[Federal Register Volume 88, Number 134 (Friday, July 14, 2023)]
[Rules and Regulations]
[Pages 45078-45088]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-14606]
[[Page 45078]]
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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: Final rule.
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SUMMARY: The U.S. Patent and Trademark Office (USPTO or Office) amends
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. This final rule
formalizes 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
Program aligns USPTO disciplinary practice with a majority of states
and provides practitioners an opportunity to address the root causes of
such misconduct. In addition, this final rule requires foreign
attorneys or agents granted reciprocal recognition to practice before
the USPTO in trademark matters to provide and update their contact and
licensure status information or have their recognition withdrawn so the
public will have access to up-to-date information. This final rule also
defers to a state's attorney licensing authority regarding alternative
business structures between a practitioner and a non-practitioner to
reduce the potential for conflicts between the USPTO and the attorney
licensing authority. Further, this final rule removes a fee required
when changing one's status from a patent agent to a patent attorney and
makes minor adjustments to other provisions related to the
representation of others before the USPTO.
DATES: This rule is effective August 14, 2023.
FOR FURTHER INFORMATION CONTACT: Will Covey, Deputy General Counsel for
the Office of Enrollment and Discipline (OED) and OED Director, at 571-
272-4097, or [email protected].
SUPPLEMENTARY INFORMATION:
Purpose
The USPTO amends 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, disciplinary proceedings, and the USPTO Rules of
Professional Conduct.
The USPTO formalizes its OED Diversion Pilot Program (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 Program. Making the Pilot Program permanent
will proactively encourage practitioners to address the root causes of
their misconduct so that they may provide valuable service to the
public. It aligns the USPTO's disciplinary practice with a majority of
state attorney disciplinary systems.
The USPTO also requires foreign attorneys or agents granted
reciprocal recognition in trademark matters to provide and update their
contact and licensure status information or have their recognition
withdrawn in order to provide the public with current information.
Certain state attorney licensing authorities have begun permitting
alternative business structures between an attorney and a non-attorney,
generally consisting of an arrangement where the non-attorney is
permitted to partner with the attorney in the practice of law, possess
an ownership interest in a law firm, or otherwise share in legal fees.
However, such arrangements were previously 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. Therefore, this rule changes the USPTO Rules of Professional
Conduct so that, hereafter, the USPTO defers to a state's attorney
licensing authority 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 makes 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 amends part 11 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. The program allows those practitioners to avoid formal
discipline by 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 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 by the OED Director under 37 CFR 11.34. However,
in extraordinary circumstances, the OED Director may enter into a
diversion agreement with an eligible practitioner after a complaint 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 USPTO extended the Pilot
Program until November 15, 2023 or until a formalized program
superseded the pilot. See Extension of Diversion Pilot Program, 1503 OG
314 (Oct. 18, 2022). The Pilot Program has enabled practitioners to
successfully implement specific remedial measures and improve their
practice, and the USPTO 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
[[Page 45079]]
Trademark Office, 86 FR 28442, 28446 (May 26, 2021). This final rule
amends part 11 to formalize the Pilot Program, thus emphasizing the
USPTO's commitment to wellness within the legal profession and aligning
the USPTO with the practices of more than 30 attorney disciplinary
systems in the United States.
The criteria for participation are set forth at 37 CFR 11.30. The
criteria address eligibility, completion of the program, and material
breaches of the diversion agreement. (Any other 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.) 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 indicated 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.'').
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 diversion guidance document, available at
https://www.uspto.gov/sites/default/files/documents/OED-Diversion-Guidance-Document.pdf.
Changes to the Regulation of Foreign Attorneys or Agents Granted
Reciprocal Recognition in Trademark Matters
The USPTO amends Sec. 11.14 to ascertain the licensure status and
contact information of foreign attorneys or agents who are granted
reciprocal recognition in trademark matters under Sec. 11.14(c)(1).
