Changes to the Representation of Others Before the United States Patent and Trademark Office, 54930-54937 [2022-18215]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 87, Number 173 (Thursday, September 8, 2022)]
[Proposed Rules]
[Pages 54930-54937]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-18215]



[[Page 54930]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 11

[Docket No. PTO-C-2021-0045]
RIN 0651-AD58


Changes to the 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 U.S. Patent and Trademark Office (USPTO or Office) 
proposes to amend the rules of practice in patent cases and the rules 
regarding the representation of others before the USPTO to better 
protect the public and improve compliance with USPTO requirements. In 
particular, this rulemaking proposes to formalize the USPTO's Diversion 
Pilot Program for patent and trademark practitioners whose physical or 
mental health issues or law practice management issues resulted in 
minor misconduct. Formalizing the Pilot would align USPTO disciplinary 
practice with a majority of states and provide practitioners an 
opportunity to address the root causes of such misconduct. In addition, 
the USPTO proposes to require foreign attorneys or agents granted 
reciprocal recognition in trademark matters to provide and update their 
contact and status information or have their recognition withdrawn so 
the public will have access to up-to-date information. Also, the USPTO 
proposes to defer to state bars regarding fee sharing between 
practitioners and non-practitioners to reduce the potential for 
conflicts between USPTO and state bar rules. Further, the USPTO 
proposes to remove a fee required when changing one's status from a 
patent agent to a patent attorney and to make minor adjustments to 
other rules related to the representation of others before the USPTO.

DATES: Written comments on the proposed rule and draft diversion 
guidance document must be received on or before November 7, 2022.

ADDRESSES: For reasons of Government efficiency, comments on the 
proposed rule and draft diversion guidance document must be submitted 
through the Federal eRulemaking Portal at www.regulations.gov. To 
submit comments via the portal, one should enter docket number PTO-C-
2021-0045 on the homepage and click ``search.'' The site will provide 
search results listing all documents associated with this docket. 
Commenters can find a reference to this rulemaking and click on the 
``Comment Now!'' icon, complete the required fields, and enter or 
attach their comments. Comments on the proposed rule and draft 
diversion guidance document should be addressed to Will Covey, Deputy 
General Counsel for Enrollment and Discipline and Director for the 
Office of Enrollment and Discipline (OED Director). Attachments to 
electronic comments will be accepted in Adobe[supreg] portable document 
format (pdf) or Microsoft Word[supreg] format. 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 in the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of or 
access to comments is not feasible due to a lack of access to a 
computer and/or the internet, please contact the USPTO using the 
contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Will Covey, Deputy General Counsel for 
Enrollment and Discipline and OED Director, at 571-272-4097.

SUPPLEMENTARY INFORMATION:

Purpose

    The USPTO proposes to amend 37 CFR parts 1 and 11 to better protect 
the public and improve compliance with the requirements of part 11. 35 
U.S.C. 2(b)(2)(A) and 2(b)(2)(D) provide the USPTO with the authority 
to establish regulations to govern ``the conduct of proceedings in the 
Office'' and ``the recognition and conduct of agents, attorneys, or 
other persons representing applicants or other parties before the 
Office,'' respectively. Title 37 CFR part 11 contains those regulations 
that govern the representation of others before the USPTO, including 
regulations related to the recognition to practice before the USPTO, 
investigations, and disciplinary proceedings, and the USPTO Rules of 
Professional Conduct.
    The USPTO seeks to formalize its Diversion Pilot Program initiated 
in September 2017 for patent and trademark practitioners whose physical 
or mental health issues or law practice management issues resulted in 
minor misconduct. The public has been supportive of the Pilot. Making 
the Pilot permanent will provide practitioners an opportunity to 
address the root causes of such misconduct to adhere to high standards 
of ethics and professionalism in order to provide valuable service to 
the public. Also, it will align USPTO disciplinary practice with a 
majority of state attorney disciplinary systems.
    The USPTO also seeks to require foreign attorneys or agents granted 
reciprocal recognition in trademark matters to provide and update their 
contact and status information or have their recognition withdrawn in 
order to provide the public with current information.
    Further, certain state bars have begun permitting the sharing of 
legal fees between a practitioner and a non-practitioner. However, such 
arrangements are currently prohibited by the USPTO Rules of 
Professional Conduct, creating potential conflicts for patent and 
trademark practitioners who are licensed to practice law in those 
states. Accordingly, the USPTO proposes to defer to state bars 
regarding certain aspects pertaining to the sharing of legal fees 
between a practitioner and a non-practitioner in order to reduce the 
potential for such conflicts.
    Lastly, the USPTO proposes to make revisions to promote efficiency 
and clarity in its regulations, such as to remove a fee required when 
changing one's status from a patent agent to a patent attorney in order 
to encourage more practitioners to update their status; align the rule 
governing the limited recognition of persons ineligible to become 
registered to practice before the Office in patent matters because of 
their immigration status with existing practice; clarify procedures and 
improve efficiencies regarding disciplinary proceedings and appeals; 
and remove a reference to ``emeritus status.''

