provisions of this section may jeopardize the
probative value of the paper; and
(2) To the best of the party's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such
as to harass someone or to cause unnecessary delay or needless increase
in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing
law or by a nonfrivolous argument for the extension, modification, or
reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have
evidentiary support or, if specifically so identified, are likely to
have evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this
section are, after notice and reasonable opportunity to respond,
subject to such sanctions or actions as deemed appropriate by the USPTO
Director, which may include, but are not limited to, any combination
of -
(1) Striking the offending paper;
(2) Referring a practitioner's conduct to the Director of
Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or
presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may
also be subject to disciplinary action.
. 42. Part 11 is amended to add subpart C to read as follows:
Subpart C - Investigations and Disciplinary Proceedings; Jurisdiction,
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Sanctions, Investigations, and Proceedings
§ 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to
disability inactive status.
11.20 Disciplinary sanctions; Transfer to disability inactive
status.
11.21 Warnings.
11.22 Investigations.
11.23 Committee on Discipline.
11.24 Reciprocal discipline.
11.25 Interim suspension and discipline based upon conviction of
committing a serious crime.
11.26 Settlement.
11.27 Exclusion on consent.
11.28 Incapacitated practitioners in a disciplinary proceeding.
11.29 Reciprocal transfer or initial transfer to disability inactive
status.
11.30-11.31 [Reserved]
11.32 Initiating a disciplinary proceeding.
11.33 [Reserved]
11.34 Complaint.
11.35 Service of complaint.
11.36 Answer to complaint.
11.37 [Reserved]
11.38 Contested case.
11.39 Hearing officer; appointment; responsibilities; review of
interlocutory orders; stays.
11.40 Representative for OED Director or respondent.
11.41 Filing of papers.
11.42 Service of papers.
11.43 Motions.
11.44 Hearings.
11.45 Amendment of pleadings.
11.46-11.48 [Reserved]
11.49 Burden of proof.
11.50 Evidence.
11.51 Depositions.
11.52 Discovery.
11.53 Proposed findings and conclusions; post-hearing memorandum.
11.54 Initial decision of hearing officer.
11.55 Appeal to the USPTO Director.
11.56 Decision of the USPTO Director.
11.57 Review of final decision of the USPTO Director.
11.58 Duties of disciplined or resigned practitioner.
11.59 Dissemination of disciplinary and other information.
11.60 Petition for reinstatement.
11.61 Savings clause.
11.62-11.99 [Reserved]
Subpart C - Investigations and Disciplinary Proceedings; Jurisdiction,
Sanctions, Investigations, and Proceedings
§ 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability
inactive status.
(a) All practitioners engaged in practice before the Office; all
practitioners administratively suspended; all practitioners registered
to practice before the Office in patent cases; all practitioners
inactivated; all practitioners authorized under § 11.6(d) to take
testimony; and all practitioners transferred to disability inactive
status, reprimanded, suspended, or excluded from the practice of law by
a duly constituted authority, including by the USPTO Director, are
subject to the disciplinary jurisdiction of the Office. Practitioners
who have resigned shall also be subject to such jurisdiction with
respect to conduct undertaken prior to the resignation and conduct in
regard to any practice before the Office following the resignation.
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(b) Grounds for discipline; Grounds for transfer to disability
inactive status. The following, whether done individually by a
practitioner or in concert with any other person or persons and whether
or not done in the course of providing legal services to a client, or
in a matter pending before the Office, constitute grounds for
discipline or grounds for transfer to disability inactive status.
(1) Grounds for discipline include:
(i) Conviction of a serious crime;
(ii) Discipline on ethical grounds imposed in another jurisdiction
or disciplinary disqualification from participating in or appearing
before any Federal program or agency;
(iii) Failure to comply with any order of a Court disciplining a
practitioner, or any final decision of the USPTO Director in a
disciplinary matter;
(iv) Violation of a Mandatory Disciplinary Rule identified in
§ 10.20(b) of Part 10 of this Subchapter; or
(v) Violation of the oath or declaration taken by the practitioner.
See § 11.8.
(2) Grounds for transfer to disability inactive status include:
(i) Being transferred to disability inactive status in another
jurisdiction;
(ii) Being judicially declared incompetent, being judicially
ordered to be involuntarily committed after a hearing on the grounds of
insanity, incompetency or disability, or being placed by court order
under guardianship or conservatorship; or
(iii) Filing a motion requesting a disciplinary proceeding be held
in abeyance because the practitioner is suffering from a disability or
addiction that makes it impossible for the practitioner to adequately
defend the charges in the disciplinary proceeding.
(c) Petitions to disqualify a practitioner in ex parte or inter
partes matters in the Office are not governed by §§ 11.19
through 11.60 and will be handled on a case-by-case basis under such
conditions as the USPTO Director deems appropriate.
(d) The OED Director may refer the existence of circumstances
suggesting unauthorized practice of law to the authorities in the
appropriate jurisdiction(s).
§ 11.20 Disciplinary sanctions; Transfer to disability inactive status.
(a) Types of discipline. The USPTO Director, after notice and
opportunity for a hearing, and where grounds for discipline exist,
may impose on a practitioner the following types of discipline:
(1) Exclusion from practice before the Office;
(2) Suspension from practice before the Office for an appropriate
period of time;
(3) Reprimand or censure; or
(4) Probation. Probation may be imposed in lieu of or in addition
to any other disciplinary sanction. Any conditions of probation shall
be stated in writing in the order imposing probation. The order shall
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also state whether, and to what extent, the practitioner shall be
required to notify clients of the probation. The order shall establish
procedures for the supervision of probation. Violation of any condition
of probation shall be cause for the probation to be revoked, and the
disciplinary sanction to be imposed for the remainder of the probation
period. Revocation of probation shall occur only after an order to show
cause why probation should not be revoked is resolved adversely to the
practitioner.
(b) Conditions imposed with discipline. When the USPTO Director
imposes discipline, the practitioner may be required to make
restitution either to persons financially injured by the practitioner's
conduct or to an appropriate client's security trust fund, or both, as
a condition of probation or of reinstatement. Such restitution shall be
limited to the return of unearned practitioner fees or misappropriated
client funds. Any other reasonable condition may also be imposed,
including a requirement that the practitioner take and pass a
professional responsibility examination.
(c) Transfer to disability inactive status. The USPTO Director,
after notice and opportunity for a hearing may, and where grounds exist
to believe a practitioner has been transferred to disability inactive
status in another jurisdiction, or has been judicially declared
incompetent; judicially ordered to be involuntarily committed after a
hearing on the grounds of incompetency or disability, or placed by
court order under guardianship or conservatorship, transfer the
practitioner to disability inactive status.
§ 11.21 Warnings.
A warning is neither public nor a disciplinary sanction. The OED
Director may conclude an investigation with the issuance of a warning.
The warning shall contain a brief statement of facts and Mandatory
Disciplinary Rules identified in § 10.20(b) of Part 10 of this
Subchapter relevant to the facts.
§ 11.22 Investigations.
(a) The OED Director is authorized to investigate possible grounds
for discipline. An investigation may be initiated when the OED Director
receives a grievance, information or evidence from any source
suggesting possible grounds for discipline. Neither unwillingness nor
neglect by a grievant to prosecute a charge, nor settlement,
compromise, or restitution with the grievant, shall in itself justify
abatement of an investigation.
(b) Any person possessing information or evidence concerning
possible grounds for discipline of a practitioner may report the
information or evidence to the OED Director. The OED Director may
request that the report be presented in the form of an affidavit or
declaration.
(c) Information or evidence coming from any source which presents
or alleges facts suggesting possible grounds for discipline of a
practitioner will be deemed a grievance.
(d) Preliminary screening of information or evidence. The OED
Director shall examine all information or evidence concerning possible
grounds for discipline of a practitioner.
(e) Notification of investigation. The OED Director shall notify
the practitioner in writing of the initiation of an investigation into
whether a practitioner has engaged in conduct constituting possible
grounds for discipline.
(f) Request for information and evidence by OED Director.
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(1) In the course of the investigation, the OED Director may
request information and evidence regarding possible grounds for
discipline of a practitioner from:
(i) The grievant,
(ii) The practitioner, or
(iii) Any person who may reasonably be expected to provide
information and evidence needed in connection with the grievance or
investigation.
(2) The OED Director may request information and evidence regarding
possible grounds for discipline of a practitioner from a non-grieving
client either after obtaining the consent of the practitioner or upon a
finding by a Contact Member of the Committee on Discipline, appointed
in accordance with § 11.23(d), that good cause exists to believe
that the possible ground for discipline alleged has occurred with
respect to non-grieving clients. Neither a request for, nor disclosure
of, such information shall constitute a violation of any of the
Mandatory Disciplinary Rules identified in § 10.20(b) of this
subchapter.
(g) Where the OED Director makes a request under paragraph (f)(2)
of this section to a Contact Member of the Committee on Discipline,
such Contact Member shall not, with respect to the practitioner
connected to the OED Director's request, participate in the Committee
on Discipline panel that renders a probable cause determination under
paragraph (b)(1) of this section concerning such practitioner, and that
forwards the probable cause finding and recommendation to the OED
Director under paragraph (b)(2) of this section.
(h) Disposition of investigation. Upon the conclusion of an
investigation, the OED Director may:
(1) Close the investigation without issuing a warning, or taking
disciplinary action;
(2) Issue a warning to the practitioner;
(3) Institute formal charges upon the approval of the Committee on
Discipline; or
(4) Enter into a settlement agreement with the practitioner and
submit the same for approval of the USPTO Director.
(i) Closing investigation without issuing a warning or taking
disciplinary action. The OED Director shall terminate an investigation
and decline to refer a matter to the Committee on Discipline if the OED
Director determines that:
(1) The information or evidence is unfounded;
(2) The information or evidence relates to matters not within the
jurisdiction of the Office;
(3) As a matter of law, the conduct about which information or
evidence has been obtained does not constitute grounds for discipline,
even if the conduct may involve a legal dispute; or
(4) The available evidence is insufficient to conclude that there
is probable cause to believe that grounds exist for discipline.
§ 11.23 Committee on Discipline.
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(a) The USPTO Director shall appoint a Committee on Discipline. The
Committee on Discipline shall consist of at least three employees of
the Office. None of the Committee members shall report directly or
indirectly to the OED Director or any employee designated by the USPTO
Director to decide disciplinary matters. Each Committee member shall be
a member in good standing of the bar of the highest court of a State.
