Changes to the Representation of Others in Design Patent Matters Before the United States Patent and Trademark Office, 31209-31214 [2023-10410]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 88, Number 94 (Tuesday, May 16, 2023)]
[Proposed Rules]
[Pages 31209-31214]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-10410]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 11, and 41

[Docket No. PTO-C-2023-0010]
RIN 0651-AD67


Changes to the Representation of Others in Design Patent Matters 
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 create a 
separate design patent practitioner bar whereby admitted design patent 
practitioners would practice in design patent proceedings only. 
Presently, there is only one patent bar that applies to those who 
practice in patent matters before the Office, including in utility, 
plant, and design patents. The potential creation of a design patent 
practitioner bar would not impact the ability of those already 
registered to practice in any patent matters, including design patent 
matters, before the USPTO to continue to practice in any patent matters 
before the Office. Furthermore, it would not impact the ability of 
applicants for registration who meet the current criteria, including 
qualifying for and passing the current registration exam, to practice 
in any patent matters before the Office, including design patent 
matters. Expanding the admission criteria of the patent bar would 
encourage broader participation and keep up with the ever-evolving 
technology and related teachings that qualify someone to practice 
before the USPTO.

DATES: Written comments must be received on or before August 14, 2023.

ADDRESSES: For reasons of government efficiency, comments 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-2023-0010 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 
proposed rule and click on the ``Comment'' icon, complete the required 
fields, and enter or attach their comments. 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 Director of the Office of Enrollment and 
Discipline (OED), at 571-272-4097; Erin Harriman, Senior Legal Advisor, 
Office of Patent Legal Administration, at 571-272-7701; and Scott C. 
Moore, Acting Vice Chief Administrative Patent Judge, Patent Trial and 
Appeal Board, at 571-272-9797.

SUPPLEMENTARY INFORMATION: The Director of the USPTO has statutory 
authority to require a showing by patent practitioners that they 
possess ``the necessary qualifications to render applicants or other 
persons valuable service, advice, and assistance in the presentation or 
prosecution of their applications or other business before the 
Office.'' 35 U.S.C. 2(b)(2)(D). Courts have determined that the USPTO 
Director bears the primary responsibility for protecting the public 
from unqualified practitioners. See Hsuan-Yeh Chang v. Kappos, 890 F. 
Supp. 2d 110, 116-17 (D.D.C. 2012) (``Title 35 vests the [Director of 
the USPTO], not the courts, with the responsibility to protect [US]PTO 
proceedings from unqualified practitioners.'') (quoting Premysler v. 
Lehman, 71 F.3d 387, 389 (Fed. Cir. 1995)), aff'd sub nom., Hsuan-Yeh 
Chang v. Rea, 530 F. App'x 958 (Fed. Cir. 2013).
    Pursuant to that authority and responsibility, the USPTO has 
promulgated regulations, administered by OED, that provide that 
registration to practice in patent matters before the

[[Page 31210]]

