Proposed Rule: Practice and Procedure: Representation of Others Before United States Patent and Trademark Office Changes

Wednesday,
February 28, 2007
Part III
Department of
Commerce
Patent and Trademark Office
37 CFR Part 11
Changes to Representation of Others
Before the United States Patent and
Trademark Office; Proposed Rule
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9196 Federal Register / Vol. 72, No. 39 / Wednesday, February 28, 2007 / Proposed Rules
DEPARTMENT OF COMMERCE The comments will be available for of the systems, whereas § 11.11(b) is
public inspection at the Office of indirectly dependent on the
Patent and Trademark Office Enrollment and Discipline, located in development. Further consideration of
Madison East, Eighth Floor, 600 Dulany rules dependent on implementing
37 CFR Part 11 Street, Alexandria, Virginia, and will be electronic systems awaits completion of
[Docket No.: PTO–C–2005–0013] available via the Office Internet Web site the development and implementation of
(address: http://www.uspto.gov). the systems. Accordingly, the revised
RIN 0651–AB55 Because comments will be made rules proposed below do not refer to
available for public inspection, rules that depend on implementing
Changes to Representation of Others information that is not desired to be
Before the United States Patent and electronic systems, and no comments
made public, such as an address or are invited regarding the omitted
Trademark Office phone number, should not be included referrals.
AGENCY: United States Patent and in the comments.
A detailed analysis is not included
Trademark Office, Commerce. FOR FURTHER INFORMATION CONTACT:
herein of the differences between the
ACTION: Supplemental Notice of Harry I. Moatz (571) 272–6069), Director rules proposed in December 2003
Proposed Rule Making. of Enrollment and Discipline (OED (proposed rules) and the revised rules
Director), directly by phone, by currently proposed (revised proposed
SUMMARY: In December 2003, the United facsimile to (571) 273–6069 marked to
States Patent and Trademark Office sections). A comparison of the proposed
the attention of Mr. Moatz, or by mail rules and the revised proposed sections
(Office) proposed amendments to, inter addressed to: Mail Stop OED-Ethics
alia, the rules governing disciplinary is being made available on the Internet
Rules, U.S. Patent and Trademark
proceedings for attorneys and agents at http://www.uspto.gov/web/offices/
Office, P.O. Box 1450, Alexandria,
who practice before the Office, dcom/olia/oed/comparison_ab55.pdf.
Virginia 22313–1450.
principally rules 11.2, 11.3, 11.5, and SUPPLEMENTARY INFORMATION: On Comments are sought regarding the
11.14 through 11.62. One hundred fifty- December 12, 2003, the Office published revised proposed sections that introduce
seven written comments were received. a proposed rule in the Federal Register significant procedural or substantive
After reviewing the written comments, (68 FR 69441) amending parts 1 and 2 changes. The following revised proposed
the Office has decided to revise several of the rules and procedures governing sections are believed to be those
of the rules as then proposed and patent and trademark prosecution (Title introducing such changes: 11.2, 11.5,
request additional comments on those 37 of the Code of Federal Regulations), 11.18 through 11.22, 11.24 through
revised proposals. Other proposed rules reserving part 10 and introducing part 11.26, 11.28, 11.44, 11.45, and 11.52.
contained in the earlier Notice of 11. Included in the proposed rules for This supplemental notice includes other
Proposed Rule making remain under part 11 were rules governing the revised proposed sections (sections 11.1
consideration by the Office. This conduct of investigations and (definition of State), 11.3, 11.14, 11.15,
supplemental notice of proposed rule disciplinary proceedings. Many of the 11.23, 11.27, 11.29, 11.33 through 11.36,
making sets forth revisions that the proposed investigation and disciplinary 11.38 through 11.41, 11.43, 11.50, 11.51,
Office is proposing to the rules procedural rules were in many ways and 11.54 through 11.61) that are not
governing the conduct of investigations similar to the approach of the current believed to contain significant
and disciplinary proceedings. Interested regulations. Other proposed rules were procedural or substantive changes from
individuals are invited to comment on intended to introduce new disciplinary the December 12, 2003 notice; proposed
the proposed revisions in the rules. procedures for practitioners who have rules that have not been revised (11.29
DATES: To be ensured of consideration, been suspended or disbarred in other through 11.31, 11.37, 11.42, 11.46
written comments must be received on disciplinary jurisdictions for ethical or through 11.49, 11.53, and 11.63 through
or before May 29, 2007. professional misconduct, practitioners 11.99); and two proposed rules that, as
ADDRESSES: The Office seeks comments convicted of serious crimes, and revised, have been reserved (11.16 and
regarding the proposed revisions set practitioners having disability issues. 11.62). The latter three groups of rules
forth in the proposed rules. Comments The December 12, 2003 Notice also have been included to provide both
should be sent by electronic mail proposed changes to the ethics rules context and perspective for the revised
message over the Internet addressed to: governing the conduct of recognized proposed sections that contain
ethicsrules.comments@uspto.gov. patent practitioners and others significant changes. The table below is
Comments may also be submitted by practicing before the Office as well as included to assist readers in correlating
mail addressed to: Mail Stop OED- rules governing enrollment of the revised proposed sections with the
Ethics Rules, United States Patent and recognized practitioners. The provisions present rules. While it is believed that
Trademark Office, P.O. Box 1450, on enrollment were adopted in final further comments are unnecessary
Alexandria, Virginia 22313–1450 or by rules on July 26, 2004, 69 FR 35428. regarding rules that have not been
facsimile to (571) 273–4097, marked to Comments on proposed changes to the revised at all or whose revisions are not
the attention of Harry I. Moatz. substantive ethics rules remain under significantly changed in procedure or
Although comments may be submitted consideration by the Office. The current substance, comments may nevertheless
by mail or facsimile, the Office prefers notice does not address those proposed be submitted.
to receive comments via the Internet. rules.
Comments may also be sent by In addition, several proposed rules TABLE—CONCORDANCE OF SECTIONS
electronic mail message over the referenced are directly or indirectly 11.14 THROUGH 11.99 WITH PART
Internet via the Federal eRulemaking dependent on the development of 10 AND CURRENT PART 11
Portal. See the Federal eRulemaking electronic systems to implement rules
Portal Web site (http:// governing annual dues, § 11.8, and Part 10 and Part 11 con-
www.regulations.gov) for additional continuing legal education. For Section cordance
instructions on providing comments via example, §§ 11.8(d), 11.12, and 11.13
the Federal eRulemaking Portal. are directly dependent on development 11.1 ................ New definition of State.
Federal Register / Vol. 72, No. 39 / Wednesday, February 28, 2007 / Proposed Rules 9197
TABLE—CONCORDANCE OF SECTIONS TABLE—CONCORDANCE OF SECTIONS retain and clarify, inter alia, the OED
11.14 THROUGH 11.99 WITH PART 11.14 THROUGH 11.99 WITH PART Director’s authority and responsibility
10 AND CURRENT PART 11—Contin- 10 AND CURRENT PART 11—Contin- for investigations and prosecuting
ued ued disciplinary matters. The revised
proposed sections clarify (1) procedures
Part 10 and Part 11 con- Part 10 and Part 11 con- whereby the OED Director may conduct
Section Section investigations, (2) consequences for
cordance cordance
violating § 11.18(b)(2), (3) the
11.2 ................ 37 CFR 11.2(a), (b)(4), (c) 11.4611.48 37 CFR 10.146–10.148. disciplinary jurisdiction of the Office,
and (d) changes in lan- [Reserved] (4) procedures for reciprocal discipline
guage; Subsections 11.49 .............. 37 CFR 10.149. of practitioners who have been
11.2(b)(5), (b)(6) and (e) 11.50 .............. 37 CFR 10.150, changes in
language.
suspended or disbarred for ethical or
are new.
11.3 ................ 37 CFR 10.170, changes in 11.51 .............. 37 CFR 10.151, changes in professional misconduct in other
language. language. jurisdictions, (5) procedures for
11.5 ................ 37 CFR 10.5, Subsection (b) 11.52 .............. 37 CFR 10.152, changes in disciplining practitioners convicted of a
is new. language. serious crime, and (6) procedures for
11.14 .............. 37 CFR 10.14, changes in 11.53 .............. 37 CFR 10.153. practitioners to raise their own
language; Subsection 11.54 .............. 37 CFR 10.154, changes in disability issues.
11.14(f) is new. language. The revised proposed sections
11.15 .............. 37 CFR 10.15. 11.55 .............. 37 CFR 10.155, changes in
eliminate or introduce substantive and
11.16–11.17 37 CFR 10.16–10.17. language; Subsections
11.155(b) through (g) are procedural changes to the proposed
[Reserved]
new. rules. Many revisions were not
11.18 .............. 37 CFR 10.18, changes in
language. 11.56 .............. 37 CFR 10.156, changes in suggested by the comments.
11.19 .............. 37 CFR 10.1 and 10.130(b), language. Accordingly, this notice will not
changes in language; Sub- 11.57 .............. 37 CFR 10.157, changes in address each comment. Instead, the
sections 11.19(b) and (d) language. chief comments pertaining to the
are new. 11.58 .............. 37 CFR 10.158, changes in revisions are addressed herein.
11.20 .............. New. language, Subsection
Congress has granted express
11.21 .............. New. 11.158(d) is new.
11.59 .............. 37 CFR 10.159, changes in authority to the Office to ‘‘establish
11.22 .............. New. regulations, not inconsistent with law,
11.23 .............. 37 CFR 10.4, changes in language, Subsection
11.159(c) is new. which * * * may govern the
language.
11.60 .............. 37 CFR 10.160, changes in recognition and conduct of agents,
11.24 .............. New.
11.25 .............. New.
language, Subsections attorneys, or other persons representing
11.160(d) through (f) are applicants or other parties before the
11.26 .............. 37 CFR 10.133(g), changes
new. Office.’’ 35 U.S.C. 2(b)(2)(D). Congress
in language.
11.61 .............. 37 CFR 10.61, changes in also provided that the ‘‘Director may,
11.27 .............. 37 CFR 10.133(b) through
language; Subsections
(g), changes in language. after notice and opportunity for a
11.161(c) and (d) are new.
11.28 .............. New. 11.62–11.99 New. hearing, suspend or exclude, either
11.29–11.31 New. [Reserved] generally or in any particular case, from
[Reserved] further practice before the Patent and
11.32 .............. 37 CFR 10.132, changes in Trademark Office, * * * any * * *
Comments regarding proposed rules
language. agent, or attorney shown to be
11.33 [Re- New.
11.100 through 11.900 remain under
consideration. The Office expects to incompetent or disreputable, or guilty of
served]
11.34 .............. 37 CFR 10.134, changes in publish a separate supplemental notice gross misconduct, or who does not
language; Subsection of proposed rule making containing comply with the regulations established
11.134(c) is new. proposed revisions to 11.100 through under section 2(b)(2)(D) of this title, or
11.35 .............. 37 CFR 10.135, changes in 11.900 and request comments. who shall, by word, circular, letter, or
language; Subsection In response to the proposed rule advertising, with intent to defraud in
11.135(a)(4) is new. making published December 12, 2003, any manner, deceive, mislead, or
11.36 .............. 37 CFR 10.136, changes in the Office received one hundred fifty- threaten any applicant or prospective
language; Subsection seven communications with comments, applicant, or other person having
11.36(e) is new. immediate or prospective business
including comments from seventeen
11.37 [Re- New.
organizations, thirteen law firms, seven before the Office. The reasons for any
served]
11.38 .............. 37 CFR 10.138, changes in businesses, one hundred fifteen such suspension or exclusion shall be
language. individuals, and four anonymous duly recorded.’’ 35 U.S.C. 32. In so
11.39 .............. 37 CFR 10.139, changes in sources. doing, Congress vested express and
language; Subsections This notice will address only implied authority with the Office to
11.39(b) and (g) are new. comments concerning the procedural prescribe rules of procedure that are
11.40 .............. 37 CFR 10.140, changes in aspects of the earlier proposed rules. It applicable to practitioners recognized to
language. will not address questions concerning practice before the Office.
11.41 .............. 37 CFR 10.141, changes in the scope or substance of the Office’s The primary purposes for adopting
language. practitioner ethics program, which it is procedures for disciplining practitioners
11.42 .............. 37 CFR 10.142.
expected will be the subject of a who fail to conform to adopted

11.43 .............. 37 CFR 10.143, changes in
language. separate notice. The Office has given standards include affording
11.44 .............. 37 CFR 10.144, changes in full consideration to each and every practitioners due process, protecting the
language. public comment submitted during the public, preserving the integrity of the
11.45 .............. 37 CFR 10.145, changes in comment period. The Office has revised Office, and maintaining high
language and new. proposed sections contained herein to professional standards.
Discussion of Specific Rules Section 11.5: The provisions of the relying upon alternative forms of
sole paragraph of § 11.5 adopted in the protection that may be available under
Title 37 of the Code of Federal final rules on July 26, 2004, would be State law. The revised proposed section
Regulations, Part 11, is proposed to be renumbered as § 11.5(a). Revised indicates that registered practitioners
amended as follows: subsection 11.5(b) defines practice may use nonpractitioners to conduct
Section 11.1: The definition of state before the Office. Commentators urged many of the activities associated with
would be revised to clarify that state that Congressional approval is needed to practice before the Office, such as
includes Commonwealths and define practice before the Office. drafting patent applications, provided
territories of the United States, as well Authority to govern conduct implicitly they work under the supervision of the
as the fifty states and the District of includes authorization to recognize registered practitioner. The rule permits
Columbia. Thus, the ‘‘court of * * * activities constituting practice before the more than 30,000 registered patent
any state’’ in § 11.25(a) would include the Office. The Internal Revenue Service practitioners to employ non-
any courts of the fifty states, the District (IRS), citing as authority the provisions practitioners to assist practitioners in
of Columbia, and Commonwealths and in, inter alia, 31 U.S.C. 330, defined providing cost-efficient services to
territories of the United States. practice before that agency. The clients. It also permits every attorney
Section 11.2: Section 11.2 provides language of § 330(b) and 35 U.S.C. 32 practicing before the Office in trademark
for the appointment and duties of the are comparable. Section 330(b) provides cases to provide cost-efficient services.
Director of Enrollment and Discipline ‘‘[a]fter notice and opportunity for a Thus, practitioners may provide their
(OED Director), as well as petitions for proceeding, the Secretary may suspend legal services at lower fees, a result
review of decisions of the OED Director. or disbar from practice before the favored by the Office and practitioners.
The duties have been revised to clarify Department a representative who—(1) is The revised proposed section also
that investigations are conducted in incompetent; (2) is disreputable; (3) recognizes that attorneys representing
matters involving possible grounds for violates regulations prescribed under persons in enrollment and disciplinary
discipline, as opposed to specifying this section; or (4) with intent to matters are engaged in practice before
particular violations that would be defraud, willfully and knowingly the Office.
subject to investigation. The duties are misleads or threatens the person being But for limited situations noted
further revised to require the OED represented or a prospective person to below, a registered patent agent is not
Director to provide practitioners with an be represented.’’ The relevant language authorized by his or her registration to
opportunity to respond to a reasonable of § 32 is quoted above. Congressional practice before the Office to draw up a
inquiry by the OED Director. The OED approval to define practice is implicit in contract or to select contract forms for
Director will make reasonable requests these comparable provisions. a client relating to a patent, such as an
for information and documents to Accordingly, it is appropriate that the assignment or a license, if the state in
efficiently and effectively ascertain Office define practice before the Office. which the agent resides or practices
whether grounds for discipline exist. Revised proposed § 11.5(b) covers all considers drafting contracts the practice
areas of law practiced before the Office. of law. Assignments and licenses are the
The revised proposed section also
This definition tracks the definition of creation of state, not federal, statutory
separates petitions to review the OED
‘‘practice’’ adopted by the IRS. See 26 law. Although 35 U.S.C. 152, 202, 204
Director’s decisions in disciplinary
CFR 601.501(b)(10) and 31 CFR 10.2(d). and 261 refer to assignment or licensure
matters from petitions in enrollment
of patents or patent rights, assignments
matters. Subsections 11.2(c) and (d) The definition addresses law-related
and licenses are forms of contracts,
would be limited to petitions regarding services that comprehend all matters
which are creatures of state, not federal
enrollment and recognition. The Office presented to the Office relating to a
law. Contracts are enforceable under
is proposing a specific procedure for client’s rights, privileges, duties and
state law. The authority to prepare
petitioning to invoke the supervisory responsibilities under the laws and
contracts and provide advice regarding
authority of the USPTO Director in regulations administered by the Office.
the terms to include in contracts is
disciplinary matters in subsection (e). Commentators also expressed concern subject to the state law regarding who is
The procedure in subsection (e) is as to whether practice before the Office authorized to practice law. In contrast,
comparable to the supervisory review was defined too broadly by including submission for recordation of
procedure in § 1.181 and assures participation in drafting applications assignments and licenses is a ministerial
supervisory review when appropriate. and including activities ‘‘incident to the act that does not require legal training.
