Changes to Representation of Others Before the United States Patent and Trademark Office, 9196-9220 [07-800]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 72, Number 39 (Wednesday, February 28, 2007)]
[Proposed Rules]
[Pages 9196-9220]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 07-800]



[[Page 9195]]

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Part III





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 11



Changes to Representation of Others Before the United States Patent and



Trademark Office; Proposed Rule

Federal Register / Vol. 72, No. 39 / Wednesday, February 28, 2007 / 
Proposed Rules

[[Page 9196]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 11

[Docket No.: PTO-C-2005-0013]
RIN 0651-AB55


Changes to Representation of Others Before the United States 
Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Supplemental Notice of Proposed Rule Making.

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SUMMARY: In December 2003, the United States Patent and Trademark 
Office (Office) proposed amendments to, inter alia, the rules governing 
disciplinary proceedings for attorneys and agents who practice before 
the Office, principally rules 11.2, 11.3, 11.5, and 11.14 through 
11.62. One hundred fifty-seven written comments were received. After 
reviewing the written comments, the Office has decided to revise 
several of the rules as then proposed and request additional comments 
on those revised proposals. Other proposed rules contained in the 
earlier Notice of Proposed Rule making remain under consideration by 
the Office. This supplemental notice of proposed rule making sets forth 
revisions that the Office is proposing to the rules governing the 
conduct of investigations and disciplinary proceedings. Interested 
individuals are invited to comment on the proposed revisions in the 
rules.

DATES: To be ensured of consideration, written comments must be 
received on or before May 29, 2007.

ADDRESSES: The Office seeks comments regarding the proposed revisions 
set forth in the proposed rules. Comments should be sent by electronic 
mail message over the Internet addressed to: 
ethicsrules.comments@uspto.gov. Comments may also be submitted by mail 
addressed to: Mail Stop OED-Ethics Rules, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 or by 
facsimile to (571) 273-4097, marked to the attention of Harry I. Moatz. 
Although comments may be submitted by mail or facsimile, the Office 
prefers to receive comments via the Internet.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of Enrollment and Discipline, located in Madison East, Eighth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Office Internet Web site (address: https://www.uspto.gov). Because 
comments will be made available for public inspection, information that 
is not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Harry I. Moatz (571) 272-6069), 
Director of Enrollment and Discipline (OED Director), directly by 
phone, by facsimile to (571) 273-6069 marked to the attention of Mr. 
Moatz, or by mail addressed to: Mail Stop OED-Ethics Rules, U.S. Patent 
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

SUPPLEMENTARY INFORMATION: On December 12, 2003, the Office published a 
proposed rule in the Federal Register (68 FR 69441) amending parts 1 
and 2 of the rules and procedures governing patent and trademark 
prosecution (Title 37 of the Code of Federal Regulations), reserving 
part 10 and introducing part 11. Included in the proposed rules for 
part 11 were rules governing the conduct of investigations and 
disciplinary proceedings. Many of the proposed investigation and 
disciplinary procedural rules were in many ways similar to the approach 
of the current regulations. Other proposed rules were intended to 
introduce new disciplinary procedures for practitioners who have been 
suspended or disbarred in other disciplinary jurisdictions for ethical 
or professional misconduct, practitioners convicted of serious crimes, 
and practitioners having disability issues.
    The December 12, 2003 Notice also proposed changes to the ethics 
rules governing the conduct of recognized patent practitioners and 
others practicing before the Office as well as rules governing 
enrollment of recognized practitioners. The provisions on enrollment 
were adopted in final rules on July 26, 2004, 69 FR 35428. Comments on 
proposed changes to the substantive ethics rules remain under 
consideration by the Office. The current notice does not address those 
proposed rules.
    In addition, several proposed rules referenced are directly or 
indirectly dependent on the development of electronic systems to 
implement rules governing annual dues, Sec.  11.8, and continuing legal 
education. For example, Sec. Sec.  11.8(d), 11.12, and 11.13 are 
directly dependent on development of the systems, whereas Sec.  
11.11(b) is indirectly dependent on the development. Further 
consideration of rules dependent on implementing electronic systems 
awaits completion of the development and implementation of the systems. 
Accordingly, the revised rules proposed below do not refer to rules 
that depend on implementing electronic systems, and no comments are 
invited regarding the omitted referrals.
    A detailed analysis is not included herein of the differences 
between the rules proposed in December 2003 (proposed rules) and the 
revised rules currently proposed (revised proposed sections). A 
comparison of the proposed rules and the revised proposed sections is 
being made available on the Internet at https://www.uspto.gov/web/
offices/dcom/olia/oed/comparison_ab55.pdf.
    Comments are sought regarding the revised proposed sections that 
introduce significant procedural or substantive changes. The following 
revised proposed sections are believed to be those introducing such 
changes: 11.2, 11.5, 11.18 through 11.22, 11.24 through 11.26, 11.28, 
11.44, 11.45, and 11.52. This supplemental notice includes other 
revised proposed sections (sections 11.1 (definition of State), 11.3, 
11.14, 11.15, 11.23, 11.27, 11.29, 11.33 through 11.36, 11.38 through 
11.41, 11.43, 11.50, 11.51, and 11.54 through 11.61) that are not 
believed to contain significant procedural or substantive changes from 
the December 12, 2003 notice; proposed rules that have not been revised 
(11.29 through 11.31, 11.37, 11.42, 11.46 through 11.49, 11.53, and 
11.63 through 11.99); and two proposed rules that, as revised, have 
been reserved (11.16 and 11.62). The latter three groups of rules have 
been included to provide both context and perspective for the revised 
proposed sections that contain significant changes. The table below is 
included to assist readers in correlating the revised proposed sections 
with the present rules. While it is believed that further comments are 
unnecessary regarding rules that have not been revised at all or whose 
revisions are not significantly changed in procedure or substance, 
comments may nevertheless be submitted.

   Table--Concordance of Sections 11.14 Through 11.99 With Part 10 and
                             Current Part 11
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                Section                  Part 10 and Part 11 concordance
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11.1...................................  New definition of State.

