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35428 Federal Register / Vol. 69, No.

121 / Thursday, June 24, 2004 / Rules and Regulations

PATENT AND TRADEMARK OFFICE


2004 (69 FR 9986) of an extension for examination will schedule with the
public comment on proposed rules contractor the date and location where
37 CFR Parts 1, 10 and 11
1.4(d)(2), 1.8(a)(2)(iii)(A), 1.21(a)(6) he or she desires to take the
through (a)(9), 1.21(a)(11), 1.21(a)(12), examination. The person will have a
[Docket No.: 2002–C–005]

2.11, 2.17, 2.24, 2.33, 2.61, 11.2(b)(4) ninety-day window, beginning five
RIN 0651–AB55
through 11.2(b)(7), 11.3(b) and (c), business days after the mailing date of
11.5(b), 11.8(d), 11.9(c) (last two the letter admitting the person to the
Changes to Representation of Others
sentences), 11.9(d), 11.10(c) (second examination, within which he or she
Before the United States Patent and
sentence), 11.10(d) (second sentence), must take the examination.
Trademark Office 11.10(e) (second sentence), 11.11(b) Providing the examination in this
through (f), 11.12 through 11.62, and manner will benefit persons seeking
AGENCY: United States Patent and 11.100 through 11.900 as well as the registration by enabling them to apply at
Trademark Office, Commerce. definitions in proposed rule 11.1 of any time, schedule the examination at a
ACTION: Final rule. terms that are used only in rules in location and date convenient to them,
Subparts B, C and D, USPTO Rules of and receive their results more quickly.
SUMMARY: The United States Patent and
Professional Conduct. Those failing the examination will be
Trademark Office (Office or USPTO) is Time was not extended to comment able to re-take the examination within
updating the procedures regarding upon the provisions in proposed rules approximately thirty days rather than
recognition to practice before the Office 1.1, 1.21(a)(1) through (a)(5), 1.21(a)(10), waiting six months, as has previously
in patent cases. The update is done to 1.31, 1.33(c), 1.455(a), 11.2(a) through been the case.
take advantage of computerized delivery 11.2(b)(3), 11.2(c) through 11.2(e), Applicants for registration will benefit
of examinations, and to enable 11.3(a) and (d), 11.4 through 11.5(a), in several ways from a computerized
registration applicants to benefit in 11.6 through 11.8(c), 11.9(a) through examination. It is now possible to
several ways, including scheduling the 11.9(c) (first sentence), 11.10(a) through deliver the registration examination on
examination a their convenience and 11.10(c) (first sentence), 11.10(d) (first a daily basis by computer. They will be
having more opportunities to take the sentence), 11.10(e) (first and third able to take the examination more
examination. sentences), and 11.11(a), as well as the frequently, get their results sooner, and
DATES: Effective Date: July 26, 2004. definitions in proposed rule 11.1 of be registered sooner. There will be no
FOR FURTHER INFORMATION CONTACT: terms used in the rules. registration application filing deadline.
Harry I. Moatz ((703) 305–9145), The rules adopted at this time apply With more than 400 locations around
Director of Enrollment and Discipline only prospectively. the country where the examination will
At this time, nearly 29,000 be offered each business day, the
(OED Director), directly by phone, or by
individuals are registered as patent examination sites will be conveniently
facsimile to (703) 305–4136, marked to
attorneys and agents, of whom about closer to applicants. Applicants will
the attention of Mr. Moatz, or by mail 80% have indicated that they are also be able to reschedule the
addressed to: Mail Stop OED—Ethics attorneys. Most have been registered by examination.
Rules, U.S. Patent and Trademark taking and passing a paper registration The computerized examination will
Office, P.O. Box 1450, Alexandria, examination that was usually offered be offered beginning with the effective
Virginia 22313–1450. twice a year. The existing rules, adopted date of this rule package. The
SUPPLEMENTARY INFORMATION: The Office in 1985, largely continued the practices examination can be administered each
published proposed rules regarding and procedures adopted and followed business day throughout the year. The
‘‘Changes to Representation of Others since the 1930’s. They were well suited format of the examination will remain
Before The United States Patent and to support delivery of a paper unchanged. The examination will have
Trademark Office’’ on December 12, registration examination twice a year to 100 multiple choice questions—50 in
2003 (68 FR 69442) and provided a several hundred applicants. the morning session and 50 in the
sixty-day comment period that ended on The number of persons seeking afternoon session. During an initial
February 10, 2004. The proposed rules registration has grown from a few period while the Office observes the
included Subpart A, General Provisions, hundred to several thousand annually. implementation of the computerized
Subpart B, Recognition To Practice Giving the examination twice a year examination, applicants will receive
Before The Office, Subpart C, requires biannual filing of thousands of exam results approximately six weeks
Investigations and Disciplinary applications. More than 6,000 persons after electronic testing. Thereafter,
Proceedings, and Subpart D, United filed applications seeking registration in immediate exam results will be
States Patent and Trademark Office 2003. The frequency of giving the provided on-site.
Rules of Professional Conduct. The examination has increased from once Computer-based licensure testing will
Office published in the Federal Register each nine months in the 1970’s to twice not be unique to the Office. A wide
an initial extension on January 29, 2004 annually in the last several years. variety of professional organizations
(69 FR 4269) of the period for public Under the new computerized utilize computer-based testing for their
comment regarding the ethics rules in examination procedure, there are no licensure. For example, both the General
Subpart D of the proposed rules. fixed application deadlines. Securities Representative Examination
Additional time for public comment Applications may be submitted (Series 7), and the Uniform Certified
was allowed for consideration of throughout the year. The applications Public Accountant (CPA) Examination
whether the Rules for Professional will be reviewed, and persons admitted are administered on computers.
Conduct should include the revisions to to the examination will schedule the Applicants will benefit from the
the Model Rules as amended by the examination at their convenience with a program by the elimination of
American Bar Association at the end of commercial entity engaged to deliver application filing deadlines and the new
its February 2002 Midyear Meeting, also the examination. The commercial entity ability to schedule the exam at their
known as the Ethics 2000 revision. The is equipped to provide the exam at over convenience. In the past, the cyclical
Office thereafter published in the 400 locations around the United States. nature of giving the examination twice
Federal Register notice on March 3, A person approved to take the a year was inefficient to both the Office

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Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations 35429

and persons seeking registration. Sections 1.21(a)(6) through 1.21(a)(9) include attorney, belief, conviction,
Invariably, applications were filed late are reserved. crime, Data Sheet, fiscal year, fraud,
and were necessarily disapproved. Section 1.21(a)(10) is added for a fee good moral character and reputation,
Many incomplete applications could not for any of the following: On application knowingly, matter, OED, OED Director,
be completed by the deadline. In short, by a person for recognition or OED Director’s representative, Office,
offering the exam twice a year meant registration after disbarment or practitioner, proceeding before the
that application deficiencies could not suspension on ethical grounds, or Office, reasonable, registration, roster,
be cured until the next time the test was resignation pending disciplinary significant evidence of rehabilitation,
offered—approximately six months proceedings in any other jurisdiction; state, substantial, suspend or
later. on petition for reinstatement by a suspension, United States, and USPTO
Applicants benefit by being able to person excluded or suspended on Director. These terms are used in the
schedule when they want to take the ethical grounds, or excluded on consent rules that address the recognition of
examination. Applicants can schedule from practice before the Office; on individuals to practice before the Office.
the examination date within a ninety- application by a person for recognition An ‘‘application for reissue’’ has been
day period. They can also reschedule or registration who is asserting added to the definition of ‘‘proceeding
the examination on another date within rehabilitation from prior conduct that before the Office’’ to clarify its inclusion
the ninety-day period for any reason. resulted in an adverse decision in the within the definition. ‘‘Other
The old method of paper testing Office regarding the person’s moral jurisdiction’’ has been added to the
required a significant devotion of Office character; and on application by a definition of ‘‘suspend’’ or ‘‘suspension’’
of Enrollment and Discipline (OED) person for recognition or registration to clarify that the terms include
resources during peak periods to after being convicted of a felony or temporary debarring from practice
process and evaluate applications, as crime involving moral turpitude or before the Office or another jurisdiction.
well as process the results. A majority breach of fiduciary duty. For persons Section 11.2: Section 11.2(a) is added
of applicants used to file their suspended or disbarred, the fee applies to provide for the appointment of the
application just prior to or on the to a person after suspension or OED Director.
deadline. Obviously, applicants will be disbarment on ethical grounds, as Section 11.2(b) sets forth the duties of
better served if their examination results opposed to a person suspended on only the OED Director. The duties of the OED
are received more quickly. Those who non-ethical grounds, such as failure to Director include managing the Office of
pass the examination and have no good pay State bar dues or failure to complete Enrollment and Discipline, receiving
moral character and reputation issues continuing legal education
and acting upon applications, and
will be registered sooner. The Office is requirements. The amount of the fee,
conducting investigations concerning
better served by having a less cyclical $1,600, recovers a portion of the average
the moral character and reputation of
exam process. The computerized cost of processing an application filed
individuals seeking registration. The
examination will produce a more even by a person described in this section.
Section 1.31: This section is amended duties also include conducting
flow of new applications for processing. investigations into possible violations
The computerized examination can be to revise the references to §§ 11.6 and
11.9, respectively. by practitioners of Disciplinary Rules,
administered daily, and its results initiating disciplinary proceedings
released more quickly. Section 1.33: Section 1.33(c) is
amended to revise the references to under § 10.132(b) with the consent of
The new rules do not change the the Committee on Discipline, and
scientific and technical training §§ 11.5 and 11.11, respectively.
Section 1.455: This section is performing such other duties in
requirements for registration. connection with investigations and
The new rules change procedures for amended to revise the reference to
§ 11.9. disciplinary proceedings as may be
the examination. These changes will
Title 37 of the Code of Federal necessary. The investigation and
improve the Office’s processes for
Regulations, Part 10, is amended as disciplinary duties recited in § 10.2(b)
handling applications for registration,
follows: have been moved to § 11.2(b)(4) to
petitions, and moral character
Section 10.2: This section is removed consolidate in one section all of the
investigations.
and reserved. OED Director’s duties. The provisions in
Discussion of Specific Rules Section 10.3: This section is removed proposed § 11.2(b)(4) remain subject to
Section 1.1: Section 1.1(a)(5) is added and reserved. comment. The investigation and
Section 10.5: This section is removed disciplinary duties in § 11.2(b)(4) will
to provide an address for
and reserved. be subject to change following the
correspondence directed to OED in Section 10.6: This section is removed
enrollment, registration and comments on proposed § 11.2(b)(4).
and reserved. Sections 11.2(b)(5) through (b)(7) are
investigation matters. Section 10.7: This section is removed
Section 1.21: Section 1.21(a) is added reserved.
and reserved. Section 11.2(c) is added to provide a
to designate the registration Section 10.8: This section is removed
examination fee in paragraph (1)(ii)(A) requirement that any petition from any
and reserved.
for test administration by the Section 10.9: This section is removed action or requirement of the staff of OED
commercial entity, and in paragraph and reserved. reporting to the OED Director shall be
(1)(ii)(B) for test administration by the Section 10.10: This section is taken to the OED Director. A provision
USPTO. removed and reserved. added to the final rule requiring the
Section 1.21(a)(5)(i) is added for a Section 10.11: This section is revised petition to be filed within sixty days
new fee for review by the OED Director by deleting paragraph (a) and deleting from the mailing date of the action or
of an initial decision by a staff member the designation (b) of paragraph (b). notice from which relief is requested
of OED. Title 37 of the Code of Federal clarifies the point in time, not otherwise
Section 1.21(a)(5) has been Regulations, Part 11, is added as provided for in the proposed rule, from
redesignated (a)(5)(ii), and section follows: which the petition must be filed. A fee,
citation of § 10.2(c) is amended to Section 11.1: This section defines required by 37 CFR 1.21(a)(5), would be
§ 11.2(d). terms used in Part 11. The defined terms charged for the petition. A petition not

