Changes to Representation of Others Before the United States Patent and Trademark Office, 47650-47704 [E8-18109]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 73, Number 158 (Thursday, August 14, 2008)]
[Rules and Regulations]
[Pages 47650-47704]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-18109]



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Part II





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1, 2, 7, et al.



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

Federal Register / Vol. 73, No. 158 / Thursday, August 14, 2008 / 
Rules and Regulations

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, 7, 10, 11, and 41

[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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
adopting new rules governing the conduct of disciplinary 
investigations, issuing warnings when closing such investigations, 
disciplinary proceedings, non-disciplinary transfer to disability 
inactive status and reinstatement to practice before the Office. The 
Office is adopting a new rule regarding recognition to practice before 
the Office in trademark cases. The Office also is adopting a new rule 
to address a practitioner's signature and certificate for 
correspondence filed in the Office. These changes will enable the 
Office to better protect the public from practitioners who do not 
comply with the Office's ethics rules and from incapacitated 
practitioners.

DATES: Effective Date: September 15, 2008.

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: Congress 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.
    On December 12, 2003, the Office published Changes to 
Representation of Others Before the United States Patent and Trademark 
Office, a Notice of Proposed Rule Making in the Federal Register (68 FR 
69441), 1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) proposing to amend 
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, 
disciplinary proceedings, issuing warnings, disciplinary proceedings, 
reinstatement, recognition to practice before the Office in trademark 
cases, and a practitioner's signature and certificate for 
correspondence filed in the Office--principally rules 11.2, 11.3, 11.5, 
and 11.14 through 11.61. One hundred sixty-three written comments were 
received. After reviewing the written comments, the Office decided to 
revise a number of the rules published in the December 12, 2003 Notice. 
The Office published Changes to Representation of Others Before the 
United States Patent and Trademark Office, a Supplemental Notice of 
Proposed Rule Making (SNPR), on February 28, 2007, in the Federal 
Register (72 FR 9196), 1316 Off. Gaz. Pat. Office 123 (Mar. 27, 2007) 
regarding rules 11.1, 11.2, 11.3, 11.5, and 11.14 through 11.61 and 
requested additional comments on those revised proposed rules. The 
Office received fifteen comments from professional and intellectual 
property organizations, law firms, individual practitioners and members 
of the public. Many of the revised proposed rules were similar to the 
approach of the current regulations. Other revised 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. Following receipt and 
consideration of the comments, provisions included in the December 12, 
2003 Notice regarding enrollment were adopted in final rules on July 
26, 2004. See Changes to Representation of Others Before the United 
States Patent and Trademark Office, Final Rule, published in the 
Federal Register, 69 FR 35428 (June 24, 2004), 1288 Off. Gaz. Pat. 
Office 109 (November 16, 2004). Comments on proposed changes to the 
substantive ethics rules remain under consideration by the Office, and 
it is expected that the ethics rules will be the subject of a later, 
separate notice.
    In addition, several rules proposed in the December 12, 2003 Notice 
are directly or indirectly dependent on the development of electronic 
systems to implement rules governing annual fees, Sec.  11.8, and 
continuing legal education, Sec. Sec.  11.12 and 11.13. For example, 
proposed Sec. Sec.  11.8(d), 11.12 and 11.13 are directly dependent on 
development of the systems, whereas proposed Sec.  11.11(b) through 
11.11(f) are 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 rules below do not refer to Sec. Sec.  11.8(d), 
11.11(b) through 11.11(f), 11.12 and 11.13.
    The primary purposes for adopting procedures for disciplining 
practitioners who fail to conform to adopted standards and non-
disciplinary procedures for transferring practitioners to disability 
inactive status include affording practitioners due process, protecting 
the public, preserving the integrity of the Office, and maintaining 
high professional standards.
    These final rules will be applied only prospectively, not 
retroactively. In implementing the foregoing, with respect to 
investigations, the rules will be applied to the future actions in 
pending investigations and in investigations commencing on or after the 
effective date of the final rules. With respect to disciplinary 
proceedings that have already been commenced by filing a complaint 
under 37 CFR 10.134 before the effective date of the final rules, the 
final rules will not apply. Instead, these disciplinary proceedings 
will continue under the rules in effect on the date the complaint under 
Sec.  10.134 was filed. With regard to disciplinary proceedings

