USPTO Law School Clinic Certification Program, 33591-33598 [2016-12498]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 81, Number 103 (Friday, May 27, 2016)]
[Rules and Regulations]
[Pages 33591-33598]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-12498]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 11

[Docket No.: PTO-C-2015-0018]
RIN 0651-AC99


USPTO Law School Clinic Certification Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (``Office'' or 
``USPTO'') is issuing a final rule to comply with a Public Law enacted 
on December 16, 2014. This law requires the USPTO Director to establish 
regulations and procedures for application to, and participation in, 
the USPTO Law School Clinic Certification Program. The program allows 
students enrolled in a participating law school's clinic to practice 
patent and trademark law before the USPTO under the direct supervision 
of an approved faculty clinic supervisor by drafting, filing, and 
prosecuting patent or trademark applications, or both, on a pro bono 
basis for clients who qualify for assistance from the law school's 
clinic.

DATES: This rule is effective on June 27, 2016.

[[Page 33592]]


FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General 
Counsel and Director of the Office of Enrollment and Discipline 
(``OED''), by telephone at 571-272-4097.

SUPPLEMENTARY INFORMATION:

Executive Summary

    Purpose: This final rule implements Public Law 113-227 (Dec. 16, 
2014). The law requires the USPTO Director to establish regulations and 
procedures for application to, and participation in, the USPTO Law 
School Clinic Certification Program. The program allows students 
enrolled in a participating law school's clinic to practice patent and 
trademark law before the USPTO by drafting, filing, and prosecuting 
patent or trademark applications, or both, on a pro bono basis for 
clients who qualify for assistance from the law school's clinic. The 
program provides law students enrolled in a participating clinic the 
opportunity to practice patent and trademark law before the USPTO under 
the direct supervision of an approved faculty clinic supervisor. In 
this way, these student practitioners gain valuable experience 
drafting, filing, and prosecuting patent and trademark applications 
that would otherwise be unavailable to them. The program also 
facilitates the provision of pro bono services to trademark and patent 
applicants who lack the financial resources to pay for legal 
representation.
    Summary of Major Provisions: The USPTO is adding Sec. Sec.  11.16 
and 11.17 to part 11 of title 37 of the Code of Federal Regulations to 
formalize the process by which law schools, law school faculty, and law 
school students may participate in the USPTO Law School Clinic 
Certification Program.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).