The Committee members shall select a Chairperson from among themselves.
Three Committee members will constitute a panel of the Committee.
(b) Powers and duties of the Committee on Discipline. The Committee
shall have the power and duty to:
(1) Meet in panels at the request of the OED Director and, after
reviewing evidence presented by the OED Director, by majority vote of
the panel, determine whether there is probable cause to bring charges
under § 11.32 against a practitioner; and
(2) Prepare and forward its own probable cause findings and
recommendations to the OED Director.
(c) No discovery shall be authorized of, and no member of the
Committee on Discipline shall be required to testify about
deliberations of, the Committee on Discipline or of any panel.
(d) The Chairperson shall appoint the members of the panels and a
Contact Member of the Committee on Discipline.
§ 11.24 Reciprocal discipline.
(a) Notification of OED Director. Within thirty days of being
publicly censured, publicly reprimanded, subjected to probation,
disbarred or suspended by another jurisdiction, or being disciplinarily
disqualified from participating in or appearing before any Federal
program or agency, a practitioner subject to the disciplinary
jurisdiction of the Office shall notify the OED Director in writing of
the same. A practitioner is deemed to be disbarred if he or she is
disbarred, excluded on consent, or has resigned in lieu of a
disciplinary proceeding. Upon receiving notification from any source or
otherwise learning that a practitioner subject to the disciplinary
jurisdiction of the Office has been so publicly censured, publicly
reprimanded, subjected to probation, disbarred, suspended or
disciplinarily disqualified, the OED Director shall obtain a certified
copy of the record or order regarding the public censure, public
reprimand, probation, disbarment, suspension or disciplinary
disqualification and file the same with the USPTO Director. The OED
Director shall, in addition, without Committee on Discipline
authorization, file with the USPTO Director a complaint complying with
§ 11.34 against the practitioner predicated upon the public
censure, public reprimand, probation, disbarment, suspension or
disciplinary disqualification. The OED Director shall request the USPTO
Director to issue a notice and order as set forth in paragraph (b) of
this section.
(b) Notification served on practitioner. Upon receipt of a
certified copy of the record or order regarding the practitioner being
so publicly censured, publicly reprimanded, subjected to probation,
disbarred, suspended or disciplinarily disqualified together with the
complaint, the USPTO Director shall issue a notice directed to the
practitioner in accordance with § 11.35 and to the OED Director
containing:
(1) A copy of the record or order regarding the public censure,
public reprimand, probation, disbarment, suspension or disciplinary
disqualification;
(2) A copy of the complaint; and
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(3) An order directing the practitioner to file a response with the
USPTO Director and the OED Director, within forty days of the date of
the notice establishing a genuine issue of material fact predicated
upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv)
of this section that the imposition of the identical public censure,
public reprimand, probation, disbarment, suspension or disciplinary
disqualification would be unwarranted and the reasons for that claim.
(c) Effect of stay in another jurisdiction. In the event the public
censure, public reprimand, probation, disbarment, suspension imposed by
another jurisdiction or disciplinary disqualification imposed in the
Federal program or agency has been stayed, any reciprocal discipline
imposed by the USPTO may be deferred until the stay expires.
(d) Hearing and discipline to be imposed. (1) The USPTO Director
shall hear the matter on the documentary record unless the USPTO
Director determines that an oral hearing is necessary. After expiration
of the forty days from the date of the notice pursuant to provisions of
paragraph (b) of this section, the USPTO Director shall consider any
timely filed response and shall impose the identical public censure,
public reprimand, probation, disbarment, suspension or disciplinary
disqualification unless the practitioner clearly and convincingly
demonstrates, and the USPTO Director finds there is a genuine issue of
material fact that:
(i) The procedure elsewhere was so lacking in notice or opportunity
to be heard as to constitute a deprivation of due process;
(ii) There was such infirmity of proof establishing the conduct as
to give rise to the clear conviction that the Office could not,
consistently with its duty, accept as final the conclusion on that
subject;
(iii) The imposition of the same public censure, public reprimand,
probation, disbarment, suspension or disciplinary disqualification by
the Office would result in grave injustice; or
(iv) Any argument that the practitioner was not publicly censured,
publicly reprimanded, placed on probation, disbarred, suspended or
disciplinarily disqualified.
(2) If the USPTO Director determines that there is no genuine issue
of material fact, the USPTO Director shall enter an appropriate final
order. If the USPTO Director is unable to make such determination
because there is a genuine issue of material fact, the USPTO Director
shall enter an appropriate order:
(i) Referring the complaint to a hearing officer for a formal
hearing and entry of an initial decision in accordance with the other
rules in this part, and
(ii) Directing the practitioner to file an answer to the complaint
in accordance with § 11.36.
(e) Adjudication in another jurisdiction or Federal agency or
program. In all other respects, a final adjudication in another
jurisdiction or Federal agency or program that a practitioner, whether
or not admitted in that jurisdiction, has been guilty of misconduct
shall establish a prima facie case by clear and convincing evidence
that the practitioner violated 37 CFR 10.23, as further identified
under 37 CFR 10.23(c)(5), (or any successor regulation identifying such
public censure, public reprimand, probation, disbarment, suspension or
disciplinary disqualification as a basis for a disciplinary proceeding
in this Office).
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(f) Reciprocal discipline - action where practice has ceased. Upon
request by the practitioner, reciprocal discipline may be imposed nunc
pro tunc only if the practitioner promptly notified the OED Director of
his or her censure, public reprimand, probation, disbarment, suspension
or disciplinary disqualification in another jurisdiction, and
establishes by clear and convincing evidence that the practitioner
voluntarily ceased all activities related to practice before the Office
and complied with all provisions of § 11.58. The effective date of
any public censure, public reprimand, probation, suspension, disbarment
or disciplinary disqualification imposed nunc pro tunc shall be the
date the practitioner voluntarily ceased all activities related to
practice before the Office and complied with all provisions of § 11.58.
(g) Reinstatement following reciprocal discipline proceeding. A
practitioner may petition for reinstatement under conditions set forth
in § 11.60 no sooner than completion of the period of reciprocal
discipline imposed, and compliance with all provisions of § 11.58.
§ 11.25 Interim suspension and discipline based upon conviction of
committing a serious crime.
(a) Notification of OED Director. Upon being convicted of a crime
in a court of the United States or any State, or violating a criminal
law of a foreign country, a practitioner subject to the disciplinary
jurisdiction of the Office shall notify the OED Director in writing of
the same within thirty days from the date of such conviction. Upon
being advised or learning that a practitioner subject to the
disciplinary jurisdiction of the Office has been convicted of a crime,
the OED Director shall make a preliminary determination whether the
crime constitutes a serious crime warranting interim suspension. If the
crime is a serious crime, the OED Director shall file with the USPTO
Director proof of the conviction and request the USPTO Director to
issue a notice and order set forth in paragraph (b)(2) of this section.
The OED Director shall in addition, without Committee on Discipline
authorization, file with the USPTO Director a complaint against the
practitioner complying with § 11.34 predicated upon the conviction
of a serious crime. If the crime is not a serious crime, the OED
Director shall process the matter in the same manner as any other
information or evidence of a possible violation of a Mandatory
Disciplinary Rule identified in § 10.20(b) of this subchapter coming to
the attention of the OED Director.
(b) Interim suspension and referral for disciplinary proceeding.
All proceedings under this section shall be handled as expeditiously as
possible.
(1) The USPTO Director has authority to place a practitioner on
interim suspension after hearing the request for interim suspension on
the documentary record.
(2) Notification served on practitioner. Upon receipt of a
certified copy of the court record, docket entry or judgment
demonstrating that the practitioner has been so convicted together with
the complaint, the USPTO Director shall forthwith issue a notice
directed to the practitioner in accordance with §§ 11.35(a),
(b) or (c), and to the OED Director, containing:
(i) A copy of the court record, docket entry, or judgment of
conviction;
(ii) A copy of the complaint; and
(iii) An order directing the practitioner to file a response with
the USPTO Director and the OED Director, within forty days of the date
of the notice, establishing that there is a genuine issue of material
fact that the crime did not constitute a serious crime, the
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practitioner is not the individual found guilty of the crime, or that
the conviction was so lacking in notice or opportunity to be heard as
to constitute a deprivation of due process.
(3) Hearing and final order on request for interim suspension. The
request for interim suspension shall be heard by the USPTO Director on
the documentary record unless the USPTO Director determines that the
practitioner's response establishes a genuine issue of material fact
that: The crime did not constitute a serious crime, the practitioner is
not the person who committed the crime, or that the conviction was so
lacking in notice or opportunity to be heard as to constitute a
deprivation of due process. If the USPTO Director determines that there
is no genuine issue of material fact regarding the defenses set forth
in the preceding sentence, the USPTO Director shall enter an
appropriate final order regarding the OED Director's request for
interim suspension regardless of the pendency of any criminal appeal. If
the USPTO Director is unable to make such determination because there is
a genuine issue of material fact, the USPTO Director shall enter a final
order dismissing the request and enter a further order referring the
complaint to a hearing officer for a hearing and entry of an initial
decision in accordance with the other rules in this part and directing the
practitioner to file an answer to the complaint in accordance with § 11.36.
(4) Termination. The USPTO Director has authority to terminate an
interim suspension. In the interest of justice, the USPTO Director may
terminate an interim suspension at any time upon a showing of
extraordinary circumstances, after affording the OED Director an
opportunity to respond to the request to terminate interim suspension.
(5) Referral for disciplinary proceeding. Upon entering a final
order imposing interim suspension, the USPTO Director shall refer the
complaint to a hearing officer to conduct a formal disciplinary
proceeding. The formal disciplinary proceeding, however, shall be
stayed by the hearing officer until all direct appeals from the
conviction are concluded. Review of the initial decision of the hearing
officer shall be pursuant to § 11.55.
(c) Proof of conviction and guilt - (1) Conviction in the United
States. For purposes of a hearing for interim suspension and a hearing
on the formal charges in a complaint filed as a consequence of the
conviction, a certified copy of the court record, docket entry, or
judgment of conviction in a court of the United States or any State
shall establish a prima facie case by clear and convincing evidence
that the practitioner was convicted of a serious crime and that the
conviction was not lacking in notice or opportunity to be heard as to
constitute a deprivation of due process.
