Changes to Representation of Others Before the United States Patent and Trademark Office, 45812-45834 [2020-12210]

Download as PDF 45812 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules Issued on July 22, 2020. Lance T. Gant, Director, Compliance & Airworthiness Division, Aircraft Certification Service . [FR Doc. 2020–16215 Filed 7–29–20; 8:45 am] BILLING CODE 4910–13–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 1 and 11 [Docket No. PTO–C–2013–0042] RIN 0651–AC91 Changes to Representation of Others Before the United States Patent and Trademark Office United States Patent and Trademark Office, Department of Commerce. ACTION: Notice of proposed rulemaking. AGENCY: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Patent Cases and the rules regarding Representation of Others before the United States Patent and Trademark Office. This rulemaking proposes to align the USPTO Rules of Professional Conduct more closely with the ABA Model Rules of Professional Conduct; to improve clarity in existing regulations to facilitate the public’s compliance, including revising various deadlines, the procedures concerning the registration exam, provisions related to the revocation of an individual’s registration or limited recognition in limited circumstances, and provisions for reinstatement; and to make nonsubstantive changes, increasing the readability of various provisions. DATES: Written comments must be received on or before September 28, 2020. SUMMARY: Comments should be sent by electronic mail message over the internet addressed to: AC91.Comments@ uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop OED–AC91, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450, marked to the attention of William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline. Comments may also be sent via the Federal eRulemaking Portal. Visit the Federal eRulemaking Portal website (https://www.regulations.gov) for additional instructions on providing khammond on DSKJM1Z7X2PROD with PROPOSALS ADDRESSES: VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 comments via the Federal eRulemaking Portal. All comments submitted directly to the USPTO or provided on the Federal eRulemaking Portal should include the docket number (PTO–C– 2013–0042). Although comments may be submitted by postal mail, the Office prefers to receive comments by email. The Office prefers comments to be submitted in plain text but also accepts comments submitted in searchable ADOBE® portable document format (‘‘PDF’’) or MICROSOFT WORD® format. Comments not submitted electronically should be submitted on paper in a format that accommodates digital scanning into ADOBE® PDF. Comments will be made available for public inspection at the Office of Enrollment and Discipline, located on the eighth floor of the Madison West Building, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing on the Office’s internet website (http:// www.uspto.gov) and on the Federal eRulemaking Portal. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included. FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline, by telephone at 571– 272–4097. SUPPLEMENTARY INFORMATION: Purpose Section 2(b)(2)(D) of title 35 of the United States Code provides the USPTO with the authority 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.’’ Part 11 of title 37 of the Code of Federal Regulations contains those regulations that govern the representation of others before the USPTO, including regulations relating to recognition to practice before the USPTO, investigations and disciplinary proceedings, and the USPTO Rules of Professional Conduct. Part 1 of title 37 of the Code of Federal Regulations addresses the rules of practice in patent cases, and most relevantly fees in patent matters. This notice sets forth proposed amendments to parts 1 and 11 as discussed herein. On April 3, 2013, the Office published a final rule that established the USPTO Rules of Professional Conduct, 37 CFR 11.101 et seq. The USPTO Rules of PO 00000 Frm 00004 Fmt 4702 Sfmt 4702 Professional Conduct are modeled after the American Bar Association (ABA) Model Rules of Professional Conduct. The USPTO Rules of Professional Conduct have not been substantively updated since 2013. Harmonization With the ABA Model Rules of Professional Conduct Due to the length of time since the USPTO last updated its regulations, the USPTO proposes to amend the USPTO Rules of Professional Conduct to align them with widely-adopted revisions to the ABA Model Rules of Professional Conduct. Section 11.106(b) of title 37 of the Code of Federal Regulations would be amended to allow a practitioner to reveal information relating to the representation of a client in certain circumstances for the purpose of detecting and resolving conflicts of interest arising from the practitioner’s change of employment or changes in the composition or ownership of a law firm. Section 11.106(d) would be amended to require a practitioner to make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client. Section 11.118 would be amended to clarify that a practitioner may not use information learned from a prospective client except as otherwise provided, regardless of whether the information was learned in a discussion. Section 11.702 would be amended to allow practitioners to post contact information such as a website or email address instead of an office address on marketing materials. Finally, § 11.703 would be amended to clarify that the limitations on solicitation apply to any person, without regard to whether the practitioner considers the targets of the solicitation to actually be prospective clients. Simplification and Clarification of Rules and Processes The USPTO also proposes to amend its regulations to facilitate compliance by the public. As discussed in greater detail in the section ‘‘Discussion of Specific Changes in this Proposed Rule,’’ amendments are proposed to §§ 11.7, 11.9, 11.11, 11.51, 11.52, 11.53, 11.54, 11.55, 11.58, and 11.60 to enhance generally the clarity of these sections. Also, the reinstatement provisions in §§ 11.9(f) and 11.11(f) would be aligned for all registered practitioners and practitioners granted limited recognition under § 11.9(b). The periods of time in these sections would be either the same as or greater than the applicable periods previously provided under this part. As such, the new time E:\FR\FM\30JYP1.SGM 30JYP1 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules khammond on DSKJM1Z7X2PROD with PROPOSALS periods would apply without regard to whether the relevant period began to run before or after the effective date of the final rule for this action. In addition, the regulations would be amended to add provisions addressing the revocation of registration or limited recognition. To better protect the public, the USPTO proposes to create a process in § 11.11(g) by which an individual’s registration or limited recognition may be revoked in limited circumstances. For example, if an applicant were to be granted status as a registered practitioner but were to be later discovered to have failed to disclose material information in his or her application, such as a conviction for a felony, the Director of the Office of Enrollment and Discipline (OED Director) would issue to that practitioner a notice to show cause why the practitioner’s registration or recognition should not be revoked, and the practitioner would be provided an opportunity to respond. This would parallel the existing provisions in §§ 11.7(j), 11.11(b), 11.20(a)(4), and 11.60(e). Finally, the USPTO proposes changes to improve the registration examination and application process. Applicants for the registration examination would be provided the opportunity to avoid having to reapply entirely by paying a new fee of $115 for an extension of time in which to schedule and take the examination. This new fee would be implemented though revisions to §§ 1.21(a)(1), 11.7(b), and 11.9(e). This is expected to streamline the process and reduce expense to applicants while also conserving agency resources. Other Minor Changes Minor edits, discussed below, would also be made throughout the regulations. These include increasing structural parallelism between similar provisions, including between §§ 11.24 and 11.29; increasing the readability of provisions throughout, including §§ 11.7 and 11.9; and making corrections to spelling, grammar, and cross-references, harmonizing terminology, correcting syntax formats to comport with the Federal Register Document Drafting Handbook, and reorganizing paragraph structure. In sum, these amendments are aimed at benefitting practitioners by clarifying and streamlining professional responsibility obligations and procedures. Discussion of Specific Changes in This Proposed Rule The USPTO proposes to eliminate the fee in § 1.21(a)(1)(ii)(B) for taking the VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 registration examination at the USPTO’s offices in Alexandria, Virginia. The USPTO no longer intends to administer the paper-based examination in its offices. The computer-based examination will continue to be offered at thousands of testing centers across the United States. The USPTO proposes to amend §§ 1.21(a)(1), 11.7(b), and 11.9(e) to provide applicants for registration or limited recognition the ability to request extensions of time to schedule the registration exam for a fee. Currently, applicants are assigned a window of time in which to schedule and sit for the registration examination. Applicants who do not take the examination before the expiration of that window must reapply and again pay the application and test administration fees. The ability to request extensions of time will save those applicants who require more time to prepare for the examination or are unable to sit for the examination within the window from having to reapply and again pay the application and test administration fees. The proposed fee is significantly less than the existing application and examination fees that would be due from an applicant who failed to take the registration examination during the test window. The proposed fee would recover the estimated average cost to the Office of related processing, services, and materials. The authorization for this fee is 35 U.S.C. 41(d)(2)(A). The USPTO proposes to amend § 1.21(a)(9) to provide a heading to clarify the nature of the fees listed thereunder. The proposed revision makes no change to the fees themselves. The USPTO proposes to amend § 11.1 to clarify several definitions and to correct typographical errors. The terms ‘‘conviction’’ and ‘‘convicted’’ would be revised to correct the spelling of ‘‘nolo contendere.’’ The term ‘‘practitioner’’ would be revised to eliminate surplusage within the definition. The term ‘‘register’’ would be added alongside ‘‘roster’’ to clarify that both terms carry the same meaning. The term ‘‘serious crime’’ currently encompasses all felonies. However, not all states classify crimes as felonies and misdemeanors. To ensure consistent treatment among similarly situated practitioners, the definition would be revised to encompass any criminal offense punishable by death or imprisonment of more than one year. This revision would provide a clear and uniform rule in harmony with 18 U.S.C. 3559(a). The term ‘‘state’’ would be revised to reflect the correct capitalization of ‘‘commonwealth.’’ PO 00000 Frm 00005 Fmt 4702 Sfmt 4702 45813 The USPTO proposes to amend § 11.2(b)(2) to eliminate an unnecessary reference to § 11.7(b). This revision would result in no change in practice. The USPTO proposes to amend § 11.2(b)(4) to clarify that the OED Director is authorized to conduct investigations of persons subject to the disciplinary jurisdiction of the Office. The amendments would also replace the term ‘‘accused practitioner’’ with ‘‘subject of the investigation.’’ The USPTO proposes to amend § 11.4, currently reserved, to define how time shall be computed in part 11. The computational method aligns with that set forth in the Federal Rules of Civil Procedure. The USPTO proposes to amend § 11.5(a) by adding a paragraph heading. The USPTO proposes to amend § 11.5(b) to change the term ‘‘patent cases’’ to ‘‘patent matters’’; amend § 11.5(b)(1) to change the term ‘‘other proceeding’’ to ‘‘other patent proceeding’’ to clarify that this subparagraph refers only to patent proceedings; and clarify the definition of practice before the Office in trademark matters in § 11.5(b)(2). Section 11.5(b) continues to provide that nothing in § 11.5 prohibits a practitioner from employing or retaining a non-practitioner assistant under the supervision of the practitioner to assist in matters pending before, or contemplated to be presented to, the Office. The USPTO proposes to amend § 11.7(b) to eliminate the requirement for applicants to refile previously submitted documentation after one year. The provisions regarding retaking the examination would be moved from subparagraph (b)(1)(ii) to (b)(2). A limitation of five attempts to pass the examination for registration would be added to subparagraph (b)(2) to maintain the integrity of the examination. This would not prevent an applicant from petitioning for subsequent attempts under § 11.2(c). The provisions regarding denial of admission to the examination and notices of incompleteness would be moved from (b)(2) to (b)(3), which is currently reserved. The USPTO proposes to amend § 11.7(d)(3)(i)(B) to change the term ‘‘patent cases’’ to ‘‘patent matters.’’ The USPTO proposes to remove the ultimate sentence of § 11.7(e) to eliminate conflict with proposed § 11.7(b)(2). The USPTO proposes to amend § 11.7(g)(1) and (g)(2)(ii) to clarify that OED may accept a state bar’s determination of character and reputation as opposed to simply E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS 45814 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules character. The amendment also corrects an internal citation and updates a reference to requests for information and evidence in enrollment matters. The USPTO proposes to amend § 11.7 by adding a new paragraph (l) that would clarify that a registered patent agent who becomes an attorney may be registered as a patent attorney upon paying the required fee and meeting any additional requirements. The USPTO proposes to amend § 11.9(a) to improve clarity and § 11.9(b) to update a cross-reference. The revisions would make no change in practice. The USPTO proposes to amend § 11.9 by mirroring where possible the provisions of § 11.7(a) and (b) in new paragraphs (d) and (e) of § 11.9. This is intended to improve the readability of the application process as it applies to those seeking limited recognition under § 11.9(b), and it would make no change in practice. The USPTO proposes to amend § 11.9 by adding a new paragraph (f) to clarify the documentation required to obtain reinstatement of limited recognition. This proposed revision generally restates the practice currently set forth in § 11.7(b) and clarifies that individuals must provide objective evidence that they continue to possess the necessary legal qualifications if their limited recognition has been expired for five years or longer at the time of application for reinstatement. Retaking and passing the registration examination would be one way to establish such objective evidence. The USPTO proposes to amend § 11.10(a) to clarify that only authorized practitioners may represent others before the Office in patent matters. This clarification is not intended to affect the rules governing practice before the Patent Trial and Appeal Board in parts 41 and 42 of this chapter. The USPTO proposes to delete § 11.10(b)(3), (b)(4), (c), (d), and (e), which addressed terms in 18 U.S.C. 207, a criminal statute. No change in practice is intended by these deletions, as these provisions were unnecessary. The USPTO proposes to amend § 11.11(b) to change the term ‘‘patent cases’’ to ‘‘patent matters’’, to clarify the nature of the notice called for in paragraph (b)(1), and improve syntax. The USPTO proposes to amend § 11.11(b)(3) to clarify that the OED Director may withdraw a notice to show cause where the practitioner who is subject to such notice has satisfied the notice’s requirements prior to the USPTO Director making a decision on such notice. VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 The USPTO proposes to amend § 11.11 by adding a new subparagraph (b)(7) to clarify that administratively suspended practitioners must apply for reinstatement under paragraph (f)(1) in order to be reinstated. The USPTO proposes to amend § 11.11(c) to simplify the process for requesting reactivation and to replace the term ‘‘roster’’ with the term ‘‘register’’. The USPTO proposes to amend § 11.11(e)(1) to clarify the eligibility requirements for practitioners who request to resign. These revisions would make no substantive change. The USPTO proposes to amend § 11.11(f)(2) to improve clarity and harmonize the requirements for reactivation with the requirements for reinstatement following administrative suspension. Specifically, individuals who have been administratively inactive for five or more years subsequent to separation from the Office or cessation of employment in a judicial capacity will be required to submit objective evidence that they continue to possess the necessary legal qualifications. Retaking and passing the registration examination would be one way to establish such objective evidence. The USPTO proposes to amend § 11.11 by adding a new paragraph (g) to allow administrative revocation of registration or limited recognition, based on mistake, materially false information, or the omission of material information. Registration or limited recognition would only be revoked after the issuance of a notice to show cause and an opportunity to respond. This would parallel the existing provisions in §§ 11.7(j), 11.11(b), 11.20(a)(4), and 11.60(e). The USPTO proposes to amend § 11.18(c)(2) to set forth the correct title of the Director of the Office of Enrollment and Discipline. The USPTO proposes to amend § 11.19(a) to change ‘‘patent cases’’ to ‘‘patent matters’’ and to clarify that a non-practitioner is subject to the USPTO’s disciplinary authority if the person engages in or offers to engage in practice before the Office without proper authority. The phrase ‘‘including by the USPTO Director,’’ which modifies various types of public discipline, would be deleted as surplusage. The USPTO Director’s authority to administer discipline or transfer a practitioner to disability inactive status is firmly established. Thus, the inclusion of this phrase is unnecessary. The USPTO proposes to amend § 11.19(b)(1)(ii) to include discipline on professional misconduct grounds PO 00000 Frm 00006 Fmt 4702 Sfmt 4702 alongside discipline on ethical grounds. The inclusion of both is aimed at making clear that discipline for professional misconduct also constitutes grounds for discipline. This would result in no change in practice. The USPTO proposes to amend § 11.19(c) to properly cite a subpart of part 11. The USPTO proposes to amend § 11.19 by adding a new paragraph (e). This provision would make clear that the OED Director may select any disciplinary procedure or procedures that are appropriate to the situation at hand. For example, the OED Director is authorized in appropriate circumstances to pursue reciprocal discipline under § 11.24, while also instituting a disciplinary proceeding under § 11.32. The USPTO proposes to simplify § 11.20(a)(4) to provide that the conditions of probation shall be stated in the order imposing probation. The USPTO proposes to amend § 11.20(c) to improve syntax and to clarify that this provision merely describes the process set forth in § 11.29 for transferring to disability inactive status. The USPTO proposes to amend § 11.21 to remove the adjective ‘‘brief’’ that modifies the phrase ‘‘statement of facts.’’ The length of a statement of facts depends on the complexity of the matter and the issues presented. This revision would allow a level of detail in a statement of facts appropriate to the particular matter. The USPTO proposes to amend § 11.22(c), currently reserved, to require a practitioner to notify the OED Director of the practitioner becoming publicly disciplined, disqualified from practice, transferred to disability status, or convicted of a crime, within 30 days of such occurrence as already required in §§ 11.24, 11.25, or 11.29. This revision would also clarify that a certified copy of the record or order regarding the discipline, disqualification, conviction, or transfer to disability status is clear and convincing evidence of such event. The USPTO proposes to amend § 11.22(g) to correct erroneous citations to § 11.22(b)(1) and (b)(2). The correct citations are § 11.23(b)(1) and (b)(2). The USPTO proposes to amend § 11.22(h) to clarify that the list of actions that the OED Director may take upon the conclusion of an investigation is not necessarily limited to the four actions enumerated therein. The USPTO proposes to amend § 11.24(a) to provide that a certified copy of the record or order regarding public discipline in another jurisdiction shall establish a prima facie case by clear and convincing evidence that a E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules practitioner has, in fact, been publicly disciplined by that jurisdiction. In addition, the provision would be amended to clarify that the OED Director is permitted to exercise discretion in whether to pursue reciprocal discipline in any given matter. The USPTO proposes to amend § 11.24(b) to enhance readability. No change in practice is intended. The USPTO proposes to amend § 11.24(d)(1) to clarify the USPTO Director’s prerogative to order a disciplinary record be supplemented with further information or argument. The USPTO proposes to amend § 11.24(e) to clarify that a final adjudication in another jurisdiction that a practitioner has committed ethical misconduct, regardless of the evidentiary standard applied, shall establish a prima facie case that the practitioner has engaged in misconduct under § 11.804(h). This change would not affect the availability of the defenses specified in § 11.24(d)(1). The USPTO proposes to amend § 11.25(a) to remove the requirement to self-report certain traffic violations where the sole punishment adjudicated is a fine of $300.00 or less. The provision would also be amended to clarify that the OED Director is permitted to exercise discretion in whether to pursue discipline in any given matter under this section. The USPTO proposes to amend § 11.25(b)(3) to clarify that the USPTO Director may order that a disciplinary record be supplemented with further information or argument. The USPTO proposes to amend § 11.25(e)(2) to allow practitioners who are disciplined by the USPTO upon conviction of a serious crime to apply for reinstatement immediately upon completing their sentence, probation, or parole, whichever is later, provided they are otherwise eligible for reinstatement. Under the current rule, a practitioner must wait at least five years after the last of these events before he or she is eligible to apply for reinstatement. The USPTO proposes to amend § 11.26 to clarify that evidence, other than offers of compromise and statements about settlement made during a settlement conference, may not be excluded merely because the evidence was discussed or otherwise presented in a settlement conference. Such evidence may be excludable for other evidentiary reasons. The provision would also be amended to further clarify that settlement conferences may occur at any time after an investigation is commenced. VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 The USPTO proposes to amend § 11.27(b) and (c) to clarify procedures for exclusion on consent. Specifically, the revision would allow the OED Director to file a response to a § 11.27(a) affidavit. Nothing herein is intended to alter the requirements under § 11.27(a), including but not limited to the § 11.27(a)(2) requirement that the statement of the nature of the pending investigation or pending proceeding shall be specifically set forth in the affidavit to the satisfaction of the OED Director. The revision would also remove and reserve § 11.27(c), in light of the provisions of revised § 11.26. The USPTO proposes to amend § 11.28(a) to replace the term ‘‘patent cases’’ with ‘‘patent matters’’, clarify the requirements for moving to hold a proceeding in abeyance, remove the requirement that such motion be made prior to a disciplinary hearing, and update cross-references. The USPTO proposes to amend § 11.29(a) to clarify that the OED Director possesses discretion as to whether to request that a practitioner be transferred to disciplinary inactive status. The USPTO proposes to amend § 11.29(b) to incorporate the ‘‘clear and convincing’’ burden of proof currently set forth in § 11.29(d) that a practitioner must satisfy to avoid a reciprocal transfer to disability inactive status. The USPTO also proposes enlarging the period of time to 40 days (instead of 30 days) for a practitioner to respond to the OED Director’s request to transfer the practitioner to disability inactive status. The USPTO proposes to amend § 11.29(d) by revising the heading of the paragraph. The provision would also be reorganized and amended to clarify the USPTO Director’s prerogative to order that the record be supplemented with further information or argument. The proposed revisions to § 11.29(b) and (d) would parallel the organizational structure of § 11.24. The USPTO proposes to amend § 11.29(g) by clarifying that a practitioner in disability inactive status must comply with §§ 11.29 and 11.58, and not merely § 11.58. This revision would make no change in practice and would align with the provisions of revised § 11.58. The USPTO proposes to amend § 11.29(i) by updating cross-references. The revisions would make no change in practice. The USPTO proposes to amend § 11.34(c) to expressly allow a complaint to be filed in a disciplinary proceeding by delivering, mailing, or electronically transmitting the document to a hearing officer. PO 00000 Frm 00007 Fmt 4702 Sfmt 4702 45815 The USPTO proposes to amend § 11.35(a) to make minor corrections to syntax. The USPTO proposes to amend § 11.35(c) to state that a complaint in a disciplinary matter may be served on the respondent’s attorney in lieu of the respondent, if the respondent is known to the OED Director to be represented by an attorney under § 11.40(a). This revision would permit the OED Director to serve the respondent, respondent’s attorney, or both. The USPTO proposes to amend § 11.39(a) to clarify the process by which hearing officers are designated in disciplinary proceedings. This proposed amendment would continue the practice of designating administrative law judges to serve as hearing officers. The USPTO proposes to amend § 11.39(b) to clarify that administrative law judges appointed in accordance with 5 U.S.C. 3105 may be designated as hearing officers. The USPTO proposes to amend 11.39(f) to correct a cross-reference. The USPTO proposes to amend § 11.40 by dividing the current paragraph (b) into two paragraphs to facilitate ease in reading. In all other respects, the provision would remain unchanged. The USPTO proposes to amend § 11.41(a) to expressly provide that papers may be filed by delivering, mailing, or electronically transmitting such documents to a hearing officer. The USPTO proposes to amend § 11.43 by changing the heading to clarify that the provision applies only to motions before a hearing officer and not to those before the USPTO Director. The USPTO also proposes to amend the section to require motions to be accompanied by written memoranda setting forth a concise statement of the facts and supporting reasons, along with a citation of the authorities upon which the movant relies. The proposed revisions would also require responses to motions be filed within 14 days and served on the opposing party, and reply memoranda served within 7 days after service of the opposing party’s response. The proposed revisions would also require the format of memoranda to be double-spaced and printed in 12-point font, unless otherwise ordered by the hearing officer. The USPTO proposes to amend § 11.44(a) to allow scheduling of a hearing only on a date after the time for filing an answer has elapsed. The USPTO proposes to amend § 11.44(b) to clarify the sanctions a hearing officer may impose for failure to appear at a disciplinary hearing. E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS 45816 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules The USPTO proposes to amend § 11.50 to clarify the existing practice of prohibiting the admission of speculative evidence. The USPTO proposes to amend § 11.51(a) by revising it and dividing it into a new § 11.51(a)–(g). The revisions would provide clarity and confirm the existing regulatory requirement that if a respondent demands testimony or the production of documents from a USPTO employee, the respondent must comply with part 104 of this chapter. The rule would also make clear that a deposition may be videotaped if desired. The term ‘‘deposition expenses’’ would replace the phrase ‘‘expenses for a court reporter and preparing, serving, and filing depositions’’. Deposition expenses may include, but are not limited to, fees for court reporters, videographers, transcripts, and room rentals; witness appearance and travel; service of process; and costs for preparing, serving, and filing depositions. This revision would not affect those expenses that are recoverable under § 11.60(d)(2). The USPTO proposes to amend § 11.51(b) by redesignating it as § 11.51(h). The revisions to this paragraph would make no change to existing practice. The USPTO proposes to amend § 11.52 by reorganizing the section to improve clarity. The revisions would limit the scope of written discovery to relevant evidence only, as opposed to evidence that may be reasonably calculated to lead to the discovery of admissible evidence. The revisions would also provide that requests for admission may be used to admit the genuineness of documents and provide consequences for the failure to respond to requests for admission. Finally, the revisions would expand the scope of information that parties must provide regarding expert witnesses to include a complete statement of all opinions to which the expert is expected to testify, the basis and reasons therefor, and a description of all facts or data considered by the expert in forming the opinions. The USPTO proposes to amend § 11.53 to specify the timing and other requirements of post-hearing memoranda, unless otherwise ordered by the hearing officer. The rule would also allow the hearing officer to enlarge the time permitted for filing posthearing memoranda and to increase page limits upon a showing of good cause. The USPTO proposes to amend § 11.54 to require a hearing officer to transmit the record of the proceeding to the OED Director within 14 days of the date of the initial decision or as soon as VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 practicable. The USPTO proposes to amend § 11.54(a)(1) by requiring an initial decision to make ‘‘specific’’ references to the record instead of ‘‘appropriate’’ references to the record. The provision currently located in § 11.54(a)(2) that describes the process that the hearing officer shall take with respect to the transmission of the decision and the record would be moved to § 11.54(c). It would also be revised to require the hearing officer to forward to the OED Director the record of proceedings within 14 days, or as soon as practicable, after the date of the initial decision. In addition, the provision currently located in § 11.54(a)(2) that discusses the point in time at which the decision of the hearing officer becomes the decision of the USPTO Director would be moved to § 11.54(d). This section would also be amended to remove an unnecessary reference to default judgments. Thus, any decision of a hearing officer, if not appealed, would become final without regard to whether the decision results from default. The USPTO proposes to amend § 11.55 to more closely align the language with changes to the Federal Rules of Appellate Procedure and provide clarity as to the responsibilities of parties during appeals to the USPTO Director. The revisions would establish a procedure for filing notices of appeal and provide briefing timelines. Currently, the rule allows an appellant 30 days to file a brief. The revisions would allow 14 days in which to file a notice of appeal and 45 days thereafter in which to file the appellate brief. The revisions would also remove current paragraph (i), which is duplicative of a similar provision in § 11.54. Finally, the revisions would add a new paragraph (o) that would govern motions practice before the USPTO Director. The procedures in new paragraph (o) would generally parallel those in § 11.43. The USPTO proposes to amend § 11.56(c) to allow a party to file a response to a request for reconsideration within 14 days after such request is made. The revision would explicitly require that such request be based on newly discovered evidence or clear error of law or fact. The USPTO proposes to amend § 11.57 by reorganizing the provision and revising it to conform with Local Civil Rule 83.5 of the Local Rules for the U.S. District Court for the Eastern District of Virginia (http:// www.vaed.uscourts.gov/localrules/ LocalRulesEDVA.pdf). More specifically, § 11.57(a) would be revised to require that any petition for review of a final decision of the USPTO Director PO 00000 Frm 00008 Fmt 4702 Sfmt 4702 must be filed within 30 days after the date of the final decision. The USPTO proposes to amend § 11.58 by revising, subdividing, and renumbering the provisions describing the duties of disciplined practitioners or practitioners on disability inactive status. The proposed revisions are made with an eye toward simplifying the rule so that disciplined practitioners may more easily comply with its provisions. Where the practitioner believes compliance with the rule would be unduly cumbersome, a practitioner would be permitted to petition for relief. The revised rule would continue to allow a suspended or excluded practitioner to act as a paralegal provided certain conditions are met, such as serving under the supervision of a practitioner as defined in part 11. The revisions would permit, rather than require, the USPTO Director to grant a period of limited recognition to allow a disciplined practitioner to wind up his or her practice. The proposed revisions to § 11.58 would in no way limit the OED Director’s ability to take action for violations of the rule. For example, the OED Director is still authorized to take action against a practitioner for violating the terms of disciplinary probation or to seek exclusion or an additional suspension for practitioners who violate disciplinary rules while excluded, suspended, or in disability inactive status. Finally, the proposed revisions would strike references to resigned practitioners. Obligations relating to resigned practitioners would be consolidated in § 11.11(e). The USPTO proposes to amend § 11.60 to remove references to resigned status. Procedures for resignation and reinstatement from a resigned status would be consolidated in § 11.11. For this reason, the USPTO proposes to amend § 11.60(b) and (c) to eliminate references to reinstatement and § 11.58 compliance requirements for resigned practitioners. The USPTO also proposes to amend the heading of § 11.60 to explicitly reflect that it applies only to disciplined practitioners. The USPTO proposes to re-designate the current § 11.60(f) as § 11.60(g) and amend the paragraph by inserting a new provision that would clarify that a final decision by the OED Director denying reinstatement to a practitioner is not a final agency action. A suspended or excluded party dissatisfied with the decision of the OED Director regarding his or her reinstatement may seek review of the decision by petitioning the USPTO Director in accordance with § 11.2(d). The USPTO proposes to re-designate the current § 11.60(g) as § 11.60(h) and E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules amend the paragraph to allow a notice of a practitioner’s intent to seek reinstatement to be published prior to the expiration date of the suspension or exclusion. The purpose of this revision is to speed the processing of petitions for reinstatement while still providing the requisite public notice. The USPTO proposes to amend § 11.106(b) to allow a practitioner to reveal information relating to the representation of a client to detect and resolve conflicts of interest arising from the practitioner’s change of employment or from changes in the composition or ownership of a law firm, but only if the revealed information would not compromise the attorney-client privilege or otherwise prejudice the client. This amendment would cause this provision to more closely align with the 2012 amendments to ABA Model Rule 1.6. The USPTO proposes to amend § 11.106 by adding a new paragraph (d) that would require a practitioner to make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client. This amendment would cause this provision to more closely align with the 2012 amendments to ABA Model Rule 1.6. The USPTO proposes to amend § 11.118 to clarify that a practitioner may not use information learned from a prospective client except as otherwise provided, regardless of whether the information was learned in a discussion. This amendment would cause this provision to more closely align with the 2012 amendments to ABA Model Rule 1.18. The USPTO proposes to amend § 11.702 to establish standards that, if met, would qualify practitioners to state they are a certified specialist in a particular field of law. This amendment would cause this provision to more closely align with the 2012 amendments to ABA Model Rule 7.2. The USPTO proposes to amend § 11.703 to clarify that the limitations on solicitation apply to any person without regard to whether the practitioner considers the targets of the solicitation to actually be prospective clients. This amendment would cause this provision to more closely align with the 2012 amendments to ABA Model Rule 7.3. The USPTO proposes to amend § 11.704(e) to clarify that individuals granted limited recognition under § 11.9 may not use the designation ‘‘registered.’’ The USPTO proposes to amend § 11.804(b) to clarify that being VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 45817 The changes in this notice of proposed rulemaking fall into one of three categories: (1) Harmonization of the USPTO Rules of Professional Conduct with the ABA Model Rules of Professional Conduct; (2) changes to the rules governing the recognition to practice before the Office to implement new requirements and simplify and otherwise improve consistency with Rulemaking Requirements existing requirements to facilitate the A. Administrative Procedure Act: The public’s compliance with existing changes in this rulemaking involve rules regulations, including revisions to timeframes, procedures concerning the of agency practice and procedure and/ registration exam, provisions related to or interpretive rules (see Perez v. the revocation of an individual’s Mortgage Bankers Ass’n, 135 S. Ct. registration or limited recognition in 1199, 1204 (2015) (Interpretive rules limited circumstances, and provisions ‘‘advise the public of the agency’s for reinstatement; and (3) nonconstruction of the statutes and rules substantive changes, such as increased which it administers.’’) (citations and internal quotation marks omitted); Nat’l structural parallelism between similar provisions; increased readability of Org. of Veterans’ Advocates v. Sec’y of provisions; corrections to spelling, Veterans Affairs, 260 F.3d 1365, 1375 grammar, and cross-references; (Fed. Cir. 2001) (Rule that clarifies harmonization of terminology; interpretation of a statute is interpretive.); Bachow Commc’ns Inc. v. correction of syntax formats to comport with the Federal Register Document FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules governing an application process Drafting Handbook; and reorganization are procedural under the Administrative of paragraph structure within particular Procedure Act.); Inova Alexandria Hosp. rules and other changes to improve clarity in the regulations. v. Shalala, 244 F.3d 342, 350 (4th Cir. This proposed rule would apply to 2001) (Rules for handling appeals are the approximately 47,000 registered procedural where they do not change patent practitioners currently appearing the substantive standard for reviewing before the Office, as well as licensed claims.)). attorneys practicing in trademark and Accordingly, prior notice and other non-patent matters before the opportunity for public comment for the Office. The USPTO does not collect or changes in this rulemaking are not maintain statistics on the size status of required pursuant to 5 U.S.C. 553(b) or impacted entities, which would be (c) or any other law (see Perez, 135 S. required to determine the number of Ct. at 1206 (Notice-and-comment small entities that would be affected by procedures are not required when an the proposed rule. However, a large agency ‘‘issue[s] an initial interpretive number of the changes proposed in this rule’’ or when it amends or repeals that rule are not expected to have any impact interpretive rule.); and Cooper Techs. on affected entities. For example, Co. v. Dudas, 536 F.3d 1330, 1336–37 correction of spelling and grammar, (Fed. Cir. 2008) (stating that 5 U.S.C. harmonization of terminology, 553, and thus 35 U.S.C. 2(b)(2)(B), do correction of syntax formats, and not require notice-and-comment reorganization of paragraph structures rulemaking for ‘‘interpretative rules, are administrative in nature and would general statements of policy, or rules of have no impact on affected entities. agency organization, procedure, or The USPTO also proposes to make practice,’’ quoting 5 U.S.C. 553(b)(A))). changes to the rules governing the Nevertheless, the USPTO has chosen to recognition to practice before the Office seek public comment before and to certain rules governing the implementing the rule to benefit from process of investigations and conduct of the public’s input. disciplinary proceedings to clarify B. Regulatory Flexibility Act: For the existing policy and practice and to reasons set forth herein, the Senior update the USPTO Rules of Professional Counsel for Regulatory and Legislative Conduct to reflect widely-adopted Affairs, Office of General Law, of the changes to the ABA Model Rules of USPTO has certified to the Chief Professional Conduct. These revisions Counsel for Advocacy of the Small impact rules of procedure and are not Business Administration that the expected to substantively impact changes proposed in this rule will not parties. The intent of these changes is to make the USPTO regulations more clear have a significant economic impact on and to streamline procedural a substantial number of small entities requirements. Where the proposed (see 5 U.S.C. 605(b)). convicted of a qualifying crime is a form of misconduct. The USPTO proposes to amend § 11.804(h) to provide that it is misconduct to be publicly disciplined on ethical or professional misconduct grounds by a country having disciplinary jurisdiction over the practitioner. PO 00000 Frm 00009 Fmt 4702 Sfmt 4702 E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS 45818 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules rulemaking arguably increases regulatory burden, such burdens are minimal and outweighed by the benefits they would provide. This proposed rule would also provide applicants for registration or limited recognition the ability to request extensions of time to schedule the registration exam for a fee. The proposed new fee of $115 would recover the estimated average cost to the Office of related processing, services, and materials. The USPTO expects that this increased scheduling flexibility will save those applicants who would have otherwise missed the window in which to sit for the registration examination the time and expense of having to reapply to take the examination. The cost of reapplying for the examination is currently $300, exclusive of any nonrefundable fees paid to the commercial testing service that administers the examination. The USPTO estimates that this new regulatory flexibility will save the public at least $92,500. The authorization for this fee is 35 U.S.C. 41(d)(2)(A). In sum, any requirements resulting from these proposed changes are of minimal or no additional burden to those practicing before the Office. For these reasons, this rulemaking will not have a significant economic impact on a substantial number of small entities. C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of E.O. 12866 (Sept. 30, 1993). D. Executive Order 13563 (Improving Regulation and Regulatory Review): The Office has complied with E.O. 13563 (Jan. 18, 2011). Specifically, the Office has, to the extent feasible and applicable: (1) Made a reasoned determination that the benefits justify the costs of the rule; (2) tailored the rule to impose the least burden on society consistent with obtaining the regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector, and the public as a whole, and provided online access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens and maintain flexibility and freedom of choice for the public; and (9) ensured VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 the objectivity of scientific and technological information and processes. E. Executive Order 13771 (Reducing Regulation and Controlling Regulatory Costs): This proposed rule is not an E.O. 13771 (Jan. 30, 2017) regulatory action because this proposed rule is not significant under E.O. 12866 (Sept. 30, 1993). F. Executive Order 13132 (Federalism): This rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under E.O. 13132 (Aug. 4, 1999). G. Executive Order 13175 (Tribal Consultation): This rulemaking will not: (1) have substantial direct effects on one or more Indian tribes; (2) impose substantial direct compliance costs on Indian tribal governments; or (3) preempt tribal law. Therefore, a tribal summary impact statement is not required under E.O. 13175 (Nov. 6, 2000). H. Executive Order 13211 (Energy Effects): This rulemaking is not a significant energy action under E.O. 13211 because this rulemaking is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, a Statement of Energy Effects is not required under E.O. 13211 (May 18, 2001). I. Executive Order 12988 (Civil Justice Reform): This rulemaking meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of E.O. 12988 (Feb. 5, 1996). J. Executive Order 13045 (Protection of Children): This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under E.O. 13045 (Apr. 21, 1997). K. Executive Order 12630 (Taking of Private Property): This rulemaking will not effect a taking of private property or otherwise have taking implications under E.O. 12630 (Mar. 15, 1988). L. Congressional Review Act: Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United States Patent and Trademark Office will submit a report containing the final rule and other required information to the U.S. Senate, the U.S. House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this rulemaking are not expected to result in an annual effect on the economy of $100 million or more, a PO 00000 Frm 00010 Fmt 4702 Sfmt 4702 major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreign-based enterprises in domestic and export markets. Therefore, this rulemaking is not expected to be considered ‘‘major rule’’ as defined in 5 U.S.C. 804(2). M. Unfunded Mandates Reform Act of 1995: The changes in this rulemaking do not involve a Federal intergovernmental mandate that will result in the expenditure by State, local, and tribal governments, in the aggregate, of $100 million (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of $100 million (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the Unfunded Mandates Reform Act of 1995 (see 2 U.S.C. 1501 et seq.). N. National Environmental Policy Act: This rulemaking will not have any effect on the quality of the environment and is thus categorically excluded from review under the National Environmental Policy Act of 1969 (see 42 U.S.C. 4321 et seq.). O. National Technology Transfer and Advancement Act: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions that involve the use of technical standards. P. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) requires that the Office consider the impact of paperwork and other information collection burdens imposed on the public. This rulemaking involves information collection requirements that are subject to review and approval by the Office of Management and Budget (OMB) under the Paperwork Reduction Act. The collections of information involved in this rulemaking have been reviewed and previously approved by OMB under OMB control numbers 0651–0012 (Admission to Practice and Roster of Registered Patent Attorneys and Agents Admitted to Practice before the USPTO) and 0651–0017 (Practitioner Conduct and Discipline). In addition, modifications to 0651–0012 because of this rulemaking will be submitted to OMB for approval prior to this rule becoming effective. The proposed modifications include updating the process under 37 CFR 11.7 and 11.9 for the Form PTO–158 Application for E:\FR\FM\30JYP1.SGM 30JYP1 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules Registration to Practice before the USPTO, to include the option for applicants to extend their time window to schedule their registration examination, therefore reducing the number of applicants who would need to reapply because they did not take the examination in time. The USPTO estimates that the number of Applications for Registration to Practice before the USPTO would decrease by 500 responses due to applicants obtaining an extension rather than reapplying for their registration. Another proposed modification is the removal of USPTO-based testing services. 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 has a currently valid OMB control number. List of Subjects 37 CFR Part 1 Administrative practice and procedure, Biologics, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses. 37 CFR Part 11 Administrative practice and procedure, Inventions and patents, Lawyers, Reporting and recordkeeping requirements. For the reasons set forth in the preamble, the United States Patent and Trademark Office proposes to amend parts 1 and 11 of title 37 of the CFR as follows: PART 1—RULES OF PRACTICE IN PATENT CASES 1. The authority section for part 1 continues to read as follows: ■ Authority: 35 U.S.C. 2(b)(2), unless otherwise noted. 2. Amend § 1.21 by removing and reserving paragraph (a)(1)(ii)(B), adding paragraph (a)(1)(iv), and adding introductory text to paragraph (a)(9) to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS ■ § 1.21 Miscellaneous fees and charges. * * * * * (a) * * * (1) * * * (ii) * * * (B) [Reserved] * * * * * (iv) Request for extension of time in which to schedule examination for VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 registration to practice (non-refundable): $115.00. * * * * * (9) Administrative reinstatement fees: * * * * * PART 11—REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE 3. The authority citation for part 11 continues to read as follows: ■ Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 41; sec. 1, Pub. L. 113– 227, 128 Stat. 2114. 