The amendments in this final rule provide potential clients with more
certainty regarding the good standing of a foreign attorney or agent.
This final rule requires 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 their postal address, email
addresses, and business 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 within 30 days
of the lapse.
The USPTO also amends the rules of practice so 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 will 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 amended rule requires
the OED Director to publish a notice of any withdrawal of recognition.
Lastly, in this final rule the USPTO amends the rules of practice
so 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)
This final rule amends Sec. 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 removes the term ``nonimmigrant alien'' from Sec. 11.9(b)
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 results 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
In this final rule, the USPTO amends 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
[[Page 45080]]
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
In this final rule, the USPTO eliminates 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
This final rule adds Sec. 11.504(e) to address when a practitioner
enters into an arrangement 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. In the
event of such arrangement, Sec. 11.504(e) is intended to defer to the
attorney licensing authority of the State(s) (as defined in Sec. 11.1,
``any of the 50 states of the United States of America, the District of
Columbia, and any commonwealth or territory of the United States of
America'') that affirmatively regulate(s) such arrangement, in order to
avoid a conflict between Sec. 11.504(a), (b), and (d)(1) and (2) of
the USPTO Rules of Professional Conduct and the laws, rules, and
regulations of the attorney licensing authority of any such State(s).
It is further intended to treat an attorney subject to the USPTO Rules
of Professional Conduct and a registered patent agent similarly when
both participate together in the same such arrangement. No deference to
an attorney licensing authority of a State is intended when that
licensing authority has no laws, rules, and regulations that address
such arrangement or the State does not affirmatively regulate such
arrangement.
However, the added 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
In this final rule, the USPTO amends Sec. 11.43 to clarify that,
while all motions must set forth a basis for the requested relief,
including a concise statement of the facts and arguments along with a
citation of the authorities upon which the movant relies, (1) only
motions for summary judgment and motions to dismiss are required to be
accompanied by a written memorandum setting forth that basis, 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 parties must provide support for all 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
This final rule amends 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 the transcript of the hearing need not be created by a
stenographer.
Five Days To Serve Discovery Requests After Authorization; 30 Days To
Respond After Service
In this final rule, the USPTO amends 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 restructured into revised
paragraphs (a), (b), and (c). Former paragraph (c) is redesignated as
paragraph (d), and the cross-reference to former paragraph (a) is
updated. Former paragraphs (d) through (f) are redesignated as
paragraphs (e) 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 previous rule sets forth that information
in paragraph (b), the amended rule logically sets forth that
information in paragraph (a) because paragraph (a) pertains to the
content of the initial motion for written discovery.
Second, under paragraph (b), the amended rule 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 amended rule 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.
Changes to Procedures Regarding Appeals to the USPTO Director
In this final rule, the USPTO amends 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 are removed to eliminate an unnecessarily
burdensome requirement in requesting the extension of time, while
retaining the necessity to show good cause. The provision is moved to
the new paragraph (p) because it logically falls at the end of Sec.
11.55.
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Removal of Emeritus Status
The USPTO removes the reference to ``emeritus status'' in Sec.
11.19(a) because no such status was ever finalized and inadvertently
remains from a previous rulemaking.
Proposed Rule: Comments and Responses
The USPTO published a proposed rule on September 8, 2022, at 87 FR
54930, soliciting comments on the proposed amendments to 37 CFR parts 1
and 11. The USPTO received five unique comments from four organizations
and one individual. These comments are publicly available at the
Federal eRulemaking Portal at www.regulations.gov. The Office received
comments both generally supporting and objecting to the revisions to
the rules of practice. A summary of the comments and the USPTO's
responses are provided below.
Comment 1. Two commenters support the proposal to formalize the
USPTO's Diversion Pilot Program. One commenter encourages expanding the
eligibility criteria for participation and increasing the use of the
program.
Response 1. The USPTO appreciates the support for formalizing its
Diversion Pilot Program. The eligibility criteria for participation in
the Diversion Program are set forth in 37 CFR 11.30 in this final rule.