Discussion of Specific Rules

    The following is a discussion of the amendments to part 11, title 
37, of the Code of Federal Regulations in this final rule.
    Section 11.1: Section 11.1 is amended to clarify the definition of 
``attorney'' or ``lawyer'' by inserting the word ``active'' before 
``member,'' inserting the phrase ``of the bar'' before the phrase ``of 
the highest court,'' and deleting the clause ``including an individual 
who is in good standing of the highest court of one State and not under 
an order of any court or Federal agency suspending, enjoining, 
restraining, disbarring or otherwise restricting the attorney from 
practice before the bar of another State or Federal agency.''
    This revision clarifies that to be considered an ``attorney'' or 
``lawyer'' one must be an active member, in good standing, of the 
highest court of any State, and otherwise eligible to practice law. 
With such revision the aforementioned clause had become surplusage and 
was struck for that reason. The term ``State'' is elsewhere defined in 
Sec.  11.1 to mean any of the 50 states of the United States of 
America, the District of Columbia, and any Commonwealth or territory of 
the United States of America.
    Section 11.1 is also amended to ensure the term ``practitioner'' 
includes students admitted to the program by insertion of the following 
language: ``(4) An individual authorized to practice before the Office 
under Sec.  11.16(d).''
    The USPTO is amending the term ``practitioner'' to specifically 
include those students authorized to participate in the USPTO Law 
School Clinic Certification Program. The mechanism by which such 
students are authorized to participate is through a grant of limited 
recognition. Once granted limited recognition, students are deemed 
practitioners for the term of the limited recognition and, as such, are 
subject to the USPTO Rules of Professional Conduct. By definition, only 
``practitioners'' may represent others before the Office. Law school 
students who are not participating in the USPTO Law School Clinic 
Certification Program may not practice before the USPTO, unless 
otherwise authorized to do so.
    Section 11.16, previously reserved, is amended to add: Criteria for 
admission to, and continuing participation in, the USPTO Law School 
Clinic Certification Program; the qualifications necessary for approval 
as a Faculty Clinic Supervisor; and the requirements for granting 
limited recognition to law school students. Schools participating in 
the program as of the date the final rule is published will not be 
required to reapply for admission but must apply for renewal at such 
time as the OED Director establishes. These criteria, deadlines for 
admission, and any ancillary requirements, are published in a bulletin 
on OED's law school clinic Web page.
    Section 11.16(a) describes the purpose of the program.
    Section 11.16(b) establishes rules regarding applying for, and 
renewing, admission to the program. Law schools already enrolled in the 
program are not required to submit a new application. Although not 
required to apply for re-admission, participating law schools seeking 
to add a practice area (i.e., patents or trademarks) are required to 
submit an application for such practice area. This section also 
establishes that all law schools are required to submit a renewal 
application on a biennial basis.
    Section 11.16(c) specifies that Faculty Clinic Supervisors are 
subject to the USPTO Rules of Professional Conduct, including those 
governing supervisory practitioners. See e.g., 37 CFR 11.501 and 
11.502. As such, Faculty Clinic Supervisors, as well as the respective 
law school deans, are responsible for ensuring their schools have 
established a process that identifies potential conflicts of interest.
    Generally, the OED Director makes a determination regarding a 
proposed Faculty Clinic Supervisor's eligibility as part of the process 
of considering a law school's application for admission to the program. 
The OED Director may also make a determination whether to approve an 
additional, or a replacement, supervisor for a currently participating 
clinic. In determining whether a Faculty Clinic Supervisor candidate 
possesses the number of years of experience required by paragraphs 
(c)(1)(ii) and (c)(2)(ii), the OED Director will measure the duration 
of experience from the date of the candidate's request for approval. 
Any additional criteria established by the OED Director, as set forth 
in paragraphs (c)(1)(v) and (c)(2)(v), will be published in a bulletin 
on the Office of Enrollment and Discipline's law school clinic Web 
page.
    Each practice area must be led by a fully-qualified, USPTO-
approved, Faculty Clinic Supervisor. A law school's clinic may include 
a patent practice, a trademark practice, or both, provided that they 
are approved by the USPTO. The USPTO does not have a preference whether 
a law school includes both practice areas in one clinic or separates 
each discipline into its own clinic. For law school clinics approved to 
practice in both the patent and trademark practice areas, the USPTO may 
approve one individual to serve as a Faculty Clinic Supervisor for both 
practice areas, provided that the individual satisfies the USPTO's 
criteria to be both a Patent Faculty Clinic Supervisor and a Trademark 
Faculty Clinic Supervisor.
    Section 11.16(d) provides the rules for providing limited 
recognition to students for the purpose of practicing before the USPTO. 
It provides that registered patent agents, and attorneys enrolled in a 
Master of Laws (L.L.M.) program, who wish to participate in a clinic 
must abide by the same rules and procedures as other students in the 
program.
    Section 11.17 establishes rules concerning the continuing 
obligations of

[[Page 33593]]