4. Amend § 11.1 by revising the definitions of ‘‘conviction or convicted,’’ ‘‘practitioner,’’ ‘‘roster,’’ ‘‘serious crime,’’ and ‘‘state’’ to read as follows: ■ § 11.1 Definitions. * * * * * Conviction or convicted means any confession to a crime; a verdict or judgment finding a person guilty of a crime; any entered plea, including nolo contendere or Alford plea, to a crime; or receipt of deferred adjudication (whether judgment or sentence has been entered or not) for an accused or pled crime. * * * * * Practitioner means: (1) An attorney or agent registered to practice before the Office in patent matters; (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as provided by § 11.14(a); (b), and (c), to practice before the Office in trademark matters or other non-patent matters; (3) An individual authorized to practice before the Office in patent matters under § 11.9(a) or (b); or (4) An individual authorized to practice before the Office under § 11.16(d). * * * * * Roster or register means a list of individuals who have been registered as either a patent attorney or patent agent. * * * * * Serious crime means: (1) Any criminal offense classified as a felony under the laws of the United States, any state or any foreign country where the crime occurred, or any criminal offense punishable by death or imprisonment of more than one year; or (2) Any crime a necessary element of which, as determined by the statutory or common law definition of such crime in the jurisdiction where the crime occurred, includes interference with the administration of justice, false swearing, misrepresentation, fraud, willful failure PO 00000 Frm 00011 Fmt 4702 Sfmt 4702 45819 to file income tax returns, deceit, bribery, extortion, misappropriation, theft, or an attempt or a conspiracy or solicitation of another to commit a ‘‘serious crime.’’ * * * * * State means any of the 50 states of the United States of America, the District of Columbia, and any commonwealth or territory of the United States of America. * * * * * ■ 5. Amend § 11.2 by revising paragraphs (b)(2) and (4) to read as follows: § 11.2 Director of the Office of Enrollment and Discipline. * * * * * (b) * * * (2) Receive and act upon applications for registration, prepare and grade the registration examination, maintain the register provided for in § 11.5, and perform such other duties in connection with enrollment and recognition of attorneys and agents as may be necessary. * * * * * (4) Conduct investigations of matters involving possible grounds for discipline. Except in matters meriting summary dismissal, no disposition under § 11.22(h) shall be recommended or undertaken by the OED Director until the subject of the investigation has been afforded an opportunity to respond to a reasonable inquiry by the OED Director. * * * * * ■ 6. Add § 11.4 to subpart A to read as follows: § 11.4 Computing time. Computing time. The following rules apply in computing any time period specified in this part where the period is stated in days or a longer unit of time: (a) Exclude the day of the event that triggers the period; (b) Count every day, including intermediate Saturdays, Sundays, and legal holidays; and (c) Include the last day of the period, but if the last day is a Saturday, Sunday, or legal holiday, the period continues to run until the end of the next day that is not a Saturday, Sunday, or legal holiday. ■ 7. Amend § 11.5 by revising paragraphs (a), the introductory text to (b)(1), and (b)(2) to read as follows: § 11.5 Register of attorneys and agents in patent matters; practice before the Office. (a) Register of attorneys and agents. A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants having E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS 45820 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules prospective or immediate business before the Office in the preparation and prosecution of patent applications. Registration in the Office under the provisions of this part shall entitle the individuals so registered to practice before the Office only in patent matters. (b) * * * (1) Practice before the Office in patent matters. Practice before the Office in patent matters includes, but is not limited to, preparing or 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; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other patent proceeding. Registration to practice before the Office in patent matters authorizes the performance of those services that 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 include: * * * * * (2) Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing or prosecuting an application for trademark registration; preparing an amendment that may require written argument to establish the registrability of the mark; preparing or prosecuting a document for maintaining, correcting, amending, canceling, surrendering, or otherwise affecting a registration; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board. ■ 8. Amend § 11.7 by revising paragraphs (b)(1)(i)(B) and (b)(2) and (3); adding paragraph (b)(4); revising paragraphs (d)(3), (e), (f), (g)(1), and (g)(2)(ii); and adding paragraph (l) to read as follows: VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 § 11.7 Requirements for registration. * * * * * (b)(1) * * * (i) * * * (B) Payment of the fees required by § 1.21(a)(1) of this chapter; * * * * * (2) An individual failing the examination may, upon receipt of notice of failure from OED, reapply for admission to the examination. An individual failing the examination for the first or second time must wait 30 days after the date the individual last took the examination before retaking the examination. An individual failing the examination for the third or fourth time must wait 90 days after the date the individual last took the examination before retaking the examination. An individual may not take the examination more than five times. However, upon petition under § 11.2(c), the OED Director may, at his or her discretion, waive this limitation upon such conditions as the OED Director may prescribe. An individual reapplying shall: (i) File a completed application for registration form including all requested information and supporting documents not previously provided to OED, (ii) Pay the fees required by § 1.21(a)(1) of this chapter, (iii) For aliens, provide proof that registration is not inconsistent with the terms of their visa or entry into the United States, and (iv) Provide satisfactory proof of good moral character and reputation. (3) An individual failing to file a complete application for registration will not be admitted to the examination and will be notified of the incompleteness. Applications for registration that are incomplete as originally submitted will be considered only when they have been completed and received by OED, provided that this occurs within 60 days of the mailing date of the notice of incompleteness. Thereafter, a new and complete application for registration must be filed. Only an individual approved as satisfying the requirements of paragraph (b)(1)(i) of this section may be admitted to the examination. (4)(i) A notice of admission shall be sent to those individuals who have been admitted to the registration examination. This notice shall specify a certain period of time in which to schedule and take the examination. (ii) An individual may request an extension of this period of time by written request to the OED Director. Such request must be received by the OED Director prior to the expiration of PO 00000 Frm 00012 Fmt 4702 Sfmt 4702 the period specified in the notice as extended by any previously granted extension and must include the fee specified in § 1.21(a)(1)(iv). Upon the granting of the request, the period of time in which the individual may schedule and take the registration examination shall be extended by 90 days. (iii) An individual who does not take the registration examination within the period of time specified in the notice may not take the examination without filing a new application for registration, as set forth in paragraph (b)(1)(i) of this section. * * * * * (d) * * * * * * * * (3) Certain former Office employees who were not serving in the patent examining corps upon their separation from the Office. The OED Director may waive the taking of a registration examination in the case of a former Office employee meeting the requirements of paragraph (b)(1)(i)(C) of this section who, by petition, demonstrates the necessary legal qualifications to render to patent applicants and others valuable service and assistance in the preparation and prosecution of their applications or other business before the Office by showing that he or she has: (i) Exhibited comprehensive knowledge of patent law equivalent to that shown by passing the registration examination as a result of having been in a position of responsibility in the Office in which he or she: (A) Provided substantial guidance on patent examination policy, including the development of rule or procedure changes, patent examination guidelines, changes to the Manual of Patent Examining Procedure, training or testing materials for the patent examining corps, or materials for the registration examination or continuing legal education; or (B) Represented the Office in patent matters before Federal courts; and (ii) Was rated at least fully successful in each quality performance element of his or her performance plan for said position for the last two complete rating periods in the Office and was not under an oral or written warning regarding such performance elements at the time of separation from the Office. * * * * * (e) Examination results. Notification of the examination results is final. Within 60 days of the mailing date of a notice of failure, the individual is entitled to inspect, but not copy, the questions and answers he or she E:\FR\FM\30JYP1.SGM 30JYP1 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules incorrectly answered. Review will be under supervision. No notes may be taken during such review. Substantive review of the answers or questions may not be pursued by petition for regrade. (f) Application for reciprocal recognition. An individual seeking reciprocal recognition under § 11.6(c), in addition to satisfying the provisions of paragraphs (a) and (b) of this section, and the provisions of § 11.8(b), shall pay the application fee required by § 1.21(a)(1)(i) of this chapter upon filing an application for registration. (g) * * * (1) Every individual seeking recognition shall answer all questions in the application for registration and request(s) for information and evidence issued by OED; disclose all relevant facts, dates, and information; and provide verified copies of documents relevant to his or her good moral character and reputation. An individual who is an attorney shall submit a certified copy of each of his or her State bar applications and determinations of character and reputation, if available. (2) * * * * * * * * (ii) The OED Director, in considering an application for registration by an attorney, may accept a State bar’s determination of character and reputation as meeting the requirements set forth in paragraph (a)(2)(i) of this section if, after review, the Office finds no substantial discrepancy between the information provided with his or her application for registration and the State bar application and determination of character and reputation, provided that acceptance is not inconsistent with other rules and the requirements of 35 U.S.C. 2(b)(2)(D). * * * * * (l) Transfer of status from agent to attorney. An agent registered under § 11.6(b) may request registration as an attorney under § 11.6(a). The agent shall demonstrate his or her good standing as an attorney and pay the fee required by § 1.21(a)(2)(iii) of this chapter. ■ 9. Amend § 11.9 by revising paragraphs (a) and (b) and adding paragraphs (d), (e), and (f), to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.9 Limited recognition in patent matters. (a) Any individual not registered under § 11.6 may, upon a showing of circumstances that render it necessary or justifiable and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 not extend further than the application or applications specified. Limited recognition shall not be granted to individuals who have passed the examination or to those for whom the examination has been waived while such individual’s application for registration to practice before the Office in patent matters is pending. (b) A nonimmigrant alien residing in the United States and fulfilling the provisions of paragraphs (d) and (e) of this section may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States. * * * * * (d) No individual will be granted limited recognition to practice before the Office under paragraph (b) of this section unless he or she has: (1) Applied to the USPTO Director in writing by completing an application form supplied by the OED Director and furnishing all requested information and material; and (2) Established to the satisfaction of the OED Director that he or she: (i) Possesses good moral character and reputation; (ii) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and (iii) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office. (e)(1) To enable the OED Director to determine whether an individual has the qualifications specified in paragraph (d)(2) of this section, the individual shall: (i) File a complete application for limited recognition each time admission to the registration examination is requested. A complete application for limited recognition includes: (A) An application for limited recognition form supplied by the OED Director wherein all requested information and supporting documents are furnished; (B) Payment of the fees required by § 1.21(a)(1) of this chapter; PO 00000 Frm 00013 Fmt 4702 Sfmt 4702 45821 (C) Satisfactory proof of scientific and technical qualifications; and (D) Satisfactory proof that the terms of the individual’s immigration status or entry into the United States authorize employment or training in the preparation and prosecution of patents for others; and (ii) Pass the registration examination. Each individual seeking limited recognition under this section must take and pass the registration examination to enable the OED Director to determine whether the individual possesses the legal and competence qualifications specified in paragraphs (d)(2)(ii) and (d)(2)(iii) of this section. (2) An individual failing the examination may, upon receipt of notice of failure from OED, reapply for admission to the examination. An individual failing the examination for the first or second time must wait 30 days after the date the individual last took the examination before retaking the examination. An individual failing the examination for the third or fourth time must wait 90 days after the date the individual last took the examination before retaking the examination. An individual may not take the examination more than five times. However, upon petition under § 11.2(c), the OED Director may, at his or her discretion, waive this limitation upon such conditions as the OED Director may prescribe. An individual reapplying shall: (i) File a complete application for limited recognition form, including all requested information and supporting documents not previously provided to OED; (ii) Pay the application fee required by § 1.21(a)(1) of this chapter; (iii) Provide satisfactory proof that the terms of the individual’s immigration status or entry into the United States authorize employment or training in the preparation and prosecution of patents for others; and (iv) Provide satisfactory proof of good moral character and reputation. (3) An individual failing to file a complete application will not be admitted to the examination and will be notified of such deficiency. Applications for limited recognition that are incomplete will be considered only when the deficiency has been cured, provided that this occurs within 60 days of the mailing date of the notice of deficiency. Thereafter, a new and complete application for limited recognition must be filed. An individual seeking limited recognition under paragraph (b) of this section must satisfy the requirements of paragraph (e)(1)(i) of E:\FR\FM\30JYP1.SGM 30JYP1 45822 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules this section to be admitted to the examination. (4)(i) A notice of admission shall be sent to those individuals who have been admitted to the registration examination. This notice shall specify a certain period of time in which to schedule and take the examination. (ii) An individual may request an extension of this period of time by written request to the OED Director. Such request must be received by the OED Director prior to the expiration of the period specified in the notice, as extended by any previously granted extension, and must include the fee specified in § 1.21(a)(1)(iv). Upon the granting of the request, the period of time in which the individual may schedule and take the examination shall be extended by 90 days. (iii) An individual who does not take the examination within the period of time specified in the notice may not take the examination without filing a new application for limited recognition as set forth in paragraph (e)(1)(i) of this section. (f) Applications for reinstatement of limited recognition. (1) A person whose grant of limited recognition expired less than five years before the application for reinstatement may be reinstated provided the person: (i) Files a complete application that includes: (A) A request for reinstatement with the fee required by § 1.21(a)(9)(ii); and (B) Satisfactory proof that the terms of the individual’s immigration status or entry into the United States authorize employment or training in the preparation and prosecution of patents for others; and (ii) Provides satisfactory proof of good moral character and reputation. (2) Persons whose grant of limited recognition expired five years or more before filing a complete application for reinstatement must comply with paragraph (f)(1) of this section and provide objective evidence that they continue to possess the necessary legal qualifications to render applicants valuable service to patent applicants. ■ 10. Revise § 11.10 to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.10 Restrictions on practice in patent matters; former and current Office employees; government employees. (a) Only practitioners registered under § 11.6; individuals given limited recognition under § 11.9(a) or (b) or § 11.16; or individuals admitted pro hac vice as provided in § 41.5(a) or § 42.10(c) are permitted to represent others before the Office in patent matters. (b) Post employment agreement of former Office employee. No individual VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 who has served in the patent examining corps or elsewhere in the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking agreeing: (1) To not knowingly act as agent or attorney for or otherwise represent or assist in any manner the representation of any other person: (i) Before the Office, (ii) In connection with any particular patent or patent application, (iii) In which said employee participated personally and substantially as an employee of the Office; and (2) To not knowingly act within two years after terminating employment by the Office as agent or attorney for, or otherwise represent or assist in any manner, the representation of any other person: (i) Before the Office, (ii) In connection with any particular patent or patent application, (iii) If such patent or patent application was pending under the employee’s official responsibility as an officer or employee within a period of one year prior to the termination of such responsibility. ■ 11. Amend § 11.11 by: ■ a. Revising paragraphs (b)(2), (3), (5), and (6); ■ b. Adding paragraph (b)(7); ■ c. Revising paragraphs (c)(1) and (2); ■ d. Adding paragraph (c)(3); ■ e. Revising paragraph (e)(1); ■ f. Revising paragraph (f)(2); and ■ g. Adding paragraph (g). The revisions read as follows: § 11.11 Administrative suspension, inactivation, resignation, reinstatement, and revocation. * * * * * (b) * * * (2) In the event a practitioner fails to comply with the requirements specified in a notice provided pursuant to paragraph (b)(1) of this section within the time allowed, the OED Director shall publish and send to the practitioner a notice to show cause why the practitioner should not be administratively suspended. Such notice shall be sent in the same manner as set forth in paragraph (b)(1) of this section. The OED Director shall file a copy of the notice to show cause with the USPTO Director. (3) A practitioner to whom a notice to show cause under this section has been issued shall be allowed 30 days from the date of the notice to show cause to file a response with the USPTO Director. The response should address any factual and legal bases why the practitioner PO 00000 Frm 00014 Fmt 4702 Sfmt 4702 should not be administratively suspended. The practitioner shall serve the OED Director with a copy of the response at the time it is filed with the USPTO Director. Within 10 days of receiving a copy of the response, the OED Director may file a reply with the USPTO Director. A copy of the reply by the OED Director shall be sent to the practitioner at the practitioner’s address of record. 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 practitioner to pay the requisite fees, the USPTO Director shall enter an order administratively suspending the practitioner. Otherwise, the USPTO Director shall enter an appropriate order dismissing the notice to show cause. Any request for reconsideration of the USPTO Director’s decision must be filed within 20 days after the date such decision is rendered by the USPTO Director. Nothing herein shall permit an administratively suspended practitioner to seek a stay of the suspension during the pendency of any review of the USPTO Director’s final decision. If, prior to the USPTO Director entering an order under this section, the OED Director determines that a practitioner has complied with requirements specified in the notice to show cause, the OED Director may withdraw the notice to show cause, and the practitioner will not be administratively suspended. * * * * * (5) A practitioner 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) A practitioner is prohibited from practicing before the Office in patent matters while administratively suspended. A practitioner who knows he or she has been administratively suspended is subject to discipline for failing to comply with the provisions of this paragraph and shall comply with the provisions of § 11.116. (7) An administratively suspended practitioner may request reinstatement by complying with paragraph (f)(1) of this section. (c) * * * (1) Any registered practitioner who shall become employed by the Office shall comply with § 11.116 for withdrawal from all patent, trademark, and other non-patent 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 E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules registered practitioner employed by the Office shall be endorsed on the register as administratively inactive. Upon separation from the Office, an administratively inactive practitioner may request reactivation by complying with paragraph (f)(2) 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 register as administratively inactive. Upon acceptance of the request, the OED Director shall endorse the name of the practitioner as administratively inactive. Following separation from the bench, the practitioner may request reactivation by complying with paragraph (f)(2) of this section. (3) An administratively inactive practitioner remains subject to the provisions of the USPTO Rules of Professional Conduct and to proceedings and sanctions under §§ 11.19 through 11.58 for conduct that violates a provision of the USPTO Rules of Professional Conduct prior to or during such administrative inactivity. * * * * * (e) * * * (1) A registered practitioner or a practitioner recognized under § 11.14(c) may request to resign by notifying the OED Director in writing of such intent, unless such practitioner is under investigation under § 11.22 for a possible violation of the USPTO Rules of Professional Conduct, is a practitioner against whom probable cause has been found by a panel of the Committee on Discipline under § 11.23(b), or is a respondent in a pending proceeding instituted under § 11.24, § 11.25, or § 11.29. Upon acceptance in writing by the OED Director of such request, that practitioner shall no longer be eligible to practice before the Office in patent matters 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 practitioner whose resignation is accepted shall be 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 § 11.116. VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 A practitioner is subject to investigation and discipline for his or her conduct that occurred prior to, during, or after the period of his or her resignation. * * * * * (f) * * * (2) A practitioner who has been administratively inactivated pursuant to paragraph (c) of this section may be reactivated after his or her employment with the Office ceases or his or her employment in a judicial capacity ceases, provided the following is filed with the OED Director: (i) A completed application for reactivation on a form supplied by the OED Director; (ii) a data sheet; (iii) a signed written undertaking required by § 11.10(b); and (iv) the fee set forth in § 1.21(a)(9)(ii) of this chapter. A practitioner is subject to investigation and discipline for his or her conduct before, during, or after the period of his or her inactivation. Administratively inactive practitioners who have been separated from the Office or have ceased to be employed in a judicial capacity for five or more years prior to filing a complete application for reactivation shall be required to provide objective evidence that they continue to possess the necessary legal qualifications to render valuable service to patent applicants. * * * * * (g) Administrative revocation. (1) The USPTO Director may revoke an individual’s registration or limited recognition if: (i) the registration or limited recognition was issued through mistake or inadvertence, or (ii) the individual’s application for registration or limited recognition contains materially false information or omits material information. (2) Whenever it appears that grounds for administrative revocation exist, the OED Director shall issue to the individual a notice to show cause why the individual’s registration or limited recognition should not be revoked. (i) The notice to show cause shall be served on the individual in the same manner as described in § 11.35. (ii) The notice to show cause shall state the grounds for the proposed revocation. (iii) The OED Director shall file a copy of the notice to show cause with the USPTO Director. (3) Within 30 days after service of the notice to show cause, the individual may file a response to the notice to show cause with the USPTO Director. The response should address any factual or legal bases why the individual’s registration or limited recognition should not be revoked. The individual PO 00000 Frm 00015 Fmt 4702 Sfmt 4702 45823 shall serve the OED Director with a copy of the response at the time it is filed with the USPTO Director. Within 10 days of receiving a copy of the response, the OED Director may file a reply with the USPTO Director. A copy of the reply by the OED Director shall be sent to the individual at the individual’s address of record. (4) 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 grounds for the notice to show cause, the USPTO Director shall enter an order revoking the individual’s registration or limited recognition. Otherwise, the USPTO Director shall enter an appropriate order dismissing the notice to show cause. An oral hearing will not be granted unless so ordered by the USPTO Director, upon a finding that such hearing is necessary. Any request for reconsideration of the USPTO Director’s decision must be filed within 20 days after the date such decision is rendered by the USPTO Director. Nothing herein shall permit an individual to seek a stay of the revocation during the pendency of any review of the USPTO Director’s final decision. ■ 12. Amend § 11.18 by revising paragraph (c)(2) to read as follows: § 11.18 Signature and certificate for correspondence filed in the Office. * * * * * (c) * * * (2) Referring a practitioner’s conduct to the Director of the Office of Enrollment and Discipline for appropriate action; * * * * * ■ 13. Amend § 11.19 by revising the section heading and paragraphs (a), (b)(1)(ii), and (c), and by adding paragraph (e), to read as follows: § 11.19 Disciplinary jurisdiction; grounds for discipline and for transfer to disability inactive status. (a) Disciplinary jurisdiction. All practitioners engaged in practice before the Office; all practitioners administratively suspended under § 11.11; all practitioners registered or recognized to practice before the Office in patent matters; all practitioners resigned, inactivated, or in emeritus status under § 11.11; all practitioners authorized under §§ 41.5(a) or 42.10(c); and all practitioners transferred to disability inactive status or publicly disciplined by a duly constituted authority are subject to the disciplinary jurisdiction of the Office and subject to being transferred to disability inactive E:\FR\FM\30JYP1.SGM 30JYP1 45824 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules status. A non-practitioner is also subject to the disciplinary authority of the Office if the person engages in or offers to engage in practice before the Office without proper authority. (b) * * * (1) * * * (ii) Discipline on ethical or professional misconduct grounds imposed in another jurisdiction or disciplinary disqualification from participating in or appearing before any Federal program or agency; * * * * * (c) Petitions to disqualify a practitioner in ex parte or inter partes matters in the Office are not governed by this subpart and will be handled on a case-by-case basis under such conditions as the USPTO Director deems appropriate. * * * * * (e) The OED Director has the discretion to choose any of the independent grounds of discipline under paragraph (b) of this section and to pursue any of the procedures set forth in this subpart in every disciplinary proceeding. ■ 14. Amend § 11.20 by revising paragraphs (a)(4) and (c) to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.20 Disciplinary sanctions; Transfer to disability inactive status. (a) * * * (4) Probation. Probation may be imposed in lieu of or in addition to any other disciplinary sanction. The conditions of probation shall be stated in the order imposing probation. Violation of any condition of probation shall be cause for imposition of the disciplinary sanction. Imposition of the disciplinary sanction predicated upon violation of probation shall occur only after a notice to show cause why the disciplinary sanction should not be imposed is resolved adversely to the practitioner. * * * * * (c) Transfer to disability inactive status. As set forth in § 11.29, the USPTO Director, after notice and opportunity for a hearing, may transfer a practitioner to disability inactive status where grounds exist to believe the practitioner has been transferred to disability inactive status in another jurisdiction, has been judicially declared incompetent, has been judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or has been placed by court order under guardianship or conservatorship. ■ 15. Revise § 11.21 to read as follows: VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 § 11.21 Warnings. A warning is neither public nor a disciplinary sanction. The OED Director may conclude an investigation with the issuance of a warning. The warning shall contain a statement of facts and identify the USPTO Rules of Professional Conduct relevant to the facts. ■ 16. Amend § 11.22 by adding paragraph (c) and by revising paragraphs (g) and (h) to read as follows: § 11.22 Disciplinary investigations. * * * * * (c) Notice to the OED Director. Within 30 days of being (1) publicly disciplined as specified in § 11.24; (2) disciplinarily disqualified from participating in or appearing before any Federal program or agency as specified in § 11.24; (3) convicted of a crime in a court of the United States, any State, or a foreign country as specified in § 11.25; or (4) transferred to disability inactive status in another jurisdiction as specified in § 11.29, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same. Upon receiving such notification, the OED Director shall obtain a certified copy of the record or order regarding such discipline, disqualification, conviction, or transfer. A certified copy of the record or order regarding the discipline, disqualification, conviction, or transfer shall be clear and convincing evidence that the practitioner has been disciplined, disqualified, convicted of a crime, or transferred to disability status by another jurisdiction. * * * * * (g) Where the OED Director makes a request under paragraph (f)(2) of this section to a Contact Member of the Committee on Discipline, such Contact Member shall 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 determination under § 11.23(b) concerning such practitioner. (h) Disposition of investigation. Upon the conclusion of an investigation, the OED Director may take appropriate action, including but not limited to: (1) Closing the investigation without issuing a warning or taking disciplinary action; (2) Issuing a warning to the practitioner; (3) Instituting formal charges upon the approval of the Committee on Discipline; or (4) Entering into a settlement agreement with the practitioner and PO 00000 Frm 00016 Fmt 4702 Sfmt 4702 submitting the same for approval of the USPTO Director. * * * * * ■ 17. Amend § 11.24 by revising paragraph (a), the introductory text to paragraph (b), the introductory text to paragraph (d)(1), and paragraph (e) to read as follows: § 11.24 Reciprocal discipline. (a) Notice to the OED Director. Within 30 days of being publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended by another jurisdiction, or disciplinarily disqualified from participating in or appearing before any Federal program or agency, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same. A practitioner is deemed to be disbarred if he or she is disbarred, excluded on consent, or has resigned in lieu of discipline or a disciplinary proceeding. Upon receiving notification from any source or otherwise learning that a practitioner subject to the disciplinary jurisdiction of the Office has been publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended, or disciplinarily disqualified, the OED Director shall obtain a certified copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension, or disciplinary disqualification. A certified copy of the record or order regarding the discipline shall establish a prima facie case by clear and convincing evidence that the practitioner has been publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended, or disciplinarily disqualified by another jurisdiction. In addition to the actions identified in § 11.22(h) and (i), the OED Director may, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the public censure, public reprimand, probation, disbarment, suspension, or disciplinary disqualification. The OED Director may request the USPTO Director to issue a notice and order as set forth in paragraph (b) of this section. (b) Notification served on practitioner. Upon receipt of the complaint and request for notice and order, the USPTO Director shall issue a notice directed to the practitioner in accordance with § 11.35 and to the OED Director containing: * * * * * (d) * * * (1) The USPTO Director shall hear the matter on the documentary record E:\FR\FM\30JYP1.SGM 30JYP1 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules unless the USPTO Director determines that an oral hearing is necessary. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. After expiration of the period specified in paragraph (b)(3) of this section, the USPTO Director shall consider the record and shall impose the identical public censure, public reprimand, probation, disbarment, suspension, or disciplinary disqualification unless the practitioner demonstrates by clear and convincing evidence, and the USPTO Director finds there is a genuine issue of material fact that: * * * * * (e) Adjudication in another jurisdiction or Federal agency or program. In all other respects, a final adjudication, regardless of the evidentiary standard, in another jurisdiction or Federal agency or program that a practitioner, whether or not admitted in that jurisdiction, has committed misconduct shall establish a prima facie case by clear and convincing evidence that the practitioner has engaged in misconduct under § 11.804(h). * * * * * ■ 18. Amend § 11.25 by: ■ a. Revising paragraph (a), ■ b. Revising the introductory text of paragraph (b)(2), and ■ c. Revising paragraphs (b)(3) and (e)(2). The revisions read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.25 Interim suspension and discipline based upon conviction of committing a serious crime. (a) Notice to the OED Director. 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 30 days from the date of such conviction. Notwithstanding the preceding sentence, a practitioner is not required to notify the OED Director of a traffic offense that did not involve the use of alcohol or a controlled substance, did not result in a fine in excess of $300, and did not result in the imposition of any other punishment. Upon being advised or learning that a practitioner subject to the disciplinary jurisdiction of the Office has been convicted of a crime, the OED Director shall make a preliminary determination whether the crime constitutes a serious crime warranting interim suspension. If the crime is a serious crime, the OED Director may file with the USPTO Director proof of the conviction and VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 request the USPTO Director to issue a notice and order set forth in paragraph (b)(2) of this section. The OED Director may, in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the conviction of a serious crime. If the crime is not a serious crime, the OED Director may process the matter in the same manner as any other information or evidence of a possible violation of any USPTO Rule of Professional Conduct coming to the attention of the OED Director. (b) * * * (2) Notification served on practitioner. Upon receipt of a certified copy of the court record, docket entry, or judgment demonstrating that the practitioner has been so convicted, together with the complaint, the USPTO Director shall issue a notice directed to the practitioner in accordance with § 11.35, and to the OED Director, containing: * * * * * (3) Hearing and final order on request for interim suspension. The request for interim suspension shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that the practitioner’s response establishes by clear and convincing evidence 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 that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. If the USPTO Director determines that there is no genuine issue of material fact, the USPTO Director shall enter an appropriate final order regarding the OED Director’s request for interim suspension regardless of the pendency of any criminal appeal. If the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director shall enter a final order dismissing the request and enter a further order referring the complaint to a hearing officer for a hearing and entry of an initial decision in accordance with the other rules in this part and directing the practitioner to file an answer to the complaint in accordance with § 11.36. * * * * * (e) * * * (2) Following conviction of a serious crime. Any practitioner convicted of a serious crime and disciplined in whole PO 00000 Frm 00017 Fmt 4702 Sfmt 4702 45825 or in part in regard to that conviction, may petition for reinstatement under the conditions set forth in § 11.60 no earlier than after completion of service of his or her sentence, or after completion of service under probation or parole, whichever is later. * * * * * ■ 19. Revise § 11.26 to read as follows: § 11.26 Settlement. A settlement conference may occur between the OED Director and a practitioner at any time after the initiation of an investigation. Evidence shall not be excludable on the grounds that such evidence was presented or discussed in a settlement conference. However, any offers of compromise and any statements about settlement made during the course of the settlement conference shall not be admissible in a disciplinary proceeding. 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 shall be effective only upon entry of a final decision by the USPTO Director. ■ 20. Amend § 11.27 by revising paragraph (b) and by removing and reserving paragraph (c) to read as follows: § 11.27 Exclusion on consent. * * * * * (b) Action by the USPTO Director. Upon receipt of the required affidavit, the OED Director shall file the affidavit and any related papers with the USPTO Director for review and approval. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. The OED Director may also file comments in response to the affidavit. If the affidavit is approved, the USPTO Director will enter an order excluding the practitioner on consent and providing other appropriate actions. Upon entry of the order, the excluded practitioner shall comply with the requirements set forth in § 11.58. (c) [Reserved] * * * * * ■ 21. Amend § 11.28 by revising paragraphs (a)(1), (a)(1)(i)(D) and (E), and (a)(2) to read as follows: § 11.28 Incapacitated practitioners in a disciplinary proceeding. (a) * * * (1) Practitioner’s motion. In the course of a disciplinary proceeding under § 11.32, the practitioner may file a E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS 45826 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules 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. (i) * * * (D) Written consent by the practitioner to be transferred to disability inactive status if the motion is granted; and (E) Written agreement by the practitioner not to practice before the Office in patent, trademark, or other non-patent matters while in disability inactive status. * * * * * (2) Disposition of practitioner’s motion. The hearing officer shall decide the motion and any response thereto. The motion shall be granted upon a showing of good cause to believe the practitioner to be incapacitated as alleged. If the required showing is made, the hearing officer shall enter an order holding the disciplinary proceeding in abeyance. In the case of addiction to drugs or intoxicants, the order may provide that the practitioner will not be returned to active status absent satisfaction of specified conditions. Upon receipt of the order, the OED Director shall transfer the practitioner to disability inactive status, give notice to the practitioner, cause notice to be published, and give notice to appropriate authorities in the Office that the practitioner has been placed in disability inactive status. The practitioner shall comply with the provisions of § 11.58 and shall 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 paragraph (c) or (d) of this section. A practitioner in disability inactive status must obtain permission from the OED Director to engage in paralegal activity permitted under § 11.58(h). Permission will be granted only if the practitioner has complied with all the conditions of § 11.58 applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(h). * * * * * ■ 22. Amend § 11.29 by revising paragraphs (a), (b), (d), (g), and (i) to read as follows: § 11.29 Reciprocal transfer or initial transfer to disability inactive status. (a) Notice to the OED Director. (1) Transfer to disability inactive status in VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 another jurisdiction as grounds for reciprocal transfer by the Office. Within 30 days of being transferred to disability inactive status in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the transfer. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status in another jurisdiction, the OED Director shall obtain a certified copy of the order. If the OED Director finds that transfer to disability inactive status is appropriate, the OED Director shall file with the USPTO Director: (i) The order; (ii) A request that the practitioner be transferred to disability inactive status, including the specific grounds therefor; and (iii) A request that the USPTO Director issue a notice and order as set forth in paragraph (b) of this section. (2) Involuntary commitment, adjudication of incompetency, or court ordered placement under guardianship or conservatorship as grounds for initial transfer to disability inactive status. Within 30 days of being 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 in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of such judicial action. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been subject to such judicial action, the OED Director shall obtain a certified copy of the order. If the OED Director finds that transfer to disability inactive status is appropriate, the OED Director shall file with the USPTO Director: (i) The order; (ii) A request that the practitioner be transferred to disability inactive status, including the specific grounds therefor; and (iii) A request that the USPTO Director issue a notice and order as set forth in paragraph (b) of this section. (b) Notice served on practitioner. Upon receipt of a certified copy of an order or declaration issued by another jurisdiction demonstrating that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status, judicially declared incompetent, judicially ordered to be involuntarily committed after a judicial hearing on the grounds of incompetency or disability, or placed by court order PO 00000 Frm 00018 Fmt 4702 Sfmt 4702 under guardianship or conservatorship, together with the OED Director’s request, the USPTO Director shall issue a notice, comporting with § 11.35, directed to the practitioner containing: (1) A copy of the order or declaration from the other jurisdiction; (2) A copy of the OED Director’s request; and (3) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within 40 days from the date of the notice, establishing by clear and convincing evidence a genuine issue of material fact supported by an affidavit and predicated upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this section that a transfer to disability inactive status would be unwarranted and the reasons therefor. * * * * * (d) Transfer to disability inactive status. (1) The request for transfer to disability inactive status shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that there is a genuine issue of material fact, in which case the USPTO Director may deny the request. