Changes to Representation of Others Before the United States Patent and Trademark Office, 59513-59514 [E8-23908]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 73, Number 197 (Thursday, October 9, 2008)]
[Rules and Regulations]
[Pages 59513-59514]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-23908]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 10

[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; correction.

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SUMMARY: The United States Patent and Trademark Office (Office) 
published a final rule in the Federal Register on August 14, 2008, 
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. This 
document corrects omissions in that final rule and amends the Rules of 
Practice for consistency with the final rule.

DATES: Effective Date: October 9, 2008.

FOR FURTHER INFORMATION CONTACT: Harry I. Moatz, Director of Enrollment 
and Discipline (OED Director), directly by telephone (571) 272-6069, 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: The Office published a final rule in the 
Federal Register of August 14, 2008 (73 FR 47650), entitled ``Changes 
to Representation of Others Before the United States Patent and 
Trademark Office.'' In that final rule, 37 CFR 10.4 is replaced and 
supplemented by Sec.  11.23. Also in that final rule, there are several 
references to ``violation of any of the Mandatory Disciplinary Rules 
identified in Sec.  10.20(b) of this subchapter.'' This document 
corrects erroneous omissions from that final rule as discussed below.
    Section 10.4 inadvertently continued to remain in Part 10 although 
it should have been removed and reserved. Seven of the examples of 
conduct that constitute a violation of Mandatory Disciplinary Rule 
Sec.  10.23--i.e., Sec. Sec.  10.23(c)(5), (c)(6), (c)(13), (c)(14), 
(c)(15), (c)(16) and (c)(19)--and Mandatory Disciplinary Rule Sec.  
10.31(c) inadvertently continue to refer to rules in Part 10 although 
the referenced rules have been removed. They should refer to existing 
rules. This document corrects the text in the provisions of Sec. Sec.  
10.23 and 10.31 to reference the appropriate existing rules.
    The final rule is corrected as follows. Section 10.4 is removed and 
reserved (the substance of Sec.  10.4 has been transferred and 
supplanted by Sec.  11.23). Section 10.23(c)(5) changes its reference 
from ``Sec.  10.6(c)'' to ``Sec.  11.6(c)'' (the substance of the 
former Sec.  10.6(c) was transferred to Sec.  11.6(c)). Section 
10.23(c)(6) changes its reference from ``Sec.  10.158'' to ``Sec.  
11.58'' (the substance of the former Sec.  10.158 was transferred to 
Sec.  11.58). Section 10.23(c)(13) changes its

[[Page 59514]]

reference from ``Sec.  10.10(b)'' to ``Sec.  11.10(b)'' (the substance 
of the former Sec.  10.10(b) was transferred to Sec.  11.10(b)). 
Section 10.23(c)(14) changes its reference from ``Sec.  10.6'' to 
``Sec.  11.6'' (the substance of the former Sec.  10.6 was transferred 
to Sec.  11.6). Section 10.23(c)(15) changes its reference from 
``10.18'' to ``11.18'' (the substance of the former 10.18 was 
transferred to 11.18). Section 10.23(c)(16) changes its reference from 
``paragraph (b) of Sec.  10.131'' to ``Sec.  11.22(b)'' (the substance 
of the former Sec.  10.131(b) was included in Sec.  11.22(b)). Section 
10.23(c)(19) changes its reference from ``Sec.  10.10(c)'' to ``Sec.  
11.10(d)'' (the substance of the former Sec.  10.10(c) was transferred 
to Sec.  11.10(d)). Section 10.31(c) changes its reference from ``Sec.  
10.14(b)'' to ``Sec.  11.14(b)'' (the substance of the former Sec.  
10.14(b) was transferred to Sec.  11.14(b)).
    Section 553(d) of the Administrative Procedure Act (5 U.S.C. 
553(d)) ordinarily requires a 30-day delay in the effective date of 
final rules after the date of their publication in the Federal 
Register. This 30-day delay in effective date can be waived, however, 
if an agency finds for good cause that the delay is impracticable, 
unnecessary, or contrary to the public interest. The change to 37 CFR 
10.4 corrects a technical error inasmuch as the substance of Sec.  10.4 
was transferred to and supplemented by Sec.  11.23. The changes in 37 
CFR 10.23(c)(5), (c)(6), (c)(13), (c)(14), (c)(15), (c)(16) and (c)(19) 
and 10.31(c) correct a technical error in referencing sections. The 
changes in 37 CFR 10.23(c)(5), (c)(6), (c)(13), (c)(14), (c)(15), 
(c)(16) and (c)(19) and 10.31(c) do not change the conduct expected of 
practitioners from the final rule published on August 14, 2008, but 
merely correct the language consistent with the existing and intended 
text. The Office finds it impracticable to have a 30-day delayed 
effective date for these technical corrections as practitioners should 
not be misled or confused by rules referring to removed provisions of 
Part 10, and practitioners should not be expected to abide by rules 
that have been removed from Part 10. Furthermore, the Office finds that 
it is in the public's interest to correct the changes in text to avoid 
misleading constructions of the rules. Therefore, the Office is waiving 
the 30-day delay in effective date for the technical corrections in 
this notice.

0
Accordingly, the Patent and Trademark Office makes the following 
correcting amendments to 37 CFR part 10:

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE

0
1. The authority citation for 37 CFR part 10 continues to read as 
follows:

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.


Sec.  10.4  [Removed and reserved]

0
2. Section 10.4 is removed and reserved.

0
3. Section 10.23 is amended by revising paragraphs (c)(5), (c)(6), 
(c)(13), (c)(14), (c)(15), (c)(16) and (c)(19) to read as follows:


Sec.  10.23  Misconduct.

* * * * *
    (c) * * *
    (5) Suspension or disbarment from practice as an attorney or agent 
on ethical grounds by any duly constituted authority of a State or the 
United States or, in the case of a practitioner who resides in a 
foreign country or is registered under Sec.  11.6(c), by any duly 
constituted authority of:
    (i) A State,
    (ii) The United States, or
    (iii) The country in which the practitioner resides.
    (6) Knowingly aiding or abetting a practitioner suspended or 
excluded from practice before the Office in engaging in unauthorized 
practice before the Office under Sec.  11.58.
* * * * *
    (13) Knowingly preparing or prosecuting or providing assistance in 
the preparation or prosecution of a patent application in violation of 
an undertaking signed under Sec.  11.10(b).
    (14) Knowingly failing to advise the Director in writing of any 
change which would preclude continued registration under Sec.  11.6.
    (15) Signing a paper filed in the Office in violation of the 
provisions of Sec.  11.18 or making a scandalous or indecent statement 
in a paper filed in the Office.
    (16) Willfully refusing to reveal or report knowledge or evidence 
to the Director contrary to Sec.  10.24 or Sec.  11.22(b).
* * * * *
    (19) Action by an employee of the Office contrary to the provisions 
set forth in Sec.  11.10(d).
* * * * *

0
4. Section 10.31 is amended by revising paragraph (c) to read as 
follows:


Sec.  10.31  Communications concerning a practitioner's services.

* * * * *
    (c) Unless authorized under Sec.  11.14(b), a non-lawyer 
practitioner shall not hold himself or herself out as authorized to 
practice before the Office in trademark cases.
* * * * *

    Dated: October 1, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-23908 Filed 10-8-08; 8:45 am]
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