[[Page 9197]]

 
11.2...................................  37 CFR 11.2(a), (b)(4), (c) and
                                          (d) changes in language;
                                          Subsections 11.2(b)(5), (b)(6)
                                          and (e) are new.
11.3...................................  37 CFR 10.170, changes in
                                          language.
11.5...................................  37 CFR 10.5, Subsection (b) is
                                          new.
11.14..................................  37 CFR 10.14, changes in
                                          language; Subsection 11.14(f)
                                          is new.
11.15..................................  37 CFR 10.15.
11.16-11.17 [Reserved]                   37 CFR 10.16-10.17.
11.18..................................  37 CFR 10.18, changes in
                                          language.
11.19..................................  37 CFR 10.1 and 10.130(b),
                                          changes in language;
                                          Subsections 11.19(b) and (d)
                                          are new.
11.20..................................  New.
11.21..................................  New.
11.22..................................  New.
11.23..................................  37 CFR 10.4, changes in
                                          language.
11.24..................................  New.
11.25..................................  New.
11.26..................................  37 CFR 10.133(g), changes in
                                          language.
11.27..................................  37 CFR 10.133(b) through (g),
                                          changes in language.
11.28..................................  New.
11.29-11.31 [Reserved]                   New.
11.32..................................  37 CFR 10.132, changes in
                                          language.
11.33 [Reserved]                         New.
11.34..................................  37 CFR 10.134, changes in
                                          language; Subsection 11.134(c)
                                          is new.
11.35..................................  37 CFR 10.135, changes in
                                          language; Subsection
                                          11.135(a)(4) is new.
11.36..................................  37 CFR 10.136, changes in
                                          language; Subsection 11.36(e)
                                          is new.
11.37 [Reserved]                         New.
11.38..................................  37 CFR 10.138, changes in
                                          language.
11.39..................................  37 CFR 10.139, changes in
                                          language; Subsections 11.39(b)
                                          and (g) are new.
11.40..................................  37 CFR 10.140, changes in
                                          language.
11.41..................................  37 CFR 10.141, changes in
                                          language.
11.42..................................  37 CFR 10.142.
11.43..................................  37 CFR 10.143, changes in
                                          language.
11.44..................................  37 CFR 10.144, changes in
                                          language.
11.45..................................  37 CFR 10.145, changes in
                                          language and new.
11.4611.48 [Reserved]                    37 CFR 10.146-10.148.
11.49..................................  37 CFR 10.149.
11.50..................................  37 CFR 10.150, changes in
                                          language.
11.51..................................  37 CFR 10.151, changes in
                                          language.
11.52..................................  37 CFR 10.152, changes in
                                          language.
11.53..................................  37 CFR 10.153.
11.54..................................  37 CFR 10.154, changes in
                                          language.
11.55..................................  37 CFR 10.155, changes in
                                          language; Subsections
                                          11.155(b) through (g) are new.
11.56..................................  37 CFR 10.156, changes in
                                          language.
11.57..................................  37 CFR 10.157, changes in
                                          language.
11.58..................................  37 CFR 10.158, changes in
                                          language, Subsection 11.158(d)
                                          is new.
11.59..................................  37 CFR 10.159, changes in
                                          language, Subsection 11.159(c)
                                          is new.
11.60..................................  37 CFR 10.160, changes in
                                          language, Subsections
                                          11.160(d) through (f) are new.
11.61..................................  37 CFR 10.61, changes in
                                          language; Subsections
                                          11.161(c) and (d) are new.
11.62-11.99 [Reserved]                   New.
------------------------------------------------------------------------

    Comments regarding proposed rules 11.100 through 11.900 remain 
under consideration. The Office expects to publish a separate 
supplemental notice of proposed rule making containing proposed 
revisions to 11.100 through 11.900 and request comments.
    In response to the proposed rule making published December 12, 
2003, the Office received one hundred fifty-seven communications with 
comments, including comments from seventeen organizations, thirteen law 
firms, seven businesses, one hundred fifteen individuals, and four 
anonymous sources.
    This notice will address only comments concerning the procedural 
aspects of the earlier proposed rules. It will not address questions 
concerning the scope or substance of the Office's practitioner ethics 
program, which it is expected will be the subject of a separate notice. 
The Office has given full consideration to each and every public 
comment submitted during the comment period. The Office has revised 
proposed sections contained herein to retain and clarify, inter alia, 
the OED Director's authority and responsibility for investigations and 
prosecuting disciplinary matters. The revised proposed sections clarify 
(1) procedures whereby the OED Director may conduct investigations, (2) 
consequences for violating Sec.  11.18(b)(2), (3) the disciplinary 
jurisdiction of the Office, (4) procedures for reciprocal discipline of 
practitioners who have been suspended or disbarred for ethical or 
professional misconduct in other jurisdictions, (5) procedures for 
disciplining practitioners convicted of a serious crime, and (6) 
procedures for practitioners to raise their own disability issues.
    The revised proposed sections eliminate or introduce substantive 
and procedural changes to the proposed rules. Many revisions were not 
suggested by the comments. Accordingly, this notice will not address 
each comment. Instead, the chief comments pertaining to the revisions 
are addressed herein.
    Congress has granted express authority to the Office to ``establish 
regulations, not inconsistent with law, which * * * may govern the 
recognition and conduct of agents, attorneys, or other persons 
representing applicants or other parties before the Office.'' 35 U.S.C. 
2(b)(2)(D). Congress also provided that the ``Director may, after 
notice and opportunity for a hearing, suspend or exclude, either 
generally or in any particular case, from further practice before the 
Patent and Trademark Office, * * * any * * * agent, or attorney shown 
to be incompetent or disreputable, or guilty of gross misconduct, or 
who does not comply with the regulations established under section 
2(b)(2)(D) of this title, or who shall, by word, circular, letter, or 
advertising, with intent to defraud in any manner, deceive, mislead, or 
threaten any applicant or prospective applicant, or other person having 
immediate or prospective business before the Office. The reasons for 
any such suspension or exclusion shall be duly recorded.'' 35 U.S.C. 
32. In so doing, Congress vested express and implied authority with the 
Office to prescribe rules of procedure that are applicable to 
practitioners recognized to practice before the Office.
    The primary purposes for adopting procedures for disciplining 
practitioners who fail to conform to adopted standards include 
affording practitioners due process, protecting the public, preserving 
the integrity of the Office, and maintaining high professional 
standards.