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. After expiration of the period specified in paragraph (b)(3) of this section, and after completion of any supplemental hearings, the USPTO Director shall consider any timely filed response and impose the identical transfer to disability inactive status based on the practitioner’s transfer to disability status in another jurisdiction or shall transfer the practitioner to disability inactive status based on judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or courtordered placement under guardianship or conservatorship, unless the practitioner demonstrates by clear and convincing evidence, and the USPTO Director finds there is a genuine issue of material fact that: (i) The procedure was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process; (ii) There was such infirmity of proof establishing the transfer to disability status, judicial declaration of incompetence, judicial order for involuntary commitment on the grounds of incompetency or disability, or placement by court order under guardianship or conservatorship that the USPTO Director could not, consistent with Office’s duty, accept as final the conclusion on that subject; E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules (iii) The imposition of the same disability status or transfer to disability status by the USPTO Director would result in grave injustice; or (iv) The practitioner is not the individual transferred to disability status, judicially declared incompetent, judicially ordered for involuntary commitment on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship. (2) If the USPTO Director determines that there is no genuine issue of material fact with regard to any of the elements of paragraphs (d)(1)(i) through (d)(1)(iv) of this section, the USPTO Director shall enter an appropriate final order. If the USPTO Director is unable to make that determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order dismissing the OED Director’s request for such reason. * * * * * (g) Order imposing reciprocal transfer to disability inactive status or order imposing initial transfer to disability inactive status. An order by the USPTO Director imposing reciprocal transfer to disability inactive status or transferring a practitioner to disability inactive status shall be effective immediately and shall be for an indefinite period until further order of the USPTO Director. A copy of the order transferring a practitioner to disability inactive status shall be served upon the practitioner, the practitioner’s guardian, and/or the director of the institution to which the practitioner has been committed in the manner the USPTO Director may direct. A practitioner reciprocally transferred or transferred to disability inactive status shall comply with the provisions of this section and § 11.58 and shall not engage in practice before the Office in patent, trademark, and other non-patent law unless and until reinstated to active status. * * * * * (i) Employment of practitioners on disability inactive status. A practitioner in disability inactive status must obtain permission from the OED Director to engage in paralegal activity permitted under § 11.58(h). Permission will be granted only if the practitioner has complied with all the conditions of § 11.58 applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(h). * * * * * ■ 23. Amend § 11.34 by revising paragraph (c) to read as follows: VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 § 11.34 Complaint. * * * * * (c) The complaint shall be filed in the manner prescribed by the USPTO Director. The term ‘‘filed’’ means the delivery, mailing, or electronic transmission of a document to a hearing officer or designee in connection with a disciplinary complaint or related matter. * * * * * ■ 24. Revise § 11.35 to read as follows: § 11.35 Service of complaint. (a) A complaint may be served on a respondent by any of the following methods: (1) By delivering a copy of the complaint personally to the respondent, in which case the individual who delivers the complaint to the respondent shall file an affidavit with the OED Director indicating the time and place the complaint was delivered to the respondent. (2) By mailing a copy of the complaint by Priority Mail Express®, first-class mail, or any delivery service that provides confirmation of delivery or attempted delivery to: (i) A respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11, or (ii) A respondent who is not registered at the last address for the respondent known to the OED Director. (3) By any method mutually agreeable to the OED Director and the respondent. (4) In the case of a respondent who resides outside the United States, by sending a copy of the complaint by any delivery service that provides the ability to confirm delivery or attempted delivery, to: (i) A respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11; or (ii) A respondent who is not registered at the last address for the respondent known to the OED Director. (b) If a copy of the complaint cannot be delivered to the respondent through any one of the procedures in paragraph (a) of this section, the OED Director shall serve the respondent by causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in which case the time for filing an answer shall be 30 days from the second publication of the notice. Failure to timely file an answer will constitute an admission of the allegations in the complaint in accordance with § 11.36(d), and the hearing officer may enter an initial decision on default. (c) If the respondent is known to the OED Director to be represented by an attorney under § 11.40(a), a copy of the complaint may be served on the attorney in lieu of service on the PO 00000 Frm 00019 Fmt 4702 Sfmt 4702 45827 respondent in the manner provided for in paragraph (a) or (b) of this section. ■ 25. Amend § 11.39 by revising the section heading and paragraphs (a), (b), and (f) to read as follows: § 11.39 Hearing officer; responsibilities; review of interlocutory orders; stays. (a) Designation. A hearing officer designated by the USPTO Director shall conduct disciplinary proceedings as provided by this part. (b) Independence of the hearing officer. (1) A hearing officer designated in accordance with paragraph (a) of this section shall not be subject to first-level or second-level supervision by either the USPTO Director or OED Director or his or her designee. (2) A hearing officer designated in accordance with paragraph (a) of this section shall not be subject to supervision of the person(s) investigating or prosecuting the case. (3) A hearing officer designated in accordance with paragraph (a) of this section shall be impartial, shall not be an individual who has participated in any manner in the decision to initiate the proceedings, and shall not have been employed under the immediate supervision of the practitioner. (4) A hearing officer designated in accordance with paragraph (a) of this section shall be either an administrative law judge appointed under 5 U.S.C. 3105 or an attorney designated under 35 U.S.C. 32. The hearing officer shall possess suitable experience and training in conducting hearings, reaching a determination, and rendering an initial decision in an equitable manner. * * * * * (f) Stays pending review of interlocutory order. If the OED Director or a respondent seeks review of an interlocutory order of a hearing officer under paragraph (e)(2) of this section, any time period set by the hearing officer for taking action shall not be stayed unless ordered by the USPTO Director or the hearing officer. * * * * * ■ 26. Amend § 11.40 by revising paragraph (b) and by adding paragraph (c) to read as follows: § 11.40 Representative for OED Director or respondent. * * * * * (b) The Deputy General Counsel for Intellectual Property and Solicitor and attorneys in the Office of the Solicitor shall represent the OED Director. The attorneys representing the OED Director in disciplinary proceedings shall not consult with the USPTO Director, the General Counsel, the Deputy General Counsel for General Law, or an E:\FR\FM\30JYP1.SGM 30JYP1 45828 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules individual designated by the USPTO Director to decide disciplinary matters regarding the proceeding. (c) The General Counsel and the Deputy General Counsel for General Law shall remain screened from the investigation and prosecution of all disciplinary proceedings in order that they shall be available as counsel to the USPTO Director in deciding disciplinary proceedings unless access is appropriate to perform their duties. After a final decision is entered in a disciplinary proceeding, the OED Director and attorneys representing the OED Director shall be available to counsel the USPTO Director, the General Counsel, and the Deputy General Counsel for General Law in any further proceedings. ■ 27. Amend § 11.41 by revising paragraph (a) to read as follows: § 11.41 Filing of papers. (a) The provisions of §§ 1.8 and 2.197 of this chapter do not apply to disciplinary proceedings. All papers filed after the complaint and prior to entry of an initial decision by the hearing officer shall be filed with the hearing officer at an address or place designated by the hearing officer. The term ‘‘filed’’ means the delivery, mailing, or electronic transmission of a document to a hearing officer or designee in connection with a disciplinary complaint or related matter. * * * * * ■ 28. Revise § 11.43 to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.43 Motions before a hearing officer. Motions, including all prehearing motions commonly filed under the Federal Rules of Civil Procedure, shall be served on the opposing party and filed with the hearing officer. Each motion shall be accompanied by a written memorandum setting forth a concise statement of the facts and supporting reasons, along with a citation of the authorities upon which the movant relies. Unless extended by the tribunal for good cause, an opposing party shall serve and file a memorandum in response to the motion within 21 days of the date of service of the motion, and the moving party may file a reply memorandum within 14 days after service of the opposing party’s responsive memorandum. All memoranda shall be double-spaced and written in 12-point font unless otherwise ordered by the hearing officer. Every motion must include a statement that the moving party or attorney for the moving party has conferred with the opposing party or attorney for the opposing party in a good-faith effort to resolve the issues raised by the motion VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 and whether the motion is opposed. If, prior to a decision on the motion, the parties resolve issues raised by a motion presented to the hearing officer, the parties shall promptly notify the hearing officer. ■ 29. Amend § 11.44 by revising paragraphs (a) and (b) to read as follows: § 11.44 Hearings. (a) The hearing officer shall preside over hearings in disciplinary proceedings. After the time for filing an answer has elapsed, the hearing officer shall set the time and place for the hearing. In cases involving an incarcerated respondent, any necessary oral hearing may be held at the location of incarceration. Oral hearings will be stenographically recorded and transcribed, and the testimony of witnesses will be received under oath or affirmation. The hearing officer shall conduct the hearing as if the proceeding were subject to 5 U.S.C. 556. A copy of the transcript of the hearing shall become part of the record. A copy of the transcript shall be provided to the OED Director and the respondent at the expense of the Office. (b) If the respondent to a disciplinary proceeding fails to appear at the hearing after a notice of hearing has been issued by the hearing officer, the hearing officer may deem the respondent to have waived the opportunity for a hearing and may proceed with the hearing in the absence of the respondent. Where the respondent does not appear, the hearing officer may strike the answer or any other pleading, deem the respondent to have admitted the facts as alleged in the complaint, receive evidence in aggravation or mitigation, enter a default judgment, and/or enter an initial decision imposing discipline on the respondent. * * * * * ■ 30. Amend § 11.50 by revising paragraph (a) to read as follows: § 11.50 Evidence. (a) Rules of evidence. The rules of evidence prevailing in courts of law and equity are not controlling in hearings in disciplinary proceedings. However, the hearing officer shall exclude evidence that is irrelevant, immaterial, speculative, or unduly repetitious. * * * * * ■ 31. Revise § 11.51 to read as follows: § 11.51 Depositions. (a) Depositions for use at the hearing in lieu of the personal appearance of a witness before the hearing officer may be taken by the respondent or the OED Director (i) by agreement or (ii) upon a showing of good cause and with the PO 00000 Frm 00020 Fmt 4702 Sfmt 4702 approval of, and under such conditions as may be deemed appropriate by, the hearing officer. If a motion to take a deposition is granted, the hearing officer shall authorize a subpoena to be issued pursuant to 35 U.S.C. 24. If the deponent is a USPTO employee, the respondent shall comply with the requirements of part 104 of this chapter. (b) A party seeking a deposition shall give reasonable notice of not less than 14 days unless a shorter period is agreed upon by the parties or authorized by the hearing officer. The notice shall state the date, time, and place of the deposition. (c) Depositions may be taken upon oral or written questions before any officer authorized to administer an oath or affirmation in the place where the deposition is to be taken. Deposition expenses shall be borne by the party at whose instance the deposition is taken. (d) When a deposition is taken upon written questions, copies of the written questions will be served upon the other party with the notice, and copies of any written cross-questions will be served by hand or Priority Mail Express® not less than five days before the date of the taking of the deposition unless the parties mutually agree otherwise. (e) Testimony by deposition may be recorded by audiovisual means provided that: (1) the notice of deposition states that the method of recording is audiovisual, and (2) a written transcript of the deposition is prepared by a court reporter who was present at the deposition and recorded the testimony. (f) A party on whose behalf a deposition is taken shall file with the hearing officer a copy of a transcript of the deposition signed by a court reporter and a copy of any audiovisual recording and shall serve one copy of the transcript and any audiovisual recording upon the opposing party. (g) Depositions may not be taken to obtain discovery, except as provided for in paragraph (h) of this section. (h) When the OED Director and the respondent agree in writing, a discovery deposition of any witness who will appear voluntarily may be taken under such terms and conditions as may be mutually agreeable to the OED Director and the respondent. The deposition shall not be filed with the hearing officer and may not be admitted into evidence before the hearing officer unless he or she orders the deposition admitted into evidence. The admissibility of the deposition shall lie within the discretion of the hearing officer, who may reject the deposition on any reasonable basis, including the E:\FR\FM\30JYP1.SGM 30JYP1 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules fact that demeanor is involved and that the witness should have been called to appear personally before the hearing officer. ■ 32. Revise § 11.52 to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.52 Written discovery. (a) After an answer is filed under § 11.36, a party may seek written discovery of only relevant evidence. The party seeking written discovery shall file a motion under § 11.43 explaining in detail, for each request made, how the discovery sought is reasonable and relevant to an issue actually raised in the complaint or the answer. The motion shall include a copy of the proposed written discovery requests. Any response shall include specific objections to each request, if any. Any objection not raised in the response will be deemed to have been waived. (b) If the hearing officer concludes that the proposed written discovery is reasonable and relevant, the hearing officer, under such conditions as he or she deems appropriate, may order an opposing party, within 30 days, or longer if so ordered by the hearing officer, to: (1) Answer a reasonable number of requests for admission, including requests for admission as to the genuineness of documents; (2) Answer a reasonable number of interrogatories; (3) Produce for inspection and copying a reasonable number of documents; and (4) Produce for inspection a reasonable number of things other than documents. (c) Discovery shall not be authorized under paragraph (a) of this section of any matter that: (1) Will be used by another party solely for impeachment; (2) Is not available to the party under 35 U.S.C. 122; (3) Relates to any other disciplinary proceeding before the Office; (4) Relates to experts; (5) Is privileged; or (6) Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or other representative of a party. (d) The hearing officer may deny discovery requested under paragraph (a) of this section if the discovery sought: (1) Will unduly delay the disciplinary proceeding; (2) Will place an undue burden on the party required to produce the discovery sought; or (3) Consists of information that is available: (i) Generally to the public, (ii) Equally to the parties, or VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 (iii) To the party seeking the discovery through another source. (e) A request for admission will be deemed admitted if the party to whom the request is directed fails to respond or object to the request within the time allowed. (f) The hearing officer may require parties to file and serve, prior to any hearing, a pre-hearing statement that contains: (1) A list (together with a copy) of all proposed exhibits to be used in connection with a party’s case-in-chief; (2) A list of proposed witnesses; (3) As to each proposed expert witness: (i) An identification of the field in which the individual will be qualified as an expert, (ii) A statement as to the subject matter on which the expert is expected to testify, (iii) A complete statement of all opinions to which the expert is expected to testify and the basis and reasons for them, and (iv) A description of all facts or data considered by the expert in forming the opinions; and (4) Copies of memoranda reflecting the respondent’s own statements to administrative representatives. ■ 33. Revise § 11.53 to read as follows: § 11.53 Proposed findings and conclusions; post-hearing memorandum. (a) Except in cases in which the respondent has failed to answer the complaint or the amended complaint, or appear at a hearing, the hearing officer, prior to making an initial decision, shall afford the parties a reasonable opportunity to submit proposed findings and conclusions and a posthearing memorandum in support of the proposed findings and conclusions. (b) The OED Director shall serve and file a post-hearing memorandum within 30 days after the hearing transcript has been filed with the hearing officer. The respondent shall have 30 days after service of the OED Director’s posthearing memorandum to file a responsive post-hearing memorandum. The OED Director may file a reply memorandum within 21 days after service of any responsive post-hearing memorandum. (c) The respondent shall serve and file a post-hearing memorandum with respect to any asserted affirmative defenses, or other matters for which the respondent bears the burden of proof, within 30 days after the hearing transcript has been filed with the hearing officer. The OED Director shall have 30 days after service of the respondent’s post-hearing memorandum PO 00000 Frm 00021 Fmt 4702 Sfmt 4702 45829 to file a responsive post-hearing memorandum. The respondent may file a reply memorandum within 21 days after service of any responsive posthearing memorandum. (d) The OED Director’s and the respondent’s responsive post-hearing memoranda shall be limited to 50 pages, 12-point font, double-spacing, and oneinch margins, and the reply memoranda shall be limited to 25 pages, 12-point font, double-spacing, and one-inch margins, unless otherwise ordered by the hearing officer. (e) The hearing officer may extend the time for filing a post-hearing memorandum and may also increase the page limits, for good cause shown. ■ 34. Revise § 11.54 to read as follows: § 11.54 Initial decision of hearing officer. (a) The hearing officer shall make an initial decision in the case. The decision will include: (1) A statement of findings of fact and conclusions of law, as well as the reasons or bases for those findings and conclusions with specific references to the record, upon all the material issues of fact, law, or discretion presented on the record; and (2) An order of default judgment, of suspension or exclusion from practice, of reprimand, of probation, or an order dismissing the complaint. The order also may impose any conditions deemed appropriate under the circumstances. (b) The initial decision of the hearing officer shall explain the reason for any default judgment, reprimand, suspension, exclusion, or probation and shall explain any conditions imposed with discipline. In determining any sanction, the following four factors shall be considered if they are applicable: (1) Whether the practitioner has violated a duty owed to a client, the public, the legal system, or the profession; (2) Whether the practitioner acted intentionally, knowingly, or negligently; (3) The amount of the actual or potential injury caused by the practitioner’s misconduct; and (4) The existence of any aggravating or mitigating factors. (c) The hearing officer shall transmit a copy of the initial decision to the OED Director and to the respondent and shall transmit the record of the proceeding to the OED Director within 14 days, or as soon as practicable if thereafter, of the date of the initial decision. (d) In the absence of an appeal to the USPTO Director, the decision of the hearing officer will, without further proceedings, become the final decision of the USPTO Director 30 days from the date of the decision of the hearing officer. E:\FR\FM\30JYP1.SGM 30JYP1 45830 ■ 35. Revise § 11.55 to read as follows: § 11.55 khammond on DSKJM1Z7X2PROD with PROPOSALS Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules Appeal to the USPTO Director. (a) Within 14 days after the date of the initial decision of the hearing officer under §§ 11.25 or 11.54, either party may appeal to the USPTO Director by filing a notice of appeal. The notice shall be filed with the General Counsel for the USPTO Director at the address set forth in § 1.1(a)(3)(iv) of this chapter and served on the opposing party. If both parties file notices of appeal, the first to file is deemed the appellant for purposes of this rule. If both file on the same day, the respondent is deemed the appellant. (b) Any notice of cross-appeal shall be filed within 14 days after the date of service of the notice of appeal. (c) After a notice of appeal is filed, the OED Director shall transmit the entire record to the USPTO Director and provide a copy to the respondent. (d) The appellant’s brief shall be filed within 30 days after the date of service of the record. (e) Any appellee’s brief shall be filed within 30 days after the date of service of the appellant’s brief. (f) The appellant’s and appellee’s briefs shall comply with the Federal Rules of Appellate Procedure 28(a)(2), (3), (5), (10), and 32(a)(4)–(7) unless otherwise ordered by the USPTO Director. (g) Any reply brief shall be filed within 14 days after the date of service of the appellee’s brief and, unless otherwise ordered by the USPTO Director, shall comply with Rules 28(c) and 32(a)(4)–(7) of the Federal Rules of Appellate Procedure. (h) If a cross-appeal has been filed, the parties shall comply with Rules 28.1(c), (e), and (f) of the Federal Rules of Appellate Procedure unless otherwise ordered by the USPTO Director. (i) References to the record in the briefs must be to the pages of the certified record. (j) An appeal or cross-appeal must include exceptions to the decisions of the hearing officer and supporting reasons for those exceptions. Any exception not raised will be deemed to have been waived and will be disregarded by the USPTO Director in reviewing the initial decision. (k) The USPTO Director may refuse entry of a nonconforming brief. (l) The USPTO Director will decide the appeal on the record made before the hearing officer. (m) Unless the USPTO Director permits, no further briefs or motions shall be filed. The USPTO Director may extend the time for filing a brief upon the granting of a motion accompanied VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 by a supporting affidavit setting forth good cause warranting the extension. (n) The USPTO Director may order reopening of a disciplinary proceeding in accordance with the principles that govern the granting of new trials. Any request to reopen a disciplinary proceeding on the basis of newly discovered evidence must demonstrate that the newly discovered evidence could not have been discovered any earlier by due diligence. (o) Motions shall be served on the opposing party and filed with the USPTO Director. Each motion shall be accompanied by a written memorandum setting forth a concise statement of the facts and supporting reasons, along with a citation of the authorities upon which the movant relies. Unless extended by the USPTO Director for good cause, within 21 days of the date of service of the motion, an opposing party shall serve and file a response to the motion, and the moving party may file a reply within 14 days after service of the opposing party’s responsive memorandum. All memoranda shall comply with Rules 32(a)(4)–(6) of the Federal Rules of Appellate Procedure unless otherwise ordered by the USPTO Director. Every motion must include a statement that the moving party or attorney for the moving party has conferred with the opposing party or attorney for the opposing party in a good faith effort to resolve the issues raised by the motion and whether the motion is opposed. If, prior to a decision on the motion, the parties resolve issues raised by a motion presented to the USPTO Director, the parties shall promptly notify the USPTO Director. ■ 36. Amend § 11.56 by revising paragraph (c) to read as follows: § 11.56 Decision of the USPTO Director. * * * * * (c) The respondent or the OED Director may make a single request for reconsideration or modification of the decision by the USPTO Director if filed within 20 days from the date of entry of the decision. The other party may file a response to the request for reconsideration within 14 days of the filing of the request. No request for reconsideration or modification shall be granted unless the request is based on newly discovered evidence or clear error of law or fact, and the requestor must demonstrate that any newly discovered evidence could not have been discovered any earlier by due diligence. Such a request shall have the effect of staying the effective date of the order of discipline in the final decision. The decision by the USPTO Director is effective on its date of entry. PO 00000 Frm 00022 Fmt 4702 Sfmt 4702 ■ 37. Revise § 11.57 to read as follows: § 11.57 Review of final decision of the USPTO Director. (a) Review of the final decision by the USPTO Director in a disciplinary case may be had by a petition filed in accordance with 35 U.S.C. 32. Any such petition shall be filed within 30 days after the date of the final decision. (b) The respondent must serve the USPTO Director with the petition. The respondent must serve the petition in accordance with Rule 4 of the Federal Rules of Civil Procedure and § 104.2 of this chapter. (c) Except as provided for in § 11.56(c), an order for discipline in a final decision will not be stayed except on proof of exceptional circumstances. ■ 38. Revise § 11.58 to read as follows: § 11.58 Duties of disciplined practitioner or practitioner in disability inactive status. (a) Compliance requirements. An excluded or suspended practitioner will not be automatically reinstated at the end of his or her period of exclusion or suspension. Unless otherwise ordered by the USPTO Director, an excluded or suspended practitioner must comply with the provisions of this section and § 11.60 to be reinstated. A practitioner transferred to disability inactive status must comply with the provisions of this section and § 11.29 to be reinstated unless otherwise ordered by the USPTO Director. Failure to comply with the provisions of this section may constitute grounds for denying reinstatement and cause for further action. (b) Practice prohibitions. Any excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall: (1) Not engage in practice before the Office in patent, trademark, or other non-patent matters; (2) Not advertise or otherwise hold himself or herself out as authorized or able to practice before the Office; and (3) Take all necessary steps to remove any advertisements or other representations that would reasonably suggest that the practitioner is authorized or able to practice before the Office. (c) Thirty-day requirements. Within 30 days after the date of the order of exclusion, suspension, or transfer to disability inactive status, an excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall: (1) Withdraw from representation in all matters pending before the Office; (2) Provide written notice of the order of exclusion, suspension, or transfer to disability inactive status to all State and E:\FR\FM\30JYP1.SGM 30JYP1 khammond on DSKJM1Z7X2PROD with PROPOSALS Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules Federal jurisdictions and administrative agencies to which the practitioner is admitted to practice; (3) Provide to all clients having immediate or prospective business before the Office in patent, trademark, or other non-patent matters: (i) Written notice of the order of exclusion, suspension, or transfer to disability inactive status, that calls attention to the practitioner’s lack of authority to act as a practitioner after the effective date of the order; specifies any urgent dates for the client’s matters; and advises the client to act promptly to seek legal advice elsewhere if the client is not already represented by another practitioner; (ii) Any papers or other property to which the clients are entitled, or schedule a suitable time and place where the papers and other property may be obtained, and call attention to any urgency for obtaining the papers or other property; and (iii) Any unearned fees for practice before the Office and any advanced costs not expended; (4) Provide written notice of the order of exclusion, suspension, or transfer to disability inactive status to all opposing parties in matters pending before the Office and provide in the notice a mailing address for each client of the practitioner who is a party in the pending matter; and (5) Serve all notices required by paragraphs (c)(2), (c)(3), and (c)(4) of this section by certified mail, return receipt requested, unless the intended recipient is located outside the United States. Where the intended recipient is located outside the United States, all notices shall be sent by a delivery service that provides the ability to confirm delivery or attempted delivery. (d) Forty-five-day requirements. Within 45 days after the date of the order of exclusion, suspension, or transfer to disability inactive status, an excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall file with the OED Director an affidavit of compliance certifying that the practitioner has fully complied with the provisions of the order, this section, and with § 11.116 for withdrawal from representation. Appended to the affidavit of compliance shall be: (1) A copy of each form of notice; the names and addresses of the clients, practitioners, courts, and agencies to which notices were sent; and all return receipts or returned mail received up to the date of the affidavit. Supplemental affidavits shall be filed covering subsequent return receipts and returned mail. Such names and addresses of VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 clients shall remain confidential unless otherwise ordered by the USPTO Director; (2) A schedule showing the location, title, and account number of every account in which the practitioner holds, or held as of the entry date of the order, any client, trust, or fiduciary funds for practice before the Office; (3) A schedule describing, and evidence showing, the practitioner’s disposition of all client and fiduciary funds for practice before the Office in the practitioner’s possession, custody, or control as of the date of the order or thereafter; (4) A list of all State, Federal, and administrative jurisdictions to which the practitioner is admitted to practice; and (5) A description of the steps taken to remove any advertisements or other representations that would reasonably suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office. (e) Requirement to update correspondence address. An excluded or suspended practitioner, or a practitioner transferred to disability inactive status, shall continue to file a statement in accordance with § 11.11 regarding any change of residence or other address to which communications may thereafter be directed. (f) Limited recognition for winding up practice. Unless otherwise provided by an order of the USPTO Director, an excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall not engage in any practice before the Office. The USPTO Director may grant such a practitioner limited recognition for a period of no more than 30 days to conclude work on behalf of a client on any matters pending before the Office. If such work cannot be concluded, the practitioner shall so advise the client so that the client may make other arrangements. (g) Required records. An excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall retain copies of all notices sent and maintain records of the various steps taken under this section. The practitioner shall provide proof of compliance as a condition precedent to the granting of any petition for reinstatement. (h) Aiding another practitioner while suspended or excluded; acting as a paralegal. An excluded or suspended practitioner, or practitioner in disability inactive status, may act as a paralegal for a supervising practitioner or perform other services for the supervising PO 00000 Frm 00023 Fmt 4702 Sfmt 4702 45831 practitioner that are normally performed by laypersons, provided: (1) The practitioner is under the direct supervision of the supervising practitioner; (2) The practitioner is a salaried employee of: (i) The supervising practitioner, (ii) The supervising practitioner’s law firm, or (iii) A client-employer who employs the supervising practitioner as a salaried employee; (3) The supervising practitioner assumes full professional responsibility to any client and the Office for any work performed by the practitioner for the supervising practitioner; and (4) The practitioner does not: (i) Communicate directly in writing, orally, or otherwise with a client, or prospective client, of the supervising practitioner in regard to any immediate or prospective business before the Office; (ii) Render any legal advice or any legal services in regard to any immediate or prospective business before the Office; or (iii) Meet in person with, regardless of the presence of the supervising practitioner: (A) Any Office employee in connection with the prosecution of any patent, trademark, or other matter before the Office; (B) Any client, or prospective client, of the supervising practitioner, the supervising practitioner’s law firm, or the client-employer of the supervising practitioner regarding immediate or prospective business before the Office; or (C) Any witness or potential witness whom the supervising practitioner, the supervising practitioner’s law firm, or the supervising practitioner’s clientemployer may, or intends to, call as a witness in any proceeding before the Office. The term ‘‘witness’’ includes individuals who will testify orally in a proceeding before, or sign an affidavit or any other document to be filed in, the Office. (i) Reinstatement after aiding another practitioner while suspended or excluded. When an excluded or suspended practitioner, or practitioner transferred to disability inactive status, acts as a paralegal or performs services under paragraph (h) of this section, the practitioner shall not thereafter be reinstated to practice before the Office unless: (1) The practitioner has filed with the OED Director an affidavit that: (i) Explains in detail the precise nature of all paralegal or other services performed by the practitioner, and E:\FR\FM\30JYP1.SGM 30JYP1 45832 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules (ii) Shows by clear and convincing evidence that the practitioner has complied with the provisions of this section and all USPTO Rules of Professional Conduct; and (2) The supervising practitioner has filed with the OED Director a written statement that: (i) States that the supervising practitioner has read the affidavit required by paragraph (i)(1) of this section and that the supervising practitioner believes every statement in the affidavit to be true, and (ii) States that the supervising practitioner believes that the excluded or suspended practitioner, or practitioner transferred to disability inactive status, has complied with paragraph (h) of this section. ■ 39. Revise § 11.60 to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.60 Petition for reinstatement of disciplined practitioner. (a) Restrictions on practice. An excluded or suspended practitioner shall not resume the practice of patent, trademark, or other non-patent matters before the Office until reinstated. (b) Petition for reinstatement for excluded or suspended practitioners. An excluded or suspended practitioner shall be eligible to petition for reinstatement only upon expiration of the period of suspension or exclusion and the practitioner’s full compliance with § 11.58. An excluded practitioner shall be eligible to petition for reinstatement no earlier than five years from the effective date of the exclusion. (c) Review of reinstatement petition. An excluded or suspended practitioner shall file a petition for reinstatement accompanied by the fee required by § 1.21(a)(10) of this chapter. The petition for reinstatement shall be filed with the OED Director. A practitioner who has violated any provision of § 11.58 shall not be eligible for reinstatement until a continuous period of the time in compliance with § 11.58 that is equal to the period of suspension or exclusion has elapsed. If the excluded or suspended practitioner is not eligible for reinstatement, or if the OED Director determines that the petition is insufficient or defective on its face, the OED Director may dismiss the petition. Otherwise, the OED Director shall consider the petition for reinstatement. The excluded or suspended practitioner seeking reinstatement shall have the burden of proving, by clear and convincing evidence, that: (1) The excluded or suspended practitioner has the good moral character and reputation, competency, VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 and learning in law required under § 11.7 for admission; (2) The resumption of practice before the Office will not be detrimental to the administration of justice or subversive to the public interest; and (3) The practitioner, if suspended, has complied with the provisions of § 11.58 for the full period of suspension or, if excluded, has complied with the provisions of § 11.58 for at least five continuous years. (d) Petitions for reinstatement— Action by the OED Director granting reinstatement. (1) If the excluded or suspended practitioner is found to have complied with paragraphs (c)(1) through (c)(3) of this section, the OED Director shall enter an order of reinstatement that shall be conditioned on payment of the costs of the disciplinary proceeding to the extent set forth in paragraphs (d)(2) and (d)(3) of this section. (2) Payment of costs of disciplinary proceedings. Prior to reinstatement to practice under this section, the excluded or suspended practitioner shall pay the costs of the disciplinary proceeding. The costs imposed pursuant to this section include all of the following: (i) The actual expense incurred by the OED Director or the Office for the original and copies of any reporter’s transcripts of the disciplinary proceeding and any fee paid for the services of the reporter; (ii) All expenses paid by the OED Director or the Office that would qualify as taxable costs recoverable in civil proceedings; and (iii) The charges determined by the OED Director to be ‘‘reasonable costs’’ of investigation, hearing, and review. These amounts shall serve to defray the costs, other than fees for services of attorneys and experts, of the Office of Enrollment and Discipline in the preparation or hearing of the disciplinary proceeding and costs incurred in the administrative processing of the disciplinary proceeding. (3) A practitioner may only be granted relief from an order assessing costs under this section, whether in whole or in part or by grant of an extension of time to pay these costs, upon grounds of hardship, special circumstances, or other good cause at the discretion of the OED Director. (e) Petitions for reinstatement—Action by the OED Director denying reinstatement. If the excluded or suspended practitioner is found unfit to resume practice before the Office, the OED Director shall first provide the excluded or suspended practitioner with an opportunity to show cause in PO 00000 Frm 00024 Fmt 4702 Sfmt 4702 writing why the petition should not be denied. If unpersuaded by the showing, the OED Director shall deny the petition. In addition to the reinstatement provisions set forth in this section, the OED Director may require the excluded or suspended practitioner, in meeting the requirements of paragraph (c)(1) of this section, to take and pass the registration examination; attend ethics, substance abuse, or law practice management courses; and/or take and pass the Multistate Professional Responsibility Examination. (f) Right to review. An excluded or suspended practitioner dissatisfied with a final decision of the OED Director regarding his or her reinstatement may seek review by the USPTO Director pursuant to § 11.2(d). (g) Resubmission of petitions for reinstatement. If a petition for reinstatement is denied, no further petition for reinstatement may be filed until the expiration of at least one year following the denial unless the order of denial provides otherwise. (h) Reinstatement proceedings open to public. (1) Proceedings on any petition for reinstatement shall be open to the public. Before reinstating any excluded or suspended practitioner, the OED Director shall publish a notice that such practitioner seeks reinstatement and shall permit the public a reasonable opportunity to comment or submit evidence regarding such matter. (2) Up to 90 days prior to the expiration of the period of suspension or exclusion, a practitioner may file a written notice of his or her intent to seek reinstatement with the OED Director and may request that such notice be published. In the absence of such a request, notice of a petition for reinstatement will be published upon receipt of such petition. ■ 40. Revise § 11.106 to read as follows: § 11.106 Confidentiality of information. (a) A practitioner shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation, the disclosure is permitted by paragraph (b) of this section, or the disclosure is required by paragraph (c) of this section. (b) A practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary: (1) To prevent reasonably certain death or substantial bodily harm; (2) To prevent the client from engaging in inequitable conduct before E:\FR\FM\30JYP1.SGM 30JYP1 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules the Office or from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has used or is using the practitioner’s services; (3) To prevent, mitigate, or rectify substantial injury to the financial interests or property of another that is reasonably certain to result or has resulted from the client’s commission of a crime, fraud, or inequitable conduct before the Office in furtherance of which the client has used the practitioner’s services; (4) To secure legal advice about the practitioner’s compliance with the USPTO Rules of Professional Conduct; (5) To establish a claim or defense on behalf of the practitioner in a controversy between the practitioner and the client, to establish a defense to a criminal charge or civil claim against the practitioner based upon conduct in which the client was involved, or to respond to allegations in any proceeding concerning the practitioner’s representation of the client; (6) To comply with other law or a court order; or (7) To detect and resolve conflicts of interest arising from the practitioner’s change of employment or from changes in the composition or ownership of a firm, but only if the revealed information would not compromise the practitioner-client privilege or otherwise prejudice the client. (c) A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions. (d) A practitioner shall make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client. ■ 41. Amend § 11.118 by revising paragraphs (a) and (b) to read as follows: khammond on DSKJM1Z7X2PROD with PROPOSALS § 11.118 Duties to prospective client. (a) A person who consults with a practitioner about the possibility of forming a client-practitioner relationship with respect to a matter is a prospective client. (b) Even when no client-practitioner relationship ensues, a practitioner who has learned information from a prospective client shall not use or reveal that information, except as § 11.109 would permit with respect to information of a former client. * * * * * ■ 42. Revise § 11.702 to read as follows: VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 § 11.702 Communications concerning a practitioner’s services: specific rules. (a) A practitioner may communicate information regarding the practitioner’s services through any medium. (b) A practitioner shall not compensate, give, or promise anything of value to a person for recommending the practitioner’s services, except that a practitioner may: (1) Pay the reasonable costs of advertisements or communications permitted by this section; (2) Pay the usual charges of a legal service plan or a not-for-profit or qualified practitioner referral service; (3) Pay for a law practice in accordance with § 11.117; (4) Refer clients to another practitioner or a non-practitioner professional pursuant to an agreement not otherwise prohibited under the USPTO Rules of Professional Conduct that provides for the other person to refer clients or customers to the practitioner, if: (i) The reciprocal referral agreement is not exclusive, and (ii) The client is informed of the existence and nature of the agreement; and (5) Give nominal gifts as an expression of appreciation that are neither intended nor reasonably expected to be a form of compensation for recommending a practitioner’s services. (c) A practitioner shall not state or imply that he or she is certified as a specialist in a particular field of law, unless: (1) The practitioner has been certified as a specialist by an organization that has been approved by an appropriate authority of a State or that has been accredited by the American Bar Association, and (2) The name of the certifying organization is clearly identified in the communication. (d) Any communication made under this section must include the name and contact information of at least one practitioner or law firm responsible for its content. ■ 43. Revise § 11.703 to read as follows: § 11.703 Solicitation of clients. (a) ‘‘Solicitation’’ or ‘‘solicit’’ denotes a communication initiated by or on behalf of a practitioner or law firm that is directed to a specific person the practitioner knows or reasonably should know needs legal services in a particular matter and that offers to provide, or reasonably can be understood as offering to provide, legal services for that matter. (b) A practitioner shall not solicit professional employment by live PO 00000 Frm 00025 Fmt 4702 Sfmt 4702 45833 person-to-person contact when a significant motive for the practitioner’s doing so is the practitioner’s or law firm’s pecuniary gain, unless the contact is with a: (1) Practitioner; (2) Person who has a family, close personal, or prior business or professional relationship with the practitioner or law firm; or (3) Person who routinely uses for business purposes the type of legal services offered by the practitioner. (c) A practitioner shall not solicit professional employment even when not otherwise prohibited by paragraph (b) of this section, if: (1) The target of solicitation has made known to the practitioner a desire not to be solicited by the practitioner, or (2) The solicitation involves coercion, duress, or harassment. (d) This section does not prohibit communications authorized by law or ordered by a court or other tribunal. (e) Notwithstanding the prohibitions in this section, a practitioner may participate with a prepaid or group legal service plan operated by an organization not owned or directed by the practitioner that uses live person-toperson contact to enroll members or sell subscriptions for the plan from persons who are not known to need legal services in a particular matter covered by the plan. ■ 44. Amend § 11.704 by revising paragraph (e) to read as follows: § 11.704 Communication of fields of practice and specialization. * * * * * (e) Individuals granted limited recognition may use the designation ‘‘Limited Recognition’’ but may not hold themselves out as being registered. ■ 45. Amend § 11.804 by revising paragraphs (b) and (h) to read as follows: § 11.804 Misconduct. * * * * * (b) Commit a criminal act that reflects adversely on the practitioner’s honesty, trustworthiness, or fitness as a practitioner in other respects, or be convicted of a crime that reflects adversely on the practitioner’s honesty, trustworthiness, or fitness as a practitioner in other respects; * * * * * (h) Be publicly disciplined on ethical or professional misconduct grounds by any duly constituted authority of: (1) A State, (2) The United States, or (3) A country having disciplinary jurisdiction over the practitioner; or * * * * * E:\FR\FM\30JYP1.SGM 30JYP1 45834 Federal Register / Vol. 85, No. 147 / Thursday, July 30, 2020 / Proposed Rules Dated: May 29, 2020. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2020–12210 Filed 7–29–20; 8:45 am] BILLING CODE P ENVIRONMENTAL PROTECTION AGENCY 40 CFR Part 271 [EPA–R05–RCRA–2020–0275; FRL–10011– 96–Region 5] Illinois: Proposed Authorization of State Hazardous Waste Management Program Revision Environmental Protection Agency (EPA). ACTION: Proposed rule. AGENCY: Illinois has applied to the Environmental Protection Agency (EPA) for final authorization of changes to its hazardous waste program under the Resource Conservation and Recovery Act (RCRA), as amended. EPA has reviewed Illinois’ application and has determined that these changes satisfy all requirements needed to qualify for final authorization. Therefore, we are proposing to authorize the State’s changes. EPA seeks public comment prior to taking final action. DATES: Comments on this proposed rule must be received by September 14, 2020. SUMMARY: Submit your comments by one of the following methods: • Federal eRulemaking Portal: https://www.regulations.gov. Follow the online instructions for submitting comments. • Email: greenberg.judith@epa.gov. EPA must receive your comments by September 14, 2020. Direct your comments to Docket ID Number EPA– R05–RCRA–2020–0275. EPA’s policy is that all comments received will be included in the public docket without change and may be made available online at www.regulations.gov, including any personal information provided, unless the comment includes information claimed to be Confidential Business Information (CBI), or other information whose disclosure is restricted by statute. Do not submit information that you consider to be CBI or otherwise protected through www.regulations.gov, or email. The federal www.regulations.gov website is an ‘‘anonymous access’’ system, which means EPA will not know your identity or contact information unless you khammond on DSKJM1Z7X2PROD with PROPOSALS ADDRESSES: VerDate Sep<11>2014 16:16 Jul 29, 2020 Jkt 250001 provide it in the body of your comment. If you send an email comment directly to EPA without going through www.regulations.gov, your email address will be automatically captured and included as part of the comment that is placed in the public docket and made available on the internet. If you submit an electronic comment, EPA recommends that you include your name and other contact information in the body of your comment and with any disk or CD–ROM you submit. If EPA cannot read your comment due to technical difficulties and cannot contact you for clarification, EPA may not be able to consider your comment. Electronic files should avoid the use of special characters, any form of encryption, and be free of any defects or viruses. For additional submission methods, the full EPA public comment policy, information about CBI or multimedia submissions, and general guidance on making effective comments, please visit http:// www2.epa.gov/dockets/commentingepa-dockets. Docket: All documents in the docket are listed in the www.regulations.gov, index. Although listed in the index, some information is not publicly available, e.g., CBI or other information whose disclosure is restricted by statute. Certain other material, such as copyrighted material, will be publicly available only in hard copy. Publicly available docket materials are available electronically in www.regulations.gov. For alternative access to docket materials, please contact the person identified in the FOR FURTHER INFORMATION CONTACT section. FOR FURTHER INFORMATION CONTACT: Judith Greenberg, RCRA C and D Section, Land, Chemicals and Redevelopment Division, LL–17J, U.S. Environmental Protection Agency, 77 West Jackson Boulevard, Chicago, Illinois 60604; telephone number: (312) 886–4179, email address: greenberg.judith@epa.gov. The EPA Region 5 office is open from 9:00 a.m. to 4:00 p.m., Monday through Friday, excluding federal holidays and facility closures due to COVID–19. SUPPLEMENTARY INFORMATION: A. Why are revisions to state programs necessary? States that have received final authorization from EPA under RCRA Section 3006(b), 42 U.S.C. 6926(b), must maintain a hazardous waste program that is equivalent to, consistent with, and no less stringent than the federal program. As the federal program changes, states must change their PO 00000 Frm 00026 Fmt 4702 Sfmt 4702 programs and request EPA to authorize the changes. Changes to state programs may be necessary when federal or state statutory or regulatory authority is modified or when certain other changes occur. Most commonly, states must change their programs because of changes to EPA’s regulations in 40 Code of Federal Regulations (CFR) parts 124, 260 through 266, 268, 270, 273 and 279. New federal requirements and prohibitions imposed by federal regulations that EPA promulgated pursuant to the Hazardous and Solid Waste Amendments of 1984 (HSWA) take effect in authorized states at the same time they take effect in unauthorized states. Thus, EPA will implement those requirements and prohibitions in Illinois, including the issuance of new permits implementing those requirements, until the State is granted authorization to do so. B. What decisions have we made in this rule? On August 7, 2019, Illinois submitted a complete program revision application seeking authorization of changes to its hazardous waste program that correspond to certain federal rules promulgated between July 20, 1993 and January 13, 2015. EPA concludes that Illinois’ application to revise its authorized program meets all the statutory and regulatory requirements established under RCRA, as set forth in RCRA section 3006(b), 42 U.S.C. 6926(b), and 40 CFR part 271. Therefore, EPA proposes to grant Illinois final authorization to operate its hazardous waste program with the changes described in the authorization application, and as outlined below in Section G of this document. Illinois has responsibility for permitting treatment, storage, and disposal facilities within its borders and for carrying out the aspects of the RCRA program described in its revised program application, subject to the limitations of HSWA, as discussed above. C. What will be the effect if Illinois is authorized for these changes? If Illinois is authorized for the changes described in Illinois’ authorization application, these changes will become a part of the authorized state hazardous waste program and will therefore be federally enforceable. Illinois will continue to have primary enforcement authority and responsibility for its state hazardous waste program. EPA would maintain its authorities under RCRA sections 3007, 3008, 3013, and 7003, including its authority to: E:\FR\FM\30JYP1.SGM 30JYP1