schools participating in the USPTO Law School Clinic Certification 
Program and specifies those circumstances that may result in 
inactivation or removal of a school from the program.
    Section 11.17(a) restates the requirement in Public Law 113-227 
that services rendered under the program will be provided on a pro bono 
basis.
    Section 11.17(b) establishes procedures for law schools to report 
their program activities to the USPTO.
    Section 11.17(c) establishes procedures for inactivating a law 
school clinic. Inactive law schools are still considered by the USPTO 
to be ``participating'' in the program.
    Section 11.17(d) establishes procedures for removing a law school 
from the program and explains the obligations of student practitioners 
in such event.
    Comments and Responses to Comments: The Office published a notice 
of proposed rulemaking on December 16, 2015, proposing to amend its 
rules to implement Public Law 113-227 by creating rules governing the 
Law School Clinic Certification Program. See USPTO Law School Clinic 
Certification Program, 80 FR 78155 (Dec. 16, 2015). Six members of the 
public submitted comments. Of these commenters, five are currently 
participating law school clinics. These comments are discussed below.
    Comment 1: Five commenters addressed the reporting requirement in 
Sec.  11.17(b). As proposed, that provision would have required 
participating schools to provide OED each quarter with: (1) The number 
of law students participating in each of the patent and trademark 
practice areas of the school's clinic in the preceding quarter; (2) The 
number of faculty participating in each of the patent and trademark 
practice areas of the school's clinic in the preceding quarter; (3) The 
number of consultations provided to persons who requested assistance 
from the law school clinic in the preceding quarter; (4) The number of 
client representations undertaken for each of the patent and trademark 
practice areas of the school's clinic in the preceding quarter; (5) The 
identity and number of applications and responses filed in each of the 
patent and/or trademark practice areas of the school's clinic in the 
preceding quarter; (6) The number of patents issued, or trademarks 
registered, to clients of the clinic in the preceding quarter; and (7) 
any other information specified by the OED Director. Four comments 
recommended that this information be provided annually or semi-
annually. Three commenters pointed out that the Internal Revenue 
Service's clinical program requires only semi-annual reporting. Two 
commenters suggested that Sec.  11.17(b) should not require the 
reporting of information already in the possession of the USPTO. These 
commenters asserted that the number of participating students and 
faculty is already known to OED. The commenters also contended that OED 
can easily use a clinic's customer number(s) to look up patent filings 
as well as registrations. As for trademark applications, the commenters 
contended that these are easily identifiable as the school's TMCP 
tracking code must be included in the application.
    Response: After due consideration of the comment, the Office agrees 
to reduce the reporting requirement to two times per year. The final 
rule incorporates these commenters' suggestions in this regard but 
leaves in place the other items required to be reported. Public Law 
113-227 requires the USPTO to provide the Committees on the Judiciary 
of the House of Representatives and the Senate a report on the program 
that describes the number of law schools and law students participating 
in the program, the work done through the program, the benefits of the 
program, and any recommendations of the USPTO Director for 
modifications to the Program. This reporting requirement is designed to 
allow the USPTO to satisfy the requirements of the law. Each clinic 
director should at all times know the number of participating students 
and faculty, and should be keeping a running tally of the number of 
client visits, the numbers of filings, and the numbers of patents 
issued or trademarks registered. Gathering and reporting the 
information should be of minimal burden.
    The recommendation to eliminate the requirement to report 
participating students is based on an incorrect premise that OED is 
already in possession of such data. Although OED records the names of 
clinic students who have been granted limited recognition, students may 
participate in a clinic without limited recognition. Therefore, OED 
cannot know the total number of participating students without the 
assistance of the law schools.
    Similarly, OED's ability to measure program success would be made 
significantly more difficult if the requirement to report trademark and 
patent filings were eliminated. OED is not resourced to review multiple 
applications for the purpose of discerning those submitted under the 
program. Conversely, each participating clinic prosecutes a relatively 
small number of applications. For 2015, patent clinics filed fewer than 
five applications, on average. Trademark clinics averaged fewer than 14 
applications for the year. The Office notes that the IRS requires a 
significantly greater amount of information in the semi-annual reports 
required of its Low Income Taxpayer Clinic programs. IRS clinics must 
file nearly 20 pages of forms requiring the input of hundreds of data 
fields. See Appendix C, IRS Pub. 3319 (2016). As a final point, the 
feedback the Office has received from the vast majority of the clinics 
is that this reporting requirement is not burdensome. For these 
reasons, the Office does not find that this reporting item is overly 
burdensome.
    Comment 2: Section 11.17(b) would have required law school clinics 
to report the numbers of consultations and representations undertaken 
each quarter. Three commenters recommended defining the terms 
``consultations'' and ``representations.''
    Response: After due consideration of the comment, the Office agrees 
with the recommendations that the term ``consultation'' be clarified, 
and has revised the final rule to eliminate any ambiguities. The final 
rule now eliminates the word ``consultation'' and simply requires 
reporting the ``number of persons to whom the school's clinic provided 
assistance in any given patent or trademark matter but with whom no 
practitioner-client relationship had formed.'' The term 
``representation,'' on the other hand, requires no definition. Within 
the legal field, the term is well-understood as the act of providing 
legal advice to a client, or serving as an attorney for a client in a 
proceeding or transaction. For example, clinics should take credit for 
having undertaken a representation where the clinic has: (1) Issued a 
client an opinion regarding patentability, infringement, or the 
registrability of a trademark; (2) given advice, or taken action, 
regarding a patent or trademark application, or (3) provided any other 
service directly related to practice before the USPTO.
    Comment 3: Four commenters stated that the USPTO should withdraw 
Sec.  11.17(b)(7), the provision granting the OED Director the 
authority to ask for additional information not already specified. One 
commenter also sought to remove or amend Sec. Sec.  11.16(c)(1)(v), 
11.16(c)(2)(v), 11.16(c)(3)(vii), 11.16(d)(2)(ix), and 
11.16(d)(3)(viii), as well. These provisions allow the OED Director to 
establish additional criteria for approving the participation of 
Faculty Clinic Supervisors and law students. The commenters expressed 
concern with the open-ended nature of

