Changes to Representation of Others Before the United States Patent and Trademark Office, 67750-67759 [E8-27208]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 73, Number 222 (Monday, November 17, 2008)]
[Rules and Regulations]
[Pages 67750-67759]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-27208]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
adopting new rules governing the conduct of individuals registered to 
practice before the Office. The Office is adopting a new rule that 
provides for an annual practitioner maintenance fee for those 
recognized to practice before the Office in patent cases. These changes 
will enable the Office to maintain a roster of registered practitioners 
and, consequently, better protect the public from unqualified 
practitioners. The Office is also making conforming amendments to 37 
CFR 1.21.

DATES: Effective Date: December 17, 2008.

FOR FURTHER INFORMATION CONTACT: Harry I. Moatz , Director of 
Enrollment and Discipline (OED Director), directly by phone at (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: 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 person, agent, or attorney * * * 
who does not comply with the regulations established under section 
2(b)(2)(D) of this title. * * * 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. Section 41(d) of Title 35, United States 
Code, authorizes the establishment of fees for services related to 
patents and not otherwise specified.
    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, inter alia, an annual fee for 
practitioners and procedures for both collecting the fee and informing 
practitioners who do not pay the fee of their situation--principally 
rules 1.21, 11.8 and 11.11. One hundred sixty-three written comments 
were received. Ninety of these written comments addressed the proposed 
annual practitioner fee requirement.
    Following receipt and consideration of the comments to the proposed 
rules in the December 12, 2003 Notice regarding an annual fee and 
procedures for both collecting the fee and informing practitioners who 
do not pay the fee of their situation, the Office is prepared to 
proceed to final rule making. The fee in the final rules is referenced 
as the annual practitioner maintenance fee. The primary purposes for 
adopting a fee and procedures for both collecting the fee and informing 
practitioners who do not pay the fee of their situation is to maintain 
a roster of registered practitioners, including affording practitioners 
due process, protecting the public, preserving the integrity of the 
Office, and maintaining high professional standards.
    A registered practitioner in active status is one who is able to 
represent clients and conduct business before the USPTO in patent 
cases. To maintain active status, the practitioner would pay the annual 
practitioner maintenance fee required under Sec. Sec.  1.21(a)(7)(i) 
and 11.8(d).

[[Page 67751]]

    An individual granted limited recognition under Sec.  11.9(b) is 
one who is able to represent clients and conduct business before the 
USPTO in patent cases under specified conditions. To maintain limited 
recognition, the individual would pay the annual practitioner 
maintenance fee required under Sec. Sec.  1.21(a)(8) and 11.8(d).
    A registered practitioner in administrative inactive status or in 
voluntary inactive status would be prohibited from representing 
applicants or other parties and continuing to practice before the 
Office in patent cases. Administrative inactive status is applied only 
to a practitioner who is an employee of the USPTO, such as a patent 
examiner, and to judges. Voluntary inactive status is available to 
practitioners who have retired or are unable to continue their 
practice, but still desire to maintain a recognized professional 
association with the USPTO. Neither administrative inactive status nor 
voluntary inactive status is available to persons having limited 
recognition.
    A registered practitioner under administrative inactive status is 
not responsible for payment of the annual practitioner maintenance fee 
while in this status. A registered practitioner under voluntary 
inactive status is responsible for paying a reduced annual practitioner 
maintenance fee during the period of inactivation. For the purposes of 
this section, the fee for a registered practitioner in voluntary 
inactive status is $25. If a condition occurs that automatically 
terminates a practitioner's administrative inactive status, e.g., 
separation from the USPTO, it would be permissible for that 
practitioner to seek a voluntary inactive status where the practitioner 
does not intend to represent clients and practice before the Office but 
still desires to maintain a professionally recognized association with 
the Office.
    A registered practitioner who failed to pay the annual practitioner 
maintenance fee required under Sec.  11.8(d) would be administratively 
suspended. A registered practitioner under active status can be 
administratively suspended for failure to comply with payment of the 
annual practitioner maintenance fee. A registered practitioner under 
voluntary inactive status can be administratively suspended for failure 
to comply with payment of the reduced annual practitioner maintenance 
fee. An individual granted limited recognition who failed to pay the 
annual practitioner maintenance fee required under Sec.  11.8(d) would 
be administratively suspended.
    The final rules will be applied as of the effective date of the 
final rules, without retroactive effect. For example, a person 
registered in the fiscal year in which the final rules become effective 
would not be required to pay the annual practitioner maintenance fee in 
that fiscal year. A further example is that unless a registered 
practitioner is in administrative inactive status or voluntary inactive 
status in the fiscal year in which the final rules become effective, a 
registered practitioner must pay the annual practitioner maintenance 
fee for active status. Still, a further example is that if the final 
rules become effective in fiscal year 2009, no fees under the final 
rules are due for fiscal year 2008. For purposes of these rules, the 
fiscal year begins on October 1 and ends on September 30.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 11, is amended as 
follows: Paragraph (d) of Sec.  11.8 introduces an annual practitioner 
maintenance fee to be paid by registered practitioners in active status 
and persons granted limited recognition under Sec.  11.9(b) to practice 
in patent cases before the Office. The amount of the fee is set forth 
in Sec. Sec.  1.21(a)(7)(i) and 1.21(a)(8), respectively. Adequate 
notice of the due date for the annual practitioner maintenance fee will 
be published and sent to practitioners in advance. Failure to comply 
with these rules would subject a registered practitioner or person 
granted limited recognition to administrative suspension set forth in 
Sec.  11.11(b). In the past, the fees paid by applicants and patentees 
have supported the costs of the activities that maintain the patent 
practitioner's community reputation for integrity. The annual 
practitioner maintenance fee is introduced pursuant to 35 U.S.C. 
2(b)(2)(D) and 41(d). The annual practitioner maintenance fee will 
recover the estimated average cost to the Office for the roster 
maintenance process, including the costs of operating the disciplinary 
system. Maintaining the roster of registered practitioners up-to-date 
includes, for example, (i) processing additions to and deletions from 
the roster, (ii) maintaining current practitioner address/telephone/e-
mail information, (iii) daily updating the roster with new changes of 
address, (iv) conducting investigations of alleged practitioner 
misconduct, and (v) conducting disciplinary proceedings against 
practitioners. With an annual practitioner maintenance fee, the Office 
will fund the disciplinary system as State disciplinary jurisdictions 
do, by fees from the bar members. Bar disciplinary activities are 
generally regarded as being in the interest of maintaining the Bar's 
reputation for integrity and supporting the willingness of potential 
clients to engage the services of practitioners. The continual updating 
of the USPTO roster is also in the interest of assuring that registered 
practitioners are identified to the public they seek and are authorized 
to serve. It is problematic to charge patent applicants for this 
activity since few patent applicants file grievances against 
practitioners. Many of the filed grievances concern patent applications 
that were not filed; applications that were filed or prosecuted 
improperly; applications that should not have been filed in the first 
place; or patent applicants who have not received the benefit of 
competent counsel. The anomaly is magnified by the need for 
disciplinary action concerning practitioners who have been convicted of 
felonies or have been disciplined by state bars for matters other than 
practice before the Office. By adopting an annual practitioner 
maintenance fee to be paid by registered practitioners, the cost of 
these activities is focused on those served by the roster maintenance 
and disciplinary system--registered practitioners, not applicants. 
Thus, USPTO will recover the costs associated with these activities 
from the practitioners instead of the public in general. The funds 
received from the annual practitioner maintenance fee would be directed 
to this process. The annual practitioner maintenance fee would not be 
imposed on persons during the fiscal year in which they are first 
registered or recognized to practice before the Office.
    Paragraph (a) of Sec.  11.11 provides for requiring practitioners 
to notify the OED Director of their postal address and telephone number 
for his or her business, as well as every change thereto. Additionally, 
it requires practitioners to notify the OED Director of up to three e-
mail addresses for their business and every change to their e-mail 
addresses. Notice of the change of address or telephone number must be 
given within thirty days of the date of the change. Practitioners are 
encouraged to provide their business e-mail address to facilitate the 
Office's ability to communicate with the practitioners. A practitioner 
who is an attorney in good standing with the bar of the highest court 
of one or more states is also required to provide the OED Director with 
the state bar identification number associated with each membership. 
This will enable the OED Director to distinguish between individual