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35430 Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations

filed within the sixty-day period will be Section 11.6(c) is added to provide for Section 11.7(b)(1)(iii), which
dismissed as untimely. qualifications for limited reciprocal appeared as § 11.7(b)(6) in the proposed
Section 11.2(d) is added to provide for registration of any foreign person who is rules, requires the individual to provide
a petition from a final decision of the registered in good standing before the satisfactory proof of possession of good
OED Director to the USPTO Director. A patent office of the country in which he moral character and reputation.
provision added to the final rule or she resides and practices. Section 11.7(b)(2) is added to provide
requiring the petition to be filed within Section 11.6(d) is added to provide that an individual failing to file a
sixty days from the mailing date of the that the Chief Administrative Patent complete application will be given
final decision of the OED Director Judge or Vice Chief Administrative notice and required to complete the
clarifies the point in time, not otherwise Patent Judge of the Board of Patent application within sixty days of the
provided for in the proposed rule, from Appeals and Interferences will mailing date of the notice. Inasmuch as
which the petition must be filed. The determine whether and the the proposed rule did not specify when
petition must be accompanied by the fee circumstances under which an attorney the sixty-day period began, the final rule
in § 1.21(a)(5). The petition will be who is not registered may take clarifies that the sixty-day period begins
dismissed if not filed within sixty days testimony for an interference under 35 with the mailing date of the notice.
from the mailing date of the final U.S.C. 24, or under § 1.672 of this Individuals filing incomplete
decision of the OED Director. subchapter. applications will not be admitted to the
Section 11.3: Section 11.3 is added to Section 11.7: Sections 11.7(a)(1) and examination. Applications that are
provide for suspension of any 11.7(a)(2) require that an individual incomplete as originally submitted will
requirement of the regulations of Part 11 apply for registration, and establish be considered only when they have
which is not a requirement of the possession of good moral character and been completed and received by OED
statutes in an extraordinary situation, reputation, legal, scientific and within the sixty-day period. Thereafter,
when justice requires. technical qualifications, and a new and complete application must be
competence to advise and assist patent filed to establish an individual’s
Recognition To Practice Before the qualifications and demonstrated intent
applicants.
USPTO to take the examination. A proposed
Section 11.7(b)(1)(i) requires that an
Section 11.4: Section 11.4 is reserved. provision, appearing in proposed
individual file a complete application
Upon further consideration, the Office § 11.7(b)(4) as well as 37 CFR 10.7, and
for registration on a form supplied by
has concluded that it is unnecessary to prohibiting administration of the
the OED Director, pay the fees required
provide for a Committee on Enrollment examination as an academic exercise,
by § 1.21(a)(1), and present satisfactory
and has eliminated it in the rules. The has been revised inasmuch as it did not
proof of sufficient basic training in
Committee’s principal function has been specify the qualifications for admission
scientific and technical matters. Aliens
the vetting of registration examination to the examination. As revised, the
are also required to present affirmative
provision has been moved in the final
questions. Office personnel have been proof that recognition to practice before rules to § 11.7(b)(2). The revision
developing a data bank of questions for the USPTO is not inconsistent with the permits only an individual approved as
the registration examination and terms of their visa or entry into the satisfying the requirements of §§ 11.7
examiner certification test. These United States. The proposed rule (b)(1)(i)(A), 11.7(b)(1)(i)(B),
personnel are not limited to members of provided for filing a complete 11.7(b)(1)(i)(C) and 11.7(b)(1)(i)(D) to be
the Committee. Further, the proposed application for each administration of admitted to the examination.
rules, § 11.7(j), contemplated using the the examination. Inasmuch as the Section 11.7(b)(3), which appeared as
Committee to conduct hearings about an computer delivered examination will be § 11.7(b)(5) in the proposed rules,
individual’s good moral character and administered each business day, requires an individual first reapplying
reputation. The final rules provide an § 11.7(b)(1)(i) has been revised to more than one year after the mailing
individual an opportunity to create a provide that a complete application for date of a notice of failure to again
record, to respond to the OED Director’s registration must be filed each time comply with § 11.7(b)(1) by filing a
show cause order, and to obtain review admission to the examination is complete new application. The
of the OED Director’s decision by requested. proposed rule did not specify the date
petition to the USPTO Director. An Section 11.7(b)(1)(ii), which appeared from which the one year would begin.
individual dissatisfied with the decision as § 11.7(b)(4) in the proposed rules, The final rule, by specifying the mailing
of the OED Director may petition the requires that individuals seeking date of the notice, eliminates
USPTO Director under § 11.2(d) for registration pass the examination unless uncertainty in the proposed rule of the
review of the decision. Accordingly, the the examination is waived as provided starting date of the one-year period.
rules will not provide for or utilize a for in § 11.7(d) to enable the OED Section 11.7(c) provides that each
Committee on Enrollment to conduct a Director to determine whether the individual seeking registration is
hearing for good moral character and individual possesses the required legal responsible for updating all information
reputation determinations. and competence qualifications. Section and answers submitted in or with the
Section 11.5: Section 11.5 is added to 11.7(b)(1)(ii) has been revised to provide application for registration. The
provide for maintaining a single register that an individual failing the application must be updated within
of attorneys and agents registered to examination must wait thirty days after thirty days after the date of the occasion
practice before the Office. the date the individual last took the that necessitates the update. In the
Section 11.6: Section 11.6(a) is added examination before retaking the notice of proposed rule making,
to provide qualifications for attorneys to examination. The revision reduces the § 11.7(c) provided for a petition to the
register to practice before the Office in interval in the proposed rule between OED Director. Proposed § 11.2(c) also
patent matters. opportunities to take and pass the provided for a petition to the OED
Section 11.6(b) is added to provide examination. This section also sets forth Director. The redundancy is
qualifications for non-attorneys to the documents and fees that must be unnecessary and the provision for the
register as patent agents to practice filed by an individual reapplying after petition in § 11.7(c) has been removed
before the Office in patent matters. failing the examination. in the final rules. There were also

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Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations 35431

redundant provisions in §§ 11.7(b)(2) knowledge of patent law. In the Sections 11.7(g)(2) and 11.8(a) in the
and 11.8(c) of the proposed rules position, the individual must have proposed rules address publication of
requiring individuals to update their provided substantial guidance on patent information to solicit information
applications. The provisions have been examination policy, including the bearing on the good moral character and
removed from §§ 11.7(b)(2) and 11.8(c), development of rule or procedure reputation of applicants passing the
and merged into § 11.7(c) in the final changes, patent examination guidelines, examination or seeking recognition. The
rules. changes to the Manual of Patent redundancy has been removed by
Section 11.7(d) is added to provide for Examining Procedure, development of providing for the procedure in § 11.8(a).
waiver of the examination for former training or testing materials for the Sections 11.7(g)(3)(i) and 11.7(g)(3)(ii)
patent examiners and certain other patent examining corps; development of have been renumbered 11.7(g)(2)(i) and
employees. Section 11.7(d)(1) addresses materials for the registration 11.7(g)(2)(ii).
registration of former patent examiners examination or continuing legal Section 11.7(g)(2)(i) requires that the
who by July 26, 2004, had not actively education; or represented the Office in OED Director conduct an investigation
served four years in the patent patent cases before Federal courts. The into the good moral character and
examining corps, and were serving in individual must establish that he or she reputation of an applicant if information
the corps at the time of their separation. was rated at least fully successful in is received ‘‘that reflects adversely’’ on
The examination may be waived if the each quality performance element of his the applicant’s good moral character
individual demonstrates that he or she or her performance plan for said and reputation. The proposed rule
actively served in the patent examining position for the last two complete rating authorized investigation upon receipt of
corps, received a certificate of legal periods in the Office, and was not under information ‘‘tending to reflect’’
competency and negotiation authority, an oral or written warning regarding adversely the good moral character. The
was thereafter rated at least fully performance elements relating to such final rule narrows the circumstances
successful in each quality performance activities at the time of separation from when an investigation should occur.
element of his or her performance plan the Office. Section 11.7(h) is added to provide
for the last two complete fiscal years as Section 11.7(d)(4) limits the eligibility guidance when lack of good moral
a patent examiner, and was not under period for seeking waiver of the character and reputation exists. The
an oral or written warning regarding the provisions relating to felonies and
examination by an individual formerly
quality performance elements at the crimes have been clarified in the final
employed by the Office within the scope
time of separation from the patent rule to reference conviction of a felony,
of §§ 11.7(d)(1), 11.7(d)(2) and
examining corps. For consistency, the conviction of a crime involving moral
11.7(d)(3). An individual filing an
effective date of § 11.7(d) has been turpitude, and a conviction of a crime
application for registration more than
reduced from sixty days indicated in the involving breach of fiduciary duty.
two years after separation from the
proposed rules, to thirty days following Unlike the proposed rule that did not
Office is required to take and pass the
publication of the final rules. provide for conviction of ‘‘a crime,’’ the
registration examination. Employees
Section 11.7(d)(2) is added to address final rule clarifies that a conviction of
and former employees not satisfying the
registration of former patent examiners the respective crimes is evidence of lack
requirements of §§ 11.7(d)(1) through
who on July 26, 2004, had actively of good moral character and reputation.
served four years in the patent 11.7(d)(3) must comply with §§ 11.7(a) Section 11.7(h)(1)(i) provides that an
examining corps, and were serving in and 11.7(b) and take and pass the individual convicted of a felony or any
the corps at the time of their separation. registration examination to be misdemeanor identified in §§ 11.7(h)
The examination may be waived when registered. Therefore, it is redundant to and 11.7(h)(1) is not eligible to apply for
the individual demonstrates that he or include a provision in § 11.7(d)(4) registration during the time of any
she actively served for at least four years requiring compliance with §§ 11.7(a) sentence, deferred adjudication, period
in the patent examining corps of the and 11.7(b). The provision in of probation or parole as a result of the
Office by July 26, 2004, was rated at § 11.7(d)(4) has been removed from the conviction, and for a period of two years
least fully successful in each quality final rule. thereafter. The proposed rule also
performance element of his or her Section 11.7(e) is added to eliminate provided for ineligibility for
performance plan for the last two the regrading of examination answers. registration. The latter provision has
complete fiscal years as a patent The language in the proposed rule has been removed from the final rule
examiner in the Office, and was not been simplified in the final rule. Within because ineligibility to apply for
under an oral or written warning sixty days of the mailing date of a notice registration precludes registration.
regarding the quality performance of failure, the individual is entitled to Pursuant to § 11.3, an individual may
elements at the time of separation from inspect, but not copy, the questions and request waiver of the two-year period
the patent examining corps. answers he or she incorrectly answered. upon showing an extraordinary
Section 11.7(d)(3) is added to address The inspection will occur under situation where justice requires waiver,
registration of certain former Office supervision. Applicants will not be such as when a conviction is
employees who were not serving in the permitted to take any notes relating to overturned.
patent examining corps upon their the questions or answers. Section 11.7(h)(4)(iii) specifies the
separation from the Office. The OED Section 11.7(f) is added to provide defenses available to an individual
Director may waive the registration that applicants seeking reciprocal seeking registration who has been
examination in the case of a former recognition under § 11.6(c) must file an disbarred, suspended on ethical
Office employee meeting the application and pay the application fee grounds, or resigned in lieu of a
requirements of § 11.7(b)(1)(i)(c) who by set forth in § 1.21(a)(1)(i). disciplinary proceeding. The proposed
petition demonstrates possession of the Section 11.7(g) is added to provide for rule did not indicate the purpose of the
necessary legal qualifications. The soliciting information bearing on the defenses. The final rule limits the
former employee must show that as a good moral character and reputation of defenses to an underlying disciplinary
result of having been in a position of individuals seeking recognition, and for matter where the individual contests the
responsibility in the Office, he or she investigation of an individual’s good relevance of the disciplinary matter to
has an equivalent comprehensive moral character and reputation. his or her good moral character and