[[Page 33594]]

these provisions. Three commenters argued that any additional 
information-reporting requirements could serve as a disincentive to law 
schools from joining the program and could actually cause schools to 
leave the program rather than comply with the reporting requirement.
    Response: After due consideration of the comment, the Office 
declines to adopt the recommendations. In order to effectively monitor 
the program and meet Congressional intent, the OED Director must retain 
flexibility to run the program so as to properly protect the public and 
gauge program impact. Since the inception of the pilot program in 2008, 
the OED Director has had wide latitude in this regard. The Office is 
aware of no law school that was dissuaded from joining the program, or 
withdrew from the program, because the participation requirements were 
set by the OED Director rather than by regulation. OED has always 
sought to minimize administrative burdens on the clinics and will 
endeavor to do so in the future.
    Comment 4: Section 11.16(d)(2)(viii) requires participating 
students to demonstrate they possess the scientific and technical 
qualifications necessary for rendering valuable services to patent 
applicants to obtain limited recognition. One commenter requested that 
this provision be withdrawn. The commenter argued that there is no harm 
to granting a non-qualified student limited recognition to practice 
before the Office in patent matters. The commenter also pointed out 
that it is difficult to find students with such qualifications. The 
commenter posited that by allowing non-qualified students to 
participate, they may become motivated to obtain the requisite 
scientific and technical competencies.
    Response: After due consideration of the comment, the Office 
declines to adopt the recommendation. The Office appreciates the 
difficulties law schools face in trying to find technically qualified 
students for the patent practice area. During the pilot program, OED 
entertained requests to grant limited recognition, on a case-by-case 
basis, to students with a strong technical or scientific background 
where the student needed only a few credit hours to become fully 
qualified. OED will continue this practice. Any such student who is 
granted limited recognition must meet all qualifications and 
requirements before the student may become a registered practitioner. 
Finally, as discussed above in the response to Comment 1, students 
without technical or scientific backgrounds may participate in patent 
clinics. They cannot, however, receive limited recognition, actually 
file papers with the Office, or be of record in a patent application.
    Comment 5: One commenter suggested OED should consider whether 
Faculty Clinic Supervisors are attorneys when evaluating their fitness. 
The comment appears to argue that patent agents are not qualified to 
serve as patent Faculty Clinic Supervisors on account of the fact that 
they are not necessarily trained in areas of the law that overlap with 
patent prosecution, such as licensing and corporate organization.
    Response: Patent agents are eligible to serve as Faculty Clinic 
Supervisors provided they meet the criteria set forth in the final 
rule. With regard to practice in patent prosecution matters before the 
Office, patent agents and patent attorneys stand on an equal footing. 
To the extent this comment is proposing to exclude patent agents from 
service as Faculty Clinic Supervisors, the Office declines to 
incorporate such revisions in the final rule. Patent agents are fully 
capable of advising clients on patent matters before the Office and 
imparting relevant knowledge to their students. See generally Sperry v. 
Florida, 373 U.S. 379 (1963); see also In re Queen's Univ. at Kingston, 
No. 2015-145 at 14 (Fed. Cir. Mar. 7, 2016) (``patent agents are not 
simply engaging in law-like activity, they are engaging in the practice 
of law itself''). The USPTO's interest lies in ensuring that Faculty 
Clinic Supervisors are qualified to practice in patent matters before 
the Office. To the extent a law school should seek to supplement the 
instruction given to its students in other areas of the law, it is free 
to so act.
    Comment 6: One commenter urges the rule to make permanent the 
``Request to Make Special Program.'' This program allows patent clinics 
to submit a predetermined number of requests to make special per 
semester.
    Response: After due consideration of the comment, the Office 
declines to revise the rule accordingly. Such a revision would be 
outside the scope of this rulemaking, which is designed to establish 
the framework for administering the program. This rulemaking is not 
designed to regulate the manner in which individual patents are to be 
prosecuted.
    Comment 7: One commenter urges the rule to include a provision to 
grant law school clinics the full six months allowed by 35 U.S.C. 133 
to respond to an Office action.
    Response: After due consideration of the comment, the Office 
declines to revise the rule accordingly. Such a revision would be 
outside the scope of this rulemaking, which is designed to establish 
the framework for administering the program. The rulemaking is not 
designed to regulate the manner in which individual patents are to be 
prosecuted.
    Comment 8: One commenter urged revision of Sec.  11.16(c)(1)(iv), 
(c)(2)(iv), and (c)(3). These provisions keep in place the requirement 
established in the pilot program that Faculty Clinic Supervisors bear 
full responsibility for the legal services provided by their clinics. 
The commenter suggested that Faculty Clinic Supervisors should only 
bear ``supervisory responsibility'' for the legal services provided.
    Response: After due consideration of the comment, the Office 
declines to revise the rule to include this provision. During the 
course of prosecution of a patent application, students assisting in 
the prosecution will enter and depart the program. During the summer 
months and semester breaks, there may be no students participating in a 
particular clinic. Only a Faculty Clinic Supervisor has the permanence 
to be able to properly prosecute an application. Moreover, only a 
Faculty Clinic Supervisor is a registered patent practitioner. The 
Office also notes that the fully responsible standard has been in place 
since the inception of the pilot program.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes in this final 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 
1204 (2015) (interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers'') 
(citation and internal quotation marks omitted); Nat'l Org. of 
Veterans'Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 
(Fed. Cir. 2001) (rule that clarifies interpretation of a statute is 
interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. 
Cir. 2001) (rules governing an application process are procedural under 
the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims). The Office received no public comment on this 
section or any of the other sections under Rulemaking Considerations.
    Accordingly, prior notice and opportunity for public comment for 
the changes in this final rulemaking are not required pursuant to 5 
U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 
(notice-and-comment