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commenced after the effective date of the rules, the final rules will 
apply. With regard to Sec.  11.5, the final rule will be applied only 
prospectively to assignments and licenses written on or after the 
effective date of the final rules.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1, 2, 7, 11 and 
41, are revised by amending Sec. Sec.  1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 
2.18, 2.19, 2.24, 2.33, 2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 
2.161, 2.193, 7.25, 7.37, 11.1, 11.2, 11.3, 11.5 and 41.5, and adding 
Sec. Sec.  11.14 through 11.99 as follows:
    Sections 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 2.18, 2.19, 2.24, 2.33, 
2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 7.25, 7.37: 
Sections 1.4(d)(3), 1.4(d)(4)(i), 1.4(d)(4)(ii)(C), 1.8(a)(2)(iii)(A), 
1.9(j), 2.2(c), 2.11, 2.17(a)-(c), 2.18(a), 2.19(b), 2.24, 2.33(a)(3), 
2.101(b), 2.102(a), 2.105(b)(1) and (c)(1), 2.111(b), 2.113 (b)(1), 
2.119(d), 2.161(b)(3), 2.193(c)(2), 7.25(a) and 7.37(b)(3) are revised 
to change or add an appropriate cross-reference to Part 11 or change a 
cross-reference to an appropriate section in Part 11.
    Section 11.1: The definitions of ``disqualified,'' ``Federal 
agency,'' ``Federal program'' and ``Serious Crime'' are added to the 
definitions, and the definitions of ``attorney or lawyer'' and 
``State'' are revised. ``Disqualified,'' which appears in Sec.  11.24, 
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. ``Federal 
program'' is defined as meaning any program established by an Act of 
Congress or administered by a Federal agency and ``Federal agency'' is 
defined as meaning any authority of the executive branch of the 
Government of the United States.
    The definition of ``attorney or lawyer'' is revised to correct an 
error. The Office published a final rule in the Federal Register of 
June 24, 2004 (69 FR 34428) entitled ``Changes to Representation of 
Others Before the United States Patent and Trademark Office.'' In that 
final rule, there was an inadvertent omission of the word ``not'' 
preceding the term ``under'' in the first sentence of the definition of 
``attorney or lawyer'' in Sec.  11.1. An attorney or lawyer in good 
standing with the highest court of a State should not also be ``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.'' The 
definition is corrected by inserting ``not'' before ``under'' in the 
first sentence.
    The definition of state is 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. Section 11.2(a) 
is revised to delete provisions for appointment of an OED Director in 
the event the OED Director is absent or recuses himself or herself from 
a case, as provision for these circumstances by rule is believed to be 
unnecessary.
    Section 11.2(b)(4) is revised to provide for conducting 
investigations of matters involving possible grounds for discipline of 
practitioners. Except in matters meriting summary dismissal, the OED 
Director will afford an accused practitioner an opportunity to respond 
to a reasonable inquiry before a disposition is recommended or 
undertaken. Section 11.2(b)(5) is added to include among the OED 
Director's duties the initiation of a disciplinary proceeding and 
performance of such other duties in connection with investigations and 
disciplinary proceedings as may be necessary, provided the consent of a 
panel of three members of the Committee on Discipline is first obtained 
when required. Section 11.2(b)(6) is added to provide among the OED 
Director's duties oversight of the preliminary screening of information 
and closing investigations as provided for in Sec.  11.22.
    The titles of Sec. Sec.  11.2(c) and 11.2(d) are revised to limit 
the petition provisions of these subsections to matters ``regarding 
enrollment or recognition.'' Section 11.2(c) is revised to provide that 
a petition to the OED Director be accompanied by payment of the fee set 
forth in Sec.  1.21(a)(5)(i). A sentence in Sec.  11.2(d) proposed in 
December 2003 providing that ``[a] decision dismissing a complaint or 
closing an investigation is not subject to review by petition'' has 
been deleted from Sec.  11.2(d).
    Section 11.2(d) also is revised to provide that a petition under 
this section must be accompanied by the fee set forth in Sec.  
1.21(a)(5)(ii), that a petition not filed within thirty days may be 
dismissed as untimely, that briefs and supporting memoranda must 
accompany the petition, and that an oral hearing will not be granted 
except when considered necessary by the USPTO Director.
    Section 11.2(e) is added to provide for filing a petition to invoke 
supervisory authority of the USPTO Director in disciplinary matters in 
appropriate circumstances. For example, a person dissatisfied with a 
decision dismissing a grievance or closing an investigation may 
petition the USPTO Director to exercise supervisory authority over the 
OED Director. The procedure in subsection (e) is comparable to the 
supervisory review procedure in Sec.  1.181 and assures supervisory 
review when appropriate. No fee is required for a petition to invoke 
the supervisory authority of the USPTO Director in disciplinary 
matters.
    A petition under Sec.  11.2(e) must contain a statement of the 
facts involved and the point or points to be reviewed and the action 
requested. Briefs or memoranda in support of the petition must 
accompany the petition. Where facts are to be proven, the proof in the 
form of affidavits or declarations (and exhibits, if any) must 
accompany the petition. The OED Director may be directed by the USPTO 
Director to file a reply to the petition, supplying a copy to the 
petitioner. An oral hearing will not be granted except when considered 
necessary by the USPTO Director. The filing of a petition will not stay 
an investigation, disciplinary proceeding or other proceedings. The 
petition may be dismissed as untimely if it is not filed within thirty 
days of the mailing date of the action or notice from which relief is 
requested. Any request for reconsideration of the decision of the USPTO 
Director may be dismissed as untimely if not filed within thirty days 
after the date of said decision.
    Section 11.3: Section 11.3(a), which provides for suspension of 
rules, in essence, continues the provisions of former Sec.  10.170 that 
could be applied to regulations addressing procedures. For example, the 
provisions of this section may be invoked by an applicant for 
registration to waive the sixty-day period set in Sec.  11.7 for 
completing an application for registration where events beyond 
applicant's control, such as a flood or fire, prevented applicant from 
supplying information to complete an application. The inclusion of 
Sec.  11.3(a) should not be construed as an indication that there could 
ever be any extraordinary situation when justice requires waiver of a 
disciplinary rule.
    Section 11.3(b) is added to provide that no petition under this 
section may stay a disciplinary proceeding unless ordered by the USPTO 
Director or a hearing officer.