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reputation. The defenses are the same as requires waiver, such as when a registered under § 11.6 or individuals
those that are available to a practitioner conviction is overturned. given limited recognition under
in a reciprocal disciplinary proceeding. Section 11.8: Section 11.8(a) provides § 11.9(a) or (b) to prosecute patent
Section 11.7(i) identifies factors that for the OED Director to promptly applications of others before the Office.
may be taken into consideration when publish a solicitation for information Individuals granted limited recognition
evaluating rehabilitation of an applicant concerning the individual’s moral under § 11.9(c) may prosecute an
seeking a good moral character character and reputation, including the international patent application only
determination for registration. Section individual’s name, and business or before the United States International
11.7(i)(8), which addresses misconduct communication postal address. Searching Authority and the United
attributable in part to a medically Section 11.8(b) provides procedures States International Preliminary
recognized mental disease, disorder or for registration as a patent attorney or Examining Authority, but may not
illness, is revised to remove a minimum agent, or being granted limited otherwise practice before the Office,
period of time for which recovery must recognition. This section also provides such as in an application filed under 35
be shown, and to provide that letters that within two years of issuance of U.S.C. 111 or 371. Accordingly,
from the treating psychiatrist/ notice of a passing grade on the § 11.10(a) addresses only individuals
psychologist must verify that the registration examination, the granted limited recognition under
medically recognized mental disease, requirements for completion of §§ 11.9(a) or 11.9(b), but not § 11.9(c).
disorder or illness will not impede the registration must be met. An individual Section 11.10(b) is added to set forth
individual’s ability to competently seeking registration as a patent attorney post employment provisions for any
practice before the Office. The change must demonstrate that he or she is a registered former Office employee. The
reflects the Office’s standard for member in good standing with the bar provisions parallel basic restrictions of
recognizing an individual’s recovery of the highest court of a state. 18 U.S.C. 207(a) and (b) on a registered
efforts and a professional’s assessment. Section 11.8(c) provides that an former Office employee acting as
Proposed § 11.7(i)(11) has been removed individual who does not comply with representative or communicating with
as providing a presumption that the requirements of § 11.8(b) within the intent to influence a particular matter in
education equates to ethical conduct. two-year period will be required to which the employee personally
Section 11.7(i)(12) has been revised to retake the registration examination. This participated or for which the employee
remove references to particular provision appeared in § 11.8(a) in the had official responsibility within
programs designed to provide social proposed rules. specified time periods. In addition, the
benefits or ameliorate social problems. Section 11.9: Section 11.9(a) provides provision proscribes the similar conduct
The revision enlarges the scope of for limited recognition of individuals to occurring behind the scenes by
acceptable programs providing the same practice before the Office in a particular prohibiting conduct that ‘‘aids in any
benefits. Proposed §§ 11.7(i)(12) and patent application or patent manner’’ the representation or
11.7(i)(13) have been renumbered as applications. communication with intent to influence.
§§ 11.7(i)(11) and 11.7(i)(12). Section 11.9(b) provides for granting Section 11.10(c) is added to clarify
Section 11.7(j) is added to provide for limited recognition to a nonimmigrant that the restrictions of § 11.10(c) are in
the OED Director to inquire into the alien who resides in the United States addition to those imposed on all
good moral character and reputation of and fulfills the provisions of §§ 11.7(a) Government employees by other statutes
an individual seeking registration, to and (b) if the nonimmigrant is and regulations.
provide the individual with an authorized to be employed or trained in Section 11.10(d) is added to continue
opportunity to respond and create a the United States in the capacity of to prohibit employees of the Office from
record on which a decision is made. The representing a patent applicant by prosecuting or aiding in any manner in
OED Director will consider the response preparing or prosecuting the applicant’s the prosecution of a patent application.
and record, and issue a notice to show patent application. A provision in the Section 11.10(e) is added to make
cause if the OED Director is of the proposed rules, making nonimmigrant clear that practice before the Office by
opinion that an individual has not aliens authorized to receive training Government employees is subject to any
satisfactorily established that he or she ineligible for limited recognition, is applicable conflict of interest laws,
possesses good moral character and withdrawn. Another proposal, limiting regulations or codes of professional
reputation. After a notice to show cause recognition to being granted in responsibility. A statement in the
is issued, the OED Director will increments of one year, has also been proposed rule making, ‘‘noncompliance
consider the record and response filed withdrawn. Limited recognition will be with said conflict of interest laws,
by the individual, and issue a decision granted for a period consistent with the regulations or codes of professional
on whether the individual has sustained terms of authorized employment or responsibility shall constitute
his or her burden. An individual may training. These changes are consistent misconduct under §§ 11.804(b) or
seek review of the OED Director’s with the law, will reduce burdens on 11.804(h)(8),’’ will be separately
decision pursuant to § 11.2(d). applicants, and facilitate administrative addressed when adoption of proposed
Section 11.7(k) is added to set forth procedures. §§ 11.804(b) or 11.804(h)(8) is
conditions for reapplication when an Section 11.9(c) provides for limited considered.
application for registration has been recognition of an individual not Section 11.11: Section 11.11 is added
rejected because of lack of good moral registered under § 11.6 to prosecute an to require a registered practitioner to
character and reputation. An applicant international patent application only notify OED, separately from any notice
may reapply for registration two years before the U.S. International Searching given in any patent application, of the
after the date of the decision denying Authority and the U.S. International business postal address, business e-mail
the individual registration. The Preliminary Examining Authority. address, business telephone number,
application must include the fee Section 11.10: Section 11.10 is added and of every change to any of those
required by § 1.21(a)(10). Pursuant to to address restrictions on practice in addresses or telephone numbers, within
§ 11.3, an individual may request waiver patent matters for former employees of thirty days of the date of the change.
of the two-year period upon showing an the Office. Section 11.10(a) is added to Practitioners who are attorneys in good
extraordinary situation where justice permit only practitioners who are standing with the bar of the highest

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Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations 35433

court of one or more states must provide ascertain that a candidate knows the erroneous action on the part of the OED
the OED Director with the State bar practices, policies, and procedures Director.
identification number associated with applicable to patent prosecution as Response: The suggestion has not
each membership. Further, this section related in the Manual. Only Office been adopted. It is not a penalty to
identifies the information that the OED personnel generate, develop, vet and charge a fee for a petition to review an
Director will routinely publish on the clear the questions for use on the official’s decision. Since 1985 the Office
roster about each registered practitioner examination. The questions and has charged applicants for registration
recognized to practice before the Office answers are carefully checked against and practitioners a petition fee for
in patent cases. the Manual to confirm that there is one review of a variety of decisions by the
Response to comments: The Office correct answer. The Manual will be OED Director. See 37 CFR 1.21(a)(5)
published a notice on December 12, available to candidates on a computer, (imposing a fee for review under
2003, proposing changes to rules by and where they may confirm the § 10.2(c)). The Office also charges for
updating the procedures regarding correctness of the answer they have petitions to review other decisions by
enrollment and discipline, and selected. The Office is the only entity agency officials. See 37 CFR 1.17(h)
introducing new USPTO Rules of that determines whether a question will (imposing a fee for filing a petition
Professional Conduct, largely based on be withdrawn for any reason, or reused. under § 1.295 for review of refusals to
the Model Rules of Professional Thus the Office will continue to publish a statutory invention
Conduct of the American Bar maintain the same high standards for registration, § 1.377 for review of
Association. See Changes to registration. decisions refusing to accept and record
Representation of Others Before the In the past, the examination was payment of a maintenance fee filed prior
United States Patent and Trademark administered twice a year in about 37 to expiration of a patent, and § 1.378(e)
Office, 68 FR 69442 (December 12, cities, whereas the commercial entity for reconsideration of a decision on
2003), 1278 Off. Gaz. Pat. Office 22 can administer the examination each petition refusing to accept delayed
(January 6, 2004) (proposed rule). The business day in over 400 sites. payment of maintenance fee in an
Office received 112 written comments Accordingly, the examination will be expired patent). The $130 fee is
(27 from intellectual property or other more widely available. The total fees for consistent with the fee charged for the
organizations and 85 by patent the computerized examination are $350 foregoing petitions in § 1.17(h).
practitioners) in response to this notice. (the sum of $200 examination The fee is for review of the official’s
The comments regarding the rules development fee charged by the Office, decision and the benefits delivered by
adopted at this time and the Office’s and the $150 fee charged by the the opportunity for review and decision.
responses to the comments follow. commercial entity administering the The fee is not punitive, nor is it a
Comment 1: One comment suggested examination). This is an increase of only sanction against petitioners.
that privatized administration of the $40 over the $310 examination fee Comment 3: Two comments observed
registration examination will result in previously charged by the Office. that the proposal to amend § 1.1(a) by
problems stemming from the introduced The computerized examination adding new paragraph (a)(4), the
profit motive, including increased costs enables candidates to realize a address for correspondence intended for
associated with sitting for the substantial savings for other costs the United States Patent and Trademark
examination, and a decreased quality of associated with the examination. For Office, is based upon an outdated
practitioners allowed to pass the example, expenses that candidates may version of § 1.1(a).
examination. The comment opined that have incurred traveling to 37 cities to Response: The suggestion has been
the profit motive will result in a take the examination should be adopted. The provisions of § 1.1 have
degradation of the examination process significantly reduced or eliminated with been revised to remove the reference to
itself and of the examination results if more test facilities available on a daily paragraph (a)(2), and to change the
the private tester reduces manpower basis. Scheduling will also be more numbering of proposed paragraph (a)(4)
and materials required to effectively convenient for candidates. They can to (a)(5).
administer the exam. schedule the examination anytime Comment 4: One comment suggested
Response: To the extent the comment within a set ninety-day period at the that § 1.31 be amended to recognize the
is suggesting that the Office maintain commercial entity’s testing site closest situation in which joint applicants
the status quo for the examination to their home or office. They can also choose to file and prosecute their own
procedure, the suggestion has not been arrange with the commercial entity to case before the USPTO.
adopted. The commercial entity will be reschedule the examination within the Response: The suggestion is not
responsible only for computer-based same ninety-day period. adopted with this rule. The matter is
administration of the examination. The Office will also offer applicants addressed in another rule titled
Candidates will continue to apply to the option of taking a paper examination ‘‘Clarification of Power of Attorney
OED, which will continue to review administered by the Office once a year. Practice, and Revisions to Assignment
applications and grant approval to sit The fee for the Office-administered Rules,’’ RIN 0651–AB63. This final rule
for the examination only to persons paper examination will be $450. has been submitted to the Federal
possessing the necessary scientific and Inasmuch as one paper examination was Register for publication at this time.
technical training qualifications. The already administered in fiscal year 2004, Comment 5: One comment suggested
Office retains complete control over (1) the OED Director will announce when for clarity, each definition in § 11.1
the qualifications of the candidates, (2) the Office will offer a paper should be separately numbered, e.g. by
determining each candidate’s moral examination. (1), (2) * * *, etc., to facilitate citation
character, (3) the content of the Comment 2: One comment suggested of each definition.
examination, and (4) the qualifications that the $130 petition fee for review of Response: The suggestion has not
to pass the examination. The USPTO any decision of the OED Director not be been adopted. The omission of
will continue to set the passing score. adopted because it is an inequitable paragraph numbers facilitates the ease
The USPTO will maintain control over monetary penalty imposed upon a of addition or deletion of definitions in
the development and content of the practitioner for the privilege of seeking § 11.1 without having to renumber the
examination. The questions seek to review of what may very well be an definitions if their position in the list of