(2) Conviction in a foreign country. For purposes of a hearing for
interim suspension and on the formal charges filed as a result of a
finding of guilt, a certified copy of the court record, docket entry,
or judgment of conviction in a court of a foreign country shall
establish a prima facie case by clear and convincing evidence that the
practitioner was convicted of a serious crime and that the conviction
was not lacking in notice or opportunity to be heard as to constitute a
deprivation of due process. However, nothing in this paragraph shall
preclude the practitioner from demonstrating by clear and convincing
evidence in any hearing on a request for interim suspension there is a
genuine issue of material fact to be considered when determining if the
elements of a serious crime were committed in violating the criminal
law of the foreign country and whether a disciplinary sanction should
be entered.
(d) Crime determined not to be serious crime. If the USPTO Director
determines that the crime is not a serious crime, the complaint shall
be referred to the OED Director for investigation under § 11.22 and
processing as is appropriate.
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(e) Reinstatement - (1) Upon reversal or setting aside a finding of
guilt or a conviction. If a practitioner suspended solely under the
provisions of paragraph (b) of this section demonstrates that the
underlying finding of guilt or conviction of serious crimes has been
reversed or vacated, the order for interim suspension shall be vacated
and the practitioner shall be placed on active status unless the
finding of guilt was reversed or the conviction was set aside with
respect to less than all serious crimes for which the practitioner was
found guilty or convicted. The vacating of the interim suspension will
not terminate any other disciplinary proceeding then pending against
the practitioner, the disposition of which shall be determined by the
hearing officer before whom the matter is pending, on the basis of all
available evidence other than the finding of guilt or conviction.
(2) Following conviction of a serious crime. Any practitioner
convicted of a serious crime and disciplined in whole or in part in
regard to that conviction, may petition for reinstatement under
conditions set forth in § 11.60 no sooner than five years after
being discharged following completion of service of his or her
sentence, or after completion of service under probation or parole,
whichever is later.
(f) Notice to clients and others of interim suspension. An interim
suspension under this section shall constitute a suspension of the
practitioner for the purpose of § 11.58.
§ 11.26 Settlement.
Before or after a complaint under § 11.34 is filed, a
settlement conference may occur between the OED Director and the
practitioner. Any offers of compromise and any statements made during
the course of settlement discussions shall not be admissible in
subsequent proceedings. The OED Director may recommend to the USPTO
Director any settlement terms deemed appropriate, including steps taken
to correct or mitigate the matter forming the basis of the action, or
to prevent recurrence of the same or similar conduct. A settlement
agreement shall be effective only upon entry of a final decision by the
USPTO Director.
§ 11.27 Exclusion on consent.
(a) Required affidavit. The OED Director may confer with a
practitioner concerning possible violations by the practitioner of the
Rules of Professional Conduct whether or not a disciplinary proceeding
has been instituted. A practitioner who is the subject of an
investigation or a pending disciplinary proceeding based on allegations
of grounds for discipline, and who desires to resign, may only do so by
consenting to exclusion and delivering to the OED Director an affidavit
declaring the consent of the practitioner to exclusion and stating:
(1) That the practitioner's consent is freely and voluntarily
rendered, that the practitioner is not being subjected to coercion or
duress, and that the practitioner is fully aware of the implications of
consenting to exclusion;
(2) That the practitioner is aware that there is currently pending
an investigation into, or a proceeding involving allegations of
misconduct, the nature of which shall be specifically set forth in the
affidavit to the satisfaction of the OED Director;
(3) That the practitioner acknowledges that, if and when he or she
applies for reinstatement under § 11.60, the OED Director will
conclusively presume, for the limited purpose of determining the
application for reinstatement, that:
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(i) The facts upon which the investigation or complaint is based
are true, and
(ii) The practitioner could not have successfully defended himself
or herself against the allegations in the investigation or charges in
the complaint.
(b) Action by the USPTO Director. Upon receipt of the required
affidavit, the OED Director shall file the affidavit and any related
papers with the USPTO Director for review and approval. Upon such
approval, the USPTO Director will enter an order excluding the
practitioner on consent and providing other appropriate actions. Upon
entry of the order, the excluded practitioner shall comply with the
requirements set forth in § 11.58.
(c) When an affidavit under paragraph (a) of this section is
received after a complaint under § 11.34 has been filed, the OED
Director shall notify the hearing officer. The hearing officer shall
enter an order transferring the disciplinary proceeding to the USPTO
Director, who may enter an order excluding the practitioner on consent.
(d) Reinstatement. Any practitioner excluded on consent under this
section may not petition for reinstatement for five years. A
practitioner excluded on consent who intends to reapply for admission
to practice before the Office must comply with the provisions of § 11.58,
and apply for reinstatement in accordance with § 11.60. Failure to comply
with the provisions of § 11.58 constitutes grounds for denying an
application for reinstatement.
§ 11.28 Incapacitated practitioners in a disciplinary proceeding.
(a) Holding in abeyance a disciplinary proceeding because of
incapacitation due to a current disability or addiction - (1)
Practitioner's motion. In the course of a disciplinary proceeding under
§ 11.32, but before the date set by the hearing officer for a
hearing, the practitioner may file a motion requesting the hearing
officer to enter an order holding such proceeding in abeyance based on
the contention that the practitioner is suffering from a disability or
addiction that makes it impossible for the practitioner to adequately
defend the charges in the disciplinary proceeding.
(i) Content of practitioner's motion. The practitioner's motion
shall, in addition to any other requirement of § 11.43, include or
have attached thereto:
(A) A brief statement of all material facts;
(B) Affidavits, medical reports, official records, or other
documents and the opinion of at least one medical expert setting forth
and establishing any of the material facts on which the practitioner is
relying;
(C) A statement that the practitioner acknowledges the alleged
incapacity by reason of disability or addiction;
(D) Written consent that the practitioner be transferred to
disability inactive status if the motion is granted; and
(E) A written agreement by the practitioner to not practice before
the Office in patent, trademark or other non-patent cases while on
disability inactive status.
(ii) Response. The OED Director's response to any motion hereunder
shall be served and filed within thirty days after service of the
practitioner's motion unless such time is shortened or enlarged by the
hearing officer for good cause shown, and shall set forth the
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following:
(A) All objections, if any, to the actions requested in the motion;
(B) An admission, denial or allegation of lack of knowledge with
respect to each of the material facts in the practitioner's motion and
accompanying documents; and
(C) Affidavits, medical reports, official records, or other
documents setting forth facts on which the OED Director intends to rely
for purposes of disputing or denying any material fact set forth in the
practitioner's papers.
(2) Disposition of practitioner's motion. The hearing officer shall
decide the motion and any response thereto. The motion shall be granted
upon a showing of good cause to believe the practitioner to be
incapacitated as alleged. If the required showing is made, the hearing
officer shall enter an order holding the disciplinary proceeding in
abeyance. In the case of addiction to drugs or intoxicants, the order
may provide that the practitioner will not be returned to active status
absent satisfaction of specified conditions. Upon receipt of the order,
the OED Director shall transfer the practitioner to disability inactive
status, give notice to the practitioner, cause notice to be published,
and give notice to appropriate authorities in the Office that the
practitioner has been placed on disability inactive status. The
practitioner shall comply with the provisions of § 11.58, and shall
not engage in practice before the Office in patent, trademark and other
non-patent law until a determination is made of the practitioner's
capability to resume practice before the Office in a proceeding under
paragraph (c) or paragraph (d) of this section. A practitioner on
disability inactive status must seek permission from the OED Director
to engage in an activity authorized under § 11.58(e). Permission
will be granted only if the practitioner has complied with all the
conditions of §§11.58(a) through 11.58(d) applicable to
disability inactive status. In the event that permission is granted,
the practitioner shall fully comply with the provisions of § 11.58(e).
(b) Motion for reactivation. Any practitioner transferred to
disability inactive status in a disciplinary proceeding may file with
the hearing officer a motion for reactivation once a year beginning at
any time not less than one year after the initial effective date of
inactivation, or once during any shorter interval provided by the order
issued pursuant to paragraph (a)(2) of this section or any modification
thereof. If the motion is granted, the disciplinary proceeding shall
resume under such schedule as may be established by the hearing
officer.
(c) Contents of motion for reactivation. A motion by the
practitioner for reactivation alleging that a practitioner has
recovered from a prior disability or addiction shall be accompanied by
all available medical reports or similar documents relating thereto.
The hearing officer may require the practitioner to present such other
information as is necessary.
(d) OED Director's motion to resume disciplinary proceeding held in
abeyance. (1) The OED Director, having good cause to believe a
practitioner is no longer incapacitated, may file a motion requesting
the hearing officer to terminate a prior order holding in abeyance any
pending proceeding because of the practitioner's disability or
addiction. The hearing officer shall decide the matter presented by the
OED Director's motion hereunder based on the affidavits and other
admissible evidence attached to the OED Director's motion and the
practitioner's response. The OED Director bears the burden of showing
by clear and convincing evidence that the practitioner is able to
defend himself or herself. If there is any genuine issue as to one or
more material facts, the hearing officer will hold an evidentiary
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hearing.
(2) The hearing officer, upon receipt of the OED Director's motion
under paragraph (d)(1) of this section, may direct the practitioner to
file a response. If the hearing officer requires the practitioner to
file a response, the practitioner must present clear and convincing
evidence that the prior self-alleged disability or addiction continues
to make it impossible for the practitioner to defend himself or herself
in the underlying proceeding being held in abeyance.
(e) Action by the hearing officer. If, in deciding a motion under
paragraph (b) or (d) of this section, the hearing officer determines
that there is good cause to believe the practitioner is not
incapacitated from defending himself or herself, or is not
incapacitated from practicing before the Office, the hearing officer
shall take such action as is deemed appropriate, including the entry of
an order directing the reactivation of the practitioner and resumption
of the disciplinary proceeding.
§ 11.29 Reciprocal transfer or initial transfer to disability
inactive status.
(a) Notification of OED Director. (1) Transfer to disability
inactive status in another jurisdiction as grounds for reciprocal
transfer by the Office. Within thirty days of being transferred to
disability inactive status in another jurisdiction, a practitioner
subject to the disciplinary jurisdiction of the Office shall notify the
OED Director in writing of the transfer. Upon notification from any
source that a practitioner subject to the disciplinary jurisdiction of
the Office has been transferred to disability inactive status in another
jurisdiction, the OED Director shall obtain a certified copy of the
order. The OED Director shall file with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be transferred to disability
inactive status, including the specific grounds therefor; and
(iii) A request that the USPTO Director issue a notice and order as
set forth in paragraph (b) of this section.