Section 11.3: Section 11.3, which preparation and prosecution of patent It has been the long-standing position of
provides for suspension of rules, has applications before the Patent Office.’’ the Office that a registered patent agent
been revised to eliminate a prohibition The Office does not seek to expand its may prepare a patent assignment or
in proposed rule 11.3(b) against jurisdiction. Accordingly, license if not prohibited by state law,
petitioning to waive a disciplinary rule. ‘‘participation’’ in drafting applications and an agent may submit the assignment
However, elimination of the prohibition and activities ‘‘incident to the or license for recordation.
should not be construed as an preparation and prosecution of patent The Office solicits comment on
indication that there could be any applications before the Patent Office’’ whether it should explicitly provide for
extraordinary situation when justice are no longer included in the definition. circumstances in which a patent agent’s
requires waiver of a disciplinary rule. However, the Office has authority to causing an assignment to be executed
The revised proposed section also inform registered practitioners whether might be appropriate incidental to
eliminates the provisions in proposed activities are covered by their preparing and filing an application. For
rule 11.3(d) for qualified privilege for registration to practice before the Office. example, execution of a standard
complaints submitted to the OED For example, drafting patent assignment document may be incidental
Director or any other official of the applications would continue to be to filing an application where the
Office and for immunity for Office practice before the Office. The revised inventor is an employee of an
employees from disciplinary complaint proposed sections indicate that a organization, such as a corporation or
under Part 11 for any conduct in the registered practitioner must be able to partnership, and signed an agreement to
course of their official duties. provide clients with advice about assign inventions to the organization. It
would be also consistent with the law identified a number of circumstances sanctions or taking action under Rule
in some states for a registered patent involving knowingly falsifying material 11. Consideration may be given, for
agent who is a regular (salaried) facts by trick, scheme, or device. See example, to whether the improper
employee of the organization acting for e.g., U.S. v. Zavala, 139 F.2d 830 (2d conduct was willful or negligent;
his or her employer to undertake to Cir. 1944). Accordingly, the language whether it was part of a pattern of
prepare assignments only for the has not been changed. activity, or an isolated event; whether it
employer. If commentators propose that Section 11.18(b)(1) has been revised infected an entire application, or only
the Office should provide for such to clarify that the rule prohibits one particular paper; whether the
situations, they should attempt to knowingly or willfully making false, person has engaged in similar conduct
articulate standards by which actions fictitious, or fraudulent statements or in other matters; whether the conduct
strictly incidental to an agent’s duties in representations or knowingly or was intended to injure; what effect the
preparing applications can be willfully making or using a false writing conduct had on the administrative
distinguished from actions necessitating or document known to contain any process in time and expense; whether
expert knowledge of state principles for false, fictitious, or fraudulent statement the responsible person is trained in law;
which registered practitioner status does or entry. The section has also been what is needed to deter that person from
not prepare agents. revised to point out that whoever repetition in the same case; and what is
The provision in proposed rule violates the rule is subject to penalties needed to deter similar conduct by
11.5(b)(3) regarding a practitioner’s of criminal statutes in addition to those others: all of these in a particular case
conduct occurring in a non-practitioner under 18 U.S.C. 1001. Statements in this may be proper considerations. See 28
capacity has been withdrawn as being section to the effect that violations of U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm.
unnecessary. Misconduct occurring in a the rule may jeopardize the validity of Notes, 1993 Amendments, Subdivisions
non-lawyer or non-agent capacity would the application or document, or the (b) and (c).
be covered by the provisions of revised validity or enforceability of any patent, Section 11.19: Section 11.19 sets forth
proposed § 11.19, which identify several trademark registration, or certificate the disciplinary jurisdiction of the
grounds for discipline, including, but resulting therefrom have been removed Office. This section, as well as all other
not limited to, conduct that violates an as being beyond the scope of sections, have been revised to eliminate
imperative USPTO Rule of Professional § 10.18(b)(1). Inasmuch as an offending disciplinary provisions directed to
Conduct and a conviction of a serious paper may have little or no probative ‘‘other individuals.’’ Accordingly,
crime. value, this section has been revised to revised proposed § 11.19 no longer
Section 11.16: Proposed rule 11.16, state that violation of the rule may includes ‘‘other individuals’’ within the
regarding financial books and records, jeopardize the probative value of such a disciplinary jurisdiction of the Office.
has been withdrawn. As revised, § 11.16 paper. Proposed § 11.19(b), which addressed
would be reserved. Requests for Section 11.18(c) sets forth sanctions the jurisdiction of courts and voluntary
financial records during investigations that may be imposed for violations of bar associations to discipline
are addressed infra under § 11.22. § 11.18(b). Commentators urged that the practitioners for misconduct, has been
Section 11.18: Section 11.18(b) Office has no authority to impose withdrawn in favor of the first
provides that a practitioner certifies the monetary sanctions for violations of paragraph of § 11.1, which is in the final
truthfulness of the content of his or her § 11.18(b). As revised, the rule sets forth rules adopted on July 26, 2004. It is
submissions to the Office. Concern was a non-exhaustive list of sanctions and believed that the first paragraph of
expressed that the prohibition against actions the Office may impose or take. § 11.1 sets forth in a manner superior to
‘‘knowingly and willfully’’ covering up The revised proposed section removes proposed rule § 11.19(b) that nothing in
by any ‘‘trick, scheme or device’’ a reference to imposition of monetary ‘‘this Part * * * preempt[s] the
material fact is unduly broad and sanctions. The sanctions have been authority of each State to regulate the
meaningless. However, the language in revised to include striking the offending practice of law, except to the extent
§ 11.18(b), ‘‘knowingly and willfully paper, precluding a practitioner from necessary for the United States Patent
falsifies, conceals, or covers up by any submitting a paper, and sanctions and Trademark Office to accomplish its
trick, scheme, or device a material fact,’’ affecting the weight given to the Federal objectives.’’
is taken from 18 U.S.C. 1001. Section offending paper. Actions the Office may ‘‘Misconduct’’ was defined differently
1001, titled ‘‘Statements or entries take include referring a practitioner’s in proposed rules 11.19(c) and 11.804 in
generally,’’ provides: ‘‘Whoever, in any conduct to the Office of Enrollment and the December 12, 2003 proposed rule
matter within the jurisdiction of any Discipline for appropriate action. making. Proposed rule 11.19(c)
department or agency of the United These sanctions conform to those identified misconduct constituting
States knowingly and willfully falsifies, discussed in conjunction with the 1993 grounds for discipline whereas
conceals, or covers up by any trick, Amendment to Rule 11 of the Federal proposed rule 11.804 identified
scheme, or device a material fact, or Rules of Civil Procedure. The professional ‘‘misconduct.’’ Reference to
makes any false, fictitious or fraudulent commentary to the 1993 Amendment ‘‘misconduct’’ has been removed from
statements or representations, or makes indicated that a court ‘‘has available a revised § 11.19. As revised, § 11.19(b)
or uses any false writing or document variety of possible sanctions to impose sets forth five grounds for discipline.
knowing the same to contain any false, for violations, such as striking the Although § 11.804 is not included in
fictitious or fraudulent statement or offending paper; * * * referring the this notice, it is anticipated that § 11.804
entry, shall be fined not more than matter to disciplinary authorities.’’ Like will be the only rule that describes
$10,000 or imprisoned not more than Rule 11 of the Fed. R. Civ. P., the professional ‘‘misconduct.’’ The
five years, or both.’’ The Office is only provisions in § 11.18 do not attempt to grounds for discipline are clarified to
repeating an obligation with which enumerate the factors that should be provide consistency among the revised
practitioners otherwise have to comply. considered or the appropriate sanctions. disciplinary procedural rules. The
The section applies the statutory The Office anticipates that in taking grounds for discipline are identified as
standard of conduct applicable to the action under § 11.18 in applying conviction of a serious crime; discipline
submission of material facts in courts to sanctions, it would use the proper on ethical grounds imposed in another
proceedings in the Office. Case law has considerations utilized in issuing jurisdiction or disciplinary
disqualification from participating in or and complaints that initiate disciplinary As noted above, the OED Director may
appearing before any Federal program or proceedings. Section 11.22 has been request information or evidence. The
agency; failure to comply with any order revised to refer to communications that OED Director’s letters to practitioners
of a Court disciplining a practitioner, or initiate an investigation as grievances. request information; the letters are no
any final decision of the USPTO The revised proposed sections, such as longer called requirements for
Director in a disciplinary matter; § 11.34, refer to communications information. The Office’s regulatory
violation of the imperative USPTO initiating disciplinary proceedings as ability to require information is on
Rules of Professional Conduct; and complaints. The revised proposed appeal to the Federal Circuit. Among
violation of the oath or declaration sections also omit as unnecessary the ethics rules that remain under
taken by the practitioner. provisions specifying procedures for consideration are the provisions of ABA
Section 11.20: Section 11.20 sets out screening and docketing matters. Model Rule 8.1. Model Rule 8.1
the disciplinary sanctions the USPTO As revised, § 11.22 provides that a provides that, but for client confidences
Director may impose on a practitioner practitioner will be notified in writing protected by another rule, a practitioner
after notice and opportunity for a of the initiation of an investigation into is prohibited from knowingly failing to
hearing. Subsection 11.20(a)(2) has been whether the practitioner has engaged in respond to a lawful demand for
revised to provide for suspension for an conduct constituting grounds for information from a disciplinary
appropriate period of time. The revised discipline. In conducting an authority. A practitioner’s failure to
proposed section removes provisions investigation, the OED Director may comply with the OED Director’s request
that comments suggested needed request information or evidence from for information conforming to Model
clarification, such as providing for the grievant, the practitioner, or any Rule 8.1 would risk violating the rule.
suspension for an ‘‘indefinite period’’ person who may reasonably be expected The Office intends by the change in
and suspension for a period not in to provide information and evidence nomenclature of the OED Director’s
excess of five years. As revised, needed in connection with the letter not to change the sanctioning
suspension may be imposed for a period grievance or investigation. See revised ability of the Office. However, the
that is appropriate under the facts and proposed § 11.22(f). Office’s regulatory ability to take
circumstances of the case. Subsection As discussed above, proposed § 11.16, sanctions in view of failure to comply
11.20(a)(3) provides for reprimand, regarding financial books and records, with a request will be addressed in
including both public and private has been withdrawn. Nevertheless, the ethics rules that will follow as the Office
reprimand. Subsection 11.20(b) OED Director may still request such will be informed by any judicial
provides that the USPTO Director may information pursuant to revised decision on the question. Additionally,
require a practitioner to make restitution proposed § 11.22(f) in order to protect the OED Director, when recommending
either to persons financially injured by the public from practitioners who that the Committee on Discipline
the practitioner’s conduct or to an commingle client funds or improperly
approve the institution of formal
appropriate client’s security trust fund, fail to refund unearned client funds. For
charges, may reference the practitioner’s
or both, as a condition of probation or example, evidence that one account of
refusal to provide information or
of reinstatement. The restitution would a practitioner has not been properly
records. The Committee may draw an
be limited to the return of unearned maintained or that funds of one client
adverse inference from the practitioner’s
practitioner fees or misappropriated have not been properly handled should
refusal to provide information or
client funds. The rule does not constitute cause for verifying the
records in determining whether
contemplate restitution for the value of accuracy of the account that the
probable cause exists to believe a
an invention or patent. practitioner maintains or should
disciplinary rule has been violated.
Section 11.21: Section 11.21 provides maintain containing the funds of the
that a warning is not a disciplinary client for practice before the Office. When the Committee on Discipline
sanction and that the OED Director may Additionally, either a check drawn on a finds probable cause, a disciplinary
issue a warning at the conclusion of an client trust account returned, for proceeding can be initiated. After the
investigation. example, due to insufficient funds, or practitioner files an answer, the OED
Inasmuch as a warning is not a the failure to timely refund unearned Director may seek the hearing officer’s
disciplinary sanction, a warning would funds to a client should similarly permission to obtain a subpoena for
not be made public. A provision in the constitute cause to verify the contents of production of relevant information or
proposed rule requiring the OED the same account. Where the OED records. Proposed § 11.52, pertaining to
Director to consult with and obtain the Director receives information or discovery, has been revised to address
consent of a Committee on Discipline evidence involving possible financial expressed concerns that the current rule
panel before issuing a warning has been issues, the request to the practitioner inappropriately limits discovery.
removed as procedurally unnecessary would be limited to copies of books and Revised proposed section 11.52(a)
and unduly burdensome. Another records maintained by or for the would permit discovery when a party
provision in the proposed rule, that the practitioner for practice before the establishes that discovery is reasonable
warning be final and unreviewable, also Office regarding the client. The and relevant. Information or records
has been removed. To afford an avenue foregoing examples are the same as refused during an investigation may be
for review in disciplinary matters, those the American Bar Association reasonable and relevant in discovery.
paragraph (e) has been added to the recommends as grounds for inquiring See Rules 11.38 and 11.58(a).
revised § 11.3 to enable a practitioner to into a lawyer’s accounts. See Rule 30, Section 11.22(f)(2) provides for
invoke the USPTO Director’s Verification Of Bank Accounts, of the requesting information and evidence
supervisory authority. American Bar Association’s Rules for regarding possible grounds for
Section 11.22: Section 11.22 sets forth Lawyer Disciplinary Enforcement. The discipline of a practitioner from a non-
provisions regarding the conduct of books and records received by the OED grieving client. The request cannot be
investigations. Consistent with Director from the practitioner would be made unless the OED Director has
suggestions from commentators, the rule treated as confidential and their use will obtained either the consent of the
has been revised to distinguish between be limited to the Office’s investigation practitioner or a finding by a Contact
complaints that initiate investigations and disciplinary proceeding. Member of the Committee on Discipline
that good cause exists to believe that the disqualification from participating in Accordingly, it is not believed that § 32
possible ground for discipline alleged the program or the agency. For the triggers §§ 554 and 556. Procedural due
has occurred with respect to non- purposes of deciding whether a process is afforded by providing notice
grieving clients. The Office agrees with practitioner has been disqualified from and opportunity to be heard on a
the many comments that contacts with participating in or appearing before any documentary record, and recording the
non-grieving clients about a practitioner Federal program or agency, ‘‘Federal reasons for the decision. This is
without contacting the practitioner first program’’ would mean any program consistent with enrollment proceedings
should be rare. While many established by an Act of Congress or where these matters have long been
jurisdictions can contact non-grieving administered by a Federal agency and conducted on the documentary record.
clients without established procedures, ‘‘Federal agency’’ would mean any Where the USPTO Director determines
the Office considers that adoption of authority of the executive branch of the an oral hearing in a reciprocal
procedures to govern the exercise of Government of the United States. disciplinary matter is necessary, the
such authority will best assure that this If an attorney has been disbarred or same would be provided.
extraordinary step will be taken only suspended in another jurisdiction, No change is contemplated to
when warranted. The Office therefore reciprocal discipline before the Office continuing to have oral hearings in
proposes to adapt a procedure followed applies regardless whether the disciplinary proceedings before hearing
in California, namely Rule 2410b, for practitioner remains registered as an officers conducted under § 11.44.
the protection of practitioners and their attorney or agent. If an attorney or Current § 10.144 and revised proposed
clients. Accordingly, if a practitioner registered patent agent is disciplinarily § 11.44 provide for conducting
declines to consent, communication disqualified from participating in or disciplinary proceedings before the
with the non-grieving client can occur if appearing before any Federal program or administrative law judge or hearing
a Contact Member finds good cause to agency, the practitioner is subject to officer pursuant to § 556. They also
believe that a possible ground for reciprocal discipline before the Office. provide for the hearings to be
discipline has occurred with respect to The revised proposed section applies stenographically recorded and
the non-grieving client. The Contact reciprocal discipline to both attorneys transcribed, and the testimony of
Member will closely scrutinize a and registered patent agents. witnesses to be received under oath or
showing made by the OED Director in The reciprocal disciplinary affirmation.
deciding whether to grant or deny proceeding would be initiated before the Section 11.24(c) has been revised to
authorization to request the information USPTO Director. The practitioner would address stayed discipline. If a
or evidence. be served with notice of the reciprocal disciplinary sanction imposed by
Requesting information and proceeding, and provided an another jurisdiction or disciplinary
documents from practitioners, as well as opportunity to reply. The practitioner disqualification imposed in the Federal
from non-grieving clients enables the would also be provided with a copy of program or agency has been stayed, any
OED Director, and ultimately the Office, the record or order of disbarment, reciprocal discipline imposed by the
to efficiently and effectively ascertain suspension or disciplinary USPTO may be deferred until the stay
whether grounds for disciplining a disqualification, and a complaint. expires.
practitioner exist. The clarification of The USPTO Director would hear the In reciprocal discipline proceedings,
§ 11.22 is intended to result in a fair and reciprocal discipline matter on the the practitioner would be provided with
consistent application of the rules to documentary record unless the USPTO a forty-day period to inform the USPTO
practitioners and enable the USPTO Director determines that an oral hearing Director of: (1) Any argument that the
Director to protect the public. is necessary. After careful review of the practitioner was not disbarred,
Section 11.24: Section 11.24 provides statute and case law, it has been suspended or disciplinarily
a procedure for reciprocal discipline of concluded that oral hearings are not disqualified; and (2) any claim,
a practitioner who has been disbarred or required for all licensing proceedings. 5 predicated upon the grounds set forth in
suspended by another jurisdiction U.S.C. 558 does not itself require the §§ 11.24(d)(1)(i) through (d)(1)(iii), that
(including any federal court and any application of 5 U.S.C. 556 to licensing the imposition of the identical
state or federal administrative body or proceedings, such as a disciplinary case. discipline would be unwarranted and
tribunal), or disciplinarily disqualified 5 U.S.C. 554 requires the application of the reasons for that claim. After
from participating in or appearing § 556 ‘‘in every case of adjudication expiration of the forty-day period, the
before any Federal program or agency. required by statute to be determined on USPTO Director would consider any
The Office would define the terms the record after opportunity for agency timely filed response.
