[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]
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