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    Section 11.5: The sole paragraph of Sec.  11.5 is renumbered as 
Sec.  11.5(a). Section 11.5(a) substantially continues the provisions 
of Sec.  11.5, except that ``applications'' has been changed to 
``matters'' at the end of the first sentence.
    Subsection 11.5(b) is added to define practice before the Office as 
including a law-related service that comprehends any matter connected 
with the presentation to the Office or any of its officers or employees 
relating to a client's rights, privileges, duties, or responsibilities 
under the laws or regulations administered by the Office for the grant 
of a patent or registration of a trademark, or for enrollment or 
disciplinary matters. The section provides that nothing in Sec.  11.5 
prohibits a practitioner from employing or retaining non-practitioner 
assistants under the supervision of the practitioner to assist the 
practitioner in matters pending or contemplated to be presented before 
the Office.
    Section 11.5(b)(1) provides a definition of practice before the 
Office in patent matters, which includes preparing and prosecuting any 
patent application, consulting with or giving advice to a client in 
contemplation of filing a patent application or other document with the 
Office, drafting the specification or claims of a patent application; 
drafting an amendment or reply to a communication from the Office that 
may require written argument to establish the patentability of a 
claimed invention; and drafting a communication for a public use, 
interference, reexamination proceeding, petition, appeal to the Board 
of Patent Appeals and Interferences, or other proceeding. This section 
also provides that registration to practice before the Office in patent 
cases sanctions the performance of those services which are reasonably 
necessary and incident to the preparation and prosecution of patent 
applications or other proceeding before the Office involving a patent 
application or patent in which the practitioner is authorized to 
participate. The services are identified as including consideration of 
the advisability of relying upon alternative forms of protection which 
may be available under state law, and drafting an assignment or causing 
an assignment to be executed in contemplation of filing or prosecution 
of a patent application if the practitioner is filing or prosecuting 
the patent application, and assignment does no more than replicate the 
terms of a previously existing oral or written obligation of assignment 
from one person or party to another person or party.
    Section 11.5(b)(2) provides a definition of practice before the 
Office in trademark matters which includes consulting with or giving 
advice to a client in contemplation of filing a trademark application 
or other document with the Office; preparing and prosecuting an 
application for trademark registration; preparing an amendment or 
response which may require written argument to establish the 
registrability of the mark; and conducting an opposition, cancellation, 
or concurrent use proceeding; or conducting an appeal to the Trademark 
Trial and Appeal Board.
    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. The provisions of revised proposed 
Sec.  11.19 would cover misconduct occurring in a non-lawyer or non-
agent capacity. Section 11.19 identifies several grounds for 
discipline, including, but not limited to, conduct that violates a 
mandatory disciplinary rule of the USPTO Code of Professional 
Responsibility and a conviction of a serious crime.
    Section 11.14: Section 11.14 is added to set forth who may practice 
before the Office in trademark and other non-patent cases. Section 
11.14(a), in essence, continues present practice under Sec.  10.14(a) 
except as noted in the following discussion. The last sentence of Sec.  
11.14(a) adds a provision that registration as a patent practitioner 
does not entitle an individual to practice before the Office in 
trademark matters. An attorney who is no longer a member in good 
standing of the bar of the highest court of one state and not admitted 
to the bar in another state is not entitled to practice before the 
Office in trademark matters on the basis of the attorney's registration 
as a patent practitioner.
    Thus, a practitioner registered with the Office as a patent 
attorney, but suspended or disbarred in the only state where the 
practitioner had been admitted to practice law, may not rely on the 
registration to continue to practice before the Office in trademark 
matters. Similarly, a practitioner registered as a patent attorney, but 
suspended or disbarred in the only state where the practitioner had 
been admitted to practice law, may not revert to registration as a 
patent agent prior to January 1, 1957, to continue to practice before 
the Office in trademark cases.
    Section 11.14(b) continues the present practice under Sec.  
10.14(b). A second sentence has been added to Sec.  11.14(b) to assure 
clarity under the present practice that, but for the one exception in 
the first sentence of this section, registration as a patent agent does 
not itself entitle an individual to practice before the Office in 
trademark matters.
    Section 11.14(c) is added to continue the present practice under 
Sec.  10.14(c), except as further clarified by the following 
provisions. The first sentence of Sec.  11.14(c) is revised to provide 
that a foreign attorney or agent not a resident of the United States 
who seeks reciprocal recognition must file a written application for 
reciprocal recognition under paragraph (f) of Sec.  11.14 and prove to 
the satisfaction of the OED Director that he or she is possessed of 
good moral character and reputation.
    Sections 11.14(d) and (e) continue the present practices under 
former sections 10.14(d) and (e), except as noted in the following 
discussion. In Sec.  11.14(e), ``on behalf of a client'' has been added 
to the end of the first sentence to make it clear that no individual is 
permitted to represent others before the Office in trademark matters 
other than those specified in paragraphs (a), (b), and (c) of this 
section.
    Section 11.14(f) is added to expressly provide for filing an 
application for reciprocal recognition under Sec.  11.14(c). This 
section codifies the practice of requiring an individual seeking 
reciprocal recognition under Sec.  11.14(c) to apply in writing to the 
OED Director for reciprocal recognition and pay the fee specified in 
Sec.  1.21(a)(1)(i).
    Section 11.15: Section 11.15 is added to provide for refusal to 
recognize a practitioner. This section continues the present practice 
under former Sec.  10.15. The second sentence makes clear that a 
practitioner who is suspended or excluded is not entitled to practice 
before the Office in patent, trademark, or other non-patent matters 
while suspended or excluded.
    Sections 11.16-11.17: Sections 11.16-11.17 are reserved.
    Section 11.18: Section 11.18(a) is added to continue the present 
practice under former Sec.  10.18(a), and extend the practice to all 
documents filed with a hearing officer in a disciplinary proceeding. 
But for specified exceptions, every document filed with the Office or a 
hearing officer in a disciplinary proceeding must bear a signature, 
personally signed by such practitioner, in compliance with Sec.  
1.4(d)(1).
    Section 11.18(b)(1) is added to continue the present practice of 
providing that a party presenting a paper certifies to the truthfulness 
of the content of his or her submissions to the Office. The term 
``party'' is not limited to practitioners, and includes