‘‘disqualified,’’ ‘‘Federal program,’’ and hearing,’’ with exceptions not Pursuant to §§ 11.24(d)(1)(i) through
‘‘Federal agency’’ for the purposes of applicable here. See § 554(a). The (d)(1)(iii), the practitioner or OED
deciding whether a practitioner has provision of § 554 applies only where Director could present one or more of
been disqualified from participating in Congress has clearly indicated that a the only following three arguments: (1)
or appearing before any Federal program hearing required by statute must be a That the procedure elsewhere was so
or agency. For that purpose, ‘‘trial-type hearing on the record.’’ R.R. lacking in notice or opportunity to be
‘‘disqualified’’ would mean any action Comm’n of Texas v. United States, 665 heard as to constitute a deprivation of
that prohibits a practitioner from F. 2d 221, 227 (D.C. Cir. 1985), citing due process; (2) that there was such
participating in or appearing before the United States v. Florida E. Coast Ry., infirmity of proof establishing the
program or agency, regardless of how 410 U.S. 224, 234 (1973). There are no conduct as to give rise to the clear
long the prohibition lasts or the specific decisions so interpreting 35 U.S.C. 32. conviction that the Office could not,
terminology used. The program or That statute requires ‘‘notice and consistently with its duty, accept as
agency need not use the term opportunity for a hearing,’’ and that final the conclusion on that subject; or
‘‘disqualified’’ to describe the action. ‘‘the reasons for any [resulting] (3) that the imposition of the same
For example, an agency may use suspension or exclusion shall be duly discipline by the Office would result in
analogous terms such as ‘‘suspend,’’ recorded.’’ A requirement to record the grave injustice. Under § 11.24(d)(2), if
‘‘decertify,’’ ‘‘exclude,’’ ‘‘expel,’’ or reasons for the decision is not the same the USPTO Director determines that any
‘‘debar’’ to describe the practitioner’s as requiring a trial-type hearing. of the elements of §§ 11.24(d)(1)(i)
through (d)(1)(iii) exist, the USPTO Federal Rules of Disciplinary disciplinary proceeding so instituted
Director would enter an appropriate Enforcement, would apply in § 11.25. would not be brought to final hearing
order. For example, the USPTO Director Before initiating action, the OED until all direct appeals from the
might order a hearing before a hearing Director would exercise reasonable care conviction are concluded. Review of the
officer limited to the particular element. to confirm that the crime is a ‘‘serious initial decision of the hearing officer
Revised proposed § 11.24(f) provides crime’’ and that the convicted would be pursuant to § 11.55. See
for conditions when it would be individual is a practitioner before the § 11.25(b)(4).
permissible to impose reciprocal Office. For example, OED would consult With respect to convictions in the
discipline nunc pro tunc. The with either or both prosecutor or state United States, a certified copy of the
practitioner must have promptly disciplinary counsel to confirm the court record, docket entry, or judgment
notified the OED Director of his or her classification of the crime, as well as of conviction in a court of the United
discipline or disciplinary obtain information confirming the States would be conclusive evidence
disqualification and must clearly and identity of the convicted individual. that the practitioner committed the
convincingly establish that the OED could also compare information it crime and was convicted. The sole issue
practitioner voluntarily ceased all receives regarding convicted individuals in a formal disciplinary proceeding
activities related to practice before the with its records and other records in the would be the nature and extent of the
Office and complied with all provisions Office, in addition to asking the discipline to be imposed as a
of § 11.58. In such circumstances, the practitioner whether he or she is the consequence of the conviction. See
effective nunc pro tunc date would be person who was convicted. The OED § 11.25(c)(1).
the date the practitioner voluntarily Director would file with the USPTO Inasmuch as not all other countries
ceased all activities related to practice Director proof of the finding of guilt, always meet minimum due process
before the Office and complied with all and a complaint against the practitioner standards, a conviction in a foreign
provisions of § 11.58. complying with § 11.34 predicated upon court even of a ‘‘serious crime’’ may not
Reinstatement following reciprocal the conviction. The OED Director would result in automatic disqualification.
discipline is addressed in § 11.24(g). A request issuance of a notice and order Therefore, a practitioner convicted in a
practitioner could petition for set forth in § 11.25(b)(1). If the crime is foreign court of a serious crime may
reinstatement under conditions set forth not a serious crime, the matter would be demonstrate in any hearing by clear and
in § 11.60 no sooner than completion of processed in the same manner as any convincing evidence: that (1) the
the period of reciprocal discipline other information or evidence of a procedure in the foreign country was so
imposed, and compliance with all possible violation of an imperative Rule lacking in notice or opportunity to be
provisions of § 11.58. of Professional Conduct coming to the heard as to constitute a deprivation of
Section 11.25: Section 11.25 would attention of the OED Director. due process and rebut the prima facie
provide a revised procedure for interim Under revised proposed § 11.25(b), evidence of guilt, or (2) there are
suspension and discipline based upon interim suspension could not be material facts to be considered when
conviction of committing a serious imposed until the practitioner has been determining if a serious crime was
crime. Revised proposed § 11.25 afforded notice and opportunity to be committed and whether a disciplinary
parallels the procedure in Rule 19, heard. The USPTO Director would serve sanction should be entered. See
Lawyers Found Guilty Of A Crime, of the practitioner with notice complying § 11.25(c)(ii).
the Model Rules for Lawyer Disciplinary with § 11.35(a), (b) or (c) containing a Section 11.26: Section 11.26 has been
Enforcement of the American Bar copy of the court record; docket entry or revised to introduce provisions for
Association. If a practitioner is judgment of conviction; a copy of the settlement in disciplinary matters. The
convicted of a serious crime, the OED complaint; and an order directing the proposed rules did not provide for
Director would initiate disciplinary practitioner to inform the USPTO settlement. The revised proposed
action under this section without Director, within forty days of the date of section codifies current practices.
authorization of the Committee on the notice, of any predicate challenge Section 11.27: The provisions in
Discipline. Serious crime was defined in establishing that interim suspension § 11.27 set forth the procedure for
proposed § 11.1 as meaning (1) any may not properly be ordered, such as excluding a practitioner on consent.
criminal offense classified as a felony that the crime did not constitute a Subsection 11.27(b) has been revised to
under the laws of the United States, any ‘‘serious crime’’ or that the practitioner provide that upon entering an order
state or any foreign country where the is not the individual who was excluding a practitioner, the USPTO
crime occurred, or (2) any crime a convicted. See § 11.25(b)(2). The hearing Director may include in the order
necessary element of which, as for interim suspension would be heard provisions for other appropriate actions,
determined by the statutory or common on the documentary record and the such as restitution of unearned fees or
law definition of such crime in the practitioner’s assertion of any predicate misappropriated funds. See § 11.22(b).
jurisdiction where the crime occurred, challenge. See § 11.25(b)(3). The Section 11.28: The provisions in
includes interference with the practitioner would be placed on interim § 11.28 regarding incapacitated
administration of justice, false swearing, suspension immediately upon proof that practitioners have been revised to be
misrepresentation, fraud, willful failure the practitioner has been convicted of a limited to apply to disciplinary
to file income tax returns, deceit, serious crime regardless of the proceedings. As revised, the OED
bribery, extortion, misappropriation, pendency of any appeal. See Director would not initiate efforts to
theft, or an attempt or a conspiracy or § 11.25(b)(3)(i). Interim suspension may have a practitioner declared
solicitation of another to commit a be terminated in the interest of justice incapacitated in disciplinary or non-
‘‘serious crime.’’ That definition, which upon a showing of extraordinary disciplinary instances. Instead, a
is derived from the definitions of circumstances. See § 11.25(b)(3)(ii). practitioner may move to have the
‘‘serious crime’’ included in Rule 19(C) Upon entering an order of interim proceeding held in abeyance because of
of the American Bar Association Model suspension, the matter would be a current disability or addiction. See
Rules for Lawyer Disciplinary referred to the OED Director for § 11.28(a). If the practitioner’s motion is
Enforcement and Rule I(B) of the institution of a formal disciplinary granted, the practitioner will be
American Bar Association Model proceeding before a hearing officer. A transferred to disability inactive status
and precluded from practicing before notice with the clerk. A defendant who testimony of witnesses would continue
the Office. See § 11.28(a)(2). Upon fails to do so cannot rely on an insanity to be received under oath or affirmation.
motion of the practitioner or the OED defense. The court may, for good cause, A copy of the transcript of the hearing
Director, the practitioner may be allow the defendant to file the notice would continue to become part of the
restored to active status, which will late, grant additional trial-preparation record. The OED Director and
cause the disciplinary proceeding to time, or make other appropriate orders.’’ respondent would make their own
resume. See §§ 11.28(b), (d) and (e). A Section 11.39: Section 11.39(g) has arrangements with the stenographer to
practitioner engaging in practice before been added to provide that the hearing obtain a copy of the hearing transcript.
the Office or representing a party in officer not engage in ex parte An excluded or suspended practitioner
litigation while on disability inactive discussions with any party regarding the would reimburse the Office for OED’s
status would be good cause for the OED merits of the complaint, beginning with expense of the hearing transcript cost,
Director to file a motion to resume a appointment and concluding with the and any fee paid for the services of the
disciplinary proceeding that has been final agency decision. The addition reporter. See proposed § 11.60(d)(2)(i).
held in abeyance. clarifies the period during which the
The expense of deposition transcripts
Section 11.36: Section 11.36, which hearing officer is not permitted to
would be borne by the party requesting
provides for the practitioner’s answer to discuss the merits of a complaint. The
depositions inasmuch as the rules are
a complaint, has been revised to provide period is of limited duration to enable
that a practitioner must affirmatively counsel representing the agency to silent regarding such costs.
state any intent to raise disability as a consult, if necessary, with the hearing Section 11.45: This section has been
mitigating factor. We agree with officer if court review is sought of the revised to provide for amending the
comments that disability itself should final agency decision. complaint without authorization from
not be a mitigating factor. Accordingly, Section 11.40: In view of changes in the Committee on Discipline. The
the revised proposed section requires the Office’s organization and the purpose of the amendments would be to
the respondent practitioner to specify authorities of the Deputy General include additional charges based upon
the disability, its nexus to the Counsel for Intellectual Property and conduct committed before or after the
misconduct, and the reason it provides Solicitor, proposed § 11.40(b) has been complaint was filed. The hearing officer
mitigation. Disability, such as mental revised to provide that the Solicitor and would have to approve amendment of
disability or chemical dependency, attorneys in the Office of the Solicitor the complaint and authorize
including alcoholism or drug abuse, shall represent the OED Director in amendment of the answer. The revised
would be a mitigating factor only if the disciplinary proceedings. practice conforms to disciplinary
respondent practitioner makes an Section 11.40(b) also has been revised procedural rules adopted in several
adequate showing of nexus and to provide that the USPTO Director may states. For example, Missouri
mitigation. Such a showing would be consult with the OED Director and Disciplinary Rule 5.15(b) provides that
expected to include (1) medical attorneys representing the OED Director ‘‘[i]f any amendment substantially
evidence that the practitioner is affected after a final agency decision has been changes the charges, the respondent
by a chemical dependency or mental entered concerning any further shall be given a reasonable time to
disability; (2) evidence that the proceedings. The need for consultation
respond.’’ Florida’s Rule 3–7.6(h) is a
chemical dependency or mental arises in the event that the practitioner
disciplinary rule governing pleadings,
disability caused the misconduct; (3) the seeks review of the decision in the
including complaints, in Procedures
practitioner’s recovery from the United States District Court for the
Before a Referee. Rule 3–7.6(h)(6)
chemical dependency or mental District of Columbia pursuant to 35
provides ‘‘[p]leadings may be amended
disability is demonstrated by a U.S.C. 32. There is no necessity after a
final agency decision issues to continue by order of the referee, and a reasonable
meaningful and sustained period of time shall be given within which to
successful rehabilitation; (4) the to maintain a wall between the USPTO
Director or officials representing the respond thereto.’’ In the First
recovery arrested the misconduct; and
USPTO Director, the OED Director, or Department of New York, disciplinary
(5) recurrence of the misconduct is
those representing the OED Director. procedure § 605.11 provides
unlikely. These are the same standards
The revision codifies current practice ‘‘[w]henever, in the course of any
set forth Section 9.32(i) of the American
and provides that after a final decision hearing under these Rules, evidence
Bar Association Standards for Imposing
Lawyer Sanctions (1992). is entered in a disciplinary proceeding, shall be presented upon which another
Section 11.36(c) has been revised to the OED Director and attorneys charge or charges against the
require a disability defense to be raised representing the OED Director shall be Respondent might be made, it shall not
at the answer stage. A practitioner who available to counsel the USPTO be necessary to prepare or serve an
fails to raise the defense at the answer Director, the General Counsel, and the additional Notice of Charges with
stage cannot rely on the disability Deputy General Counsel for General respect thereto, but the Referee may,
absent a showing of good cause to the Law in any further proceedings. after reasonable notice to the
hearing officer for leave to amend the Section 11.44: Oral hearings before a Respondent and an opportunity to
answer. Revised § 11.36(c) employs hearing officer would be conducted as if answer and be heard, proceed to the
language similar to the requirement in the proceeding were subject to 5 U.S.C. consideration of such additional charge
the Federal Rules of Criminal Procedure 556. A hearing officer would thus or charges as if they had been made and
for fixing a deadline for raising an continue to preside over the served at the time of service of the
insanity defense. Rule 12.2 of the Fed. disciplinary proceeding. An oral hearing Notice of Charges, and may render its
R. Crim. P. states ‘‘A defendant who would be unnecessary where, for decision upon all such charges as may
intends to assert a defense of insanity at example, there is a settlement, or the be justified by the evidence in the case.’’
the time of the alleged offense must so hearing officer entered an order default As revised, procedural efficiencies are
notify an attorney for the government in judgment or summary judgment. If there realized by reducing the time and
writing within the time provided for is an oral hearing, it would also resources needed to amend the
filing a pretrial motion, or at any later continue to be stenographically complaint, while expediting resolution
time the court sets, and file a copy of the recorded and transcribed, and the of all disciplinary issues that the OED
Director becomes aware of during the exceptional circumstances. Excluded or proceeding. Accordingly, it is
proceeding. suspended practitioners would be unnecessary to address reactivation of
Section 11.49: This section would unable to represent clients before the practitioners in disability inactive status
maintain the ‘‘clear and convincing’’ Office or earn income from representing in § 11.58.
burden of proof. Comments clients before the Office. Accordingly, Section 11.59: Section 11.59 has been
overwhelmingly expressed a preference such circumstances are considered to be revised to improve information
for maintaining the current burden of the normal result of exclusion or dissemination to protect the public from
proof, as opposed to reducing the suspension, and would not render a disciplined practitioners. Section
burden to a preponderance of evidence. case exceptional to merit a stay of 11.59(a) provides for informing the
Section 11.52: Section 11.52(b)(1) has discipline pending appeal. Proof of an public of the disposition of each matter
been revised pursuant to several exceptional circumstance necessarily in which public discipline has been
suggestions to permit reasonable and requires a showing that there is reason imposed and of any other changes in a
relevant discovery. It also permits to believe the practitioner would likely practitioner’s registration status. Public
reasonable and relevant discovery of succeed on appeal. discipline is identified as exclusion,
records and information a practitioner Section 11.58: Section 11.58(e) will including exclusion on consent,
did not disclose or release during an continue to permit suspended, suspension, and public reprimand. In
investigation. The provision in the excluded, or resigned practitioners to the usual circumstances, the OED
proposed rules for discovery of the act as paralegals for other registered Director would give notice of public
identity of Government employees who practitioners. The public is adequately discipline and the reasons for the
have investigated the case has been protected by requiring the practitioner discipline to disciplinary enforcement
eliminated as unnecessary inasmuch as to notify all clients he or she represents agencies in the state where the
the investigator(s) is or are named in with immediate or prospective business practitioner is admitted practice, to
and sign the inquiry letters mailed to before the Office of the disciplinary courts where the practitioner is known
the practitioner. action and resulting suspension, to be admitted, and the public. The final
Section 11.55: Section 11.55 has been exclusion, or resignation. See decision of the USPTO Director would
reorganized and revised to clarify the § 11.58(b)(1)(iii). The clients include, for be published if public discipline is
process of appealing a decision to the example, clients for whom the imposed. A redacted version of the final
USPTO Director. As revised, the rule practitioner has prepared and filed decision would be published if a private
would clarify who is the appellant and papers at the Office, clients for whom reprimand is imposed. Changes in
require all briefs, including reply briefs, the practitioner has been engaged to
to comply with specified standards. status, such as suspended, excluded, or
prepare documents to be filed in the disability inactive status, would also be
Section 11.56: Section 11.56(b) has Office but has yet to file any documents,
been revised to provide that the final published.
and clients whom the practitioner has
decision of the USPTO Director, in Section 11.59(b) has been revised to
billed for work performed or to be
addition to disciplining a practitioner or provide that, but for records that the
performed. The public and other
dismissing a disciplinary proceeding, USPTO Director orders to be kept
affected persons are adequately
may also reverse or modify the initial confidential, records of every
protected by precluding the suspended,
decision. The revision conforms to disciplinary proceeding where a
excluded, or resigned practitioner from
current practice and inherent authority. practitioner is reprimanded, suspended,
communicating directly with the
Section 11.56(b) is further revised to employing practitioner’s clients, or excluded will be available to the
provide that a final decision suspending meeting with those clients, or rendering public upon written request. An
or excluding a practitioner will require any legal advice or services to them. exception is provided to enable the
compliance with § 11.58. The final order Proposed § 11.58(b)(1)(v) has been Office to withhold information as
also may condition reinstatement upon revised to provide that the disciplined necessary to protect the privacy and
a showing that the practitioner has or resigned practitioner must relinquish commercial interests of third parties.
taken steps to correct or mitigate the to the client or other practitioner The record of a proceeding that results
matter forming the basis of the action or designated by the client, all funds for in a practitioner’s transfer to disability
to prevent a recurrence of the same or practice before the Office, including any inactive status would not be available to
similar conduct. Section 11.56(c) has legal fees paid in advance that have not the public.
been revised to add a ground on which been earned and any advanced costs not Section 11.60: Section 11.60 has been
a request for reconsideration or expended. The revision provides revised to refer to practitioners who
modification could be granted. operational efficiencies that enable the have been excluded on consent as
Specifically, the request could be client, or the client’s new counsel in resigned practitioners and to provide for
granted based on an error of law, a basis consultation with the client, to their reinstatement.
that is not provided for by the current determine to whom funds should be Section 11.61: Sections 11.61(c) and
rule. transferred to enable the client to pursue (d) have been added to the savings
Section 11.57: Section 11.57(a), which his or her legal rights. clause to clarify when the specific rule
pertains to review of final decisions of Proposed rule 11.58(b), regarding changes would be effective. The
the USPTO Director at the United States reactivation of practitioners on provisions of §§ 11.24, 11.25, 11.28 and
District Court for the District of disability inactive status, has been 11.34 through 11.57 would apply to all
Columbia, has been revised to draw the eliminated as unnecessary. The revised proceedings in which the complaint is
practitioner’s attention to the necessity proposed sections have limited filed on or after the effective date of
for complying with service requirements disability inactive status to practitioners these regulations. Sections 11.26 and
of Rule 4 of the Federal Rules of Civil who are in a disciplinary proceeding 11.27 would apply to matters pending
Procedure and 37 CFR 104.2. Section and provide procedures for their on or after the effective date of these
11.57(b), as revised, provides that reactivation in revised proposed regulations. Sections 11.58 through
except as provided for in § 11.56(c), an § 11.28(b). Disability inactive status 11.60 would apply to all cases in which
order for discipline in a final decision would be unavailable to practitioners an order of suspension or exclusion is
will not be stayed except on proof of who are not in a disciplinary entered or resignation is accepted on or
after the effective date of these making involves information collection Form Numbers: None.
regulations. requirements which are subject to Type of Review: Approved through
review by the Office of Management and July of 2007.