The criteria are based upon the American Bar Association Model Rules
for Lawyer Disciplinary Enforcement (amended August 12, 2002) and are
now broadened based on experience gained during the Pilot Program.
Specifically, eligibility is extended to a practitioner who evidences a
pattern of similar misconduct if the misconduct at issue is minor and
related to a chronic physical or mental health condition or disease.
Eligibility is also extended to a practitioner who has been disciplined
by another jurisdiction within the past three years as long as the
discipline was based on the conduct that forms the basis for the OED
Director's investigation. Under the Pilot Program, a practitioner who
evidenced a pattern of similar misconduct or a practitioner who was
recently disciplined by their state bar was not eligible to
participate. The USPTO believes that the Diversion Program is a
valuable proactive tool that will provide a practitioner the
opportunity to curtail future misconduct. Accordingly, the USPTO will
continue to evaluate the eligibility criteria over the course of the
program.
Comment 2. Two commenters express concerns regarding the proposal
to require a written memorandum of law only for a motion for summary
judgment or a motion to dismiss. Specifically, the commenters contend
that the proposal may impact the due process rights of respondents;
eliminate memoranda of law in other important motions; and impact the
ability of the respondent (and tribunal) to understand the relevant
facts, the applicable law, and the application of the law to the facts
in support of the relief requested. The commenters also express concern
that no data or objective evidence has been provided in support of a
benefit to respondents when motions unsupported by a memorandum of law
are filed against them. The commenters suggest that the USPTO should
either withdraw the proposal or amend it to permit a motion to be filed
without a supporting memorandum of law only for narrowly defined, non-
substantive issues.
Response 2. The USPTO appreciates the comments and, after review
and consideration, has amended 37 CFR 11.43 to clarify that each motion
must set forth a basis for the requested relief, including a concise
statement of the facts and supporting reasons, along with a citation of
the authorities upon which the movant relies. The amended text requires
the moving party to advance in their motion any facts and supporting
reasons deemed necessary to support the requested relief. The USPTO
notes that the prior provision in 37 CFR 11.43 that required memoranda
to accompany all motions had only been in place since June 25, 2021.
Before then there was no requirement that a motion be accompanied by a
memorandum of law. Instead, the form and content of motions and
accompanying papers were governed by the hearing officer's orders,
which typically required all motions to be so accompanied. However,
respondents who are unrepresented by counsel often failed to file
memoranda of law with their motions, regardless of the orders.
Accordingly, the change to Sec. 11.43 may benefit such unrepresented
respondents who may find preparing a memorandum of law burdensome or
may overlook the requirement. Nothing in the amended text authorizes or
endorses the filing of motions that are not adequately supported by
facts, reasons, and legal authorities. Rather, the amendment removes
the current requirement that a separate legal memorandum must be filed
for all motions and limits the requirement to only certain dispositive
motions.
Comment 3. One commenter recommends that in developing policies
regarding the use of video hearings, the USPTO may wish to consult
Recommendation 2021-4, Virtual Hearings in Agency Adjudication, 86 FR
36083 (July 8, 2021), which identifies best practices for improving
existing virtual-hearing programs and establishing new ones in accord
with principles of fairness and efficiency and with due regard for
participant satisfaction.
Response 3. The USPTO appreciates the comment. The USPTO will
endeavor to ensure that hearing officers and the USPTO's counsel keep
abreast of recommendations, developments, and updates with respect to
virtual hearings, including the referenced Recommendation 2021-4, in
order to promote remote hearings that proceed efficiently, fairly, and
to the satisfaction of participants.
Comment 4. Three commenters raise concerns in regard to amended 37
CFR 11.44(a), pertaining to remote hearings, stating that disciplinary
proceedings are quasi-criminal in nature and that due process must be
considered. Two of the commenters particularly assert that respondents
and their counsel are entitled to, or should be entitled to, an in-
person right to confront witnesses, if so desired.
