[Federal Register Volume 88, Number 220 (Thursday, November 16, 2023)]
[Rules and Regulations]
[Pages 78644-78650]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-25234]
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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
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: Final rule.
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SUMMARY: The U.S. Patent and Trademark Office (USPTO or Office) is
amending the rules of practice in patent cases and the rules regarding
the representation of others before the USPTO by creating a separate
design patent practitioner bar whereby admitted design patent
practitioners would practice in design patent proceedings only. Prior
to this rulemaking, there was only one patent bar that applied to those
who practice in patent matters before the Office, including in utility,
plant, and design patents. The creation of a design patent practitioner
bar does not impact the ability of those already registered to practice
in any patent matters before the USPTO to continue to practice in any
patent matters, including design patent matters, before the Office.
Furthermore, it does not impact the ability of applicants for
registration who meet the criteria to practice in all patent matters
from qualifying for and upon passing the current registration exam,
practicing in any patent matters before the Office, including design
patent matters. Expanding the admission criteria of the patent bar
encourages broader participation and keeps up with the ever-evolving
technology and related teachings that qualify someone to practice
before the USPTO. The Manual of Patent Examining Procedure will be
updated in accordance with this final rule in due course.
DATES: This rule is effective January 2, 2024.
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; and Scott C. Moore, Acting Vice
Chief Administrative Patent Judge, Patent Trial and Appeal Board, at
571-272-9797.
SUPPLEMENTARY INFORMATION:
Purpose
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
promulgated regulations, administered by OED, that provide that
registration to practice in patent matters before the USPTO requires a
practitioner to demonstrate possession of ``the legal, scientific, and
technical qualifications necessary for him or her to render applicants
valuable service.'' See 37 CFR 11.7(a)(2)(ii). The
[[Page 78645]]
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.
Prior to this rule, there was only one patent bar that applied 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 applied 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). To gather public input before undertaking a rulemaking
that would expand to the patent bar, on October 18, 2022, the USPTO
published a request for comments in which it requested comments on the
scope and eligibility criteria 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
until January 31, 2023. See Expanding Admission Criteria for
Registration To Practice in Patent Cases Before the United States
Patent and Trademark Office (88 FR 3394).
The Office received a number of comments in favor of the creation
of a separate design patent practitioner bar which 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 design 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 design 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 Office received a few comments that
were not supportive of the creation of a separate design patent
practitioner bar. These included statements that the division of the
bar would cause confusion within the public, increase the cost of
identifying appropriate counsel, add significant administrative and
policing costs to the USPTO, and increase the risk of potential
malpractice and ethical concerns.
Of the options presented, the majority of those who were in favor
of creating and implementing a design patent practitioner bar preferred
that design patent practitioner bar applicants be required to take the
current registration examination, with modified scientific and
technical requirements. 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.
Proposed Rule: Comments and Responses
On May 16, 2023, after considering all public input, the USPTO
published a notice of proposed rulemaking, at 88 FR 31209, in which it
proposed implementing a design patent practitioner bar. The notice of
proposed rulemaking provided for a 90-day comment period.
The USPTO received nine unique comments from three organizations
and six individuals. 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 creation and
implementation of a design patent practitioner bar. A summary of the
comments and the USPTO's responses are provided below.
Comment 1: Three commenters opposed the proposal to create and
implement a design patent practitioner bar, stating that a design
patent practitioner would lack the training and experience to provide
fully competent counsel concerning the differences between utility and
design patent protection, have a bias favoring pursuit of design patent
protection which could work against the client's interest, and that
such a bar would create confusion amongst the public.
Response 1: All practitioners, including design patent
practitioners, are required to provide competent representation to
their clients. ``Competent representation requires the legal,
scientific, and technical knowledge, skill, thoroughness and
preparation reasonably necessary for the representation.'' See 37 CFR
11.101. In addition, all practitioners are required to be familiar with
the Office's rules and regulations, as demonstrated by applicants
taking and passing the registration examination. Confusion by the
public is avoided in part by allowing design patent practitioners to
indicate their designation as a ``design patent attorney'' or ``design
patent agent,'' and requiring such practitioners to indicate ``design''
when they are signing USPTO documents.