(2) Involuntary commitment, adjudication of incompetency or court
ordered placement under guardianship or conservatorship as grounds for
initial transfer to disability inactive status. Within thirty days of
being judicially declared incompetent, being judicially ordered to be
involuntarily committed after a hearing on the grounds of incompetency
or disability, or being placed by court order under guardianship or
conservatorship in another jurisdiction, a practitioner subject to the
disciplinary jurisdiction of the Office shall notify the OED Director
in writing of such judicial action. Upon notification from any source
that a practitioner subject to the disciplinary jurisdiction of the
Office has been subject to such judicial action, the OED Director shall
obtain a certified copy of the order. The OED Director shall file with
the USPTO Director:
(i) The order;
(ii) A request that the practitioner be transferred to disability
inactive status, including the specific grounds therefor; and
(iii) A request that the USPTO Director issue a notice and order as
set forth in paragraph (b) of this section.
(b) Notice served on practitioner. Upon receipt of a certified copy
of an order or declaration issued by another jurisdiction demonstrating
that a practitioner subject to the disciplinary jurisdiction of the
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Office has been transferred to disability inactive status, judicially
declared incompetent, judicially ordered to be involuntarily committed
after a judicial hearing on the grounds of incompetency or disability,
or placed by court order under guardianship or conservatorship,
together with the OED Director's request, the USPTO Director shall
issue a notice, comporting with § 11.35, directed to the
practitioner containing:
(1) A copy of the order or declaration from the other jurisdiction,
(2) A copy of the OED Director's request; and
(3) An order directing the practitioner to file a response with the
USPTO Director and the OED Director, within 30 days from the date of
the notice, establishing a genuine issue of material fact supported by
an affidavit and predicated upon the grounds set forth in § 11.29(d)
(1) through (4) that a transfer to disability inactive status would be
unwarranted and the reasons therefor.
(c) Effect of stay of transfer, judicially declared incompetence,
judicially ordered involuntarily commitment on the grounds of
incompetency or disability, or court-ordered placement under
guardianship or conservatorship. In the event the transfer, judicially
declared incompetence, judicially ordered involuntary commitment on the
grounds of incompetency or disability, or court-ordered placement under
guardianship or conservatorship in the other jurisdiction has been
stayed there, any reciprocal transfer or transfer by the Office may be
deferred until the stay expires.
(d) Hearing and transfer to disability inactive status. The request
for transfer to disability inactive status shall be heard by the USPTO
Director on the documentary record unless the USPTO Director determines
that there is a genuine issue of material fact, in which case the USPTO
Director may deny the request. Upon the expiration of 30 days from the
date of the notice pursuant to the provisions of paragraph (b) of this
section, the USPTO Director shall consider any timely filed response
and impose the identical transfer to disability inactive status based
on the practitioner's transfer to disability status in another
jurisdiction, or shall transfer the practitioner to disability inactive
status based on judicially declared incompetence, judicially ordered
involuntary commitment on the grounds of incompetency or disability, or
court-ordered placement under guardianship or conservatorship, unless
the practitioner demonstrates by clear and convincing evidence, or the
USPTO Director finds there is a genuine issue of material fact by clear
and convincing evidence that:
(1) The procedure was so lacking in notice or opportunity to be
heard as to constitute a deprivation of due process;
(2) There was such infirmity of proof establishing the transfer to
disability status, judicial declaration of incompetence, judicial order
for involuntary commitment on the grounds of incompetency or
disability, or placement by court order under guardianship or
conservatorship that the USPTO Director could not, consistent with
Office's duty, accept as final the conclusion on that subject;
(3) The imposition of the same disability status or transfer to
disability status by the USPTO Director would result in grave
injustice; or
(4) The practitioner is not the individual transferred to
disability status, judicially declared incompetent, judicially ordered
for involuntary commitment on the grounds of incompetency or
disability, or placed by court order under guardianship or
conservatorship.
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(5) If the USPTO Director determines that there is no genuine issue
of material fact with regard to any of the elements of paragraphs
(d)(1) through (4) of this section, the USPTO Director shall enter an
appropriate final order. If the USPTO Director is unable to make that
determination because there is a genuine issue of material fact, the
USPTO Director shall enter an appropriate order dismissing the OED
Director's request for such reason.
(e) Adjudication in other jurisdiction. In all other aspects, a
final adjudication in another jurisdiction that a practitioner be
transferred to disability inactive status, is judicially declared
incompetent, is judicially ordered to be involuntarily committed on the
grounds of incompetency or disability, or is placed by court order
under guardianship or conservatorship shall establish the disability
for purposes of a reciprocal transfer to or transfer to disability
status before the Office.
(f) A practitioner who is transferred to disability inactive status
under this section shall be deemed to have been refused recognition to
practice before the Office for purposes of 35 U.S.C. 32.
(g) Order imposing reciprocal transfer to disability inactive
status or order imposing initial transfer to disability inactive
status. An order by the USPTO Director imposing reciprocal transfer to
disability inactive status, or transferring a practitioner to
disability inactive status shall be effective immediately, and shall be
for an indefinite period until further order of the USPTO Director. A
copy of the order transferring a practitioner to disability inactive
status shall be served upon the practitioner, the practitioner's
guardian, and/or the director of the institution to which the
practitioner has been committed in the manner the USPTO Director may
direct. A practitioner reciprocally transferred or transferred to
disability inactive status shall comply with the provisions of
§ 11.58, and shall not engage in practice before the Office in patent,
trademark and other non-patent law unless and until reinstated to
active status.
(h) Confidentiality of proceeding; Orders to be public - (1)
Confidentiality of proceeding. All proceedings under this section
involving allegations of disability of a practitioner shall be kept
confidential until and unless the USPTO Director enters an order
reciprocally transferring or transferring the practitioner to disability
inactive status.
(2) Orders to be public. The OED Director shall publicize any
reciprocal transfer to disability inactive status or transfer to
disability inactive status in the same manner as for the imposition of
public discipline.
(i) Employment of practitioners on disability inactive status. A
practitioner on disability inactive status must seek permission from
the OED Director to engage in an activity authorized under § 11.58(e).
Permission will be granted only if the practitioner has complied with
all the conditions of §§ 11.58(a) through 11.58(d) applicable to
disability inactive status. In the event that permission is granted,
the practitioner shall fully comply with the provisions of § 11.58(e).
(j) Reinstatement from disability inactive status. (1) Generally.
No practitioner reciprocally transferred or transferred to disability
inactive status under this section may resume active status except by
order of the OED Director.
(2) Petition. A practitioner reciprocally transferred or
transferred to disability inactive status shall be entitled to petition
the OED Director for transfer to active status once a year, or at
whatever shorter intervals the USPTO Director may direct in the order
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transferring or reciprocally transferring the practitioner to
disability inactive status or any modification thereof.
(3) Examination. Upon the filing of a petition for transfer to
active status, the OED Director may take or direct whatever action is
deemed necessary or proper to determine whether the incapacity has been
removed, including a direction for an examination of the practitioner
by qualified medical or psychological experts designated by the OED
Director. The expense of the examination shall be paid and borne by the
practitioner.
(4) Required disclosure, waiver of privilege. With the filing of a
petition for reinstatement to active status, the practitioner shall be
required to disclose the name of each psychiatrist, psychologist,
physician and hospital or other institution by whom or in which the
practitioner has been examined or treated for the disability since the
transfer to disability inactive status. The practitioner shall furnish
to the OED Director written consent to the release of information and
records relating to the incapacity if requested by the OED Director.
(5) Learning in the law, examination. The OED Director may direct
that the practitioner establish proof of competence and learning in
law, which proof may include passing the registration examination.
(6) Granting of petition for transfer to active status. The OED
Director shall grant the petition for transfer to active status upon a
showing by clear and convincing evidence that the incapacity has been
removed.
(7) Reinstatement in other jurisdiction. If a practitioner is
reciprocally transferred to disability inactive status on the basis of
a transfer to disability inactive status in another jurisdiction, the
OED Director may dispense with further evidence that the disability has
been removed and may immediately direct reinstatement to active status
upon such terms as are deemed proper and advisable.
(8) Judicial declaration of competency. If a practitioner is
transferred to disability inactive status on the basis of a judicially
declared incompetence, judicially ordered involuntary commitment on the
grounds of incompetency or disability, or court-ordered placement under
guardianship or conservatorship has been declared to be competent, the
OED Director may dispense with further evidence that the incapacity to
practice law has been removed and may immediately direct reinstatement
to active status.
§§ 11.30-11.31 [Reserved]
§ 11.32 Instituting a disciplinary proceeding.
If after conducting an investigation under § 11.22(a), the OED
Director is of the opinion that grounds exist for discipline under
§§ 11.19(b)(3) through (5), the OED Director, after complying
where necessary with the provisions of 5 U.S.C. 558(c), shall convene a
meeting of a panel of the Committee on Discipline. The panel of the
Committee on Discipline shall then determine as specified in § 11.23(b)
whether a disciplinary proceeding shall be instituted. If the panel of
the Committee on Discipline determines that probable cause exists to
bring charges under §§ 11.19(b)(3) through (5), the OED Director shall
institute a disciplinary proceeding by filing a complaint under § 11.34.
§ 11.33 [Reserved]
§ 11.34 Complaint.
(a) A complaint instituting a disciplinary proceeding under
§§ 11.25(b)(4) or 11.32 shall:
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(1) Name the practitioner who may then be referred to as the
"respondent";
(2) Give a plain and concise description of the respondent's
alleged grounds for discipline;
(3) State the place and time, not less than thirty days from the
date the complaint is filed, for filing an answer by the respondent;
(4) State that a decision by default may be entered if an answer is
not timely filed by the respondent; and
(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it fairly informs the
respondent of any grounds for discipline, and where applicable, the
Mandatory Disciplinary Rules identified in § 10.20(b) of this
subchapter that form the basis for the disciplinary proceeding so that
the respondent is able to adequately prepare a defense.
(c) The complaint shall be filed in the manner prescribed by the
USPTO Director.
§ 11.35 Service of complaint.
(a) A complaint may be served on a respondent in any of the
following methods:
(1) By delivering a copy of the complaint personally to the
respondent, in which case the individual who gives the complaint to the
respondent shall file an affidavit with the OED Director indicating the
time and place the complaint was delivered to the respondent.