Response 4. The USPTO appreciates the comments and endeavors to
fully protect respondents' due process rights in all disciplinary
proceedings, whether conducted remotely or in-person. USPTO
disciplinary proceedings provide respondents with notice of the charges
against them and opportunities to be heard, explain, and defend
themselves. See In re Ruffalo, 390 U.S. 544, 550 (1968). Federal courts
have consistently distinguished the rights of respondents in
disciplinary cases from those of criminal defendants. See In re Sibley,
564 F.3d 1335, 1341 (D.C. Cir. 2009); Rosenthal v. Justices of the
Supreme Court of Cal., 910 F.2d 561, 564 (9th Cir. 1990), cert. denied,
498 U.S. 1087 (1991); In re Stamps, 173 Fed. App'x. 316, 318 (5th Cir.
2006) (per curiam) (unpublished); In re Marzocco, No. 98-3960, 1999 WL
968945, at *1 (6th Cir. 1999) (unpublished). Nonetheless, whether the
hearing is held in-person or remotely, respondents have the opportunity
to cross-examine witnesses and have the witnesses' credibility
evaluated by a neutral hearing officer.
Comment 5. Two commenters express concerns related to subpoenas
that may be used in USPTO disciplinary proceedings. The commenters note
the geographic limitations of Federal Rule of Civil Procedure 45 and
assert that the ``place'' of hearing for USPTO disciplinary hearings is
where the hearing officer is located, not where a witness may be
located in the case of a remote hearing. Therefore, the commenters
argue that hearing officers
[[Page 45082]]
can only authorize parties to apply to the court in the jurisdiction
where the trial is held to obtain a hearing subpoena and compel the in-
person appearance of a witness. Accordingly, the commenters assert that
the proposed amendment in regard to remote hearings incorrectly
presumes that hearing officers have nationwide hearing subpoena power.
The commenters add that the only way to ensure testimony by witnesses
outside the subpoena power of a trial court is to have them testify by
deposition.
Response 5. The USPTO disagrees with the sentiments in these
comments. Although hearing officers do not issue subpoenas, they have
the power to authorize the issuance of subpoenas by federal district
courts nationwide pursuant to 35 U.S.C. 24 and 37 CFR 11.38, 11.39, and
11.51. The legitimacy and enforceability of a subpoena issued to a
witness in a particular disciplinary proceeding may be determined on a
case-by-case basis. In addition to authorizing hearing subpoenas,
hearing officers may authorize subpoenas for remote depositions and
have done so in the past. There is a benefit to hearing officers
conducting remote hearings, where they can hear and observe testimony
in real time and ask questions of the witness, instead of being
presented with deposition transcripts or videos, where the hearing
officers have no opportunity to interact with the witness or observe
the witness in real time.
Comment 6. Three commenters object to characterizing the amendment
in regard to remote hearings as a ``clarification'' of existing
practice. The commenters assert that conducting remote hearings is not
authorized by the existing rules and that doing the same since the
beginning of the COVID pandemic does not authorize them or make them
legitimate. One commenter also noted that members of the public had no
way to know that hearing officers had been conducting remote hearings
because disciplinary proceedings are subject to the Privacy Act of
1974.
Response 6. The USPTO disagrees with the sentiments in these
comments. The amendment reflects existing practice. Hearing officers
have invoked their broad authority under 37 CFR 11.39(c) to conduct
remote hearings in USPTO disciplinary proceedings. At least one other
jurisdiction has also recognized this authority. See Atty. Grievance
Commn. of Maryland v. Agbaje, 93 A.3d 262, 275-76 (Md. 2014). It is
further noted that the USPTO conducts hearings in proceedings between
parties where some or all participants appear remotely. For example,
the Trademark Trial and Appeal Board has held such hearings since
before the COVID pandemic began, and the Patent Trial and Appeal Board
has held numerous remote hearings since the advent of the pandemic.