Classification Affected Public: Individuals or
Budget (OMB) under the Paperwork
Regulatory Flexibility Act: The Deputy Reduction Act of 1995 (44 U.S.C. 3501 households, businesses or other for-
General Counsel for General Law, et seq.). This supplemental notice of profit, Federal Government, and state,
United States Patent and Trademark proposed rule making contains revisions local, or tribal governments.
Office, certified to the Chief Counsel for that the United States Patent and Estimated Number of Respondents:
Advocacy, Small Business Trademark Office (USPTO) is proposing 582.
Administration, that the changes in this to the rules governing the conduct of Estimated Time per Response: 5
notice of proposed rule making will not professional responsibility minutes to 60 hours.
have a significant economic impact on Estimated Total Annual Burden
investigations and disciplinary
a substantial number of small entities Hours: 8,334 hours.
proceedings. The principal impact of Needs and Uses: The information in
(Regulatory Flexibility Act, 5 U.S.C. the changes in this supplemental notice
605(b)). The provisions of the this collection is necessary for the
of proposed rule making is on registered United States Patent and Trademark
Regulatory Flexibility Act relating to the practitioners. The information
preparation of an initial flexibility Office to comply with Federal
collections involved in this proposed regulations, 35 U.S.C. 6(a) and 35 U.S.C.
analysis are not applicable to this rule rule have been previously reviewed and
making because the rules will not have 31. The Office of Enrollment and
approved by OMB under OMB control Discipline collects this information to
a significant economic impact on a numbers 0651–0012 and 0651–0017.
substantial number of small entities. ensure compliance with the USPTO
The proposed revisions do not affect the Code of Professional Responsibility, 37
The primary purpose of the rule changes information collection requirements for
is to bring the USPTO’s disciplinary CFR 10.20–10.112. This Code requires
0651–0012 and 0651–0017, so the that registered practitioners maintain
procedural rules for practitioners in line USPTO is not resubmitting these
with the American Bar Association complete records of clients, including
collections to OMB for review and all funds, securities, and other
Model Rules, American Bar Association approval.
Model Rules for Lawyer Disciplinary properties of clients coming into his/her
The title, description, and respondent
Enforcement, American Bar Association possession, and render appropriate
description of the currently approved
Model Federal Rules of Disciplinary accounts to the client regarding such
information collections for 0651–0012
Enforcement and rules adopted by other records, as well as report violations of
and 0651–0017 are shown below with
federal agencies. This will ease the the Code to the USPTO. The registered
estimates of the annual reporting
practitioners’ burden in learning and practitioners are mandated by the Code
burdens. Included in the estimates is the
complying with USPTO regulations. to maintain proper documentation so
time for reviewing instructions,
The rule eliminates a fee of $130 for that they can fully cooperate with an
gathering and maintaining the data
petitions in disciplinary cases to enable investigation in the event of a report of
needed, and completing and reviewing
petitioners to invoke the supervisory an alleged violation and so that
the collection of information.
authority of the USPTO Director. The violations are prosecuted as appropriate.
rule does not affect the fee of $130 OMB Number: 0651–0012 Comments are invited on: (1) Whether
previously adopted for petition to the Title: Admittance to Practice and the collection of information is
Director of Enrollment and Discipline in Roster of Registered Patent Attorneys necessary for proper performance of the
enrollment and registration matters. and Agents Admitted to Practice Before functions of the agency; (2) the accuracy
The rule imposes a $1600 fee for a the Patent and Trademark Office of the agency’s estimate of the burden;
petition for reinstatement for a (USPTO). (3) ways to enhance the quality, utility,
suspended or excluded practitioner and Form Numbers: PTO–158, PTO–158A, and clarity of the information to be
removes the $1500 cap on disciplinary PTO/275, PTO–107A, and PTO–1209. collected; and (4) ways to minimize the
proceeding costs that can be assessed Type of Review: Approved through burden of the collection of information
against such a practitioner as a March of 2007. to respondents.
condition of reinstatement. Affected Public: Individuals or Interested persons are requested to
Approximately five of the 30,000 households, businesses or other for- send comments regarding these
practitioners petition for reinstatement profit, Federal Government, and state, information collections, including
each year, and approximately two of local, or tribal governments. suggestions for reducing this burden, to
these petitions occur under Estimated Number of Respondents: Harry I. Moatz, Director of Enrollment
circumstances where disciplinary 20,231. and Discipline, Mail Stop OED-Ethics
proceeding costs may be assessed. These Estimated Time per Response: 10 Rules, U.S. Patent and Trademark
changes, therefore, will not affect a minutes to 40 hours. Office, P.O. Box 1450, Alexandria,
substantial number of practitioners. Estimated Total Annual Burden Virginia 22313–1450, or to the Office of
Executive Order 13132: This notice of Hours: 46,567 hours. Information and Regulatory Affairs,
proposed rule making does not contain Needs and Uses: The public uses the Office of Management and Budget, New
policies with federalism implications forms in this collection to ensure that all Executive Office Building, Room 10202,
sufficient to warrant preparation of a of the necessary information is provided 725 17th Street, NW., Washington, DC
Federalism Assessment under Executive to the USPTO and to request inclusion 20503, Attention: Desk Officer for the
Order 13132 (August 4, 1999). on the Register of Patent Attorneys and United States Patent and Trademark
Executive Order 12866: This notice of Agents. Office.
proposed rule making has been Notwithstanding any other provision

determined to be not significant for OMB Number: 0651–0017 of law, no person is required to respond
purposes of Executive Order 12866 Title: Practitioner Records to nor shall a person be subject to a
(September 30, 1993). Maintenance, Disclosure, and Discipline penalty for failure to comply with a
Paperwork Reduction Act: This Before the United States Patent and collection of information subject to the
supplemental notice of proposed rule Trademark Office (USPTO). requirements of the Paperwork
Reduction Act unless that collection of investigations and disciplinary Director may be directed by the USPTO
information displays a currently valid proceedings as may be necessary. Director to file a reply to the petition,
OMB control number. (6) Oversee the preliminary screening supplying a copy to the petitioner. An
of information and close investigations oral hearing will not be granted except
List of Subjects as provided for in § 11.22. when considered necessary by the
37 CFR Part 11 Administrative (c) Petition to OED Director regarding USPTO Director. The mere filing of a
practice and procedure, Inventions and enrollment or recognition. Any petition petition will not stay an investigation,
patents, Lawyers, Reporting and from any action or requirement of the disciplinary proceeding or other
recordkeeping requirements. staff of OED reporting to the OED proceedings. Any petition under this
For the reasons set forth in the Director shall be taken to the OED part not filed within thirty days of the
preamble, the United States Patent and Director accompanied by payment of the mailing date of the action or notice from
Trademark Office proposes to amend 37 fee set forth in § 1.21(a)(5)(i). Any such which relief is requested may be
CFR Part 11 as follows: petition not filed within sixty days from dismissed as untimely. Any request for
the mailing date of the action or notice reconsideration of the decision of the
PART 11—REPRESENTATION OF from which relief is requested will be USPTO Director may be dismissed as
OTHERS BEFORE THE UNITED dismissed as untimely. The filing of a untimely if not filed within thirty days
STATES PATENT AND TRADEMARK petition will neither stay the period for after the date of said decision.
OFFICE taking other action which may be 4. Section 11.3 is revised to read as
running, nor stay other proceedings. A follows:
1. The authority citation for 37 CFR final decision by the OED Director may
Part 11 would continue to read as be reviewed in accordance with the § 11.3 Suspension of rules.
follows: provisions of paragraph (d) of this (a) Except as provided in paragraph
section. (b) of this section, in an extraordinary
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 (d) Review of OED Director’s decision situation, when justice requires, any
U.S.C. 2(b)(2), 32. requirement of the regulations of this
regarding enrollment or recognition. A
2. Section 11.1 is amended to add the party dissatisfied with a final decision Part which is not a requirement of
definition of State as follows: of the OED Director regarding statute may be suspended or waived by
enrollment or recognition may seek the USPTO Director or the designee of
§ 11.1 Definitions the USPTO Director, sua sponte, or on
review of the decision upon petition to
* * * * * the USPTO Director accompanied by petition by any party, including the
State means any of the 50 states of the payment of the fee set forth in OED Director or the OED Director’s
United States of America, the District of § 1.21(a)(5)(ii). Any such petition to the representative, subject to such other
Columbia, and any Commonwealth or USPTO Director waives a right to seek requirements as may be imposed.
territory of the United States of reconsideration from the OED Director. (b) No petition under this section
America. Any petition not filed within thirty days shall stay a disciplinary proceeding
* * * * * after the final decision of the OED unless ordered by the USPTO Director
3. Section 11.2 is amended to revise Director may be dismissed as untimely. or a hearing officer.
paragraphs (a), (b)(4), (c) and (d) and Briefs or memoranda, if any, in support
add paragraphs (b)(5), (b)(6) and (e) to of the petition shall accompany the Subpart B—Recognition to Practice
read as follows: petition. The petition will be decided on Before the USPTO
the basis of the record made before the 5. Section 11.5 is revised to read as
§ 11.2 Director of the Office of Enrollment OED Director. The USPTO Director in
and Discipline. follows:
deciding the petition will consider no
(a) Appointment. The USPTO Director new evidence. Copies of documents § 11.5 Register of attorneys and agents in
shall appoint a Director of the Office of already of record before the OED patent matters; practice before the Office.
Enrollment and Discipline (OED Director shall not be submitted with the (a) A register of attorneys and agents
Director). In the event of a vacancy in petition. An oral hearing will not be is kept in the Office on which are
the office of the OED Director, the granted except when considered entered the names of all individuals
USPTO Director may designate an necessary by the USPTO Director. Any recognized as entitled to represent
employee of the Office to serve as acting request for reconsideration of the applicants having prospective or
OED Director. The OED Director shall be decision of the USPTO Director may be immediate business before the Office in
an active member in good standing of dismissed as untimely if not filed the preparation and prosecution of
the bar of a State. within thirty days after the date of said patent applications. Registration in the
(b) * * * decision. Office under the provisions of this part
(4) Conduct investigations of matters (e) Petition to USPTO Director in shall entitle the individuals so
involving possible grounds for disciplinary matters. Petition may be registered to practice before the Office
discipline of practitioners coming to the taken to the USPTO Director to invoke only in patent matters.
attention of the OED Director. Except in the supervisory authority of the USPTO (b) Practice before the Office. Practice
matters meriting summary dismissal, no Director in appropriate circumstances in before the Office includes, but is not
disposition shall be recommended or disciplinary matters. Any such petition limited to, law-related service that
undertaken by the OED Director until must contain a statement of the facts comprehends any matter connected
the accused practitioner shall have been involved and the point or points to be with the presentation to the Office or
afforded an opportunity to respond to a reviewed and the action requested. any of its officers or employees relating
reasonable inquiry by the OED Director. Briefs or memoranda, if any, in support to a client’s rights, privileges, duties, or
(5) With the consent of a panel of of the petition must accompany the responsibilities under the laws or
three members of the Committee on petition. Where facts are to be proven, regulations administered by the Office
Discipline, initiate disciplinary the proof in the form of affidavits or for the grant of a patent or registration
proceedings under § 11.32 and perform declarations (and exhibits, if any) must of a trademark, or for enrollment or
such other duties in connection with accompany the petition. The OED disciplinary matters. Such presentations
include preparing necessary documents recognition to practice before the Office association is a party to a trademark
in contemplation of filing the in trademark and other non-patent proceeding pending before the Office.
documents with the Office, matters. Registration as a patent attorney (f) Application for reciprocal
corresponding and communicating with does not itself entitle an individual to recognition. An individual seeking
the Office, and representing a client practice before the Office in trademark reciprocal recognition under paragraph
through documents or at interviews, matters. (c) of this section, in addition to
hearings, and meetings, as well as (b) Non-lawyers. Individuals who are providing evidence satisfying the
communicating with and advising a not attorneys are not recognized to provisions of paragraph (c) of this
client concerning matters pending or practice before the Office in trademark section, shall apply in writing to the
contemplated to be presented before the and other non-patent matters, except OED Director for reciprocal recognition,
Office. Nothing in this section that individuals not attorneys who were and shall pay the application fee
proscribes a practitioner from recognized to practice before the Office required by § 1.21(a)(1)(i) of this
employing non-practitioner assistants in trademark matters under this chapter subchapter.
under the supervision of the practitioner prior to January 1, 1957, will be
to assist the practitioner in preparation § 11.15 Refusal to recognize a practitioner.
recognized as agents to continue
of said presentations. practice before the Office in trademark Any practitioner authorized to appear
(1) Practice before the Office in patent matters. Except as provided in the before the Office may be suspended,
matters. Practice before the Office in preceding sentence, registration as a excluded, or reprimanded in accordance
patent matters includes, but is not patent agent does not itself entitle an with the provisions of this Part. Any
limited to, preparing and prosecuting individual to practice before the Office practitioner who is suspended or
any patent application, consulting with in trademark matters. excluded under this Part shall not be
or giving advice to a client in (c) Foreigners. Any foreign attorney or entitled to practice before the Office in
contemplation of filing a patent agent not a resident of the United States patent, trademark, or other non-patent
application or other document with the who shall file a written application for matters while suspended or excluded.
Office, considering the advisability of reciprocal recognition under paragraph § 11.16–11.17 [Reserved]
relying upon alternative forms of (f) of this section and prove to the
protection that may be available under satisfaction of the OED Director that he § 11.18 Signature and certificate for
State law, drafting the specification or or she is registered or in good standing correspondence filed in the Office.
claims of a patent application; drafting before the patent or trademark office of (a) For all documents filed in the
an amendment or reply to a the country in which he or she resides Office in patent, trademark, and other
communication from the Office that and practices and is possessed of good non-patent matters, and all documents
may require written argument to moral character and reputation, may be filed with a hearing officer in a
establish the patentability of a claimed recognized for the limited purpose of disciplinary proceeding, except for
invention; drafting a reply to a representing parties located in such correspondence that is required to be
communication from the Office country before the Office in the signed by the applicant or party, each
regarding a patent application, and presentation and prosecution of piece of correspondence filed by a
drafting a communication for a public trademark matters, provided: the patent practitioner in the Office must bear a
use, interference, reexamination or trademark office of such country signature, personally signed by such
proceeding, petition, appeal to the allows substantially reciprocal practitioner, in compliance with
Board of Patent Appeals and privileges to those permitted to practice § 1.4(d)(1) of this subchapter.