USPTO requires a practitioner to demonstrate possession of ``the legal, 
scientific, and technical qualifications necessary for him or her to 
render applicants valuable service.'' 37 CFR 11.7(a)(2)(ii). The Office 
determines whether an applicant possesses the legal qualification by 
administering a registration examination, which applicants for 
registration must pass before being admitted to practice. See 37 CFR 
11.7(b)(ii). To take the registration exam, applicants must first 
demonstrate they possess specific scientific and technical 
qualifications. The USPTO sets forth guidance for establishing 
possession of these scientific and technical qualifications in the 
General Requirements Bulletin for Admission to the Examination for 
Registration to Practice in Patent Cases Before the United States 
Patent and Trademark Office (GRB), available at www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. The GRB also contains the 
``Application for Registration to Practice before the United States 
Patent and Trademark Office.''
    The criteria for practicing before the Office are and continue to 
be based in part on a determination of the types of scientific and 
technical qualifications and legal knowledge that are essential for 
practitioners to possess. This helps ensure that only competent 
practitioners who understand the applicable rules and regulations and 
have the background necessary to describe inventions in a full and 
clear manner are permitted to practice.
    Currently, there is only one patent bar that applies to those who 
practice in patent matters before the Office, including in utility, 
plant, and design patents. The same scientific and technical 
requirements for admission to practice apply regardless of the type of 
patent application (that is, whether the application is a utility 
patent application, a plant patent application, or a design patent 
application). On October 18, 2022, the USPTO published a request for 
comments in which it requested comments on the potential creation of a 
design patent practitioner bar. See Expanding Admission Criteria for 
Registration To Practice in Patent Cases Before the United States 
Patent and Trademark Office (87 FR 63044). On January 19, 2023, the 
USPTO extended the response period. See Expanding Admission Criteria 
for Registration To Practice in Patent Cases Before the United States 
Patent and Trademark Office (88 FR 3394). On January 31, 2023, the 
comment period closed. The Office received a number of comments both in 
support of and opposed to the creation of a separate design patent 
practitioner bar.
    The request for comments asked: (1) whether a separate design 
patent practitioner bar should be created; and (2) if so, how 
applicants would be admitted to the bar, and what standards would apply 
to enable one to become a design patent practitioner. The Office 
received 21 comments in response to the request. Thirteen of those 
comments were in favor of creating a design patent practitioner bar, 
while eight of those comments were opposed. A number of comments in 
favor of the proposal noted that a design patent practitioner bar 
would: (1) align the criteria for design patent practitioners with 
those of design patent examiners at the USPTO; (2) improve design 
patent practitioner quality and representation; (3) allow more under-
represented groups to practice design patent law and aid more under-
represented inventors in acquiring patents; (4) enable individuals with 
valuable knowledge of design to aid design patent prosecution; (5) 
lower the costs of obtaining design patents by promoting competition 
among practitioners; (6) ensure consistent, high-quality patents via 
qualified practitioners; (7) enlarge the pool of available service 
providers, including those practitioners whose background may be more 
tailored to the needs of a patent applicant; and (8) increase economic 
opportunities for design practitioners by allowing them to access a new 
market for the provision of their professional services.
    The request posited three different options for implementing a 
design patent practitioner bar. These included requiring design patent 
practitioner bar applicants to: (1) take the current registration 
examination, but with modified scientific and technical requirements; 
(2) be a U.S. attorney (i.e., an active member in good standing of the 
bar of the highest court of any State); or (3) take a separate design 
bar examination instead of the current registration examination.
    The majority of those who were in favor of creating and 
implementing a design patent practitioner bar preferred the first 
option, namely, that design patent practitioner bar applicants would be 
required to take the current registration examination, but the 
scientific and technical requirements would be modified. Those who were 
in favor of this option noted that if the modified scientific and 
technical requirements included design degrees, the patent quality of 
design patents would increase because individuals with design degrees 
would be better able to prepare and prosecute design patent 
applications. Additionally, commenters noted that this option could 
increase the pool of potential applicants, which could lead to 
beneficial procompetitive effects. Lastly, this option would mirror the 
hiring practices of the USPTO for design patent examiners in that the 
same degrees would enable the practice of design patent examination in 
the Office and in prosecution before the Office.
    Therefore, based on the support of stakeholders and commenters, 
this proposed rulemaking would implement the first option. Under this 
option, the applicant should have a bachelor's, master's, or doctorate 
of philosophy degree in any of the following areas from an accredited 
college or university: industrial design, product design, architecture, 
applied arts, graphic design, fine/studio arts, or art teacher 
education, or a degree equivalent to one of the listed degrees. 
Accepting degrees equivalent to those design degrees listed above is in 
line with the current practice of accepting degrees that are equivalent 
to those listed in the GRB under Category A. These degrees are 
currently acceptable for those applying for design examiner positions 
with the Office. To ensure applicants to the design patent practitioner 
bar have the requisite knowledge of USPTO rules and regulations, the 
USPTO would also require them to take and pass the current registration 
examination. Applicants would also be required to undergo and pass a 
moral character evaluation. The evaluation would be the same evaluation 
that is currently conducted for patent bar applicants, and is described 
in the GRB.
    As mentioned above, admitted design patent practitioners may 
practice in design patent matters only. Patent practitioners admitted 
in the past, present, and future who have fulfilled the scientific and 
technical requirements as enumerated in the GRB in Categories A through 
C will be authorized to practice in all patent matters, including in 
utility, plant, and design patents.