Regarding notice to the public, the amendment expressly states that a
virtual hearing is an additional option for the hearing officer.
Parties may proactively move for or against a virtual hearing. Further,
the amended provision provides notice to the public that a virtual
hearing is available, thereby potentially giving the respondent
additional time in the early stages of a proceeding either to request
and prepare for a remote hearing or to formulate a request against a
remote hearing. Nothing in this amendment is intended to preclude or
restrict a hearing officer's authority to order an in-person hearing.
Comment 7. Three commenters posit that remote hearings should be
available only if a respondent elects one or, similarly, that remote
hearings should be available only if both parties agree.
Response 7. The USPTO declines to adopt such a limit on a hearing
officer's discretion to order a remote hearing. The amendment does not
mandate remote hearings, but rather recognizes that a hearing officer
may exercise discretion to order a hearing to be remote in whole or in
part. Hearing officers will need to consider various factors in
determining whether to conduct a remote hearing in whole or in part,
including but not limited to the stated preferences and needs of the
parties. For example, remote hearings may reduce the cost of the
disciplinary proceeding for the Office and respondent. See generally,
37 CFR 11.60(d)(1).
Comment 8. One commenter states that the phrase ``the hearing
officer shall set the time and place for the hearing'' in 37 CFR
11.44(a) refers to a physical location, and states that virtual
hearings depart from this meaning.
Response 8. To the extent that the commenter appears to suggest
that the quoted phrase obviates the possibility of remote hearings, the
USPTO disagrees because amended 37 CFR 11.44(a) explicitly provides for
remote hearings. Further, hearing officers have invoked their broad
authority under 37 CFR 11.39(c) to ``determine the time and place of
any hearing and regulate its course and conduct'' to include conducting
the hearing via videoconference. In addition, at least one tribunal has
found that the parties, witnesses, and hearing officers are still
``located'' at some place during a remote proceeding, just simply not
all at the same location. See Legaspy v. Fin. Indus. Regul. Auth.,
Inc., No. 20 C 4700, 2020 WL 4696818, at *3 (N.D. Ill. Aug. 13, 2020).
Comment 9. Three commenters express support for the amendment to
require reciprocally recognized trademark practitioners to update their
contact information with the USPTO within 30 days of any changes
thereto. One commenter expresses a concern, however, that such
requirement lacks an effective enforcement mechanism. As such, the
commenter suggests imposing escalating fees for late submissions of
contact information updates. The commenter posits that the threat of
penalties would increase compliance with the new rule. Finally, the
commenter appears to suggest that practitioners who are late in
providing updated contact information by a full year, should be
automatically removed from the rolls.
Response 9. The USPTO declines to impose such new fees at this time
because the public would not have had a chance to review and comment on
the proposal. The USPTO also declines to create automatic removal
provisions because such provisions may implicate the Administrative
Procedure Act's requirements to provide notice and a hearing before a
license may be revoked.
Comment 10. One commenter suggests that the text requiring a
foreign attorney or agent granted reciprocal recognition in trademark
matters to provide and update their contact information with the USPTO
be included under 37 CFR 11.11(a) which currently requires a registered
patent practitioner and any person granted limited recognition under 37
CFR 11.9(b) to provide and update their contact information. The
commenter appears to make the suggestion under the understanding that
``those who have reciprocal recognition are granted limited
recognition.''
Response 10. The USPTO thanks the commenter for the suggestion.
Assuming the USPTO correctly understands the suggestion, the USPTO
wishes to clarify there is no overlap between the categories of: (1)
foreign trademark practitioners who are reciprocally recognized to
practice before the USPTO in certain trademark matters under 37 CFR
11.14 as long as they do not reside in the United States, and (2)
foreigners who reside in the United States and are granted limited
recognition to practice before the USPTO in patent matters under 37 CFR
11.9.