Interferences, or other proceeding. in trademark matters before the Office. (b) By presenting to the Office or
(2) Practice before the Office in Recognition under this paragraph shall hearing officer in a disciplinary
trademark matters. Practice before the continue only during the period that the proceeding (whether by signing, filing,
Office in trademark matters includes, conditions specified in this paragraph submitting, or later advocating) any
but is not limited to, consulting with or obtain. paper, the party presenting such paper,
giving advice to a client in (d) Recognition of any individual whether a practitioner or non-
contemplation of filing a trademark under this section shall not be practitioner, is certifying that—
registration application or other construed as sanctioning or authorizing (1) All statements made therein of the
document with the Office; preparing the performance of any act regarded in party’s own knowledge are true, all
and prosecuting an application for the jurisdiction where performed as the statements made therein on information
trademark registration; preparing an unauthorized practice of law. and belief are believed to be true, and
amendment which may require written (e) No individual other than those all statements made therein are made
argument to establish the registrability specified in paragraphs (a), (b), and (c) with the knowledge that whoever, in
of the mark; and conducting an of this section will be permitted to any matter within the jurisdiction of the
opposition, cancellation, or concurrent practice before the Office in trademark Office, knowingly and willfully falsifies,
use proceeding; or conducting an appeal matters on behalf of a client. Any conceals, or covers up by any trick,
to the Trademark Trial and Appeal individual may appear in a trademark or scheme, or device a material fact, or
Board. other non-patent matter in his or her knowingly and willfully makes any
6. Sections 11.14 through 11.18 are own behalf. Any individual may appear false, fictitious, or fraudulent statements
added to read as follows: in a trademark matter for: or representations, or knowingly and
§ 11.14 Individuals who may practice (1) A firm of which he or she is a willfully makes or uses any false writing
before the Office in trademark and other member, or document knowing the same to
non-patent matters. (2) A partnership of which he or she contain any false, fictitious, or
(a) Attorneys. Any individual who is is a partner, or fraudulent statement or entry, shall be
an attorney may represent others before (3) A corporation or association of subject to the penalties set forth under
the Office in trademark and other non- which he or she is an officer and which 18 U.S.C. 1001 and any other applicable
patent matters. An attorney is not he or she is authorized to represent, if criminal statute, and violations of the
required to apply for registration or such firm, partnership, corporation, or provisions of this section may
jeopardize the probative value of the 11.26 Settlement. (1) Conviction of a serious crime;
paper; and 11.27 Exclusion on consent. (2) Discipline on ethical grounds
(2) To the best of the party’s 11.28 Incapacitated practitioners in a imposed in another jurisdiction or
knowledge, information and belief, disciplinary proceeding. disciplinary disqualification from
11.29–11.31 [Reserved]
formed after an inquiry reasonable participating in or appearing before any
11.32 Initiating a disciplinary proceeding.
under the circumstances, 11.33 [Reserved] Federal program or agency;
(i) The paper is not being presented 11.34 Complaint. (3) Failure to comply with any order
for any improper purpose, such as to 11.35 Service of complaint. of a Court disciplining a practitioner, or
harass someone or to cause unnecessary 11.36 Answer to complaint. any final decision of the USPTO
delay or needless increase in the cost of 11.37 [Reserved] Director in a disciplinary matter;
any proceeding before the Office; 11.38 Contested case. (4) Violation of the imperative USPTO
(ii) The other legal contentions 11.39 Hearing officer; appointment; Rules of Professional Conduct; or
therein are warranted by existing law or responsibilities; review of interlocutory (5) Violation of the oath or declaration
by a nonfrivolous argument for the orders; stays.
taken by the practitioner. See § 11.8.
extension, modification, or reversal of 11.40 Representative for OED Director or
respondent. (c) Petitions to disqualify a
existing law or the establishment of new 11.41 Filing of papers. practitioner in ex parte or inter partes
law; 11.42 Service of papers. matters in the Office are not governed
(iii) The allegations and other factual 11.43 Motions. by §§ 11.19 through 11.806 and will be
contentions have evidentiary support or, 11.44 Hearings. handled on a case-by-case basis under
if specifically so identified, are likely to 11.45 Amendment of pleadings. such conditions as the USPTO Director
have evidentiary support after a 11.46–11.48 [Reserved] deems appropriate.
reasonable opportunity for further 11.49 Burden of proof. (d) The OED Director may refer the
investigation or discovery; and 11.50 Evidence.
existence of circumstances suggesting
(iv) The denials of factual contentions 11.51 Depositions.
11.52 Discovery. unauthorized practice of law to the
are warranted on the evidence, or if authorities in the appropriate
11.53 Proposed findings and conclusions;
specifically so identified, are reasonably post-hearing memorandum. jurisdiction(s).
based on a lack of information or belief. 11.54 Initial decision of hearing officer.
(c) Violations of any of paragraphs 11.55 Appeal to the USPTO Director. § 11.20 Disciplinary sanctions.
(b)(2)(i) through (iv) of this section are, 11.56 Decision of the USPTO Director. (a) Types of discipline. The USPTO
after notice and reasonable opportunity 11.57 Review of final decision of the Director, after notice and opportunity
to respond, subject to such sanctions or USPTO Director. for a hearing, and where grounds for
actions as deemed appropriate by the 11.58 Duties of disciplined or resigned discipline exist, may impose on a
USPTO Director, which may include, practitioner. practitioner the following types of
but are not limited to, any combination 11.59 Dissemination of disciplinary and
other information.
discipline:
of— (1) Exclusion from practice before the
(1) Striking the offending paper; 11.60 Petition for reinstatement.
11.61 Savings clause. Office;
(2) Referring a practitioner’s conduct (2) Suspension from practice before
11.62–11.99 [Reserved]
to the Director of Enrollment and the Office for an appropriate period of
Discipline for appropriate action; § 11.19 Disciplinary jurisdiction. time;
(3) Precluding a party or practitioner (a) All practitioners engaged in (3) Reprimand; or
from submitting a paper, or presenting practice before the Office; all (4) Probation. Probation may be
or contesting an issue; practitioners administratively imposed in lieu of or in addition to any
(4) Affecting the weight given to the suspended under § 11.11(b); all other disciplinary sanction. Any
offending paper; practitioners registered to practice conditions of probation shall be stated
(5) Requiring a terminal disclaimer or
before the Office in patent cases; all in writing in the order imposing
reducing the term of a patent for a
practitioners inactivated under probation. The order shall also state
period equal to the period the offending
§ 11.11(c); all practitioners authorized whether, and to what extent, the
paper is advocated; or
(6) Terminating the proceedings in the under § 11.6(d) to take testimony; and practitioner shall be required to notify
Office. all practitioners reprimanded, clients of the probation. The order shall
(d) Any practitioner violating the suspended, or excluded from the establish procedures for the supervision
provisions of this section may also be practice of law by a duly constituted of probation. Violation of any condition
subject to disciplinary action. authority, including by the USPTO of probation shall be cause for the
7. Part 11 is amended to add Subpart Director, are subject to the disciplinary probation to be revoked, and the
C to read as follows: jurisdiction of the Office. Practitioners disciplinary sanction to be imposed for
who have resigned under § 11.11(e) the remainder of the probation period.
Subpart C—Investigations And shall also be subject to such jurisdiction Revocation of probation shall occur only
Disciplinary Proceedings with respect to conduct undertaken after an order to show cause why
prior to the resignation and conduct in probation should not be revoked is
Jurisdiction, Sanctions, Investigations, regard to any practice before the Office resolved adversely to the practitioner.
and Proceedings following the resignation. (b) Conditions imposed with
Sec. (b) Grounds for discipline. The discipline. When the USPTO Director
11.19 Disciplinary jurisdiction. following, whether done individually by imposes discipline, the practitioner may
11.20 Disciplinary sanctions. a practitioner or in concert with any be required to make restitution either to
11.21 Warnings. other person or persons and whether or persons financially injured by the
11.22 Investigations. not done in the course of providing legal practitioner’s conduct or to an
11.23 Committee on Discipline.
11.24 Reciprocal discipline. services to a client, or in a matter appropriate client’s security trust fund,
11.25 Interim suspension and discipline pending before the Office, constitute or both, as a condition of probation or
based upon conviction of committing a grounds for discipline. Grounds for of reinstatement. Such restitution shall
serious crime. discipline include: be limited to the return of unearned
practitioner fees or misappropriated possible grounds for discipline of a Committee shall have the power and
client funds. Any other reasonable practitioner from a non-grieving client duty to:
condition may also be imposed, either after obtaining the consent of the (1) Meet in panels at the request of the
including a requirement that the practitioner or upon a finding by a OED Director and, after reviewing
practitioner take and pass a professional Contact Member of the Committee on evidence presented by the OED Director,
responsibility examination. Discipline, appointed in accordance by majority vote of the panel, determine
with § 11.23(d), that good cause exists to whether there is probable cause to bring
§ 11.21 Warnings. believe that the possible ground for charges under § 11.32 against a
A warning is not a disciplinary discipline alleged has occurred with practitioner; and
sanction. The OED Director may respect to non-grieving clients. Neither (2) Prepare and forward its own
conclude an investigation with the a request for, nor disclosure of, such probable cause findings and
issuance of a warning. The warning information shall constitute a violation recommendations to the OED Director.
shall contain a brief statement of facts of any of the Rules of Professional (c) No discovery shall be authorized
and imperative USPTO Rules of Conduct contained in §§ 11.100 et seq. of, and no member of the Committee on
Professional Conduct relevant to the (g) Disposition of investigation. Upon Discipline shall be required to testify
facts. the conclusion of an investigation, the about deliberations of, the Committee
§ 11.22 Investigations.
OED Director may: on Discipline or of any panel.
(1) Close the investigation without (d) The Chairperson shall appoint the
(a) The OED Director is authorized to issuing a warning, or taking disciplinary
investigate possible grounds for members of the panels and a Contact
action; Member of the Committee on Discipline.
discipline. An investigation may be (2) Issue a warning to the practitioner;
initiated when the OED Director (3) Institute formal charges upon the § 11.24 Reciprocal discipline.
receives a grievance, information or approval of the Committee on (a) Notification of OED Director.
evidence from any source suggesting Discipline; or Within thirty days of being disbarred or
possible grounds for discipline. Neither (4) Enter into a settlement agreement suspended by another jurisdiction, or
unwillingness nor neglect by a grievant with the practitioner and submit the being disciplinarily disqualified from
to prosecute a charge, nor settlement, same for approval of the USPTO participating in or appearing before any
compromise, or restitution with the Director. Federal program or agency, a
grievant, shall in itself justify abatement (h) Closing investigation without practitioner subject to the disciplinary
of an investigation. issuing a warning or taking disciplinary
(b) Any person possessing jurisdiction of the Office shall notify the
action. The OED Director shall OED Director in writing of the same. A
information or evidence concerning terminate an investigation and decline
possible grounds for discipline of a practitioner is deemed to be disbarred if
to refer a matter to the Committee on he or she is disbarred, excluded on
practitioner may report the information Discipline if the OED Director
or evidence to the OED Director. The consent, or has resigned in lieu of a
determines that: disciplinary proceeding. Upon receiving
OED Director may request that the (1) The information or evidence is
report be presented in the form of an notification from any source or
unfounded; otherwise learning that a practitioner
affidavit or declaration. (2) The information or evidence
(c) Information or evidence coming subject to the disciplinary jurisdiction
relates to matters not within the
from any source which presents or of the Office has been so disciplined or
jurisdiction of the Office;
alleges facts suggesting possible grounds disciplinarily disqualified, the OED
(3) As a matter of law, the conduct
for discipline of a practitioner will be Director shall obtain a certified copy of
about which information or evidence
deemed a grievance. the record or order regarding the
has been obtained does not constitute
(d) Preliminary screening of disbarment, suspension, or disciplinary
grounds for discipline, even if the
information or evidence. The OED disqualification and file the same with
conduct may involve a legal dispute; or
Director shall examine all information the USPTO Director. The OED Director
(4) The available evidence is
or evidence concerning possible shall, in addition, without Committee
insufficient to conclude that there is
grounds for discipline of a practitioner. on Discipline authorization, file with
probable cause to believe that grounds
(e) Notification of investigation. The the USPTO Director a complaint
exist for discipline.
OED Director shall notify the complying with § 11.34 against the
practitioner in writing of the initiation § 11.23 Committee on Discipline. practitioner predicated upon the
of an investigation into whether a (a) The USPTO Director shall appoint disbarment, suspension, or disciplinary
practitioner has engaged in conduct a Committee on Discipline. The disqualification. The OED Director shall
constituting possible grounds for Committee on Discipline shall consist of request the USPTO Director to issue a
discipline. at least three employees of the Office. notice and order as set forth in
(f) Request for information and None of the Committee members shall paragraph (b) of this section.
evidence by OED Director. (1) In the report directly or indirectly to the OED (b) Notification served on practitioner.
course of the investigation, the OED Director or any employee designated by Upon receipt of a certified copy of the
Director may request information and the USPTO Director to decide record or order regarding the
evidence regarding possible grounds for disciplinary matters. Each Committee practitioner being so disciplined or
discipline of a practitioner from: member shall be a member in good disciplinarily disqualified together with
(i) The grievant, standing of the bar of the highest court the complaint, the USPTO Director shall
(ii) The practitioner, or of a State. The Committee members forthwith issue a notice directed to the
(iii) Any person who may reasonably shall select a Chairperson from among practitioner in accordance with § 11.35
be expected to provide information and themselves. Three Committee members and to the OED Director containing:
evidence needed in connection with the will constitute a panel of the (1) A copy of the record or order
grievance or investigation. Committee. regarding the disbarment, suspension,
(2) The OED Director may request (b) Powers and duties of the or disciplinary disqualification;
information and evidence regarding Committee on Discipline. The (2) A copy of the complaint; and
(3) An order directing the practitioner tunc only if the practitioner promptly suspension proceeding to a hearing
to inform the USPTO Director, within notified the OED Director of his or her officer with appropriate directions.
forty days of the date of the notice, of: discipline or disciplinary (2) Notification served on practitioner.
(i) Any argument that the practitioner disqualification in another jurisdiction, Upon receipt of a certified copy of the
was not disbarred, suspended, or and establishes by clear and convincing court record, docket entry or judgment
disciplinarily disqualified; and evidence that the practitioner demonstrating that the practitioner has
(ii) Any claim by the practitioner, voluntarily ceased all activities related been so convicted together with the
predicated upon the grounds set forth in to practice before the Office and complaint, the USPTO Director shall
paragraphs (d)(1)(i) through (d)(1)(iii) of complied with all provisions of § 11.58. forthwith issue a notice directed to the
this section, that the imposition of the The effective date of any suspension or practitioner in accordance with
identical discipline would be disbarment imposed nunc pro tunc shall § 11.35(a), (b) or (c), and to the OED
unwarranted and the reasons for that be the date the practitioner voluntarily Director, containing:
claim. ceased all activities related to practice (i) A copy of the court record, docket
(c) Effect of stay in another before the Office and complied with all entry, or judgment of conviction;
jurisdiction. In the event the discipline provisions of § 11.58. (ii) A copy of the complaint; and
imposed by another jurisdiction or (g) Reinstatement following reciprocal (iii) An order directing the
disciplinary disqualification imposed in discipline proceeding. A practitioner practitioner to inform the USPTO
the Federal program or agency has been may petition for reinstatement under Director, within forty days of the date of
stayed, any reciprocal discipline conditions set forth in § 11.60 no sooner the notice, of any predicate challenge
imposed by the USPTO may be deferred than completion of the period of establishing that interim suspension
until the stay expires. reciprocal discipline imposed, and may not properly be ordered, such as
(d) Hearing and discipline to be compliance with all provisions of the crime did not constitute a serious
imposed. (1) The USPTO Director shall § 11.58. crime or that the practitioner is not the
hear the matter on the documentary individual found guilty.
record unless the USPTO Director § 11.25 Interim suspension and discipline (3) Hearing and interim suspension.
determines that an oral hearing is based upon conviction of committing a The matter shall be heard on the
serious crime. documentary record for the order for
necessary. After expiration of the forty
days from the date of the notice (a) Notification of OED Director. Upon interim suspension and the
pursuant to provisions of paragraph (b) being convicted of a crime in a court of practitioner’s assertion of any predicate
of this section, the USPTO Director shall the United States, any State, or a foreign challenge.
consider any timely filed response and country, a practitioner subject to the (i) Interim Suspension. The USPTO
impose the identical discipline unless disciplinary jurisdiction of the Office Director shall place a practitioner on
the practitioner or OED Director clearly shall notify the OED Director in writing interim suspension immediately upon
and convincingly demonstrates, or the of the same within thirty days from the proof that the practitioner has been
USPTO Director finds, that it clearly date of such conviction. Upon being convicted of a serious crime, regardless
appears upon the face of the record from advised or learning that a practitioner of the pendency of any appeal.
which the discipline is predicated, that: subject to the disciplinary jurisdiction (ii) Termination. The USPTO Director
(i) The procedure elsewhere was so of the Office has been convicted of a has authority to terminate an interim
lacking in notice or opportunity to be crime, the OED Director shall make a suspension. In the interest of justice, the
heard as to constitute a deprivation of preliminary determination whether the USPTO Director may terminate an
due process; crime constitutes a serious crime interim suspension at any time upon a
(ii) There was such infirmity of proof warranting immediate interim showing of extraordinary circumstances,
establishing the conduct as to give rise suspension. If the crime is a serious after affording the OED Director an
to the clear conviction that the Office crime, the OED Director shall file with opportunity to respond to the request to
could not, consistently with its duty, the USPTO Director proof of the terminate interim suspension.
accept as final the conclusion on that conviction and request the USPTO (4) Referral for disciplinary
subject; or Director to issue a notice and order set proceeding. Upon entering an order of
(iii) The imposition of the same forth in paragraph (b)(2) of this section. interim suspension, the USPTO Director
discipline by the Office would result in The OED Director shall in addition, shall refer the matter to the OED
grave injustice. without Committee on Discipline Director for institution of a formal
(2) If the USPTO Director determines authorization, file with the USPTO disciplinary proceeding. A disciplinary
that any of the elements of paragraphs Director a complaint against the proceeding so instituted shall be stayed
(d)(1)(i) through (d)(1)(iii) of this section practitioner complying with § 11.34 by the hearing officer until all direct
exist, the USPTO Director shall enter an predicated upon the conviction of a appeals from the conviction are
appropriate order. serious crime. If the crime is not a concluded. Review of the initial
(e) Conclusiveness of adjudication in serious crime, the OED Director shall decision of the hearing officer shall be
another jurisdiction or Federal agency process the matter in the same manner pursuant to § 11.55.