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35434 Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations

definitions changes. The definitions will that ‘‘an individual assents to the truth Director must recuse himself or herself
be maintained in alphabetical order to of something offered for acceptance and from a case.
facilitate citation and location of each that the individual’s belief may be Response: The suggestion has been
definition. inferred from factual circumstances.’’ adopted. The second sentence has been
Comment 6: One comment suggested Response: The suggestion has not amended to read ‘‘In the event of the
that the definition of ‘‘good moral been adopted. The definition comes absence of the OED Director or a
character’’ appearing in the first from the Model Rules of Professional vacancy in the Office of the OED
sentence of § 11.7(h) be moved to § 11.1 Conduct of the American Bar Director, or in the event that the OED
because the term is used in a number of Association. One of the purposes of Director recuses himself or herself from
other proposed rules without reference generally conforming the USPTO rules a case, the USPTO Director may * * *.’’
to the definition in § 11.7(h). Therefore to the Model Rules is that those rules The appointment would contain any
a person reading a rule other than have been widely adopted by states. As necessary directions limiting the Acting
§ 11.7(h) may not know that the term a result, decisional law through state OED Director’s authority to act only in
had been defined in § 11.7(h) and would auspices should facilitate the the matter from which the OED Director
naturally seek the definition in § 11.1. development of a body of case law that is recused.
Response: The suggestion has been will help provide practitioners guidance Comment 12: Two comments
adopted. The first sentence of § 11.7(h) on the meaning of terms that are suggested that § 11.2(c) be modified to
defining ‘‘good moral character and necessarily broad because they need to change the proposed one-month period
reputation’’ has been moved to § 11.1. cover a variety of circumstances. At this in § 11.2(c) to two months, and one
Comment 7: One comment pointed time, no change will be made while comment suggested that no fee be
out that, although proposed Sec 11.1 comments continue to be received required to be consistent with 37 CFR
defined ‘‘application’’ as a patent or regarding the proposed professional 1.181. A third comment suggested that
trademark application, the term conduct rules. the proposed one-month period be
‘‘application’’ is also used in proposed Comment 9: One comment opined increased to ninety days.
§§ 11.2, 11.7, 11.8, 11.10 and 11.11 to that the definitions of ‘‘fraud’’ or Response: The suggestion has been
refer to an application for registration. It ‘‘fraudulent’’ and the terms adopted in part. The thirty-day period
was suggested that the phrase ‘‘knowingly,’’ ‘‘known,’’ or ‘‘knows’’ in for filing a petition has been enlarged to
‘‘application for registration’’ be defined § 11.1 can be clarified. The definition of sixty days. Charging a fee is consistent
in § 11.1 and be the term that is used in ‘‘fraud’’ or ‘‘fraudulent,’’ as ‘‘failure to with the provisions of 37 CFR 1.181(d).
§§ 11.2(b)(2), 11.7(b)(1)(i), 11.7(f), apprise another of relevant information’’ As the staff of OED with respect to
11.7(j)(1), 11.7(j)(3), 11.8(c), 11.10 and could encompass a deceit which under individual cases generally exercises
11.11. The latter section uses the term the definition would not constitute independent judgment, charging a fee
‘‘application,’’ and the definition of fraud or a fraudulent act, and suggested for review of that judgment by the OED
‘‘application’’ includes only patent and that the terms be tailored to practice Director is in keeping with
trademark applications. Introduction before the Office in light of 37 CFR 1.56, circumstances under which the USPTO
and use of the term ‘‘application for and that they be defined as ‘‘conduct generally charges fees for consideration
registration’’ would avoid confusion having a purpose to deceive, and not of petitions. The decisions address the
with ‘‘application.’’ merely negligent misrepresentation or merits of a variety of situations,
Response: The suggestion has been negligent failure to apprise another of including, but not limited to,
adopted in part. The term ‘‘application relevant information.’’ It was suggested incompleteness of applications for
for registration’’ need not be defined in that the definition of ‘‘knowingly,’’ registration, scientific and technical
§ 11.1, but the term has replaced ‘‘known,’’ or ‘‘knows’’ as ‘‘inferred from qualifications, and refunds. The Office
‘‘application’’ in §§ 11.2(b)(2), circumstances’’ is not understood, and charges fees for review of decisions by
11.7(b)(1)(i), 11.7(f), and 11.7(j). that the definition be replaced with the other officials in a variety of situations.
Inasmuch as there is no reference to an phrase ‘‘inferred from circumstantial See, for example, the fees charged in 37
‘‘application for registration’’ in § 11.8(c) evidence.’’ CFR 1.17(h) for petitions under § 1.295
as amended, and § 11.10, it was not Response: The suggestions have not (for review of refusal to publish a
necessary to modify ‘‘application’’ in been adopted. The definitions come statutory invention registration),
this manner. The suggestion as to from the Model Rules of Professional petitions under § 1.377 (for review of
proposed §§ 11.7(j)(1) and 11.7(j)(3) is Conduct of the American Bar decision refusing to accept and record
now moot inasmuch as they are not Association. At this time, no change payment of a maintenance fee filed prior
adopted. Section 11.11 addresses the will be made while comments continue to expiration of a patent), petitions
necessity for registered practitioners to to be received regarding the proposed under § 1.378(e) (for reconsideration of
separately provide written notice to the professional conduct rules. a decision on petition refusing to accept
OED Director in addition to any notice Comment 10: One comment suggested delayed payment of maintenance fee in
of change of address and telephone that the definitions of ‘‘suspended or an expired patent), and petitions under
number filed in individual applications. excluded practitioner,’’ and ‘‘non- §§ 1.644(e) and 1.166(f) (in an
Therefore, where an introductory practitioner’’ be separated out of the interference and for requesting
reference to an ‘‘application’’ occurs in definition of ‘‘practitioner’’ to facilitate reconsideration of a decision on
§§ 11.10 and 11.11, the term ease of finding the definitions. petition).
‘‘application’’ has been modified with Response. The suggestion has been Comment 13: Two comments
‘‘patent.’’ adopted in part. The definitions of suggested that if a fee is charged under
Comment 8: One comment suggested ‘‘suspended or excluded practitioner,’’ § 11.2 for filing a petition, it should be
that the definition of ‘‘belief’’ or and ‘‘nonpractitioner’’ have been refunded if it is determined that the
‘‘believes’’ in § 11.1 is indefinite because separated from ‘‘practitioner,’’ and are OED Director acted improperly.
the meaning of phrases ‘‘actually not included in this rule. Response: The suggestion has not
supposed’’ and ‘‘inferred from Comment 11: One comment suggested been adopted. A petition seeks a
circumstances’’ are not clear, and urged that § 11.2(a) provide for appointment of determination that a decision should be
that the terms be defined as meaning an acting Director where the OED reversed or modified. Such a

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determination is obtained by the Director cannot reasonably risk loss of seek reconsideration is consistent with
decision on petition. Under 35 U.S.C. the right of appeal. the time available to seek review.
42(d), the Director is authorized to Response: The suggestion has been Comment 18: One comment suggested
refund any fee paid in excess of the adopted in part. All reference to a that the term ‘‘one OED Director’’ in
amount required, or that is paid by request for reconsideration has been § 11.2(e) be revised to read ‘‘former OED
mistake. Upon receiving a decision, the removed from § 11.2(c). The fourth Director or an acting OED Director’’ to
petitioner who has paid the amount sentence of § 11.2(c) has been amended provide clarity.
required is not entitled to a refund of to clarify that ‘‘[a] final decision by the Response: The suggestion is moot
the petition fee inasmuch as the fee was OED Director may be reviewed in since proposed § 11.2(e) has not been
not paid by mistake or in excess. The accordance with the provisions of’’ adopted.
fee, like other petition fees charged by § 11.2(d). Comment 19: One comment suggested
the Office, is designed to support the Comment 17: Two comments that inasmuch as § 11.3(a) does not
agency’s cost of the procedure. The suggested that the thirty-day time define the phrase ‘‘OED Director’s
petitioner obtained that which he or she periods set in § 11.2 should be representative,’’ reference be made to
sought, the determination. increased. One comment suggested that proposed § 11.40(b) and the phrase be
Comment 14: One comment suggested the Office, absent a compelling reason, defined in § 11.1.
that the third sentence of § 11.2(c) be consider setting a uniform period in Response: The suggestion has been
deleted because it would discourage §§ 11.2(d) and 11.2(e), for example, the adopted in part. Section 11.1 has been
individuals who seek registration from two-month period found in 37 CFR revised to include a definition of the
filing legitimate appeals of an improper 1.181, for filing a petition to any USPTO OED Director’s representative. It is
decision of an OED staff member, while official seeking review of an action unnecessary to reference § 11.40(b).
not providing any assurance that a taken by the USPTO and seeking Comment 20: Five comments
decision by the OED Director would be reconsideration. Another comment suggested that the provisions in
promptly decided to avoid interfering suggested that the time in § 11.2(d) be proposed § 11.3(d) regarding qualified
with rights of the petitioner or applicant increased to ninety days and be immunity not be adopted because the
for registration; and if kept, the phrase extendable to one hundred twenty days present rules provide sufficient
‘‘other proceedings’’ be defined. to provide due process. safeguards, and the proposal may
Response: The suggestion has been Response: The suggestion to adopt a encourage Office employees to file
adopted in part. The third sentence has uniform period has been adopted in frivolous complaints.
been amended to delete ‘‘including the part, but the suggestion that the period Response: The suggestion has been
timely filing of an application for be extendable has not been adopted. adopted. Some states provide by
registration,’’ as being unnecessary. The Section 11.2(d) has been revised to refer regulation the proposed safeguards.
third sentence now states ‘‘[t]he filing of to a sixty-day period for filing a petition However, upon further reflection, it is
a petition will not stay the period for from a final decision of the OED believed that adequate safeguards are
taking other action which may be Director. Section 11.2(d) provides that already available. Accordingly, the
running, or stay other proceedings.’’ The ‘‘[a]ny petition not filed within sixty proposed § 11.3(d) has not been
language in the third sentence of days from the mailing date of the final adopted.
§ 11.2(c), including ‘‘other decision of the OED Director will be Comment 21: One comment suggested
proceedings,’’ corresponds substantially dismissed as untimely.’’ A thirty-day several reasons why the USPTO Director
to the language of the first sentence of period is provided for filing a request should draw on persons who are not
37 CFR 1.181(f). Inasmuch as the third for reconsideration. The penultimate employees of the USPTO to serve on the
sentence now corresponds substantially sentence of § 11.2(d) provides that a Committee of Enrollment.
to the first section of § 1.181(f), it is ‘‘request for reconsideration of the Response: The suggestion is now
believed that the third sentence will not decision of the USPTO Director will be moot since § 11.4(a), which proposed
discourage the filing of legitimate dismissed as untimely if not filed the use of the Committee on Enrollment
appeals. On the contrary, the third within thirty days from the mailing date in ‘‘good moral character and
sentence encourages all applicants for of said decision.’’ Section 11.2(e) has reputation’’ determinations has been
registration to pursue legitimate actions been deleted. deleted from § 11.7. Determining the
that are not stayed by the filing of a The sixty-day period is independent content of the examination is an
petition. of the different lengths of the months, inherently governmental function that
Comment 15: One comment suggested and provides consistency. The sixty-day cannot be assigned to non-governmental
that the fourth sentence of § 11.2(c) be period has been adopted wherever employees.
revised to state that ‘‘[a]ny request for possible. Sixty days is substantially the Comment 22: One comment suggested
reconsideration of the OED Director’s same time period provided for in that in view of provisions in the North
decision waives a right to appeal § 1.181, and thereby provides sufficient American Free Trade Agreement
* * *.’’ time to permit individuals and (NAFTA), Canadian citizens should be
Response: The suggestion is now practitioners to determine whether they entitled to registration under the
moot since all reference to a request for will seek review by petition and to proposed §§ 11.6(a) or 11.6(b) in the
reconsideration has been removed from prepare a petition. same manner as United States citizens.
§ 11.2(c) as further discussed in A thirty-day period is adopted for Response: The suggestion has not
response to Comment 16. requesting reconsideration of the been adopted. The provisions of NAFTA
Comment 16: Two comments USPTO Director’s decision. Under 35 provide for each Party to accord no less
suggested that the fourth sentence of U.S.C. 32, the United States District favorable treatment to another party
§ 11.2(c) be deleted because it is Court for the District of Columbia than that it accords, in like
punitive, unnecessary, denies due reviews a decision refusing to recognize circumstances, to its own service
process, and encourages numerous or suspending or excluding an providers, including representation in
unnecessary appeals to the USPTO individual upon petition filed within patent applications. The NAFTA
Director because a practitioner thirty days of the decision. Providing an Services Chapter did envisage phaseout
dissatisfied with a decision of the OED individual the same thirty-day period to of nationality requirements for patent