Discussion of Proposed Rule Changes

    The USPTO proposes to amend Sec.  1.4(d)(1) to add the requirement 
that a design patent practitioner indicate their design patent 
practitioner status by placing the word ``design'' adjacent to their 
handwritten signature.
    The USPTO proposes to amend Sec.  1.4(d)(2)(ii) to add the 
requirement that a design patent practitioner indicate their design 
patent practitioner status by placing the word ``design'' adjacent to 
the last forward slash of their S-signature.

[[Page 31211]]

    The USPTO proposes to amend Sec.  1.32 to update the definition of 
``practitioner'' in light of the proposed amendments to Sec.  11.6(d).
    A power of attorney naming the practitioners associated with a 
customer number filed in an application may only include practitioners 
who are authorized to practice in that application. For example, a 
purported power of attorney naming a customer number listing a non-
inventor design patent practitioner may not be appropriately filed in a 
utility or plant patent application, as that design patent practitioner 
is not authorized to practice in that application.
    The USPTO proposes to amend Sec.  11.1 to add a definition for 
``design patent practitioner.''
    The USPTO proposes to amend Sec.  11.1 to amend paragraph (1) under 
the definition of ``practitioner'' to refer to Sec.  11.6.
    The USPTO proposes to amend Sec.  11.1 to amend the definition of 
``register or roster'' to include design patent practitioners.
    The USPTO proposes to amend Sec.  11.5 to amend paragraph (b)(1) to 
remove ``public use'' proceedings, which are no longer held, and insert 
``derivation'' proceedings; re-designate paragraph (b)(2) as paragraph 
(b)(3); and insert a new paragraph (b)(2), which would define practice 
before the Office in design patent matters.
    The USPTO proposes to amend Sec.  11.6 to re-designate paragraph 
(d) as paragraph (e), and insert a new paragraph (d) to clarify the 
parameters under which attorneys and agents may be registered as design 
patent practitioners.
    The USPTO proposes to amend Sec.  11.8(b) to require design patent 
practitioners to submit an oath or declaration under the same 
parameters as other registered practitioners.
    The USPTO proposes to amend Sec.  11.10(b) to restrict former 
employees of the USPTO from serving as design patent practitioners, 
commensurate with the restrictions placed on other registered 
practitioners.
    The USPTO proposes to amend Sec.  11.16(c) to clarify that only a 
practitioner registered under Sec.  11.6(a) or (b) may serve as a 
Patent Faculty Clinic Supervisor in the USPTO Law School Clinic 
Certification Program.
    The USPTO proposes to amend Sec.  11.704 to state that a registered 
practitioner under Sec.  11.6(a) who is an attorney may use the 
designation ``Patents,'' ``Patent Attorney,'' ``Patent Lawyer,'' 
``Registered Patent Attorney,'' or a substantially similar designation; 
a registered practitioner under Sec.  11.6(b) who is not an attorney 
may use the designation ``Patents,'' ``Patent Agent,'' ``Registered 
Patent Agent,'' or a substantially similar designation; a registered 
practitioner under Sec.  11.6(d) who is an attorney may use the 
designation ``Design Patent Attorney''; and a registered practitioner 
under Sec.  11.6(d) who is not an attorney (i.e., who is an agent) may 
use the designation ``Design Patent Agent.''
    The USPTO proposes to amend Sec.  41.106 by replacing the term 
``registered patent practitioner'' with ``registered practitioner.'' 
This amendment is intended solely to conform the terminology of this 
section to that used elsewhere in part 41, and is not intended to alter 
the substantive scope of Sec.  41.106. For avoidance of doubt, the 
USPTO clarifies that if the amendments specified in this proposed rule 
are adopted, the term ``registered practitioner,'' as used in parts 41 
and 42, and the term ``USPTO patent practitioner,'' as used in Sec.  
42.57, would encompass ``design patent practitioners,'' as defined in 
the proposed amendments to Sec.  11.1.