or program. In all other respects, a final as any other information or evidence of (c) Proof of conviction and guilt. (1)
adjudication in another jurisdiction or a possible violation of an imperative Conviction in the United States. For
Federal agency or program that a Rule of Professional Conduct coming to purposes of a hearing for interim
practitioner, whether or not admitted in the attention of the OED Director. suspension and a hearing on the formal
that jurisdiction, has been guilty of (b) Immediate interim suspension and charges in a complaint filed as a
misconduct shall establish conclusively referral for disciplinary proceeding. All consequence of the conviction, a
the ground for discipline for purposes of proceedings under this section shall be certified copy of the court record,
a disciplinary proceeding in this Office. handled as expediously as possible. docket entry, or judgment of conviction
(f) Reciprocal discipline—action (1) The USPTO Director has authority in a court of the United States or any
where practice has ceased. Upon to place a practitioner on interim State shall be conclusive evidence that
request by the practitioner, reciprocal suspension. The USPTO Director may the practitioner committed the crime
discipline may be imposed nunc pro refer any portion of the interim and was convicted. The sole issue
before the hearing officer shall be the service under probation or parole, investigation or charges in the
nature and extent of the discipline to be whichever is later. complaint.
imposed as a consequence of the (f) Notice to clients and others of (b) Action by the USPTO Director.
conviction. interim suspension. An interim Upon receipt of the required affidavit,
(2) Conviction in a foreign country. suspension under this section shall the OED Director shall file the affidavit
For purposes of a hearing for interim constitute a suspension of the and any related papers with the USPTO
suspension and on the formal charges practitioner for the purpose of § 11.58. Director for review and approval. Upon
filed as a result of a finding of guilt, a such approval, the USPTO Director will
certified copy of the court record, § 11.26 Settlement. enter an order excluding the practitioner
docket entry, or judgment of conviction Before or after a complaint under on consent and providing other
in a court of a foreign country shall be § 11.24 is filed, a settlement conference appropriate actions. Upon entry of the
conclusive evidence of the conviction may occur between the OED Director order, the excluded practitioner shall
and of any imposed confinement or and the practitioner. Any offers of comply with the requirements set forth
commitment to imprisonment, and compromise and any statements made in § 11.58.
prima facie evidence of the during the course of settlement (c) When an affidavit under paragraph
practitioner’s commission of the crime discussions shall not be admissible in (a) of this section is received after a
of which the practitioner has been subsequent proceedings. The OED complaint under § 11.34 has been filed,
convicted. However, nothing in this Director may recommend to the USPTO the OED Director shall notify the
paragraph shall preclude the Director any settlement terms deemed hearing officer. The hearing officer shall
practitioner from demonstrating in any appropriate, including steps taken to enter an order transferring the
hearing by clear and convincing correct or mitigate the matter forming disciplinary proceeding to the USPTO
evidence: the basis of the action, or to prevent Director, who may enter an order
(i) That the procedure in the foreign recurrence of the same or similar excluding the practitioner on consent.
country was so lacking in notice or conduct. A settlement agreement shall (d) Reinstatement. Any practitioner
opportunity to be heard as to constitute be effective only upon entry of a final excluded on consent under this section
a deprivation of due process and rebut decision by the USPTO Director. may not petition for reinstatement for
the prima facie evidence of guilt; or five years. A practitioner excluded on
(ii) Material facts to be considered § 11.27 Exclusion on consent.
consent who intends to reapply for
when determining if a serious crime was (a) Required affidavit. The OED admission to practice before the Office
committed and whether a disciplinary Director may confer with a practitioner must comply with the provisions of
sanction should be entered. concerning possible violations by the § 11.58, and apply for reinstatement in
(d) Crime determined not to be serious practitioner of the Rules of Professional accordance with § 11.60. Failure to
crime. If the USPTO Director determines Conduct whether or not a disciplinary comply with the provisions of § 11.58
that the crime is not a serious crime, the proceeding has been instituted. A constitutes grounds for denying an
matter shall be referred to the OED practitioner who is the subject of an application for reinstatement.
Director for investigation under § 11.22 investigation or a pending disciplinary
and processing as is appropriate. proceeding based on allegations of § 11.28 Incapacitated practitioners in a
(e) Reinstatement. (1) Upon reversal grounds for discipline, and who desires disciplinary proceeding.
or setting aside a finding of guilt or a to resign, may only do so by consenting (a) Holding in abeyance a disciplinary
conviction. If a practitioner suspended to exclusion and delivering to the OED proceeding because of incapacitation
solely under the provisions of paragraph Director an affidavit declaring the due to a current disability or addiction.
(b) of this section demonstrates that the consent of the practitioner to exclusion (1) Practitioner’s motion. In the course
underlying finding of guilt or conviction and stating: of a disciplinary proceeding under
of serious crimes has been reversed or (1) That the practitioner’s consent is § 11.32, but before the date set by the
vacated, the order for interim freely and voluntarily rendered, that the hearing officer for a hearing, the
suspension shall be vacated and the practitioner is not being subjected to practitioner may file a motion
practitioner be placed on active status coercion or duress, and that the requesting the hearing officer to enter an
unless the finding of guilt was reversed practitioner is fully aware of the order holding such proceeding in
or the conviction was set aside with implications of consenting to exclusion; abeyance based on the contention that
respect to less than all serious crimes for (2) That the practitioner is aware that the practitioner is suffering from a
which the practitioner was found guilty there is currently pending an disability or addiction that makes it
or convicted. The vacating of the investigation into, or a proceeding impossible for the practitioner to
interim suspension will not terminate involving allegations of misconduct, the adequately defend the charges in the
any other disciplinary proceeding then nature of which shall be specifically set disciplinary proceeding.
pending against the practitioner, the forth in the affidavit to the satisfaction (i) Content of practitioner’s motion.
disposition of which shall be of the OED Director; The practitioner’s motion shall, in
determined by the hearing officer before (3) That the practitioner addition to any other requirement of
whom the matter is pending, on the acknowledges that, if and when he or § 11.43, include or have attached
basis of all available evidence other than she applies for reinstatement under thereto:
the finding of guilt or conviction. § 11.60, the OED Director will (A) A brief statement of all material
(2) Following conviction of a serious conclusively presume, for the limited facts;
crime. Any practitioner convicted of a purpose of determining the application (B) Affidavits, medical reports, official
serious crime and disciplined in whole for reinstatement, that: records, or other documents setting
or in part in regard to that conviction, (i) The facts upon which the forth or establishing any of the material
may petition for reinstatement under investigation or complaint is based are facts on which the practitioner is
conditions set forth in § 11.60 no sooner true, and relying;
than five years after being discharged (ii) The practitioner could not have (C) A statement that the practitioner
following completion of service of his or successfully defended himself or herself acknowledges the alleged incapacity by
her sentence, or after completion of against the allegations in the reason of disability or addiction;
(D) Written consent that the shorter interval provided by the order §§ 11.29–11.31 [Reserved]
practitioner be transferred to disability issued pursuant to paragraph (a)(2) of
§ 11.32 Initiating a disciplinary proceeding.
inactive status if the motion is granted; this section or any modification thereof.
and If the motion is granted, the disciplinary If after conducting an investigation
(E) A written agreement by the proceeding shall resume under such under § 11.22(a) the OED Director is of
practitioner to not practice before the the opinion that grounds exist for
schedule as may be established by the
Office in patent, trademark or other non- discipline under § 11.19(b)(3)–(5), the
hearing officer.
patent cases while on disability inactive OED Director, and after complying
status. (c) Contents of motion for where necessary with the provisions of
(ii) Response. The OED Director’s reactivation. A motion by the 5 U.S.C. 558(c), shall convene a meeting
response to any motion hereunder shall practitioner for reactivation alleging that of a panel of the Committee on
be served and filed within fourteen days a practitioner has recovered from a prior Discipline. The panel of the Committee
after service of the practitioner’s motion disability or addiction shall be on Discipline shall then determine as
unless such time is shortened or accompanied by all available medical specified in § 11.23(b) whether a
enlarged by the hearing officer for good reports or similar documents relating disciplinary proceeding shall be
cause shown, and shall set forth the thereto. The hearing officer may require instituted. If the panel of the Committee
following: the practitioner to present such other on Discipline determines that probable
(A) All objections, if any, to the information as is necessary. cause exists to bring charges under
actions requested in the motion; § 11.19(b)(3)–(5), the OED Director shall
(B) An admission, denial or allegation (d) OED Director’s motion to resume
institute a disciplinary proceeding by
of lack of knowledge with respect to disciplinary proceeding held in
filing a complaint under § 11.34.
each of the material facts in the abeyance. (1) The OED Director, having
practitioner’s motion and accompanying good cause to believe a practitioner is § 11.33 [Reserved]
documents; and no longer incapacitated, may file a
§ 11.34 Complaint.
(C) Affidavits, medical reports, official motion requesting the hearing officer to
records, or other documents setting terminate a prior order holding in (a) A complaint instituting a
forth facts on which the OED Director abeyance any pending proceeding disciplinary proceeding under
intends to rely for purposes of disputing because of the practitioner’s disability § 11.25(b)(4) or 11.32 shall:
or denying any material fact set forth in or addiction. The hearing officer shall (1) Name the practitioner who may
the practitioner’s papers. decide the matter presented by the OED then be referred to as the ‘‘respondent’’;
(2) Disposition of practitioner’s Director’s motion hereunder based on (2) Give a plain and concise
motion. The hearing officer shall decide the affidavits and other admissible description of the respondent’s alleged
the motion and any response thereto. evidence attached to the OED Director’s grounds for discipline;
The motion shall be granted upon a motion and the practitioner’s response. (3) State the place and time, not less
showing of good cause to believe the The OED Director bears the burden of than thirty days from the date the
practitioner to be incapacitated as showing by clear and convincing complaint is filed, for filing an answer
alleged. If the required showing is made, by the respondent;
evidence that the practitioner is able to
the hearing officer shall enter an order (4) State that a decision by default
defend himself or herself. If there is any
holding the disciplinary proceeding in may be entered if an answer is not
genuine issue as to one or more material
abeyance. In the case of addiction to timely filed by the respondent; and
facts, the hearing officer will hold an
drugs or intoxicants, the order may (5) Be signed by the OED Director.
provide that the practitioner will not be evidentiary hearing.
(b) A complaint will be deemed
returned to active status absent (2) The hearing officer, upon receipt sufficient if it fairly informs the
satisfaction of specified conditions. of the OED Director’s motion under respondent of any grounds for
Upon receipt of the order, the OED paragraph (d)(1) of this section, may discipline, and where applicable, the
Director shall place the practitioner on direct the practitioner to file a response. imperative USPTO Rules of Professional
disability inactive status, give notice to If the hearing officer requires the Conduct that form the basis for the
the practitioner, cause notice to be practitioner to file a response, the disciplinary proceeding so that the
published, and give notice to practitioner must present clear and respondent is able to adequately prepare
appropriate authorities in the Office that convincing evidence that the prior self- a defense.
the practitioner has been placed on alleged disability or addiction continues (c) The complaint shall be filed in the
disability inactive status. The to make it impossible for the manner prescribed by the USPTO
practitioner shall comply with the practitioner to defend himself or herself Director.
provisions of § 11.58, and shall not in the underlying proceeding being held
engage in practice before the Office in § 11.35 Service of complaint.
in abeyance.
patent, trademark and other non-patent (a) A complaint may be served on a
law until a determination is made of the (e) Action by the hearing officer. If, in respondent in any of the following
practitioner’s capability to resume deciding a motion under paragraph (b) methods:
practice before the Office in a or (d) of this section, the hearing officer (1) By delivering a copy of the
proceeding under paragraph (c) or determines that there is good cause to complaint personally to the respondent,
paragraph (d) of this section. believe the practitioner is not in which case the individual who gives
(b) Motion for reactivation. Any incapacitated from defending himself or the complaint to the respondent shall
practitioner transferred to disability herself, or is not incapacitated from file an affidavit with the OED Director
inactive status in a disciplinary practicing before the Office, the hearing indicating the time and place the
proceeding may file with the hearing officer shall take such action as is complaint was handed to the
officer a motion for reactivation once a deemed appropriate, including the entry respondent.
year beginning at any time not less than of an order directing the reactivation of (2) By mailing a copy of the complaint
one year after the initial effective date the practitioner and resumption of the by ‘‘Express Mail,’’ first-class mail, or
of inactivation, or once during any disciplinary proceeding. any delivery service that provides
ability to confirm delivery or attempted facts that constitute the grounds of section shall not be subject to
delivery to: defense and shall specifically admit or supervision of the person(s)
(i) A respondent who is a registered deny each allegation set forth in the investigating or prosecuting the case.
practitioner at the address provided to complaint. The respondent shall not (3) A hearing officer appointed in
OED pursuant to § 11.11, or deny a material allegation in the accordance with paragraph (a) of this
(ii) A respondent who is a complaint that the respondent knows to section shall be impartial, shall not be
nonregistered practitioner at the last be true or state that respondent is an individual who has participated in
address for the respondent known to the without sufficient information to form a any manner in the decision to initiate
OED Director. belief as to the truth of an allegation the proceedings, and shall not have
(3) By any method mutually agreeable when in fact the respondent possesses been employed under the immediate
to the OED Director and the respondent. that information. The respondent shall supervision of the practitioner.
(4) In the case of a respondent who also state affirmatively in the answer (4) A hearing officer appointed in
resides outside the United States, by special matters of defense and any accordance with paragraph (a) of this
sending a copy of the complaint by any intent to raise a disability as a mitigating section shall be admitted to practice law
delivery service that provides ability to factor. If respondent intends to raise a and have suitable experience and
confirm delivery or attempted delivery, special matter of defense or disability, training to conduct the hearing, reach a
to: the answer shall specify the defense or determination, and render an initial
(i) A respondent who is a registered disability, its nexus to the misconduct, decision in an equitable manner.
practitioner at the address provided to and the reason it provides a defense or (c) Responsibilities. The hearing
OED pursuant to § 11.11; or mitigation. A respondent who fails to do officer shall have authority, consistent
(ii) A respondent who is a so cannot rely on a special matter of with specific provisions of these
nonregistered practitioner at the last defense or disability. The hearing officer regulations, to:
address for the respondent known to the may, for good cause, allow the (1) Administer oaths and affirmations;
OED Director. respondent to file the statement late, (2) Make rulings upon motions and
(b) If a copy of the complaint cannot grant additional hearing preparation other requests;
be delivered to the respondent through time, or make other appropriate orders. (3) Rule upon offers of proof, receive
any one of the procedures in paragraph (d) Failure to deny allegations in relevant evidence, and examine
(a) of this section, the OED Director complaint. Every allegation in the witnesses;
shall serve the respondent by causing an complaint that is not denied by a (4) Authorize the taking of a
appropriate notice to be published in respondent in the answer shall be deposition of a witness in lieu of
the Official Gazette for two consecutive personal appearance of the witness
deemed to be admitted and may be
weeks, in which case, the time for filing before the hearing officer;
considered proven. The hearing officer
(5) Determine the time and place of
an answer shall be thirty days from the at any hearing need receive no further any hearing and regulate its course and
second publication of the notice. Failure evidence with respect to that allegation. conduct;
to timely file an answer will constitute (e) Default judgment. Failure to timely (6) Hold or provide for the holding of
an admission of the allegations in the file an answer will constitute an conferences to settle or simplify the
complaint in accordance with paragraph admission of the allegations in the issues;
(d) of § 11.36, and the hearing officer complaint and may result in entry of (7) Receive and consider oral or
may enter an initial decision on default. default judgment. written arguments on facts or law;
(c) If the respondent is known to the (8) Adopt procedures and modify
OED Director to be represented by an § 11.37 [Reserved]
procedures for the orderly disposition of
attorney under § 11.40(a), a copy of the § 11.38 Contested case. proceedings;
complaint shall be served on the Upon the filing of an answer by the (9) Make initial decisions under
attorney in lieu of the respondent in the respondent, a disciplinary proceeding §§ 11.25 and 11.54; and
manner provided for in paragraph (a) or shall be regarded as a contested case (10) Perform acts and take measures
(b) of this section. within the meaning of 35 U.S.C. 24. as necessary to promote the efficient,
Evidence obtained by a subpoena issued timely, and impartial conduct of any
§ 11.36 Answer to complaint.
under 35 U.S.C. 24 shall not be admitted disciplinary proceeding.