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35436 Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations

attorneys and agents. However, neither material respects, practice before the technical background. Persons seeking
Party has phased out the nationality USPTO is considerably different from registration under § 11.6(c) must
requirement. Under the treaty, the only practice before the Canadian Patent demonstrate that they possess the
recourse for failure to do so is for other Office (and other patent offices). ‘‘qualifications stated in § 11.7,’’ which
Parties to maintain their requirements. Response: The suggestion has not includes the scientific and technical
At this time, the USPTO, in accordance been adopted. Since about 1934, the training requirements of § 11.7(a)(2)(ii).
with the treaty, continues to maintain USPTO and Canadian Patent Office The same is required under current 37
its requirements, and need not act have provided for reciprocal recognition CFR 10.6(c) and 10.7(a)(2)(ii).
unilaterally. See NAFTA Art. 1210.3 (no of each other’s registered attorneys and Comment 28: One comment pointed
penalty for phaseout). agents. Neither Office has required the out that although the commentary at 68
Comment 23: One comment suggested attorneys and agents of the other Office Fed. Reg. at 69446 stated that
that any non-immigrant alien who is to take and pass their registration ‘‘[p]aragraph (a)(3) of § 11.7 would
resident in the United States and who examination. Moreover, the Canadian explicitly place the burden of proof of
has passed the USPTO registration exam Patent Office does not require that good moral character and reputation on
should be eligible to be registered and persons registered to practice before the the applicant, and provide ‘clear and
remain registered under 37 CFR 11.6(a) USPTO complete a period of service in convincing’ as the standard of proof,’’
or (b) for as long as he or she remains the Canadian Patent Office or work in there is no paragraph (a)(3) in § 11.7
resident in the United States. Canada in the area of Canadian patent corresponding to this statement, and
Response: The suggestion has not law, or take the Canadian qualifying suggested that commentary conform
been adopted. Pursuant to 35 U.S.C. examination prior to registration. with the rules.
2(b)(2)(D), persons seeking registration Comment 26: One comment suggested Response: The comment is correct
must demonstrate that they are of good that § 11.6(d) should also include public that § 11.7 does not include paragraph
moral character and reputation. use proceedings under 37 CFR 1.292 (a)(3). Section 11.7(b)(1)(iii) establishes
Empowering nonimmigrant aliens to since these proceedings, like the burden of proof and requires an
engage in employment or training interference proceedings, allow the individual to ‘‘provide satisfactory proof
contrary to their status under the taking of testimony which could be of possession of good moral character
immigration laws would be inconsistent done by unregistered attorneys. and reputation.’’ Individuals seeking
with the requirement that they possess Response: The suggestion has not registration have been required by
good moral character. USPTO’s been adopted. The provisions of current 37 CFR 10.7(a)(2)(i), and its
registration should not create the § 11.6(d) empower the Chief predecessor rules, to establish to the
occasion for violation of the Administrative Patent Judge or Vice ‘‘satisfaction’’ of the Director that they
immigration laws. Chief Administrative Patent Judge of the are of good moral character and
Comment 24: One comment suggested Board of Patent Appeals and reputation. This is unchanged by the
that § 11.6 be modified to strip away all Interferences to determine whether and new rules and may be met in most
citizenship requirements against a the circumstances under which an instances by candid answers to all
prospective patent attorney or agent to attorney who is not registered may take questions in the application for
be registered—or for an existing patent testimony for an interference under 35 registration, and production of complete
attorney or agent to maintain his or her U.S.C. 24, or under § 1.672. Unlike explanations and required documents in
registration. interference proceedings, the taking of accordance with instructions included
Response: The suggestion has not testimony for a public use proceeding in the application. The Office plans to
been adopted. Foreign patent attorneys does not occur under the authority of adopt an application form containing
and agents may be registered to practice the Board of Patent Appeals and substantially the same questions that
before the Office in patent cases upon Interferences. The USPTO Director may attorneys commonly answer in State bar
compliance with the provisions of designate an appropriate official to applications. Thus, attorneys will
§ 11.6(c). Under § 11.6(c), registration is conduct the public use proceeding, and submit substantially the same
available if the patent office, where the the official may set the time for taking questionnaire for the State bar, and
foreign attorney or agent is registered testimony. See 37 CFR 1.292. The OED agents will fill out this questionnaire for
and resides, grants substantially Director, in consultation with the the first time.
reciprocal privileges to practitioners designated official, may authorize an Comment 29: One comment suggested
registered to practice before the Office. unregistered attorney to take testimony that the terms or phrases ‘‘a form
At this time, only the Canadian Patent for a public use proceeding. supplied by the OED Director,’’
Office is recognized as providing Accordingly, the authority cannot be ‘‘application for admission,’’
substantially reciprocal privileges, and placed on the Chief Administrative ‘‘registration application,’’ ‘‘complete
practitioners registered by both offices Patent Judge or Vice Chief application,’’ ‘‘applications,’’
benefit from the reciprocal recognition. Administrative Patent Judge of the ‘‘application,’’ ‘‘application form,’’ and
Practitioners in other countries may Board of Patent Appeals and ‘‘application form supplied by the OED
similarly benefit if the provisions of Interferences to administer the taking of Director’’ in § 11.7 be replaced by
§ 11.6(c) are satisfied. depositions in public use proceedings. ‘‘application for registration’’ to provide
Comment 25: One comment suggested Comment 27: One comment said that clarity and consistency. It also suggested
that any individual registered under the Office admits to practice whole that the phrase ‘‘complete application’’
proposed § 11.6(c) should be required to categories of lawyers who are not wherever it is used in the proposed
pass the USPTO’s registration possessed of the required technical rules be changed to be ‘‘complete
examination since this section does not background. Although no category of application for registration’’ for
require familiarity with the USPTO’s lawyers was specified, the comment consistency in terms.
rules and procedures. The examination refers to practitioners registered under Response: The suggestions have been
assures that all registered individuals the current provisions of 37 CFR 10.6(c). adopted. Inasmuch as the terms or
are fully competent to act in patent Response: All individuals admitted to phrases ‘‘a form supplied by the OED
matters before the USPTO. The practice must demonstrate that they Director,’’ ‘‘application for admission,’’
commenter observed that in many possess the required scientific and ‘‘registration application,’’ ‘‘complete

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application,’’ ‘‘application,’’ Comment 31: One comment suggested Comment 33: One comment suggested
‘‘applications,’’ ‘‘application form,’’ and that the questions on the proposed that before admitting an individual to
‘‘application form supplied by the OED examination not be publicly available the registration examination, the
Director’’ all reference the application because if questions are reused, it would individual should be required to
for registration, and the components of be possible to simply memorize the complete a minimum period of
a complete application for registration publicly available questions and apprenticeship or work involving the
are set forth in the provisions of answers, and the examination would preparation and prosecution of patent
§ 11.7(b), the terms and phrases have not measure a person’s legal and applications before the USPTO under
been replaced as suggested. The change technical competence. Another the supervision of one or more
also distinguishes the application for comment was to assure that the registered practitioners, that only
registration from patent and trademark examination include questions covering practitioners registered for at least a
applications when the term 35 U.S.C. 101, 102, 103 and 112. certain number of years should be
‘‘application’’ is used in other rules. Response: The suggestions are noted. deemed competent to provide such
Comment 30: One comment suggested The comments in the proposed rules supervision, and that compliance be
that if registration is to continue and to regarding § 1.21 stated that the data verified by requiring a written
fulfill the statutorily required bank of questions and answers would be declaration from the candidate and a
qualifications of drafting patent publicly available. However, the registered practitioner supervisor.
applications and claims the OED must comments for § 11.7(e) said that it Response: The suggestion has not
reinstate the essay question format that would be necessary to cease publication been adopted. Between 1922 and 1934,
required demonstration of claim of the questions and the corresponding registration applicants demonstrated
drafting skills as an integral part of the answers to reuse questions, and reduce their qualifications by submitting
examination. pressure on the Office staff, as well as evidence of experience in patent work,
preserve the fairness of the test for later such as patent prosecution. Non-
Response: The suggestion has not
applicants. Any confusion resulting attorneys were required to show three
been adopted. Regardless of the efforts
from these statements is regretted. The years of experience preparing and
taken to establish standards for grading
data bank of questions and answers will prosecuting patent applications under
essay examinations, the process of
not be published or otherwise made the guidance of a registered patent
grading essays remains subjective and
available to the public. The registration attorney. Attorneys were required to
subject to heightened dispute. Grading examination will utilize a data bank of
an essay examination is an expensive, show actual work experience in patent
multiple choice questions that can be
time-consuming, resource-intensive prosecution, but the experience was not
reused in subsequent examinations.
program requiring diversion of the required to extend over any particular
Further, everyone practicing in patent
Office’s employees to provide a period. The showing of experience was
cases before the Office must be familiar
subjective evaluation. Grading essay ordinarily made by affidavit of the
with the provisions of 35 U.S.C. 101,
examinations inevitably creates registered practitioner under whom the
102, 103 and 112. Accordingly, the
uncertainties and the potential for applicant had worked.
examination will include questions
subjectivity in test answer evaluation. covering these sections. The procedure was administratively
Processing and evaluating 6000 essays Comment 32: One comment suggested difficult due, in part, to the lack of any
would require a massive commitment of that there should be two or more objective standards. It is understood that
USPTO resources without a questions that contain drawings in every Congressional correspondence on behalf
concomitant benefit to the patent examination to demonstrate that of individual applicants was
system. In contrast, both candidates for persons who pass the examination are voluminous. Commissioner Robertson,
registration and the Office benefit from competent to assist patent applicants by in a 1933 report termed the registration
a multiple choice examination. A the ability to read and understand system based upon submission of
multiple choice examination is simple drawings, patents and technical affidavits as neither reliable nor
objectively graded. Moreover, multiple publications. The comment suggested satisfactory. Commissioner Robertson
choice examinations, unlike essay that an examination without drawings regarded the applicant’s showing of
examinations, cover a broader multitude does not fulfill § 11.7(a)(4). ‘‘several examples of his ability to
of topics and elicit the candidate’s Response: The suggestion has not prosecute a patent application’’ as
ability to distinguish correct from been adopted at this time. Presumably, ‘‘perfunctory’’ and ‘‘certainly not
incorrect practices, policies, and the comment is referencing sufficient.’’ Additionally, the
procedures as well as addressing § 11.7(a)(2)(iii) as there is no § 11.7(a)(4) Commissioner cited the required
application and claim drafting. Multiple in the proposed rules. A drawing is not affidavit as being ‘‘subject to the great
choice examinations may be necessary to understand the claimed weakness of friendship between
administered more frequently than subject matter of every application as attorneys and the applicant,’’ and that
essay examinations, thereby increasing drawings are only required for an ‘‘established attorney hesitates to
the opportunity for registration. The applications ‘‘where necessary for the refuse to make an affidavit as to
passing rate over the past five years has understanding of the subject matter competency of one of his employees
ranged between 37% and 72%, and the sought to be patented.’’ 35 U.S.C. 113. who is ambitious and is striving to
overall average passing rate was 53.6%. Thus, inclusion of one or two drawings climb the ladder of success.’’ The
Despite the fact that in the same period is not required for the examination to practice was ended in 1934 with the
prior examinations were made public test whether the persons passing the introduction of the registration
and some questions were reused, the examination are capable of rendering examination. It would be difficult to
multiple choice examination has not competent assistance to patent avoid the weaknesses in the
become a means to become registered by applicants. Nevertheless, consideration apprenticeship system employed prior
memorization. On the contrary, the is being given to the development of to 1934 if the Office were to adopt the
examination provides a reasonable questions having drawings for inclusion proposed apprenticeship or work
means for safeguarding the public from in future computer-delivered system, even when coupled with the
incompetent representation. registration examinations. registration examination.