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applicants. The provisions of Sec.  11.18(b)(1) continue the present 
practice under Sec.  10.18(b)(1), except for extending the practice to 
submissions to a hearing officer in a disciplinary proceeding. Inasmuch 
as the hearing officer may be employed by another Federal agency, 
extension of the provisions of this section to submission to the 
hearing officer is believed to be appropriate. The provisions of Sec.  
11.18(b)(1) continue the present practice under Sec.  10.18(b)(1) 
except as follows. Section 11.18(b)(1) is clarified to prohibit 
``willfully and knowingly'' making false, fictitious or fraudulent 
statements or representations or ``willfully and knowingly'' making or 
using a false writing or document knowing the same to contain any 
false, fictitious, or fraudulent statement or entry. This section 
repeats an obligation all parties submitting papers to the Office 
otherwise have under 18 U.S.C. 1001. This section applies the statutory 
standard of conduct applicable to the submission of material facts in 
courts to proceedings in the Office and to disciplinary proceedings.
    Section 11.18(b)(1) also provides that whoever violates the 
provisions of Sec.  11.18(b)(1) is subject to penalties in criminal 
statutes in addition to those under 18 U.S.C. 1001. Inasmuch as an 
offending paper may have little or no probative value, Sec.  
11.18(b)(1) provides that violation of the rule may jeopardize the 
probative value of the paper.
    Unlike Sec.  10.18(b)(1), Sec.  11.18(b)(1) does not provide that 
violations of paragraph (b)(1) may jeopardize the validity of the 
application or document inasmuch as the conditions for valid 
application are set by statute. Similarly, unlike Sec.  10.18(b)(1), 
Sec.  11.18(b)(1) does not provide that violations of paragraph (b)(1) 
may jeopardize the validity or enforceability of any patent, trademark 
registration, or certificate resulting therefrom. It is unnecessary 
that the regulation remind parties of any civil jeopardy to which they 
are subject for a violation of paragraph (b)(1).
    Section 11.18(b)(2) is added to provide that a party submitting a 
paper certifies to the best of the party's knowledge, information and 
belief, formed after an inquiry reasonable under the circumstances, 
that the paper is not being presented for any improper purpose, that 
other legal contentions therein are warranted by existing law or by a 
nonfrivolous argument for the establishment of new law, that 
allegations and factual contentions have evidentiary support, and that 
denials of factual contentions are warranted on the evidence or are 
reasonably based on a lack of information or belief. Section 
11.18(b)(2) continues the current practice under former Sec.  
10.18(b)(2) except for substitution of ``any proceeding'' for 
prosecution in subsection 11.18(b)(2)(i).
    Section 11.18(c) is added to provide a non-exhaustive list of 
sanctions or actions the USPTO Director may take, after notice and 
reasonable opportunity to respond, for a violation of paragraph 
(b)(2)(i) through (b)(2)(iv) of Sec.  11.18. Section 11.18(c) continues 
some of the sanctions under former Sec.  10.18(c), including precluding 
a party or practitioner from submitting a paper, or presenting or 
contesting an issue; requiring a terminal disclaimer; or terminating 
the proceedings in the Office. Section 11.18(c) adds specific sanctions 
and actions, for example, striking the offending paper, referring a 
practitioner's conduct to the Director of Enrollment and Discipline for 
appropriate action; affecting the weight given to the offending paper; 
and terminating the proceedings in the Office.
    These sanctions in Sec.  11.18(c) 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 exhaustively 
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 11.18(d) is added to continue the present practice under 
former Sec.  10.18(d) of providing notice that any practitioner 
violating the provisions of Sec.  11.18 may also be subject to 
disciplinary action.
    Section 11.19: Section 11.19 is added to set forth the disciplinary 
jurisdiction of the Office. Section 11.19(a) sets forth a list of 
practitioners who are subject to the disciplinary jurisdiction of the 
Office. These include practitioners administratively suspended, all 
practitioners engaged in practice before the Office; practitioners 
registered to practice before the Office in patent cases; inactivated 
practitioners, practitioners authorized to take testimony; and 
practitioners who have been transferred to disability inactive status, 
reprimanded, suspended, or excluded from the practice of law. Inasmuch 
as these rules are being adopted before the adoption of Sec.  11.11(b) 
regarding administrative suspension and Sec.  11.11(c) regarding 
administrative suspension, in connection with continuing education and 
annual fees, Sec.  11.19(a) does not reference those actions. Instead, 
Sec.  11.19(a) references practitioners inactivated under Sec.  10.11. 
Also practitioners who have resigned are subject to such jurisdiction 
with respect to conduct undertaken prior to the resignation and conduct 
in regard to any practice before the Office following the resignation.
    Section 11.19(b) is added to set forth the grounds for discipline 
and grounds for transfer to disability inactive status. The grounds for 
discipline include conviction of a serious crime, Sec.  11.19(b)(1); 
discipline on ethical grounds imposed in another jurisdiction or 
disciplinary disqualification from participating in or appearing before 
any Federal program or agency, Sec.  11.19(b)(2); and failure to comply 
with any order of a Court disciplining a practitioner, Sec.  
11.19(b)(3); or any final decision of the USPTO Director in a 
disciplinary matter; violation of the mandatory Disciplinary Rules 
identified in sections 10.20(b), Sec.  11.19(b)(4); or violation of the 
oath or declaration taken by the practitioner, Sec.  11.19(b)(5).
    Section 11.19(b)(2) is added to set forth grounds for transfer to 
disability inactive status. The grounds include being transferred to 
disability inactive status in another jurisdiction; being judicially 
declared incompetent, being judicially ordered to be involuntarily 
committed after a hearing on the grounds of insanity, incompetency or 
disability, or being placed by court order under guardianship or 
conservatorship; or filing a motion requesting a disciplinary 
proceeding be held in abeyance because the

[[Page 47654]]