Based on the support of stakeholders and commenters, this
rulemaking implements a design patent practitioner bar wherein design
patent practitioner bar applicants would be required to take the
current registration examination, with modified scientific and
technical requirements. Applicants to the design patent practitioner
bar 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 these 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
[[Page 78646]]
listed in the GRB under Category A. These listed degrees are currently
acceptable for those applying for design patent 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
also requires them to take and pass the current registration
examination. Applicants are also required to undergo and pass a moral
character evaluation. The evaluation would be the same evaluation that
is conducted for all 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.
Comment 2: One commenter suggested that a study of the
implementation of a design patent practitioner bar, its impact on
applicants/clients, and its overall effect on an efficient and reliable
patent system be conducted.
Response 2: The USPTO issued a Request for Comments on this issue
on October 18, 2022, requesting input on the creation and
implementation of a design patent practitioner bar. See 87 FR 63044.
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.
Based on the responses received, and the noted support of a design
patent practitioner bar, the USPTO is proceeding with its
implementation.
Comment 3: Two commenters requested clarification regarding whether
the USPTO will accept candidates with coursework and/or work
experience, as currently accepted for USPTO employment.
Response 3: The USPTO will accept degrees and evidence of
equivalence to one of the listed degrees. Like the analysis for
practice in all patent matters, the USPTO will evaluate each applicant
for equivalency on a case-by-case basis.
Comment 4: Two commenters expressed concern that design patent
practitioners may claim, or that clients may inappropriately believe,
that design patent practitioners have specialized skills, training, or
approval beyond traditional patent practitioners, providing them with
expertise in design. Another commenter expressed concern that design
patent practitioners should indicate that they are qualified to
practice in design patent matters only.
Response 4: As per 37 CFR 1.32, ``[a]n 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.'' Per ethics rule, 37 CFR 11.101, all practitioners,
including design patent practitioners, are required to provide
competent representation to their clients. This includes properly
informing their clients of practice limitations.
Comment 5: One commenter expressed concern about design patent
practitioners receiving a registration number and stated it would be
beneficial to place a letter designation alongside the number.
Response 5: Patent Center does not support alphabetic indicators
alongside registration numbers. However, design patent practitioners
will receive a particular registration number series to distinguish
them from those practitioners who are authorized to practice in all
patent matters.
Comment 6: One commenter suggested that the USPTO remove all degree
requirements for attorneys to sit for the registration examination.
Response 6: 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 promulgated regulations, administered by OED,
that provide that registration to practice in patent matters before the
USPTO requires a practitioner to demonstrate possession of ``the legal,
scientific, and technical qualifications necessary for him or her to
render applicants valuable service.'' See 37 CFR 11.7(a)(2)(ii). The
USPTO sets forth guidance for establishing possession of these
scientific and technical qualifications in the GRB. As these
regulations and guidance have been long-standing, they are entitled to
great weight. See Alaska Dep't of Envtl. Conservation v. EPA, 540 U.S.
461, 487 (2004) (recognizing that the Court ``will normally accord
particular deference to longstanding agency interpretations'' (quoting
Barnhart v. Walton, 535 U.S. 212, 220 (2002))); Bragdon v. Abbott, 524
U.S. 624, 644-45 (1998); NLRB v. Hendricks Cnty. Rural Elec. Membership
Corp., 454 U.S. 170, 189-90 (1981); Menkes v. U.S. Dep't of Homeland
Sec., 637 F.3d 319, 332 (D.C. Cir. 2011) (``It is highly significant
here that the agency's `interpretation is one of long standing.' ''
(quoting Walton, 535 U.S. at 221)); Estate of Landers v. Leavitt, 545
F.3d 98, 107 (2d Cir. 2008) (finding that agency's ``longstanding''
interpretation was ``entitled to a great deal of persuasive weight'');
Council Tree Commc'ns, Inc. v. FCC, 503 F.3d 284, 289 (3d Cir. 2007)
(``[C]ourts give `considerable weight' to a `consistent and
longstanding interpretation by the agency' responsible for
administering a statute.'' (quoting Int'l Union of Elec. Radio & Mach.
Workers v. Westinghouse Electric Corp., 631 F.2d 1094, 1106 (3d Cir.
1980)).
Comment 7: One commenter suggested that instead of having design
patent bar applicants take the current registration examination,
applicants take an entirely new and separate design bar examination.