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Comment 34: Two comments Obviously, a technical center group by passing the registration examination
suggested that the location of § 11.7(c) director who never was a patent as a result of having been in a position
seems to be out of place in the sequence examiner is not within the scope of of responsibility in the Office, that they
of other provisions. One suggested that §§ 11.7(d)(1) or (d)(2). Similarly, a are rated at least fully successful in each
it should be located just before the special program examiner is not in the quality performance element of their
hearing provision in § 11.7(j). patent examining corps, and is not performance plans, and are not under an
Response: The suggestion has been subject to the provisions of §§ 11.7(d)(1) oral warning regarding performance
adopted in part. The petition provision or (d)(2). However, they would be elements relating to such activities at
in proposed § 11.7(c) is redundant with among the ‘‘certain former Office the time of separation from the Office.
the petition provision in § 11.2(c). employees’’ addressed in § 11.7(d)(3) for Moreover, waiver of the examination is
Accordingly, the provision for petitions whom waiver of the examination and not automatic; it is in the discretion of
in proposed § 11.7(c) is unnecessary, registration is available upon a the OED Director. For that purpose the
and has been removed from this section, satisfactory showing of the qualifying second sentence in each of §§ 11.7(d)(1),
and retained in § 11.2(c). Sections conditions set forth in § 11.7(d)(3). 11.7(d)(2) and 11.7(d)(3) have been
11.7(b)(2) and 11.8(c) each addressed Comment 37: One comment suggested revised by replacing the term ‘‘would’’
the necessity for an individual seeking that examining technical center with the term ‘‘may.’’ Further,
recognition to update his or her directors, special program examiners, §§ 11.7(d)(1) and 11.7(d)(2) are revised
application for registration. These individuals who served as Assistant to delete §§ 11.7(d)(1)(v) and
provisions have been merged and Commissioners for Patents, and 11.7(d)(2)(iv), which provided for
moved into § 11.7(c). administrative patent law judges at the waiver of the criteria of these sections
Comment 35: One comment suggested Board of Patent Appeals and upon a showing of good cause. Any
that § 11.7(d) be subtitled ‘‘Waiver of the Interferences who have not ‘‘actively individuals believing the requirements
registration examination for former served’’ in the examining corps should of §§ 11.7(d)(1) or 11.7(d)(2) should be
Office employees’’ followed by be exempt from making a showing waived may avail themselves of the
subsections (1), (2), etc., to immediately under § 11.7(d)(3) of possessing legal provisions of § 11.3, which provides the
apprise the reader that the rule is qualifications to render to patent standard for suspension of any
directed to waiver of the registration applicants and others valuable service requirement of the regulations in Part 11
examination for former PTO employees. in the preparation and prosecution of that is not a requirement of statute.
Response: The suggestion has been patent applications. In contrast, three Waiver of the examination is not
adopted. The revision would apprise comments suggested that the proposal automatic for former patent examiners.
individuals who never served in the in § 11.7(d)(3) to exempt certain USPTO Former patent examiners have been
Office that the provisions of § 11.7(d) do employees from the registration required to take the examination where
not pertain to them. examination not be adopted. The latter there is evidence that they did not
Comment 36: One comment suggested comments opined that Office employees possess the legal qualifications to render
that the phrase ‘‘actively served’’ in are only skilled in the application of patent applicants and others valuable
§§ 11.7(d)(1), (d)(2), and (d)(3) be rules concerning patentability, have not service in the preparation and
defined to resolve whether a person is practiced patent law, and have no prosecution of patent applications. See
a ‘‘patent examiner’’ who has or has not training how to properly describe and Legal01 decision in the FOIA Reading
‘‘actively served’’ in the examining claim an invention. One of the latter Room of the Office Web site at
corps. The metes and bounds of comments suggested that the period of www.uspto.gov/web/offices/com/sol/
‘‘actively served’’ are not immediately service in the Office be extended to five foia/oed/legal/legal.htm. The same will
apparent. The commenter suggested that years to ensure broad experience. apply to former Office employees in all
the definition would resolve whether Response: The suggestions have not positions. The public and Office must
the examination would be waived for a been adopted. Many individuals in the be assured that the examination is
former examining technical center foregoing positions supervise patent waived only in appropriate
director who never served as a patent examiners and/or have authority to circumstances. Accordingly, § 11.7(d)
examiner, but served more than four review and reverse decisions of patent requires comprehensive knowledge of
years as group director at the time of examiners. These individuals have an patent law equivalent to that shown by
separation from the examining corps, or opportunity to demonstrate possession passing the registration examination,
for a special program examiner who was of legal qualifications to render patent that the individual be rated at least fully
not a patent examiner, but who served applicants and others valuable service successful in each quality performance
more than four years in the examining in the preparation and prosecution of element of his or her performance plan
corps at the time of separation from the patent applications. Their positions in for their position for the last two
Office. the Office have exposed them to proper complete rating periods in the Office,
Response: The suggestion has not description and claim practices, and and that the individual not be under an
been adopted. The practice of waiving given them the opportunity to evaluate oral warning regarding performance
the examination for persons who the practices. Further, their positions elements relating to such activities at
actively served in the patent examining and responsibilities enable them to the time of separation from the Office.
corps is well established. ‘‘Actively readily find answers in the Manual of Comment 38: One comment inquired
served’’ is not a new term of art. It has Patent Examining Procedure, rules and whether administrative patent judges at
been used in predecessor rules since at laws. the Board of Patent Appeals and
least 1959. See 37 CFR 10.7(b) (1985), Mere qualification based on years of Interferences would qualify for
and 37 CFR 1.341(c) (1959). ‘‘Actively service in a position has not and should registration under § 11.7(d)(3)(i)(A)
served’’ is found only in §§ 11.7(d)(1) not be the standard for waiver of the when they leave the Office and wish to
and (d)(2), and is used in its ordinary examination. Accordingly, § 11.7(d)(3) be registered to practice, and suggested
sense. §§ 11.7(d)(1) and (d)(2) apply to requires that certain former Office a section be added to § 11.7 that would
only former examiners who were employees show that they have cover Administrative Patent Judges.
serving in the patent examining corps at exhibited a comprehensive knowledge Response: This suggestion has not
the time of their separation from service. of patent law equivalent to that shown been adopted. Upon leaving the Office

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administrative patent judges may be it again in thirty days. The benefit to results of each question in the top fifty
registered under the provisions of applicants of providing frequent percentile with the bottom fifty
§ 11.7(d)(3)(i)(A). examinations outweighs the costs of percentile of applicants, and shows the
Comment 39: Four comments eliminating regrades. It typically relative difficulty of each question. For
suggested that § 11.7(e) not be adopted. requires several months for regrade example, as in the past, where a
Three of the comments suggested that results to be released. An applicant who psychometrically significant number of
the Office continue to permit retakes and passes the examination may applicants passing the examination
substantive review and regrading of be registered in less time than it would select an incorrect answer to a question,
registration examinations. One comment have taken to obtain the regrade result. the question is subject to content review
suggested that perhaps applicants Limiting access to the questions will by the Office. This corresponds to the
would be willing to entertain a slightly not deny the unsuccessful applicant internal review conducted by eleven
higher examination cost to maintain the equal protection of the laws. The states before publication of their bar
current system. Another comment said Multistate Bar Examination (MBE), like exam results. This final statistical
that the proposed process could be the registration examination, is a review is conducted to ensure that each
punitive. Two comments said denial of multiple choice examination. Questions question is accurate and
regrades would prevent applicants from on the MBE are reused in later years. psychometrically sound. Based upon
receiving due process if a question is Inasmuch as some of the questions the review, corrective action may be
incorrectly graded. In contrast, another appear in following years, the questions warranted, including withdrawal of the
comment said that while the must be kept secret in order to preserve question. The questions are all
elimination of regrades perhaps meets the fairness of the test for later objective-based, selected-response
the minimal requirements to pass applicants. See Fields v. Kelly, 986 F.2d items. Some questions have been used
muster under law, the provisions of 225, 227 (8th Cir. 1993). An in previous versions of the exam. Over
§ 11.7(e) seem to miss the element of unsuccessful candidate also is not time, each collection of 100 questions
fundamental fairness embodied in the deprived of a property right without due will include a number of previously
present system, that is usually the process by limiting access to the used and reviewed questions, as well as
cornerstone of PTO rules and practice. questions. The provision of § 11.7(e) of new questions. The new questions will
One comment opined that § 11.7(e) is an providing an opportunity to review the undergo the same psychometric analysis
effort to minimize the burden of USPTO examination under supervision without and review necessary to assure that the
personnel in reviewing examination taking notes affords the applicant a examination is fair.
results, and its effect may be to ignore hearing at the administrative level. Id. at Comment 40: One comment opined
and/or cover up errors in the 228. that adoption of § 11.7(e) would delay
examination or in the manner that the The USPTO will take precautions to feedback from registration candidates,
examination was graded, and ensure the accuracy of questions and and eliminate both the income
inequitably transfer the burden of Office answers. Office employees with generated by the regrade process as well
errors to registration applicants. One expertise in various Office as the teaching tool provided by the
comment said the possibility of regrades organizations, including the Office of regrades posted on the Office’s Web site.
being arbitrary and capricious could the Solicitor, Patent Cooperation Treaty Response: The comment is not
arise only if the examination was in a Legal Affairs, Office of Patent Legal persuasive. The feedback received by
format other than multiple choice. Administration, and the Board of Patent the psychometric analysis provided by
Response: The suggestions have not Appeals and Interferences, draft the the commercial entity will be at least as
been adopted. Thirty states and the examination questions. All the fast as the feedback now received from
Northern Mariana Islands do not have questions are multiple choice, and each the candidates. Psychometric analysis
any provision for regrading a bar addresses the patent laws, rules and involves comparison of the results on
examination, either prior or subsequent procedures as related in the Manual of each question of the top fifty percentile
to the publication of the grades. Many Patent Examining Procedure. Different with the bottom fifty percentile of
of the states that do provide regrades employees then vet the questions to applicants, and shows the relative
provide so only in limited ensure that each question has a correct difficulty of each question. The Office
circumstances that will not arise in answer. The employees vetting the will be able to review psychometric
connection with a computerized system questions are drawn from the editorial feedback received from the commercial
of delivering a multiple choice staff of the MPEP, the Office of the entity as frequently as each week.
examination. Solicitor, the Board of Patent Appeals Questions appearing to be too difficult
Regrades are not required where the and Interferences, and Quality are again reviewed after the examination
examination is offered again, Assurance Supervisory Primary to ascertain if there is a problem that
particularly as frequently as the USPTO Examiners. needs to be addressed, as opposed to
plans. Applicants are afforded due The examination will be administered being a difficult question. For example,
process by the ability to sit for the by a commercial entity with extensive the question would be reviewed to
examination again.See, e.g., Lucero v. experience in administering ascertain if anything is misleading or
Ogden, 718 F.2d 355 (10th Cir. 1983), computerized examinations. An incorrect in the body of the question or
cert. denied, 465 U.S. 1035, 79 L. Ed. 2d examination will include 100 questions. in the answer options, if it is readable,
706, 104 S.Ct. 1308 (1984) (‘‘Courts have After an examination is administered, or if there is a change or inconsistency
consistently refrained from entering the the statistical performance of each in the materials in the MPEP.
arena of regrading bar examinations question in the group of 100 questions The regrade program is not a source
when an unqualified right of is reviewed and evaluated by testing of income to the Office. It is an
reexamination exists.’’). experts before the question is included expensive, time-consuming, resource-
Applicants failing the computerized in the computation of each applicant’s intensive program requiring diversion of
registration examination will be able to score. The questions will be reviewed the Office’s employees who could be
retake the examination more frequently psychometrically to identify questions otherwise occupied deciding petitions,
than those failing a State bar exam. that appear too difficult. Psychometric representing the Office in court, and
Those who fail the examination can take analysis involves comparison of the examining patent applications.