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Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 11, is proposed 
to be amended as follows:
    Section 11.1: The definition of state would be revised to clarify 
that state includes Commonwealths and territories of the United States, 
as well as the fifty states and the District of Columbia. Thus, the 
``court of * * * any state'' in Sec.  11.25(a) would include any courts 
of the fifty states, the District of Columbia, and Commonwealths and 
territories of the United States.
    Section 11.2: Section 11.2 provides for the appointment and duties 
of the Director of Enrollment and Discipline (OED Director), as well as 
petitions for review of decisions of the OED Director. The duties have 
been revised to clarify that investigations are conducted in matters 
involving possible grounds for discipline, as opposed to specifying 
particular violations that would be subject to investigation. The 
duties are further revised to require the OED Director to provide 
practitioners with an opportunity to respond to a reasonable inquiry by 
the OED Director. The OED Director will make reasonable requests for 
information and documents to efficiently and effectively ascertain 
whether grounds for discipline exist.
    The revised proposed section also separates petitions to review the 
OED Director's decisions in disciplinary matters from petitions in 
enrollment matters. Subsections 11.2(c) and (d) would be limited to 
petitions regarding enrollment and recognition. The Office is proposing 
a specific procedure for petitioning to invoke the supervisory 
authority of the USPTO Director in disciplinary matters in subsection 
(e). The procedure in subsection (e) is comparable to the supervisory 
review procedure in Sec.  1.181 and assures supervisory review when 
appropriate.
    Section 11.3: Section 11.3, which provides for suspension of rules, 
has been revised to eliminate a prohibition in proposed rule 11.3(b) 
against petitioning to waive a disciplinary rule. However, elimination 
of the prohibition should not be construed as an indication that there 
could be any extraordinary situation when justice requires waiver of a 
disciplinary rule. The revised proposed section also eliminates the 
provisions in proposed rule 11.3(d) for qualified privilege for 
complaints submitted to the OED Director or any other official of the 
Office and for immunity for Office employees from disciplinary 
complaint under Part 11 for any conduct in the course of their official 
duties.
    Section 11.5: The provisions of the sole paragraph of Sec.  11.5 
adopted in the final rules on July 26, 2004, would be renumbered as 
Sec.  11.5(a). Revised subsection 11.5(b) defines practice before the 
Office. Commentators urged that Congressional approval is needed to 
define practice before the Office. Authority to govern conduct 
implicitly includes authorization to recognize activities constituting 
practice before the Office. The Internal Revenue Service (IRS), citing 
as authority the provisions in, inter alia, 31 U.S.C. 330, defined 
practice before that agency. The language of Sec.  330(b) and 35 U.S.C. 
32 are comparable. Section 330(b) provides ``[a]fter notice and 
opportunity for a proceeding, the Secretary may suspend or disbar from 
practice before the Department a representative who--(1) is 
incompetent; (2) is disreputable; (3) violates regulations prescribed 
under this section; or (4) with intent to defraud, willfully and 
knowingly misleads or threatens the person being represented or a 
prospective person to be represented.'' The relevant language of Sec.  
32 is quoted above. Congressional approval to define practice is 
implicit in these comparable provisions. Accordingly, it is appropriate 
that the Office define practice before the Office. Revised proposed 
Sec.  11.5(b) covers all areas of law practiced before the Office. This 
definition tracks the definition of ``practice'' adopted by the IRS. 
See 26 CFR 601.501(b)(10) and 31 CFR 10.2(d). The definition addresses 
law-related services that comprehend all matters presented to the 
Office relating to a client's rights, privileges, duties and 
responsibilities under the laws and regulations administered by the 
Office.
    Commentators also expressed concern as to whether practice before 
the Office was defined too broadly by including participation in 
drafting applications and including activities ``incident to the 
preparation and prosecution of patent applications before the Patent 
Office.'' The Office does not seek to expand its jurisdiction. 
Accordingly, ``participation'' in drafting applications and activities 
``incident to the preparation and prosecution of patent applications 
before the Patent Office'' are no longer included in the definition. 
However, the Office has authority to inform registered practitioners 
whether activities are covered by their registration to practice before 
the Office. For example, drafting patent applications would continue to 
be practice before the Office. The revised proposed sections indicate 
that a registered practitioner must be able to provide clients with 
advice about relying upon alternative forms of protection that may be 
available under State law. The revised proposed section indicates that 
registered practitioners may use nonpractitioners to conduct many of 
the activities associated with practice before the Office, such as 
drafting patent applications, provided they work under the supervision 
of the registered practitioner. The rule permits the more than 30,000 
registered patent practitioners to employ non-practitioners to assist 
practitioners in providing cost-efficient services to clients. It also 
permits every attorney practicing before the Office in trademark cases 
to provide cost-efficient services. Thus, practitioners may provide 
their legal services at lower fees, a result favored by the Office and 
practitioners. The revised proposed section also recognizes that 
attorneys representing persons in enrollment and disciplinary matters 
are engaged in practice before the Office.
    But for limited situations noted below, a registered patent agent 
is not authorized by his or her registration to practice before the 
Office to draw up a contract or to select contract forms for a client 
relating to a patent, such as an assignment or a license, if the state 
in which the agent resides or practices considers drafting contracts 
the practice of law. Assignments and licenses are the creation of 
state, not federal, statutory law. Although 35 U.S.C. 152, 202, 204 and 
261 refer to assignment or licensure of patents or patent rights, 
assignments and licenses are forms of contracts, which are creatures of 
state, not federal law. Contracts are enforceable under state law. The 
authority to prepare contracts and provide advice regarding the terms 
to include in contracts is subject to the state law regarding who is 
authorized to practice law. In contrast, submission for recordation of 
assignments and licenses is a ministerial act that does not require 
legal training. It has been the long-standing position of the Office 
that a registered patent agent may prepare a patent assignment or 
license if not prohibited by state law, and an agent may submit the 
assignment or license for recordation.
    The Office solicits comment on whether it should explicitly provide 
for circumstances in which a patent agent's causing an assignment to be 
executed might be appropriate incidental to preparing and filing an 
application. For example, execution of a standard assignment document 
may be incidental to filing an application where the inventor is an 
employee of an organization, such as a corporation or partnership, and 
signed an agreement to assign inventions to the organization. It

[[Page 9199]]