Agencies

[Federal Register Volume 85, Number 147 (Thursday, July 30, 2020)]
[Proposed Rules]
[Pages 45812-45834]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-12210]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 11

[Docket No. PTO-C-2013-0042]
RIN 0651-AC91


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

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) proposes to amend the Rules of Practice in Patent Cases and the 
rules regarding Representation of Others before the United States 
Patent and Trademark Office. This rulemaking proposes to align the 
USPTO Rules of Professional Conduct more closely with the ABA Model 
Rules of Professional Conduct; to improve clarity in existing 
regulations to facilitate the public's compliance, including revising 
various deadlines, the procedures concerning the registration exam, 
provisions related to the revocation of an individual's registration or 
limited recognition in limited circumstances, and provisions for 
reinstatement; and to make non-substantive changes, increasing the 
readability of various provisions.

DATES: Written comments must be received on or before September 28, 
2020.

ADDRESSES: Comments should be sent by electronic mail message over the 
internet addressed to: [email protected]. Comments may also be 
submitted by mail addressed to: Mail Stop OED-AC91, United States 
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450, marked to the attention of William R. Covey, Deputy General 
Counsel for Enrollment and Discipline and Director of the Office of 
Enrollment and Discipline.
    Comments may also be sent via the Federal eRulemaking Portal. Visit 
the Federal eRulemaking Portal website (https://www.regulations.gov) 
for additional instructions on providing comments via the Federal 
eRulemaking Portal. All comments submitted directly to the USPTO or 
provided on the Federal eRulemaking Portal should include the docket 
number (PTO-C-2013-0042).
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by email. The Office prefers comments to be 
submitted in plain text but also accepts comments submitted in 
searchable ADOBE[supreg] portable document format (``PDF'') or 
MICROSOFT WORD[supreg] format. Comments not submitted electronically 
should be submitted on paper in a format that accommodates digital 
scanning into ADOBE[supreg] PDF.
    Comments will be made available for public inspection at the Office 
of Enrollment and Discipline, located on the eighth floor of the 
Madison West Building, 600 Dulany Street, Alexandria, Virginia. 
Comments also will be available for viewing on the Office's internet 
website (http://www.uspto.gov) and on the Federal eRulemaking Portal. 
Because comments will be made available for public inspection, 
information that the submitter does not desire to make public, such as 
an address or phone number, should not be included.

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

SUPPLEMENTARY INFORMATION:

Purpose

    Section 2(b)(2)(D) of title 35 of the United States Code provides 
the USPTO with the authority 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.'' Part 11 of title 37 of the Code 
of Federal Regulations contains those regulations that govern the 
representation of others before the USPTO, including regulations 
relating to recognition to practice before the USPTO, investigations 
and disciplinary proceedings, and the USPTO Rules of Professional 
Conduct. Part 1 of title 37 of the Code of Federal Regulations 
addresses the rules of practice in patent cases, and most relevantly 
fees in patent matters. This notice sets forth proposed amendments to 
parts 1 and 11 as discussed herein.
    On April 3, 2013, the Office published a final rule that 
established the USPTO Rules of Professional Conduct, 37 CFR 11.101 et 
seq. The USPTO Rules of Professional Conduct are modeled after the 
American Bar Association (ABA) Model Rules of Professional Conduct. The 
USPTO Rules of Professional Conduct have not been substantively updated 
since 2013.