[[Page 67752]]

attorneys having the same or similar names. Further, the section 
identifies the information that the OED Director will routinely publish 
on the roster about each registered practitioner recognized to practice 
before the Office in patent cases.
    Paragraph (b) of Sec.  11.11 provides for administrative suspension 
for failure to comply with the payment of the annual practitioner 
maintenance fee required by Sec.  11.8(d).
    Paragraph (b)(1) of Sec.  11.11 provides that the OED Director will 
mail a notice to the practitioner advising of noncompliance, stating 
the consequences of administrative suspension under paragraph (b)(5) of 
this section if noncompliance is not timely remedied, and the 
requirements for reinstatement under paragraph (f) of this section. The 
notice also will demand compliance within sixty days and payment of a 
delinquency fee. The notice also will be published. Paragraph (b)(1) of 
Sec.  11.11 introduces payment of the delinquency fee. The amount of 
the fee is set forth in Sec.  1.21(a)(9)(i). The amount of the fee is 
set to recover the estimated average cost to the Office for processes 
associated with a practitioner who is delinquent in payment of the 
annual practitioner maintenance fee.
    Paragraph (b)(2) of Sec.  11.11 provides that upon failure to 
comply with the notice and demand within the allowed time, the OED 
Director will send to the attorney, agent or person granted limited 
recognition a Rule to Show Cause as to why he or she should not be 
administratively suspended and no longer permitted to practice before 
the Office in patent matters, or hold himself or herself out as being 
registered or recognized to practice before the Office in patent 
matters. The OED Director shall file a copy of the Rule to Show Cause 
with the USPTO Director.
    Paragraph (b)(3) of Sec.  11.11 provides that, within 30 days of 
the OED Director sending the Rule to Show Cause, the attorney, agent or 
person granted limited recognition may file a response to the Rule to 
Show Cause with the USPTO Director and, if so, that the OED Director 
may file a reply thereto. Under this section the USPTO Director hears 
the matter on the documentary record and imposes the administrative 
suspension unless the USPTO Director determines that there is a genuine 
issue of material fact regarding notice or the failure to pay the 
requisite fees.
    Paragraph (b)(4) of Sec.  11.11 provides that an administratively 
suspended attorney, agent or person granted limited recognition 
continues to be responsible for paying his or her annual practitioner 
maintenance fee required by Sec.  11.8(d).
    Paragraph (b)(5) of Sec.  11.11 provides that an administratively 
suspended attorney, agent or person granted limited recognition remains 
subject to investigation and discipline for his or her conduct prior 
to, during, or after the period he or she was administratively 
suspended.
    Paragraph (b)(6) of Sec.  11.11 provides that an administratively 
suspended attorney, agent or person granted limited recognition cannot 
practice before the Office in patent cases while under administrative 
suspension. An administratively suspended attorney, agent or person 
granted limited recognition who does not promptly obtain reinstatement 
must comply with applicable ethics rules concerning withdrawal from 
representation. An administratively suspended attorney, agent or person 
granted limited recognition who knows he or she has been 
administratively suspended will be subject to discipline for failing to 
comply with the provisions of this paragraph.
    Paragraph (c)(1) of Sec.  11.11 provides for administrative 
inactivation of a registered practitioner who becomes employed by the 
Office. The practitioner is not responsible for payments of the annual 
practitioner maintenance fee each complete fiscal year while the 
practitioner is in administratively inactive status.
    Paragraph (c)(2) of Sec.  11.11 provides for administrative 
inactivation of a registered practitioner who is a judge of a court of 
record, full-time court commissioner, U.S. bankruptcy judge, U.S. 
magistrate judge, or a retired judge who is eligible for temporary 
judicial assignment and is not engaged in the practice of law. The 
practitioner is not responsible for payments of the annual practitioner 
maintenance fee each complete fiscal year while the practitioner is in 
administratively inactive status.
    Paragraph (d) of Sec.  11.11 provides for voluntary inactivation of 
a registered practitioner. This section accommodates a registered 
practitioner who, at the time of the request, does not represent 
clients before the USPTO but still desires to maintain a recognized 
professional association with the USPTO. The USPTO will not inquire 
into reasons for seeking voluntary inactivation except that voluntary 
inactivation will be denied if the practitioner is delinquent in paying 
an annual practitioner maintenance fee or a delinquency fee. Voluntary 
inactivation will not preclude the USPTO from inquiring or continuing 
to inquire into possible ethical violations by the practitioner or 
imposing discipline therefor. Reasons for seeking voluntary 
inactivation may include retirement, health condition of the 
practitioner (long-term illnesses), or a practitioner's decision to 
practice in another substantive area.
    Paragraph (d)(1) of Sec.  11.11 provides that a registered 
practitioner may seek voluntary inactivation by filing a written 
request to be endorsed as inactive.
    Paragraph (d)(2) of Sec.  11.11 provides that a registered 
practitioner whose status has been changed to a voluntary inactive 
status continues to be responsible for paying his or her annual 
practitioner maintenance fee required by Sec.  11.8(d) for such status. 
Paragraph (d)(2) of Sec.  11.11 introduces payment of the annual 
practitioner maintenance fee for inactive status. The amount of the 
fee, $25, is set forth in Sec.  1.21(a)(7)(ii). The amount of the fee 
is set to recover the estimated average cost to the Office for 
processes associated with a practitioner who is in inactive status.
    Paragraph (d)(3) of Sec.  11.11 provides that a registered 
practitioner in voluntary inactive status is still subject to 
investigation and discipline for ethical violations during the period 
of inactivation.
    Paragraph (d)(4) of Sec.  11.11 provides that a registered 
practitioner in arrears in annual practitioner maintenance fees or 
under administrative suspension for fee delinquency is ineligible to 
seek or enter into voluntary inactive status.
    Paragraph (d)(5) of Sec.  11.11 provides that a registered 
practitioner may not practice before the Office in patent cases while 
under voluntary inactive status. A practitioner in voluntary inactive 
status will be subject to discipline for failing to comply with the 
provisions of this paragraph. A voluntary inactive practitioner must 
comply with applicable ethics rules concerning withdrawal from 
representation.
    Paragraph (d)(6) of Sec.  11.11 provides for restoration to active 
status of a registered practitioner who is in voluntary inactive status 
in accordance with Sec.  11.11(d). Paragraph (d)(6) of Sec.  11.11 
introduces payment of the fee for requesting restoration to active 
status from voluntary inactive status. The amount of the fee is set 
forth in Sec.  1.21(a)(7)(iii). The amount of the fee is set to recover 
the estimated average cost to the Office for processing the request. 
The Office provides options for practitioners who are no longer 
attorneys in good standing at their state bars but seek active status 
before the USPTO. Since practitioners before the USPTO need not be 
attorneys, a practitioner who has ceased to be a