would be also consistent with the law in some states for a registered 
patent agent who is a regular (salaried) employee of the organization 
acting for his or her employer to undertake to prepare assignments only 
for the employer. If commentators propose that the Office should 
provide for such situations, they should attempt to articulate 
standards by which actions strictly incidental to an agent's duties in 
preparing applications can be distinguished from actions necessitating 
expert knowledge of state principles for which registered practitioner 
status does not prepare agents.
    The provision in proposed rule 11.5(b)(3) regarding a 
practitioner's conduct occurring in a non-practitioner capacity has 
been withdrawn as being unnecessary. Misconduct occurring in a non-
lawyer or non-agent capacity would be covered by the provisions of 
revised proposed Sec.  11.19, which identify several grounds for 
discipline, including, but not limited to, conduct that violates an 
imperative USPTO Rule of Professional Conduct and a conviction of a 
serious crime.
    Section 11.16: Proposed rule 11.16, regarding financial books and 
records, has been withdrawn. As revised, Sec.  11.16 would be reserved. 
Requests for financial records during investigations are addressed 
infra under Sec.  11.22.
    Section 11.18: Section 11.18(b) provides that a practitioner 
certifies the truthfulness of the content of his or her submissions to 
the Office. Concern was expressed that the prohibition against 
``knowingly and willfully'' covering up by any ``trick, scheme or 
device'' a material fact is unduly broad and meaningless. However, the 
language in Sec.  11.18(b), ``knowingly and willfully falsifies, 
conceals, or covers up by any trick, scheme, or device a material 
fact,'' is taken from 18 U.S.C. 1001. Section 1001, titled ``Statements 
or entries generally,'' provides: ``Whoever, in any matter within the 
jurisdiction of any department or agency of the United States knowingly 
and willfully falsifies, conceals, or covers up by any trick, scheme, 
or device a material fact, or makes any false, fictitious or fraudulent 
statements or representations, or makes or uses any false writing or 
document knowing the same to contain any false, fictitious or 
fraudulent statement or entry, shall be fined not more than $10,000 or 
imprisoned not more than five years, or both.'' The Office is only 
repeating an obligation with which practitioners otherwise have to 
comply. The section applies the statutory standard of conduct 
applicable to the submission of material facts in courts to proceedings 
in the Office. Case law has identified a number of circumstances 
involving knowingly falsifying material facts by trick, scheme, or 
device. See e.g., U.S. v. Zavala, 139 F.2d 830 (2d Cir. 1944). 
Accordingly, the language has not been changed.
    Section 11.18(b)(1) has been revised to clarify that the rule 
prohibits knowingly or willfully making false, fictitious, or 
fraudulent statements or representations or knowingly or willfully 
making or using a false writing or document known to contain any false, 
fictitious, or fraudulent statement or entry. The section has also been 
revised to point out that whoever violates the rule is subject to 
penalties of criminal statutes in addition to those under 18 U.S.C. 
1001. Statements in this section to the effect that violations of the 
rule may jeopardize the validity of the application or document, or the 
validity or enforceability of any patent, trademark registration, or 
certificate resulting therefrom have been removed as being beyond the 
scope of Sec.  10.18(b)(1). Inasmuch as an offending paper may have 
little or no probative value, this section has been revised to state 
that violation of the rule may jeopardize the probative value of such a 
paper.
    Section 11.18(c) sets forth sanctions that may be imposed for 
violations of Sec.  11.18(b). Commentators urged that the Office has no 
authority to impose monetary sanctions for violations of Sec.  
11.18(b). As revised, the rule sets forth a non-exhaustive list of 
sanctions and actions the Office may impose or take. The revised 
proposed section removes reference to imposition of monetary sanctions. 
The sanctions have been revised to include striking the offending 
paper, precluding a practitioner from submitting a paper, and sanctions 
affecting the weight given to the offending paper. Actions the Office 
may take include referring a practitioner's conduct to the Office of 
Enrollment and Discipline for appropriate action.
    These sanctions conform to those discussed in conjunction with the 
1993 Amendment to Rule 11 of the Federal Rules of Civil Procedure. The 
commentary to the 1993 Amendment indicated that a court ``has available 
a variety of possible sanctions to impose for violations, such as 
striking the offending paper; * * * referring the matter to 
disciplinary authorities.'' Like Rule 11 of the Fed. R. Civ. P., the 
provisions in Sec.  11.18 do not attempt to enumerate the factors that 
should be considered or the appropriate sanctions. The Office 
anticipates that in taking action under Sec.  11.18 in applying 
sanctions, it would use the proper considerations utilized in issuing 
sanctions or taking action under Rule 11. Consideration may be given, 
for example, to whether the improper conduct was willful or negligent; 
whether it was part of a pattern of activity, or an isolated event; 
whether it infected an entire application, or only one particular 
paper; whether the person has engaged in similar conduct in other 
matters; whether the conduct was intended to injure; what effect the 
conduct had on the administrative process in time and expense; whether 
the responsible person is trained in law; what is needed to deter that 
person from repetition in the same case; and what is needed to deter 
similar conduct by others: all of these in a particular case may be 
proper considerations. See 28 U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm. 
Notes, 1993 Amendments, Subdivisions (b) and (c).
    Section 11.19: Section 11.19 sets forth the disciplinary 
jurisdiction of the Office. This section, as well as all other 
sections, have been revised to eliminate disciplinary provisions 
directed to ``other individuals.'' Accordingly, revised proposed Sec.  
11.19 no longer includes ``other individuals'' within the disciplinary 
jurisdiction of the Office.
    Proposed Sec.  11.19(b), which addressed the jurisdiction of courts 
and voluntary bar associations to discipline practitioners for 
misconduct, has been withdrawn in favor of the first paragraph of Sec.  
11.1, which is in the final rules adopted on July 26, 2004. It is 
believed that the first paragraph of Sec.  11.1 sets forth in a manner 
superior to proposed rule Sec.  11.19(b) that nothing in ``this Part * 
* * preempt[s] the authority of each State to regulate the practice of 
law, except to the extent necessary for the United States Patent and 
Trademark Office to accomplish its Federal objectives.''
    ``Misconduct'' was defined differently in proposed rules 11.19(c) 
and 11.804 in the December 12, 2003 proposed rule making. Proposed rule 
11.19(c) identified misconduct constituting grounds for discipline 
whereas proposed rule 11.804 identified professional ``misconduct.'' 
Reference to ``misconduct'' has been removed from revised Sec.  11.19. 
As revised, Sec.  11.19(b) sets forth five grounds for discipline. 
Although Sec.  11.804 is not included in this notice, it is anticipated 
that Sec.  11.804 will be the only rule that describes professional 
``misconduct.'' The grounds for discipline are clarified to provide 
consistency among the revised disciplinary procedural rules. The 
grounds for discipline are identified as conviction of a serious crime; 
discipline on ethical grounds imposed in another jurisdiction or 
disciplinary