(2) By mailing a copy of the complaint by "Express Mail," first-
class mail, or any delivery service that provides ability to confirm
delivery or attempted delivery to:
(i) A respondent who is a registered practitioner at the address
provided to OED pursuant to § 11.11, or
(ii) A respondent who is a nonregistered practitioner at the last
address for the respondent known to the OED Director.
(3) By any method mutually agreeable to the OED Director and the
respondent.
(4) In the case of a respondent who resides outside the United
States, by sending a copy of the complaint by any delivery service that
provides ability to confirm delivery or attempted delivery, to:
(i) A respondent who is a registered practitioner at the address
provided to OED pursuant to § 11.11; or
(ii) A respondent who is a nonregistered practitioner at the last
address for the respondent known to the OED Director.
(b) If a copy of the complaint cannot be delivered to the
respondent through any one of the procedures in paragraph (a) of this
section, the OED Director shall serve the respondent by causing an
appropriate notice to be published in the Official Gazette for two
consecutive weeks, in which case, the time for filing an answer shall be
thirty days from the second publication of the notice. Failure to timely
file an answer will constitute an admission of the allegations in the
complaint in accordance with paragraph (d) of § 11.36, and the hearing
officer may enter an initial decision on default.
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(c) If the respondent is known to the OED Director to be
represented by an attorney under § 11.40(a), a copy of the
complaint shall be served on the attorney in lieu of service on the
respondent in the manner provided for in paragraph (a) or (b) of this
section.
§ 11.36 Answer to complaint.
(a) Time for answer. An answer to a complaint shall be filed within
the time set in the complaint but in no event shall that time be less
than thirty days from the date the complaint is filed.
(b) With whom filed. The answer shall be filed in writing with the
hearing officer at the address specified in the complaint. The hearing
officer may extend the time for filing an answer once for a period of
no more than thirty days upon a showing of good cause, provided a
motion requesting an extension of time is filed within thirty days
after the date the complaint is served on respondent. A copy of the
answer, and any exhibits or attachments thereto, shall be served on the
OED Director.
(c) Content. The respondent shall include in the answer a statement
of the facts that constitute the grounds of defense and shall
specifically admit or deny each allegation set forth in the complaint.
The respondent shall not deny a material allegation in the complaint
that the respondent knows to be true or state that respondent is
without sufficient information to form a belief as to the truth of an
allegation, when in fact the respondent possesses that information. The
respondent shall also state affirmatively in the answer special matters
of defense and any intent to raise a disability as a mitigating factor.
If respondent intends to raise a special matter of defense or
disability, the answer shall specify the defense or disability, its
nexus to the misconduct, and the reason it provides a defense or
mitigation. A respondent who fails to do so cannot rely on a special
matter of defense or disability. The hearing officer may, for good
cause, allow the respondent to file the statement late, grant
additional hearing preparation time, or make other appropriate orders.
(d) Failure to deny allegations in complaint. Every allegation in
the complaint that is not denied by a respondent in the answer shall be
deemed to be admitted and may be considered proven. The hearing officer
at any hearing need receive no further evidence with respect to that
allegation.
(e) Default judgment. Failure to timely file an answer will
constitute an admission of the allegations in the complaint and may
result in entry of default judgment.
§ 11.37 [Reserved]
§ 11.38 Contested case.
Upon the filing of an answer by the respondent, a disciplinary
proceeding shall be regarded as a contested case within the meaning of
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24
shall not be admitted into the record or considered unless leave to proceed
under 35 U.S.C. 24 was previously authorized by the hearing officer.
§ 11.39 Hearing officer; appointment; responsibilities; review of
interlocutory orders; stays.
(a) Appointment. A hearing officer, appointed by the USPTO Director
under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disciplinary
proceedings as provided by this Part.
(b) Independence of the Hearing Officer. (1) A hearing officer
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appointed in accordance with paragraph (a) of this section shall not be
subject to first level or second level supervision by either the USPTO
Director or OED Director, or his or her designee.
(2) A hearing officer appointed in accordance with paragraph (a) of
this section shall not be subject to supervision of the person(s)
investigating or prosecuting the case.
(3) A hearing officer appointed in accordance with paragraph (a) of
this section shall be impartial, shall not be an individual who has
participated in any manner in the decision to initiate the proceedings,
and shall not have been employed under the immediate supervision of the
practitioner.
(4) A hearing officer appointed in accordance with paragraph (a) of
this section shall be admitted to practice law and have suitable
experience and training conducting hearings, reaching a determination,
and rendering an initial decision in an equitable manner.
(c) Responsibilities. The hearing officer shall have authority,
consistent with specific provisions of these regulations, to:
(1) Administer oaths and affirmations;
(2) Make rulings upon motions and other requests;
(3) Rule upon offers of proof, receive relevant evidence, and
examine witnesses;
(4) Authorize the taking of a deposition of a witness in lieu of
personal appearance of the witness before the hearing officer;
(5) Determine the time and place of any hearing and regulate its
course and conduct;
(6) Hold or provide for the holding of conferences to settle or
simplify the issues;
(7) Receive and consider oral or written arguments on facts or law;
(8) Adopt procedures and modify procedures for the orderly
disposition of proceedings;
(9) Make initial decisions under §§ 11.25 and 11.54; and
(10) Perform acts and take measures as necessary to promote the
efficient, timely, and impartial conduct of any disciplinary
proceeding.
(d) Time for making initial decision. The hearing officer shall set
times and exercise control over a disciplinary proceeding such that an
initial decision under § 11.54 is normally issued within nine
months of the date a complaint is filed. The hearing officer may,
however, issue an initial decision more than nine months after a
complaint is filed if there exist circumstances, in his or her opinion,
that preclude issuance of an initial decision within nine months of the
filing of the complaint.
(e) Review of interlocutory orders. The USPTO Director will not
review an interlocutory order of a hearing officer except:
(1) When the hearing officer shall be of the opinion:
(i) That the interlocutory order involves a controlling question of
procedure or law as to which there is a substantial ground for a
difference of opinion, and
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(ii) That an immediate decision by the USPTO Director may
materially advance the ultimate termination of the disciplinary
proceeding, or
(2) In an extraordinary situation where the USPTO Director deems
that justice requires review.
(f) Stays pending review of interlocutory order. If the OED
Director or a respondent seeks review of an interlocutory order of a
hearing officer under paragraph (b)(2) of this section, any time period
set by the hearing officer for taking action shall not be stayed unless
ordered by the USPTO Director or the hearing officer.
(g) The hearing officer shall engage in no ex parte discussions
with any party on the merits of the complaint, beginning with
appointment and ending when the final agency decision is issued.
§ 11.40 Representative for OED Director or respondent.
(a) A respondent may represent himself or herself, or be
represented by an attorney before the Office in connection with an
investigation or disciplinary proceeding. The attorney shall file a
written declaration that he or she is an attorney within the meaning of
§ 11.1 and shall state:
(1) The address to which the attorney wants correspondence related
to the investigation or disciplinary proceeding sent, and
(2) A telephone number where the attorney may be reached during
normal business hours.
(b) The Deputy General Counsel for Intellectual Property and
Solicitor, and attorneys in the Office of the Solicitor shall represent
the OED Director. The attorneys representing the OED Director in
disciplinary proceedings shall not consult with the USPTO Director, the
General Counsel, the Deputy General Counsel for General Law, or an
individual designated by the USPTO Director to decide disciplinary
matters regarding the proceeding. The General Counsel and the Deputy
General Counsel for General Law shall remain screened from the
investigation and prosecution of all disciplinary proceedings in order
that they shall be available as counsel to the USPTO Director in
deciding disciplinary proceedings unless access is appropriate to
perform their duties. After a final decision is entered in a
disciplinary proceeding, the OED Director and attorneys representing
the OED Director shall be available to counsel the USPTO Director, the
General Counsel, and the Deputy General Counsel for General Law in any
further proceedings.
§ 11.41 Filing of papers.
(a) The provisions of §§ 1.8 and 2.197 of this subchapter
do not apply to disciplinary proceedings. All papers filed after the
complaint and prior to entry of an initial decision by the hearing
officer shall be filed with the hearing officer at an address or place
designated by the hearing officer.
(b) All papers filed after entry of an initial decision by the
hearing officer shall be filed with the USPTO Director. A copy of the
paper shall be served on the OED Director. The hearing officer or the
OED Director may provide for filing papers and other matters by hand,
by "Express Mail," or by other means.
§ 11.42 Service of papers.
(a) All papers other than a complaint shall be served on a
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respondent who is represented by an attorney by:
(1) Delivering a copy of the paper to the office of the attorney;
or
(2) Mailing a copy of the paper by first-class mail, "Express
Mail," or other delivery service to the attorney at the address
provided by the attorney under § 11.40(a)(1); or
(3) Any other method mutually agreeable to the attorney and a
representative for the OED Director.
(b) All papers other than a complaint shall be served on a
respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the respondent; or
(2) Mailing a copy of the paper by first-class mail, "Express
Mail," or other delivery service to the respondent at the address to
which a complaint may be served or such other address as may be
designated in writing by the respondent; or
(3) Any other method mutually agreeable to the respondent and a
representative of the OED Director.
(c) A respondent shall serve on the representative for the OED
Director one copy of each paper filed with the hearing officer or the
OED Director. A paper may be served on the representative for the OED
Director by:
(1) Delivering a copy of the paper to the representative; or
(2) Mailing a copy of the paper by first-class mail, "Express
Mail," or other delivery service to an address designated in writing
by the representative; or
(3) Any other method mutually agreeable to the respondent and the
representative.
(d) Each paper filed in a disciplinary proceeding shall contain
therein a certificate of service indicating:
(1) The date on which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may require that a
paper be served by hand or by "Express Mail."
(f) Service by mail is completed when the paper mailed in the
United States is placed into the custody of the U.S. Postal Service.
§ 11.43 Motions.
Motions, including all prehearing motions commonly filed under the
Federal Rules of Civil Procedure, shall be filed with the hearing
officer. The hearing officer will determine whether replies to
responses will be authorized and the time period for filing such a
response. No motion shall be filed with the hearing officer unless such
motion is supported by a written statement by the moving party that the
moving party or attorney for the moving party has conferred with the
opposing party or attorney for the opposing party in an effort in good
faith to resolve by agreement the issues raised by the motion and has
been unable to reach agreement. If, prior to a decision on the motion,
the parties resolve issues raised by a motion presented to the hearing
officer, the parties shall promptly notify the hearing officer.