Formalizing a Diversion Program for Practitioners

    The USPTO seeks to formalize its OED Diversion Pilot Program for 
patent and trademark practitioners whose physical or mental health 
issues or law practice management issues resulted in minor misconduct. 
For example, a practitioner who lacked diligence in a matter due to a 
law practice management issue that resulted in minimal impact on their 
clients and/or the public may wish to consider diversion. Accordingly, 
the program allows those practitioners to avoid formal discipline by 
entering into, and successfully completing, diversion agreements with 
the OED Director. The goal of the program is to help practitioners 
address the root causes of such misconduct and adhere to high standards 
of ethics and professionalism

[[Page 54931]]

in order to provide valuable service to the public.
    Diversion is intended to be an action that the OED Director may 
take to dispose of a disciplinary investigation. The program is not 
typically available to a practitioner after the filing of a 
disciplinary complaint. However, in extraordinary circumstances, the 
OED Director may enter into a diversion agreement with an eligible 
practitioner after a complaint under 37 CFR 11.34 has been filed. If 
diversion is requested after a complaint has been filed, the matter 
will be referred to the OED Director for consideration. The terms of 
any diversion agreement will be determined by the OED Director and the 
practitioner.
    In 2017, the USPTO initiated the OED Diversion Pilot Program for 
patent and trademark practitioners. The Pilot Program has enabled 
practitioners to successfully implement specific remedial measures and 
improve their practice, and the USPTO has received public comment 
urging that the Pilot Program be incorporated into part 11. See Changes 
to Representation of Others Before the United States Patent and 
Trademark Office, 86 FR 28442, 28446 (May 26, 2021). Accordingly, the 
USPTO proposes changes to part 11 to formalize the Pilot Program. As 
the Pilot Program is set to expire in November 2022, formalizing the 
Pilot Program will emphasize the USPTO's commitment to wellness within 
the legal profession and align the USPTO with the practices of more 
than 30 attorney disciplinary systems in the United States.
    The criteria for participation are set forth in proposed rule 37 
CFR 11.30. The criteria address eligibility, completion of the program, 
and material breaches of the program. Based on the American Bar 
Association Model Rules for Lawyer Disciplinary Enforcement, the 
criteria also draw from experience gained during the administration of 
the Pilot Program. Specifically, the criteria now allow practitioners 
who have been disciplined by another jurisdiction within the past three 
years to participate if the discipline was based on the conduct that 
forms the basis for the OED Director's investigation. For example, 
participation in the USPTO's diversion program may be appropriate in 
cases in which the practitioner was recently publicly disciplined by a 
jurisdiction that does not have a diversion program. See Changes to 
Representation of Others Before the United States Patent and Trademark 
Office, 86 FR 28442, 28443 (May 26, 2021). Additional experience gained 
from the Pilot Program also indicates that eligibility could be 
extended to practitioners evidencing a pattern of similar misconduct if 
the misconduct at issue is minor and related to a chronic physical or 
mental health condition or disease. Under the Pilot Program criteria, 
practitioners recently disciplined by another jurisdiction and 
practitioners evidencing a pattern of similar misconduct were not 
eligible to participate.
    The OED Director may consider all relevant factors when determining 
whether a practitioner meets the criteria. See generally, Model Rules 
of Lawyer Disciplinary Enforcement Rule 11 cmt. (American Bar 
Association, 2002) (``Both mitigating and aggravating factors should 
also be considered. The presence of one or more mitigating factors may 
qualify an otherwise ineligible respondent for the program.''). Any 
aspects of diversion not fully addressed in Sec.  11.30, such as 
specific details regarding the material breach of an agreement, will be 
addressed in individualized diversion agreements.
    The USPTO believes that the diversion program is a valuable tool 
that will benefit the public by fostering the skills and abilities of 
those individuals who represent others before the USPTO. Additional 
information may be found in a draft diversion guidance document, 
available at https://www.uspto.gov/sites/default/files/documents/OED-Diversion-Guidance-Document.pdf. Comments regarding the draft diversion 
guidance document must be provided as discussed in the DATES and 
ADDRESSES sections above.

