(338) Interpretation of 37 CFR §§ 11.7(d)(2) and (d)(3)
This notice explains the interpretation of 37 CFR Secs.
11.7(d)(2) and (d)(3) by the Director of Enrollment and Discipline (OED
Director) and background information for that interpretation. These
subsections concern the circumstances under which the Director may
waive the registration examination for former employees of the United
States Patent and Trademark Office (USPTO or Office). As this notice
explains, the phrase "patent examining corps," which appeared in
the penultimate sentence of former 37 CFR Sec. 10.7(b) and now appears in
Secs. 11.7(d)(2) and (d)(3), is as broadly interpreted now as it was in
construing Sec. 10.7(b).
In summary, Sec. 11.7(d)(2) grandfathers the following employees
who actively served four or more years as patent examiners as eligible
for waiver of the registration examination: those who on July 26, 2004
staffed the Commissioner of Patents and the organizations reporting to
the Commissioner, including the Deputy Commissioner of Patent
Examination Policy, the Deputy Commissioner of Patent Operations
(including Patent Examining Groups), or the Deputy Commissioner for
Patent Resources and Planning; and those who on July 26, 2004 staffed
External Affairs, Office of Enforcement, Office of International
Relations, Office of Congressional Relations, Board of Patent Appeals
and Interferences, or Office of Enrollment and Discipline. For
employees having a quality performance element in their performance
plan, the registration examination would be waived upon satisfying Secs.
11.7(d)(2)(ii) and (iii). For employees lacking a quality performance
element in their performance, the examination would be waived upon
filing a request under 37 CFR Sec. 11.5 for waiver of the requirements
under Secs. 11.7(d)(2)(ii) and (iii) and showing the waiver is necessary
or justified. See the discussion in the last paragraph infra
of how to justify the waiver under Sec. 11.5.
Before July 26, 2004, the OED Director could waive the taking
of the registration examination in the case of an individual who had
actively served for at least four years in the patent examining corps
of the Office. See 37 CFR Sec. 10.7(b), penultimate sentence, and its
predecessor rule, 37 CFR Sec. 1.341(c). These rules were applied at the
time the individual separated from the Office. The examination was not
waived in the cases of former examiners who, upon separation from the
Office, were rated unacceptable for quality performance elements.
As of July 26, 2004, the registration examination may be waived
in the case of a former patent examiner meeting the scientific and
technical training requirements if the individual demonstrates that he
or she, inter alia, actively served for at least four years
in the patent examining corps of the Office by July 26, 2004, and was
serving in the corps at the time of separation from the Office. See 37
CFR Sec. 11.7(d)(2). The qualifications for former examiners who
qualified under the penultimate sentence of Sec. 10.7(b) are
grandfathered into the provisions of Sec. 11.7(d)(2). Section 10.7(b) and
its predecessor rules did not define the "examination corps."
Many Office organizations have been created and staffed with
employees who actively served as patent examiners for four or more
years. At one time, all the organizations reported to the Commissioner
of Patents. With the passage of time, the Office was reorganized, and
not all organizations continue to report to the Commissioner of
Patents. Some employees who served four years as examiners and staffed
the organizations were in organizations that no longer reported to the
Commissioner of Patents. These former examiners separated from the
Office while being a part of the staff of such organizations. The
provisions of Sec. 10.7(b) were applied to the former patent examiners
whether or not the organization reported to the Commissioner of
Patents. For example, the examination was waived in the case of patent
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classifiers in the Classification Operations and members of the Board
of Patent Appeals and Interferences who had actively served as patent
examiners for four or more years.
There is no intent in the provisions of 37 CFR Sec. 11.7(d)(2) to
change the eligibility for waiver of the examination for Office
employees who had actively served at least four years in the patent
examining corps on or before July 26, 2004. Accordingly, "patent
examining corps" in Sec. 11.7(d)(2) is construed to encompass the
Commissioner of Patents and the organizations reporting to the
Commissioner. This includes, for example, organizations reporting to
the Deputy Commissioner of Patent Examination Policy, the Deputy
Commissioner of Patent Operations (including Patent Examining Groups),
and the Deputy Commissioner for Patent Resources and Planning.
Due to reorganization of the Office, some organizations no
longer report to the Commissioner of Patents. The "patent examining
corps" is also construed to include: External Affairs, Office of
Enforcement, Office of International Relations, Office of Congressional
Relations, Board of Patent Appeals and Interferences, and Office of
Enrollment and Discipline. For the employees staffing these
organizations on July 26, 2004 who had actively served four or more
years as patent examiners prior to the same date, "patent examining
corps" in Sec. 11.7(d)(2) is also construed to include the foregoing
organizations.