[[Page 67753]]

member in good standing of the bar of the highest court of a state for 
reasons other than ethical grounds may still seek to represent clients 
in patent matters before the USPTO as a patent agent. It becomes 
necessary to ensure that attorneys who are no longer members in good 
standing in a state bar explain the basis of such status when seeking 
restoration to active status before the USPTO. This section seeks to 
avoid the possibility that an attorney under a disciplinary proceeding 
or investigation in another disciplinary jurisdiction circumvents the 
obligation of informing the USPTO of any matter that detrimentally 
impacts the determination of the practitioner's moral character.
    Any registered practitioner who is voluntarily inactivated pursuant 
to paragraph (d) of this section and who is a licensed attorney may 
comply with the submission of information and material pertaining to 
the practitioner's moral character on proof of being a member in good 
standing with the highest court of each state in which the practitioner 
is licensed to practice. If the registered practitioner is no longer a 
member in good standing of the highest court of another jurisdiction, 
the practitioner must submit a signed declaration or affidavit 
explaining the circumstances surrounding the practitioner's status in 
the other jurisdiction to the satisfaction of the OED Director that the 
reason for not being a member in good standing is not predicated on 
moral character. If the statement submitted is not to the satisfaction 
of the OED Director, the OED Director may decline restoration to active 
status on grounds of present lack of good moral character and 
reputation as set forth in Sec.  11.7. An adverse decision by the OED 
Director is reviewable under Sec.  11.2. This does not preclude the 
practitioner from submitting additional evidence to establish the 
requisite moral character.
    Paragraph (d)(6) of Sec.  11.11 also introduces payment of balance 
due upon restoration to active status from voluntary inactive status. 
The amount of the fee is set forth in Sec.  1.21(a)(7)(iv). The amount 
of the fee is set to recover the balance of the estimated average cost 
to the Office for maintaining the roster. It is the difference between 
the annual practitioner maintenance fee for registered attorney or 
agent in active status, $118, and the annual practitioner maintenance 
fee for registered attorney or agent in voluntary inactive status, $25. 
The annual practitioner maintenance fee has increased from $100 
proposed in December 2003, to $118 adopted in the final rules. In the 
nearly five years since the fee was proposed, the number of registered 
practitioners has increased from 28,835 in December 2003 to more than 
36,400 in July 2008, and the staff of the Office of Enrollment and 
Discipline has been increased to maintain the enlarging roster of 
registered practitioners. The increase in the fee is a reflection of 
changes in the consumer price index and staffing adjustments from the 
time the rule was proposed.
    Paragraph (e) of Sec.  11.11 allows for resignation from practice 
before the Office of a registered practitioner who is neither under 
investigation under Sec.  11.22 for a possible violation of the 
Mandatory Disciplinary Rules identified in Sec.  10.20(b) of Part 10, 
subject to discipline under Sec.  11.24 or Sec.  11.25, nor subject to 
an adverse probable cause determination by a panel of the Committee on 
Discipline under Sec.  11.23(b).
    Paragraph (f) of Sec.  11.11 establishes a procedure for 
administrative reinstatement of a registered practitioner who has been 
administratively suspended pursuant to Sec.  11.11(b) or who has 
resigned pursuant to Sec.  11.11(d). Paragraph (f) provides for payment 
of the annual practitioner maintenance fee set forth Sec.  1.21(a)(7) 
for registered patent attorneys or agents, or the annual practitioner 
maintenance fee set forth in Sec.  1.21(a)(8) for persons granted 
limited recognition. Paragraph (f) of Sec.  11.11 also introduces 
payment of both the delinquency fee and the administrative 
reinstatement fee by the practitioner. The amount of the delinquency 
fee is set forth in Sec.  1.21(a)(9)(i). The amount of the 
administrative reinstatement fee is set forth in Sec.  1.21(a)(9)(ii). 
The amount of the delinquency fee is set to recover the estimated 
average cost to the Office for processes associated with a practitioner 
who is delinquent in payment of annual practitioner maintenance fee. 
The amount of the administrative reinstatement fee is set to recover 
the estimated average cost to the Office for processes associated with 
an application for reinstatement. A practitioner who resigned or was 
administratively suspended for two or more years before the date the 
Office receives a completed application from the person must also pass 
the registration examination under Sec.  11.7(b)(1)(ii).
    Response to comments: The Office published a notice proposing 
changes to the Office's rules governing disciplinary proceedings for 
attorneys, registered patent agents and persons granted limited 
recognition to practice before the Office. See Changes to 
Representation of Others Before the United States Patent and Trademark 
Office; Notice of proposed rulemaking, 68 FR 69442 (Dec. 12, 2003), 
1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) (proposed rule). The 
Office received one hundred sixty-three comments (from intellectual 
property organizations and patent practitioners) in response to this 
notice. The Office's responses to the ninety comments regarding an 
annual practitioner maintenance fee follow:
    Comment 1: A number of comments noted that the staggered quarterly 
schedule of annual fee due dates set forth in the proposed rule would 
create an undue administrative burden on practitioners, particularly 
those who practice in large law firms, and would increase the 
possibility of confusion and inadvertent nonpayment of the fee. The 
comments indicated a single due date for all practitioners would reduce 
the administrative burden on practitioners and the Office, and would 
reduce the risk of inadvertent nonpayment.
    Response: The suggestion in the comments has been adopted. The 
staggered quarterly schedule has been eliminated in favor of a single 
annual due date for all practitioners.
    Comment 2: A large number of comments, citing past history, raised 
concern that annual practitioner maintenance fee payments would be 
diverted, and therefore opposed the annual practitioner maintenance fee 
on the basis that the fees would not be used to operate the roster 
maintenance process, including the disciplinary system.
    Response: The USPTO has operated with full access to fee 
collections for the past four years. Annual practitioner maintenance 
fees collected under section 11.8(d) will be used to support 
maintenance of the roster of registered attorneys and agents, including 
the disciplinary system.
    Comment 3: Several comments raised concern that proposed section 
11.8(d) did not require separate notice to practitioners of the payment 
due date and, therefore, that practitioners would be more likely to 
inadvertently overlook payment of the fee.
    Response: The suggestion to add a specific notice provision in 
section 11.8(d) has been adopted. Adequate notice of the due date will 
be sent to each practitioner at the last address provided pursuant to 
Sec.  11.11(a) and will be published in the Official Gazette as well. 
It is expected that notice will also be published on the USPTO internet 
Web site. Pursuant to section 11.11(a), to ensure proper delivery of 
notices potentially affecting a practitioner's status, practitioners 
are required to update contact information within 30 days of a change. 
The USPTO has

