(340) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 10
[Docket No. 010724188-1188-01]
Interpretation of Registration of
Agents and Representative for
Director of Enrollment and Discipline in
Disciplinary Proceedings
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Interpretation of regulation.
SUMMARY: The United States Patent and Trademark Office
(USPTO or "Office") implements an interpretation of certain
regulatory provisions. These provisions concern the composition and
operations of the Committee on Discipline and representation of the
Director in disciplinary cases. The interpretation is necessary in view
of the recent creation of the Office of General Counsel at the USPTO.
The Patent and Trademark Office Efficiency Act (PTOEA) reestablished
the Patent and Trademark Office as the United States Patent and
Trademark Office, a performance-based organization with responsibility
for its own operations. Consequently, the Office has responsibility for
many functions formerly provided by the Department of Commerce.
EFFECTIVE DATE: The interpretation is issued August 24, 2001.
ADDRESSES: Director of the United States Patent and Trademark Office,
Washington, D.C. 20231.
FOR FURTHER INFORMATION CONTACT: Harry Moatz, by mail addressed to
United States Patent and Trademark Office, Box OED,
Washington, DC 20231, (Attn: OED Director) or by facsimile transmission
to (703) 305-4631, or by electronic mail at harry.moatz@uspto.gov.
SUPPLEMENTARY INFORMATION: 37 CFR 10.140(b) relates to
whom within the USPTO represents the Director of Enrollment and
Discipline (OED Director) in disciplinary proceedings, and who shall be
available as counsel to the Director of the United States Patent and
Trademark Office (USPTO Director) in deciding such proceedings. For
example, it states that at least two associate solicitors shall be
designated to represent the OED Director. It also states that the
Solicitor and Deputy Solicitor shall advise the USPTO Director.
Additionally, the last sentence of 37 CFR 10.4(b) identifies the USPTO
employees that shall not participate in rendering a decision on
disciplinary changes. Among those identified as not participating in
rendering decisions are associate and assistant solicitors of the
Office of the Solicitor. In addition, the PTOEA designated the head of
the USPTO as Under Secretary of Commerce for Intellectual Property and
Director of the USPTO. 35 U.S.C. 3(a)(1).
As a result, it is necessary and appropriate to interpret the last
sentence of 10.4(b) and 10.140(b) in view of this reorganization.
Because these are interpretive statements of rules, they are exempt
from notice and comment rulemaking under 5 U.S.C. 553(b)(3)(A). For the
reasons set forth in the preamble, the United States Patent and
Trademark Office interprets 10.4(b) and 10.140(b) as follows:
The last sentence of 10.4(b) provides, "When charges are brought
against a practitioner, no member of the Committee on Discipline,
employee under the direction of the Director, or associate solicitor or
assistant solicitor in the Office of the Solicitor shall participate in
rendering a decision on the charges." This sentence is construed as
providing that when charges are brought against a practitioner, the
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designated attorneys in the Office of General Counsel (including
assistant and associate solicitors, and associate counsel) shall not
participate in rendering a decision on the charges.
The first sentence of 10.140(b) provides, "The Commissioner shall
designate at least two associate solicitors in the Office of the
Solicitor to act as representatives for the Director in disciplinary
proceedings." This sentence is construed as authorizing the USPTO
Director to designate at least two attorneys (including assistant and
associate solicitors, and associate counsel) in the Office of General
Counsel to act as representatives for the OED Director in disciplinary
proceedings.
The second sentence of 10.140(b) provides, "In prosecuting
disciplinary proceedings, the designated associate solicitors shall not
involve the Solicitor or the Deputy Solicitor." This sentence is
construed as providing that in prosecuting disciplinary proceedings,
the designated attorneys in the Office of General Counsel (including
assistant and associate solicitors, and associate counsel) shall not
involve the General Counsel or the Deputy General Counsel for General
Law.
The third sentence of 10.140(b) provides, "The Solicitor and the
Deputy Solicitor shall remain insulated from the investigation and
prosecution of all disciplinary proceedings in order that they shall be
available as counsel to the Commissioner in deciding disciplinary
proceedings." This is construed as providing that the General Counsel
and the Deputy General Counsel for General Law shall remain insulated
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. However, the Deputy General
Counsel for Intellectual Property Law and Solicitor shall not remain
insulated from the investigation and prosecution of disciplinary
proceedings, and thus shall not be available to counsel the USPTO
Director in deciding such proceedings.
August 20, 2001 NICHOLAS P. GODICI
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
[1250 OG 105]