Changes to the Regulation of Foreign Attorneys or Agents Granted 
Reciprocal Recognition in Trademark Matters

    The USPTO proposes to amend Sec.  11.14 to ascertain the status and 
contact information of foreign attorneys or agents who are granted 
reciprocal recognition in trademark matters under Sec.  11.14(c)(1). 
The proposed amendments will provide potential clients with more 
certainty regarding the good standing of a foreign attorney or agent.
    Accordingly, the USPTO proposes that any foreign attorney or agent 
granted reciprocal recognition in trademark matters under Sec.  
11.14(c)(1) must provide the OED Director their postal address, at 
least one and up to three email addresses where they receive email, and 
a business telephone number, as well as any change to these addresses 
and telephone number, within 30 days of the date of any change. A 
foreign attorney or agent granted reciprocal recognition under Sec.  
11.14(c)(1) must also notify the OED Director of any lapse in their 
authorization to represent clients before the trademark office in the 
country in which they are registered and reside.
    The USPTO also proposes that the OED Director may address a letter 
to any foreign attorney or agent granted reciprocal recognition under 
Sec.  11.14(c)(1) for the purposes of ascertaining the validity of the 
foreign attorney or agent's contact information and good standing with 
the trademark office or other duly constituted authority in the country 
in which they are registered and reside (for Canadian trademark agents, 
the term ``trademark office'' shall mean the College of Patent Agents 
and Trademark Agents with respect to matters of practice eligibility in 
Canada). Any such foreign attorney or agent failing to reply and 
provide any information requested by the OED Director within a time 
limit specified would be subject to having their reciprocal recognition 
withdrawn by the OED Director. Withdrawal of recognition by the OED 
Director does not obviate the foreign attorney's or agent's duty to 
comply with any other relevant USPTO rules, such as the requirement to 
withdraw from pending trademark matters.
    Unless good cause is shown, the OED Director shall promptly 
withdraw the reciprocal recognition of foreign attorneys or agents who: 
(1) are no longer eligible to represent others before the trademark 
office of the country upon which reciprocal recognition is based, (2) 
no longer reside in such country, (3) have not provided current contact 
information, or (4) failed to reply to the letter from the OED Director 
within the time limit specified and/or provide any of the information 
requested by the OED Director in that letter. The proposed rule shall 
require the OED Director to publish a notice of any withdrawal of 
recognition.
    Lastly, the USPTO proposes that any foreign attorney or agent whose 
recognition has been withdrawn may reapply for recognition upon 
submission of a request to the OED Director and payment of the 
application fee in Sec.  1.21(a)(1)(i), as provided under amended Sec.  
11.14(f).

Removal of the Term ``Nonimmigrant Alien'' From Sec.  11.9(b)

    The USPTO proposes to revise 37 CFR 11.9(b) in regard to limited 
recognition for individuals who are neither U.S. citizens nor lawful 
permanent residents, but who nevertheless have been granted status and 
the authority to work in the United States by the U.S. Government in 
order to practice before the USPTO in patent matters. Specifically, the 
USPTO proposes to remove the term ``nonimmigrant alien'' from Sec.  
11.9(b)

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because the term does not include all individuals eligible for limited 
recognition under this provision. For example, the term ``nonimmigrant 
alien'' does not include all individuals who are neither U.S. citizens 
nor lawful permanent residents, but who nevertheless have been granted 
status and the authority to work in the United States by the U.S. 
Government. Rather, the appropriate description for those who may 
qualify for limited recognition includes individuals who: (1) are 
ineligible to become registered under Sec.  11.6 because of their 
immigration status, (2) are authorized by the U.S. Government to be 
employed or trained in the United States to represent a patent 
applicant by preparing or prosecuting a patent application, and (3) 
meet the requirements of paragraphs (d) and (e) of Sec.  11.9. This 
revision would result in no change in practice.

Clarification That Limited Recognition Shall Not Be Granted or Extended 
to a Non-U.S. Citizen Residing Outside the United States

    The USPTO proposes to amend Sec.  11.9(b) to clarify that limited 
recognition to practice before the USPTO in patent matters for 
individuals who are neither U.S. citizens nor lawful permanent 
residents, but who nevertheless have been granted status and the 
authority to work in the United States by the U.S. Government, shall 
not be granted or extended to non-U.S. citizens residing outside the 
United States. This is consistent with current practice in which an 
individual's limited recognition will not terminate if the individual 
has been approved by the U.S. Government to temporarily depart from the 
United States, but will terminate when the individual ceases to reside 
in the United States.

Removal of Fee Required When Changing Status From Patent Agent to 
Patent Attorney

    The USPTO proposes to eliminate the $110.00 fee in Sec.  
1.21(a)(2)(iii) that is charged when a registered patent agent changes 
their registration from an agent to an attorney. It is expected that 
the removal of this fee will improve the accuracy of the register of 
patent attorneys and agents by incentivizing patent agents who become 
patent attorneys to promptly update their status in that register.