[[Page 67754]]

implemented an on-line customer interface that will allow a 
practitioner to access his or her records with a username and password 
and to directly update address and contact information. Additionally, 
under 11.11(b)(1), whenever it appears that a registered patent 
attorney, a registered patent agent or a person granted limited 
recognition has failed to comply with Sec.  11.8(d), the OED Director 
shall publish and send a notice to the attorney, agent or person 
granted limited recognition advising of the noncompliance, the 
consequence of being administratively suspended under paragraph (b)(5) 
of this section if noncompliance is not timely remedied, and the 
requirements for reinstatement under paragraph (f) of this section. The 
notice shall be published and sent to the attorney, agent or person 
granted limited recognition by mail to the last postal address 
furnished under paragraph (a) of this section or by e-mail addressed to 
the last e-mail addresses furnished under paragraph (a) of this 
section.
    Comment 4: Several comments raised concern as to potential 
prejudice to clients in cases where an attorney handling a matter 
continues to make submissions to the USPTO after the attorney has been 
administratively suspended for failure to pay the annual fee and 
inquired as to how the USPTO would treat such submissions.
    Response: Individuals representing others before the Office are 
expected at all times to meet the requirements for practice before the 
Office. Maintaining good standing and accurate contact information is 
the responsibility of the practitioner. Practitioners who properly 
update contact information on file with the Office of Enrollment and 
Discipline should receive ample notice of deadlines for payment of the 
annual practitioner maintenance fee and missed payment before the 
practitioner would be administratively suspended. A practitioner who 
has been administratively suspended may request an active member in his 
or her firm to timely file papers requiring a practitioner's signature. 
Nonetheless, a paper submitted in good faith by a practitioner who does 
not know that he or she has been administratively suspended for failure 
to pay the annual practitioner maintenance fee will be treated as 
unsigned. In the case of a new complete application, the applicant will 
receive a filing date because the signature of an attorney or agent on 
transmittal papers is not required. In the case of an unsigned bona 
fide response to an Office action, the submission will be treated in 
accordance with 37 CFR 1.135(c), and applicant may be given a new 
period of time to supply the omission. Practitioners should be aware, 
however, that submission of a response having an omission may affect 
patent term adjustment pursuant to 37 CFR 1.704(c)(7). In the case of 
an issue fee payment, an unsigned issue fee transmittal form may lead 
to abandonment of the application, in which case a petition to revive 
would be required.
    Comment 5: Several comments asserted government patent attorneys 
and agents earn considerably less than the average annual income of 
patent attorneys and agents in the United States, and indicated a 
proposed $100 annual fee therefore would be excessively burdensome on 
government patent attorneys and agents. The comment suggested a reduced 
annual fee for attorneys and agents employed by the government. Similar 
comments were received with respect to part-time practitioners, solo 
practitioners and small law firms.
    Response: The suggestion of a reduced annual practitioner 
maintenance fee for specific groups of active practitioners has not 
been adopted. The assertion in the comment that the average annual 
income for government patent attorneys and agents of approximately 
$80,000 is not supported in the comment. In any event, a $118 annual 
practitioner maintenance fee for an individual with an annual income of 
$80,000 represents about one seventh of one percent of the annual 
income, which will not have a significant economic impact on a 
substantial number of practitioners. The costs of maintaining the 
roster, including conducting disciplinary investigations regarding 
practitioners in such groups, is independent of the practitioner's 
income. Accordingly, having a single fee for all active practitioners 
is appropriate and fair.
    Comment 6: Several comments suggested the annual practitioner 
maintenance fee should not be instituted because collection of an 
annual practitioner maintenance fee would increase the administrative 
burden on the Office of Enrollment and Discipline, thereby offsetting 
the collected fees with increased administrative costs.
    Response: The suggestion has not been adopted. The Office of 
Enrollment and Discipline has developed a system for payment of annual 
fees through an on-line customer interface that will allow a 
practitioner to submit payments directly. Additionally, law firm or 
corporate administrators will be able to submit payments on behalf of 
multiple practitioners. The system will minimize the administrative 
burden on the Office of Enrollment and Discipline. Moreover, the on-
line customer interface will allow a practitioner to directly update 
address and other contact information, further reducing the 
administrative burden of the Office by obviating the need for periodic 
surveys pursuant to Sec.  10.11 and the reinstatement fee previously 
set forth in Sec.  1.21(a)(3). Annual fee payment also may be submitted 
by mail or by hand delivery. It is also noted the $118 annual 
practitioner maintenance fee is not calculated to pay for the cost of 
administering a continuing education program for practitioners.
    Comment 7: Several comments asserted Congress has not provided 
statutory authorization for the collection of an annual fee assessed 
against practitioners.
    Response: The annual practitioner maintenance fee is authorized 
pursuant to the provisions of 35 U.S.C. 2(b)(2)(D) and 41(d).
    Comment 8: Several comments suggested State bar associations carry 
out a broader range of services than does the Office of Enrollment and 
Discipline, and therefore asserted that an annual practitioner 
maintenance fee is unwarranted.
    Response: The $118 annual practitioner maintenance fee is 
calculated on the basis of the cost of maintaining the roster, 
including the disciplinary system. The $118 figure is not based on 
services that are not provided by the Office of Enrollment and 
Discipline.
    Comment 9: Several comments indicated the annual practitioner 
maintenance fee discriminates against patent practitioners over 
trademark attorneys.
    Response: The Office does not maintain a roster of U.S. attorneys 
authorized to represent others before the Office in trademark and other 
non-patent matters, and therefore these individuals impose a lesser 
administrative burden. The vast majority of disciplinary investigations 
and actions involve registered practitioners. To the extent an 
unregistered practitioner is involved in a disciplinary proceeding, the 
Office has the authority to seek to recover the cost of the proceeding 
directly from the unregistered practitioner.
    Comment 10: One comment asserted that many practitioners never 
practice before the Office, but nonetheless find value in maintaining 
registration because clients often prefer to have registered patent 
practitioners handling their matters. The comment suggested such 
individuals would rarely be the