Harmonization With the ABA Model Rules of Professional Conduct

    Due to the length of time since the USPTO last updated its 
regulations, the USPTO proposes to amend the USPTO Rules of 
Professional Conduct to align them with widely-adopted revisions to the 
ABA Model Rules of Professional Conduct. Section 11.106(b) of title 37 
of the Code of Federal Regulations would be amended to allow a 
practitioner to reveal information relating to the representation of a 
client in certain circumstances for the purpose of detecting and 
resolving conflicts of interest arising from the practitioner's change 
of employment or changes in the composition or ownership of a law firm. 
Section 11.106(d) would be amended to require a practitioner to make 
reasonable efforts to prevent the inadvertent or unauthorized 
disclosure of, or unauthorized access to, information relating to the 
representation of a client. Section 11.118 would be amended to clarify 
that a practitioner may not use information learned from a prospective 
client except as otherwise provided, regardless of whether the 
information was learned in a discussion. Section 11.702 would be 
amended to allow practitioners to post contact information such as a 
website or email address instead of an office address on marketing 
materials. Finally, Sec.  11.703 would be amended to clarify that the 
limitations on solicitation apply to any person, without regard to 
whether the practitioner considers the targets of the solicitation to 
actually be prospective clients.

Simplification and Clarification of Rules and Processes

    The USPTO also proposes to amend its regulations to facilitate 
compliance by the public. As discussed in greater detail in the section 
``Discussion of Specific Changes in this Proposed Rule,'' amendments 
are proposed to Sec. Sec.  11.7, 11.9, 11.11, 11.51, 11.52, 11.53, 
11.54, 11.55, 11.58, and 11.60 to enhance generally the clarity of 
these sections. Also, the reinstatement provisions in Sec. Sec.  
11.9(f) and 11.11(f) would be aligned for all registered practitioners 
and practitioners granted limited recognition under Sec.  11.9(b). The 
periods of time in these sections would be either the same as or 
greater than the applicable periods previously provided under this 
part. As such, the new time

[[Page 45813]]

periods would apply without regard to whether the relevant period began 
to run before or after the effective date of the final rule for this 
action.
    In addition, the regulations would be amended to add provisions 
addressing the revocation of registration or limited recognition. To 
better protect the public, the USPTO proposes to create a process in 
Sec.  11.11(g) by which an individual's registration or limited 
recognition may be revoked in limited circumstances. For example, if an 
applicant were to be granted status as a registered practitioner but 
were to be later discovered to have failed to disclose material 
information in his or her application, such as a conviction for a 
felony, the Director of the Office of Enrollment and Discipline (OED 
Director) would issue to that practitioner a notice to show cause why 
the practitioner's registration or recognition should not be revoked, 
and the practitioner would be provided an opportunity to respond. This 
would parallel the existing provisions in Sec. Sec.  11.7(j), 11.11(b), 
11.20(a)(4), and 11.60(e).
    Finally, the USPTO proposes changes to improve the registration 
examination and application process. Applicants for the registration 
examination would be provided the opportunity to avoid having to 
reapply entirely by paying a new fee of $115 for an extension of time 
in which to schedule and take the examination. This new fee would be 
implemented though revisions to Sec. Sec.  1.21(a)(1), 11.7(b), and 
11.9(e). This is expected to streamline the process and reduce expense 
to applicants while also conserving agency resources.

Other Minor Changes

    Minor edits, discussed below, would also be made throughout the 
regulations. These include increasing structural parallelism between 
similar provisions, including between Sec. Sec.  11.24 and 11.29; 
increasing the readability of provisions throughout, including 
Sec. Sec.  11.7 and 11.9; and making corrections to spelling, grammar, 
and cross-references, harmonizing terminology, correcting syntax 
formats to comport with the Federal Register Document Drafting 
Handbook, and reorganizing paragraph structure. In sum, these 
amendments are aimed at benefitting practitioners by clarifying and 
streamlining professional responsibility obligations and procedures.

Discussion of Specific Changes in This Proposed Rule

    The USPTO proposes to eliminate the fee in Sec.  1.21(a)(1)(ii)(B) 
for taking the registration examination at the USPTO's offices in 
Alexandria, Virginia. The USPTO no longer intends to administer the 
paper-based examination in its offices. The computer-based examination 
will continue to be offered at thousands of testing centers across the 
United States.
    The USPTO proposes to amend Sec. Sec.  1.21(a)(1), 11.7(b), and 
11.9(e) to provide applicants for registration or limited recognition 
the ability to request extensions of time to schedule the registration 
exam for a fee. Currently, applicants are assigned a window of time in 
which to schedule and sit for the registration examination. Applicants 
who do not take the examination before the expiration of that window 
must reapply and again pay the application and test administration 
fees. The ability to request extensions of time will save those 
applicants who require more time to prepare for the examination or are 
unable to sit for the examination within the window from having to 
reapply and again pay the application and test administration fees. The 
proposed fee is significantly less than the existing application and 
examination fees that would be due from an applicant who failed to take 
the registration examination during the test window. The proposed fee 
would recover the estimated average cost to the Office of related 
processing, services, and materials. The authorization for this fee is 
35 U.S.C. 41(d)(2)(A).
    The USPTO proposes to amend Sec.  1.21(a)(9) to provide a heading 
to clarify the nature of the fees listed thereunder. The proposed 
revision makes no change to the fees themselves.
    The USPTO proposes to amend Sec.  11.1 to clarify several 
definitions and to correct typographical errors. The terms 
``conviction'' and ``convicted'' would be revised to correct the 
spelling of ``nolo contendere.'' The term ``practitioner'' would be 
revised to eliminate surplusage within the definition. The term 
``register'' would be added alongside ``roster'' to clarify that both 
terms carry the same meaning. The term ``serious crime'' currently 
encompasses all felonies. However, not all states classify crimes as 
felonies and misdemeanors. To ensure consistent treatment among 
similarly situated practitioners, the definition would be revised to 
encompass any criminal offense punishable by death or imprisonment of 
more than one year. This revision would provide a clear and uniform 
rule in harmony with 18 U.S.C. 3559(a). The term ``state'' would be 
revised to reflect the correct capitalization of ``commonwealth.''
    The USPTO proposes to amend Sec.  11.2(b)(2) to eliminate an 
unnecessary reference to Sec.  11.7(b). This revision would result in 
no change in practice.
    The USPTO proposes to amend Sec.  11.2(b)(4) to clarify that the 
OED Director is authorized to conduct investigations of persons subject 
to the disciplinary jurisdiction of the Office. The amendments would 
also replace the term ``accused practitioner'' with ``subject of the 
investigation.''
    The USPTO proposes to amend Sec.  11.4, currently reserved, to 
define how time shall be computed in part 11. The computational method 
aligns with that set forth in the Federal Rules of Civil Procedure.
    The USPTO proposes to amend Sec.  11.5(a) by adding a paragraph 
heading.
    The USPTO proposes to amend Sec.  11.5(b) to change the term 
``patent cases'' to ``patent matters''; amend Sec.  11.5(b)(1) to 
change the term ``other proceeding'' to ``other patent proceeding'' to 
clarify that this subparagraph refers only to patent proceedings; and 
clarify the definition of practice before the Office in trademark 
matters in Sec.  11.5(b)(2). Section 11.5(b) continues to provide that 
nothing in Sec.  11.5 prohibits a practitioner from employing or 
retaining a non-practitioner assistant under the supervision of the 
practitioner to assist in matters pending before, or contemplated to be 
presented to, the Office.
    The USPTO proposes to amend Sec.  11.7(b) to eliminate the 
requirement for applicants to refile previously submitted documentation 
after one year. The provisions regarding retaking the examination would 
be moved from subparagraph (b)(1)(ii) to (b)(2). A limitation of five 
attempts to pass the examination for registration would be added to 
subparagraph (b)(2) to maintain the integrity of the examination. This 
would not prevent an applicant from petitioning for subsequent attempts 
under Sec.  11.2(c). The provisions regarding denial of admission to 
the examination and notices of incompleteness would be moved from 
(b)(2) to (b)(3), which is currently reserved.
    The USPTO proposes to amend Sec.  11.7(d)(3)(i)(B) to change the 
term ``patent cases'' to ``patent matters.''
    The USPTO proposes to remove the ultimate sentence of Sec.  11.7(e) 
to eliminate conflict with proposed Sec.  11.7(b)(2).
    The USPTO proposes to amend Sec.  11.7(g)(1) and (g)(2)(ii) to 
clarify that OED may accept a state bar's determination of character 
and reputation as opposed to simply

[[Page 45814]]

character. The amendment also corrects an internal citation and updates 
a reference to requests for information and evidence in enrollment 
matters.
    The USPTO proposes to amend Sec.  11.7 by adding a new paragraph 
(l) that would clarify that a registered patent agent who becomes an 
attorney may be registered as a patent attorney upon paying the 
required fee and meeting any additional requirements.
    The USPTO proposes to amend Sec.  11.9(a) to improve clarity and 
Sec.  11.9(b) to update a cross-reference. The revisions would make no 
change in practice.
    The USPTO proposes to amend Sec.  11.9 by mirroring where possible 
the provisions of Sec.  11.7(a) and (b) in new paragraphs (d) and (e) 
of Sec.  11.9. This is intended to improve the readability of the 
application process as it applies to those seeking limited recognition 
under Sec.  11.9(b), and it would make no change in practice.
    The USPTO proposes to amend Sec.  11.9 by adding a new paragraph 
(f) to clarify the documentation required to obtain reinstatement of 
limited recognition. This proposed revision generally restates the 
practice currently set forth in Sec.  11.7(b) and clarifies that 
individuals must provide objective evidence that they continue to 
possess the necessary legal qualifications if their limited recognition 
has been expired for five years or longer at the time of application 
for reinstatement. Retaking and passing the registration examination 
would be one way to establish such objective evidence.
    The USPTO proposes to amend Sec.  11.10(a) to clarify that only 
authorized practitioners may represent others before the Office in 
patent matters. This clarification is not intended to affect the rules 
governing practice before the Patent Trial and Appeal Board in parts 41 
and 42 of this chapter.
    The USPTO proposes to delete Sec.  11.10(b)(3), (b)(4), (c), (d), 
and (e), which addressed terms in 18 U.S.C. 207, a criminal statute. No 
change in practice is intended by these deletions, as these provisions 
were unnecessary.
    The USPTO proposes to amend Sec.  11.11(b) to change the term 
``patent cases'' to ``patent matters'', to clarify the nature of the 
notice called for in paragraph (b)(1), and improve syntax.
    The USPTO proposes to amend Sec.  11.11(b)(3) to clarify that the 
OED Director may withdraw a notice to show cause where the practitioner 
who is subject to such notice has satisfied the notice's requirements 
prior to the USPTO Director making a decision on such notice.
    The USPTO proposes to amend Sec.  11.11 by adding a new 
subparagraph (b)(7) to clarify that administratively suspended 
practitioners must apply for reinstatement under paragraph (f)(1) in 
order to be reinstated.
    The USPTO proposes to amend Sec.  11.11(c) to simplify the process 
for requesting reactivation and to replace the term ``roster'' with the 
term ``register''.
    The USPTO proposes to amend Sec.  11.11(e)(1) to clarify the 
eligibility requirements for practitioners who request to resign. These 
revisions would make no substantive change.
    The USPTO proposes to amend Sec.  11.11(f)(2) to improve clarity 
and harmonize the requirements for reactivation with the requirements 
for reinstatement following administrative suspension. Specifically, 
individuals who have been administratively inactive for five or more 
years subsequent to separation from the Office or cessation of 
employment in a judicial capacity will be required to submit objective 
evidence that they continue to possess the necessary legal 
qualifications. Retaking and passing the registration examination would 
be one way to establish such objective evidence.
    The USPTO proposes to amend Sec.  11.11 by adding a new paragraph 
(g) to allow administrative revocation of registration or limited 
recognition, based on mistake, materially false information, or the 
omission of material information. Registration or limited recognition 
would only be revoked after the issuance of a notice to show cause and 
an opportunity to respond. This would parallel the existing provisions 
in Sec. Sec.  11.7(j), 11.11(b), 11.20(a)(4), and 11.60(e).
    The USPTO proposes to amend Sec.  11.18(c)(2) to set forth the 
correct title of the Director of the Office of Enrollment and 
Discipline.
    The USPTO proposes to amend Sec.  11.19(a) to change ``patent 
cases'' to ``patent matters'' and to clarify that a non-practitioner is 
subject to the USPTO's disciplinary authority if the person engages in 
or offers to engage in practice before the Office without proper 
authority. The phrase ``including by the USPTO Director,'' which 
modifies various types of public discipline, would be deleted as 
surplusage. The USPTO Director's authority to administer discipline or 
transfer a practitioner to disability inactive status is firmly 
established. Thus, the inclusion of this phrase is unnecessary.
    The USPTO proposes to amend Sec.  11.19(b)(1)(ii) to include 
discipline on professional misconduct grounds alongside discipline on 
ethical grounds. The inclusion of both is aimed at making clear that 
discipline for professional misconduct also constitutes grounds for 
discipline. This would result in no change in practice.
    The USPTO proposes to amend Sec.  11.19(c) to properly cite a 
subpart of part 11.
    The USPTO proposes to amend Sec.  11.19 by adding a new paragraph 
(e). This provision would make clear that the OED Director may select 
any disciplinary procedure or procedures that are appropriate to the 
situation at hand. For example, the OED Director is authorized in 
appropriate circumstances to pursue reciprocal discipline under Sec.  
11.24, while also instituting a disciplinary proceeding under Sec.  
11.32.
    The USPTO proposes to simplify Sec.  11.20(a)(4) to provide that 
the conditions of probation shall be stated in the order imposing 
probation.
    The USPTO proposes to amend Sec.  11.20(c) to improve syntax and to 
clarify that this provision merely describes the process set forth in 
Sec.  11.29 for transferring to disability inactive status.
    The USPTO proposes to amend Sec.  11.21 to remove the adjective 
``brief'' that modifies the phrase ``statement of facts.'' The length 
of a statement of facts depends on the complexity of the matter and the 
issues presented. This revision would allow a level of detail in a 
statement of facts appropriate to the particular matter.
    The USPTO proposes to amend Sec.  11.22(c), currently reserved, to 
require a practitioner to notify the OED Director of the practitioner 
becoming publicly disciplined, disqualified from practice, transferred 
to disability status, or convicted of a crime, within 30 days of such 
occurrence as already required in Sec. Sec.  11.24, 11.25, or 11.29. 
This revision would also clarify that a certified copy of the record or 
order regarding the discipline, disqualification, conviction, or 
transfer to disability status is clear and convincing evidence of such 
event.
    The USPTO proposes to amend Sec.  11.22(g) to correct erroneous 
citations to Sec.  11.22(b)(1) and (b)(2). The correct citations are 
Sec.  11.23(b)(1) and (b)(2).
    The USPTO proposes to amend Sec.  11.22(h) to clarify that the list 
of actions that the OED Director may take upon the conclusion of an 
investigation is not necessarily limited to the four actions enumerated 
therein.
    The USPTO proposes to amend Sec.  11.24(a) to provide that a 
certified copy of the record or order regarding public discipline in 
another jurisdiction shall establish a prima facie case by clear and 
convincing evidence that a

[[Page 45815]]

practitioner has, in fact, been publicly disciplined by that 
jurisdiction. In addition, the provision would be amended to clarify 
that the OED Director is permitted to exercise discretion in whether to 
pursue reciprocal discipline in any given matter.
    The USPTO proposes to amend Sec.  11.24(b) to enhance readability. 
No change in practice is intended.
    The USPTO proposes to amend Sec.  11.24(d)(1) to clarify the USPTO 
Director's prerogative to order a disciplinary record be supplemented 
with further information or argument.
    The USPTO proposes to amend Sec.  11.24(e) to clarify that a final 
adjudication in another jurisdiction that a practitioner has committed 
ethical misconduct, regardless of the evidentiary standard applied, 
shall establish a prima facie case that the practitioner has engaged in 
misconduct under Sec.  11.804(h). This change would not affect the 
availability of the defenses specified in Sec.  11.24(d)(1).
    The USPTO proposes to amend Sec.  11.25(a) to remove the 
requirement to self-report certain traffic violations where the sole 
punishment adjudicated is a fine of $300.00 or less. The provision 
would also be amended to clarify that the OED Director is permitted to 
exercise discretion in whether to pursue discipline in any given matter 
under this section.
    The USPTO proposes to amend Sec.  11.25(b)(3) to clarify that the 
USPTO Director may order that a disciplinary record be supplemented 
with further information or argument.
    The USPTO proposes to amend Sec.  11.25(e)(2) to allow 
practitioners who are disciplined by the USPTO upon conviction of a 
serious crime to apply for reinstatement immediately upon completing 
their sentence, probation, or parole, whichever is later, provided they 
are otherwise eligible for reinstatement. Under the current rule, a 
practitioner must wait at least five years after the last of these 
events before he or she is eligible to apply for reinstatement.
    The USPTO proposes to amend Sec.  11.26 to clarify that evidence, 
other than offers of compromise and statements about settlement made 
during a settlement conference, may not be excluded merely because the 
evidence was discussed or otherwise presented in a settlement 
conference. Such evidence may be excludable for other evidentiary 
reasons. The provision would also be amended to further clarify that 
settlement conferences may occur at any time after an investigation is 
commenced.
    The USPTO proposes to amend Sec.  11.27(b) and (c) to clarify 
procedures for exclusion on consent. Specifically, the revision would 
allow the OED Director to file a response to a Sec.  11.27(a) 
affidavit. Nothing herein is intended to alter the requirements under 
Sec.  11.27(a), including but not limited to the Sec.  11.27(a)(2) 
requirement that the statement of the nature of the pending 
investigation or pending proceeding shall be specifically set forth in 
the affidavit to the satisfaction of the OED Director. The revision 
would also remove and reserve Sec.  11.27(c), in light of the 
provisions of revised Sec.  11.26.
    The USPTO proposes to amend Sec.  11.28(a) to replace the term 
``patent cases'' with ``patent matters'', clarify the requirements for 
moving to hold a proceeding in abeyance, remove the requirement that 
such motion be made prior to a disciplinary hearing, and update cross-
references.
    The USPTO proposes to amend Sec.  11.29(a) to clarify that the OED 
Director possesses discretion as to whether to request that a 
practitioner be transferred to disciplinary inactive status.
    The USPTO proposes to amend Sec.  11.29(b) to incorporate the 
``clear and convincing'' burden of proof currently set forth in Sec.  
11.29(d) that a practitioner must satisfy to avoid a reciprocal 
transfer to disability inactive status. The USPTO also proposes 
enlarging the period of time to 40 days (instead of 30 days) for a 
practitioner to respond to the OED Director's request to transfer the 
practitioner to disability inactive status.
    The USPTO proposes to amend Sec.  11.29(d) by revising the heading 
of the paragraph. The provision would also be reorganized and amended 
to clarify the USPTO Director's prerogative to order that the record be 
supplemented with further information or argument. The proposed 
revisions to Sec.  11.29(b) and (d) would parallel the organizational 
structure of Sec.  11.24.
    The USPTO proposes to amend Sec.  11.29(g) by clarifying that a 
practitioner in disability inactive status must comply with Sec. Sec.  
11.29 and 11.58, and not merely Sec.  11.58. This revision would make 
no change in practice and would align with the provisions of revised 
Sec.  11.58.
    The USPTO proposes to amend Sec.  11.29(i) by updating cross-
references. The revisions would make no change in practice.
    The USPTO proposes to amend Sec.  11.34(c) to expressly allow a 
complaint to be filed in a disciplinary proceeding by delivering, 
mailing, or electronically transmitting the document to a hearing 
officer.
    The USPTO proposes to amend Sec.  11.35(a) to make minor 
corrections to syntax.
    The USPTO proposes to amend Sec.  11.35(c) to state that a 
complaint in a disciplinary matter may be served on the respondent's 
attorney in lieu of the respondent, if the respondent is known to the 
OED Director to be represented by an attorney under Sec.  11.40(a). 
This revision would permit the OED Director to serve the respondent, 
respondent's attorney, or both.
    The USPTO proposes to amend Sec.  11.39(a) to clarify the process 
by which hearing officers are designated in disciplinary proceedings. 
This proposed amendment would continue the practice of designating 
administrative law judges to serve as hearing officers.
    The USPTO proposes to amend Sec.  11.39(b) to clarify that 
administrative law judges appointed in accordance with 5 U.S.C. 3105 
may be designated as hearing officers.
    The USPTO proposes to amend 11.39(f) to correct a cross-reference.
    The USPTO proposes to amend Sec.  11.40 by dividing the current 
paragraph (b) into two paragraphs to facilitate ease in reading. In all 
other respects, the provision would remain unchanged.
    The USPTO proposes to amend Sec.  11.41(a) to expressly provide 
that papers may be filed by delivering, mailing, or electronically 
transmitting such documents to a hearing officer.
    The USPTO proposes to amend Sec.  11.43 by changing the heading to 
clarify that the provision applies only to motions before a hearing 
officer and not to those before the USPTO Director. The USPTO also 
proposes to amend the section to require motions to be accompanied by 
written memoranda setting forth a concise statement of the facts and 
supporting reasons, along with a citation of the authorities upon which 
the movant relies. The proposed revisions would also require responses 
to motions be filed within 14 days and served on the opposing party, 
and reply memoranda served within 7 days after service of the opposing 
party's response. The proposed revisions would also require the format 
of memoranda to be double-spaced and printed in 12-point font, unless 
otherwise ordered by the hearing officer.
    The USPTO proposes to amend Sec.  11.44(a) to allow scheduling of a 
hearing only on a date after the time for filing an answer has elapsed.
    The USPTO proposes to amend Sec.  11.44(b) to clarify the sanctions 
a hearing officer may impose for failure to appear at a disciplinary 
hearing.

[[Page 45816]]

    The USPTO proposes to amend Sec.  11.50 to clarify the existing 
practice of prohibiting the admission of speculative evidence.
    The USPTO proposes to amend Sec.  11.51(a) by revising it and 
dividing it into a new Sec.  11.51(a)-(g). The revisions would provide 
clarity and confirm the existing regulatory requirement that if a 
respondent demands testimony or the production of documents from a 
USPTO employee, the respondent must comply with part 104 of this 
chapter. The rule would also make clear that a deposition may be 
videotaped if desired. The term ``deposition expenses'' would replace 
the phrase ``expenses for a court reporter and preparing, serving, and 
filing depositions''. Deposition expenses may include, but are not 
limited to, fees for court reporters, videographers, transcripts, and 
room rentals; witness appearance and travel; service of process; and 
costs for preparing, serving, and filing depositions. This revision 
would not affect those expenses that are recoverable under Sec.  
11.60(d)(2).
    The USPTO proposes to amend Sec.  11.51(b) by redesignating it as 
Sec.  11.51(h). The revisions to this paragraph would make no change to 
existing practice.
    The USPTO proposes to amend Sec.  11.52 by reorganizing the section 
to improve clarity. The revisions would limit the scope of written 
discovery to relevant evidence only, as opposed to evidence that may be 
reasonably calculated to lead to the discovery of admissible evidence. 
The revisions would also provide that requests for admission may be 
used to admit the genuineness of documents and provide consequences for 
the failure to respond to requests for admission. Finally, the 
revisions would expand the scope of information that parties must 
provide regarding expert witnesses to include a complete statement of 
all opinions to which the expert is expected to testify, the basis and 
reasons therefor, and a description of all facts or data considered by 
the expert in forming the opinions.
    The USPTO proposes to amend Sec.  11.53 to specify the timing and 
other requirements of post-hearing memoranda, unless otherwise ordered 
by the hearing officer. The rule would also allow the hearing officer 
to enlarge the time permitted for filing post-hearing memoranda and to 
increase page limits upon a showing of good cause.
    The USPTO proposes to amend Sec.  11.54 to require a hearing 
officer to transmit the record of the proceeding to the OED Director 
within 14 days of the date of the initial decision or as soon as 
practicable. The USPTO proposes to amend Sec.  11.54(a)(1) by requiring 
an initial decision to make ``specific'' references to the record 
instead of ``appropriate'' references to the record. The provision 
currently located in Sec.  11.54(a)(2) that describes the process that 
the hearing officer shall take with respect to the transmission of the 
decision and the record would be moved to Sec.  11.54(c). It would also 
be revised to require the hearing officer to forward to the OED 
Director the record of proceedings within 14 days, or as soon as 
practicable, after the date of the initial decision. In addition, the 
provision currently located in Sec.  11.54(a)(2) that discusses the 
point in time at which the decision of the hearing officer becomes the 
decision of the USPTO Director would be moved to Sec.  11.54(d). This 
section would also be amended to remove an unnecessary reference to 
default judgments. Thus, any decision of a hearing officer, if not 
appealed, would become final without regard to whether the decision 
results from default.
    The USPTO proposes to amend Sec.  11.55 to more closely align the 
language with changes to the Federal Rules of Appellate Procedure and 
provide clarity as to the responsibilities of parties during appeals to 
the USPTO Director. The revisions would establish a procedure for 
filing notices of appeal and provide briefing timelines. Currently, the 
rule allows an appellant 30 days to file a brief. The revisions would 
allow 14 days in which to file a notice of appeal and 45 days 
thereafter in which to file the appellate brief. The revisions would 
also remove current paragraph (i), which is duplicative of a similar 
provision in Sec.  11.54. Finally, the revisions would add a new 
paragraph (o) that would govern motions practice before the USPTO 
Director. The procedures in new paragraph (o) would generally parallel 
those in Sec.  11.43.
    The USPTO proposes to amend Sec.  11.56(c) to allow a party to file 
a response to a request for reconsideration within 14 days after such 
request is made. The revision would explicitly require that such 
request be based on newly discovered evidence or clear error of law or 
fact.
    The USPTO proposes to amend Sec.  11.57 by reorganizing the 
provision and revising it to conform with Local Civil Rule 83.5 of the 
Local Rules for the U.S. District Court for the Eastern District of 
Virginia (http://www.vaed.uscourts.gov/localrules/LocalRulesEDVA.pdf). 
More specifically, Sec.  11.57(a) would be revised to require that any 
petition for review of a final decision of the USPTO Director must be 
filed within 30 days after the date of the final decision.
    The USPTO proposes to amend Sec.  11.58 by revising, subdividing, 
and renumbering the provisions describing the duties of disciplined 
practitioners or practitioners on disability inactive status. The 
proposed revisions are made with an eye toward simplifying the rule so 
that disciplined practitioners may more easily comply with its 
provisions. Where the practitioner believes compliance with the rule 
would be unduly cumbersome, a practitioner would be permitted to 
petition for relief. The revised rule would continue to allow a 
suspended or excluded practitioner to act as a paralegal provided 
certain conditions are met, such as serving under the supervision of a 
practitioner as defined in part 11. The revisions would permit, rather 
than require, the USPTO Director to grant a period of limited 
recognition to allow a disciplined practitioner to wind up his or her 
practice. The proposed revisions to Sec.  11.58 would in no way limit 
the OED Director's ability to take action for violations of the rule. 
For example, the OED Director is still authorized to take action 
against a practitioner for violating the terms of disciplinary 
probation or to seek exclusion or an additional suspension for 
practitioners who violate disciplinary rules while excluded, suspended, 
or in disability inactive status. Finally, the proposed revisions would 
strike references to resigned practitioners. Obligations relating to 
resigned practitioners would be consolidated in Sec.  11.11(e).
    The USPTO proposes to amend Sec.  11.60 to remove references to 
resigned status. Procedures for resignation and reinstatement from a 
resigned status would be consolidated in Sec.  11.11. For this reason, 
the USPTO proposes to amend Sec.  11.60(b) and (c) to eliminate 
references to reinstatement and Sec.  11.58 compliance requirements for 
resigned practitioners. The USPTO also proposes to amend the heading of 
Sec.  11.60 to explicitly reflect that it applies only to disciplined 
practitioners.
    The USPTO proposes to re-designate the current Sec.  11.60(f) as 
Sec.  11.60(g) and amend the paragraph by inserting a new provision 
that would clarify that a final decision by the OED Director denying 
reinstatement to a practitioner is not a final agency action. A 
suspended or excluded party dissatisfied with the decision of the OED 
Director regarding his or her reinstatement may seek review of the 
decision by petitioning the USPTO Director in accordance with Sec.  
11.2(d).
    The USPTO proposes to re-designate the current Sec.  11.60(g) as 
Sec.  11.60(h) and

[[Page 45817]]

amend the paragraph to allow a notice of a practitioner's intent to 
seek reinstatement to be published prior to the expiration date of the 
suspension or exclusion. The purpose of this revision is to speed the 
processing of petitions for reinstatement while still providing the 
requisite public notice.
    The USPTO proposes to amend Sec.  11.106(b) to allow a practitioner 
to reveal information relating to the representation of a client to 
detect and resolve conflicts of interest arising from the 
practitioner's change of employment or from changes in the composition 
or ownership of a law firm, but only if the revealed information would 
not compromise the attorney-client privilege or otherwise prejudice the 
client. This amendment would cause this provision to more closely align 
with the 2012 amendments to ABA Model Rule 1.6.
    The USPTO proposes to amend Sec.  11.106 by adding a new paragraph 
(d) that would require a practitioner to make reasonable efforts to 
prevent the inadvertent or unauthorized disclosure of, or unauthorized 
access to, information relating to the representation of a client. This 
amendment would cause this provision to more closely align with the 
2012 amendments to ABA Model Rule 1.6.
    The USPTO proposes to amend Sec.  11.118 to clarify that a 
practitioner may not use information learned from a prospective client 
except as otherwise provided, regardless of whether the information was 
learned in a discussion. This amendment would cause this provision to 
more closely align with the 2012 amendments to ABA Model Rule 1.18.
    The USPTO proposes to amend Sec.  11.702 to establish standards 
that, if met, would qualify practitioners to state they are a certified 
specialist in a particular field of law. This amendment would cause 
this provision to more closely align with the 2012 amendments to ABA 
Model Rule 7.2.
    The USPTO proposes to amend Sec.  11.703 to clarify that the 
limitations on solicitation apply to any person without regard to 
whether the practitioner considers the targets of the solicitation to 
actually be prospective clients. This amendment would cause this 
provision to more closely align with the 2012 amendments to ABA Model 
Rule 7.3.
    The USPTO proposes to amend Sec.  11.704(e) to clarify that 
individuals granted limited recognition under Sec.  11.9 may not use 
the designation ``registered.''
    The USPTO proposes to amend Sec.  11.804(b) to clarify that being 
convicted of a qualifying crime is a form of misconduct.
    The USPTO proposes to amend Sec.  11.804(h) to provide that it is 
misconduct to be publicly disciplined on ethical or professional 
misconduct grounds by a country having disciplinary jurisdiction over 
the practitioner.