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Diversion of these resources to process proposal to use a form of on-line self- answers. The multiple choice,
and decide regrades does not optimize correcting examination as one means of computer-based examination will use
the USPTO’s accomplishment of its delivering continuing legal education questions selected from a large database
statutory mission. remains subject to comment. of questions and answers that will not
The value of posted regrade decisions Comment 43: Four comments be publicly available. This will assure
as a teaching tool decreases with the opposed the elimination of provisions that passing the examination depends
passage of time since the patent laws, for regrading examinations in § 11.7, at upon the ability to spot issues and
rules, and procedures change. A least to the extent that questions in the determine a substantively sound result,
collection of regrade decisions can be examination should continue to be rather than upon the ability to memorize
found on the Office Web site in the subject to review for correctness, questions and answers.
Freedom of Information Reading Room. readability and fairness; the comment Comment 45: One comment,
However, the continued posting of the urged that the use of Office Model apparently based on the experience with
questions has no relation to their value. Answers assured only uniformity, that it regrades of two other persons, said that
Nothing on the Web site distinguishes is only reasonable and fair to require the their failure was unjustified; that in one
between decisions addressing laws, Office to regrade/review questions that case the model answers to one of the
rules and procedures that are currently it has developed, and an applicant essay questions was simply wrong; and
followed and those no longer followed. should have the right to appeal the in the other case the examination grader
Comment 41: One comment opined result of their exam because, given the did not recognize the candidate’s way of
that if the outsourced examination nature of patent practice, there will be writing of the letter ‘‘t’’ (European
contract is limited to a sole source occasions where there may be more than candidate) and interpreted each
provider, the Office would be subject to one correct answer. instance of this letter as a misspelling.
further allegations of supporting Response: The suggestion to retain Response: The comments pertain to
arbitrary and capricious decisions regrade is not adopted. The suggestion results of examinations that were based
regarding best answers, or other to allow limited access to the questions on essay questions and answers, which
administrative interpretations within to review the questions is permitted to have not been used for several years. As
the USPTO. the extent provided in § 11.7(e). As the examination is now multiple choice,
Response: The comment is discussed above, continuing the regrade the possibility of subjectivity in the
unpersuasive. The commercial entity, program is not a reasonable expenditure grading of essay answers has been
selected through full and open of agency resources. Resources used to eliminated.
competition, does not create the process regrades must be devoted to the Comment 46: The summary of
questions or select the correct answers processing of a backlog of over 500,000 § 11.7(g) at 68 FR 69449 sought
to the questions. As discussed above, patent applications, as well as petitions comments regarding two options for
the questions are developed within the and appeals. Diversion of these determining good moral character. Four
Office. The examination will be resources to process and decide regrades comments favored the second option,
delivered on computers at sites operated is not the best use of Office resources. which gives deference to State bar
by the commercial entity. The As also discussed above, questions will determinations for those applicants who
commercial entity has extensive be psychometrically reviewed to are attorneys and reserves authority by
experience in administering identify those requiring additional, the Office for further investigation in the
examinations by computer. Every closer review. The psychometric event of a substantial discrepancy
reasonable precaution has been taken to analysis of answers will enable the between information given to the State
assure that the questions are not Office to objectively identify questions bar and information given to the Office.
incorrectly graded. All questions and that may have issues of correctness, Response: The suggestion has been
answers are carefully reviewed by the readability and fairness, and to resolve adopted. To effectuate the procedure
Office to assure that the answer selected the issues. Also, as in the past, and policy, § 11.7(g)(1) is amended to
by those in the Office vetting the corrective action is taken when provide that ‘‘[a]n individual who is an
question is the answer identified by the warranted, such as by withdrawing a attorney shall submit a certified copy of
computer to accept as correct. question. Moreover, elimination of each of his or her State bar applications
Comment 42: One comment opined regrades conforms to the practice in a and moral character determinations, if
that a ‘‘no error’’ grading of certification majority of State bars. available.’’ A new paragraph is added,
examination is unwarranted within the Comment 44: One comment designated § 11.7(g)(2)(ii), which
USPTO, and suggested that the Office, questioned keeping the questions and provides ‘‘[t]he OED Director, in
like others licensing professionals, answers confidential and another considering an application for
including certified public accountants suggested that it would constitute registration by an attorney, may accept
and professional engineers, utilize undue hardship to require that a State bar’s character determination as
passing grade levels of approximately applicants travel to a location to review meeting the requirements set forth in
70%. test results. paragraph (g) of this section if, after
Response: In referring to the Response: The suggestion has not review, the Office finds no substantial
‘‘certification examination’’, it is been adopted. The questions and discrepancy between the information
presumed that the commentator is answers will be maintained in provided with his or her application for
referring to the registration examination. confidence. This is consistent with registration and the State bar
It is also presumed that ‘‘ ‘no error’ confidentiality with which the application and moral character
grading’’ refers to requiring candidates Multistate Bar Examination is determination, provided that acceptance
to correctly answer all questions. maintained. Maintaining the registration is not inconsistent with other rules and
However, there is no proposal to require examination in confidence supports the the requirements of 35 U.S.C.
candidates to correctly answer all integrity of the examination inasmuch 2(b)(2)(D).’’
questions on the registration as the questions can appear in following Comment 47: One comment suggested
examination to pass the examination. months or years. By maintaining that for agent practitioners, the Office
The Office plans to continue to use a confidentiality, no candidate has the should require a showing of good moral
passing grade of 70%. The Office’s advantage of memorizing questions and character consistent with that required

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by a majority of State bars, that the perform the same task and it has not records and State bar records including
Office should gather the same been shown that simply giving professional references, employment
information as gathered by the majority deference to a determination by the verifications, licensure information, and
of State bar applications, that the State bars would in any way permit State bar applications, which are all
information should be included as part Office registration of unqualified determinants of moral character. The
of the application for non-attorneys to candidates. comment also suggested that the Office
practice before the Office, and that the Response: The suggestion has not would share information with State bar
Office use this information to conduct been adopted. While accepting a State associations regarding the conduct of
an investigation of moral character that bar’s determination on moral character ‘‘registered’’ trademark practitioners for
is consistent with that made by the without further review appears to be enforcement of ethical standards at the
majority of State bars. administratively attractive, experience state level.
Response: No regulatory provision is indicates that the existence of Response: The suggestion has not
necessary to implement the suggestion. substantial discrepancies can be been adopted. Congress placed on the
Plans are under way to change the problematic. A registration application Director of the USPTO the primary
application for registration to gather the might disclose information that would responsibility of determining who
same essential information from non- warrant a disciplinary proceeding. If the would be recognized to practice before
attorney applicants as is gathered by a Office did not make provision to the Office in patent cases and protecting
majority of State bar applications. Any disallow registration of such an the public. See 35 U.S.C. 2(b)(2)(D). The
necessary investigation will be applicant, then following registration, it maintenance of the register of registered
conducted. would be necessary to admit a patent attorneys and agents is an
Comment 48: One comment suggested practitioner and initiate a disciplinary inherently governmental function that
that attorneys and non-attorneys be action. Such a step would create a cannot be performed by non-employees.
subject to same procedures for situation in which an attorney or agent The Office already shares with State
determining good moral character and whom the Office should have denied bars information regarding conduct of
reputation by requiring an attorney registration is representing clients until registered practitioners for enforcement
denied admission to a bar for lack of disciplinary proceedings are concluded. of ethical standards at the state level.
good moral character and reputation to The disciplinary action requires See 37 CFR 10.159. Although the Office
inform the Office in the application for devotion of additional personnel and does not register trademark
registration, that the Office should expenditure of time and funds that practitioners, the Office does share with
request a certificate of good standing would not otherwise be necessary in an state bar associations information about
from every bar where the applicant is a enrollment proceeding to protect the the attorneys for enforcement of ethical
member to confirm whether an attorney public by suspending or excluding the standards at the State level. See 37 CFR
is a member in good standing, and that individual. Moreover, the burden of 10.159.
at least five character affidavits should proof shifts in a disciplinary action. An It is understood that NCEES has a
be requested from each non-attorney enrollment applicant has the burden of Records Program that serves as a
applicant so the treatment of both types showing that he or she is of good moral verifying agency for the engineer or land
of applicants would be on somewhat an character and reputation, whereas in a surveyor who is seeking multiple-
equal footing. disciplinary action the OED Director jurisdiction licensure. Through this
Response: As discussed above, plans must demonstrate a violation of the program, an NCEES Council verifies and
are under way to change the application disciplinary rules. By following the first houses a record holder’s file, which
to gather from non-attorneys the same option, as opposed to the second, the contains the college transcripts,
essential information as is obtained by Office fulfills the responsibility licensure information, professional
a majority of State bar applications. Congress placed on the Director to engineer or surveyor references, and
Non-attorneys will have to disclose the protect the public while not duplicating employment verifications. The Office
same information. The application for efforts already undertaken by the State will consider whether and how it may
registration already requests a certificate bars. communicate with NCEES to obtain
of good standing from the highest court Comment 50: One comment suggested records regarding applicants for
of a state, and inquires whether the that the good moral character registration.
applicant has been suspended or determination for both attorneys and Comment 51: One comment suggested
disbarred from the practice of law on agents be administered by the Office in that § 11.7(g), which permits the OED
ethical grounds. a manner similar to that utilized by the Director to list the names of proposed
Comment 49: Two comments National Council of Examiners for registrants on the Internet and make
suggested that the first option, namely Engineering and Surveying (NCEES), a inquiry regarding the moral character of
that the Office give deference to the non-profit organization, whose the individuals listed, not be adopted
State bars by permitting patent attorneys membership consists of engineering and because it is a tremendous invasion of
to submit a copy of their State bar land surveying licensing boards for all privacy; and further suggested that the
application and moral character states and territories of the United Office should not be involved with
determination, would be preferable. One States. These member boards represent regulating moral conduct when it does
comment opined that the first option all states and U.S. territorial not concern matters before the Office,
would relieve the Office of an jurisdictions. The suggestion is that the citing misdemeanor cases, such as
apparently unnecessary burden unless Office utilize the organizational model shoplifting or drug dependency, as
experience has indicated that such an of NCEES by having member boards examples of matters with which the
approach could cause problems of some representing all State bar associations Office should not be concerned.
undefined character. The other serve as a central body for maintaining Response: The suggestion has not
comment opined that there seems to be registered practitioners’ representation been adopted. The statute requires the
no need for the Office to establish new records comprising pertinent state and Office to consider ‘‘reputation’’ of
procedures and require new personnel Office information. A practitioner’s prospective attorneys and agents. In
to administer those procedures when representation record would contain furtherance of that mandate, the Office
the individual State bars already some combination of NCEES-type has long published in the Official