Section 11.7(d)(1), unlike Sec. 11.7(d)(2), does not grandfather
the registration examination waiver provisions of Sec. 10.7(b) for former
patent examiners who had not actively served four years in the patent
examining corps by July 26, 2004. Therefore, "patent examining
corps" in Sec. 11.7(d)(1) does not address the employees addressed in
Sec. 11.7(d)(2). For Sec. 11.7(d)(1), "patent examining corps" is the
Commissioner of Patents and the organizations reporting to the
Commissioner, but does not include such organizations as External
Affairs, Office of Enforcement, Office of International Relations,
Office of Congressional Relations, Board of Patent Appeals and
Interferences, and Office of Enrollment and Discipline.
Under 37 CFR Sec. 11.7(d)(3) the registration examination may be
waived for certain former Office employees who were not serving in the
patent examining corps upon their separation from the Office. The
provisions of Sec. 11.7(d)(3) do not impact current employees who are
grandfathered former examiners under the provisions of Sec. 11.7(d)(2).
Thus, for example, a current member of the Board of Patent Appeals and
Interferences who actively served as a patent examiner for four or more
years is subject to the grandfather provisions Sec. 11.7(d)(2). Section
11.7(d)(3) applies in futuro to Office employees who are not
grandfathered by Sec. 11.7(d)(2).
A former employee seeking waiver of the examination under Sec.
11.7(d)(3) must satisfy the scientific and technical training
requirements, and must demonstrate possession of the necessary legal
qualifications to render to patent applicants and others valuable
service and assistance in the preparation and prosecution of their
applications or other business before the Office. The former employee
may do so by showing "(i) [h]e or she has exhibited comprehensive
knowledge of patent law equivalent to that shown by passing the
registration examination as a result of having been in a position of
responsibility in the Office in which he or she: (A) Provided
substantial guidance on patent examination policy, including the
development of rule or procedure changes, patent examination
guidelines, changes to the Manual of Patent Examining Procedure, or
development of training or testing materials for the patent examining
corps; or (B) Represented the Office in patent cases before Federal
courts."
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Organizations that are normally not considered to be part of
the patent examining corps, e.g., organizations under
General Counsel and Administrator of External Affairs, are staffed with
some personnel who are grandfathered under Sec. 11.7(d)(2), and with
other personnel who are not grandfathered. Section 11.7(d)(3) will
apply to employees in these organizations who are not grandfathered,
but are first employed in these organizations on or after July 26,
2004. The non-grandfathered employees may or may not have served as
patent examiners. Under Sec. 11.7(d)(3) non-grandfathered employees in
these organizations may seek waiver of the registration examination
(not waiver of the scientific and technical training requirements).
Section 11.7(d)(3)(i)(A) affords the non-grandfathered employees with a
nonexclusive list of means to show that they provided substantial
guidance on patent examination policy. Pursuant to the listed means,
the non-grandfathered employee may show that he or she developed rule
or procedural changes affecting patent examination, developed
guidelines for the examination of patent applications, authorized and
edited changes to the Manual of Patent Examining Procedure, or
developed or vetted questions and other training materials for patent
examiners. Additionally, these employees may show that they provided
substantial guidance on patent examination policy in ways not listed in
the rule. Thus, representing the Office in international relations and
legislative affairs are understandably activities that can provide
guidance on patent examination policy. Board of Patent Appeals and
Interferences employees provide guidance in patent examination policy
in a variety of their functions, including reviewing decisions of
patent examiners, acting on petitions, evaluating whether Board
decisions are to be made precedential, consulting on declaring
interferences, as well as participating in examiner training, and
developing or vetting questions and other training materials for patent
examiners.
Waiver of the examination under Sec. 10.7(b) was never automatic;
it has always been discretionary. Former examiners who, upon separation
from the Office, were rated unacceptable for quality performance
elements were required to take the registration examination. Sections
11.7(d)(1), (2) and (3) continue to require quality performance. Under
these sections the former employee must be rated at least fully
successful in each quality performance element of his or her
performance plan for the last two complete fiscal years as a patent
examiner in the Office, and not be under an oral or written warning
regarding the quality performance elements at the time of separation.
For some employees, the applicable performance plan may not
include a separate quality element. The employee may request waiver of
the requirement under 37 CFR Sec. 11.5 by making a showing that the
waiver is necessary or justifiable. The employee may justify the waiver
by demonstrating substantially equivalent ratings. For example, the
employee would show that he or she was rated at least fully successful
for the last two complete fiscal years in the Office and that there was
no adverse information regarding the employee's competence to represent
patent applicants at the time of separation from the Office.
HARRY I. MOATZ
Director of Enrollment and Discipline
[1291 OG 98]