Arrangements Between Practitioners and Non-Practitioners

    The USPTO proposes to add Sec.  11.504(e) to allow a practitioner 
who is an attorney to share legal fees with a non-practitioner, to form 
a partnership with a non-practitioner, or to be part of a for-profit 
association or corporation owned by a non-practitioner, provided such 
arrangement fully complies with the laws, rules, and regulations of the 
attorney licensing authority of a State that regulates such arrangement 
and in which the practitioner is an active member in good standing. 
Accordingly, this addition provides the practitioner some flexibility 
when considering a business arrangement with a non-practitioner when 
such business arrangement might have previously conflicted with Sec.  
11.504(a), (b), and (d)(1) and (2) of the USPTO Rules of Professional 
Conduct. However, that flexibility does not obviate the practitioner's 
obligations under any other USPTO rules, including the USPTO Rules of 
Professional Conduct, that may be relevant to such an arrangement. 
Further, this addition does not permit a person who recommends, 
employs, or pays the practitioner to render legal services for another 
to direct or regulate the practitioner's professional judgment in 
rendering such legal services as described in Sec.  11.504(c), nor does 
this addition permit the practitioner to practice with or in the form 
of a professional corporation or association authorized to practice law 
for a profit, if a non-practitioner has the right to direct or control 
the professional judgment of the practitioner as described in Sec.  
11.504(d)(3).

Clarification of Written Memoranda Regarding Motions in Disciplinary 
Proceedings

    The USPTO proposes to amend Sec.  11.43 to clarify that: (1) only 
motions for summary judgment and motions to dismiss are required to be 
accompanied by a written memorandum, and (2) the prescribed time 
periods to file response and reply memoranda regarding such motions 
only apply to motions for summary judgment and motions to dismiss. 
While not intended to discourage parties from providing support for 
other types of motions, limiting memoranda and the specified briefing 
schedule to motions for summary judgment and motions to dismiss 
promotes the goal of continued efficient progress of disciplinary 
proceedings. Hearing officers retain the discretion to order memoranda 
and set time limits for other types of motions and papers.

Clarification That Disciplinary Hearings May Continue To Be Held by 
Videoconference

    The USPTO proposes to amend Sec.  11.44(a) to clarify that hearings 
may be held by videoconference. The amendment reflects the current 
practice of scheduling and conducting remote hearings. The amendment 
also clarifies that a stenographer need not be used to create a hearing 
transcript.

Five Days To Serve Discovery Requests After Authorization; 30 Days To 
Respond After Service

    The USPTO proposes to amend Sec.  11.52 to improve the procedures 
for written discovery in disciplinary proceedings and to order those 
procedures in a more chronological fashion. Accordingly, the contents 
of paragraphs (a) and (b) are proposed to be restructured into revised 
paragraphs (a), (b), and (c), and paragraphs (c) through (f) are 
redesignated as paragraphs (d) through (g).
    First, under paragraph (a), the amended rule sets forth the types 
of requests for which a party may seek authorization in a motion for 
written discovery. While the current rule sets forth the information in 
paragraph (b), the amended rule logically sets forth the information in 
paragraph (a) because paragraph (a) pertains to the content of the 
initial motion for written discovery.
    Second, under paragraph (b), the amendment requires a copy of the 
proposed written discovery requests and a detailed explanation, for 
each request made, of how the discovery sought is reasonable and 
relevant to an issue actually raised in the complaint or the answer. 
Any response to the motion shall include specific objections to each 
request, if any. Any objection not raised in the response will be 
deemed to have been waived.
    Third, under paragraph (c), the amendment requires the moving party 
to serve a copy of any authorized discovery requests following the 
issuance of an order authorizing discovery within a default deadline of 
five days following the order. This requirement ensures that the 
opposing party promptly receives a copy of the authorized requests to 
which the party must respond. Amended paragraph (c) also sets a default 
deadline of 30 days from the date of service of the authorized requests 
for the opposing party to serve responses. Setting the default period 
to begin on the date of service provides the opposing party a 
predictable and definitive time period for responding to authorized 
discovery requests in circumstances in which the hearing officer's 
order does not specify a different deadline.

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Changes to Procedures Regarding Appeals to the USPTO Director

    The USPTO proposes to amend Sec.  11.55(m) to remove the 
requirement to submit a supporting affidavit when moving for an 
extension of time to file a brief regarding an appeal of the initial 
decision of a hearing officer and to place the amended requirement to 
file a motion for an extension in a new paragraph (p) at the end of 
Sec.  11.55. Affidavits would be removed to eliminate an unnecessarily 
burdensome requirement in requesting the extension of time, while 
retaining the necessity to show good cause. The provision would be 
moved to the new paragraph (p) because it logically falls at the end of 
Sec.  11.55.