[[Page 33595]]

procedures are required neither when an agency ``issue[s] an initial 
interpretive rule'' nor ``when it amends or repeals that interpretive 
rule''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 
2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does 
not require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice,'' (quoting 5 U.S.C. 553(b)(A)). The Office, 
however, published proposed changes for comment as it sought the 
benefit of the public's views on the Office's proposed rule.
    B. Regulatory Flexibility Act: The Deputy General Counsel, United 
States Patent and Trademark Office, has certified to the Chief Counsel 
for Advocacy, Small Business Administration, that the changes in this 
final rule will not have a significant economic impact on a substantial 
number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). 
The USPTO Law School Clinic Certification Program is voluntary. Law 
schools, clinics, and clients may elect whether to participate in the 
program, and receive the benefits thereof. The primary effect of this 
rulemaking is not economic, but simply to formalize the requirements 
and procedures developed and implemented during the pilot phase of the 
program. The rulemaking implements certain basic semi-annual reporting 
requirements by participating law school clinics in order to provide 
information to the Office pertaining to the quality and use of their 
pro bono services. The information required for the report should be 
readily available to participating law school clinics and presents a 
minimal administrative burden. Additionally, the Office currently has 
47 participating law school clinics, and it is expected that this 
number may increase slightly. Accordingly, this reporting requirement 
and the rulemaking will not have a significant economic impact on a 
substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (September 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132: This rulemaking does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (August 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the U.S. 
Senate, the U.S. House of Representatives, and the Comptroller General 
of the Government Accountability Office. The changes in this final rule 
are not expected to result in an annual effect on the economy of 100 
million dollars or more, a major increase in costs or prices, or 
significant adverse effects on competition, employment, investment, 
productivity, innovation, or the ability of United States-based 
enterprises to compete with foreign-based enterprises in domestic and 
export markets. Therefore, this document is not expected to result in a 
``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes in this final 
rule do not involve a Federal intergovernmental mandate that will 
result in the expenditure by State, local, and tribal governments, in 
the aggregate, of 100 million dollars (as adjusted) or more in any one 
year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
New information will be collected in the Law School Clinic 
Certification Program, OMB