Rulemaking Requirements

    A. Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure and/or interpretive 
rules (see Perez v. Mortgage Bankers Ass'n, 135 S. Ct. 1199, 1204 
(2015) (Interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers.'') 
(citations and internal quotation marks omitted); Nat'l Org. of 
Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 
(Fed. Cir. 2001) (Rule that clarifies interpretation of a statute is 
interpretive.); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. 
Cir. 2001) (Rules governing an application process are procedural under 
the Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 
244 F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals are 
procedural where they do not change the substantive standard for 
reviewing claims.)).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c) or any other law (see Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are not required when an agency ``issue[s] an 
initial interpretive rule'' or when it amends or repeals that 
interpretive rule.); and Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 
1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), do not require notice-and-comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice,'' quoting 5 U.S.C. 
553(b)(A))). Nevertheless, the USPTO has chosen to seek public comment 
before implementing the rule to benefit from the public's input.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the USPTO has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that the changes proposed 
in this rule will not have a significant economic impact on a 
substantial number of small entities (see 5 U.S.C. 605(b)).
    The changes in this notice of proposed rulemaking fall into one of 
three categories: (1) Harmonization of the USPTO Rules of Professional 
Conduct with the ABA Model Rules of Professional Conduct; (2) changes 
to the rules governing the recognition to practice before the Office to 
implement new requirements and simplify and otherwise improve 
consistency with existing requirements to facilitate the public's 
compliance with existing regulations, including revisions to 
timeframes, procedures concerning the registration exam, provisions 
related to the revocation of an individual's registration or limited 
recognition in limited circumstances, and provisions for reinstatement; 
and (3) non-substantive changes, such as increased structural 
parallelism between similar provisions; increased readability of 
provisions; corrections to spelling, grammar, and cross-references; 
harmonization of terminology; correction of syntax formats to comport 
with the Federal Register Document Drafting Handbook; and 
reorganization of paragraph structure within particular rules and other 
changes to improve clarity in the regulations.
    This proposed rule would apply to the approximately 47,000 
registered patent practitioners currently appearing before the Office, 
as well as licensed attorneys practicing in trademark and other non-
patent matters before the Office. The USPTO does not collect or 
maintain statistics on the size status of impacted entities, which 
would be required to determine the number of small entities that would 
be affected by the proposed rule. However, a large number of the 
changes proposed in this rule are not expected to have any impact on 
affected entities. For example, correction of spelling and grammar, 
harmonization of terminology, correction of syntax formats, and 
reorganization of paragraph structures are administrative in nature and 
would have no impact on affected entities.
    The USPTO also proposes to make changes to the rules governing the 
recognition to practice before the Office and to certain rules 
governing the process of investigations and conduct of disciplinary 
proceedings to clarify existing policy and practice and to update the 
USPTO Rules of Professional Conduct to reflect widely-adopted changes 
to the ABA Model Rules of Professional Conduct. These revisions impact 
rules of procedure and are not expected to substantively impact 
parties. The intent of these changes is to make the USPTO regulations 
more clear and to streamline procedural requirements. Where the 
proposed

[[Page 45818]]

rulemaking arguably increases regulatory burden, such burdens are 
minimal and outweighed by the benefits they would provide.
    This proposed rule would also provide applicants for registration 
or limited recognition the ability to request extensions of time to 
schedule the registration exam for a fee. The proposed new fee of $115 
would recover the estimated average cost to the Office of related 
processing, services, and materials. The USPTO expects that this 
increased scheduling flexibility will save those applicants who would 
have otherwise missed the window in which to sit for the registration 
examination the time and expense of having to reapply to take the 
examination. The cost of reapplying for the examination is currently 
$300, exclusive of any nonrefundable fees paid to the commercial 
testing service that administers the examination. The USPTO estimates 
that this new regulatory flexibility will save the public at least 
$92,500. The authorization for this fee is 35 U.S.C. 41(d)(2)(A).
    In sum, any requirements resulting from these proposed changes are 
of minimal or no additional burden to those practicing before the 
Office. For these reasons, this rulemaking will not have a significant 
economic impact on a substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
E.O. 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with E.O. 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided online access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This proposed rule is not an E.O. 13771 (Jan. 30, 
2017) regulatory action because this proposed rule is not significant 
under E.O. 12866 (Sept. 30, 1993).
    F. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under E.O. 13132 (Aug. 4, 1999).
    G. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under E.O. 13175 (Nov. 6, 2000).
    H. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under E.O. 13211 because this rulemaking is 
not likely to have a significant adverse effect on the supply, 
distribution, or use of energy. Therefore, a Statement of Energy 
Effects is not required under E.O. 13211 (May 18, 2001).
    I. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of E.O. 
12988 (Feb. 5, 1996).
    J. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under E.O. 13045 (Apr. 21, 1997).
    K. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under E.O. 12630 (Mar. 15, 1988).
    L. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the U.S. 
Senate, the U.S. House of Representatives, and the Comptroller General 
of the Government Accountability Office. The changes in this rulemaking 
are not expected to result in an annual effect on the economy of $100 
million or more, a major increase in costs or prices, or significant 
adverse effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rulemaking is not expected to be considered ``major 
rule'' as defined in 5 U.S.C. 804(2).
    M. Unfunded Mandates Reform Act of 1995: The changes in this 
rulemaking do not involve a Federal intergovernmental mandate that will 
result in the expenditure by State, local, and tribal governments, in 
the aggregate, of $100 million (as adjusted) or more in any one year, 
or a Federal private sector mandate that will result in the expenditure 
by the private sector of $100 million (as adjusted) or more in any one 
year, and will not significantly or uniquely affect small governments. 
Therefore, no actions are necessary under the provisions of the 
Unfunded Mandates Reform Act of 1995 (see 2 U.S.C. 1501 et seq.).
    N. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969 (see 42 U.S.C. 4321 et seq.).
    O. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    P. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking involves information collection requirements 
that are subject to review and approval by the Office of Management and 
Budget (OMB) under the Paperwork Reduction Act. The collections of 
information involved in this rulemaking have been reviewed and 
previously approved by OMB under OMB control numbers 0651-0012 
(Admission to Practice and Roster of Registered Patent Attorneys and 
Agents Admitted to Practice before the USPTO) and 0651-0017 
(Practitioner Conduct and Discipline). In addition, modifications to 
0651-0012 because of this rulemaking will be submitted to OMB for 
approval prior to this rule becoming effective. The proposed 
modifications include updating the process under 37 CFR 11.7 and 11.9 
for the Form PTO-158 Application for

[[Page 45819]]

Registration to Practice before the USPTO, to include the option for 
applicants to extend their time window to schedule their registration 
examination, therefore reducing the number of applicants who would need 
to reapply because they did not take the examination in time. The USPTO 
estimates that the number of Applications for Registration to Practice 
before the USPTO would decrease by 500 responses due to applicants 
obtaining an extension rather than reapplying for their registration. 
Another proposed modification is the removal of USPTO-based testing 
services.
    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 
has a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 11

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

    For the reasons set forth in the preamble, the United States Patent 
and Trademark Office proposes to amend parts 1 and 11 of title 37 of 
the CFR as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority section for part 1 continues to read as follows:

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

0
2. Amend Sec.  1.21 by removing and reserving paragraph (a)(1)(ii)(B), 
adding paragraph (a)(1)(iv), and adding introductory text to paragraph 
(a)(9) to read as follows:


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (a) * * *
    (1) * * *
    (ii) * * *
    (B) [Reserved]
* * * * *
    (iv) Request for extension of time in which to schedule examination 
for registration to practice (non-refundable): $115.00.
* * * * *
    (9) Administrative reinstatement fees:
* * * * *

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

0
3. The authority citation for part 11 continues to read as follows:

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

0
4. Amend Sec.  11.1 by revising the definitions of ``conviction or 
convicted,'' ``practitioner,'' ``roster,'' ``serious crime,'' and 
``state'' to read as follows:


Sec.  11.1   Definitions.

* * * * *
    Conviction or convicted means any confession to a crime; a verdict 
or judgment finding a person guilty of a crime; any entered plea, 
including nolo contendere or Alford plea, to a crime; or receipt of 
deferred adjudication (whether judgment or sentence has been entered or 
not) for an accused or pled crime.
* * * * *
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office 
in patent matters;
    (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as 
provided by Sec.  11.14(a); (b), and (c), to practice before the Office 
in trademark matters or other non-patent matters;
    (3) An individual authorized to practice before the Office in 
patent matters under Sec.  11.9(a) or (b); or
    (4) An individual authorized to practice before the Office under 
Sec.  11.16(d).
* * * * *
    Roster or register means a list of individuals who have been 
registered as either a patent attorney or patent agent.
* * * * *
    Serious crime means:
    (1) Any criminal offense classified as a felony under the laws of 
the United States, any state or any foreign country where the crime 
occurred, or any criminal offense punishable by death or imprisonment 
of more than one year; or
    (2) Any crime a necessary element of which, as determined by the 
statutory or common law definition of such crime in the jurisdiction 
where the crime occurred, includes interference with the administration 
of justice, false swearing, misrepresentation, fraud, willful failure 
to file income tax returns, deceit, bribery, extortion, 
misappropriation, theft, or an attempt or a conspiracy or solicitation 
of another to commit a ``serious crime.''
* * * * *
    State means any of the 50 states of the United States of America, 
the District of Columbia, and any commonwealth or territory of the 
United States of America.
* * * * *
0
5. Amend Sec.  11.2 by revising paragraphs (b)(2) and (4) to read as 
follows:


Sec.  11.2   Director of the Office of Enrollment and Discipline.

* * * * *
    (b) * * *
    (2) Receive and act upon applications for registration, prepare and 
grade the registration examination, maintain the register provided for 
in Sec.  11.5, and perform such other duties in connection with 
enrollment and recognition of attorneys and agents as may be necessary.
* * * * *
    (4) Conduct investigations of matters involving possible grounds 
for discipline. Except in matters meriting summary dismissal, no 
disposition under Sec.  11.22(h) shall be recommended or undertaken by 
the OED Director until the subject of the investigation has been 
afforded an opportunity to respond to a reasonable inquiry by the OED 
Director.
* * * * *
0
6. Add Sec.  11.4 to subpart A to read as follows:


Sec.  11.4   Computing time.

    Computing time. The following rules apply in computing any time 
period specified in this part where the period is stated in days or a 
longer unit of time:
    (a) Exclude the day of the event that triggers the period;
    (b) Count every day, including intermediate Saturdays, Sundays, and 
legal holidays; and
    (c) Include the last day of the period, but if the last day is a 
Saturday, Sunday, or legal holiday, the period continues to run until 
the end of the next day that is not a Saturday, Sunday, or legal 
holiday.
0
7. Amend Sec.  11.5 by revising paragraphs (a), the introductory text 
to (b)(1), and (b)(2) to read as follows:


Sec.  11.5   Register of attorneys and agents in patent matters; 
practice before the Office.

    (a) Register of attorneys and agents. A register of attorneys and 
agents is kept in the Office on which are entered the names of all 
individuals recognized as entitled to represent applicants having

[[Page 45820]]

prospective or immediate business before the Office in the preparation 
and prosecution of patent applications. Registration in the Office 
under the provisions of this part shall entitle the individuals so 
registered to practice before the Office only in patent matters.
    (b) * * *
    (1) Practice before the Office in patent matters. Practice before 
the Office in patent matters includes, but is not limited to, preparing 
or 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; drafting a reply to a 
communication from the Office regarding a patent application; and 
drafting a communication for a public use, interference, reexamination 
proceeding, petition, appeal to or any other proceeding before the 
Patent Trial and Appeal Board, or other patent proceeding. Registration 
to practice before the Office in patent matters authorizes the 
performance of those services that 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 include:
* * * * *
    (2) Practice before the Office in trademark matters. Practice 
before the Office in trademark matters includes, but is not limited to, 
consulting with or giving advice to a client in contemplation of filing 
a trademark application or other document with the Office; preparing or 
prosecuting an application for trademark registration; preparing an 
amendment that may require written argument to establish the 
registrability of the mark; preparing or prosecuting a document for 
maintaining, correcting, amending, canceling, surrendering, or 
otherwise affecting a registration; and conducting an opposition, 
cancellation, or concurrent use proceeding; or conducting an appeal to 
the Trademark Trial and Appeal Board.
0
8. Amend Sec.  11.7 by revising paragraphs (b)(1)(i)(B) and (b)(2) and 
(3); adding paragraph (b)(4); revising paragraphs (d)(3), (e), (f), 
(g)(1), and (g)(2)(ii); and adding paragraph (l) to read as follows:


Sec.  11.7   Requirements for registration.

* * * * *
    (b)(1) * * *
    (i) * * *
    (B) Payment of the fees required by Sec.  1.21(a)(1) of this 
chapter;
* * * * *
    (2) An individual failing the examination may, upon receipt of 
notice of failure from OED, reapply for admission to the examination. 
An individual failing the examination for the first or second time must 
wait 30 days after the date the individual last took the examination 
before retaking the examination. An individual failing the examination 
for the third or fourth time must wait 90 days after the date the 
individual last took the examination before retaking the examination. 
An individual may not take the examination more than five times. 
However, upon petition under Sec.  11.2(c), the OED Director may, at 
his or her discretion, waive this limitation upon such conditions as 
the OED Director may prescribe. An individual reapplying shall:
    (i) File a completed application for registration form including 
all requested information and supporting documents not previously 
provided to OED,
    (ii) Pay the fees required by Sec.  1.21(a)(1) of this chapter,
    (iii) For aliens, provide proof that registration is not 
inconsistent with the terms of their visa or entry into the United 
States, and
    (iv) Provide satisfactory proof of good moral character and 
reputation.
    (3) An individual failing to file a complete application for 
registration will not be admitted to the examination and will be 
notified of the incompleteness. Applications for registration that are 
incomplete as originally submitted will be considered only when they 
have been completed and received by OED, provided that this occurs 
within 60 days of the mailing date of the notice of incompleteness. 
Thereafter, a new and complete application for registration must be 
filed. Only an individual approved as satisfying the requirements of 
paragraph (b)(1)(i) of this section may be admitted to the examination.
    (4)(i) A notice of admission shall be sent to those individuals who 
have been admitted to the registration examination. This notice shall 
specify a certain period of time in which to schedule and take the 
examination.
    (ii) An individual may request an extension of this period of time 
by written request to the OED Director. Such request must be received 
by the OED Director prior to the expiration of the period specified in 
the notice as extended by any previously granted extension and must 
include the fee specified in Sec.  1.21(a)(1)(iv). Upon the granting of 
the request, the period of time in which the individual may schedule 
and take the registration examination shall be extended by 90 days.
    (iii) An individual who does not take the registration examination 
within the period of time specified in the notice may not take the 
examination without filing a new application for registration, as set 
forth in paragraph (b)(1)(i) of this section.
* * * * *
    (d) * * *
* * * * *
    (3) Certain former Office employees who were not serving in the 
patent examining corps upon their separation from the Office. The OED 
Director may waive the taking of a registration examination in the case 
of a former Office employee meeting the requirements of paragraph 
(b)(1)(i)(C) of this section who, by petition, demonstrates the 
necessary legal qualifications to render to patent applicants and 
others valuable service and assistance in the preparation and 
prosecution of their applications or other business before the Office 
by showing that he or she has:
    (i) Exhibited comprehensive knowledge of patent law equivalent to 
that shown by passing the registration examination as a result of 
having been in a position of responsibility in the Office in which he 
or she:
    (A) Provided substantial guidance on patent examination policy, 
including the development of rule or procedure changes, patent 
examination guidelines, changes to the Manual of Patent Examining 
Procedure, training or testing materials for the patent examining 
corps, or materials for the registration examination or continuing 
legal education; or
    (B) Represented the Office in patent matters before Federal courts; 
and
    (ii) Was rated at least fully successful in each quality 
performance element of his or her performance plan for said position 
for the last two complete rating periods in the Office and was not 
under an oral or written warning regarding such performance elements at 
the time of separation from the Office.
* * * * *
    (e) Examination results. Notification of the examination results is 
final. Within 60 days of the mailing date of a notice of failure, the 
individual is entitled to inspect, but not copy, the questions and 
answers he or she

[[Page 45821]]

incorrectly answered. Review will be under supervision. No notes may be 
taken during such review. Substantive review of the answers or 
questions may not be pursued by petition for regrade.
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under Sec.  11.6(c), in addition to satisfying 
the provisions of paragraphs (a) and (b) of this section, and the 
provisions of Sec.  11.8(b), shall pay the application fee required by 
Sec.  1.21(a)(1)(i) of this chapter upon filing an application for 
registration.
    (g) * * * (1) Every individual seeking recognition shall answer all 
questions in the application for registration and request(s) for 
information and evidence issued by OED; disclose all relevant facts, 
dates, and information; and provide verified copies of documents 
relevant to his or her good moral character and reputation. An 
individual who is an attorney shall submit a certified copy of each of 
his or her State bar applications and determinations of character and 
reputation, if available.
    (2) * * *
* * * * *
    (ii) The OED Director, in considering an application for 
registration by an attorney, may accept a State bar's determination of 
character and reputation as meeting the requirements set forth in 
paragraph (a)(2)(i) of this section if, after review, the Office finds 
no substantial discrepancy between the information provided with his or 
her application for registration and the State bar application and 
determination of character and reputation, provided that acceptance is 
not inconsistent with other rules and the requirements of 35 U.S.C. 
2(b)(2)(D).
* * * * *
    (l) Transfer of status from agent to attorney. An agent registered 
under Sec.  11.6(b) may request registration as an attorney under Sec.  
11.6(a). The agent shall demonstrate his or her good standing as an 
attorney and pay the fee required by Sec.  1.21(a)(2)(iii) of this 
chapter.
0
9. Amend Sec.  11.9 by revising paragraphs (a) and (b) and adding 
paragraphs (d), (e), and (f), to read as follows:


Sec.  11.9   Limited recognition in patent matters.

    (a) Any individual not registered under Sec.  11.6 may, upon a 
showing of circumstances that render it necessary or justifiable and 
that the individual is of good moral character and reputation, be given 
limited recognition by the OED Director to prosecute as attorney or 
agent a specified patent application or specified patent applications. 
Limited recognition under this paragraph shall not extend further than 
the application or applications specified. Limited recognition shall 
not be granted to individuals who have passed the examination or to 
those for whom the examination has been waived while such individual's 
application for registration to practice before the Office in patent 
matters is pending.
    (b) A nonimmigrant alien residing in the United States and 
fulfilling the provisions of paragraphs (d) and (e) of this section may 
be granted limited recognition if the nonimmigrant alien is authorized 
by the United States Government to be employed or trained in the United 
States in the capacity of representing a patent applicant by presenting 
or prosecuting a patent application. Limited recognition shall be 
granted for a period consistent with the terms of authorized employment 
or training. Limited recognition shall not be granted or extended to a 
non-United States citizen residing abroad. If granted, limited 
recognition shall automatically expire upon the nonimmigrant alien's 
departure from the United States.
* * * * *
    (d) No individual will be granted limited recognition to practice 
before the Office under paragraph (b) of this section unless he or she 
has:
    (1) Applied to the USPTO Director in writing by completing an 
application form supplied by the OED Director and furnishing all 
requested information and material; and
    (2) Established to the satisfaction of the OED Director that he or 
she:
    (i) Possesses good moral character and reputation;
    (ii) Possesses the legal, scientific, and technical qualifications 
necessary for him or her to render applicants valuable service; and
    (iii) Is competent to advise and assist patent applicants in the 
presentation and prosecution of their applications before the Office.
    (e)(1) To enable the OED Director to determine whether an 
individual has the qualifications specified in paragraph (d)(2) of this 
section, the individual shall:
    (i) File a complete application for limited recognition each time 
admission to the registration examination is requested. A complete 
application for limited recognition includes:
    (A) An application for limited recognition form supplied by the OED 
Director wherein all requested information and supporting documents are 
furnished;
    (B) Payment of the fees required by Sec.  1.21(a)(1) of this 
chapter;
    (C) Satisfactory proof of scientific and technical qualifications; 
and
    (D) Satisfactory proof that the terms of the individual's 
immigration status or entry into the United States authorize employment 
or training in the preparation and prosecution of patents for others; 
and
    (ii) Pass the registration examination. Each individual seeking 
limited recognition under this section must take and pass the 
registration examination to enable the OED Director to determine 
whether the individual possesses the legal and competence 
qualifications specified in paragraphs (d)(2)(ii) and (d)(2)(iii) of 
this section.
    (2) An individual failing the examination may, upon receipt of 
notice of failure from OED, reapply for admission to the examination. 
An individual failing the examination for the first or second time must 
wait 30 days after the date the individual last took the examination 
before retaking the examination. An individual failing the examination 
for the third or fourth time must wait 90 days after the date the 
individual last took the examination before retaking the examination. 
An individual may not take the examination more than five times. 
However, upon petition under Sec.  11.2(c), the OED Director may, at 
his or her discretion, waive this limitation upon such conditions as 
the OED Director may prescribe. An individual reapplying shall:
    (i) File a complete application for limited recognition form, 
including all requested information and supporting documents not 
previously provided to OED;
    (ii) Pay the application fee required by Sec.  1.21(a)(1) of this 
chapter;
    (iii) Provide satisfactory proof that the terms of the individual's 
immigration status or entry into the United States authorize employment 
or training in the preparation and prosecution of patents for others; 
and
    (iv) Provide satisfactory proof of good moral character and 
reputation.
    (3) An individual failing to file a complete application will not 
be admitted to the examination and will be notified of such deficiency. 
Applications for limited recognition that are incomplete will be 
considered only when the deficiency has been cured, provided that this 
occurs within 60 days of the mailing date of the notice of deficiency. 
Thereafter, a new and complete application for limited recognition must 
be filed. An individual seeking limited recognition under paragraph (b) 
of this section must satisfy the requirements of paragraph (e)(1)(i) of

[[Page 45822]]

this section to be admitted to the examination.
    (4)(i) A notice of admission shall be sent to those individuals who 
have been admitted to the registration examination. This notice shall 
specify a certain period of time in which to schedule and take the 
examination.
    (ii) An individual may request an extension of this period of time 
by written request to the OED Director. Such request must be received 
by the OED Director prior to the expiration of the period specified in 
the notice, as extended by any previously granted extension, and must 
include the fee specified in Sec.  1.21(a)(1)(iv). Upon the granting of 
the request, the period of time in which the individual may schedule 
and take the examination shall be extended by 90 days.
    (iii) An individual who does not take the examination within the 
period of time specified in the notice may not take the examination 
without filing a new application for limited recognition as set forth 
in paragraph (e)(1)(i) of this section.
    (f) Applications for reinstatement of limited recognition.
    (1) A person whose grant of limited recognition expired less than 
five years before the application for reinstatement may be reinstated 
provided the person:
    (i) Files a complete application that includes:
    (A) A request for reinstatement with the fee required by Sec.  
1.21(a)(9)(ii); and
    (B) Satisfactory proof that the terms of the individual's 
immigration status or entry into the United States authorize employment 
or training in the preparation and prosecution of patents for others; 
and
    (ii) Provides satisfactory proof of good moral character and 
reputation.
    (2) Persons whose grant of limited recognition expired five years 
or more before filing a complete application for reinstatement must 
comply with paragraph (f)(1) of this section and provide objective 
evidence that they continue to possess the necessary legal 
qualifications to render applicants valuable service to patent 
applicants.
0
10. Revise Sec.  11.10 to read as follows:


Sec.  11.10   Restrictions on practice in patent matters; former and 
current Office employees; government employees.

    (a) Only practitioners registered under Sec.  11.6; individuals 
given limited recognition under Sec.  11.9(a) or (b) or Sec.  11.16; or 
individuals admitted pro hac vice as provided in Sec.  41.5(a) or Sec.  
42.10(c) are permitted to represent others before the Office in patent 
matters.
    (b) Post employment agreement of former Office employee. No 
individual who has served in the patent examining corps or elsewhere in 
the Office may practice before the Office after termination of his or 
her service, unless he or she signs a written undertaking agreeing:
    (1) To not knowingly act as agent or attorney for or otherwise 
represent or assist in any manner the representation of any other 
person:
    (i) Before the Office,
    (ii) In connection with any particular patent or patent 
application,
    (iii) In which said employee participated personally and 
substantially as an employee of the Office; and
    (2) To not knowingly act within two years after terminating 
employment by the Office as agent or attorney for, or otherwise 
represent or assist in any manner, the representation of any other 
person:
    (i) Before the Office,
    (ii) In connection with any particular patent or patent 
application,
    (iii) If such patent or patent application was pending under the 
employee's official responsibility as an officer or employee within a 
period of one year prior to the termination of such responsibility.
0
11. Amend Sec.  11.11 by:
0
a. Revising paragraphs (b)(2), (3), (5), and (6);
0
b. Adding paragraph (b)(7);
0
c. Revising paragraphs (c)(1) and (2);
0
d. Adding paragraph (c)(3);
0
e. Revising paragraph (e)(1);
0
f. Revising paragraph (f)(2); and
0
g. Adding paragraph (g).
    The revisions read as follows:


Sec.  11.11   Administrative suspension, inactivation, resignation, 
reinstatement, and revocation.

* * * * *
    (b) * * *
    (2) In the event a practitioner fails to comply with the 
requirements specified in a notice provided pursuant to paragraph 
(b)(1) of this section within the time allowed, the OED Director shall 
publish and send to the practitioner a notice to show cause why the 
practitioner should not be administratively suspended. Such notice 
shall be sent in the same manner as set forth in paragraph (b)(1) of 
this section. The OED Director shall file a copy of the notice to show 
cause with the USPTO Director.
    (3) A practitioner to whom a notice to show cause under this 
section has been issued shall be allowed 30 days from the date of the 
notice to show cause to file a response with the USPTO Director. The 
response should address any factual and legal bases why the 
practitioner should not be administratively suspended. The practitioner 
shall serve the OED Director with a copy of the response at the time it 
is filed with the USPTO Director. Within 10 days of receiving a copy of 
the response, the OED Director may file a reply with the USPTO 
Director. A copy of the reply by the OED Director shall be sent to the 
practitioner at the practitioner's address of record. 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 practitioner to pay the requisite 
fees, the USPTO Director shall enter an order administratively 
suspending the practitioner. Otherwise, the USPTO Director shall enter 
an appropriate order dismissing the notice to show cause. Any request 
for reconsideration of the USPTO Director's decision must be filed 
within 20 days after the date such decision is rendered by the USPTO 
Director. Nothing herein shall permit an administratively suspended 
practitioner to seek a stay of the suspension during the pendency of 
any review of the USPTO Director's final decision. If, prior to the 
USPTO Director entering an order under this section, the OED Director 
determines that a practitioner has complied with requirements specified 
in the notice to show cause, the OED Director may withdraw the notice 
to show cause, and the practitioner will not be administratively 
suspended.
* * * * *
    (5) A practitioner 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) A practitioner is prohibited from practicing before the Office 
in patent matters while administratively suspended. A practitioner who 
knows he or she has been administratively suspended is subject to 
discipline for failing to comply with the provisions of this paragraph 
and shall comply with the provisions of Sec.  11.116.
    (7) An administratively suspended practitioner may request 
reinstatement by complying with paragraph (f)(1) of this section.
    (c) * * * (1) Any registered practitioner who shall become employed 
by the Office shall comply with Sec.  11.116 for withdrawal from all 
patent, trademark, and other non-patent 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

[[Page 45823]]

registered practitioner employed by the Office shall be endorsed on the 
register as administratively inactive. Upon separation from the Office, 
an administratively inactive practitioner may request reactivation by 
complying with paragraph (f)(2) 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 register 
as administratively inactive. Upon acceptance of the request, the OED 
Director shall endorse the name of the practitioner as administratively 
inactive. Following separation from the bench, the practitioner may 
request reactivation by complying with paragraph (f)(2) of this 
section.
    (3) An administratively inactive practitioner remains subject to 
the provisions of the USPTO Rules of Professional Conduct and to 
proceedings and sanctions under Sec. Sec.  11.19 through 11.58 for 
conduct that violates a provision of the USPTO Rules of Professional 
Conduct prior to or during such administrative inactivity.
* * * * *
    (e) * * * (1) A registered practitioner or a practitioner 
recognized under Sec.  11.14(c) may request to resign by notifying the 
OED Director in writing of such intent, unless such practitioner is 
under investigation under Sec.  11.22 for a possible violation of the 
USPTO Rules of Professional Conduct, is a practitioner against whom 
probable cause has been found by a panel of the Committee on Discipline 
under Sec.  11.23(b), or is a respondent in a pending proceeding 
instituted under Sec.  11.24, Sec.  11.25, or Sec.  11.29. Upon 
acceptance in writing by the OED Director of such request, that 
practitioner shall no longer be eligible to practice before the Office 
in patent matters 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 practitioner whose resignation is accepted shall be 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.  11.116. A practitioner is 
subject to investigation and discipline for his or her conduct that 
occurred prior to, during, or after the period of his or her 
resignation.
* * * * *
    (f) * * *
    (2) A practitioner who has been administratively inactivated 
pursuant to paragraph (c) of this section may be reactivated after his 
or her employment with the Office ceases or his or her employment in a 
judicial capacity ceases, provided the following is filed with the OED 
Director: (i) A completed application for reactivation on a form 
supplied by the OED Director; (ii) a data sheet; (iii) a signed written 
undertaking required by Sec.  11.10(b); and (iv) the fee set forth in 
Sec.  1.21(a)(9)(ii) of this chapter. A practitioner is subject to 
investigation and discipline for his or her conduct before, during, or 
after the period of his or her inactivation. Administratively inactive 
practitioners who have been separated from the Office or have ceased to 
be employed in a judicial capacity for five or more years prior to 
filing a complete application for reactivation shall be required to 
provide objective evidence that they continue to possess the necessary 
legal qualifications to render valuable service to patent applicants.
* * * * *
    (g) Administrative revocation. (1) The USPTO Director may revoke an 
individual's registration or limited recognition if:
    (i) the registration or limited recognition was issued through 
mistake or inadvertence, or
    (ii) the individual's application for registration or limited 
recognition contains materially false information or omits material 
information.
    (2) Whenever it appears that grounds for administrative revocation 
exist, the OED Director shall issue to the individual a notice to show 
cause why the individual's registration or limited recognition should 
not be revoked.
    (i) The notice to show cause shall be served on the individual in 
the same manner as described in Sec.  11.35.
    (ii) The notice to show cause shall state the grounds for the 
proposed revocation.
    (iii) The OED Director shall file a copy of the notice to show 
cause with the USPTO Director.
    (3) Within 30 days after service of the notice to show cause, the 
individual may file a response to the notice to show cause with the 
USPTO Director. The response should address any factual or legal bases 
why the individual's registration or limited recognition should not be 
revoked. The individual shall serve the OED Director with a copy of the 
response at the time it is filed with the USPTO Director. Within 10 
days of receiving a copy of the response, the OED Director may file a 
reply with the USPTO Director. A copy of the reply by the OED Director 
shall be sent to the individual at the individual's address of record.
    (4) 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 grounds for the notice to 
show cause, the USPTO Director shall enter an order revoking the 
individual's registration or limited recognition. Otherwise, the USPTO 
Director shall enter an appropriate order dismissing the notice to show 
cause. An oral hearing will not be granted unless so ordered by the 
USPTO Director, upon a finding that such hearing is necessary. Any 
request for reconsideration of the USPTO Director's decision must be 
filed within 20 days after the date such decision is rendered by the 
USPTO Director. Nothing herein shall permit an individual to seek a 
stay of the revocation during the pendency of any review of the USPTO 
Director's final decision.
0
12. Amend Sec.  11.18 by revising paragraph (c)(2) to read as follows:


Sec.  11.18   Signature and certificate for correspondence filed in the 
Office.