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§ 11.44 Hearings.
(a) The hearing officer shall preside over hearings in disciplinary
proceedings. The hearing officer shall set the time and place for the
hearing. In cases involving an incarcerated respondent, any necessary
oral hearing may be held at the location of incarceration. Oral
hearings will be stenographically recorded and transcribed, and the
testimony of witnesses will be received under oath or affirmation. The
hearing officer shall conduct the hearing as if the proceeding were
subject to 5 U.S.C. 556. A copy of the transcript of the hearing shall
become part of the record. A copy of the transcript shall be provided
to the OED Director and the respondent at the expense of the Office.
(b) If the respondent to a disciplinary proceeding fails to appear
at the hearing after a notice of hearing has been given by the hearing
officer, the hearing officer may deem the respondent to have waived the
right to a hearing and may proceed with the hearing in the absence of
the respondent.
(c) A hearing under this section will not be open to the public
except that the hearing officer may grant a request by a respondent to
open his or her hearing to the public and make the record of the
disciplinary proceeding available for public inspection, provided, a
protective order is entered to exclude from public disclosure
information which is privileged or confidential under applicable laws
or regulations.
§ 11.45 Amendment of pleadings.
The OED Director may, without Committee on Discipline
authorization, but with the authorization of the hearing officer, amend
the complaint to include additional charges based upon conduct
committed before or after the complaint was filed. If amendment of the
complaint is authorized, the hearing officer shall authorize amendment
of the answer. Any party who would otherwise be prejudiced by the
amendment will be given reasonable opportunity to meet the allegations
in the complaint or answer as amended, and the hearing officer shall
make findings on any issue presented by the complaint or answer as
amended.
§§ 11.46-11.48 [Reserved]
§ 11.49 Burden of proof.
In a disciplinary proceeding, the OED Director shall have the
burden of proving the violation by clear and convincing evidence and a
respondent shall have the burden of proving any affirmative defense by
clear and convincing evidence.
§ 11.50 Evidence.
(a) Rules of evidence. The rules of evidence prevailing in courts
of law and equity are not controlling in hearings in disciplinary
proceedings. However, the hearing officer shall exclude evidence that
is irrelevant, immaterial, or unduly repetitious.
(b) Depositions. Depositions of witnesses taken pursuant to
§ 11.51 may be admitted as evidence.
(c) Government documents. Official documents, records, and papers
of the Office, including, but not limited to, all papers in the file of
a disciplinary investigation, are admissible without extrinsic evidence
of authenticity. These documents, records, and papers may be evidenced
by a copy certified as correct by an employee of the Office.
(d) Exhibits. If any document, record, or other paper is introduced
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in evidence as an exhibit, the hearing officer may authorize the
withdrawal of the exhibit subject to any conditions the hearing officer
deems appropriate.
(e) Objections. Objections to evidence will be in short form,
stating the grounds of objection. Objections and rulings on objections
will be a part of the record. No exception to the ruling is necessary
to preserve the rights of the parties.
§ 11.51 Depositions.
(a) Depositions for use at the hearing in lieu of personal
appearance of a witness before the hearing officer may be taken by
respondent or the OED Director upon a showing of good cause and with
the approval of, and under such conditions as may be deemed appropriate
by, the hearing officer. Depositions may be taken upon oral or written
questions, upon not less than ten days' written notice to the other
party, before any officer authorized to administer an oath or
affirmation in the place where the deposition is to be taken. The
parties may waive the requirement of ten days' notice and depositions
may then be taken of a witness at a time and place mutually agreed to
by the parties. When a deposition is taken upon written questions,
copies of the written questions will be served upon the other party
with the notice, and copies of any written cross-questions will be
served by hand or "Express Mail" not less than five days before the
date of the taking of the deposition unless the parties mutually agree
otherwise. A party on whose behalf a deposition is taken shall file a
copy of a transcript of the deposition signed by a court reporter with
the hearing officer and shall serve one copy upon the opposing party.
Expenses for a court reporter and preparing, serving, and filing
depositions shall be borne by the party at whose instance the
deposition is taken. Depositions may not be taken to obtain discovery,
except as provided for in paragraph (b) of this section.
(b) When the OED Director and the respondent agree in writing, a
deposition of any witness who will appear voluntarily may be taken
under such terms and conditions as may be mutually agreeable to the OED
Director and the respondent. The deposition shall not be filed with the
hearing officer and may not be admitted in evidence before the hearing
officer unless he or she orders the deposition admitted in evidence.
The admissibility of the deposition shall lie within the discretion of
the hearing officer who may reject the deposition on any reasonable
basis including the fact that demeanor is involved and that the witness
should have been called to appear personally before the hearing
officer.
§ 11.52 Discovery.
Discovery shall not be authorized except as follows:
(a) After an answer is filed under § 11.36 and when a party
establishes that discovery is reasonable and relevant, the hearing
officer, under such conditions as he or she deems appropriate, may
order an opposing party to:
(1) Answer a reasonable number of written requests for admission or
interrogatories;
(2) Produce for inspection and copying a reasonable number of
documents; and
(3) Produce for inspection a reasonable number of things other than
documents.
(b) Discovery shall not be authorized under paragraph (a) of this
section of any matter which:
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(1) Will be used by another party solely for impeachment;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any other disciplinary proceeding;
(4) Relates to experts except as the hearing officer may require
under paragraph (e) of this section;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal
theories of any attorney or other representative of a party.
(c) The hearing officer may deny discovery requested under
paragraph (a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party required to produce the
discovery sought; or
(3) Consists of information that is available:
(i) Generally to the public;
(ii) Equally to the parties; or
(iii) To the party seeking the discovery through another source.
(d) Prior to authorizing discovery under paragraph (a) of this
section, the hearing officer shall require the party seeking discovery
to file a motion (§ 11.43) and explain in detail, for each request
made, how the discovery sought is reasonable and relevant to an issue
actually raised in the complaint or the answer.
(e) The hearing officer may require parties to file and serve,
prior to any hearing, a pre-hearing statement that contains:
(1) A list (together with a copy) of all proposed exhibits to be
used in connection with a party's case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the individual will be
qualified as an expert;
(ii) A statement as to the subject matter on which the expert is
expected to testify; and
(iii) A statement of the substance of the facts and opinions to
which the expert is expected to testify;
(4) Copies of memoranda reflecting respondent's own statements to
administrative representatives.
§ 11.53 Proposed findings and conclusions; post-hearing memorandum.
Except in cases in which the respondent has failed to answer the
complaint or amended complaint, the hearing officer, prior to making an
initial decision, shall afford the parties a reasonable opportunity to
submit proposed findings and conclusions and a post-hearing memorandum
in support of the proposed findings and conclusions.
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§ 11.54 Initial decision of hearing officer.
(a) The hearing officer shall make an initial decision in the case.
The decision will include:
(1) A statement of findings of fact and conclusions of law, as well
as the reasons or bases for those findings and conclusions with appropriate
references to the record, upon all the material issues of fact, law, or
discretion presented on the record, and
(2) An order of default judgment, of suspension or exclusion from
practice, of reprimand, or an order dismissing the complaint. The
hearing officer shall transmit a copy of the decision to the OED
Director and to the respondent. After issuing the decision, the hearing
officer shall transmit the entire record to the OED Director. In the
absence of an appeal to the USPTO Director, the decision of the hearing
officer, including a default judgment, will, without further
proceedings, become the decision of the USPTO Director thirty days from
the date of the decision of the hearing officer.
(b) The initial decision of the hearing officer shall explain the
reason for any default judgment, reprimand, suspension, or exclusion.
In determining any sanction, the following four factors must be
considered if they are applicable:
(1) Whether the practitioner has violated a duty owed to a client,
to the public, to the legal system, or to the profession;
(2) Whether the practitioner acted intentionally, knowingly, or
negligently;
(3) The amount of the actual or potential injury caused by the
practitioner's misconduct; and
(4) The existence of any aggravating or mitigating factors.
§ 11.55 Appeal to the USPTO Director.
(a) Within thirty days after the date of the initial decision of
the hearing officer under §§ 11.25 or 11.54, either party may
appeal to the USPTO Director. The appeal shall include the appellant's
brief. If more than one appeal is filed, the party who files the appeal
first is the appellant for purpose of this rule. If appeals are filed
on the same day, the respondent is the appellant. If an appeal is
filed, then the OED Director shall transmit the entire record to the
USPTO Director. Any cross-appeal shall be filed within fourteen days
after the date of service of the appeal pursuant to § 11.42, or
thirty days after the date of the initial decision of the hearing
officer, whichever is later. The cross-appeal shall include the cross-
appellant's brief. Any appellee or cross-appellee brief must be filed
within thirty days after the date of service pursuant to § 11.42 of
an appeal or cross-appeal. Any reply brief must be filed within
fourteen days after the date of service of any appellee or cross-
appellee brief.
(b) An appeal or cross-appeal must include exceptions to the
decisions of the hearing officer and supporting reasons for those
exceptions. Any exception not raised will be deemed to have been waived
and will be disregarded by the USPTO Director in reviewing the initial
decision.
(c) All briefs shall:
(1) Be filed with the USPTO Director at the address set forth in
§ 1.1(a)(3)(ii) of this subchapter and served on the opposing party;
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(2) Include separate sections containing a concise statement of the
disputed facts and disputed points of law; and
(3) Be typed on 8 1/2 by 11-inch paper, and comply with Rule
32(a)(4)-(6) of the Federal Rules of Appellate Procedure.
(d) An appellant's, cross-appellant's, appellee's, and cross-
appellee's brief shall be no more than thirty pages in length, and
comply with Rule 28(a)(2), (3), and (5) through (10) of the Federal
Rules of Appellate Procedure. Any reply brief shall be no more than
fifteen pages in length, and shall comply with Rule 28(a)(2), (3), (8),
and (9) of the Federal Rules of Appellate Procedure.
(e) The USPTO Director may refuse entry of a nonconforming brief.
(f) The USPTO Director will decide the appeal on the record made
before the hearing officer.
(g) Unless the USPTO Director permits, no further briefs or motions
shall be filed.
(h) The USPTO Director may order reopening of a disciplinary
proceeding in accordance with the principles that govern the granting
of new trials. Any request to reopen a disciplinary proceeding on the
basis of newly discovered evidence must demonstrate that the newly
discovered evidence could not have been discovered by due diligence.