[[Page 67755]]

basis of disciplinary proceedings at the Office and therefore should 
not have to pay an annual practitioner maintenance fee.
    Response: The Office incurs the same administrative cost of 
maintaining the roster for practitioners who never practice as well as 
active practitioners. Moreover, disciplinary proceedings are not 
limited to conduct arising out of practice directly before the Office, 
and a practitioner who does not practice may have an increased 
possibility of client complaints stemming from unfamiliarity with 
Office practice. It is noted that a practitioner has the option of 
requesting voluntary inactive status under section 11.11(d) if the 
practitioner is not actively representing others in patent matters 
before the Office.
    Comment 11: Several comments suggested there should be no annual 
practitioner maintenance fee for individuals in voluntary inactive 
status, and indicated the reduced annual practitioner maintenance fee 
for voluntary inactive practitioners should be eliminated.
    Response: The suggestion has not been adopted. The Office continues 
to incur administrative costs in maintaining voluntary inactive 
practitioners on the roster, and voluntary inactive practitioners may 
be the subject of disciplinary investigation.
    Comment 12: A number of comments asserted the cost of administering 
the roster and operating the disciplinary system should continue to be 
funded from application fees because practitioners will simply pass the 
cost of the annual practitioner maintenance fee on to clients as an 
overhead expense.
    Response: The suggestion has not been adopted. Like state bars, the 
cost of administering the roster, including operating the Office 
disciplinary system, is properly borne primarily by practitioners 
rather than pro se applicants and other applicants.
    Comment 13: Several comments asserted registration is a one-time 
event and suggested the costs of maintaining the roster and operating 
the disciplinary system should be recovered solely from fees collected 
at the time a practitioner applies for registration and initial 
registration fees.
    Response: The suggestion has not been adopted. Fees collected at 
the time a practitioner applies for registration (i.e., application fee 
and examination fee) recover the cost of processing applications for 
registration and administering the registration examination; the 
initial registration fee recovers the administrative costs of initial 
registration. Maintaining the roster, including the disciplinary 
system, are not one-time events; they are ongoing processes incurring 
ongoing costs.
    Comment 14: One comment indicated the annual practitioner 
maintenance fee should not be implemented because it would create an 
economic disincentive discouraging students and unemployed scientists 
from taking and passing the registration examination.
    Response: The suggestion has not been adopted. Persons newly 
registered are not liable for annual practitioner maintenance during 
the fiscal year in which they are first registered. Individuals may 
choose to go on voluntary inactive status if they are not practicing.
    Comment 15: One comment asserted a practitioner may not be 
administratively suspended for failure to pay an annual practitioner 
maintenance fee without first being afforded notice and the opportunity 
for a hearing.
    Response: Under Sec. 11.11(b), practitioners will be given advance 
notice of an impending administrative suspension as well as the 
opportunity for a hearing.
    Comment 16: One comment suggested administrative suspension for 
failure to pay an annual practitioner maintenance fee would infringe on 
the right to free speech by preventing the administratively suspended 
practitioner from talking to another person about a patent application.
    Response: An administratively suspended practitioner would be 
prohibited from practicing before the Office. The administratively 
suspended practitioner would not be prohibited from talking to another 
person about a patent application so long as the discussion does not 
constitute the practice of law before the Office.