* * * * *
    (c) * * *
    (2) Referring a practitioner's conduct to the Director of the 
Office of Enrollment and Discipline for appropriate action;
* * * * *
0
13. Amend Sec.  11.19 by revising the section heading and paragraphs 
(a), (b)(1)(ii), and (c), and by adding paragraph (e), to read as 
follows:


Sec.  11.19   Disciplinary jurisdiction; grounds for discipline and for 
transfer to disability inactive status.

    (a) Disciplinary jurisdiction. All practitioners engaged in 
practice before the Office; all practitioners administratively 
suspended under Sec.  11.11; all practitioners registered or recognized 
to practice before the Office in patent matters; all practitioners 
resigned, inactivated, or in emeritus status under Sec.  11.11; all 
practitioners authorized under Sec. Sec.  41.5(a) or 42.10(c); and all 
practitioners transferred to disability inactive status or publicly 
disciplined by a duly constituted authority are subject to the 
disciplinary jurisdiction of the Office and subject to being 
transferred to disability inactive

[[Page 45824]]

status. A non-practitioner is also subject to the disciplinary 
authority of the Office if the person engages in or offers to engage in 
practice before the Office without proper authority.
    (b) * * *
    (1) * * *
    (ii) Discipline on ethical or professional misconduct grounds 
imposed in another jurisdiction or disciplinary disqualification from 
participating in or appearing before any Federal program or agency;
* * * * *
    (c) Petitions to disqualify a practitioner in ex parte or inter 
partes matters in the Office are not governed by this subpart and will 
be handled on a case-by-case basis under such conditions as the USPTO 
Director deems appropriate.
* * * * *
    (e) The OED Director has the discretion to choose any of the 
independent grounds of discipline under paragraph (b) of this section 
and to pursue any of the procedures set forth in this subpart in every 
disciplinary proceeding.
0
14. Amend Sec.  11.20 by revising paragraphs (a)(4) and (c) to read as 
follows:


Sec.  11.20   Disciplinary sanctions; Transfer to disability inactive 
status.

    (a) * * *
    (4) Probation. Probation may be imposed in lieu of or in addition 
to any other disciplinary sanction. The conditions of probation shall 
be stated in the order imposing probation. Violation of any condition 
of probation shall be cause for imposition of the disciplinary 
sanction. Imposition of the disciplinary sanction predicated upon 
violation of probation shall occur only after a notice to show cause 
why the disciplinary sanction should not be imposed is resolved 
adversely to the practitioner.
* * * * *
    (c) Transfer to disability inactive status. As set forth in Sec.  
11.29, the USPTO Director, after notice and opportunity for a hearing, 
may transfer a practitioner to disability inactive status where grounds 
exist to believe the practitioner has been transferred to disability 
inactive status in another jurisdiction, has been judicially declared 
incompetent, has been judicially ordered to be involuntarily committed 
after a hearing on the grounds of incompetency or disability, or has 
been placed by court order under guardianship or conservatorship.
0
15. Revise Sec.  11.21 to read as follows:


Sec.  11.21   Warnings.

    A warning is neither public nor a disciplinary sanction. The OED 
Director may conclude an investigation with the issuance of a warning. 
The warning shall contain a statement of facts and identify the USPTO 
Rules of Professional Conduct relevant to the facts.
0
16. Amend Sec.  11.22 by adding paragraph (c) and by revising 
paragraphs (g) and (h) to read as follows:


Sec.  11.22   Disciplinary investigations.

* * * * *
    (c) Notice to the OED Director. Within 30 days of being (1) 
publicly disciplined as specified in Sec.  11.24; (2) disciplinarily 
disqualified from participating in or appearing before any Federal 
program or agency as specified in Sec.  11.24; (3) convicted of a crime 
in a court of the United States, any State, or a foreign country as 
specified in Sec.  11.25; or (4) transferred to disability inactive 
status in another jurisdiction as specified in Sec.  11.29, a 
practitioner subject to the disciplinary jurisdiction of the Office 
shall notify the OED Director in writing of the same. Upon receiving 
such notification, the OED Director shall obtain a certified copy of 
the record or order regarding such discipline, disqualification, 
conviction, or transfer. A certified copy of the record or order 
regarding the discipline, disqualification, conviction, or transfer 
shall be clear and convincing evidence that the practitioner has been 
disciplined, disqualified, convicted of a crime, or transferred to 
disability status by another jurisdiction.
* * * * *
    (g) Where the OED Director makes a request under paragraph (f)(2) 
of this section to a Contact Member of the Committee on Discipline, 
such Contact Member shall 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 determination under 
Sec.  11.23(b) concerning such practitioner.
    (h) Disposition of investigation. Upon the conclusion of an 
investigation, the OED Director may take appropriate action, including 
but not limited to:
    (1) Closing the investigation without issuing a warning or taking 
disciplinary action;
    (2) Issuing a warning to the practitioner;
    (3) Instituting formal charges upon the approval of the Committee 
on Discipline; or
    (4) Entering into a settlement agreement with the practitioner and 
submitting the same for approval of the USPTO Director.
* * * * *
0
17. Amend Sec.  11.24 by revising paragraph (a), the introductory text 
to paragraph (b), the introductory text to paragraph (d)(1), and 
paragraph (e) to read as follows:


Sec.  11.24   Reciprocal discipline.

    (a) Notice to the OED Director. Within 30 days of being publicly 
censured, publicly reprimanded, subjected to probation, disbarred or 
suspended by another jurisdiction, or disciplinarily disqualified from 
participating in or appearing before any Federal program or agency, a 
practitioner subject to the disciplinary jurisdiction of the Office 
shall notify the OED Director in writing of the same. A practitioner is 
deemed to be disbarred if he or she is disbarred, excluded on consent, 
or has resigned in lieu of discipline or a disciplinary proceeding. 
Upon receiving notification from any source or otherwise learning that 
a practitioner subject to the disciplinary jurisdiction of the Office 
has been publicly censured, publicly reprimanded, subjected to 
probation, disbarred, suspended, or disciplinarily disqualified, the 
OED Director shall obtain a certified copy of the record or order 
regarding the public censure, public reprimand, probation, disbarment, 
suspension, or disciplinary disqualification. A certified copy of the 
record or order regarding the discipline shall establish a prima facie 
case by clear and convincing evidence that the practitioner has been 
publicly censured, publicly reprimanded, subjected to probation, 
disbarred, suspended, or disciplinarily disqualified by another 
jurisdiction. In addition to the actions identified in Sec.  11.22(h) 
and (i), the OED Director may, without Committee on Discipline 
authorization, file with the USPTO Director a complaint complying with 
Sec.  11.34 against the practitioner predicated upon the public 
censure, public reprimand, probation, disbarment, suspension, or 
disciplinary disqualification. The OED Director may request the USPTO 
Director to issue a notice and order as set forth in paragraph (b) of 
this section.
    (b) Notification served on practitioner. Upon receipt of the 
complaint and request for notice and order, the USPTO Director shall 
issue a notice directed to the practitioner in accordance with Sec.  
11.35 and to the OED Director containing:
* * * * *
    (d) * * *
    (1) The USPTO Director shall hear the matter on the documentary 
record

[[Page 45825]]

unless the USPTO Director determines that an oral hearing is necessary. 
The USPTO Director may order the OED Director or the practitioner to 
supplement the record with further information or argument. After 
expiration of the period specified in paragraph (b)(3) of this section, 
the USPTO Director shall consider the record and shall impose the 
identical public censure, public reprimand, probation, disbarment, 
suspension, or disciplinary disqualification unless the practitioner 
demonstrates by clear and convincing evidence, and the USPTO Director 
finds there is a genuine issue of material fact that:
* * * * *
    (e) Adjudication in another jurisdiction or Federal agency or 
program. In all other respects, a final adjudication, regardless of the 
evidentiary standard, in another jurisdiction or Federal agency or 
program that a practitioner, whether or not admitted in that 
jurisdiction, has committed misconduct shall establish a prima facie 
case by clear and convincing evidence that the practitioner has engaged 
in misconduct under Sec.  11.804(h).
* * * * *
0
18. Amend Sec.  11.25 by:
0
a. Revising paragraph (a),
0
b. Revising the introductory text of paragraph (b)(2), and
0
c. Revising paragraphs (b)(3) and (e)(2).
    The revisions read as follows:


Sec.  11.25  Interim suspension and discipline based upon conviction of 
committing a serious crime.

    (a) Notice to the OED Director. 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 30 days 
from the date of such conviction. Notwithstanding the preceding 
sentence, a practitioner is not required to notify the OED Director of 
a traffic offense that did not involve the use of alcohol or a 
controlled substance, did not result in a fine in excess of $300, and 
did not result in the imposition of any other punishment. Upon being 
advised or learning that a practitioner subject to the disciplinary 
jurisdiction of the Office has been convicted of a crime, the OED 
Director shall make a preliminary determination whether the crime 
constitutes a serious crime warranting interim suspension. If the crime 
is a serious crime, the OED Director may file with the USPTO Director 
proof of the conviction and request the USPTO Director to issue a 
notice and order set forth in paragraph (b)(2) of this section. The OED 
Director may, in addition, without Committee on Discipline 
authorization, file with the USPTO Director a complaint complying with 
Sec.  11.34 against the practitioner predicated upon the conviction of 
a serious crime. If the crime is not a serious crime, the OED Director 
may process the matter in the same manner as any other information or 
evidence of a possible violation of any USPTO Rule of Professional 
Conduct coming to the attention of the OED Director.
    (b) * * *
    (2) Notification served on practitioner. Upon receipt of a 
certified copy of the court record, docket entry, or judgment 
demonstrating that the practitioner has been so convicted, together 
with the complaint, the USPTO Director shall issue a notice directed to 
the practitioner in accordance with Sec.  11.35, and to the OED 
Director, containing:
* * * * *
    (3) Hearing and final order on request for interim suspension. The 
request for interim suspension shall be heard by the USPTO Director on 
the documentary record unless the USPTO Director determines that the 
practitioner's response establishes by clear and convincing evidence 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 that the conviction was so lacking in notice or opportunity 
to be heard as to constitute a deprivation of due process. The USPTO 
Director may order the OED Director or the practitioner to supplement 
the record with further information or argument. If the USPTO Director 
determines that there is no genuine issue of material fact, the USPTO 
Director shall enter an appropriate final order regarding the OED 
Director's request for interim suspension regardless of the pendency of 
any criminal appeal. If the USPTO Director is unable to make such 
determination because there is a genuine issue of material fact, the 
USPTO Director shall enter a final order dismissing the request and 
enter a further order referring the complaint to a hearing officer for 
a hearing and entry of an initial decision in accordance with the other 
rules in this part and directing the practitioner to file an answer to 
the complaint in accordance with Sec.  11.36.
* * * * *
    (e) * * *
    (2) Following conviction of a serious crime. Any practitioner 
convicted of a serious crime and disciplined in whole or in part in 
regard to that conviction, may petition for reinstatement under the 
conditions set forth in Sec.  11.60 no earlier than after completion of 
service of his or her sentence, or after completion of service under 
probation or parole, whichever is later.
* * * * *
0
19. Revise Sec.  11.26 to read as follows:


Sec.  11.26  Settlement.

    A settlement conference may occur between the OED Director and a 
practitioner at any time after the initiation of an investigation. 
Evidence shall not be excludable on the grounds that such evidence was 
presented or discussed in a settlement conference. However, any offers 
of compromise and any statements about settlement made during the 
course of the settlement conference shall not be admissible in a 
disciplinary proceeding. 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 shall be effective only upon entry of a final decision by the 
USPTO Director.
0
20. Amend Sec.  11.27 by revising paragraph (b) and by removing and 
reserving paragraph (c) to read as follows:


Sec.  11.27   Exclusion on consent.

* * * * *
    (b) Action by the USPTO Director. Upon receipt of the required 
affidavit, the OED Director shall file the affidavit and any related 
papers with the USPTO Director for review and approval. The USPTO 
Director may order the OED Director or the practitioner to supplement 
the record with further information or argument. The OED Director may 
also file comments in response to the affidavit. If the affidavit is 
approved, the USPTO Director will enter an order excluding the 
practitioner on consent and providing other appropriate actions. Upon 
entry of the order, the excluded practitioner shall comply with the 
requirements set forth in Sec.  11.58.
    (c) [Reserved]
* * * * *
0
21. Amend Sec.  11.28 by revising paragraphs (a)(1), (a)(1)(i)(D) and 
(E), and (a)(2) to read as follows:


Sec.  11.28  Incapacitated practitioners in a disciplinary proceeding.

    (a) * * *
    (1) Practitioner's motion. In the course of a disciplinary 
proceeding under Sec.  11.32, the practitioner may file a

[[Page 45826]]

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.
    (i) * * *
    (D) Written consent by the practitioner to be transferred to 
disability inactive status if the motion is granted; and
    (E) Written agreement by the practitioner not to practice before 
the Office in patent, trademark, or other non-patent matters while in 
disability inactive status.
* * * * *
    (2) Disposition of practitioner's motion. The hearing officer shall 
decide the motion and any response thereto. The motion shall be granted 
upon a showing of good cause to believe the practitioner to be 
incapacitated as alleged. If the required showing is made, the hearing 
officer shall enter an order holding the disciplinary proceeding in 
abeyance. In the case of addiction to drugs or intoxicants, the order 
may provide that the practitioner will not be returned to active status 
absent satisfaction of specified conditions. Upon receipt of the order, 
the OED Director shall transfer the practitioner to disability inactive 
status, give notice to the practitioner, cause notice to be published, 
and give notice to appropriate authorities in the Office that the 
practitioner has been placed in disability inactive status. The 
practitioner shall comply with the provisions of Sec.  11.58 and shall 
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 paragraph (c) or (d) of this section. A practitioner 
in disability inactive status must obtain permission from the OED 
Director to engage in paralegal activity permitted under Sec.  
11.58(h). Permission will be granted only if the practitioner has 
complied with all the conditions of Sec.  11.58 applicable to 
disability inactive status. In the event that permission is granted, 
the practitioner shall fully comply with the provisions of Sec.  
11.58(h).
* * * * *
0
22. Amend Sec.  11.29 by revising paragraphs (a), (b), (d), (g), and 
(i) to read as follows:


Sec.  11.29   Reciprocal transfer or initial transfer to disability 
inactive status.

    (a) Notice to the OED Director. (1) Transfer to disability inactive 
status in another jurisdiction as grounds for reciprocal transfer by 
the Office. Within 30 days of being transferred to disability inactive 
status in another jurisdiction, a practitioner subject to the 
disciplinary jurisdiction of the Office shall notify the OED Director 
in writing of the transfer. Upon notification from any source that a 
practitioner subject to the disciplinary jurisdiction of the Office has 
been transferred to disability inactive status in another jurisdiction, 
the OED Director shall obtain a certified copy of the order. If the OED 
Director finds that transfer to disability inactive status is 
appropriate, the OED Director shall file with the USPTO Director:
    (i) The order;
    (ii) A request that the practitioner be transferred to disability 
inactive status, including the specific grounds therefor; and
    (iii) A request that the USPTO Director issue a notice and order as 
set forth in paragraph (b) of this section.
    (2) Involuntary commitment, adjudication of incompetency, or court 
ordered placement under guardianship or conservatorship as grounds for 
initial transfer to disability inactive status. Within 30 days of being 
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 in 
another jurisdiction, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
such judicial action. Upon notification from any source that a 
practitioner subject to the disciplinary jurisdiction of the Office has 
been subject to such judicial action, the OED Director shall obtain a 
certified copy of the order. If the OED Director finds that transfer to 
disability inactive status is appropriate, the OED Director shall file 
with the USPTO Director:
    (i) The order;
    (ii) A request that the practitioner be transferred to disability 
inactive status, including the specific grounds therefor; and
    (iii) A request that the USPTO Director issue a notice and order as 
set forth in paragraph (b) of this section.
    (b) Notice served on practitioner. Upon receipt of a certified copy 
of an order or declaration issued by another jurisdiction demonstrating 
that a practitioner subject to the disciplinary jurisdiction of the 
Office has been transferred to disability inactive status, judicially 
declared incompetent, judicially ordered to be involuntarily committed 
after a judicial hearing on the grounds of incompetency or disability, 
or placed by court order under guardianship or conservatorship, 
together with the OED Director's request, the USPTO Director shall 
issue a notice, comporting with Sec.  11.35, directed to the 
practitioner containing:
    (1) A copy of the order or declaration from the other jurisdiction;
    (2) A copy of the OED Director's request; and
    (3) An order directing the practitioner to file a response with the 
USPTO Director and the OED Director, within 40 days from the date of 
the notice, establishing by clear and convincing evidence a genuine 
issue of material fact supported by an affidavit and predicated upon 
the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of 
this section that a transfer to disability inactive status would be 
unwarranted and the reasons therefor.
* * * * *
    (d) Transfer to disability inactive status. (1) The request for 
transfer to disability inactive status shall be heard by the USPTO 
Director on the documentary record unless the USPTO Director determines 
that there is a genuine issue of material fact, in which case the USPTO 
Director may deny the request. The USPTO Director may order the OED 
Director or the practitioner to supplement the record with further 
information or argument. After expiration of the period specified in 
paragraph (b)(3) of this section, and after completion of any 
supplemental hearings, the USPTO Director shall consider any timely 
filed response and impose the identical transfer to disability inactive 
status based on the practitioner's transfer to disability status in 
another jurisdiction or shall transfer the practitioner to disability 
inactive status based on judicially declared incompetence, judicially 
ordered involuntary commitment on the grounds of incompetency or 
disability, or court-ordered placement under guardianship or 
conservatorship, unless the practitioner demonstrates by clear and 
convincing evidence, and the USPTO Director finds there is a genuine 
issue of material fact that:
    (i) The procedure was so lacking in notice or opportunity to be 
heard as to constitute a deprivation of due process;
    (ii) There was such infirmity of proof establishing the transfer to 
disability status, judicial declaration of incompetence, judicial order 
for involuntary commitment on the grounds of incompetency or 
disability, or placement by court order under guardianship or 
conservatorship that the USPTO Director could not, consistent with 
Office's duty, accept as final the conclusion on that subject;

[[Page 45827]]

    (iii) The imposition of the same disability status or transfer to 
disability status by the USPTO Director would result in grave 
injustice; or
    (iv) The practitioner is not the individual transferred to 
disability status, judicially declared incompetent, judicially ordered 
for involuntary commitment on the grounds of incompetency or 
disability, or placed by court order under guardianship or 
conservatorship.
    (2) If the USPTO Director determines that there is no genuine issue 
of material fact with regard to any of the elements of paragraphs 
(d)(1)(i) through (d)(1)(iv) of this section, the USPTO Director shall 
enter an appropriate final order. If the USPTO Director is unable to 
make that determination because there is a genuine issue of material 
fact, the USPTO Director shall enter an appropriate order dismissing 
the OED Director's request for such reason.
* * * * *
    (g) Order imposing reciprocal transfer to disability inactive 
status or order imposing initial transfer to disability inactive 
status. An order by the USPTO Director imposing reciprocal transfer to 
disability inactive status or transferring a practitioner to disability 
inactive status shall be effective immediately and shall be for an 
indefinite period until further order of the USPTO Director. A copy of 
the order transferring a practitioner to disability inactive status 
shall be served upon the practitioner, the practitioner's guardian, 
and/or the director of the institution to which the practitioner has 
been committed in the manner the USPTO Director may direct. A 
practitioner reciprocally transferred or transferred to disability 
inactive status shall comply with the provisions of this section and 
Sec.  11.58 and shall not engage in practice before the Office in 
patent, trademark, and other non-patent law unless and until reinstated 
to active status.
* * * * *
    (i) Employment of practitioners on disability inactive status. A 
practitioner in disability inactive status must obtain permission from 
the OED Director to engage in paralegal activity permitted under Sec.  
11.58(h). Permission will be granted only if the practitioner has 
complied with all the conditions of Sec.  11.58 applicable to 
disability inactive status. In the event that permission is granted, 
the practitioner shall fully comply with the provisions of Sec.  
11.58(h).
* * * * *
0
23. Amend Sec.  11.34 by revising paragraph (c) to read as follows:


Sec.  11.34  Complaint.

* * * * *
    (c) The complaint shall be filed in the manner prescribed by the 
USPTO Director. The term ``filed'' means the delivery, mailing, or 
electronic transmission of a document to a hearing officer or designee 
in connection with a disciplinary complaint or related matter.
* * * * *
0
24. Revise Sec.  11.35 to read as follows:


Sec.  11.35  Service of complaint.

    (a) A complaint may be served on a respondent by any of the 
following methods:
    (1) By delivering a copy of the complaint personally to the 
respondent, in which case the individual who delivers the complaint to 
the respondent shall file an affidavit with the OED Director indicating 
the time and place the complaint was delivered to the respondent.
    (2) By mailing a copy of the complaint by Priority Mail 
Express[supreg], first-class mail, or any delivery service that 
provides confirmation of delivery or attempted delivery to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec.  11.11, or
    (ii) A respondent who is not registered at the last address for the 
respondent known to the OED Director.
    (3) By any method mutually agreeable to the OED Director and the 
respondent.
    (4) In the case of a respondent who resides outside the United 
States, by sending a copy of the complaint by any delivery service that 
provides the ability to confirm delivery or attempted delivery, to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec.  11.11; or
    (ii) A respondent who is not registered at the last address for the 
respondent known to the OED Director.
    (b) If a copy of the complaint cannot be delivered to the 
respondent through any one of the procedures in paragraph (a) of this 
section, the OED Director shall serve the respondent by causing an 
appropriate notice to be published in the Official Gazette for two 
consecutive weeks, in which case the time for filing an answer shall be 
30 days from the second publication of the notice. Failure to timely 
file an answer will constitute an admission of the allegations in the 
complaint in accordance with Sec.  11.36(d), and the hearing officer 
may enter an initial decision on default.
    (c) If the respondent is known to the OED Director to be 
represented by an attorney under Sec.  11.40(a), a copy of the 
complaint may be served on the attorney in lieu of service on the 
respondent in the manner provided for in paragraph (a) or (b) of this 
section.
0
25. Amend Sec.  11.39 by revising the section heading and paragraphs 
(a), (b), and (f) to read as follows:


Sec.  11.39  Hearing officer; responsibilities; review of interlocutory 
orders; stays.

    (a) Designation. A hearing officer designated by the USPTO Director 
shall conduct disciplinary proceedings as provided by this part.
    (b) Independence of the hearing officer. (1) A hearing officer 
designated in accordance with paragraph (a) of this section shall not 
be subject to first-level or second-level supervision by either the 
USPTO Director or OED Director or his or her designee.
    (2) A hearing officer designated in accordance with paragraph (a) 
of this section shall not be subject to supervision of the person(s) 
investigating or prosecuting the case.
    (3) A hearing officer designated in accordance with paragraph (a) 
of this section shall be impartial, shall not be an individual who has 
participated in any manner in the decision to initiate the proceedings, 
and shall not have been employed under the immediate supervision of the 
practitioner.
    (4) A hearing officer designated in accordance with paragraph (a) 
of this section shall be either an administrative law judge appointed 
under 5 U.S.C. 3105 or an attorney designated under 35 U.S.C. 32. The 
hearing officer shall possess suitable experience and training in 
conducting hearings, reaching a determination, and rendering an initial 
decision in an equitable manner.
* * * * *
    (f) Stays pending review of interlocutory order. If the OED 
Director or a respondent seeks review of an interlocutory order of a 
hearing officer under paragraph (e)(2) of this section, any time period 
set by the hearing officer for taking action shall not be stayed unless 
ordered by the USPTO Director or the hearing officer.
* * * * *
0
26. Amend Sec.  11.40 by revising paragraph (b) and by adding paragraph 
(c) to read as follows:


Sec.  11.40   Representative for OED Director or respondent.

* * * * *
    (b) The Deputy General Counsel for Intellectual Property and 
Solicitor and attorneys in the Office of the Solicitor shall represent 
the OED Director. The attorneys representing the OED Director in 
disciplinary proceedings shall not consult with the USPTO Director, the 
General Counsel, the Deputy General Counsel for General Law, or an

[[Page 45828]]

individual designated by the USPTO Director to decide disciplinary 
matters regarding the proceeding.
    (c) The General Counsel and the Deputy General Counsel for General 
Law shall remain screened from the investigation and prosecution of all 
disciplinary proceedings in order that they shall be available as 
counsel to the USPTO Director in deciding disciplinary proceedings 
unless access is appropriate to perform their duties. After a final 
decision is entered in a disciplinary proceeding, the OED Director and 
attorneys representing the OED Director shall be available to counsel 
the USPTO Director, the General Counsel, and the Deputy General Counsel 
for General Law in any further proceedings.
0
27. Amend Sec.  11.41 by revising paragraph (a) to read as follows:


Sec.  11.41   Filing of papers.

    (a) The provisions of Sec. Sec.  1.8 and 2.197 of this chapter do 
not apply to disciplinary proceedings. All papers filed after the 
complaint and prior to entry of an initial decision by the hearing 
officer shall be filed with the hearing officer at an address or place 
designated by the hearing officer. The term ``filed'' means the 
delivery, mailing, or electronic transmission of a document to a 
hearing officer or designee in connection with a disciplinary complaint 
or related matter.
* * * * *
0
28. Revise Sec.  11.43 to read as follows:


Sec.  11.43   Motions before a hearing officer.

    Motions, including all prehearing motions commonly filed under the 
Federal Rules of Civil Procedure, shall be served on the opposing party 
and filed with the hearing officer. Each motion shall be accompanied by 
a written memorandum setting forth a concise statement of the facts and 
supporting reasons, along with a citation of the authorities upon which 
the movant relies. Unless extended by the tribunal for good cause, an 
opposing party shall serve and file a memorandum in response to the 
motion within 21 days of the date of service of the motion, and the 
moving party may file a reply memorandum within 14 days after service 
of the opposing party's responsive memorandum. All memoranda shall be 
double-spaced and written in 12-point font unless otherwise ordered by 
the hearing officer. Every motion must include a statement that the 
moving party or attorney for the moving party has conferred with the 
opposing party or attorney for the opposing party in a good-faith 
effort to resolve the issues raised by the motion and whether the 
motion is opposed. If, prior to a decision on the motion, the parties 
resolve issues raised by a motion presented to the hearing officer, the 
parties shall promptly notify the hearing officer.
0
29. Amend Sec.  11.44 by revising paragraphs (a) and (b) to read as 
follows:


Sec.  11.44   Hearings.

    (a) The hearing officer shall preside over hearings in disciplinary 
proceedings. After the time for filing an answer has elapsed, the 
hearing officer shall set the time and place for the hearing. In cases 
involving an incarcerated respondent, any necessary oral hearing may be 
held at the location of incarceration. Oral hearings will be 
stenographically recorded and transcribed, and the testimony of 
witnesses will be received under oath or affirmation. The hearing 
officer shall conduct the hearing as if the proceeding were subject to 
5 U.S.C. 556. A copy of the transcript of the hearing shall become part 
of the record. A copy of the transcript shall be provided to the OED 
Director and the respondent at the expense of the Office.
    (b) If the respondent to a disciplinary proceeding fails to appear 
at the hearing after a notice of hearing has been issued by the hearing 
officer, the hearing officer may deem the respondent to have waived the 
opportunity for a hearing and may proceed with the hearing in the 
absence of the respondent. Where the respondent does not appear, the 
hearing officer may strike the answer or any other pleading, deem the 
respondent to have admitted the facts as alleged in the complaint, 
receive evidence in aggravation or mitigation, enter a default 
judgment, and/or enter an initial decision imposing discipline on the 
respondent.
* * * * *
0
30. Amend Sec.  11.50 by revising paragraph (a) to read as follows:


Sec.  11.50   Evidence.

    (a) Rules of evidence. The rules of evidence prevailing in courts 
of law and equity are not controlling in hearings in disciplinary 
proceedings. However, the hearing officer shall exclude evidence that 
is irrelevant, immaterial, speculative, or unduly repetitious.
* * * * *
0
31. Revise Sec.  11.51 to read as follows:


Sec.  11.51   Depositions.

    (a) Depositions for use at the hearing in lieu of the personal 
appearance of a witness before the hearing officer may be taken by the 
respondent or the OED Director (i) by agreement or (ii) upon a showing 
of good cause and with the approval of, and under such conditions as 
may be deemed appropriate by, the hearing officer. If a motion to take 
a deposition is granted, the hearing officer shall authorize a subpoena 
to be issued pursuant to 35 U.S.C. 24. If the deponent is a USPTO 
employee, the respondent shall comply with the requirements of part 104 
of this chapter.
    (b) A party seeking a deposition shall give reasonable notice of 
not less than 14 days unless a shorter period is agreed upon by the 
parties or authorized by the hearing officer. The notice shall state 
the date, time, and place of the deposition.
    (c) Depositions may be taken upon oral or written questions before 
any officer authorized to administer an oath or affirmation in the 
place where the deposition is to be taken. Deposition expenses shall be 
borne by the party at whose instance the deposition is taken.
    (d) When a deposition is taken upon written questions, copies of 
the written questions will be served upon the other party with the 
notice, and copies of any written cross-questions will be served by 
hand or Priority Mail Express[supreg] not less than five days before 
the date of the taking of the deposition unless the parties mutually 
agree otherwise.
    (e) Testimony by deposition may be recorded by audiovisual means 
provided that:
    (1) the notice of deposition states that the method of recording is 
audiovisual, and
    (2) a written transcript of the deposition is prepared by a court 
reporter who was present at the deposition and recorded the testimony.
    (f) A party on whose behalf a deposition is taken shall file with 
the hearing officer a copy of a transcript of the deposition signed by 
a court reporter and a copy of any audiovisual recording and shall 
serve one copy of the transcript and any audiovisual recording upon the 
opposing party.
    (g) Depositions may not be taken to obtain discovery, except as 
provided for in paragraph (h) of this section.
    (h) When the OED Director and the respondent agree in writing, a 
discovery deposition of any witness who will appear voluntarily may be 
taken under such terms and conditions as may be mutually agreeable to 
the OED Director and the respondent. The deposition shall not be filed 
with the hearing officer and may not be admitted into evidence before 
the hearing officer unless he or she orders the deposition admitted 
into evidence. The admissibility of the deposition shall lie within the 
discretion of the hearing officer, who may reject the deposition on any 
reasonable basis, including the

[[Page 45829]]

fact that demeanor is involved and that the witness should have been 
called to appear personally before the hearing officer.
0
32. Revise Sec.  11.52 to read as follows:


Sec.  11.52   Written discovery.