[[Page 9200]]

disqualification from participating in or appearing before any Federal 
program or agency; failure to comply with any order of a Court 
disciplining a practitioner, or any final decision of the USPTO 
Director in a disciplinary matter; violation of the imperative USPTO 
Rules of Professional Conduct; and violation of the oath or declaration 
taken by the practitioner.
    Section 11.20: Section 11.20 sets out the disciplinary sanctions 
the USPTO Director may impose on a practitioner after notice and 
opportunity for a hearing. Subsection 11.20(a)(2) has been revised to 
provide for suspension for an appropriate period of time. The revised 
proposed section removes provisions that comments suggested needed 
clarification, such as providing for suspension for an ``indefinite 
period'' and suspension for a period not in excess of five years. As 
revised, suspension may be imposed for a period that is appropriate 
under the facts and circumstances of the case. Subsection 11.20(a)(3) 
provides for reprimand, including both public and private reprimand. 
Subsection 11.20(b) provides that the USPTO Director may require a 
practitioner to make restitution either to persons financially injured 
by the practitioner's conduct or to an appropriate client's security 
trust fund, or both, as a condition of probation or of reinstatement. 
The restitution would be limited to the return of unearned practitioner 
fees or misappropriated client funds. The rule does not contemplate 
restitution for the value of an invention or patent.
    Section 11.21: Section 11.21 provides that a warning is not a 
disciplinary sanction and that the OED Director may issue a warning at 
the conclusion of an investigation.
    Inasmuch as a warning is not a disciplinary sanction, a warning 
would not be made public. A provision in the proposed rule requiring 
the OED Director to consult with and obtain the consent of a Committee 
on Discipline panel before issuing a warning has been removed as 
procedurally unnecessary and unduly burdensome. Another provision in 
the proposed rule, that the warning be final and unreviewable, also has 
been removed. To afford an avenue for review in disciplinary matters, 
paragraph (e) has been added to the revised Sec.  11.3 to enable a 
practitioner to invoke the USPTO Director's supervisory authority.
    Section 11.22: Section 11.22 sets forth provisions regarding the 
conduct of investigations. Consistent with suggestions from 
commentators, the rule has been revised to distinguish between 
complaints that initiate investigations and complaints that initiate 
disciplinary proceedings. Section 11.22 has been revised to refer to 
communications that initiate an investigation as grievances. The 
revised proposed sections, such as Sec.  11.34, refer to communications 
initiating disciplinary proceedings as complaints. The revised proposed 
sections also omit as unnecessary provisions specifying procedures for 
screening and docketing matters.
    As revised, Sec.  11.22 provides that a practitioner will be 
notified in writing of the initiation of an investigation into whether 
the practitioner has engaged in conduct constituting grounds for 
discipline. In conducting an investigation, the OED Director may 
request information or evidence from the grievant, the practitioner, or 
any person who may reasonably be expected to provide information and 
evidence needed in connection with the grievance or investigation. See 
revised proposed Sec.  11.22(f).
    As discussed above, proposed Sec.  11.16, regarding financial books 
and records, has been withdrawn. Nevertheless, the OED Director may 
still request such information pursuant to revised proposed Sec.  
11.22(f) in order to protect the public from practitioners who 
commingle client funds or improperly fail to refund unearned client 
funds. For example, evidence that one account of a practitioner has not 
been properly maintained or that funds of one client have not been 
properly handled should constitute cause for verifying the accuracy of 
the account that the practitioner maintains or should maintain 
containing the funds of the client for practice before the Office. 
Additionally, either a check drawn on a client trust account returned, 
for example, due to insufficient funds, or the failure to timely refund 
unearned funds to a client should similarly constitute cause to verify 
the contents of the same account. Where the OED Director receives 
information or evidence involving possible financial issues, the 
request to the practitioner would be limited to copies of books and 
records maintained by or for the practitioner for practice before the 
Office regarding the client. The foregoing examples are the same as 
those the American Bar Association recommends as grounds for inquiring 
into a lawyer's accounts. See Rule 30, Verification Of Bank Accounts, 
of the American Bar Association's Rules for Lawyer Disciplinary 
Enforcement. The books and records received by the OED Director from 
the practitioner would be treated as confidential and their use will be 
limited to the Office's investigation and disciplinary proceeding.
    As noted above, the OED Director may request information or 
evidence. The OED Director's letters to practitioners request 
information; the letters are no longer called requirements for 
information. The Office's regulatory ability to require information is 
on appeal to the Federal Circuit. Among the ethics rules that remain 
under consideration are the provisions of ABA Model Rule 8.1. Model 
Rule 8.1 provides that, but for client confidences protected by another 
rule, a practitioner is prohibited from knowingly failing to respond to 
a lawful demand for information from a disciplinary authority. A 
practitioner's failure to comply with the OED Director's request for 
information conforming to Model Rule 8.1 would risk violating the rule. 
The Office intends by the change in nomenclature of the OED Director's 
letter not to change the sanctioning ability of the Office. However, 
the Office's regulatory ability to take sanctions in view of failure to 
comply with a request will be addressed in ethics rules that will 
follow as the Office will be informed by any judicial decision on the 
question. Additionally, the OED Director, when recommending that the 
Committee on Discipline approve the institution of formal charges, may 
reference the practitioner's refusal to provide information or records. 
The Committee may draw an adverse inference from the practitioner's 
refusal to provide information or records in determining whether 
probable cause exists to believe a disciplinary rule has been violated. 
When the Committee on Discipline finds probable cause, a disciplinary 
proceeding can be initiated. After the practitioner files an answer, 
the OED Director may seek the hearing officer's permission to obtain a 
subpoena for production of relevant information or records. Proposed 
Sec.  11.52, pertaining to discovery, has been revised to address 
expressed concerns that the current rule inappropriately limits 
discovery. Revised proposed section 11.52(a) would permit discovery 
when a party establishes that discovery is reasonable and relevant. 
Information or records refused during an investigation may be 
reasonable and relevant in discovery. See Rules 11.38 and 11.58(a).
    Section 11.22(f)(2) provides for requesting information and 
evidence regarding possible grounds for discipline of a practitioner 
from a non-grieving client. The request cannot be made unless the OED 
Director has obtained either the consent of the practitioner or a 
finding by a Contact Member of the Committee on Discipline