practitioner is suffering from a disability or addiction that makes it 
impossible for the practitioner to adequately defend the charges in the 
disciplinary proceeding.
    Section 11.19(c) is added to set forth the manner for handling 
petitions to disqualify a practitioner. This section continues the 
present practice under former Sec.  10.130(b).
    Section 11.19(d) is added to provide for the OED Director to refer 
the existence of circumstances suggesting unauthorized practice of law 
to the authorities in the appropriate jurisdiction(s).
    Section 11.20: Section 11.20 is added to set forth the disciplinary 
sanctions the USPTO Director may impose on a practitioner after notice 
and opportunity for a hearing, as well as to set forth transfer to 
disability inactive status. Section 11.20(a)(2) provides for exclusion 
from practice before the Office. Suspension may be imposed for a period 
that is appropriate under the facts and circumstances of the case. 
Section 11.20(a)(3) provides for reprimand, including both public and 
private reprimand.
    Section 11.20(a)(4) provides for probation in lieu of or in 
addition to any other disciplinary sanction. The order imposing 
probation sets forth in writing the conditions of probation as well as 
whether, and to what extent, the practitioner is required to notify 
clients of the probation. The order also establishes procedures for the 
supervision of probation. Violation of any condition of probation is 
cause for the probation to be revoked, and the disciplinary sanction to 
be imposed for the remainder of the probation period. Revocation of 
probation occurs after an order to show cause why probation should not 
be revoked is resolved adversely to the practitioner.
    Section 11.20(b) is added to provide 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 is 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 11.20(c) is added to set forth transfer to disability 
inactive status. This section provides that the USPTO Director may, 
after notice and opportunity for a hearing, and where grounds exist to 
believe a practitioner has been transferred to disability inactive 
status in another jurisdiction, or has been judicially declared 
incompetent; judicially ordered to be involuntarily committed after a 
hearing on the grounds of incompetency or disability, or placed by 
court order under guardianship or conservatorship, transfer the 
practitioner to disability inactive status.
    Section 11.21: Section 11.21 is added to codify the practice of 
issuing warnings. This section provides that a warning is not a 
disciplinary sanction. This section also provides that the ``OED 
Director may conclude an investigation with the issuance of a 
warning,'' which ``shall contain a brief statement of facts and 
imperative USPTO Rules of Professional Conduct relevant to the facts.'' 
Inasmuch as a warning is not a disciplinary sanction, a warning would 
not be made public.
    Section 11.22: Section 11.22 is added to set forth provisions 
regarding the conduct of investigations of possible grounds for 
discipline. Section 11.22(a) authorizes the OED Director to investigate 
possible grounds for discipline. This section provides that an 
investigation may be initiated when the OED Director receives a 
grievance, information or evidence from any source suggesting possible 
grounds for discipline. The section further provides that neither 
unwillingness nor neglect by a grievant to prosecute a charge, nor 
settlement, compromise, or restitution with the grievant, shall in 
itself justify abatement of an investigation.
    Section 11.22(b) provides for reporting information or evidence 
concerning possible grounds for discipline to the OED Director. Any 
person possessing information or evidence concerning possible grounds 
for discipline of a practitioner may report the information or evidence 
to the OED Director, who may request that the report be presented in 
the form of an affidavit or declaration.
    Section 11.22(c) provides that information or evidence coming from 
any source that presents or alleges facts suggesting possible grounds 
for discipline of a practitioner will be deemed a grievance.
    Section 11.22(d) provides for preliminary screening of information 
or evidence. This section provides that the ``OED Director shall 
examine all information or evidence concerning possible grounds for 
discipline of a practitioner.''
    Section 11.22(e) provides for notifying a practitioner of an 
investigation. The section provides that the ``OED Director shall 
notify the practitioner in writing of the initiation of an 
investigation into whether a practitioner has engaged in conduct 
constituting possible grounds for discipline.''
    Section 11.22(f) provides for the OED Director requesting 
information and evidence in the course of an investigation. Subsection 
11.22(f)(1) provides that in the course of conducting an investigation, 
the OED Director may request information or evidence regarding possible 
grounds for discipline of a practitioner 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.
    Subsection 11.22(f)(2) provides that the OED Director may request 
information and evidence regarding possible grounds for discipline of a 
practitioner from a non-grieving client either after obtaining the 
consent of the practitioner or upon a finding by a Contact Member of 
the Committee on Discipline, appointed in accordance with Sec.  
11.23(d), that good cause exists to believe that the possible ground 
for discipline alleged has occurred with respect to non-grieving 
clients. This section further provides that ``[n]either a request for, 
nor disclosure of, such information shall constitute a violation of any 
of the Mandatory Disciplinary Rules identified in Sec.  10.20(b) of 
Part 10 of this Subsection.''
    Section 11.22(g) provides where the OED Director makes a request 
under paragraph (f)(2) of this section to the Contact Member of the 
Committee on Discipline, the Contact Member will not, with respect to 
the practitioner connected to the OED Director's request, participate 
in the Committee on Discipline panel that renders a probable cause 
decision.
    Section 11.22(h) sets forth the actions the OED Director may take 
upon the conclusion of an investigation. The OED Director may close an 
investigation without issuing a warning or taking disciplinary action, 
issue a warning to the practitioner, institute formal charges upon 
approval of the Committee on Discipline, or enter into a settlement 
agreement with the practitioner and submit the same for approval to the 
USPTO Director.
    Section 11.22(i) provides for closing investigation without issuing 
a warning or taking disciplinary action. There are four circumstances 
under this section when the OED Director must terminate an 
investigation and decline to refer a matter to the Committee on 
Discipline. Under Sec.  11.22(i)(1), the OED Director closes an 
investigation without issuing a warning or disciplinary action upon 
determining that either the information or evidence is unfounded. Under

[[Page 47655]]