Rule Making Considerations

    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law, United States Patent and Trademark Office, certified to the Chief 
Counsel for Advocacy, Small Business Administration, that the changes 
in this final rule will not have a significant impact on a substantial 
number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). 
The provisions of the Regulatory Flexibility Act relating to the 
preparation of a regulatory flexibility analysis are not applicable to 
this final rule because the rule will not have a significant economic 
impact on a substantial number of small entities.
    The final rule assesses a $118 annual practitioner maintenance fee 
upon registered attorneys and agents in active status and individuals 
granted limited recognition under 37 CFR 11.9(b). The Office estimates 
that approximately 37,000 practitioners will be subject to this fee 
under the final rule. The Office estimates that, in 2006, the average 
annual income in the United States of solo practitioners was $231,777; 
of patent attorneys who are partners in private firms, $434,464; of 
patent attorneys who are associates in private firms, $152,677; and of 
corporate IP attorneys, $198,109; and the average annual salary of 
patent agents in a firm in the United States was $92,761. AIPLA Report 
of the Economic Survey 2007, pp. 10, I-21, I-35, I-58 and F-25 (2007). 
Because the annual practitioner maintenance fee is less than one 
seventh of one percent of practitioners having an average annual income 
of $92,761 or more, this fee will not have a significant economic 
impact on practitioners.
    It is estimated that annually about 150 practitioners will be in 
voluntary inactive status. Practitioners who choose voluntary inactive 
status are not required to pay the $118 annual practitioner maintenance 
fee. Rather, these practitioners must pay a $25 annual practitioner 
maintenance fee that will be assessed annually to registered attorneys 
and agents in voluntary inactive status. The Office estimates that the 
average income of an inactive practitioner in 2006 would have been 
comparable to the average income of a household the same year, $66,570. 
Income, Poverty, and Health Insurance Coverage in the United States: 
2006, Current Population Reports, Consumer Income, U.S. Department of 
Commerce, pp. 27-29 (2007). The $25 annual practitioner maintenance fee 
assessed annually to registered attorneys and agents in voluntary 
inactive status is less than four one-hundredth of one percent of a 
household's annual income. Thus, this fee does not have a significant 
economic impact on a substantial number of small entities.
    It is estimated that annually about ten practitioners in voluntary 
inactive status will request restoration to active status. The final 
rule imposes a $50 fee for requesting restoration to active status from 
voluntary inactive status. As previously noted, the Office estimates 
that, in 2008, the average annual income of patent attorneys in the 
United States is over $100,000, and the average annual income of patent 
agents in the United States is over $90,000. Thus, the $50 fee for 
requesting restoration to active status from involuntary status does 
not have a significant economic impact on a substantial number of small 
entities.
    It is also estimated that the requests of all practitioners in 
voluntary inactive status for restoration to active status will

[[Page 67756]]

be granted. Thus, these practitioners (the Office estimates that there 
will be ten) must then pay the balance of the annual practitioner 
maintenance fee. These practitioners must pay an additional $93 fee for 
the balance due upon restoration to active status from voluntary 
inactive status ($118 minus the $25 inactive status fee already paid). 
As previously noted, the total fee of $118 will not have a significant 
economic impact on practitioners because it represents less than one 
seventh of one percent of practitioners having an average annual income 
of $92,761 or more. In addition, since only approximately ten 
practitioners out of approximately 37,000 practitioners are expected to 
be affected by this fee, this fee in the final rule will not impact a 
substantial number of small entities.
    It is estimated that about 175 practitioners will be delinquent in 
paying their annual practitioner maintenance fee. The final rule 
imposes a $50 delinquency fee. This fee can be avoided in its entirety 
by simply paying the annual fee in a timely manner.
    It is estimated that about 100 practitioners delinquent in paying 
their annual practitioner maintenance fee will be administratively 
suspended and will seek administrative reinstatement. The final rule 
imposes a $100 administrative reinstatement fee. Again, this fee can be 
avoided in its entirety by simply paying the annual fee prior to 
administrative suspension.
    Even assuming that a practitioner chooses to switch from inactive 
to active status, and chooses to pay the fees late (by incurring a 
delinquency fee, administrative reinstatement fee and annual 
practitioner maintenance fee), the highest dollar amount assessed to 
any practitioner in this situation would be $268. It is estimated that 
only about 100 practitioners would be required to pay all of these 
fees. Given that the Office estimates the average annual income of 
patent attorneys in the United States is over $100,000, and the average 
annual income of patent agents in the United States is over $90,000, 
the total impact of all fees in this final rule does not have a 
significant economic impact on a substantial number of small entities.
    Executive Order 13132: This notice of final rule making does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(August 4, 1999).
    Executive Order 12866: This notice of final rule making has been 
determined to be significant for purposes of Executive Order 12866 
(September 30, 1993).
    Paperwork Reduction Act: This notice of final rule making involves 
information collection requirements which are subject to review by the 
Office of Management and Budget (OMB) under the Paperwork Reduction Act 
of 1995 (44 U.S.C. 3501 et seq.). This notice of final rule making 
contains revisions governing the payment of an annual practitioner 
maintenance fee by patent practitioners to recover the costs of 
maintaining a roster of persons authorized to practice in patent cases 
before the USPTO and the costs of operating the USPTO disciplinary 
system. The principal impact of the changes in this notice of final 
rule making is on registered practitioners and individuals otherwise 
recognized to practice in patent cases before the USPTO. The 
information collections involved in this proposed rule have been 
previously reviewed and approved by OMB under OMB control number 0651-
0012. The proposed revisions do not affect the information collection 
requirements for 0651-0012, so the USPTO is not resubmitting the 
collection to OMB for review and approval.
    The title, description, and respondent description of the currently 
approved information collections for 0651-0012 are shown below with 
estimates of the annual reporting burdens. Included in the estimates is 
the time for reviewing instructions, gathering and maintaining the data 
needed, and completing and reviewing the collection of information.
    OMB Number: 0651-0012.
    Title: Admittance to Practice and Roster of Registered Patent 
Attorneys and Agents Admitted to Practice Before the Patent and 
Trademark Office (USPTO).
    Form Numbers: PTO-158, PTO-158A, PTO-275, PTO-107A, PTO-1209, PTO-
2126, PTO-2149, and PTO-2150.
    Type of Review: Approved through December of 2010.
    Affected Public: Individuals or households, businesses or other 
for-profit, Federal Government, and state, local, or tribal 
governments.
    Estimated Number of Respondents: 72,122.
    Estimated Time per Response: 5 minutes to 40 hours.
    Estimated Total Annual Burden Hours: 89,475 hours.
    Needs and Uses: The public uses the forms in this collection to 
ensure that all of the necessary information is provided to the USPTO 
and to request inclusion on the Register of Patent Attorneys and 
Agents.
    Comments are Invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Harry I. Moatz, Director of Enrollment and Discipline, Mail 
Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, or to the Office of Information and 
Regulatory Affairs, Office of Management and Budget, New Executive 
Office Building, Room 10202, 725 17th Street, NW., Washington, DC 
20503, Attention: Desk Officer for the United States Patent and 
Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Patents.

37 CFR Part 11

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


0
For the reasons set forth in the preamble, the United States Patent and 
Trademark Office is amending 37 CFR Parts 1 and 11 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. In Sec.  1.21, remove and reserve paragraph (a)(3), and add 
paragraphs (a)(7), (a)(8) and (a)(9) to read as follows:


Sec.  1.21  Miscellaneous fees and charges.