(i) In the absence of an appeal by the OED Director, failure by the
respondent to appeal under the provisions of this section shall result
in the initial decision being final and effective thirty days from the
date of the initial decision of the hearing officer.
§ 11.56 Decision of the USPTO Director.
(a) The USPTO Director shall decide an appeal from an initial
decision of the hearing officer. On appeal from the initial decision,
the USPTO Director has authority to conduct a de novo review of the
factual record. The USPTO Director may affirm, reverse, or modify the
initial decision or remand the matter to the hearing officer for such
further proceedings as the USPTO Director may deem appropriate. In
making a final decision, the USPTO Director shall review the record or
the portions of the record designated by the parties. The USPTO
Director shall transmit a copy of the final decision to the OED
Director and to the respondent.
(b) A final decision of the USPTO Director may dismiss a
disciplinary proceeding, reverse or modify the initial decision,
reprimand a practitioner, or may suspend or exclude the practitioner
from practice before the Office. A final decision suspending or
excluding a practitioner shall require compliance with the provisions
of § 11.58. The final decision may also condition the reinstatement
of the practitioner upon a showing that the practitioner has taken
steps to correct or mitigate the matter forming the basis of the
action, or to prevent recurrence of the same or similar conduct.
(c) The respondent or the OED Director may make a single request
for reconsideration or modification of the decision by the USPTO
Director if filed within twenty days from the date of entry of the
decision. No request for reconsideration or modification shall be
granted unless the request is based on newly discovered evidence or
error of law or fact, and the requestor must demonstrate that any newly
discovered evidence could not have been discovered any earlier by due
ligence. Such a request shall have the effect of staying the
effective date of the order of discipline in the final decision. The
decision by the USPTO Director is effective on its date of entry.
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§ 11.57 Review of final decision of the USPTO Director.
(a) Review of the final decision by the USPTO Director in a
disciplinary case may be had, subject to § 11.55(d), by a petition
filed in accordance with 35 U.S.C. 32. The Respondent must serve the
USPTO Director with the petition. Respondent must serve the petition in
accordance with Rule 4 of the Federal Rules of Civil Procedure and
§ 104.2 of this Title.
(b) Except as provided for in § 11.56(c), an order for
discipline in a final decision will not be stayed except on proof of
exceptional circumstances.
§ 11.58 Duties of disciplined or resigned practitioner, or
practitioner on disability inactive status.
(a) An excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status shall not engage
in any practice of patent, trademark and other non-patent law before
the Office. An excluded, suspended or resigned practitioner will not be
automatically reinstated at the end of his or her period of exclusion
or suspension. An excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status must comply with
the provisions of this section and § 11.60 to be reinstated.
Failure to comply with the provisions of this section may constitute
both grounds for denying reinstatement or readmission; and cause for
further action, including seeking further exclusion, suspension, and
for revocation of any pending probation.
(b) Unless otherwise ordered by the USPTO Director, any excluded,
suspended or resigned practitioner, or practitioner transferred to
disability inactive status shall:
(1) Within thirty days after the date of entry of the order of
exclusion, suspension, acceptance of resignation, or transfer to
disability inactive status:
(i) File a notice of withdrawal as of the effective date of the
exclusion, suspension, acceptance of resignation, or transfer to
disability inactive status in each pending patent and trademark
application, each pending reexamination and interference proceeding,
and every other matter pending in the Office, together with a copy of
the notices sent pursuant to paragraphs (b) and (c) of this section;
(ii) Provide notice to all State and Federal jurisdictions and
administrative agencies to which the practitioner is admitted to
practice and all clients the practitioner represents having immediate
or prospective business before the Office in patent, trademark and
other non-patent matters of the order of exclusion, suspension,
acceptance of resignation, or transferred to disability inactive status
and of the practitioner's consequent inability to act as a practitioner
after the effective date of the order; and that, if not represented by
another practitioner, the client should act promptly to substitute
another practitioner, or to seek legal advice elsewhere, calling
attention to any urgency arising from the circumstances of the case;
(iii) Provide notice to the practitioner(s) for all opposing
parties (or, to the parties in the absence of a practitioner
representing the parties) in matters pending before the Office of the
practitioner's exclusion, suspension, resignation, or transfer to
disability inactive status and, that as a consequence, the practitioner
is disqualified from acting as a practitioner regarding matters before
the Office after the effective date of the suspension, exclusion,
resignation or transfer to disability inactive status, and state in the
notice the mailing address of each client of the excluded, suspended or
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resigned practitioner, or practitioner transferred to disability
inactive status who is a party in the pending matter;
(iv) Deliver to all clients having immediate or prospective
business before the Office in patent, trademark or other non-patent
matters any papers or other property to which the clients are entitled,
or shall notify the clients and any co-practitioner of a suitable time
and place where the papers and other property may be obtained, calling
attention to any urgency for obtaining the papers or other property;
(v) Relinquish to the client, or other practitioner designated by
the client, all funds for practice before the Office, including any
legal fees paid in advance that have not been earned and any advanced
costs not expended;
(vi) Take any necessary and appropriate steps to remove from any
telephone, legal, or other directory any advertisement, statement, or
representation which would reasonably suggest that the practitioner is
authorized to practice patent, trademark, or other non-patent law
before the Office; and
(vii) Serve all notices required by paragraphs (b)(1)(ii) and
(b)(1)(iii) of this section by certified mail, return receipt
requested, unless mailed abroad. If mailed abroad, all notices shall be
served with a receipt to be signed and returned to the practitioner.
(2) Within forty-five days after entry of the order of suspension,
exclusion, or of acceptance of resignation, the practitioner shall file
with the OED Director an affidavit of compliance certifying that the
practitioner has fully complied with the provisions of the order, this
section, and with the Mandatory Disciplinary Rules identified in
§ 10.20(b) of this subchapter for withdrawal from representation.
Appended to the affidavit of compliance shall be:
(i) A copy of each form of notice, the names and addresses of the
clients, practitioners, courts, and agencies to which notices were
sent, and all return receipts or returned mail received up to the date
of the affidavit. Supplemental affidavits shall be filed covering
subsequent return receipts and returned mail. Such names and addresses
of clients shall remain confidential unless otherwise ordered by the
USPTO Director;
(ii) A schedule showing the location, title and account number of
every bank account designated as a client or trust account, deposit
account in the Office, or other fiduciary account, and of every account
in which the practitioner holds or held as of the entry date of the
order any client, trust, or fiduciary funds for practice before the
Office;
(iii) A schedule describing the practitioner's disposition of all
client and fiduciary funds for practice before the Office in the
practitioner's possession, custody or control as of the date of the
order or thereafter;
(iv) Such proof of the proper distribution of said funds and the
closing of such accounts as has been requested by the OED Director,
including copies of checks and other instruments;
(v) A list of all other State, Federal, and administrative
jurisdictions to which the practitioner is admitted to practice; and
(vi) An affidavit describing the precise nature of the steps taken
to remove from any telephone, legal, or other directory any
advertisement, statement, or representation which would reasonably
suggest that the practitioner is authorized to practice patent,
trademark, or other non-patent law before the Office. The affidavit
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shall also state the residence or other address of the practitioner to
which communications may thereafter be directed, and list all State and
Federal jurisdictions, and administrative agencies to which the
practitioner is admitted to practice. The OED Director may require such
additional proof as is deemed necessary. In addition, for the period of
discipline, an excluded or suspended practitioner, or a practitioner
transferred to disability inactive status shall continue to file a
statement in accordance with § 11.11, regarding any change of
residence or other address to which communications may thereafter be
directed, so that the excluded or suspended practitioner, or
practitioner transferred to disability inactive status may be located
if a grievance is received regarding any conduct occurring before or
after the exclusion or suspension. The practitioner shall retain copies
of all notices sent and shall maintain complete records of the steps
taken to comply with the notice requirements.
(3) Not hold himself or herself out as authorized to practice law
before the Office.
(4) Not advertise the practitioner's availability or ability to
perform or render legal services for any person having immediate or
prospective business before the Office as to that business.
(5) Not render legal advice or services to any person having
immediate or prospective business before the Office as to that
business.
(6) Promptly take steps to change any sign identifying the
practitioner's or the practitioner's firm's office and the
practitioner's or the practitioner's firm's stationery to delete
therefrom any advertisement, statement, or representation which would
reasonably suggest that the practitioner is authorized to practice law
before the Office.
(c) An excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status after entry of
the order of exclusion or suspension, acceptance of resignation, or
transfer to disability inactive status shall not accept any new
retainer regarding immediate or prospective business before the Office,
or engage as a practitioner for another in any new case or legal matter
regarding practice before the Office. The excluded, suspended or
resigned practitioner, or practitioner transferred to disability
inactive status shall be granted limited recognition for a period of
thirty days. During the thirty-day period of limited recognition, the
excluded, suspended or resigned practitioner, or practitioner
transferred to disability inactive status shall conclude work on behalf
of a client on any matters that were pending before the Office on the
date of entry of the order of exclusion or suspension, or acceptance of
resignation. If such work cannot be concluded, the excluded, suspended
or resigned practitioner, or practitioner transferred to disability
inactive status shall so advise the client so that the client may make
other arrangements.
(d) Required records. An excluded, suspended or resigned
practitioner, or practitioner transferred to disability inactive status
shall keep and maintain records of the various steps taken under this
section, so that in any subsequent proceeding proof of compliance with
this section and with the exclusion or suspension order will be
available. The OED Director will require the practitioner to submit
such proof as a condition precedent to the granting of any petition for
reinstatement.
(e) An excluded, suspended or resigned practitioner, or
practitioner on disability inactive status who aids another
practitioner in any way in the other practitioner's practice of law
before the Office, may, under the direct supervision of the other
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practitioner, act as a paralegal for the other practitioner or perform
other services for the other practitioner which are normally performed
by laypersons, provided:
(1) The excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status is a salaried
employee of:
(i) The other practitioner;
(ii) The other practitioner's law firm; or
(iii) A client-employer who employs the other practitioner as a
salaried employee;
(2) The other practitioner assumes full professional responsibility
to any client and the Office for any work performed by the excluded,
suspended or resigned practitioner for the other practitioner;
(3) The excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status does not:
(i) Communicate directly in writing, orally, or otherwise with a
client of the other practitioner in regard to any immediate or
prospective business before the Office;
(ii) Render any legal advice or any legal services to a client of
the other practitioner in regard to any immediate or prospective
business before the Office; or
(iii) Meet in person or in the presence of the other practitioner
in regard to any immediate or prospective business before the Office,
with:
(A) Any Office employee in connection with the prosecution of any
patent, trademark, or other case;
(B) Any client of the other practitioner, the other practitioner's
law firm, or the client-employer of the other practitioner; or
(C) Any witness or potential witness whom the other practitioner,
the other practitioner's law firm, or the other practitioner's client-
employer may or intends to call as a witness in any proceeding before
the Office. The term "witness" includes individuals who will testify
orally in a proceeding before, or sign an affidavit or any other
document to be filed in, the Office.