Sec.  11.22(i)(2), the OED Director closes the investigation without 
issuing a warning or taking disciplinary action when it is determined 
that the information or evidence relates to matters not within the 
jurisdiction of the Office. Under Sec.  11.22(i)(3), the OED Director 
closes the investigation without issuing a warning or taking 
disciplinary action upon determining that as a matter of law, the 
conduct about which information or evidence has been obtained does not 
constitute grounds for discipline, even if the conduct may involve a 
legal dispute. Under Sec.  11.22(i)(2)(4), the OED Director closes the 
investigation without issuing a warning or taking disciplinary action 
when the available evidence is insufficient to conclude that there is 
probable cause to believe that grounds exist for discipline.
    Section 11.23: Section 11.23 is added to provide for a Committee on 
Discipline. Section 11.23(a) provides for the Committee to be appointed 
by the USPTO Director. The Committee on Discipline consists of at least 
three employees of the Office, and none of the Committee members are 
permitted to report directly or indirectly to the OED Director or any 
employee designated by the USPTO Director to decide disciplinary 
matters. This section further provides that each Committee member must 
be a member in good standing of the bar of the highest court of a 
State. The Committee members select a Chairperson from among 
themselves. Three Committee members constitute a panel of the 
Committee.
    Section 11.23(b) sets forth the powers and duties of the Committee 
on Discipline. The Committee is empowered and has the duty to meet in 
panels at the request of the OED Director and, after reviewing evidence 
presented by the OED Director, by majority vote of the panel, determine 
whether there is probable cause to bring charges under Sec.  11.32 
against a practitioner; and to prepare and forward its own probable 
cause findings and recommendations to the OED Director.
    Section 11.23(c) provides that no discovery is authorized of, and 
no member of the Committee may be required to testify about 
deliberations of, the Committee or of any panel.
    Section 11.24: Section 11.24 is added to provide procedures for 
reciprocal discipline of a practitioner. Section 11.24(a) provides that 
a practitioner who is subject to the disciplinary jurisdiction of the 
Office and has been publicly censured, publicly reprimanded, subjected 
to probation, disbarred or suspended in another jurisdiction, or has 
been disciplinarily disqualified from participating in or appearing 
before any Federal program or agency shall notify the OED Director in 
writing of the same. This section also provides that a practitioner is 
deemed to be disbarred if he or she is disbarred, excluded on consent, 
or has resigned in lieu of a disciplinary proceeding.
    Section 11.24(a) further provides for the OED Director, upon 
receiving notification that a practitioner subject to the disciplinary 
jurisdiction of the Office has been disciplined, to obtain a certified 
copy of the record or order regarding the public censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification and file the same with the USPTO Director. The 
information received by the OED Director may come from any source, and 
therefore, the actions by OED Director are independent of whether the 
practitioner has self-reported. Without Committee on Discipline 
authorization, the OED Director can file a complaint complying with 
Sec.  11.34 with the USPTO Director against the practitioner predicated 
upon the public censure, public reprimand, probation, disbarment, 
suspension or disciplinary disqualification, and request the USPTO 
Director to issue a notice and order as set forth in Sec.  11.24(b).
    Under Sec.  11.24(a) regarding a practitioner who has been 
disqualified from participating in or appearing before any Federal 
program or agency, 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.
    Section 11.24(b) provides a procedure for initiating a reciprocal 
disciplinary proceeding. Under this section, the USPTO Director, upon 
receipt of a certified copy of the record or order regarding the 
practitioner, issues a notice directed to the practitioner in 
accordance with Sec.  11.35 and to the OED Director. The notice 
includes (1) a copy of the record or order regarding the public 
censure, public reprimand, probation, disbarment, suspension, or 
disciplinary disqualification; (2) a copy of the complaint; and (3) an 
order directing the practitioner to file a response with the USPTO 
Director and the OED Director, within forty days of the date of the 
notice, establishing a genuine issue of material fact predicated upon 
the grounds set forth in Sec. Sec.  11.24(d)(1)(i) through (d)(1)(iv) 
that the imposition of the identical public censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification 
would be unwarranted and the reasons for the claim. In conformity with 
the changes to Sec.  11.24(a), ``disciplined'' has been changed to 
``censured, publicly reprimanded, subjected to probation, disbarred, 
suspended'' in the first sentence of this section; ``public censure, 
public reprimand, probation,'' has been added to Sec.  11.24(b)(1); and 
``publicly censured, publicly reprimanded, placed on probation,'' has 
been added to Sec.  11.24(b)(3)(i).
    Section 11.24(c) sets forth the effect of a stay in another 
jurisdiction on a reciprocal disciplinary proceeding occurring in the 
Office. Under this section, if the discipline imposed by another 
jurisdiction, probation 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 
conformity with the changes to Sec.  11.24(a), ``discipline'' has been 
changed to ``censure, public reprimand, probation, disbarment, 
suspension or disciplinary disqualification'' in Sec.  11.24(c).
    Section 11.24(d) provides for a hearing and imposition of 
discipline. Under this section the USPTO Director hears the matter on 
the documentary record and imposes the identical discipline unless the 
USPTO Director determines that there is a genuine issue of material 
fact of the nature set forth in Sec. Sec.  11.24(d)(1)(i) through (iv). 
In conformity with the changes to Sec.  11.24(a), each occasion of 
``discipline'' has been changed to ``censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification'' in 
the second sentence of this section.
    The situation identified in Sec.  11.24(d)(1)(i) is that the 
procedure elsewhere was so lacking in notice or opportunity to be heard 
as to constitute a deprivation of due process. The situation identified 
in Sec.  11.24(d)(1)(ii) is 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. The situation in Sec.  11.24(d)(1)(iii) is 
that the imposition of the same discipline by the Office would result 
in grave injustice. The situation in Sec.  11.24(d)(1)(iv) is that the 
practitioner was not the person involved in the prior disciplinary 
matter. In conformity with the changes to Sec.  11.24(a), 
``discipline'' has been changed to ``censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification'' in 
Sec.  11.24(d)(1)(iii).

[[Page 47656]]