Rulemaking Requirements

    A. 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 have a significant economic impact on a 
substantial number of small entities. See 5 U.S.C. 605(b).
    This proposed rule would amend the rules regarding the 
representation of others before the USPTO to create a separate design 
patent practitioner bar in which admitted design patent practitioners 
would practice in design patent proceedings only. Presently, there is 
only one patent bar that applies to those who practice in patent 
matters before the Office, including in the utility, plant, and design 
patent areas. The potential creation of a design patent practitioner 
bar would not impact the ability of those already registered to 
practice in any patent matters, including design patent matters, before 
the USPTO. Furthermore, it would not impact the ability of applicants 
who meet the current criteria, including qualifying for and passing the 
current registration exam, to practice in any patent matters before the 
Office.
    The Regulatory Flexibility Act of 1980 (RFA) requires Federal 
agencies to consider the potential impact of regulations on small 
entities during the development of their rules. See 5 U.S.C. 601-612, 
as amended by the Small Business Regulatory Enforcement Fairness Act of 
1996, Public Law 104-121 (March 29, 1996). The term ``small entities'' 
is comprised of small businesses, not-for-profit organizations that are 
not dominant in their fields, and governmental jurisdictions with 
populations of less than 50,000. An ``individual'' is not defined by 
the RFA as a small entity and costs to an individual from a rule are 
not considered for RFA purposes. In addition, the courts have held that 
the RFA requires an agency to perform a regulatory flexibility analysis 
of small entity impacts only when a rule directly regulates small 
entities. Consequently, any indirect impacts from a rule to a small 
entity are not considered as costs for RFA purposes.
    This rulemaking would create a separate design patent practitioner 
bar that would only impact individuals who apply for recognition to 
practice before the USPTO in design patent proceedings, and would not 
directly impact any small businesses. Additionally, the proposed 
changes do not add requirements or costs beyond those that currently 
exist for applicants or members to the USPTO practitioner bar. The 
proposed changes only expand the applicants that can represent certain 
matters before the USPTO. Applicants to the design patent practitioner 
bar would be expected to pay the same application and examination fee 
as applicants who want to practice in all patent matters, and be 
subject to existing requirements and procedures during the application 
process (for example, the same application and supporting documentation 
would be required of all applicants). Accordingly, the changes are 
expected to be of minimal or no additional burden to those practicing 
before the Office.
    The Office acknowledges that the creation of a design patent 
practitioner bar would allow more practitioners to be recognized to 
practice before the USPTO, although they would be limited to design 
patent proceedings only. The Office considers these to be indirect 
impacts that are not considered to be costs for RFA purposes, but the 
Office welcomes any comments or data that may further inform the impact 
of this proposed rule.
    For the reasons discussed above, this rulemaking will not have a 
significant economic impact on a substantial number of small entities.
    B. 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).

[[Page 31212]]

    C. 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.
    D. 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).
    E. 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).
    F. 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).
    G. 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).
    H. 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).
    I. 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).
    J. 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).
    K. 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.
    L. 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.
    M. 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.
    N. 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). These information collections 
will be updated, alongside any final rulemaking, to reflect any updated 
forms included within these information collections. Any increased 
respondent and burden numbers associated with the introduction of the 
design patent bar options will be included in that update.
    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.
    O. 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.