Comment 11. One commenter supports in principle the proposed
[[Page 45083]]
amendment to defer to the laws, rules, and regulations of the attorney
licensing authority of the State of a practitioner who enters into an
arrangement to share legal fees with a non-practitioner, form a
partnership with the non-practitioner, or be part of an organization
owned by a non-practitioner. However, the commenter believes that the
USPTO should undertake further study and review of the potential
outcomes resulting from the amendment, as well as review the efforts of
the American Bar Association and other jurisdictions as they modify and
interpret their rules to clarify or reconsider existing positions on
alternative business arrangements with non-attorneys. Another commenter
views the sharing of legal fees with non-attorneys as inconsistent with
the core values of the legal profession but recognizes that some
jurisdictions now permit such fee-sharing and others may follow.
Accordingly, the commenter notes that fear of violating the then-
effective rule, which generally prohibited such arrangements, may have
made practitioners who are admitted to a jurisdiction that permits such
fee sharing reluctant to enter into the same. Therefore, while the
commenter appreciates the USPTO's clarity, the commenter suggests that
the USPTO monitor the use of non-practitioners to make filings, as well
as the commoditization of legal services by non-practitioner owned
companies.
Response 11. The USPTO appreciates these comments as well as the
concerns identified. The USPTO will continue to consider the potential
and actual outcomes of the addition of 37 CFR 11.504(e) as well as
related changes in other jurisdictions. The USPTO notes prior reports
by Supreme Court of Arizona's Task Force on the Delivery of Legal
Services in 2019, which preceded that state's elimination of the
equivalent of 37 CFR 11.504; the State Bar of California Task Force on
Access through Innovation of Legal Services' Final Report and
Recommendations in 2020, which appear to have been partially
implemented; and the Utah Supreme Court's Standing Order No. 15 of 2020
(as amended in 2021) implementing changes to the equivalent of 37 CFR
11.504. The USPTO also notes that Georgia has implemented changes very
similar to this final rule's addition of 37 CFR 11.504(e) in Georgia
Rule of Professional Conduct 5.4(e) and (f).
In regard to the second commenter's concern regarding the use of
non-practitioners to make filings, the USPTO notes that existing
provisions regarding who may practice before the USPTO, prohibitions
regarding the unauthorized practice of law before the USPTO, and
provisions on who may properly present a document to the USPTO remain
unchanged. In addition to the suggestions of the commenters, the USPTO
has identified a situation of concern in which a registered patent
agent (i.e., a non-attorney registered to practice before the Office in
patent matters) could be in violation of the proposed 11.504(e) even
though an attorney in the same firm who is also subject to the USPTO
Rules of Professional Conduct would not be in violation of the same
provision. As such, the USPTO has simplified proposed 11.504(e) to
clarify that a practitioner need not also be authorized to practice law
by the attorney licensing authority in the State(s) that affirmatively
regulate(s) the arrangement if the arrangement is fully compliant with
the laws, rules, and regulations of the attorney licensing authority of
any such State(s).
Comment 12. One commenter supports the proposal to eliminate the
fee imposed upon a registered patent practitioner for requesting a
status change from patent agent to patent attorney. The commenter also
requests that the USPTO remove fees to convert an individual's status
from limited recognition to either patent agent or patent attorney
status, or when a practitioner changes their status from patent
attorney to patent agent.
Response 12. The USPTO is unable to consider the removal of
additional fees in this rulemaking, as further study will be required.
Changes From Proposed Rule
As discussed in more detail below, the following sections contain
changes from the proposed rule:
Section 11.14 is modified after further consideration to clarify
that a practitioner granted reciprocal recognition under paragraph
(c)(1) shall notify the OED Director of a lapse in authorization within
30 days of the lapse, which was previously unspecified in paragraph (g)
but is a logical outgrowth of the proposed rule. The section is further
modified to add a header to paragraph (d) in conformity with the other
paragraphs of that section. Paragraph (h) is further modified to
clarify that the transmission of the letter to a practitioner
recognized under paragraph (c)(1) is sufficient rather than receipt.