(f) When an excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status acts as a
paralegal or performs services under paragraph (e) of this section, the
practitioner shall not thereafter be reinstated to practice before the
Office unless:
(1) The practitioner shall have filed with the OED Director an
affidavit which:
(i) Explains in detail the precise nature of all paralegal or other
services performed by the excluded, suspended or resigned practitioner,
or practitioner transferred to disability inactive status, and
(ii) Shows by clear and convincing evidence that the excluded,
suspended or resigned practitioner, or practitioner transferred to
disability inactive status has complied with the provisions of this
section and all Mandatory Disciplinary Rules identified in § 10.20(b)
of this subchapter; and
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(2) The other practitioner shall have filed with the OED Director a
written statement which:
(i) Shows that the other practitioner has read the affidavit
required by paragraph (d)(1) of this section and that the other
practitioner believes every statement in the affidavit to be true, and
(ii) States why the other practitioner believes that the excluded,
suspended or resigned practitioner, or practitioner transferred to
disability inactive status has complied with paragraph (c) of this
section.
§ 11.59 Dissemination of disciplinary and other information.
(a) The OED Director shall inform the public of the disposition of
each matter in which public discipline has been imposed, and of any
other changes in a practitioner's registration status. Public
discipline includes exclusion, as well as exclusion on consent;
suspension; and public reprimand. Unless otherwise ordered by the USPTO
Director, the OED Director shall give notice of public discipline and
the reasons for the discipline to disciplinary enforcement agencies in
the State where the practitioner is admitted to practice, to courts
where the practitioner is known to be admitted, and the public. If
public discipline is imposed, the OED Director shall cause a final
decision of the USPTO Director to be published. Final decisions of the
USPTO Director include default judgments. See § 11.54(a)(2). If a
private reprimand is imposed, the OED Director shall cause a redacted
version of the final decision to be published.
(b) Records available to the public. Unless the USPTO Director
orders that the proceeding or a portion of the record be kept
confidential, the OED Director's records of every disciplinary
proceeding where a practitioner is reprimanded, suspended, or excluded,
including when said sanction is imposed by default judgment, shall be
made available to the public upon written request, except that
information may be withheld as necessary to protect the privacy of
third parties or as directed in a protective order issued pursuant to
§ 11.44(c). The record of a proceeding that results in a
practitioner's transfer to disability inactive status shall not be
available to the public.
(c) Access to records of exclusion by consent. Unless the USPTO
Director orders that the proceeding or a portion of the record be kept
confidential, an order excluding a practitioner on consent under
§ 11.27 and the affidavit required under paragraph (a) of § 11.27
shall be available to the public, except that information in the order
or affidavit may be withheld as necessary to protect the privacy of third
parties or as directed in a protective order under § 11.44(c). The
affidavit required under paragraph (a) of § 11.27 shall not be used in any
other proceeding except by order of the USPTO Director or upon written
consent of the practitioner.
§ 11.60 Petition for reinstatement.
(a) Restrictions on reinstatement. An excluded, suspended or
resigned practitioner shall not resume practice of patent, trademark,
or other non-patent law before the Office until reinstated by order of
the OED Director or the USPTO Director.
(b) Petition for reinstatement. An excluded or suspended
practitioner shall be eligible to apply for reinstatement only upon
expiration of the period of suspension or exclusion and the
practitioner's full compliance with § 11.58. An excluded
practitioner shall be eligible to apply for reinstatement no earlier
than at least five years from the effective date of the exclusion. A
resigned practitioner shall be eligible to petition for reinstatement
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and must show compliance with § 11.58 no earlier than at least five
years from the date the practitioner's resignation is accepted and an
order is entered excluding the practitioner on consent.
(c) Review of reinstatement petition. An excluded, suspended or
resigned practitioner shall file a petition for reinstatement
accompanied by the fee required by § 1.21(a)(10) of this
subchapter. The petition for reinstatement shall be filed with the OED
Director. An excluded or suspended practitioner who has violated any
provision of § 11.58 shall not be eligible for reinstatement until
a continuous period of the time in compliance with § 11.58 that is
equal to the period of suspension or exclusion has elapsed. A resigned
practitioner shall not be eligible for reinstatement until compliance
with § 11.58 is shown. If the excluded, suspended or resigned
practitioner is not eligible for reinstatement, or if the OED Director
determines that the petition is insufficient or defective on its face,
the OED Director may dismiss the petition. Otherwise the OED Director
shall consider the petition for reinstatement. The excluded, suspended
or resigned practitioner seeking reinstatement shall have the burden of
proof by clear and convincing evidence. Such proof shall be included in
or accompany the petition, and shall establish:
(1) That the excluded, suspended or resigned practitioner has the
good moral character and reputation, competency, and learning in law
required under § 11.7 for admission;
(2) That the resumption of practice before the Office will not be
detrimental to the administration of justice or subversive to the
public interest; and
(3) That the suspended practitioner has complied with the
provisions of § 11.58 for the full period of suspension, that the
excluded practitioner has complied with the provisions of § 11.58
for at least five continuous years, or that the resigned practitioner
has complied with § 11.58 upon acceptance of the resignation.
(d) Petitions for reinstatement - Action by the OED Director
granting reinstatement. (1) If the excluded, suspended or resigned
practitioner is found to have complied with paragraphs (c)(1) through
(c)(3) of this section, the OED Director shall enter an order of
reinstatement, which shall be conditioned on payment of the costs of
the disciplinary proceeding to the extent set forth in paragraphs
(d)(2) and (3) of this section.
(2) Payment of costs of disciplinary proceedings. Prior to
reinstatement to practice, the excluded or suspended practitioner shall
pay the costs of the disciplinary proceeding. The costs imposed
pursuant to this section include all of the following:
(i) The actual expense incurred by the OED Director or the Office
for the original and copies of any reporter's transcripts of the
disciplinary proceeding, and any fee paid for the services of the
reporter;
(ii) All expenses paid by the OED Director or the Office which
would qualify as taxable costs recoverable in civil proceedings; and
(iii) The charges determined by the OED Director to be "reasonable
costs" of investigation, hearing, and review. These amounts shall
serve to defray the costs, other than fees for services of attorneys
and experts, of the Office of Enrollment and Discipline in the
preparation or hearing of the disciplinary proceeding, and costs
incurred in the administrative processing of the disciplinary
proceeding.
(3) An excluded or suspended practitioner may be granted relief, in
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whole or in part, only from an order assessing costs under this section
or may be granted an extension of time to pay these costs, in the
discretion of the OED Director, upon grounds of hardship, special
circumstances, or other good cause.
(e) Petitions for reinstatement - Action by the OED Director denying
reinstatement. If the excluded, suspended or resigned practitioner is
found unfit to resume the practice of patent law before the Office, the
OED Director shall first provide the excluded, suspended or resigned
practitioner with an opportunity to show cause in writing why the
petition should not be denied. Failure to comply with § 11.12(c)
shall constitute unfitness. If unpersuaded by the showing, the OED
Director shall deny the petition. The OED Director may require the
excluded, suspended or resigned practitioner, in meeting the
requirements of § 11.7, to take and pass an examination under
§ 11.7(b), ethics courses, and/or the Multistate Professional
Responsibility Examination. The OED Director shall provide findings,
together with the record. The findings shall include on the first page,
immediately beneath the caption of the case, a separate section
entitled "Prior Proceedings" which shall state the docket number of
the original disciplinary proceeding in which the exclusion or
suspension was ordered.
(f) Resubmission of petitions for reinstatement. If a petition for
reinstatement is denied, no further petition for reinstatement may be
filed until the expiration of at least one year following the denial
unless the order of denial provides otherwise.
(g) Reinstatement proceedings open to public. Proceedings on any
petition for reinstatement shall be open to the public. Before
reinstating any excluded or suspended practitioner, the OED Director
shall publish a notice of the excluded or suspended practitioner's
petition for reinstatement and shall permit the public a reasonable
opportunity to comment or submit evidence with respect to the petition
for reinstatement.
§ 11.61 Savings clause.
(a) A disciplinary proceeding based on conduct engaged in prior to
September 15, 2008 may be instituted subsequent to such effective date,
if such conduct would continue to justify suspension or exclusion under
the provisions of this part.
(b) No practitioner shall be subject to a disciplinary proceeding
under this part based on conduct engaged in before the effective date
hereof if such conduct would not have been subject to disciplinary
action before September 15, 2008.
(c) Sections 11.24, 11.25, 11.28 and 11.34 through 11.57 shall
apply to all proceedings in which the complaint is filed on or after
the effective date of these regulations. Section 11.26 and 11.27 shall
apply to matters pending on or after September 15, 2008.
(d) Sections 11.58 through 11.60 shall apply to all cases in which
an order of suspension or exclusion is entered or resignation is
accepted on or after September 15, 2008.
§§ 11.62-11.99 [Reserved]
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
. 43. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135.
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. 44. Revise § 41.5(e) to read as follows:
§ 41.5 Counsel.
* * * * *
(e) Referral to the Director of Enrollment and Discipline. Possible
violations of the disciplinary rules in part 11 of this subchapter may
be referred to the Office of Enrollment and Discipline for investigation.
See § 11.22 of this subchapter.
July 31, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
(1) In 1968, the American Bar Association (ABA) established the Clark
Committee (chaired by former U.S. Supreme Court Justice Tom Clark).
The Clark Committee issued its Report, PROBLEMS AND RECOMMENDATIONS
IN DISCIPLINARY ENFORCEMENT (Clark Report), 1 (1970). In 1989, the
ABA established the McKay Commission (chaired by former N.Y.U. Law
School Dean Robert B. McKay) to examine the effects of the Clark
Report and to study additional reforms. The McKay Commission's Report,
LAWYER REGULATION FOR A NEW CENTURY (1992) is referred to as the
McKay Report.
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