37 CFR Part 41

    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, 11, and 41 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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


[[Page 31213]]


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

0
2. Amend Sec.  1.4 by revising paragraphs (d)(1) and (d)(2)(ii) to read 
as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d)(1) Handwritten signature. A design patent practitioner must 
indicate their design patent practitioner status by placing the word 
``design'' adjacent to their handwritten signature. Each piece of 
correspondence, except as provided in paragraphs (d)(2), (d)(3), 
(d)(4), (e), and (f) of this section, filed in an application, patent 
file, or other proceeding in the Office that requires a person's 
signature, must:
* * * * *
    (2) * * *
    (ii) A patent practitioner (Sec.  1.32(a)(1)), signing pursuant to 
Sec. Sec.  1.33(b)(1) or 1.33(b)(2), must supply their registration 
number either as part of the S-signature or immediately below or 
adjacent to the S-signature. The hash (#) character may only be used as 
part of the S-signature when appearing before a practitioner's 
registration number; otherwise, the hash character may not be used in 
an S-signature. A design patent practitioner must additionally indicate 
their design patent practitioner status by placing the word ``design'' 
adjacent to the last forward slash of their S-signature.
* * * * *
0
3. Amend Sec.  1.32 by revising paragraph (a)(1) to read as follows:


Sec.  1.32  Power of attorney.

    (a) * * *
    (1) Patent practitioner means a registered patent attorney or 
registered patent agent under Sec.  11.6. An attorney or agent 
registered under Sec.  11.6(d) may only act as a practitioner in design 
patent applications or other design patent matters or design patent 
proceedings.
* * * * *

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

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

    Authority: 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
5. Amend Sec.  11.1 by:
0
a. Adding, in alphabetical order, the definition for ``Design patent 
practitioner,'' and
0
b. Revising the definitions of ``Practitioner'' and ``Roster or 
register.''
    The addition and revisions read as follows:


Sec.  11.1  Definitions.

* * * * *
    Design patent practitioner means a practitioner who is registered 
under Sec.  11.6(d).
* * * * *
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office 
in patent matters under Sec.  11.6;
    (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 a patent attorney, patent agent, or design patent 
practitioner.
* * * * *
0
6. Amend Sec.  11.5 by:
0
a. Revising paragraph (b)(1),
0
b. Re-designating paragraph (b)(2) as (b)(3), and
0
c. Adding new paragraph (b)(2).
    The revisions and addition read as follows:


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

* * * * *
    (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 an interference, derivation, and/or 
reexamination proceeding, a petition, an appeal to or any other 
proceeding before the Patent Trial and Appeal Board, or any 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 proceedings before the Office involving a 
patent application or patent in which the practitioner is authorized to 
participate. The services include:
    (i) Considering the advisability of relying upon alternative forms 
of protection which may be available under State law, and
    (ii) Drafting an assignment or causing an assignment to be executed 
for the patent owner in contemplation of filing or prosecution of a 
patent application for the patent owner, where the practitioner 
represents the patent owner after a patent issues in a proceeding 
before the Office, and when drafting the assignment the practitioner 
does no more than replicate the terms of a previously existing oral or 
written obligation of assignment from one person or party to another 
person or party.
    (2) Practice before the Office in design patent matters. (i) 
Practice before the Office in design patent matters includes, but is 
not limited to, preparing or prosecuting a design patent application; 
consulting with or giving advice to a client in contemplation of filing 
a design patent application or other document with the Office; drafting 
the specification or claim of a design 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 design 
invention; drafting a reply to a communication from the Office 
regarding a design patent application; and drafting a communication for 
an interference, derivation, and/or reexamination proceeding, a 
petition, an appeal to or any other design patent proceeding before the 
Patent Trial and Appeal Board, or any other design patent proceeding.
    (ii) Design patent registration to practice before the Office in 
design patent matters authorizes the performance of those services that 
are reasonably necessary and incident to the preparation and 
prosecution of design patent applications or other proceedings before 
the Office involving a design patent application or design patent in 
which the practitioner is authorized to participate. The services 
include:
    (A) Considering the advisability of relying upon alternative forms 
of protection which may be available under State law, and
    (B) Drafting an assignment or causing an assignment to be executed 
for the design patent owner in contemplation of filing or prosecution 
of a design patent application for the design patent owner,

[[Page 31214]]

where the design patent practitioner represents the design patent owner 
after a design patent issues in a proceeding before the Office, and 
when drafting the assignment the design patent practitioner does no 
more than replicate the terms of a previously existing oral or written 
obligation of assignment from one person or party to another person or 
party.
* * * * *
0
7. Amend Sec.  11.6 by:
0
a. Re-designating paragraph (d) as paragraph (e), and
0
b. Adding new paragraph (d).
    The revision and addition read as follows:


Sec.  11.6  Registration of attorneys and agents.