This recognizes the challenge of verifying service on a practitioner
who is definitionally located outside the United States per paragraph
(c)(1) in light of the duty of the practitioner to be reachable by
clients and tribunals in accordance with the USPTO disciplinary rules.
Lastly, after further consideration, references to ``must'' in
paragraphs (g) and (h) have been changed to ``shall'' for consistency
with other paragraphs in Sec. 11.14.
Section 11.43 is modified after further consideration and in
response to public comment to clarify that each motion must set forth a
basis for the requested relief, including a concise statement of the
facts and supporting reasons, along with a citation of the authorities
upon which the movant relies. This change may benefit unrepresented
respondents who may find preparing a memorandum of law burdensome. See
Comment and Response 2.
Section 11.52(d) is modified to update a cross-reference in the
proposed rule that unintentionally referred to paragraph (a). The
cross-reference has been updated to refer to paragraph (c).
Section 11.504(e) is modified after further consideration and in
response to public comment to clarify that a practitioner who enters
into an alternative business arrangement with a non-practitioner need
not also be authorized to practice law by the attorney licensing
authority in the State(s) that affirmatively regulate(s) the
arrangement if the arrangement is fully compliant with the laws, rules,
and regulations of the attorney licensing authority of any such
State(s). A registered patent agent and an attorney who participate
together in the same such arrangement and are both subject to the USPTO
Rules of Professional Conduct are to be treated similarly in regard to
Sec. 11.504(a), (b), and (d)(1), and (d)(2) in cases when the attorney
licensing authority of any such State(s) affirmatively regulate(s) an
alternative business structure with a non-practitioner. Further, these
changes clarify that the exception created by Sec. 11.504(e) does not
apply when the attorney licensing authority of any such State(s) has no
laws, rules, and regulations that address an alternative business
structure with a non-attorney, and that the exception does not apply
when the State does not affirmatively regulate such arrangement. See
Comment and Response 11.
Discussion of Specific Rules
The USPTO eliminates 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 amends Sec. 11.7(l) to reflect the elimination of the
fee set forth in Sec. 1.21(a)(2)(iii).
The USPTO amends Sec. 11.9(b) to remove the term ``nonimmigrant
alien'' and to clarify that limited recognition shall not be granted or
extended to a
[[Page 45084]]
non-U.S. citizen residing outside the United States.
The USPTO amends Sec. 11.14(c)(1) to remove unnecessary references
to paragraph (c).
The USPTO amends Sec. 11.14(d) to add a header in conformity with
the other paragraphs of that section.
The USPTO amends Sec. 11.14(f) to add references to Sec.
11.14(c)(1) where Sec. 11.14(c) was previously referenced.
The USPTO adds 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 within 30 days of the date of the lapse.
The USPTO adds 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 adds 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 amended Sec. 11.14(g) and (h).
The USPTO adds 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 amends Sec. 11.19(a) to remove the term ``emeritus
status.''
The USPTO amends Sec. 11.22(h)(3) and (4) and adds 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 adds Sec. 11.30 to state the criteria by which the OED
Director may enter into a diversion agreement with a practitioner.
The USPTO amends Sec. 11.43 to clarify that all motions shall set
forth the basis for requested relief, but prescribed time periods apply
to only certain motions and that those motions shall be accompanied by
a written memorandum.
The USPTO amends Sec. 11.44(a) to clarify that hearings may be
held by videoconference and that the transcript of the hearing need not
be created by a stenographer.
The USPTO amends Sec. 11.52 to 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. Former paragraph (c) is
redesignated as paragraph (d), and the cross-reference to former
paragraph (a) is updated. Former paragraphs (d) through (f) are
redesignated as paragraphs (e) through (g).