Removal of Emeritus Status

    The USPTO proposes to remove the reference to ``emeritus status'' 
in Sec.  11.19(a) because no such status was ever finalized and 
inadvertently remains from a previous rulemaking.

Discussion of Specific Rules

    The USPTO proposes to eliminate the fee in Sec.  1.21(a)(2)(iii) 
for changing one's status from a registered patent agent to a 
registered patent attorney.
    The USPTO proposes to amend Sec.  11.7(l) to reflect the 
elimination of the fee set forth in Sec.  1.21(a)(2)(iii).
    The USPTO proposes to amend Sec.  11.9(b) to remove the term 
``nonimmigrant alien'' and to clarify that limited recognition shall 
not be granted or extended to a non-U.S. citizen residing outside the 
United States.
    The USPTO proposes to amend Sec.  11.14(c)(1) to remove unnecessary 
references to paragraph (c).
    The USPTO proposes to amend Sec.  11.14(f) to add references to 
Sec.  11.14(c)(1) where Sec.  11.14(c) is presently referenced.
    The USPTO proposes to add Sec.  11.14(g) to create a requirement 
for a foreign attorney or agent granted reciprocal recognition under 
Sec.  11.14(c)(1) to notify the OED Director of updates to contact 
information within 30 days of the date of the change and to notify the 
OED Director of any lapse in their authorization to represent clients 
before the trademark office in the country in which they are registered 
and reside.
    The USPTO proposes to add Sec.  11.14(h) to ascertain the validity 
of a reciprocally recognized foreign attorney's or agent's contact 
information and good standing with the trademark office or other duly 
constituted authority in the country in which the agent is registered 
and resides. Any foreign attorney or agent failing to give any 
information requested by the OED Director within a time limit specified 
is subject to having their reciprocal recognition withdrawn.
    The USPTO proposes to add Sec.  11.14(i) to create a process to 
withdraw reciprocal recognition of a foreign attorney or agent 
registered under paragraph (c)(1) if they: (1) are no longer registered 
with, in good standing with, or otherwise eligible to practice before, 
the trademark office of the country upon which reciprocal recognition 
is based; (2) no longer reside in such country; or (3) have not 
provided current contact information or have failed to validate their 
good standing with the trademark office in the country in which they 
are registered and reside as required in proposed Sec.  11.14(g) and 
(h).
    The USPTO proposes to add Sec.  11.14(j) to specify that the 
process for a foreign attorney or agent whose recognition has been 
withdrawn and who desires to become reinstated is to reapply for 
recognition under Sec.  11.14(f).
    The USPTO proposes to amend Sec.  11.19(a) to remove the term 
``emeritus status.''
    The USPTO proposes to amend Sec.  11.22(h)(3) and (4) and add Sec.  
11.22(h)(5) to state that the OED Director may dispose of an 
investigation by entering into a diversion agreement with a 
practitioner.
    The USPTO proposes to add Sec.  11.30 to state the criteria by 
which the OED Director may enter into a diversion agreement with a 
practitioner.
    The USPTO proposes to amend Sec.  11.43 to clarify that prescribed 
time periods apply to only dispositive motions and that such motions 
shall be accompanied by a written memorandum.
    The USPTO proposes to amend Sec.  11.44(a) to allow hearings to be 
held by videoconference.
    The USPTO proposes to amend Sec.  11.52 to redesignate paragraphs 
(c) through (f) as paragraphs (d) through (g), and revise and 
restructure the contents of paragraphs (a) and (b) into revised 
paragraphs (a), (b), and (c) to provide clarity regarding certain 
discovery obligations on the part of the propounding and responding 
parties.
    The USPTO proposes to amend Sec.  11.55(m) to eliminate the 
requirement to submit an affidavit of support with a motion for an 
extension of time to file a brief regarding an appeal to the USPTO 
Director and to reorganize the section to move to new paragraph (p) the 
provision allowing the USPTO Director to extend, for good cause, the 
time for filing such a brief.
    The USPTO proposes to add Sec.  11.504(e) to allow a practitioner 
who is an attorney to share legal fees with a non-practitioner, to form 
a partnership with a non-practitioner, or to be part of a for-profit 
association or corporation owned by a non-practitioner, provided such 
arrangement fully complies with the laws, rules, and regulations of the 
attorney licensing authority of a State that regulates such arrangement 
and in which the practitioner is an active member in good standing.