* * * * *
    (d) Design patent practitioners. Any citizen of the United States 
who is an attorney and who fulfills the requirements of this part may 
be registered as a design patent attorney to practice before the Office 
in design patent proceedings. Any citizen of the United States who is 
not an attorney, and who fulfills the requirements of this part may be 
registered as a design patent agent to practice before the Office in 
design patent proceedings.
* * * * *
0
8. Amend Sec.  11.8 by revising paragraph (b) to read as follows:


Sec.  11.8  Oath and registration fee.

* * * * *
    (b) An individual shall not be registered as an attorney under 
Sec.  11.6(a), registered as an agent under Sec.  11.6(b) or (c), 
registered as a design patent practitioner under Sec.  11.6(d), or 
granted limited recognition under Sec.  11.9(b) unless, within two 
years of the mailing date of a notice of passing the registration 
examination or of a waiver of the examination, the individual files 
with the OED Director a completed Data Sheet, an oath or declaration 
prescribed by the USPTO Director, and the registration fee set forth in 
Sec.  1.21(a)(2) of this subchapter. An individual seeking registration 
as an attorney under Sec.  11.6(a) must provide a certificate of good 
standing of the bar of the highest court of a State that is no more 
than six months old.
* * * * *
0
9. Amend Sec.  11.10 by revising paragraph (b)(1) introductory text and 
(b)(2) introductory text to read as follows:


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

* * * * *
    (b) * * *
    (1) To not knowingly act as an agent, attorney, or design patent 
practitioner for or otherwise represent any other person:
* * * * *
    (2) To not knowingly act within two years after terminating 
employment by the Office as agent, attorney, or design patent 
practitioner for, or otherwise represent any other person:
* * * * *
0
10. Amend Sec.  11.16 by revising paragraph (c)(1)(i) to read as 
follows:


Sec.  11.16  Requirements for admission to the USPTO Law School Clinic 
Certification Program.

* * * * *
    (c) * * *
    (1) * * *
    (i) Be registered under Sec.  11.6(a) or (b) as a patent 
practitioner in active status and good standing with OED;
* * * * *
0
11. Amend Sec.  11.704 by revising paragraph (b) to read as follows:


Sec.  11.704  Communication of fields of practice and specialization.

* * * * *
    (b) A registered practitioner under Sec.  11.6(a) who is an 
attorney may use the designation ``Patents,'' ``Patent Attorney,'' 
``Patent Lawyer,'' ``Registered Patent Attorney,'' or a substantially 
similar designation. A registered practitioner under Sec.  11.6(b) who 
is not an attorney may use the designation ``Patents,'' ``Patent 
Agent,'' ``Registered Patent Agent,'' or a substantially similar 
designation. A registered practitioner under Sec.  11.6(d) who is an 
attorney may use the designation ``Design Patent Attorney.'' A 
registered practitioner under Sec.  11.6(d) who is not an attorney may 
use the designation ``Design Patent Agent.'' Unless authorized by Sec.  
11.14(b), a registered patent agent shall not hold themself out as 
being qualified or authorized to practice before the Office in 
trademark matters or before a court.
* * * * *

PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
12. The authority citation for part 41 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135, and Pub. L. 112-29.

0
13. Amend Sec.  41.106 by revising paragraph (f)(4) to read as follows:


Sec.  41.106  Filing and service.

* * * * *
    (f) * * *
    (4) A certificate made by a person other than a registered 
practitioner must be in the form of an affidavit.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-10410 Filed 5-15-23; 8:45 am]
BILLING CODE 3510-16-P