[[Page 33596]]

Control No. 0651-0081. Information about the collection is available at 
the OMB's Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
    The following item was formerly in a different OMB-approved 
collection (0651-0012 Admission to Practice): Application by Student to 
Become a Participant in the Program (PTO-158LS). This form has now been 
transferred to the Law School Clinic Certification Program (0651-0081). 
This transfer has consolidated all information collections relating to 
law student involvement in the Law School Clinic Certification Program 
into a single collection.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to a penalty, for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

    For the reasons stated in the preamble, 37 CFR part 11 is amended 
as follows:

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
1. The authority citation for part 11 is revised to read as follows:

    Authority:  5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 
41; Sec. 1, Pub. L. 113-227, 128 Stat. 2114.


0
2. In Sec.  11.1, the definitions of ``Attorney or lawyer'' and 
``Practitioner'' are revised to read as follows:


Sec.  11.1  Definitions.

* * * * *
    Attorney or lawyer means an individual who is an active member in 
good standing of the bar of the highest court of any State. A non-
lawyer means a person who is not an attorney or lawyer.
* * * * *
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office 
in patent matters;
    (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as 
provided by Sec.  11.14(a), (b), and (c), to practice before the Office 
in trademark matters or other non-patent matters;
    (3) An individual authorized to practice before the Office in a 
patent case or matters under Sec.  11.9(a) or (b); or
    (4) An individual authorized to practice before the Office under 
Sec.  11.16(d).
* * * * *

0
3. Add Sec.  11.16 to read as follows:


Sec.  11.16  Requirements for admission to the USPTO Law School Clinic 
Certification Program.

    (a) The USPTO Law School Clinic Certification Program allows 
students enrolled in a participating law school's clinic to practice 
before the Office in patent or trademark matters by drafting, filing, 
and prosecuting patent or trademark applications on a pro bono basis 
for clients that qualify for assistance from the law school's clinic. 
All law schools accredited by the American Bar Association are eligible 
for participation in the program, and shall be examined for acceptance 
using identical criteria.
    (b) Application for admission and renewal--(1) Application for 
admission. Non-participating law schools seeking admission to the USPTO 
Law School Clinic Certification Program, and participating law schools 
seeking to add a practice area, shall submit an application for 
admission for such practice area to OED in accordance with criteria and 
time periods set forth by the OED Director.
    (2) Renewal application. Each participating law school desiring to 
continue in the USPTO Law School Clinic Certification Program shall, 
biennially from a date assigned to the law school by the OED Director, 
submit a renewal application to OED in accordance with criteria set 
forth by the OED Director.
    (3) The OED Director may refuse admission or renewal of a law 
school to the USPTO Law School Clinic Certification Program if the OED 
Director determines that admission, or renewal, of the law school would 
fail to provide significant benefit to the public or the law students 
participating in the law school's clinic.
    (c) Faculty Clinic Supervisor. Any law school seeking admission to 
or participating in the USPTO Law School Clinic Certification Program 
must have at least one Faculty Clinic Supervisor for the patent 
practice area, if the clinic includes patent practice; and at least one 
Faculty Clinic Supervisor for the trademark practice area, if the 
clinic includes trademark practice.
    (1) Patent Faculty Clinic Supervisor. A Faculty Clinic Supervisor 
for a law school clinic's patent practice must:
    (i) Be a registered patent practitioner in active status and good 
standing with OED;
    (ii) Demonstrate at least 3 years experience in prosecuting patent 
applications before the Office within the 5 years immediately prior to 
the request for approval as a Faculty Clinic Supervisor;
    (iii) Assume full responsibility for the instruction and guidance 
of law students participating in the law school clinic's patent 
practice;
    (iv) Assume full responsibility for all patent applications and 
legal services, including filings with the Office, produced by the 
clinic; and
    (v) Comply with all additional criteria established by the OED 
Director.
    (2) Trademark Faculty Clinic Supervisor. A Faculty Clinic 
Supervisor for a law school clinic's trademark practice must:
    (i) Be an attorney as defined in Sec.  11.1;
    (ii) Demonstrate at least 3 years experience in prosecuting 
trademark applications before the Office within the 5 years immediately 
prior to the date of the request for approval as a Faculty Clinic 
Supervisor;
    (iii) Assume full responsibility for the instruction, guidance, and 
supervision of law students participating in the law school clinic's 
trademark practice;
    (iv) Assume full responsibility for all trademark applications and 
legal services, including filings with the Office, produced by the 
clinic; and
    (v) Comply with all additional criteria established by the OED 
Director.
    (3) A Faculty Clinic Supervisor under paragraph (c) of this section 
must submit a statement:
    (i) Assuming responsibility for performing conflicts checks for 
each law student and client in the relevant clinic practice area;
    (ii) Assuming responsibility for student instruction and work, 
including instructing, mentoring, overseeing, and supervising all 
participating law school students in the clinic's relevant practice 
area;
    (iii) Assuming responsibility for content and timeliness of all 
applications and documents submitted to the Office through the relevant 
practice area of the clinic;
    (iv) Assuming responsibility for all communications by clinic 
students to clinic clients in the relevant clinic practice area;
    (v) Assuming responsibility for ensuring that there is no gap in 
representation of clinic clients in the relevant practice area during 
student turnover, school schedule variations, inter-semester 
transitions, or other disruptions;