[[Page 9201]]

that good cause exists to believe that the possible ground for 
discipline alleged has occurred with respect to non-grieving clients. 
The Office agrees with the many comments that contacts with non-
grieving clients about a practitioner without contacting the 
practitioner first should be rare. While many jurisdictions can contact 
non-grieving clients without established procedures, the Office 
considers that adoption of procedures to govern the exercise of such 
authority will best assure that this extraordinary step will be taken 
only when warranted. The Office therefore proposes to adapt a procedure 
followed in California, namely Rule 2410b, for the protection of 
practitioners and their clients. Accordingly, if a practitioner 
declines to consent, communication with the non-grieving client can 
occur if a Contact Member finds good cause to believe that a possible 
ground for discipline has occurred with respect to the non-grieving 
client. The Contact Member will closely scrutinize a showing made by 
the OED Director in deciding whether to grant or deny authorization to 
request the information or evidence.
    Requesting information and documents from practitioners, as well as 
from non-grieving clients enables the OED Director, and ultimately the 
Office, to efficiently and effectively ascertain whether grounds for 
disciplining a practitioner exist. The clarification of Sec.  11.22 is 
intended to result in a fair and consistent application of the rules to 
practitioners and enable the USPTO Director to protect the public.
    Section 11.24: Section 11.24 provides a procedure for reciprocal 
discipline of a practitioner who has been disbarred or suspended by 
another jurisdiction (including any federal court and any state or 
federal administrative body or tribunal), or disciplinarily 
disqualified from participating in or appearing before any Federal 
program or agency. The Office would define the terms ``disqualified,'' 
``Federal program,'' and ``Federal agency'' for the purposes of 
deciding whether a practitioner has been disqualified from 
participating in or appearing before any Federal program or agency. For 
that purpose, ``disqualified'' would mean any action that prohibits a 
practitioner from participating in or appearing before the program or 
agency, regardless of how long the prohibition lasts or the specific 
terminology used. The program or agency need not use the term 
``disqualified'' to describe the action. For example, an agency may use 
analogous terms such as ``suspend,'' ``decertify,'' ``exclude,'' 
``expel,'' or ``debar'' to describe the practitioner's disqualification 
from participating in the program or the agency. For the purposes of 
deciding whether a practitioner has been disqualified from 
participating in or appearing before any Federal program or agency, 
``Federal program'' would mean any program established by an Act of 
Congress or administered by a Federal agency and ``Federal agency'' 
would mean any authority of the executive branch of the Government of 
the United States.
    If an attorney has been disbarred or suspended in another 
jurisdiction, reciprocal discipline before the Office applies 
regardless whether the practitioner remains registered as an attorney 
or agent. If an attorney or registered patent agent is disciplinarily 
disqualified from participating in or appearing before any Federal 
program or agency, the practitioner is subject to reciprocal discipline 
before the Office. The revised proposed section applies reciprocal 
discipline to both attorneys and registered patent agents.
    The reciprocal disciplinary proceeding would be initiated before 
the USPTO Director. The practitioner would be served with notice of the 
reciprocal proceeding, and provided an opportunity to reply. The 
practitioner would also be provided with a copy of the record or order 
of disbarment, suspension or disciplinary disqualification, and a 
complaint.
    The USPTO Director would hear the reciprocal discipline matter on 
the documentary record unless the USPTO Director determines that an 
oral hearing is necessary. After careful review of the statute and case 
law, it has been concluded that oral hearings are not required for all 
licensing proceedings. 5 U.S.C. 558 does not itself require the 
application of 5 U.S.C. 556 to licensing proceedings, such as a 
disciplinary case. 5 U.S.C. 554 requires the application of Sec.  556 
``in every case of adjudication required by statute to be determined on 
the record after opportunity for agency hearing,'' with exceptions not 
applicable here. See Sec.  554(a). The provision of Sec.  554 applies 
only where Congress has clearly indicated that a hearing required by 
statute must be a ``trial-type hearing on the record.'' R.R. Comm'n of 
Texas v. United States, 665 F. 2d 221, 227 (D.C. Cir. 1985), citing 
United States v. Florida E. Coast Ry., 410 U.S. 224, 234 (1973). There 
are no decisions so interpreting 35 U.S.C. 32. That statute requires 
``notice and opportunity for a hearing,'' and that ``the reasons for 
any [resulting] suspension or exclusion shall be duly recorded.'' A 
requirement to record the reasons for the decision is not the same as 
requiring a trial-type hearing. Accordingly, it is not believed that 
Sec.  32 triggers Sec. Sec.  554 and 556. Procedural due process is 
afforded by providing notice and opportunity to be heard on a 
documentary record, and recording the reasons for the decision. This is 
consistent with enrollment proceedings where these matters have long 
been conducted on the documentary record. Where the USPTO Director 
determines an oral hearing in a reciprocal disciplinary matter is 
necessary, the same would be provided.
    No change is contemplated to continuing to have oral hearings in 
disciplinary proceedings before hearing officers conducted under Sec.  
11.44. Current Sec.  10.144 and revised proposed Sec.  11.44 provide 
for conducting disciplinary proceedings before the administrative law 
judge or hearing officer pursuant to Sec.  556. They also provide for 
the hearings to be stenographically recorded and transcribed, and the 
testimony of witnesses to be received under oath or affirmation.
    Section 11.24(c) has been revised to address stayed discipline. If 
a disciplinary sanction imposed by another jurisdiction or disciplinary 
disqualification imposed in the Federal program or agency has been 
stayed, any reciprocal discipline imposed by the USPTO may be deferred 
until the stay expires.
    In reciprocal discipline proceedings, the practitioner would be 
provided with a forty-day period to inform the USPTO Director of: (1) 
Any argument that the practitioner was not disbarred, suspended or 
disciplinarily disqualified; and (2) any claim, predicated upon the 
grounds set forth in Sec. Sec.  11.24(d)(1)(i) through (d)(1)(iii), 
that the imposition of the identical discipline would be unwarranted 
and the reasons for that claim. After expiration of the forty-day 
period, the USPTO Director would consider any timely filed response.
    Pursuant to Sec. Sec.  11.24(d)(1)(i) through (d)(1)(iii), the 
practitioner or OED Director could present one or more of the only 
following three arguments: (1) That the procedure elsewhere was so 
lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process; (2) that there was such infirmity of proof 
establishing the conduct as to give rise to the clear conviction that 
the Office could not, consistently with its duty, accept as final the 
conclusion on that subject; or (3) that the imposition of the same 
discipline by the Office would result in grave injustice. Under Sec.  
11.24(d)(2), if the USPTO Director determines that any of the elements 
of Sec. Sec.  11.24(d)(1)(i)