Such applicants would then be the only ones entitled to practice in
design patent matters.
Response 7: This suggestion has not been adopted. As previously
indicated by other commenters, design bar practitioners need to be
familiar with the practices and procedures of patent preparation and
prosecution before the USPTO. This is what the current registration
examination tests. Restricting the ability to practice in design patent
matters from those who meet the criteria for registration to practice
in all patent matters would take away a right from those already
qualified and be unfair to those who may qualify in the future.
Discussion of Specific Rules
The USPTO amends 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'' (in any format) adjacent to their
handwritten signature.
The USPTO amends 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'' (in any format) adjacent to the
last forward slash of their S-signature.
The USPTO amends Sec. 1.32 to update the definition of
``practitioner'' in light of the amendments to Sec. 11.6(d).
A power of attorney naming the practitioners associated with a
customer number filed in an application may only
[[Page 78647]]
include practitioners who are authorized to practice in that
application. If a design practitioner is associated with a customer
number, that customer number cannot be used to establish power of
attorney in a utility or plant application. This applies even if a
practitioner that is authorized to practice before the Office in all
patent matters is also associated with that same customer number.
The USPTO amends Sec. 11.1 to add a definition for ``design patent
practitioner.''
The USPTO amends Sec. 11.1 to amend paragraph (1) under the
definition of ``practitioner'' to refer to Sec. 11.6.
The USPTO amends Sec. 11.1 to amend the definition of ``register
or roster'' to include design patent practitioners.
The USPTO amends Sec. 11.5 to amend paragraph (b)(1) to add
``all'' in view of new paragraph (b)(2), so that it is clear that
(b)(1) defines the matters that a patent practitioner who is authorized
to practice in all patent matters can practice; 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 defines practice before the Office
in design patent matters.
The USPTO amends 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 amends 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 amends 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 amends 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 amends 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 amends 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
the term ``registered practitioner,'' as used in parts 41 and 42, and
the term ``USPTO patent practitioner,'' as used in Sec. 42.57,
encompasses ``design patent practitioners,'' as defined in 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 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 amends the rules regarding the representation of others
before the USPTO to create a separate design patent practitioner bar in
which admitted design patent practitioners practice in design patent
proceedings only. The creation of a design patent practitioner bar does
not impact the ability of those already registered to practice in any
patent matters, including design patent matters, before the USPTO.
Furthermore, it does not impact the ability of applicants who meet the
scientific and technical criteria as described in Categories A through
C in the GRB, including qualifying for and passing the current
registration exam and passing the moral character evaluation, 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 creates a separate design patent practitioner bar
that only impacts individuals who apply for recognition to practice
before the USPTO in design patent proceedings and does not directly
impact any small businesses. Additionally, the changes do not add
requirements or costs beyond those that currently exist for applicants
or members to the USPTO practitioner bar. The changes only expand the
applicants that can represent certain matters before the USPTO.
Applicants to the design patent practitioner bar are expected to pay
the same application and examination fee as applicants who want to
practice in all patent matters and are 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 allows 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. The Office has
not received any comments of data regarding the costs for RFA purposes.
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), as amended by Executive Order 14094 (April
6, 2023).
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;
[[Page 78648]]
(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 affect 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 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
are updated alongside this 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 practitioner bar options are 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 amends 37 CFR
parts 1, 11, and 41 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.
0
2. Amend Sec. 1.4 by revising paragraphs (d)(1) introductory text 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
[[Page 78649]]
placing the word ``design'' (in any format) adjacent to their
handwritten signature. Each piece of correspondence, except as provided
in paragraphs (d)(2) through (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. 1.33(b)(1) or (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'' (in any
format) 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: 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
5. Amend Sec. 11.1 by:
0
a. Adding in alphabetical order a 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) through (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 all 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 relating to a design
patent application 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, 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
[[Page 78650]]
written obligation of assignment from one person or party to another
person or party.
* * * * *
0
7. Amend Sec. 11.6 by re-designating paragraph (d) as (e) and adding a
new paragraph (d).
The addition reads 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 paragraphs (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 or design 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.
Kathi Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-25234 Filed 11-15-23; 8:45 am]
BILLING CODE 3510-16-P