[[Page 33597]]

    (vi) Attesting to meeting the criteria of paragraph (c)(1) or (2) 
of this section based on relevant practice area of the clinic; and
    (vii) Attesting to all other criteria as established by the OED 
Director.
    (d) Limited recognition for law students participating in the USPTO 
Law School Clinic Certification Program. (1) The OED Director may grant 
limited recognition to practice before the Office in patent or 
trademark matters, or both, to law school students enrolled in a clinic 
of a law school that is participating in the USPTO Law School Clinic 
Certification Program upon submission and approval of an application by 
a law student to OED in accordance with criteria established by the OED 
Director.
    (2) In order to be granted limited recognition to practice before 
the Office in patent matters under the USPTO Law School Clinic 
Certification Program, a law student must:
    (i) Be enrolled in a law school that is an active participant in 
the USPTO Law School Clinic Certification Program;
    (ii) Be enrolled in the patent practice area of a clinic of the 
participating law school;
    (iii) Have successfully completed at least one year of law school 
or the equivalent;
    (iv) Have read the USPTO Rules of Professional Conduct and the 
relevant rules of practice and procedure for patent matters;
    (v) Be supervised by an approved Faculty Clinic Supervisor pursuant 
to paragraph (c)(1) of this section;
    (vi) Be certified by the dean of the participating law school, or 
one authorized to act for the dean, as: Having completed the first year 
of law school or the equivalent, being in compliance with the law 
school's ethics code, and being of good moral character and reputation;
    (vii) Neither ask for nor receive any fee or compensation of any 
kind for legal services from a clinic client on whose behalf service is 
rendered;
    (viii) Have proved to the satisfaction of the OED Director that he 
or she possesses the scientific and technical qualifications necessary 
for him or her to render patent applicants valuable service; and
    (ix) Comply with all additional criteria established by the OED 
Director.
    (3) In order to be granted limited recognition to practice before 
the Office in trademark matters under the USPTO Law School Clinic 
Certification Program, a law student must:
    (i) Be enrolled in a law school that is an active participant in 
the USPTO Law School Clinic Certification Program;
    (ii) Be enrolled in the trademark practice area of a clinic of the 
participating law school;
    (iii) Have successfully completed at least one year of law school 
or the equivalent;
    (iv) Have read the USPTO Rules of Professional Conduct and the 
relevant USPTO rules of practice and procedure for trademark matters;
    (v) Be supervised by an approved Faculty Clinic Supervisor pursuant 
to paragraph (c)(2) of this section;
    (vi) Be certified by the dean of the participating law school, or 
one authorized to act for the dean, as: Having completed the first year 
of law school or the equivalent, being in compliance with the law 
school's ethics code, and being of good moral character and reputation;
    (vii) Neither ask for nor receive any fee or compensation of any 
kind for legal services from a clinic client on whose behalf service is 
rendered; and
    (viii) Comply with all additional criteria established by the OED 
Director.
    (4) Students registered to practice before the Office in patent 
matters as a patent agent, or authorized to practice before the Office 
in trademark matters under Sec.  11.14, must complete and submit a 
student application pursuant to paragraph (d)(1) of this section and 
meet the criteria of paragraph (d)(2) or (3) of this section, as 
applicable, in order to participate in the program.