    Under Sec.  11.24(d)(2), if the USPTO Director determines that 
there is no genuine issue of material fact, the USPTO Director enters 
an appropriate final order. If the USPTO Director is unable to make 
such a determination because there is a genuine issue of material fact, 
the complaint is referred to a hearing officer for disposition and the 
practitioner is directed to file an answer to the complaint.
    Section 11.24(e) provides for the effect of the adjudication in 
another jurisdiction or Federal agency or program. This section sets 
forth that a final adjudication in another jurisdiction or Federal 
agency or program that a practitioner, whether or not admitted in that 
jurisdiction, has been guilty of misconduct shall establish a prima 
facie case for discipline or probation for purposes of a disciplinary 
proceeding in this Office. In conformity with the changes to Sec.  
11.24(a), ``discipline'' has been changed to ``censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification'' in this section.
    Section 11.24(f) sets forth the only circumstance when reciprocal 
discipline may be imposed nunc pro tunc. This section provides for 
imposing reciprocal discipline only upon the practitioner's request and 
only if the practitioner promptly notified the OED Director of his or 
her censure, public reprimand, probation, disbarment, suspension or 
disciplinary disqualification in another jurisdiction, and establishes 
by clear and convincing evidence that the practitioner voluntarily 
ceased all activities related to practice before the Office and 
complied with all provisions of Sec.  11.58. This section further 
provides that the effective date of any censure, public reprimand, 
probation, disbarment, suspension, or disciplinary disqualification 
imposed nunc pro tunc shall be the date the practitioner voluntarily 
ceased all activities related to practice before the Office and 
complied with all provisions of Sec.  11.58. In conformity with the 
changes to Sec.  11.24(a), ``discipline'' has been changed to 
``censure, public reprimand, probation, disbarment, suspension'' in the 
first sentence. In conformity with the changes to Sec.  11.24(a), in 
the second sentence, ``censure, public reprimand, probation,'' has been 
inserted before ``suspension''; a comma has been inserted after 
``suspension''; ``or'' has been inserted between ``suspension'' and 
``disbarment''; and ``or disciplinary disqualification'' has been added 
after ``disbarment.''
    Section 11.24(g) provides for reinstatement following a reciprocal 
discipline proceeding. Under this section, a practitioner may 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 is added to provide a procedure for 
interim suspension and discipline, after notice and opportunity for a 
hearing on the documentary record, based upon conviction of committing 
a serious crime. The first sentence of Sec.  11.25(a) provides that 
upon being convicted of a crime in a court of the United States, any 
state, or a foreign country, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
the same within thirty days from the date of such conviction. If the 
crime is not a serious crime, the OED Director processes the matter in 
the same manner as any other information or evidence of a possible 
violation of the Mandatory Disciplinary Rules identified in Sec.  
10.20(b) of Part 10. The reference to the Mandatory Disciplinary Rules 
of Part 10 will obtain until such time as the Rules of Professional 
Conduct are adopted, at which time this section will be amended to 
reference the imperative Rules of Professional Conduct.
    The second sentence of Sec.  11.25(a) provides that the OED 
Director, upon being advised or learning that a practitioner subject to 
the disciplinary jurisdiction of the Office has been convicted of a 
crime, must make a preliminary determination whether the crime 
constitutes a serious crime warranting interim suspension. The third 
sentence of Sec.  11.25(a) provides that where the crime is a serious 
crime, the OED Director will file with the USPTO Director proof of the 
conviction and request that the USPTO Director issue a notice and order 
as set forth in Sec.  11.25(b)(2) of this section. The fourth sentence 
of Sec.  11.25(a) provides that the OED Director must also, without 
Committee on Discipline authorization, file with the USPTO Director a 
complaint against the practitioner complying with Sec.  11.34, 
predicated upon the conviction of a serious crime. The fifth sentence 
of Sec.  11.25 provides that in the event the crime is not a serious 
crime, the OED Director must process the matter 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.
    Section 11.25(b) provides a procedure for imposing interim 
suspension and referral for disciplinary proceeding in the case of a 
practitioner convicted of a serious crime. Section 11.25(b)(1) provides 
that the USPTO Director has authority to place a practitioner on 
interim suspension, after a hearing on the documentary record.
    Section 11.25(b)(2) provides for notifying the practitioner 
convicted of commission of a serious crime with notice of the 
proceeding. The USPTO Director issues a notice to the practitioner in 
accordance with Sec.  11.35(a), (b) or (c), and to the OED Director. 
The notice contains 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 and OED Director, within 
thirty days of the date of the notice, of any genuine issue of material 
fact that the crime did not constitute a serious crime, that the 
practitioner is not the individual found guilty of the crime, or that 
the conviction was so lacking in notice or opportunity to be heard as 
to constitute a deprivation of due process.
    Section 11.25(b)(3) provides procedures for a hearing on and entry 
of a final order on the OED Director's request for interim suspension. 
The request for interim suspension is heard by the USPTO Director on 
the documentary record unless the USPTO Director determines that the 
practitioner's response establishes a genuine issue of material fact 
that the crime did not constitute a serious crime, the practitioner is 
not the person who committed the crime, or the conviction was so 
lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process. If the USPTO Director determines that there 
is no genuine issue of material fact regarding those defenses an 
appropriate final order is entered regardless of the pendency of any 
criminal appeal. Conversely, if the USPTO Director is unable to make 
such determination because there is a genuine issue of material fact, 
the USPTO Director would enter a final order dismissing the request for 
interim suspension and referring the complaint to a hearing officer for 
a hearing. Under the latter circumstances, the USPTO Director would 
also direct the practitioner to file an answer to the complaint in 
accordance with Sec.  11.36. Section 11.25(b)(4) provides the USPTO 
Director with authority to terminate an interim suspension when it is 
in the interest of justice, and upon a showing of extraordinary 
circumstances, after affording the OED Director an opportunity to 
respond to the request to terminate interim suspension.

[[Page 47657]]