    (a) After an answer is filed under Sec.  11.36, a party may seek 
written discovery of only relevant evidence. The party seeking written 
discovery shall file a motion under Sec.  11.43 explaining in detail, 
for each request made, how the discovery sought is reasonable and 
relevant to an issue actually raised in the complaint or the answer. 
The motion shall include a copy of the proposed written discovery 
requests. Any response shall include specific objections to each 
request, if any. Any objection not raised in the response will be 
deemed to have been waived.
    (b) If the hearing officer concludes that the proposed written 
discovery is reasonable and relevant, the hearing officer, under such 
conditions as he or she deems appropriate, may order an opposing party, 
within 30 days, or longer if so ordered by the hearing officer, to:
    (1) Answer a reasonable number of requests for admission, including 
requests for admission as to the genuineness of documents;
    (2) Answer a reasonable number of interrogatories;
    (3) Produce for inspection and copying a reasonable number of 
documents; and
    (4) Produce for inspection a reasonable number of things other than 
documents.
    (c) Discovery shall not be authorized under paragraph (a) of this 
section of any matter that:
    (1) Will be used by another party solely for impeachment;
    (2) Is not available to the party under 35 U.S.C. 122;
    (3) Relates to any other disciplinary proceeding before the Office;
    (4) Relates to experts;
    (5) Is privileged; or
    (6) Relates to mental impressions, conclusions, opinions, or legal 
theories of any attorney or other representative of a party.
    (d) The hearing officer may deny discovery requested under 
paragraph (a) of this section if the discovery sought:
    (1) Will unduly delay the disciplinary proceeding;
    (2) Will place an undue burden on the party required to produce the 
discovery sought; or
    (3) Consists of information that is available:
    (i) Generally to the public,
    (ii) Equally to the parties, or
    (iii) To the party seeking the discovery through another source.
    (e) A request for admission will be deemed admitted if the party to 
whom the request is directed fails to respond or object to the request 
within the time allowed.
    (f) The hearing officer may require parties to file and serve, 
prior to any hearing, a pre-hearing statement that contains:
    (1) A list (together with a copy) of all proposed exhibits to be 
used in connection with a party's case-in-chief;
    (2) A list of proposed witnesses;
    (3) As to each proposed expert witness:
    (i) An identification of the field in which the individual will be 
qualified as an expert,
    (ii) A statement as to the subject matter on which the expert is 
expected to testify,
    (iii) A complete statement of all opinions to which the expert is 
expected to testify and the basis and reasons for them, and
    (iv) A description of all facts or data considered by the expert in 
forming the opinions; and
    (4) Copies of memoranda reflecting the respondent's own statements 
to administrative representatives.
0
33. Revise Sec.  11.53 to read as follows:


Sec.  11.53   Proposed findings and conclusions; post-hearing 
memorandum.

    (a) Except in cases in which the respondent has failed to answer 
the complaint or the amended complaint, or appear at a hearing, the 
hearing officer, prior to making an initial decision, shall afford the 
parties a reasonable opportunity to submit proposed findings and 
conclusions and a post-hearing memorandum in support of the proposed 
findings and conclusions.
    (b) The OED Director shall serve and file a post-hearing memorandum 
within 30 days after the hearing transcript has been filed with the 
hearing officer. The respondent shall have 30 days after service of the 
OED Director's post-hearing memorandum to file a responsive post-
hearing memorandum. The OED Director may file a reply memorandum within 
21 days after service of any responsive post-hearing memorandum.
    (c) The respondent shall serve and file a post-hearing memorandum 
with respect to any asserted affirmative defenses, or other matters for 
which the respondent bears the burden of proof, within 30 days after 
the hearing transcript has been filed with the hearing officer. The OED 
Director shall have 30 days after service of the respondent's post-
hearing memorandum to file a responsive post-hearing memorandum. The 
respondent may file a reply memorandum within 21 days after service of 
any responsive post-hearing memorandum.
    (d) The OED Director's and the respondent's responsive post-hearing 
memoranda shall be limited to 50 pages, 12-point font, double-spacing, 
and one-inch margins, and the reply memoranda shall be limited to 25 
pages, 12-point font, double-spacing, and one-inch margins, unless 
otherwise ordered by the hearing officer.
    (e) The hearing officer may extend the time for filing a post-
hearing memorandum and may also increase the page limits, for good 
cause shown.
0
34. Revise Sec.  11.54 to read as follows:


Sec.  11.54   Initial decision of hearing officer.

    (a) The hearing officer shall make an initial decision in the case. 
The decision will include:
    (1) A statement of findings of fact and conclusions of law, as well 
as the reasons or bases for those findings and conclusions with 
specific references to the record, upon all the material issues of 
fact, law, or discretion presented on the record; and
    (2) An order of default judgment, of suspension or exclusion from 
practice, of reprimand, of probation, or an order dismissing the 
complaint. The order also may impose any conditions deemed appropriate 
under the circumstances.
    (b) The initial decision of the hearing officer shall explain the 
reason for any default judgment, reprimand, suspension, exclusion, or 
probation and shall explain any conditions imposed with discipline. In 
determining any sanction, the following four factors shall be 
considered if they are applicable:
    (1) Whether the practitioner has violated a duty owed to a client, 
the public, the legal system, or the profession;
    (2) Whether the practitioner acted intentionally, knowingly, or 
negligently;
    (3) The amount of the actual or potential injury caused by the 
practitioner's misconduct; and
    (4) The existence of any aggravating or mitigating factors.
    (c) The hearing officer shall transmit a copy of the initial 
decision to the OED Director and to the respondent and shall transmit 
the record of the proceeding to the OED Director within 14 days, or as 
soon as practicable if thereafter, of the date of the initial decision.
    (d) In the absence of an appeal to the USPTO Director, the decision 
of the hearing officer will, without further proceedings, become the 
final decision of the USPTO Director 30 days from the date of the 
decision of the hearing officer.

[[Page 45830]]

0
35. Revise Sec.  11.55 to read as follows:


Sec.  11.55   Appeal to the USPTO Director.

    (a) Within 14 days after the date of the initial decision of the 
hearing officer under Sec. Sec.  11.25 or 11.54, either party may 
appeal to the USPTO Director by filing a notice of appeal. The notice 
shall be filed with the General Counsel for the USPTO Director at the 
address set forth in Sec.  1.1(a)(3)(iv) of this chapter and served on 
the opposing party. If both parties file notices of appeal, the first 
to file is deemed the appellant for purposes of this rule. If both file 
on the same day, the respondent is deemed the appellant.
    (b) Any notice of cross-appeal shall be filed within 14 days after 
the date of service of the notice of appeal.
    (c) After a notice of appeal is filed, the OED Director shall 
transmit the entire record to the USPTO Director and provide a copy to 
the respondent.
    (d) The appellant's brief shall be filed within 30 days after the 
date of service of the record.
    (e) Any appellee's brief shall be filed within 30 days after the 
date of service of the appellant's brief.
    (f) The appellant's and appellee's briefs shall comply with the 
Federal Rules of Appellate Procedure 28(a)(2), (3), (5), (10), and 
32(a)(4)-(7) unless otherwise ordered by the USPTO Director.
    (g) Any reply brief shall be filed within 14 days after the date of 
service of the appellee's brief and, unless otherwise ordered by the 
USPTO Director, shall comply with Rules 28(c) and 32(a)(4)-(7) of the 
Federal Rules of Appellate Procedure.
    (h) If a cross-appeal has been filed, the parties shall comply with 
Rules 28.1(c), (e), and (f) of the Federal Rules of Appellate Procedure 
unless otherwise ordered by the USPTO Director.
    (i) References to the record in the briefs must be to the pages of 
the certified record.
    (j) An appeal or cross-appeal must include exceptions to the 
decisions of the hearing officer and supporting reasons for those 
exceptions. Any exception not raised will be deemed to have been waived 
and will be disregarded by the USPTO Director in reviewing the initial 
decision.
    (k) The USPTO Director may refuse entry of a nonconforming brief.
    (l) The USPTO Director will decide the appeal on the record made 
before the hearing officer.
    (m) Unless the USPTO Director permits, no further briefs or motions 
shall be filed. The USPTO Director may extend the time for filing a 
brief upon the granting of a motion accompanied by a supporting 
affidavit setting forth good cause warranting the extension.
    (n) The USPTO Director may order reopening of a disciplinary 
proceeding in accordance with the principles that govern the granting 
of new trials. Any request to reopen a disciplinary proceeding on the 
basis of newly discovered evidence must demonstrate that the newly 
discovered evidence could not have been discovered any earlier by due 
diligence.
    (o) Motions shall be served on the opposing party and filed with 
the USPTO Director. Each motion shall be accompanied by a written 
memorandum setting forth a concise statement of the facts and 
supporting reasons, along with a citation of the authorities upon which 
the movant relies. Unless extended by the USPTO Director for good 
cause, within 21 days of the date of service of the motion, an opposing 
party shall serve and file a response to the motion, and the moving 
party may file a reply within 14 days after service of the opposing 
party's responsive memorandum. All memoranda shall comply with Rules 
32(a)(4)-(6) of the Federal Rules of Appellate Procedure unless 
otherwise ordered by the USPTO Director. Every motion must include a 
statement that the moving party or attorney for the moving party has 
conferred with the opposing party or attorney for the opposing party in 
a good faith effort to resolve the issues raised by the motion and 
whether the motion is opposed. If, prior to a decision on the motion, 
the parties resolve issues raised by a motion presented to the USPTO 
Director, the parties shall promptly notify the USPTO Director.
0
36. Amend Sec.  11.56 by revising paragraph (c) to read as follows:


Sec.  11.56   Decision of the USPTO Director.

* * * * *
    (c) The respondent or the OED Director may make a single request 
for reconsideration or modification of the decision by the USPTO 
Director if filed within 20 days from the date of entry of the 
decision. The other party may file a response to the request for 
reconsideration within 14 days of the filing of the request. No request 
for reconsideration or modification shall be granted unless the request 
is based on newly discovered evidence or clear error of law or fact, 
and the requestor must demonstrate that any newly discovered evidence 
could not have been discovered any earlier by due diligence. Such a 
request shall have the effect of staying the effective date of the 
order of discipline in the final decision. The decision by the USPTO 
Director is effective on its date of entry.
0
37. Revise Sec.  11.57 to read as follows:


Sec.  11.57  Review of final decision of the USPTO Director.

    (a) Review of the final decision by the USPTO Director in a 
disciplinary case may be had by a petition filed in accordance with 35 
U.S.C. 32. Any such petition shall be filed within 30 days after the 
date of the final decision.
    (b) The respondent must serve the USPTO Director with the petition. 
The respondent must serve the petition in accordance with Rule 4 of the 
Federal Rules of Civil Procedure and Sec.  104.2 of this chapter.
    (c) Except as provided for in Sec.  11.56(c), an order for 
discipline in a final decision will not be stayed except on proof of 
exceptional circumstances.
0
38. Revise Sec.  11.58 to read as follows:


Sec.  11.58   Duties of disciplined practitioner or practitioner in 
disability inactive status.

    (a) Compliance requirements. An excluded or suspended practitioner 
will not be automatically reinstated at the end of his or her period of 
exclusion or suspension. Unless otherwise ordered by the USPTO 
Director, an excluded or suspended practitioner must comply with the 
provisions of this section and Sec.  11.60 to be reinstated. A 
practitioner transferred to disability inactive status must comply with 
the provisions of this section and Sec.  11.29 to be reinstated unless 
otherwise ordered by the USPTO Director. Failure to comply with the 
provisions of this section may constitute grounds for denying 
reinstatement and cause for further action.
    (b) Practice prohibitions. Any excluded or suspended practitioner, 
or practitioner transferred to disability inactive status, shall:
    (1) Not engage in practice before the Office in patent, trademark, 
or other non-patent matters;
    (2) Not advertise or otherwise hold himself or herself out as 
authorized or able to practice before the Office; and
    (3) Take all necessary steps to remove any advertisements or other 
representations that would reasonably suggest that the practitioner is 
authorized or able to practice before the Office.
    (c) Thirty-day requirements. Within 30 days after the date of the 
order of exclusion, suspension, or transfer to disability inactive 
status, an excluded or suspended practitioner, or practitioner 
transferred to disability inactive status, shall:
    (1) Withdraw from representation in all matters pending before the 
Office;
    (2) Provide written notice of the order of exclusion, suspension, 
or transfer to disability inactive status to all State and

[[Page 45831]]

Federal jurisdictions and administrative agencies to which the 
practitioner is admitted to practice;
    (3) Provide to all clients having immediate or prospective business 
before the Office in patent, trademark, or other non-patent matters:
    (i) Written notice of the order of exclusion, suspension, or 
transfer to disability inactive status, that calls attention to the 
practitioner's lack of authority to act as a practitioner after the 
effective date of the order; specifies any urgent dates for the 
client's matters; and advises the client to act promptly to seek legal 
advice elsewhere if the client is not already represented by another 
practitioner;
    (ii) Any papers or other property to which the clients are 
entitled, or schedule a suitable time and place where the papers and 
other property may be obtained, and call attention to any urgency for 
obtaining the papers or other property; and
    (iii) Any unearned fees for practice before the Office and any 
advanced costs not expended;
    (4) Provide written notice of the order of exclusion, suspension, 
or transfer to disability inactive status to all opposing parties in 
matters pending before the Office and provide in the notice a mailing 
address for each client of the practitioner who is a party in the 
pending matter; and
    (5) Serve all notices required by paragraphs (c)(2), (c)(3), and 
(c)(4) of this section by certified mail, return receipt requested, 
unless the intended recipient is located outside the United States. 
Where the intended recipient is located outside the United States, all 
notices shall be sent by a delivery service that provides the ability 
to confirm delivery or attempted delivery.
    (d) Forty-five-day requirements. Within 45 days after the date of 
the order of exclusion, suspension, or transfer to disability inactive 
status, an excluded or suspended practitioner, or practitioner 
transferred to disability inactive status, shall file with the OED 
Director an affidavit of compliance certifying that the practitioner 
has fully complied with the provisions of the order, this section, and 
with Sec.  11.116 for withdrawal from representation. Appended to the 
affidavit of compliance shall be:
    (1) A copy of each form of notice; the names and addresses of the 
clients, practitioners, courts, and agencies to which notices were 
sent; and all return receipts or returned mail received up to the date 
of the affidavit. Supplemental affidavits shall be filed covering 
subsequent return receipts and returned mail. Such names and addresses 
of clients shall remain confidential unless otherwise ordered by the 
USPTO Director;
    (2) A schedule showing the location, title, and account number of 
every account in which the practitioner holds, or held as of the entry 
date of the order, any client, trust, or fiduciary funds for practice 
before the Office;
    (3) A schedule describing, and evidence showing, the practitioner's 
disposition of all client and fiduciary funds for practice before the 
Office in the practitioner's possession, custody, or control as of the 
date of the order or thereafter;
    (4) A list of all State, Federal, and administrative jurisdictions 
to which the practitioner is admitted to practice; and
    (5) A description of the steps taken to remove any advertisements 
or other representations that would reasonably suggest that the 
practitioner is authorized to practice patent, trademark, or other non-
patent law before the Office.
    (e) Requirement to update correspondence address. An excluded or 
suspended practitioner, or a practitioner transferred to disability 
inactive status, shall continue to file a statement in accordance with 
Sec.  11.11 regarding any change of residence or other address to which 
communications may thereafter be directed.
    (f) Limited recognition for winding up practice. Unless otherwise 
provided by an order of the USPTO Director, an excluded or suspended 
practitioner, or practitioner transferred to disability inactive 
status, shall not engage in any practice before the Office. The USPTO 
Director may grant such a practitioner limited recognition for a period 
of no more than 30 days to conclude work on behalf of a client on any 
matters pending before the Office. If such work cannot be concluded, 
the practitioner shall so advise the client so that the client may make 
other arrangements.
    (g) Required records. An excluded or suspended practitioner, or 
practitioner transferred to disability inactive status, shall retain 
copies of all notices sent and maintain records of the various steps 
taken under this section. The practitioner shall provide proof of 
compliance as a condition precedent to the granting of any petition for 
reinstatement.
    (h) Aiding another practitioner while suspended or excluded; acting 
as a paralegal. An excluded or suspended practitioner, or practitioner 
in disability inactive status, may act as a paralegal for a supervising 
practitioner or perform other services for the supervising practitioner 
that are normally performed by laypersons, provided:
    (1) The practitioner is under the direct supervision of the 
supervising practitioner;
    (2) The practitioner is a salaried employee of:
    (i) The supervising practitioner,
    (ii) The supervising practitioner's law firm, or
    (iii) A client-employer who employs the supervising practitioner as 
a salaried employee;
    (3) The supervising practitioner assumes full professional 
responsibility to any client and the Office for any work performed by 
the practitioner for the supervising practitioner; and
    (4) The practitioner does not:
    (i) Communicate directly in writing, orally, or otherwise with a 
client, or prospective client, of the supervising practitioner in 
regard to any immediate or prospective business before the Office;
    (ii) Render any legal advice or any legal services in regard to any 
immediate or prospective business before the Office; or
    (iii) Meet in person with, regardless of the presence of the 
supervising practitioner:
    (A) Any Office employee in connection with the prosecution of any 
patent, trademark, or other matter before the Office;
    (B) Any client, or prospective client, of the supervising 
practitioner, the supervising practitioner's law firm, or the client-
employer of the supervising practitioner regarding immediate or 
prospective business before the Office; or
    (C) Any witness or potential witness whom the supervising 
practitioner, the supervising practitioner's law firm, or the 
supervising practitioner's client-employer may, or intends to, call as 
a witness in any proceeding before the Office. The term ``witness'' 
includes individuals who will testify orally in a proceeding before, or 
sign an affidavit or any other document to be filed in, the Office.
    (i) Reinstatement after aiding another practitioner while suspended 
or excluded. When an excluded or suspended practitioner, or 
practitioner transferred to disability inactive status, acts as a 
paralegal or performs services under paragraph (h) of this section, the 
practitioner shall not thereafter be reinstated to practice before the 
Office unless:
    (1) The practitioner has filed with the OED Director an affidavit 
that:
    (i) Explains in detail the precise nature of all paralegal or other 
services performed by the practitioner, and

[[Page 45832]]

    (ii) Shows by clear and convincing evidence that the practitioner 
has complied with the provisions of this section and all USPTO Rules of 
Professional Conduct; and
    (2) The supervising practitioner has filed with the OED Director a 
written statement that:
    (i) States that the supervising practitioner has read the affidavit 
required by paragraph (i)(1) of this section and that the supervising 
practitioner believes every statement in the affidavit to be true, and
    (ii) States that the supervising practitioner believes that the 
excluded or suspended practitioner, or practitioner transferred to 
disability inactive status, has complied with paragraph (h) of this 
section.
0
39. Revise Sec.  11.60 to read as follows:


Sec.  11.60   Petition for reinstatement of disciplined practitioner.

    (a) Restrictions on practice. An excluded or suspended practitioner 
shall not resume the practice of patent, trademark, or other non-patent 
matters before the Office until reinstated.
    (b) Petition for reinstatement for excluded or suspended 
practitioners. An excluded or suspended practitioner shall be eligible 
to petition for reinstatement only upon expiration of the period of 
suspension or exclusion and the practitioner's full compliance with 
Sec.  11.58. An excluded practitioner shall be eligible to petition for 
reinstatement no earlier than five years from the effective date of the 
exclusion.
    (c) Review of reinstatement petition. An excluded or suspended 
practitioner shall file a petition for reinstatement accompanied by the 
fee required by Sec.  1.21(a)(10) of this chapter. The petition for 
reinstatement shall be filed with the OED Director. A practitioner who 
has violated any provision of Sec.  11.58 shall not be eligible for 
reinstatement until a continuous period of the time in compliance with 
Sec.  11.58 that is equal to the period of suspension or exclusion has 
elapsed. If the excluded or suspended practitioner is not eligible for 
reinstatement, or if the OED Director determines that the petition is 
insufficient or defective on its face, the OED Director may dismiss the 
petition. Otherwise, the OED Director shall consider the petition for 
reinstatement. The excluded or suspended practitioner seeking 
reinstatement shall have the burden of proving, by clear and convincing 
evidence, that:
    (1) The excluded or suspended practitioner has the good moral 
character and reputation, competency, and learning in law required 
under Sec.  11.7 for admission;
    (2) The resumption of practice before the Office will not be 
detrimental to the administration of justice or subversive to the 
public interest; and
    (3) The practitioner, if suspended, has complied with the 
provisions of Sec.  11.58 for the full period of suspension or, if 
excluded, has complied with the provisions of Sec.  11.58 for at least 
five continuous years.
    (d) Petitions for reinstatement--Action by the OED Director 
granting reinstatement. (1) If the excluded or suspended practitioner 
is found to have complied with paragraphs (c)(1) through (c)(3) of this 
section, the OED Director shall enter an order of reinstatement that 
shall be conditioned on payment of the costs of the disciplinary 
proceeding to the extent set forth in paragraphs (d)(2) and (d)(3) of 
this section.
    (2) Payment of costs of disciplinary proceedings. Prior to 
reinstatement to practice under this section, the excluded or suspended 
practitioner shall pay the costs of the disciplinary proceeding. The 
costs imposed pursuant to this section include all of the following:
    (i) The actual expense incurred by the OED Director or the Office 
for the original and copies of any reporter's transcripts of the 
disciplinary proceeding and any fee paid for the services of the 
reporter;
    (ii) All expenses paid by the OED Director or the Office that would 
qualify as taxable costs recoverable in civil proceedings; and
    (iii) The charges determined by the OED Director to be ``reasonable 
costs'' of investigation, hearing, and review. These amounts shall 
serve to defray the costs, other than fees for services of attorneys 
and experts, of the Office of Enrollment and Discipline in the 
preparation or hearing of the disciplinary proceeding and costs 
incurred in the administrative processing of the disciplinary 
proceeding.
    (3) A practitioner may only be granted relief from an order 
assessing costs under this section, whether in whole or in part or by 
grant of an extension of time to pay these costs, upon grounds of 
hardship, special circumstances, or other good cause at the discretion 
of the OED Director.
    (e) Petitions for reinstatement--Action by the OED Director denying 
reinstatement. If the excluded or suspended practitioner is found unfit 
to resume practice before the Office, the OED Director shall first 
provide the excluded or suspended practitioner with an opportunity to 
show cause in writing why the petition should not be denied. If 
unpersuaded by the showing, the OED Director shall deny the petition. 
In addition to the reinstatement provisions set forth in this section, 
the OED Director may require the excluded or suspended practitioner, in 
meeting the requirements of paragraph (c)(1) of this section, to take 
and pass the registration examination; attend ethics, substance abuse, 
or law practice management courses; and/or take and pass the Multistate 
Professional Responsibility Examination.
    (f) Right to review. An excluded or suspended practitioner 
dissatisfied with a final decision of the OED Director regarding his or 
her reinstatement may seek review by the USPTO Director pursuant to 
Sec.  11.2(d).
    (g) Resubmission of petitions for reinstatement. If a petition for 
reinstatement is denied, no further petition for reinstatement may be 
filed until the expiration of at least one year following the denial 
unless the order of denial provides otherwise.
    (h) Reinstatement proceedings open to public. (1) Proceedings on 
any petition for reinstatement shall be open to the public. Before 
reinstating any excluded or suspended practitioner, the OED Director 
shall publish a notice that such practitioner seeks reinstatement and 
shall permit the public a reasonable opportunity to comment or submit 
evidence regarding such matter.
    (2) Up to 90 days prior to the expiration of the period of 
suspension or exclusion, a practitioner may file a written notice of 
his or her intent to seek reinstatement with the OED Director and may 
request that such notice be published. In the absence of such a 
request, notice of a petition for reinstatement will be published upon 
receipt of such petition.
0
40. Revise Sec.  11.106 to read as follows:


Sec.  11.106   Confidentiality of information.

    (a) A practitioner shall not reveal information relating to the 
representation of a client unless the client gives informed consent, 
the disclosure is impliedly authorized in order to carry out the 
representation, the disclosure is permitted by paragraph (b) of this 
section, or the disclosure is required by paragraph (c) of this 
section.
    (b) A practitioner may reveal information relating to the 
representation of a client to the extent the practitioner reasonably 
believes necessary:
    (1) To prevent reasonably certain death or substantial bodily harm;
    (2) To prevent the client from engaging in inequitable conduct 
before

[[Page 45833]]

the Office or from committing a crime or fraud that is reasonably 
certain to result in substantial injury to the financial interests or 
property of another and in furtherance of which the client has used or 
is using the practitioner's services;
    (3) To prevent, mitigate, or rectify substantial injury to the 
financial interests or property of another that is reasonably certain 
to result or has resulted from the client's commission of a crime, 
fraud, or inequitable conduct before the Office in furtherance of which 
the client has used the practitioner's services;
    (4) To secure legal advice about the practitioner's compliance with 
the USPTO Rules of Professional Conduct;
    (5) To establish a claim or defense on behalf of the practitioner 
in a controversy between the practitioner and the client, to establish 
a defense to a criminal charge or civil claim against the practitioner 
based upon conduct in which the client was involved, or to respond to 
allegations in any proceeding concerning the practitioner's 
representation of the client;
    (6) To comply with other law or a court order; or
    (7) To detect and resolve conflicts of interest arising from the 
practitioner's change of employment or from changes in the composition 
or ownership of a firm, but only if the revealed information would not 
compromise the practitioner-client privilege or otherwise prejudice the 
client.
    (c) A practitioner shall disclose to the Office information 
necessary to comply with applicable duty of disclosure provisions.
    (d) A practitioner shall make reasonable efforts to prevent the 
inadvertent or unauthorized disclosure of, or unauthorized access to, 
information relating to the representation of a client.
0
41. Amend Sec.  11.118 by revising paragraphs (a) and (b) to read as 
follows:


Sec.  11.118   Duties to prospective client.

    (a) A person who consults with a practitioner about the possibility 
of forming a client-practitioner relationship with respect to a matter 
is a prospective client.
    (b) Even when no client-practitioner relationship ensues, a 
practitioner who has learned information from a prospective client 
shall not use or reveal that information, except as Sec.  11.109 would 
permit with respect to information of a former client.
* * * * *
0
42. Revise Sec.  11.702 to read as follows:


Sec.  11.702   Communications concerning a practitioner's services: 
specific rules.

    (a) A practitioner may communicate information regarding the 
practitioner's services through any medium.
    (b) A practitioner shall not compensate, give, or promise anything 
of value to a person for recommending the practitioner's services, 
except that a practitioner may:
    (1) Pay the reasonable costs of advertisements or communications 
permitted by this section;
    (2) Pay the usual charges of a legal service plan or a not-for-
profit or qualified practitioner referral service;
    (3) Pay for a law practice in accordance with Sec.  11.117;
    (4) Refer clients to another practitioner or a non-practitioner 
professional pursuant to an agreement not otherwise prohibited under 
the USPTO Rules of Professional Conduct that provides for the other 
person to refer clients or customers to the practitioner, if:
    (i) The reciprocal referral agreement is not exclusive, and
    (ii) The client is informed of the existence and nature of the 
agreement; and
    (5) Give nominal gifts as an expression of appreciation that are 
neither intended nor reasonably expected to be a form of compensation 
for recommending a practitioner's services.
    (c) A practitioner shall not state or imply that he or she is 
certified as a specialist in a particular field of law, unless:
    (1) The practitioner has been certified as a specialist by an 
organization that has been approved by an appropriate authority of a 
State or that has been accredited by the American Bar Association, and
    (2) The name of the certifying organization is clearly identified 
in the communication.
    (d) Any communication made under this section must include the name 
and contact information of at least one practitioner or law firm 
responsible for its content.
0
43. Revise Sec.  11.703 to read as follows:


Sec.  11.703   Solicitation of clients.

    (a) ``Solicitation'' or ``solicit'' denotes a communication 
initiated by or on behalf of a practitioner or law firm that is 
directed to a specific person the practitioner knows or reasonably 
should know needs legal services in a particular matter and that offers 
to provide, or reasonably can be understood as offering to provide, 
legal services for that matter.
    (b) A practitioner shall not solicit professional employment by 
live person-to-person contact when a significant motive for the 
practitioner's doing so is the practitioner's or law firm's pecuniary 
gain, unless the contact is with a:
    (1) Practitioner;
    (2) Person who has a family, close personal, or prior business or 
professional relationship with the practitioner or law firm; or
    (3) Person who routinely uses for business purposes the type of 
legal services offered by the practitioner.
    (c) A practitioner shall not solicit professional employment even 
when not otherwise prohibited by paragraph (b) of this section, if:
    (1) The target of solicitation has made known to the practitioner a 
desire not to be solicited by the practitioner, or
    (2) The solicitation involves coercion, duress, or harassment.
    (d) This section does not prohibit communications authorized by law 
or ordered by a court or other tribunal.
    (e) Notwithstanding the prohibitions in this section, a 
practitioner may participate with a prepaid or group legal service plan 
operated by an organization not owned or directed by the practitioner 
that uses live person-to-person contact to enroll members or sell 
subscriptions for the plan from persons who are not known to need legal 
services in a particular matter covered by the plan.
0
44. Amend Sec.  11.704 by revising paragraph (e) to read as follows:


Sec.  11.704   Communication of fields of practice and specialization.

* * * * *
    (e) Individuals granted limited recognition may use the designation 
``Limited Recognition'' but may not hold themselves out as being 
registered.
0
45. Amend Sec.  11.804 by revising paragraphs (b) and (h) to read as 
follows:


Sec.  11.804   Misconduct.

* * * * *
    (b) Commit a criminal act that reflects adversely on the 
practitioner's honesty, trustworthiness, or fitness as a practitioner 
in other respects, or be convicted of a crime that reflects adversely 
on the practitioner's honesty, trustworthiness, or fitness as a 
practitioner in other respects;
* * * * *
    (h) Be publicly disciplined on ethical or professional misconduct 
grounds by any duly constituted authority of:
    (1) A State,
    (2) The United States, or
    (3) A country having disciplinary jurisdiction over the 
practitioner; or
* * * * *


[[Page 45834]]


    Dated: May 29, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2020-12210 Filed 7-29-20; 8:45 am]
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