0
4. Add Sec.  11.17 to read as follows:


Sec.  11.17  Requirements for participation in the USPTO Law School 
Clinic Certification Program.

    (a) Each law school participating in the USPTO Law School Clinic 
Certification Program must provide its patent and/or trademark services 
on a pro bono basis.
    (b) Each law school participating in the USPTO Law School Clinic 
Certification Program shall, on a semi-annual basis, provide OED with a 
report regarding its clinic activity during the reporting period, which 
shall include:
    (1) The number of law students participating in each of the patent 
and trademark practice areas of the school's clinic;
    (2) The number of faculty participating in each of the patent and 
trademark practice areas of the school's clinic;
    (3) The number of persons to whom the school's clinic provided 
assistance in any given patent or trademark matter but with whom no 
practitioner-client relationship had formed;
    (4) The number of client representations undertaken for each of the 
patent and trademark practice areas of the school's clinic;
    (5) The identity and number of applications and responses filed in 
each of the patent and/or trademark practice areas of the school's 
clinic;
    (6) The number of patents issued, or trademarks registered, to 
clients of the clinic; and
    (7) All other information specified by the OED Director.
    (c) Inactivation of law schools participating in the USPTO Law 
School Certification Program. (1) The OED Director may inactivate a 
patent and/or trademark practice area of a participating law school:
    (i) If the participating law school does not have an approved 
Faculty Clinic Supervisor for the relevant practice area, as described 
in Sec.  11.16(c);
    (ii) If the participating law school does not meet each of the 
requirements and criteria for participation in the USPTO Law School 
Clinic Certification Program as set forth in Sec.  11.16, this section, 
or as otherwise established by the OED Director; or
    (iii) For other good cause as determined by the OED Director.
    (2) In the event that a practice area of a participating school is 
inactivated, the participating law school students must:
    (i) Immediately cease all student practice before the Office in the 
relevant practice area and notify each client of such; and
    (ii) Disassociate themselves from all client matters relating to 
practice before the Office in the relevant practice area, including 
complying with Office and State rules for withdrawal from 
representation.
    (3) A patent or trademark practice area of a law school clinic that 
has been inactivated may be restored to active status, upon application 
to and approval by the OED Director.
    (d) Removal of law schools participating in the USPTO Law School 
Clinic Certification Program. (1) The OED Director may remove a patent 
and/or trademark practice area of the clinic of a law school 
participating in the USPTO Law School Clinic Certification Program:
    (i) Upon request from the law school;
    (ii) If the participating law school does not meet each of the 
requirements and criteria for participation in the USPTO Law School 
Clinic Certification Program as set forth in Sec.  11.16, this section, 
or as otherwise established by the OED Director; or
    (iii) For other good cause as determined by the OED Director.
    (2) In the event that a practice area of a participating school is 
removed by the OED Director, the participating law school students 
must:
    (i) Immediately cease all student practice before the Office in the 
relevant

[[Page 33598]]

practice area and notify each client of such; and
    (ii) Disassociate themselves from all client matters relating to 
practice before the Office in the relevant practice area, including 
complying with Office and State rules for withdrawal from 
representation.
    (3) A school that has been removed from participation in the USPTO 
Law School Clinic Certification Program under this section may reapply 
to the program in compliance with Sec.  11.16.

    Dated: May 23, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-12498 Filed 5-26-16; 8:45 am]
BILLING CODE P