(a) Time for answer. An answer to a (d) Time for making initial decision.
complaint shall be filed within the time into the record or considered unless
leave to proceed under 35 U.S.C. 24 was The hearing officer shall set times and
set in the complaint but in no event exercise control over a disciplinary
shall that time be less than thirty days previously authorized by the hearing
officer. proceeding such that an initial decision
from the date the complaint is filed. under § 11.54 is normally issued within
(b) With whom filed. The answer shall § 11.39 Hearing officer; appointment; nine months of the date a complaint is
be filed in writing with the hearing responsibilities; review of interlocutory filed. The hearing officer may, however,
officer at the address specified in the orders; stays. issue an initial decision more than nine
complaint. The hearing officer may (a) Appointment. A hearing officer, months after a complaint is filed if there
extend the time for filing an answer appointed by the USPTO Director under exist circumstances, in his or her
once for a period of no more than thirty 5 U.S.C. 3105 or 35 U.S.C. 32, shall opinion, that preclude issuance of an
days upon a showing of good cause, conduct disciplinary proceedings as initial decision within nine months of
provided a motion requesting an provided by this Part. the filing of the complaint.
extension of time is filed within thirty (b) Independence of the Hearing (e) Review of interlocutory orders. The
days after the date the complaint is Officer. (1) A hearing officer appointed USPTO Director will not review an
served on respondent. A copy of the in accordance with paragraph (a) of this interlocutory order of a hearing officer
answer, and any exhibits or attachments section shall not be subject to first level except:
thereto, shall be served on the OED or second level supervision by the (1) When the hearing officer shall be
Director. USPTO Director or his or her designee. of the opinion:
(c) Content. The respondent shall (2) A hearing officer appointed in (i) That the interlocutory order
include in the answer a statement of the accordance with paragraph (a) of this involves a controlling question of
procedure or law as to which there is a § 11.41 Filing of papers. (e) The hearing officer or the USPTO
substantial ground for a difference of (a) The provisions of §§ 1.8 and 2.197 Director may require that a paper be
opinion, and of this subchapter do not apply to served by hand or by ‘‘Express Mail.’’
(ii) That an immediate decision by the disciplinary proceedings. All papers (f) Service by mail is completed when
USPTO Director may materially advance filed after the complaint and prior to the paper mailed in the United States is
the ultimate termination of the entry of an initial decision by the placed into the custody of the U.S.
disciplinary proceeding, or hearing officer shall be filed with the Postal Service.
(2) In an extraordinary situation hearing officer at an address or place
where the USPTO Director deems that § 11.43 Motions.
designated by the hearing officer.
justice requires review. (b) All papers filed after entry of an Motions may be filed with the hearing
(f) Stays pending review of initial decision by the hearing officer officer. The hearing officer will
interlocutory order. If the OED Director shall be filed with the USPTO Director. determine whether replies to responses
or a respondent seeks review of an A copy of the paper shall be served on will be authorized and the time period
interlocutory order of a hearing officer the OED Director. The hearing officer or for filing such a response. No motion
under paragraph (b)(2) of this section, the OED Director may provide for filing shall be filed with the hearing officer
any time period set for taking action by papers and other matters by hand, by unless such motion is supported by a
the hearing officer shall not be stayed ‘‘Express Mail,’’ or by other means. written statement by the moving party
unless ordered by the USPTO Director that the moving party or attorney for the
§ 11.42 Service of papers. moving party has conferred with the
or the hearing officer.
(g) The hearing officer shall engage in (a) All papers other than a complaint opposing party or attorney for the
no ex parte discussions with any party shall be served on a respondent who is opposing party in an effort in good faith
on the merits of the complaint, represented by an attorney by: to resolve by agreement the issues raised
beginning with appointment and ending (1) Delivering a copy of the paper to by the motion and has been unable to
when the final agency decision is the office of the attorney; or reach agreement. If the parties prior to
issued. (2) Mailing a copy of the paper by a decision on the motion resolve issues
first-class mail, ‘‘Express Mail,’’ or other raised by a motion presented to the
§ 11.40 Representative for OED Director or delivery service to the attorney at the hearing officer, the parties shall
respondent. address provided by the attorney under promptly notify the hearing officer.
(a) A respondent may represent § 11.40(a)(1); or
himself or herself, or be represented by (3) Any other method mutually § 11.44 Hearings.
an attorney before the Office in agreeable to the attorney and a (a) The hearing officer shall preside at
connection with an investigation or representative for the OED Director. hearings in disciplinary proceedings. If
disciplinary proceeding. The attorney (b) All papers other than a complaint the hearing officer determines that an
shall file a written declaration that he or shall be served on a respondent who is oral hearing is appropriate, the hearing
she is an attorney within the meaning of not represented by an attorney by: officer shall set the time and place for
§ 11.1 and shall state: (1) Delivering a copy of the paper to a hearing. In setting a time and place,
(1) The address to which the attorney the respondent; or the hearing officer shall normally give
wants correspondence related to the (2) Mailing a copy of the paper by
preference to a Federal facility in the
investigation or disciplinary proceeding first-class mail, ‘‘Express Mail,’’ or other
district where the Office’s principal
sent, and delivery service to the respondent at the
office is located or Washington, DC,
(2) A telephone number where the address to which a complaint may be
giving due regard to the convenience
attorney may be reached during normal served or such other address as may be
and needs of the parties, witnesses, or
business hours. designated in writing by the respondent;
their representatives. In cases involving
(b) The Deputy General Counsel for or
(3) Any other method mutually an incarcerated respondent, any
Intellectual Property and Solicitor, and necessary oral hearing may be held at
attorneys in the Office of the Solicitor agreeable to the respondent and a
representative of the OED Director. the location of incarceration. Oral
shall represent the OED Director. The hearings will be stenographically
(c) A respondent shall serve on the
attorneys representing the OED Director recorded and transcribed, and the
representative for the OED Director one
in disciplinary proceedings shall not testimony of witnesses will be received
copy of each paper filed with the
consult with the USPTO Director, the under oath or affirmation. The hearing
hearing officer or the OED Director. A
General Counsel, or the Deputy General officer shall conduct the hearing as if
paper may be served on the
Counsel for General Law regarding the the proceeding were subject to 5 U.S.C.
representative for the OED Director by:
proceeding. The General Counsel and (1) Delivering a copy of the paper to 556. A copy of the transcript of the
the Deputy General Counsel for General the representative; or hearing shall become part of the record.
Law shall remain screened from the (2) Mailing a copy of the paper by The OED Director and respondent shall
investigation and prosecution of all first-class mail, ‘‘Express Mail,’’ or other make their own arrangements to obtain
disciplinary proceedings in order that delivery service to an address a copy of the transcript.
they shall be available as counsel to the designated in writing by the (b) If the respondent to a disciplinary
USPTO Director in deciding representative; or proceeding fails to appear at the hearing
disciplinary proceedings unless access (3) Any other method mutually after a notice of hearing has been given
is appropriate to perform their duties. agreeable to the respondent and the by the hearing officer, the hearing
After a final decision is entered in a representative. officer may deem the respondent to
disciplinary proceeding, the OED (d) Each paper filed in a disciplinary have waived the right to a hearing and
Director and attorneys representing the proceeding shall contain therein a may proceed with the hearing in the
OED Director shall be available to certificate of service indicating: absence of the respondent.
counsel the USPTO Director, the (1) The date of which service was (c) A hearing under this section will
General Counsel, and the Deputy made; and not be open to the public except that the
General Counsel for General Law in any (2) The method by which service was hearing officer may grant a request by a
further proceedings. made. respondent to open his or her hearing to
the public and make the record of the subject to any conditions the hearing appear personally before the hearing
disciplinary proceeding available for officer deems appropriate. officer.
public inspection, provided, Agreement (e) Objections. Objections to evidence
is reached in advance to exclude from will be in short form, stating the § 11.52 Discovery.
public disclosure information which is grounds of objection. Objections and Discovery shall not be authorized except
privileged or confidential under rulings on objections will be a part of as follows:
applicable laws or regulations. If a the record. No exception to the ruling is (a) After an answer is filed under
disciplinary proceeding results in necessary to preserve the rights of the § 11.36 and when a party establishes
disciplinary sanction against a parties. that discovery is reasonable and
practitioner, subject to § 11.59(b) the relevant, the hearing officer, under such
§ 11.51 Depositions.
record of the entire disciplinary conditions as he or she deems
proceeding, including any settlement (a) Depositions for use at the hearing appropriate, may order an opposing
in lieu of personal appearance of a party to:
agreement, will be available for public
witness before the hearing officer may (1) Answer a reasonable number of
inspection.
be taken by respondent or the OED written requests for admission or
§ 11.45 Amendment of pleadings. Director upon a showing of good cause interrogatories;
The OED Director may, without and with the approval of, and under (2) Produce for inspection and
Committee on Discipline authorization, such conditions as may be deemed copying a reasonable number of
but with the authorization of the hearing appropriate by, the hearing officer. documents; and
officer, amend the complaint to include Depositions may be taken upon oral or (3) Produce for inspection a
additional charges based upon conduct written questions, upon not less than reasonable number of things other than
committed before or after the complaint ten days’ written notice to the other documents.
was filed. If amendment of the party, before any officer authorized to (b) Discovery shall not be authorized
complaint is authorized, the hearing administer an oath or affirmation in the under paragraph (a) of this section of
officer shall authorize amendment of the place where the deposition is to be any matter which:
answer. Any party who would taken. The parties may waive the (1) Will be used by another party
otherwise be prejudiced by the requirement of ten days’ notice and solely for impeachment;
amendment will be given reasonable depositions may then be taken of a (2) Is not available to the party under
witness at a time and place mutually 35 U.S.C. 122;
opportunity to meet the allegations in
agreed to by the parties. When a (3) Relates to any other disciplinary
the complaint or answer as amended,
deposition is taken upon written proceeding;
and the hearing officer shall make
questions, copies of the written (4) Relates to experts except as the
findings on any issue presented by the
questions will be served upon the other hearing officer may require under
complaint or answer as amended.
party with the notice, and copies of any paragraph (e) of this section.
§§ 11.46–11.48 [Reserved] written cross-questions will be served (5) Is privileged; or
by hand or ‘‘Express Mail’’ not less than (6) Relates to mental impressions,
§ 11.49 Burden of proof. five days before the date of the taking of conclusions, opinions, or legal theories
In a disciplinary proceeding, the OED the deposition unless the parties of any attorney or other representative
Director shall have the burden of mutually agree otherwise. A party on of a party.
proving his or her case by clear and whose behalf a deposition is taken shall (c) The hearing officer may deny
convincing evidence and a respondent file a copy of a transcript of the discovery requested under paragraph (a)
shall have the burden of proving any deposition signed by a court reporter of this section if the discovery sought:
affirmative defense by clear and with the hearing officer and shall serve (1) Will unduly delay the disciplinary
convincing evidence. one copy upon the opposing party. proceeding;
Expenses for a court reporter and (2) Will place an undue burden on the
§ 11.50 Evidence. preparing, serving, and filing party required to produce the discovery
(a) Rules of evidence. The rules of depositions shall be borne by the party sought; or
evidence prevailing in courts of law and at whose instance the deposition is (3) Consists of information that is
equity are not controlling in hearings in taken. Depositions may not be taken to available:
disciplinary proceedings. However, the obtain discovery, except as provided for (i) Generally to the public;
hearing officer shall exclude evidence in paragraph (b) of this section. (ii) Equally to the parties; or
that is irrelevant, immaterial, or unduly (b) When the OED Director and the (iii) To the party seeking the
repetitious. respondent agree in writing, a discovery through another source.
(b) Depositions. Depositions of deposition of any witness who will (d) Prior to authorizing discovery
witnesses taken pursuant to § 11.51 may appear voluntarily may be taken under under paragraph (a) of this section, the
be admitted as evidence. such terms and conditions as may be hearing officer shall require the party
(c) Government documents. Official mutually agreeable to the OED Director seeking discovery to file a motion
documents, records, and papers of the and the respondent. The deposition (§ 11.43) and explain in detail, for each
Office, including, but not limited to, all shall not be filed with the hearing request made, how the discovery sought
papers in the file of a disciplinary officer and may not be admitted in is reasonable and relevant to an issue
investigation, are admissible without evidence before the hearing officer actually raised in the complaint or the
extrinsic evidence of authenticity. These unless he or she orders the deposition answer.
documents, records, and papers may be admitted in evidence. The admissibility (e) The hearing officer may require
evidenced by a copy certified as correct of the deposition shall lie within the parties to file and serve, prior to any
by an employee of the Office. discretion of the hearing officer who hearing, a pre-hearing statement that
(d) Exhibits. If any document, record, may reject the deposition on any contains:
or other paper is introduced in evidence reasonable basis including the fact that (1) A list (together with a copy) of all
as an exhibit, the hearing officer may demeanor is involved and that the proposed exhibits to be used in
authorize the withdrawal of the exhibit witness should have been called to connection with a party’s case-in-chief;
(2) A list of proposed witnesses; (2) The seriousness of the grounds for (f) The USPTO Director will decide
(3) As to each proposed expert discipline; the appeal on the record made before
witness: (3) The deterrent effects deemed the hearing officer.
(i) An identification of the field in necessary; (g) Unless the USPTO Director
which the individual will be qualified (4) The integrity of the legal and permits, no further briefs or motions
as an expert; patent professions; and shall be filed.
(ii) A statement as to the subject (5) Any extenuating circumstances. (h) The USPTO Director may order
matter on which the expert is expected reopening of a disciplinary proceeding
§ 11.55 Appeal to the USPTO Director. in accordance with the principles that
to testify; and
(iii) A statement of the substance of (a) Within thirty days after the date of govern the granting of new trials. Any
the facts and opinions to which the the initial decision of the hearing officer request to reopen a disciplinary
expert is expected to testify; under §§ 11.25, or 11.54, either party proceeding on the basis of newly
(4) Copies of memoranda reflecting may appeal to the USPTO Director. The discovered evidence must demonstrate
respondent’s own statements to appeal shall include the appellant’s that the newly discovered evidence
administrative representatives. brief. If more than one appeal is filed, could not have been discovered by due
(f) After a witness testifies for a party, the party who files the appeal first is the diligence.
if the opposing party requests, the party appellant for purpose of this rule. If (i) In the absence of an appeal by the
may be required to produce, prior to appeals are filed on the same day, the OED Director, failure by the respondent
cross-examination, any documents respondent is the appellant. If an appeal to appeal under the provisions of this
relied upon by the witness in giving his is filed, then the OED Director shall section shall be deemed to be both
or her testimony. transmit the entire record to the USPTO acceptance by the respondent of the
Director. Any cross-appeal shall be filed initial decision and waiver by the
§ 11.53 Proposed findings and within fourteen days after the date of respondent of the right to further
conclusions; post-hearing memorandum. service of the appeal pursuant to administrative or judicial review.
Except in cases in which the § 11.42, or thirty days after the date of
respondent has failed to answer the the initial decision of the hearing § 11.56 Decision of the USPTO Director.
complaint or amended complaint, the officer, whichever is later. The cross- (a) The USPTO Director shall decide
hearing officer, prior to making an appeal shall include the cross- an appeal from an initial decision of the
initial decision, shall afford the parties appellant’s brief. Any appellee or cross- hearing officer. The USPTO Director
a reasonable opportunity to submit appellee brief must be filed within may affirm, reverse, or modify the initial
proposed findings and conclusions and thirty days after the date of service decision or remand the matter to the
a post-hearing memorandum in support pursuant to § 11.42 of an appeal or hearing officer for such further
of the proposed findings and cross-appeal. Any reply brief must be proceedings as the USPTO Director may
conclusions. filed within fourteen days after the date deem appropriate. In making a final
of service of any appellee or cross- decision, the USPTO Director shall
§ 11.54 Initial decision of hearing officer. review the record or the portions of the
appellee brief.
(a) The hearing officer shall make an (b) An appeal or cross-appeal must record designated by the parties. The
initial decision in the case. The decision include exceptions to the decisions of USPTO Director shall transmit a copy of
will include: the hearing officer and supporting the final decision to the OED Director
(1) A statement of findings of fact and reasons for those exceptions. Any and to the respondent.
conclusions of law, as well as the exception not raised will be deemed to (b) A final decision of the USPTO
reasons or bases for those findings and have been waived and will be Director may dismiss a disciplinary
conclusions with appropriate references disregarded by the USPTO Director in proceeding, reverse or modify the initial
to the record, upon all the material reviewing the initial decision. decision, reprimand a practitioner, or
issues of fact, law, or discretion (c) All briefs shall: may suspend or exclude the practitioner
presented on the record, and (1) Be filed with the USPTO Director from practice before the Office. A final
(2) An order of default judgment, of at the address set forth in § 1.1(a)(3)(ii) decision suspending or excluding a
suspension or exclusion from practice, of this subchapter and served on the practitioner shall require compliance
of reprimand, or an order dismissing the opposing party; with the provisions of § 11.58. The final
complaint. The hearing officer shall (2) Include separate sections decision may also condition the
transmit a copy of the decision to the containing a concise statement of the reinstatement of the practitioner upon a
OED Director and to the respondent. disputed facts and disputed points of showing that the practitioner has taken
After issuing the decision, the hearing law; and steps to correct or mitigate the matter
officer shall transmit the entire record to (3) Be typed on 81⁄2 by 11-inch paper, forming the basis of the action, or to
the OED Director. In the absence of an and shall comply with Rule 32(a)(4)-(6) prevent recurrence of the same or
appeal to the USPTO Director, the of the Federal Rules of Appellate similar conduct.
decision of the hearing officer, Procedure. (c) The respondent or the OED
including a default judgment, will, (d) An appellant’s, cross-appellant’s, Director may make a single request for
without further proceedings, become the appellee’s, and cross-appellee’s brief reconsideration or modification of the
decision of the USPTO Director thirty shall be no more than thirty pages in decision by the USPTO Director if filed
days from the date of the decision of the length, and comply with Rule 28(a)(2), within twenty days from the date of
hearing officer. (3), and (5) through (10) of the Federal entry of the decision. No request for
(b) The initial decision of the hearing Rules of Appellate Procedure. Any reply reconsideration or modification shall be
officer shall explain the reason for any brief shall be no more than fifteen pages granted unless the request is based on
default judgment, reprimand, in length, and shall comply with Rule newly discovered evidence or error of
suspension, or exclusion. In 28(a)(2), (3), (8), and (9) of the Federal law or fact, and the requestor must
determining any sanction, the following Rules of Appellate Procedure. demonstrate that any newly discovered
should normally be considered: (e) The USPTO Director may refuse evidence could not have been
(1) The public interest; entry of a nonconforming brief. discovered any earlier by due diligence.