The USPTO amends 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 adds Sec. 11.504(e) to address circumstances when a
practitioner enters into an arrangement 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. Specifically, Sec. 11.504(e) defers to the attorney
licensing authority of the State(s) that affirmatively regulate(s) such
arrangement provided such arrangement fully complies with the laws,
rules, and regulations of the attorney licensing authority of any such
State(s).
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 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 rule eliminates 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 change is expected
to impact approximately 340 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 rule. However, assuming that all
patent agents impacted by this rule are small entities, the elimination
of the fee will not impact a substantial number of small entities
because the approximately 340 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
[[Page 45085]]
of the $110.00 fee will result in a modest benefit to those patent
agents, as they are no longer be required to pay the fee when changing
their designation from patent agent to patent attorney.
This rule also amends 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 makes 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 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 makes 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 makes 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 the
State(s) that affirmatively regulate(s) such arrangement; clarifying
the procedures regarding disciplinary hearings and appeals of the same;
and removing an inadvertent reference to ``emeritus status.''
These changes to the rules governing the recognition to practice
before the Office 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 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. 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 (E.O.) 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 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.), the
USPTO will submit a report containing the final rule and other required
information to
[[Page 45086]]
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 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).
This rulemaking benefits the public by improving the accuracy of
the register of attorneys and agents who are permitted to practice
before the USPTO in patent matters. Specifically, removing the fee to
change from agent to attorney is expected to incentivize a registered
patent agent who is an attorney but has not updated their registration
status to do so. The fee removal reduces the estimated cost burdens
associated with 0651-0012 by $27,720; (252 respondents x $110 fee =
$27,720). Accordingly, the current estimate of patent agents who change
to attorney in 0651-0012 are expected to increase from 252
practitioners to the new estimate of at least 340 practitioners.
The expected increase in practitioners who change their
registration status will result in a slight hourly burden increase of
44 hours; (88 practitioners x 0.5 hours = 44 hours). The USPTO further
estimates that this increase of 88 respondents will add seven hours of
recordkeeping burden to 0651-0012; (88 practitioners x 0.083 hours = 7
hours). These burden estimates are based on the prior OMB approved
burdens associated with information collection 0651-0012 and may be
different from any forecasts mentioned in other parts of this rule.
Overall, this final rule adds 51 burden hours and removes $27,720 in
cost burdens.
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 amends 37 CFR
parts 1 and 11 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation 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 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) 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,
[[Page 45087]]
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 paragraph (c)(1), adding a heading to
paragraph (d), revising paragraph (f), and adding paragraphs (g)
through (j) to read as follows:
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.
* * * * *
(d) Effect of recognition. * * *
* * * * *
(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 shall 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 shall 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 within 30 days of the
lapse.
(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
to whom such a letter is sent shall 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.
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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.
* * * * *
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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.
* * * * *
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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
[[Page 45088]]
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
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.
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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 the opposing party
and filed with the hearing officer. Each motion shall set forth a basis
for the requested relief, including a concise statement of the facts
and supporting reasons, along with a citation of the authorities upon
which the movant relies. For any motion for summary judgment or motion
to dismiss, the basis shall be provided in a written memorandum
accompanying the motion. All motions and 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. 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.
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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.
* * * * *
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12. Amend Sec. 11.52 by:
0
a. Revising paragraphs (a) and (b);
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b. Redesignating paragraphs (c) through (f) as paragraphs (d) through
(g);
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c. Adding a new paragraph (c); and
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d. Revising newly redesignated paragraph (d).
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.
(d) Discovery shall not be authorized under paragraph (c) of this
section of any matter that:
(1) Will be used by another party solely for impeachment;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any other disciplinary proceeding before the Office;
(4) Relates to experts;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal
theories of any attorney or other representative of a party.
* * * * *
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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.
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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
the State(s) that affirmatively regulate(s) such arrangement.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-14606 Filed 7-13-23; 8:45 am]
BILLING CODE 3510-16-P