[[Page 9202]]

through (d)(1)(iii) exist, the USPTO Director would enter an 
appropriate order. For example, the USPTO Director might order a 
hearing before a hearing officer limited to the particular element.
    Revised proposed Sec.  11.24(f) provides for conditions when it 
would be permissible to impose reciprocal discipline nunc pro tunc. The 
practitioner must have promptly notified the OED Director of his or her 
discipline or disciplinary disqualification and must clearly and 
convincingly establish that the practitioner voluntarily ceased all 
activities related to practice before the Office and complied with all 
provisions of Sec.  11.58. In such circumstances, the effective nunc 
pro tunc date would be the date the practitioner voluntarily ceased all 
activities related to practice before the Office and complied with all 
provisions of Sec.  11.58.
    Reinstatement following reciprocal discipline is addressed in Sec.  
11.24(g). A practitioner could petition for reinstatement under 
conditions set forth in Sec.  11.60 no sooner than completion of the 
period of reciprocal discipline imposed, and compliance with all 
provisions of Sec.  11.58.
    Section 11.25: Section 11.25 would provide a revised procedure for 
interim suspension and discipline based upon conviction of committing a 
serious crime. Revised proposed Sec.  11.25 parallels the procedure in 
Rule 19, Lawyers Found Guilty Of A Crime, of the Model Rules for Lawyer 
Disciplinary Enforcement of the American Bar Association. If a 
practitioner is convicted of a serious crime, the OED Director would 
initiate disciplinary action under this section without authorization 
of the Committee on Discipline. Serious crime was defined in proposed 
Sec.  11.1 as meaning (1) any criminal offense classified as a felony 
under the laws of the United States, any state or any foreign country 
where the crime occurred, or (2) any crime a necessary element of 
which, as determined by the statutory or common law definition of such 
crime in the jurisdiction where the crime occurred, includes 
interference with the administration of justice, false swearing, 
misrepresentation, fraud, willful failure to file income tax returns, 
deceit, bribery, extortion, misappropriation, theft, or an attempt or a 
conspiracy or solicitation of another to commit a ``serious crime.'' 
That definition, which is derived from the definitions of ``serious 
crime'' included in Rule 19(C) of the American Bar Association Model 
Rules for Lawyer Disciplinary Enforcement and Rule I(B) of the American 
Bar Association Model Federal Rules of Disciplinary Enforcement, would 
apply in Sec.  11.25.
    Before initiating action, the OED Director would exercise 
reasonable care to confirm that the crime is a ``serious crime'' and 
that the convicted individual is a practitioner before the Office. For 
example, OED would consult with either or both prosecutor or state 
disciplinary counsel to confirm the classification of the crime, as 
well as obtain information confirming the identity of the convicted 
individual. OED could also compare information it receives regarding 
convicted individuals with its records and other records in the Office, 
in addition to asking the practitioner whether he or she is the person 
who was convicted. The OED Director would file with the USPTO Director 
proof of the finding of guilt, and a complaint against the practitioner 
complying with Sec.  11.34 predicated upon the conviction. The OED 
Director would request issuance of a notice and order set forth in 
Sec.  11.25(b)(1). If the crime is not a serious crime, the matter 
would be processed in the same manner as any other information or 
evidence of a possible violation of an imperative Rule of Professional 
Conduct coming to the attention of the OED Director.
    Under revised proposed Sec.  11.25(b), interim suspension could not 
be imposed until the practitioner has been afforded notice and 
opportunity to be heard. The USPTO Director would serve the 
practitioner with notice complying with Sec.  11.35(a), (b) or (c) 
containing a copy of the court record; docket entry or judgment of 
conviction; a copy of the complaint; and an order directing the 
practitioner to inform the USPTO Director, within forty days of the 
date of the notice, of any predicate challenge establishing that 
interim suspension may not properly be ordered, such as that the crime 
did not constitute a ``serious crime'' or that the practitioner is not 
the individual who was convicted. See Sec.  11.25(b)(2). The hearing 
for interim suspension would be heard on the documentary record and the 
practitioner's assertion of any predicate challenge. See Sec.  
11.25(b)(3). The practitioner would be placed on interim suspension 
immediately upon proof that the practitioner has been convicted of a 
serious crime regardless of the pendency of any appeal. See Sec.  
11.25(b)(3)(i). Interim suspension may be terminated in the interest of 
justice upon a showing of extraordinary circumstances. See Sec.  
11.25(b)(3)(ii).
    Upon entering an order of interim suspension, the matter would be 
referred to the OED Director for institution of a formal disciplinary 
proceeding before a hearing officer. A disciplinary proceeding so 
instituted would not be brought to final hearing until all direct 
appeals from the conviction are concluded. Review of the initial 
decision of the hearing officer would be pursuant to Sec.  11.55. See 
Sec.  11.25(b)(4).
    With respect to convictions in the United States, a certified copy 
of the court record, docket entry, or judgment of conviction in a court 
of the United States would be conclusive evidence that the practitioner 
committed the crime and was convicted. The sole issue in a formal 
disciplinary proceeding would be the nature and extent of the 
discipline to be imposed as a consequence of the conviction. See Sec.  
11.25(c)(1).
    Inasmuch as not all other countries always meet minimum due process 
standards, a conviction in a foreign court even of a ``serious crime'' 
may not result in automatic disqualification. Therefore, a practitioner 
convicted in a foreign court of a serious crime may demonstrate in any 
hearing by clear and convincing evidence: that (1) the procedure in the 
foreign country was so lacking in notice or opportunity to be heard as 
to constitute a deprivation of due process and rebut the prima facie 
evidence of guilt, or (2) there are material facts to be considered 
when determining if a serious crime was committed and whether a 
disciplinary sanction should be entered. See Sec.  11.25(c)(ii).
    Section 11.26: Section 11.26 has been revised to introduce 
provisions for settlement in disciplinary matters. The proposed rules 
did not provide for settlement. The revised proposed section codifies 
current practices.
    Section 11.27: The provisions in Sec.  11.27 set forth the 
procedure for excluding a practitioner on consent. Subsection 11.27(b) 
has been revised to provide that upon entering an order excluding a 
practitioner, the USPTO Director may include in the order provisions 
for other appropriate actions, such as restitution of unearned fees or 
misappropriated funds. See Sec.  11.22(b).
    Section 11.28: The provisions in Sec.  11.28 regarding 
incapacitated practitioners have been revised to be limited to apply to 
disciplinary proceedings. As revised, the OED Director would not 
initiate efforts to have a practitioner declared incapacitated in 
disciplinary or non-disciplinary instances. Instead, a practitioner may 
move to have the proceeding held in abeyance because of a current 
disability or addiction. See Sec.  11.28(a). If the practitioner's 
motion is granted, the practitioner will be transferred to disability 
inactive status