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); 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 in this 
rulemaking, 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

[[Page 54934]]

have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    This proposed rule would eliminate the $110.00 fee that is charged 
when a registered patent agent changes their registration from an agent 
to an attorney to incentivize patent agents who become patent attorneys 
to promptly update their status in the register. This proposed change 
is expected to impact approximately 350 patent agents each year. Patent 
agents who become licensed attorneys are expected to request a change 
in status in order to accurately convey their status to the public. 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, 
assuming that all patent agents impacted by this rule are small 
entities, the elimination of the fee would not impact a substantial 
number of small entities because the approximately 350 patent agents do 
not constitute a significant percentage of the approximately 47,000 
patent practitioners registered to appear before the Office. In 
addition, the elimination of the $110.00 fee would result in a modest 
benefit to those patent agents, as they would no longer be required to 
pay the fee when changing their designation from patent agent to patent 
attorney.
    This proposed rule would also amend the rules regarding the 
representation of others before the USPTO by implementing new 
requirements and clarifying or improving existing regulations to better 
protect the public. This rule would make changes to the rules governing 
reciprocal recognition for the approximately 400 recognized foreign 
attorneys or agents who practice before the Office in trademark 
matters. These changes would require any reciprocally recognized 
foreign attorney or agent to keep contact information up to date, 
provide proof of good standing as a trademark practitioner before the 
trademark office of the country in which they reside, and notify the 
OED Director of any lapse in their authorization to represent clients 
before the trademark office in the country in which they are registered 
and reside. Absent a showing of cause, failure to comply shall result 
in the withdrawal of the reciprocal recognition, but an opportunity for 
reinstatement may be offered.
    The Office also proposes to make changes to its disciplinary 
procedures to formalize a diversion program for patent and trademark 
practitioners who struggle with physical or mental health issues or law 
practice management issues. The program assists those practitioners in 
addressing the root causes of those issues, in lieu of formal 
discipline.
    Finally, this rule would make other minor administrative changes to 
the regulations to simplify and otherwise improve consistency with 
existing requirements, thereby facilitating the public's compliance 
with existing regulations, including aligning with existing practice 
the rule governing practice before the Office by persons ineligible to 
become registered under Sec.  11.6 because of their immigration status; 
changing the rule governing the professional independence of a 
practitioner to allow a practitioner to share legal fees with a non-
practitioner, to form a partnership with a non-practitioner, or to be 
part of a for-profit association or corporation owned by a non-
practitioner, provided such arrangement fully complies with the laws, 
rules, and regulations of the attorney licensing authority of a State 
that regulates such arrangement and in which the practitioner is an 
active member in good standing; clarifying the procedures regarding 
disciplinary hearings and appeals of the same; and removing an 
inadvertent reference to ``emeritus status.''
    These proposed changes to the rules governing the recognition to 
practice before the Office would apply to the approximately 400 
reciprocally recognized trademark practitioners who currently appear 
before the Office and approximately 47,000 patent practitioners 
registered or granted limited recognition to appear 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 rule. However, a large number of the changes in this 
rule are not expected to have any impact on otherwise regulated 
entities because the changes to the regulations are procedural in 
nature. The one proposed change that may impose a new requirement is 
the provision for the approximately 400 reciprocally recognized foreign 
attorneys or agents to provide contact information and certificates of 
good standing as trademark practitioners before the trademark offices 
of the countries in which they reside. However, this provision is not 
expected to place a significant burden on those foreign attorneys or 
agents. Accordingly, the changes are expected to be of minimal or no 
additional burden to those practicing before the Office.
    For the reasons discussed above, 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 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 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).
    F. 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).
    G. 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).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets

[[Page 54935]]

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).
    I. 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).
    J. 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).
    K. 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 USPTO 
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 
U.S.-based enterprises to compete with foreign-based enterprises in 
domestic and export markets. Therefore, this rulemaking is not expected 
to result in a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The proposed 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.
    M. National Environmental Policy Act of 1969: 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.
    N. National Technology Transfer and Advancement Act of 1995: 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.
    O. Paperwork Reduction Act of 1995: 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).
    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.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

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 USPTO proposes to 
amend 37 CFR parts 1 and 11 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.


Sec.  1.21   [Amended]

0
2. Amend Sec.  1.21 by removing and reserving paragraph (a)(2)(iii).

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.  11.7 by revising paragraph (l) to read as follows:


Sec.  11.7   Requirements for registration.

* * * * *
    (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 their good standing as an 
attorney.
0
5. Amend Sec.  11.9 by revising paragraph (b) to read as follows:


Sec.  11.9   Limited recognition in patent matters.