    Section 11.25(b)(5) provides a procedure whereby the USPTO 
Director, upon entering an order for interim suspension, refers the 
complaint to the OED Director for institution of a formal disciplinary 
proceeding for an initial decision recommending the final disciplinary 
sanction to be imposed. The hearing officer, however, shall stay the 
disciplinary proceeding until all direct appeals from the conviction 
are concluded. Review of the initial decision of the hearing officer 
shall be pursuant to Sec.  11.55.
    Section 11.25(c) sets forth the standard for proving conviction and 
guilt. Section 11.25(c)(1) addresses conviction in the United States. 
Under this section, for purposes of a hearing for interim suspension 
and a hearing on the formal charges in a complaint filed as a 
consequence of the conviction, a certified copy of the court record, 
docket entry, or judgment of conviction in a court of the United States 
or any state establishes a prima facie case by clear and convincing 
evidence that the practitioner was convicted of the crime and that the 
conviction was not lacking in due process. Section 11.25(c)(2) 
addresses conviction in a foreign country. For purposes of a hearing 
for interim suspension and on the formal charges filed as a result of a 
finding of guilt, a certified copy of the court record, docket entry, 
or judgment of conviction in a court of a foreign country establishes a 
prima facie case by clear and convincing evidence that the practitioner 
was convicted of the crime and that the conviction was not lacking in 
due process. Nothing in this section precludes the practitioner from 
demonstrating in any hearing for interim suspension that there is a 
genuine issue of material fact to be considered when determining if the 
elements of a serious crime were committed in violating the criminal 
law of the foreign country and whether a disciplinary sanction should 
be entered.
    Section 11.25(d) provides that if the USPTO Director determines 
that the crime is not a serious crime, the complaint is to be referred 
to the OED Director for investigation under Sec.  11.22 and appropriate 
processing.
    Section 11.25(e) provides a procedure for reinstatement upon 
reversal or setting aside a finding of guilt or a conviction. Under 
Sec.  11.25(e)(1), if the practitioner demonstrates that the underlying 
finding of guilt or conviction of serious crimes has been reversed or 
vacated, the order for interim suspension is to be vacated and the 
practitioner be placed on active status unless the finding of guilt was 
reversed or the conviction was set aside with respect to less than all 
serious crimes for which the practitioner was found guilty or 
convicted. Vacating the interim suspension does not terminate any other 
disciplinary proceeding then pending against the practitioner, the 
disposition of which is determined by the hearing officer on the basis 
of all available evidence other than the finding of guilt or 
conviction. Section 11.25(e)(2) sets forth the reinstatement procedure 
for a practitioner convicted of a serious crime. The practitioner 
petitions for reinstatement under conditions set forth in Sec.  11.60 
no sooner than five years after being discharged following completion 
of service of his or her sentence, or after completion of service under 
probation or parole, whichever is later.
    Section 11.25(f), which pertains to notifying clients and others of 
a practitioner's interim suspension, by providing that an interim 
suspension under this section constitutes a suspension of the 
practitioner for the purpose of Sec.  11.58. Therefore, the 
practitioner must notify clients and others in accordance with Sec.  
11.58.
    Section 11.26: Section 11.26 is added to introduce provisions for 
settlement in disciplinary matters. Under this section a settlement 
conference may occur between the OED Director and the practitioner 
before or after a complaint is filed under Sec.  11.34. Any offers of 
compromise and any statements made during the course of settlement 
discussions are not admissible in subsequent proceedings. The OED 
Director may recommend to the USPTO Director any settlement terms 
deemed appropriate, including steps taken to correct or mitigate the 
matter forming the basis of the action, or to prevent recurrence of the 
same or similar conduct. A settlement agreement is effective only upon 
entry of a final decision by the USPTO Director.
    Section 11.27: Section 11.27 is added to provide a procedure for 
excluding a practitioner on consent. Section 11.27(a) provides that a 
practitioner who is the subject of an investigation or a pending 
disciplinary proceeding based on allegations of grounds for discipline, 
and who desires to resign, may only do so by consenting to exclusion 
and delivering to the OED Director an affidavit declaring the consent 
of the practitioner to exclusion. The content of the affidavit is set 
forth in Sec. Sec.  11.27(a)(1)(i) through 11.27(a)(3)(ii). Section 
11.27(b) provides a procedure for the USPTO Director to review, and if 
appropriate, approve the exclusion on consent. Upon approval, the USPTO 
Director enters an order excluding the practitioner on consent and 
providing other appropriate actions. Upon entry of the order, the 
excluded practitioner must comply with the requirements set forth in 
Sec.  11.58. Under Sec.  11.27(c), when an affidavit under Sec.  
11.27(a) is received after a complaint under Sec.  11.34 has been 
filed, the OED Director notifies the hearing officer. The hearing 
officer then enters an order transferring the disciplinary proceeding 
to the USPTO Director, who may enter an order excluding the 
practitioner on consent. Section 11.27(d) provides for reinstatement 
following exclusion on consent. Under this section, a practitioner 
excluded on consent under this section may not petition for 
reinstatement for five years. This section provides that an excluded 
practitioner who intends to reapply for admission to practice before 
the Office must comply with the provisions of Sec.  11.58, and apply 
for reinstatement in accordance with Sec.  11.60. This section provides 
that failure to comply with the provisions of Sec.  11.58 constitutes 
grounds for denying an application for reinstatement.
    Section 11.28: Section 11.28 is added to provide procedures for 
addressing disciplinary proceedings involving an incapacitated 
practitioner. Section 11.28(a) provides a procedure for holding a 
disciplinary procedure in abeyance because of a practitioner's 
incapacitation due to a current disability or addiction. Under Sec.  
11.28(a)(1), in the course of a disciplinary proceeding, before the 
date set for a hearing, the practitioner may file a motion requesting 
the hearing officer to enter an order holding such proceeding in 
abeyance based on the contention that the practitioner is suffering 
from a disability or addiction that makes it impossible for the 
practitioner to adequately defend the charges in the disciplinary 
proceeding. The required content of the motion is set forth in Sec.  
11.28(a)(1)(i). The time for filing and serving the OED Director's 
response, and the content of the response are set forth in Sec.  
11.28(a)(1)(ii). Section 11.28(a)(2) provides a procedure for 
disposition of the practitioner's motion. Upon granting the 
practitioner's motion, the OED Director transfers the practitioner to 
disability inactive status and publishes notice. The order may provide 
that, in the case of addiction to drugs or intoxicants, the 
practitioner will not be returned to active status absent satisfaction 
of specified conditions. Upon receipt of the order, the OED Director 
transfers the practitioner to disability inactive status, gives notice 
to the practitioner, causes notice to be published, and gives notice to 
appropriate authorities in the Office that the practitioner has been 
placed on

[[Page 47658]]

disability inactive status. The practitioner is required to comply with 
the provisions of Sec.  11.58, and not engage in practice before the 
Office in patent, trademark and other non-patent law until a 
determination is made of the practitioner's capability to resume 
practice before the Office in a proceeding under Sec. Sec.  11.28(c) or 
11.28(d). A practitioner on disability inactive status must seek 
permission from the OED Director to seek employment authorized under 
Sec.  11.58(e). Permission will be granted only if the practitioner has 
complied with all the conditions of Sec. Sec.  11.58(a) through 
11.58(d) applicable to disability inactive status. In the event that 
permission is granted, the practitioner must fully comply with the 
provisions of Sec.  11.58(e).
    Section 11.28(b) provides a procedure whereby a practitioner 
transferred to disability inactive status in a disciplinary proceeding 
may move for reactivation once a year beginning at any time not less 
than one year after the initial effective date of inactivation, or once 
during any shorter interval provided by the order issued pursuant to 
Sec.  11.28(a)(2) or any modification thereof. If the motion is 
granted, the disciplinary proceeding is resumed under a schedule 
established by the hearing officer. Section 11.28(c) sets forth the 
content of the practitioner's motion for reactivation.
    Section 11.28(d) provides a procedure whereby the OED Director may 
move to terminate a prior order holding a pending disciplinary 
proceeding in abeyance and resume a disciplinary proceeding. The OED 
Director bears the burden of showing by clear and convincing evidence 
that the practitioner is able to defend himself or herself, and the 
hearing officer will hold an evidentiary hearing if there is any 
genuine issue as to one or more material facts.
    Section 11.28(e) provides for a hearing officer to take appropriate 
action if, in deciding a motion under Sec.  11.28(b) or Sec.  11.28(d), 
the hearing officer determines that there is good cause to believe the 
practitioner is not incapacitated from defending himself or herself, or 
is not incapacitated from practicing before the Office. The appropriate 
action may in