Such a request shall have the effect of trademark and other non-patent matters imperative USPTO Rules of Professional
staying the effective date of the order of of the order of exclusion, suspension or Conduct for withdrawal from
discipline in the final decision. The resignation and of the practitioner’s representation. Appended to the
decision by the USPTO Director is consequent inability to act as a affidavit of compliance shall be:
effective on its date of entry. practitioner after the effective date of (i) A copy of each form of notice, the
the order; and that, if not represented by names and addressees of the clients,
§ 11.57 Review of final decision of the another practitioner, the client should practitioners, courts, and agencies to
USPTO Director. which notices were sent, and all return
act promptly to substitute another
(a) Review of the final decision by practitioner, or to seek legal advice receipts or returned mail received up to
USPTO Director in a disciplinary case elsewhere, calling attention to any the date of the affidavit. Supplemental
may be had, subject to § 11.55(d), by a urgency arising from the circumstances affidavits shall be filed covering
petition filed in the United States of the case; subsequent return receipts and returned
District Court for the District of (iii) Provide notice to the mail. Such names and addresses of
Columbia in accordance with the local practitioner(s) for all opposing parties clients shall remain confidential unless
rule of said court. 35 U.S.C. 32. The (or, to the parties in the absence of a otherwise ordered by the USPTO
Respondent must serve the USPTO practitioner representing the parties) in Director;
Director with the petition. Respondent matters pending before the Office of the (ii) A schedule showing the location,
must serve the petition in accordance practitioner’s exclusion, suspension or title and account number of every bank
with Rule 4 of the Federal Rules of Civil resignation and, that as a consequence, account designated as a client or trust
Procedure and § 104.2 of this Title. the practitioner is disqualified from account, deposit account in the Office,
(b) Except as provided for in acting as a practitioner regarding or other fiduciary account, and of every
§ 11.56(c), an order for discipline in a matters before the Office after the account in which the practitioner holds
final decision will not be stayed except effective date of the suspension, or held as of the entry date of the order
on proof of exceptional circumstances. exclusion or resignation, and state in the any client, trust, or fiduciary funds for
notice the mailing address of each client practice before the Office;
§ 11.58 Duties of disciplined or resigned (iii) A schedule describing the
of the excluded, suspended or resigned
practitioner. practitioner’s disposition of all client
practitioner who is a party in the
(a) An excluded, suspended or pending matter; and fiduciary funds for practice before
resigned practitioner shall not engage in (iv) Deliver to all clients having the Office in the practitioner’s
any practice of patent, trademark and immediate or prospective business possession, custody or control as of the
other non-patent law before the Office. before the Office in patent, trademark or date of the order or thereafter;
An excluded, suspended or resigned other non-patent matters any papers or (iv) Such proof of the proper
practitioner will not be automatically other property to which the clients are distribution of said funds and the
reinstated at the end of his or her period entitled, or shall notify the clients and closing of such accounts as has been
of exclusion or suspension. An any co-practitioner of a suitable time requested by the OED Director,
excluded, suspended or resigned and place where the papers and other including copies of checks and other
practitioner must comply with the property may be obtained, calling instruments;
provisions of this section and §§ 11.12 attention to any urgency for obtaining (v) A list of all other State, Federal,
and 11.60 to be reinstated. Failure to the papers or other property; and administrative jurisdictions to
comply with the provisions of this (v) Relinquish to the client, or other which the practitioner is admitted to
section may constitute both grounds for practitioner designated by the client, all practice; and
denying reinstatement or readmission; funds for practice before the Office, (vi) An affidavit describing the precise
and cause for further action, including including any legal fees paid in advance nature of the steps taken to remove from
seeking further exclusion, suspension, that have not been earned and any any telephone, legal, or other directory
and for revocation of any pending advanced costs not expended; any advertisement, statement, or
probation. (vi) Take any necessary and representation which would reasonably
(b) Unless otherwise ordered by the appropriate steps to remove from any suggest that the practitioner is
USPTO Director, any excluded, telephone, legal, or other directory any authorized to practice patent,
suspended or resigned practitioner advertisement, statement, or trademark, or other non-patent law
shall: representation which would reasonably before the Office. The affidavit shall also
(1) Within thirty days after the date of suggest that the practitioner is state the residence or other address of
entry of the order of exclusion, authorized to practice patent, the practitioner to which
suspension, or acceptance of trademark, or other non-patent law communications may thereafter be
resignation: before the Office; and directed, and list all State and Federal
(i) File a notice of withdrawal as of (vii) Serve all notices required by jurisdictions, and administrative
the effective date of the exclusion, paragraphs (b)(1)(ii) and (b)(1)(iii) of this agencies to which the practitioner is
suspension or acceptance of resignation section by certified mail, return receipt admitted to practice. The OED Director
in each pending patent and trademark requested, unless mailed abroad. If may require such additional proof as is
application, each pending mailed abroad, all notices shall be deemed necessary. In addition, for the
reexamination and interference served with a receipt to be signed and period of discipline, an excluded or
proceeding, and every other matter returned to the practitioner. suspended practitioner shall continue to
pending in the Office, together with a (2) Within forty-five days after entry file a statement in accordance with
copy of the notices sent pursuant to of the order of suspension, exclusion, or § 11.11(a), regarding any change of
paragraphs (b) and (c) of this section; of acceptance of resignation, the residence or other address to which
(ii) Provide notice to all bars of which practitioner shall file with the OED communications may thereafter be
the practitioner is a member and all Director an affidavit of compliance directed, so that the excluded or
clients the practitioner represents certifying that the practitioner has fully suspended practitioner may be located
having immediate or prospective complied with the provisions of the if a grievance is received regarding any
business before the Office in patent, order, this section, and with the conduct occurring before or after the
exclusion or suspension. The as a paralegal for the other practitioner (2) The other practitioner shall have
practitioner shall retain copies of all or perform other services for the other filed with the OED Director a written
notices sent and shall maintain practitioner which are normally statement which:
complete records of the steps taken to performed by laypersons, provided: (i) Shows that the other practitioner
comply with the notice requirements. (1) The excluded, suspended or has read the affidavit required by
(3) Not hold himself or herself out as resigned practitioner is a salaried paragraph (d)(1) of this section and that
authorized to practice law before the employee of: the other practitioner believes every
Office. (i) The other practitioner;
(ii) The other practitioner’s law firm; statement in the affidavit to be true, and
(4) Not advertise the practitioner’s
availability or ability to perform or or (ii) States why the other practitioner
render legal services for any person (iii) A client-employer who employs believes that the excluded, suspended
having immediate or prospective the other practitioner as a salaried or resigned practitioner has complied
business before the Office. employee; with paragraph (c) of this section.
(5) Not render legal advice or services (2) The other practitioner assumes full
professional responsibility to any client § 11.59 Dissemination of disciplinary and
to any person having immediate or
and the Office for any work performed other information.
prospective business before the Office as
to that business. by the excluded, suspended or resigned (a) The OED Director shall inform the
(6) Promptly take steps to change any practitioner for the other practitioner; public of the disposition of each matter
sign identifying a practitioner’s or the (3) The excluded, suspended or in which public discipline has been
practitioner’s firm’s office and resigned practitioner does not: imposed, and of any other changes in a
practitioner’s or the practitioner’s firm’s (i) Communicate directly in writing, practitioner’s registration status. Public
stationery to delete therefrom any orally, or otherwise with a client of the discipline includes exclusion, as well as
advertisement, statement, or other practitioner in regard to any exclusion on consent; suspension; and
representation which would reasonably immediate or prospective business public reprimand. Unless otherwise
suggest that the practitioner is before the Office; ordered by the USPTO Director, the
authorized to practice law before the (ii) Render any legal advice or any OED Director shall give notice of public
Office. legal services to a client of the other discipline and the reasons for the
(c) An excluded, suspended or practitioner in regard to any immediate discipline to disciplinary enforcement
resigned practitioner, after entry of the or prospective business before the agencies in the State where the
order of exclusion or suspension, or Office; or
practitioner is admitted practice, to
acceptance of resignation, shall not (iii) Meet in person or in the presence
courts where the practitioner is known
accept any new retainer regarding of the other practitioner in regard to any
immediate or prospective business to be admitted, and the public. If public
immediate or prospective business discipline is imposed, the OED Director
before the Office, or engage as a before the Office, with:
(A) Any Office employee in shall cause a final decision of the
practitioner for another in any new case USPTO Director to be published. Final
or legal matter regarding practice before connection with the prosecution of any
patent, trademark, or other case; decisions of the USPTO Director
the Office. The excluded, suspended or include default judgments. See
(B) Any client of the other
resigned practitioner shall be granted § 11.54(a)(2). If a private reprimand is
practitioner, the other practitioner’s law
limited recognition for a period of thirty imposed, the OED Director shall cause
firm, or the client-employer of the other
days. During the thirty-day period of a redacted version of the final decision
practitioner; or
limited recognition, the excluded, (C) Any witness or potential witness to be published.
suspended or resigned practitioner shall whom the other practitioner, the other (b) Records available to the public.
conclude work on behalf of a client on practitioner’s law firm, or the other Unless the USPTO Director orders that
any matters that were pending before practitioner’s client-employer may or the proceeding or a portion of the record
the Office on the date of entry of the intends to call as a witness in any be kept confidential, the OED Director’s
order of exclusion or suspension, or proceeding before the Office. The term records of every disciplinary proceeding
acceptance of resignation. If such work ‘‘witness’’ includes individuals who where a practitioner is reprimanded,
cannot be concluded, the excluded, will testify orally in a proceeding before, suspended, or excluded, including
suspended or resigned practitioner shall or sign an affidavit or any other when said sanction is imposed by
so advise the client so that the client document to be filed in, the Office. default judgment, shall be made
may make other arrangements. (f) When an excluded, suspended or
(d) Required records. An excluded, available to the public upon written
resigned practitioner acts as a paralegal request, except that information may be
suspended or resigned practitioner shall or performs services under paragraph (c)
keep and maintain records of the withheld as necessary to protect the
of this section, the practitioner shall not privacy of third parties. The record of a
various steps taken under this section, thereafter be reinstated to practice
so that in any subsequent proceeding proceeding that results in a
before the Office unless: practitioner’s transfer to disability
proof of compliance with this section (1) The practitioner shall have filed
and with the exclusion or suspension inactive status shall not be available to
with the OED Director an affidavit
order will be available. The OED the public.
which:
Director will require the practitioner to (i) Explains in detail the precise (c) Access to records of exclusion by
submit such proof as a condition nature of all paralegal or other services consent. The order excluding a
precedent to the granting of any petition performed by the excluded, suspended practitioner on consent under § 11.27
for reinstatement. or resigned practitioner, and shall be available to the public.
(e) An excluded, suspended or (ii) Shows by clear and convincing However, the affidavit required under
resigned practitioner who aids another evidence that the excluded, suspended paragraph (a) of § 11.27 shall not be
practitioner in any way in the other or resigned practitioner has complied available to the public or made available
practitioner’s practice of law before the with the provisions of this section and for use in any other proceeding except
Office, may, under the direct all imperative USPTO Rules of by order of the USPTO Director or upon
supervision of the other practitioner, act Professional Conduct; and written consent of the practitioner.
§ 11.60 Petition for reinstatement. complied with the provisions of § 11.58 resigned practitioner, in meeting the
(a) Restrictions on reinstatement. An for at least five continuous years, or that requirements of § 11.7, to take and pass
excluded, suspended or resigned the resigned practitioner has complied an examination under § 11.7(b), ethics
practitioner shall not resume practice of with § 11.58 upon acceptance of the courses, and/or the Multistate
patent, trademark, or other non-patent resignation. Professional Responsibility
law before the Office until reinstated by (d) Petitions for reinstatement— Examination. The OED Director shall
order of the OED Director or the USPTO Action by the OED Director granting provide findings, together with the
Director. reinstatement. (1) If the excluded, record. The findings shall include on
(b) Petition for reinstatement. An suspended or resigned practitioner is
the first page, immediately beneath the
excluded or suspended practitioner found to have complied with paragraphs
caption of the case, a separate section
shall be eligible to apply for (c)(1) through (c)(3) of this section, the
OED Director shall enter an order of entitled ‘‘Prior Proceedings’’ which
reinstatement only upon expiration of
the period of suspension or exclusion reinstatement, which shall be shall state the docket number of the
and the practitioner’s full compliance conditioned on payment of the costs of original disciplinary proceeding in
with § 11.58. An excluded practitioner the disciplinary proceeding to the extent which the exclusion or suspension was
shall be eligible to apply for set forth in paragraphs (2) and (3) below. ordered.
reinstatement no earlier than at least (2) Payment of costs of disciplinary (f) Resubmission of petitions for
five years from the effective date of the proceedings. Prior to reinstatement to reinstatement. If a petition for
exclusion. A resigned practitioner shall practice, the excluded or suspended reinstatement is denied, no further
be eligible to petition for reinstatement practitioner shall pay the costs of the petition for reinstatement may be filed
and must show compliance with § 11.58 disciplinary proceeding. The costs until the expiration of at least one year
no earlier than at least five years from imposed pursuant to this section following the denial unless the order of
the date the practitioner’s resignation is include all of the following:
(i) The actual expense incurred by the denial provides otherwise.
accepted and an order is entered
excluding the practitioner on consent. OED Director or the Office for the (g) Reinstatement proceedings open to
(c) Review of reinstatement petition. original and copies of any reporter’s public. Proceedings on any petition for
An excluded, suspended or resigned transcripts of the disciplinary reinstatement shall be open to the
practitioner shall file a petition for proceeding, and any fee paid for the public. Before reinstating any excluded
reinstatement accompanied by the fee services of the reporter; or suspended practitioner, the OED
required by § 1.21(a)(10) of this (ii) All expenses paid by the OED Director shall publish in the Official
subchapter. The petition for Director or the Office which would Gazette a notice of the excluded or
reinstatement shall be filed with the qualify as taxable costs recoverable in suspended practitioner’s petition for
OED Director. An excluded or civil proceedings; and reinstatement and shall permit the
suspended practitioner who has (iii) The charges determined by the public a reasonable opportunity to
violated any provision of § 11.58 shall OED Director to be ‘‘reasonable costs’’ of
comment or submit evidence with
not be eligible for reinstatement until a investigation, hearing, and review.
respect to the petition for reinstatement.
continuous period of the time in These amounts shall serve to defray the
compliance with § 11.58 that is equal to costs, other than fees for services of § 11.61 Savings clause.
the period of suspension or exclusion attorneys and experts, of the Office of
has elapsed. A resigned practitioner Enrollment and Discipline in the (a) A disciplinary proceeding based
shall not be eligible for reinstatement preparation or hearing of the on conduct engaged in prior to the
until compliance with § 11.58 is shown. disciplinary proceeding, and costs effective date of these regulations may
If the excluded, suspended or resigned incurred in the administrative be instituted subsequent to such
practitioner is not eligible for processing of the disciplinary effective date, if such conduct would
reinstatement, or if the OED Director proceeding. continue to justify suspension or
determines that the petition is (3) An excluded or suspended exclusion under the provisions of this
insufficient or defective on its face, the practitioner may be granted relief, in part.
OED Director may dismiss the petition. whole or in part, only from an order (b) No practitioner shall be subject to
Otherwise the OED Director shall assessing costs under this section or a disciplinary proceeding under this
consider the petition for reinstatement. may be granted an extension of time to
part based on conduct engaged in before
The excluded, suspended or resigned pay these costs, in the discretion of the
the effective date hereof if such conduct
practitioner seeking reinstatement shall OED Director, upon grounds of
hardship, special circumstances, or would not have been subject to
have the burden of proof by clear and disciplinary action before such effective
convincing evidence. Such proof shall other good cause.
(e) Petitions for reinstatement—Action date.
be included in or accompany the
petition, and shall establish: by the OED Director denying (c) Sections 11.24, 11.25, 11.28 and
(1) That the excluded, suspended or reinstatement. If the excluded, 11.34 through 11.57 shall apply to all
resigned practitioner has the good moral suspended or resigned practitioner is proceedings in which the complaint is
character and reputation, competency, found unfit to resume the practice of filed on or after the effective date of
and learning in law required under patent law before the Office, the OED these regulations. Section 11.26 and
§ 11.7 for admission; Director shall first provide the excluded, 11.27 shall apply to matters pending on
(2) That the resumption of practice suspended or resigned practitioner with or after the effective date of these
before the Office will not be detrimental an opportunity to show cause in writing regulations.
to the administration of justice or why the petition should not be denied.

subversive to the public interest; and Failure to comply with § 11.12(c) shall (d) Sections 11.58 through 11.60 shall
(3) That the suspended practitioner constitute unfitness. If unpersuaded by apply to all cases in which an order of
has complied with the provisions of the showing, the OED Director shall suspension or exclusion is entered or
§ 11.58 for the full period of suspension, deny the petition. The OED Director resignation is accepted on or after the
that the excluded practitioner has may require the excluded, suspended or effective date of these regulations.
§ 11.62–11.99 [Reserved]
Dated: February 5, 2007.

Jon W. Dudas,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 07–800 Filed 2–27–07; 8:45 am]
BILLING CODE 3510–16–P

Proposed Rule: Practice and Procedure: Representation of Others Before United States Patent and Trademark Office Changes

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Dated: February 5, 2007.

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