[[Page 9203]]

and precluded from practicing before the Office. See Sec.  11.28(a)(2). 
Upon motion of the practitioner or the OED Director, the practitioner 
may be restored to active status, which will cause the disciplinary 
proceeding to resume. See Sec. Sec.  11.28(b), (d) and (e). A 
practitioner engaging in practice before the Office or representing a 
party in litigation while on disability inactive status would be good 
cause for the OED Director to file a motion to resume a disciplinary 
proceeding that has been held in abeyance.
    Section 11.36: Section 11.36, which provides for the practitioner's 
answer to a complaint, has been revised to provide that a practitioner 
must affirmatively state any intent to raise disability as a mitigating 
factor. We agree with comments that disability itself should not be a 
mitigating factor. Accordingly, the revised proposed section requires 
the respondent practitioner to specify the disability, its nexus to the 
misconduct, and the reason it provides mitigation. Disability, such as 
mental disability or chemical dependency, including alcoholism or drug 
abuse, would be a mitigating factor only if the respondent practitioner 
makes an adequate showing of nexus and mitigation. Such a showing would 
be expected to include (1) medical evidence that the practitioner is 
affected by a chemical dependency or mental disability; (2) evidence 
that the chemical dependency or mental disability caused the 
misconduct; (3) the practitioner's recovery from the chemical 
dependency or mental disability is demonstrated by a meaningful and 
sustained period of successful rehabilitation; (4) the recovery 
arrested the misconduct; and (5) recurrence of the misconduct is 
unlikely. These are the same standards set forth Section 9.32(i) of the 
American Bar Association Standards for Imposing Lawyer Sanctions 
(1992).
    Section 11.36(c) has been revised to require a disability defense 
to be raised at the answer stage. A practitioner who fails to raise the 
defense at the answer stage cannot rely on the disability absent a 
showing of good cause to the hearing officer for leave to amend the 
answer. Revised Sec.  11.36(c) employs language similar to the 
requirement in the Federal Rules of Criminal Procedure for fixing a 
deadline for raising an insanity defense. Rule 12.2 of the Fed. R. 
Crim. P. states ``A defendant who intends to assert a defense of 
insanity at the time of the alleged offense must so notify an attorney 
for the government in writing within the time provided for filing a 
pretrial motion, or at any later time the court sets, and file a copy 
of the notice with the clerk. A defendant who fails to do so cannot 
rely on an insanity defense. The court may, for good cause, allow the 
defendant to file the notice late, grant additional trial-preparation 
time, or make other appropriate orders.''
    Section 11.39: Section 11.39(g) has been added to provide that the 
hearing officer not engage in ex parte discussions with any party 
regarding the merits of the complaint, beginning with appointment and 
concluding with the final agency decision. The addition clarifies the 
period during which the hearing officer is not permitted to discuss the 
merits of a complaint. The period is of limited duration to enable 
counsel representing the agency to consult, if necessary, with the 
hearing officer if court review is sought of the final agency decision.
    Section 11.40: In view of changes in the Office's organization and 
the authorities of the Deputy General Counsel for Intellectual Property 
and Solicitor, proposed Sec.  11.40(b) has been revised to provide that 
the Solicitor and attorneys in the Office of the Solicitor shall 
represent the OED Director in disciplinary proceedings.
    Section 11.40(b) also has been revised to provide that the USPTO 
Director may consult with the OED Director and attorneys representing 
the OED Director after a final agency decision has been entered 
concerning any further proceedings. The need for consultation arises in 
the event that the practitioner seeks review of the decision in the 
United States District Court for the District of Columbia pursuant to 
35 U.S.C. 32. There is no necessity after a final agency decision 
issues to continue to maintain a wall between the USPTO Director or 
officials representing the USPTO Director, the OED Director, or those 
representing the OED Director. The revision codifies current practice 
and provides that after a final decision is entered in a disciplinary 
proceeding, the OED Director and attorneys representing the OED 
Director shall be available to counsel the USPTO Director, the General 
Counsel, and the Deputy General Counsel for General Law in any further 
proceedings.
    Section 11.44: Oral hearings before a hearing officer would be 
conducted as if the proceeding were subject to 5 U.S.C. 556. A hearing 
officer would thus continue to preside over the disciplinary 
proceeding. An oral hearing would be unnecessary where, for example, 
there is a settlement, or the hearing officer entered an order default 
judgment or summary judgment. If there is an oral hearing, it would 
also continue to be stenographically recorded and transcribed, and the 
testimony of witnesses would continue to be received under oath or 
affirmation. A copy of the transcript of the hearing would continue to 
become part of the record. The OED Director and respondent would make 
their own arrangements with the stenographer to obtain a copy of the 
hearing transcript. An excluded or suspended practitioner would 
reimburse the Office for OED's expense of the hearing transcript cost, 
and any fee paid for the services of the reporter. See proposed Sec.  
11.60(d)(2)(i). The expense of deposition transcripts would be borne by 
the party requesting depositions inasmuch as the rules are silent 
regarding such costs.
    Section 11.45: This section has been revised to provide for 
amending the complaint without authorization from the Committee on 
Discipline. The purpose of the amendments would be to include 
additional charges based upon conduct committed before or after the 
complaint was filed. The hearing officer would have to approve 
amendment of the complaint and authorize amendment of the answer. The 
revised practice conforms to disciplinary procedural rules adopted in 
several states. For example, Missouri Disciplinary Rule 5.15(b) 
provides that ``[i]f any amendment substantially changes the charges, 
the respondent shall be given a reasonable time to respond.'' Florida's 
Rule 3-7.6(h) is a disciplinary rule governing pleadings, including 
complaints, in Procedures Before a Referee. Rule 3-7.6(h)(6) provides 
``[p]leadings may be amended by order of the referee, and a reasonable 
time shall be given within which to respond thereto.'' In the First 
Department of New York, disciplinary procedure Sec.  605.11 provides 
``[w]henever, in the course of any hearing under these Rules, evidence 
shall be presented upon which another charge or charges against the 
Respondent might be made, it shall not be necessary to prepare or serve 
an additional Notice of Charges with respect thereto, but the Referee 
may, after reasonable notice to the Respondent and an opportunity to 
answer and be heard, proceed to the consideration of such additional 
charge or charges as if they had been made and served at the time of 
service of the Notice of Charges, and may render its decision upon all 
such charges as may be justified by the evidence in the case.'' As 
revised, procedural efficiencies are realized by reducing the time and 
resources needed to amend the complaint, while expediting resolution of 
all disciplinary issues that the OED

[[Page 9204]]

Director becomes aware of during the proceeding.
    Section 11.49: This section would maintain the ``clear and 
convincing'' burden of proof. Comments overwhelmingly expressed a 
preference for maintaining the current burden of proof, as opposed to 
reducing the burden to a preponderance of evidence.
    Section 11.52: Section 11.52(b)(1) has been revised pursuant to 
several suggestions to permit reasonable and relevant discovery. It 
also permits reasonable and relevant discovery of records and 
information a practitioner did not disclose or release during an 
investigation. The provision in the proposed rules for discovery of the 
identity of Government employees who have investigated the case has 
been eliminated as unnecessary inasmuch as the investigator(s) is or 
are named in and sign the inquiry letters mailed t