* * * * *
    (b) Limited recognition for a period consistent with immigration 
status. An individual ineligible to become registered under Sec.  11.6 
because of their immigration status may be granted limited recognition 
to practice before the Office in patent matters, provided the U.S. 
Government authorizes employment or training in the United States for 
the individual to represent a patent applicant by preparing or 
prosecuting a patent application, and the individual fulfills the 
provisions of paragraphs (d) and (e) of this section. Limited 
recognition shall be granted only for a period consistent with the 
terms of the immigration status and employment or training authorized. 
Limited recognition is subject to United States immigration rules, 
statutes, laws, and regulations. If granted, limited recognition shall 
automatically terminate if the individual ceases to: lawfully reside in 
the United States, maintain authorized employment or training, or 
maintain their immigration status. Limited recognition shall not be 
granted or extended to a non-U.S. citizen residing outside the United 
States.
* * * * *
0
6. Amend Sec.  11.14 by revising paragraphs (c)(1) and (f) and adding 
paragraphs (g) through (j) to read as follows:

[[Page 54936]]

Sec.  11.14   Individuals who may practice before the Office in 
trademark and other non-patent matters.

* * * * *
    (c) * * *
    (1) Any foreign attorney or agent who is not a resident of the 
United States who shall file a written application for reciprocal 
recognition under paragraph (f) of this section and prove to the 
satisfaction of the OED Director that they are a registered and active 
member in good standing as a trademark practitioner before the 
trademark office of the country in which they reside and practice and 
possess good moral character and reputation, may be recognized for the 
limited purpose of representing parties located in such country before 
the Office in the presentation and prosecution of trademark matters, 
provided the trademark office of such country and the USPTO have 
reached an official understanding to allow substantially reciprocal 
privileges to those permitted to practice in trademark matters before 
the Office. Recognition under this paragraph (c)(1) shall continue only 
during the period in which the conditions specified in this paragraph 
(c)(1) are met.
* * * * *
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under paragraph (c)(1) of this section, in 
addition to providing evidence satisfying the provisions of paragraph 
(c)(1) of this section, shall apply in writing to the OED Director for 
reciprocal recognition, and shall pay the application fee required by 
Sec.  1.21(a)(1)(i) of this subchapter.
    (g) Obligation to provide updated contact information and licensure 
status. A practitioner granted reciprocal recognition under paragraph 
(c)(1) of this section must provide to the OED Director their postal 
address, at least one and up to three email addresses where they 
receive email, and a business telephone number, as well as any change 
to such addresses and telephone number within 30 days of the date of 
the change. Any reciprocally recognized practitioner failing to provide 
the information to the OED Director or update the information within 30 
days of the date of change is subject to having their reciprocal 
recognition withdrawn under paragraph (i) of this section. A 
practitioner granted reciprocal recognition under paragraph (c)(1) of 
this section must notify the OED Director of any lapse in their 
authorization to represent clients before the trademark office in the 
country in which they are registered and reside.
    (h) Communications with recognized trademark practitioners. The OED 
Director may address a letter to any practitioner granted reciprocal 
recognition under paragraph (c)(1) of this section, to the postal 
address last provided to the OED Director, for the purposes of 
ascertaining the practitioner's contact information and/or the 
practitioner's good standing with the trademark office in the country 
in which the practitioner is registered and resides. Any practitioner 
who receives such letter must provide their contact information, and, 
if requested, a certificate of good standing with the trademark office 
in the country in which the practitioner is registered and resides. Any 
practitioner failing to reply and give any information requested by the 
OED Director within a time limit specified will be subject to having 
their reciprocal recognition withdrawn under paragraph (i) of this 
section.
    (i) Withdrawal of reciprocal recognition. Upon notice that a 
trademark practitioner registered under paragraph (c)(1) of this 
section is no longer registered with, in good standing with, or 
otherwise eligible to practice before, the trademark office of the 
country upon which reciprocal recognition is based; that such 
practitioner no longer resides in such country; or that such 
practitioner has not provided information required in paragraphs (g) 
and/or (h) of this section, and absent a showing of cause why the 
practitioner's recognition should not be withdrawn, the OED Director 
shall promptly withdraw such recognition and publish a notice of such 
action.
    (j) Reinstatement of reciprocal recognition. Any practitioner whose 
recognition has been withdrawn pursuant to paragraph (i) of this 
section may reapply for recognition under paragraph (f) of this 
section.
0
7. Amend Sec.  11.19 by revising paragraph (a) 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 or inactivated under Sec.  11.11, all practitioners authorized 
under Sec.  41.5(a) or Sec.  42.10(c) of this chapter, 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 to being transferred to 
disability inactive 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.
* * * * *
0
8. Amend Sec.  11.22 by revising paragraphs (h)(3) and (4) and adding 
paragraph (h)(5) to read as follows:


Sec.  11.22   Disciplinary investigations.

