1702 Restrictions on Current and Former Office Employees Regarding Patent Matters [R-07.2022]
35 U.S.C. 4 Restrictions on officers and employees as to interest in patents.
Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.
37 CFR 11.10 Restrictions on practice in patent matters; former and current Office employees; government employees.
- (a) Only practitioners registered under § 11.6; individuals given limited recognition under § 11.9(a) or (b) or § 11.16; or individuals admitted pro hac vice as provided in § 41.5(a) or 42.10(c) of this chapter are permitted to represent others before the Office in patent matters.
- (b) Post employment agreement of former Office employee. No individual who has served in the patent examining corps or elsewhere
in the Office may practice before the Office after termination of his or her
service, unless he or she signs a written undertaking agreeing:
- (1) To not knowingly act as agent or attorney for or otherwise
represent any other person:
- (i) Before the Office,
- (ii) In connection with any particular patent or patent application,
- (iii) In which said employee participated personally and substantially as an employee of the Office; and
- (2) To not knowingly act within two years after terminating
employment by the Office as agent or attorney for, or otherwise represent
any other person:
- (i) Before the Office,
- (ii) In connection with any particular patent or patent application,
- (iii) If such patent or patent application was pending under the employee’s official responsibility as an officer or employee within a period of one year prior to the termination of such responsibility.
- (1) To not knowingly act as agent or attorney for or otherwise
represent any other person:
Pursuant to 35 U.S.C. 4, patent examiners, other Office employees, and Office officers may not apply for a patent or acquire any right or interest in any patent during the period of their employment with the Office and for one year thereafter. An Office employee or officer who is named as an inventor in a patent application will be presumed (1) to be legally incapable of signing the inventor's oath or declaration pursuant to 35 U.S.C. 4, or (2) to refuse to sign the inventor's oath or declaration based on Office employee status. For applications filed on or after September 16, 2012, a substitute statement under 37 CFR 1.64 may be filed in lieu of the oath or declaration without contacting the current employee or officer of the Office.
The amendments to 37 CFR 11.10 were made, in part, to ensure that the restrictions of the post-employment agreement in this provision are coextensive with the post-employment restrictions in 18 U.S.C. 207. Notwithstanding the elimination of 37 CFR 11.10(d), Office employees remain barred from prosecuting, or aiding in the prosecution of, any patent or trademark application before the Office by virtue of conflict-of-interest statutes, such as 18 U.S.C. 203 and 205, as well as regulations, such as those promulgated by the Office of Government Ethics in 5 CFR chapter XVI. Similarly, the provision in former 37 CFR 11.10(e) that practice before the USPTO by Government employees is subject to applicable conflict-of-interest laws, regulations, or codes of professional responsibility is already set forth in 37 CFR 11.111. See also MPEP § 309.