    (a) * * *
    (3) [Reserved]
* * * * *
    (7) Annual practitioner maintenance fee for registered attorney or 
agent.
    (i) Active Status--$118.00.
    (ii) Voluntary Inactive Status--$25.00.

[[Page 67757]]

    (iii) Fee for requesting restoration to active status from 
voluntary inactive status--$50.00.
    (iv) Balance due upon restoration to active status from voluntary 
inactive status--$93.00.
    (8) Annual practitioner maintenance fee for individual granted 
limited recognition--$118.00.
    (9)(i) Delinquency fee--$50.00.
    (ii) Administrative reinstatement fee--$100.00.
* * * * *

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

0
3. Revise the authority citation for 37 CFR part 11 to read as follows:

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 
41.


0
4. Amend Sec.  11.8 by adding paragraph (d) to read as follows:


Sec.  11.8  Oath, registration fee, and annual practitioner maintenance 
fee.

* * * * *
    (d) Annual practitioner maintenance fee. A registered patent 
attorney or agent shall annually pay to the USPTO Director a 
practitioner maintenance fee in the amount set forth in Sec.  
1.21(a)(7) of this subchapter. Individuals granted limited recognition 
under paragraph (b) of Sec.  11.9 shall annually pay to the USPTO 
Director a practitioner maintenance fee in the amount set forth in 
Sec.  1.21(a)(8) of this subchapter. Adequate notice shall be published 
and sent to practitioners in advance of the due date for payment of the 
annual practitioner maintenance fee. Payment shall be for the fiscal 
year in which the annual practitioner maintenance fee is assessed. 
Payment shall be due by the last day of the payment period. Persons 
newly registered or granted limited recognition shall not be liable for 
the annual practitioner maintenance fee during the fiscal year in which 
they are first registered or granted limited recognition. Failure to 
comply with the provisions of this paragraph (d) shall require the OED 
Director to subject a practitioner to a delinquency fee penalty set 
forth in Sec.  11.11(b)(1), and further financial penalties and 
administrative suspension as set forth in Sec.  11.11(b)(2) and (b)(3).

0
5. Revise Sec.  11.11 to read as follows:


Sec.  11.11  Administrative suspension, inactivation, resignation, and 
readmission.

    (a) A registered attorney or agent must notify the OED Director of 
his or her postal address for his or her office, up to three e-mail 
addresses where he or she receives e-mail, and business telephone 
number, as well as every change to any of said addresses or telephone 
numbers within thirty days of the date of the change. A registered 
attorney or agent shall, in addition to any notice of change of address 
and telephone number filed in individual patent applications, 
separately file written notice of the change of address or telephone 
number to the OED Director. A registered practitioner who is an 
attorney in good standing with the bar of the highest court of one or 
more States shall provide the OED Director with the State bar 
identification number associated with each membership. The OED Director 
shall publish from the roster a list containing the name, postal 
business addresses, business telephone number, registration number, and 
registration status as an attorney or agent of each registered 
practitioner recognized to practice before the Office in patent cases.
    (b) Administrative suspension. (1) Whenever it appears that a 
registered patent attorney, a registered patent agent or a person 
granted limited recognition under Sec.  11.9(b) has failed to comply 
with Sec.  11.8(d), the OED Director shall publish and send a notice to 
the attorney, agent or person granted limited recognition advising of 
the noncompliance, the consequence of being administratively suspended 
under paragraph (b)(5) of this section if noncompliance is not timely 
remedied, and the requirements for reinstatement under paragraph (f) of 
this section. The notice shall be published and sent to the attorney, 
agent or person granted limited recognition by mail to the last postal 
address furnished under paragraph (a) of this section or by e-mail 
addressed to the last e-mail addresses furnished under paragraph (a) of 
this section. The notice shall demand compliance and payment of a 
delinquency fee set forth in Sec.  1.21(a)(9)(i) of this subchapter 
within sixty days after the date of such notice.
    (2) In the event a registered patent attorney, registered patent 
agent or person granted limited recognition fails to comply with the 
notice of paragraph (b)(1) of this section within the time allowed, the 
OED Director shall publish and send in the manner provided for in 
paragraph (b)(1) of this section to the attorney, agent, or person 
granted limited recognition a Rule to Show Cause why his or her 
registration or recognition should not be administratively suspended, 
and he or she no longer be permitted to practice before the Office in 
patent matters or in any way hold himself or herself out as being 
registered or authorized to practice before the Office in patent 
matters. The OED Director shall file a copy of the Rule to Show Cause 
with the USPTO Director.
    (3) Within 30 days of the OED Director's sending the Rule to Show 
Cause identified in Sec.  11.11(b)(2), the registered patent attorney, 
registered patent agent or person granted limited recognition may file 
a response to the Rule to Show Cause with the USPTO Director. The 
response must set forth the factual and legal bases why the person 
should not be administratively suspended. The registered patent 
attorney, registered patent agent or person granted limited recognition 
shall serve the OED Director with a copy of the response at the time it 
is filed with the USPTO Director. Within ten days of receiving a copy 
of the response, the OED Director may file a reply with the USPTO 
Director that includes documents demonstrating that the notice 
identified in Sec.  11.11(b)(1) was published and sent to the 
practitioner in accordance with Sec.  11.11(b)(1). A copy of the reply 
by the OED Director shall be served on the registered patent attorney, 
registered patent agent or person granted limited recognition. When 
acting on the Rule to Show Cause, if the USPTO Director determines that 
there are no genuine issues of material fact regarding the Office's 
compliance with the notice requirements under this section or the 
failure of the person to pay the requisite fees, the USPTO Director 
shall enter an order administratively suspending the registered patent 
attorney, registered patent agent or person granted limited 
recognition. Otherwise, the USPTO Director shall enter an appropriate 
order dismissing the Rule to Show Cause. Nothing herein shall permit an 
administratively suspended registered patent attorney, registered 
patent agent or person granted limited recognition to seek a stay of 
the administrative suspension during the pendency of any review of the 
USPTO Director's final decision.
    (4) An administratively suspended attorney, agent or person granted 
limited recognition remains responsible for paying his or her annual 
practitioner maintenance fee required by Sec.  11.8(d).
    (5) An administratively suspended attorney, agent or person granted 
limited recognition is subject to investigation and discipline for his 
or her conduct prior to, during, or after the period he or she was 
administratively suspended.
    (6) An administratively suspended attorney, agent or person granted 
limited recognition is prohibited from