* * * * *
    (h) * * *
    (3) Instituting formal charges upon the approval of the Committee 
on Discipline;
    (4) Entering into a settlement agreement with the practitioner and 
submitting the same for the approval of the USPTO Director; or
    (5) Entering into a diversion agreement with the practitioner.
* * * * *
0
9. Add Sec.  11.30 to read as follows:


Sec.  11.30   Participation in the USPTO Diversion Program.

    (a) Before or after a complaint under Sec.  11.34 is filed, the OED 
Director may dispose of a disciplinary matter by entering into a 
diversion agreement with a practitioner. Diversion agreements may 
provide for, but are not limited to, law office management assistance, 
counseling, participation in lawyer assistance programs, and attendance 
at continuing legal education programs. Neither the OED Director nor 
the practitioner is under any obligation to propose or enter into a 
diversion agreement. To be an eligible party to a diversion agreement, 
a practitioner cannot have been disciplined by the USPTO or another 
jurisdiction within the past three years, except that discipline by 
another jurisdiction is not disqualifying if that discipline in another 
jurisdiction was based on the conduct forming the basis for the current 
investigation.
    (b) For a practitioner to be eligible for diversion, the conduct at 
issue must not involve:
    (1) The misappropriation of funds or dishonesty, deceit, fraud, or 
misrepresentation;
    (2) Substantial prejudice to a client or other person as a result 
of the conduct;
    (3) A serious crime as defined in Sec.  11.1; or
    (4) A pattern of similar misconduct unless the misconduct at issue 
is minor and related to a chronic physical or mental health condition 
or disease.
    (c) The diversion agreement is automatically completed when the 
terms of the agreement have been fulfilled. A practitioner's successful

[[Page 54937]]

completion of the diversion agreement bars the OED Director from 
pursuing discipline based on the conduct set forth in the diversion 
agreement.
    (d) A material breach of the diversion agreement shall be cause for 
termination of the practitioner's participation in the diversion 
program. Upon a material breach of the diversion agreement, the OED 
Director may pursue discipline based on the conduct set forth in the 
diversion agreement.
0
10. 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 an opposing party 
and filed with 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. Any 
motion for summary judgment or motion to dismiss 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. All memoranda shall be double-spaced and 
written in 12-point font unless otherwise ordered by the hearing 
officer. Unless the hearing officer extends the time for good cause, 
the opposing party shall serve and file a memorandum in response to any 
motion for summary judgment or motion to dismiss 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.
0
11. Amend Sec.  11.44 by revising paragraph (a) 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. The hearing officer may order a 
hearing to be conducted by remote videoconference in whole or in part. 
Oral hearings will be 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 also be provided to the 
OED Director and the respondent at the expense of the Office.
* * * * *
0
12. Amend Sec.  11.52 by:
0
a. Revising paragraphs (a) and (b);
0
b. Redesignating paragraphs (c) through (f) as paragraphs (d) through 
(g); and
0
c. Adding a new paragraph (c).
    The revisions and addition read as follows:


Sec.  11.52   Written discovery.

    (a) After an answer is filed under Sec.  11.36, a party may file a 
motion under Sec.  11.43 seeking authorization to propound written 
discovery of relevant evidence, including:
    (1) A reasonable number of requests for admission, including 
requests for admission as to the genuineness of documents;
    (2) A reasonable number of interrogatories;
    (3) A reasonable number of documents to be produced for inspection 
and copying; and
    (4) A reasonable number of things other than documents to be 
produced for inspection.
    (b) The motion shall include a copy of the proposed written 
discovery requests and explain 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. 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.
    (c) The hearing officer may authorize any discovery requests the 
hearing officer deems to be reasonable and relevant. Unless the hearing 
officer orders otherwise, within 5 days of the hearing officer 
authorizing any discovery requests, the moving party shall serve a copy 
of the authorized discovery requests to the opposing party and, within 
30 days of such service, the opposing party shall serve responses to 
the authorized discovery requests.
* * * * *
0
13. Amend Sec.  11.55 by revising paragraph (m) and adding paragraph 
(p) to read as follows:


Sec.  11.55   Appeal to the USPTO Director.

* * * * *
    (m) Unless the USPTO Director permits, no further briefs or motions 
shall be filed.
* * * * *
    (p) The USPTO Director may extend the time for filing a brief upon 
the granting of a motion setting forth good cause warranting the 
extension.
0
14. Amend Sec.  11.504 by adding paragraph (e) to read as follows:


Sec.  11.504  Professional independence of a practitioner.

* * * * *
    (e) The prohibitions of paragraph (a), (b), or (d)(1) or (2) of 
this section shall not apply to an arrangement that fully complies with 
the laws, rules, and regulations of the attorney licensing authority of 
a State that regulates such arrangement and in which the practitioner 
is an active member in good standing.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2022-18215 Filed 9-7-22; 8:45 am]
BILLING CODE 3510-16-P