[[Page 67758]]

practicing before the Office in patent cases while administratively 
suspended. An attorney, agent or person granted limited recognition who 
knows he or she has been administratively suspended under this section 
will be subject to discipline for failing to comply with the provisions 
of this paragraph.
    (c) Administrative Inactivation. (1) Any registered practitioner 
who shall become employed by the Office shall comply with Sec.  10.40 
of this subchapter for withdrawal from the applications, patents, and 
trademark matters wherein he or she represents an applicant or other 
person, and notify the OED Director in writing of said employment on 
the first day of said employment. The name of any registered 
practitioner employed by the Office shall be endorsed on the roster as 
administratively inactive. The practitioner shall not be responsible 
for payments of the annual practitioner maintenance fee each complete 
fiscal year while the practitioner is in administratively inactive 
status. Upon separation from the Office, the practitioner may request 
reactivation by completing and filing an application, Data Sheet, 
signing a written undertaking required by Sec.  11.10, and paying the 
fee set forth in Sec.  1.21(a)(1)(i) of this subchapter. Upon 
restoration to active status, the practitioner shall be responsible for 
paying the annual practitioner maintenance fee for the fiscal year in 
which the practitioner is restored to active status. An 
administratively inactive practitioner remains subject to the 
provisions of the Mandatory Disciplinary Rules identified in Sec.  
10.20(b) of this subchapter, and to proceedings and sanctions under 
Sec. Sec.  11.19 through 11.58 for conduct that violates a provision of 
the Mandatory Disciplinary Rules identified in Sec.  10.20(b) of this 
subchapter prior to or during employment at the Office. If, within 30 
days after separation from the Office, the practitioner does not 
request active status or another status, the practitioner will be 
endorsed on the roster as voluntarily inactive and be subject to the 
provisions of paragraph (d) of this section.
    (2) Any registered practitioner who is a judge of a court of 
record, full-time court commissioner, U.S. bankruptcy judge, U.S. 
magistrate judge, or a retired judge who is eligible for temporary 
judicial assignment and is not engaged in the practice of law may 
request, in writing, that his or her name be endorsed on the roster as 
administratively inactive. Upon acceptance of the request, the OED 
Director shall endorse the name of the practitioner as administratively 
inactive. The practitioner shall not be responsible for payment of the 
annual practitioner maintenance fee for each complete fiscal year the 
practitioner is in administratively inactive status. Following 
separation from the bench, the practitioner may request restoration to 
active status by completing and filing an application, Data Sheet, 
signing a written undertaking required by Sec.  11.10, and paying the 
fee set forth in Sec.  1.21(a)(1)(i) of this subchapter. Upon 
restoration to active status, the practitioner shall be responsible for 
paying the annual practitioner maintenance fee for the fiscal year in 
which the practitioner is restored to active status.
    (d) Voluntary Inactivation. (1) Except as provided in paragraph 
(d)(4) of this section, any registered practitioner may voluntarily 
enter inactive status by filing a request, in writing, that his or her 
name be endorsed on the roster as voluntarily inactive. Upon acceptance 
of the request, the OED Director shall endorse the name as voluntarily 
inactive.
    (2) A registered practitioner in voluntary inactive status shall be 
responsible for payment of the annual practitioner maintenance fee for 
voluntary inactive status set forth in Sec.  1.21(a)(7)(ii) of this 
subchapter for each complete fiscal year the practitioner continues to 
be in voluntary inactive status.
    (3) A registered practitioner who seeks or enters into voluntary 
inactive status is subject to investigation and discipline for his or 
her conduct prior to, during, or after the period of his or her 
inactivation.
    (4) A registered practitioner who is in arrears in paying annual 
practitioner maintenance fees or under administrative suspension for 
annual practitioner maintenance fee delinquency is ineligible to seek 
or enter into voluntary inactive status.
    (5) A registered practitioner in voluntary inactive status is 
prohibited from practicing before the Office in patent cases while in 
voluntary inactive status. A practitioner in voluntary inactive status 
will be subject to discipline for failing to comply with the provisions 
of this paragraph. Upon acceptance of the request for voluntary 
inactive status, the practitioner must comply with the provisions of 
Sec.  10.40 of this subchapter.
    (6) Any registered practitioner whose name has been endorsed as 
voluntarily inactive pursuant to paragraph (d)(1) of this section and 
is not under investigation, not subject to a disciplinary proceeding, 
and not in arrears for the annual practitioner maintenance fee for 
voluntary inactive status may be restored to active status on the 
register as may be appropriate provided that the practitioner files a 
written request for restoration, a completed application for 
registration on a form supplied by the OED Director furnishing all 
requested information and material, including information and material 
pertaining to the practitioner's moral character and reputation under 
Sec.  11.7(a)(2)(i) during the period of inactivation, a declaration or 
affidavit attesting to the fact that the practitioner has read the most 
recent revisions of the patent laws and the rules of practice before 
the Office, and pays the fees set forth in Sec. Sec.  1.21(a)(7)(iii) 
and (iv) of this subchapter.
    (e) Resignation. A registered practitioner or a practitioner 
recognized under Sec.  11.14(c), who is neither under investigation 
under Sec.  11.22 for a possible violation of the Mandatory 
Disciplinary Rules identified in Sec.  10.20(b) of Part 10 of this 
subchapter, subject to discipline under Sec. Sec.  11.24 or 11.25, nor 
a practitioner against whom no probable cause has been found by a panel 
of the Committee on Discipline under Sec.  11.23(b), may resign by 
notifying the OED Director in writing that he or she desires to resign. 
Upon acceptance in writing by the OED Director of such notice, that 
registered practitioner or practitioner under Sec.  11.14 shall no 
longer be eligible to practice before the Office but shall continue to 
file a change of address for five years thereafter in order that he or 
she may be located in the event information regarding the 
practitioner's conduct comes to the attention of the OED Director or 
any grievance is made about his or her conduct while he or she engaged 
in practice before the Office. The name of any registered practitioner 
whose resignation is accepted shall be removed from the register, 
endorsed as resigned, and notice thereof published in the Official 
Gazette. Upon acceptance of the resignation by the OED Director, the 
practitioner must comply with the provisions of Sec.  10.40 of this 
subchapter.
    (f) Administrative reinstatement. (1) Any registered practitioner 
who has been administratively susp