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Gazette the names of applicants for questions will be sent through a staff Comment 58: One comment suggested
registration seeking comments regarding attorney in OED. that the Office define what it considers
their qualifications. The Official Gazette Response: The suggestion has been to be a violation of ‘‘moral turpitude’’
is published on the Office’s Web site on adopted in part. The fourth sentence of based on decisions in disciplinary
the Internet. The provision has been proposed § 11.7(g)(3) is the third proceedings before the Office and add
moved to § 11.8(a), and codifies that sentence of § 11.7(g)(2)(i) in the final the definition to § 11.1 inasmuch as
which has long occurred with the rule. The reference to ‘‘OED Director’’ ‘‘moral turpitude’’ has been open to
publication of the Official Gazette in has been changed to ‘‘OED.’’ interpretation by State bars and the
paper and on the Internet. Comment 55: One comment suggested disciplinary courts.
The Office agrees that the Office that a typographical error be corrected Response: The suggestion has not
should not be involved with regulating in the last sentence in § 11.7(h) before been adopted. The fact that State bars
moral conduct when it does not concern the beginning of subsection (1). and courts of each State interpret their
matters before the Office. Nevertheless, Response: The suggestion is now own State laws and identify those acts
there are instances where conduct not moot inasmuch as the last sentence of that constitute moral turpitude reflects a
directly occurring in the representation proposed § 11.7(h) has been deleted. wide variety of differences among laws
Comment 56: One comment inquired under which prosecution may be
of others before the Office has a nexus
whether ‘‘good moral character’’ has the brought. Federal laws raise similar
with the person’s moral character for
same meaning as ‘‘good moral character issues. A wide variety of fact patterns
purposes of representing others; for
and reputation.’’ Another comment and underlying laws come before OED
example, drug dealing, and wire or
suggested that the entire phrase ‘‘good for consideration. Courts in the state
insurance fraud. There are a number of
moral character and reputation,’’ which where an applicant’s conduct occurred
cases where State bars have denied
appears in 35 U.S.C. 2(b)(2)(D), be may have issued a decision that an act
admission to persons whose conduct
defined. does or does not constitute moral
involves the conduct of the kind Response: The latter suggestion has
addressed by the commenter. See Moral turpitude. There may be no decision
been adopted. Under 35 U.S.C. regarding the act in that state. Courts in
03 and Moral 04 decisions in the FOIA 2(b)(2)(D), an individual is required to
Reading Room of the Office Web site at another state may have issued a
possess ‘‘good moral character and decision based on the same or similar
www.uspto.gov/web/offices/com/sol/ reputation.’’ ‘‘Good moral character and
foia/oed/moral/moral.htm. law regarding the same or similar
reputation’’ is defined in § 11.1. conduct. It is unlikely that a rule could
Comment 52: One comment suggested Webster’s Third New International
that § 11.7(g)(1), which requires an be derived from the decisions issued by
Dictionary defines ‘‘reputation’’ as ‘‘the the state courts that would be clear and
individual seeking recognition to condition of being regarded as worthy or
‘‘answer all questions,’’ clarify the unequivocal for all cases.
meritorious’’ (second version under the It seems preferable to allow applicants
source of the questions. first definition), and is the source for the to make their presentations with respect
Response: The suggestion has been definition applied to reputation in the to concrete circumstances and the
adopted. The first sentence of phrase ‘‘good moral character and particular laws under which the
§ 11.7(g)(1) has been revised to state reputation.’’ conviction occurred. An applicant may
‘‘answer[ing] all questions in the Comment 57: One comment opined present such analyses of case law and
application for registration and that §§ 11.7(h)(3) and 11.7(h)(4) contain past circumstances for consideration as
request(s) for comments issued by definitions of good moral character that the applicant deems best to characterize
OED.’’ do not appear to be within the scope of his or her situation. The Office will
Comment 53: One comment suggested the definition in proposed § 11.7(h). consider the applicant’s presentation as
deletion of the third sentence in Response: Good moral character is well as relevant case law from the same
proposed § 11.7(g)(3), which states, ‘‘If now defined in § 11.1, and continues to and other jurisdictions. Such flexibility
the individual seeking registration or mean the ‘‘possession of honesty and is most likely to lead to fair results.
recognition is an attorney, the truthfulness, trustworthiness and Comment 59: One comment pointed
individual is not entitled to a reliability, and a professional out that although § 11.7(h)(1) includes a
disciplinary proceeding under §§ 11.32– commitment to the legal process and the misdemeanor in the definition of ‘‘a
11.57 in lieu of good moral character administration of justice.’’ crime,’’ the definition of ‘‘crime’’ in
proceedings under paragraphs (j) The definition of good moral § 11.1 does not include a misdemeanor.
through (m) of this section.’’ The character is inclusive of the conduct It is suggested that the rules be
commenter noted that only the OED referenced in §§ 11.7(h)(3) and consistent in defining repeated terms.
Director can initiate a disciplinary 11.7(h)(4). Section 11.7(h)(3) refers to Response: The suggestion has been
proceeding if the Committee on ‘‘[a]n individual’s lack of candor in adopted. The definition of ‘‘crime’’ in
Discipline finds probable cause, and it disclosing facts bearing on or relevant to § 11.1 has been revised to include ‘‘any
is not clear how an attorney who is not issues concerning good moral character offense declared to be a felony or
yet a registered practitioner would be and reputation when completing the misdemeanor by Federal or State law in
subject to the disciplinary proceedings. application or any time thereafter.’’ Lack the jurisdiction where the act occurs.’’
Response: The suggestion has been of candor is within the ambit of Comment 60: One comment suggested
adopted. Section 11.7(g)(3) in the ‘‘honesty and truthfulness, that the phrase ‘‘convicted for said
proposed rules has been renumbered trustworthiness and reliability.’’ felony’’ in the third sentence of
§ 11.7(g)(2)(i) in the final rules. The Similarly, § 11.7(h)(4) refers to an § 11.7(h)(1) should read ‘‘convicted of
third sentence of proposed § 11.7(g)(3) ‘‘individual who has been disbarred or said felony.’’
has been omitted from the final rule. suspended from practice of law or other Response: The suggestion has been
Comment 54: One comment suggested profession, or has resigned in lieu of a adopted, and the sentences are
that in the fourth sentence of disciplinary proceeding * * *.’’ restructured.
§ 11.7(g)(3), the phrase ‘‘OED Director’’ Disbarment reflects a lack of the same Comment 61: One comment suggested
be changed to ‘‘Office of Enrollment and traits required for good moral character that the term ‘‘compelling proof’’ and
Discipline’’ since in all likelihood and reputation. the phrase ‘‘at a minimum a lengthy

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period of exemplary conduct’’ in Response: The suggestions have been demonstrate that he or she is complying
§ 11.7(h)(1) be defined. adopted in part. In § 11.7(h)(1)(ii), the with treatment and undergoing
Response: The suggestion has been term ‘‘provisions’’ is changed to read recovery. Under § 11.8(b), the individual
adopted in part. Section 11.7 has been ‘‘presumptions.’’ In § 11.7(h)(1)(ii)(B), may resume completion of the
revised to delete provisions calling for the expression ‘‘apply for or be application for registration without
‘‘compelling proof’’ and ‘‘clear and registered’’ is revised to read ‘‘apply for taking the examination again if, within
convincing’’ evidence of good moral registration.’’ The numbering of two years of mailing date of a notice of
character. Section 11.7 will require paragraph (h)(1)(ii)(C) in § 11.7 is passing the examination, the individual
individuals to establish to the changed to paragraph (h)(1)(iii), the files a satisfactory showing and
satisfaction of the OED Director that expression ‘‘an application’’ in proposed complies with the provisions of § 11.8.
they are of good moral character. This § 11.7(h)(1)(iii) is changed to ‘‘a An individual would reapply if a
standard is set forth in the current rules complete application for registration satisfactory showing is made outside the
at 37 CFR 10.7(a)(2)(i). Thus, new § 11.7 and the fee required by § 1.21(a)(1)(ii) of two-year period.
will continue to apply the same this subchapter,’’ and the numbering of Comment 65: One comment suggested
standard whether the individual is a § 11.7(h)(1)(iii) is changed to that § 11.7(h)(4) be expanded to include,
first time applicant, a disbarred § 11.7(h)(1)(iv). in addition to a suspended or disbarred
attorney, or convicted felon. Applicants Comment 63: One comment suggested attorney, a non-attorney who, for
in the latter two instances must make a that the phrase ‘‘from drug or alcohol instance, was disciplined by an
more substantial showing than a first abuse or dependency’’ be added after institution or government authority for
time applicant with no such record ‘‘recovery’’ in § 11.7(h)(2) to clarify that acts of misconduct involving moral
because of the need to overcome recovery is from past, as opposed to character, e.g., students, stock brokers,
evidence weighing against a finding of present, drug or alcohol abuse or CPA’s, doctors. It was also suggested
good moral character. Case law dependency. that § 11.7(h)(4) be revised to organize
recognizes that following disbarment, Response: The suggestion has not its provisions to separately and clearly
the burden of proving good moral been adopted. Section 11.7(h)(2) identify individuals ineligible for
character is substantially more rigorous requires that an individual’s record be registration and their respective
for an attorney seeking reinstatement, reviewed as a whole to see if there is a ineligibility periods, the documents and
even in a different jurisdiction, than for drug or alcohol abuse or dependency fees to be filed for registration, as well
a first time applicant. See In re Menna, issue. Section 11.7(h)(2) covers both as the presumptions that arise from the
905 P.2d 944 (Cal. 1995). As in the case past and present abuse and dependency discipline or resignation and the
of reinstatement after disbarment, even issues. Accordingly, recovery should available defenses.
a first time applicant has a heavy encompass past or present abuse and Response: The suggestion has been
burden of showing good moral character dependency issues. adopted in part. The provisions of
after conviction of a felony. See In re Comment 64: One comment suggested § 11.7(h)(4) have been expanded to
Gossage, 5 P.3d 186 (Cal. 2000); In re that the procedure in § 11.7(h)(2) for include individuals who are disbarred,
Dortch, 486 S.E.2d 311 (W.Va. 1997). holding an application for registration suspended or have resigned in lieu of
Section 11.7(h)(1) has been revised to in abeyance for an applicant who has disciplinary action in the legal
delete the provision for a lengthy period not established a record of recovery profession as well as other professions.
of exemplary conduct. Section from drug or alcohol dependency, and Further, the provisions have been
11.7(h)(1)(ii)(B) provides a two-year manner by which an agreement for extensively reorganized to more clearly
period following completion of the recovery from the dependency is identify the ineligible individuals, their
sentence, deferred adjudication, and ‘‘initiated’’ and confirmed can be respective ineligibility periods, and the
period of probation or parole, whichever clarified by ending the last sentence at fees and documents they must file. The
is later, for demonstrating good moral ‘‘time,’’ and adding the following burden of establishing reform and
character and reputation. sentence: ‘‘If the individual accepts the rehabilitation has been clarified to
Comment 62: One comment suggested offer, the individual and the OED require a satisfactory showing, which is
that the term ‘‘provisions’’ in the first Director shall execute an agreement consistent with § 11.7(h)(1).
sentence of § 11.7(h)(1)(ii) be changed to specifying (i) the period of time the Comment 66: One comment suggested
‘‘presumptions’’ since it appears that application for registration will be held that to avoid confusion § 11.7(i) should
sections (A) and (B) thereunder are abeyance, (ii) the conditions regarding not introduce the term ‘‘applicant’’ for
presumptions that will be made by the the initiation and confirmation of the first time, and that ‘‘applicant’’ be
Office for an individual who has been treatment; and (iii) conditions that changed to ‘‘individual.’’
convicted of a felony or misdemeanor constitute evidence that recovery is Response: The suggestion has been
and is seeking registration. The confirmed.’’ adopted.
comment further suggested that in Response: The suggestion is now Comment 67: One comment suggested
§ 11.7(h)(1)(ii)(B), the expression ‘‘apply moot inasmuch as the proposal for that in § 11.7(i)(2)(xii), the word
for or be registered’’ be amended to read holding an application in abeyance ‘‘religious’’ replace the word ‘‘church’’ as
‘‘apply for registration or be registered’’ while an individual complies with a a sponsor of ‘‘programs designed to
for grammatical correctness. It was still recovery agreement is not adopted. The provide social benefits or to ameliorate
further suggested that since proposed OED Director will provide the social problems,’’ because ‘‘church’’ is
paragraph (C) in § 11.7(h)(1)(ii) is not a individual with an opportunity to limited to a body of Christians.
presumption, it should be renumbered withdraw his or her application in order Response: The suggestion is now
§ (h)(iii) and that proposed § 11.7(h)(iii) to avoid its denial with attendant moot. Proposed § 11.7(i)(1) and the
be changed to § 11.7(h)(iv). Further, it consequences under § 11.7(k). The second and third sentences of proposed
was suggested that the expression ‘‘an individual will be notified that he or she § 11.7(i)(2) have been deleted. The first
application’’ in proposed § 11.7(h)(1)(iii) may resume the application for sentence of proposed § 11.7(i)(2) has
be changed to ‘‘a complete application registration or reapply when the been renumbered § 11.7(i) in the final
for registration and the fee required by individual is no longer abusing alcohol rules. Proposed § 11.7(i)(2)(viii) has
§ 1.21(a)(1)(ii).’’ or drugs and can satisfactorily been deleted, and the remaining

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proposed §§ 11.7(i)(2)(i) through indefinite and should be changed to ‘‘a unnecessary. The purpose for the digital
11.7(i)(2)(xiii) have been renumbered decision denying recognition based on signature is to facilitate electronic filing;
§§ 11.7(i)(1) through 11.7(i)(12) in the lack of good moral character and however, electronic filing is, currently,
final rules. Section 11.7(i)(11) in the reputation.’’ not required. Moreover, it is not clear
final rules, which is based on proposed Response: The suggestion is moot why a registration applicant must
§ 11.7(i)(2)(xii), is revised to eliminate since proposed § 11.7(j)(1) has not been complete a form for a digital signature
any characterization, such as ‘‘church,’’ adopted. in order to be registered to practice
limiting the identity of sponsors. Comment 70: One comment pointed before the Office, yet currently
Comment 68: One comment suggested out that § 11.7(j)(2) needs to clarify that registered attorneys and agents have no
that the language of the first two the ‘‘individual’’ is not the ‘‘particular such requirement, and a form for a
sentences of § 11.7(j) be revised as person,’’ and suggested that the term digital signature can be completed when
follows: If, after an investigation of ‘‘individual’’ be changed to read it is appropriate for that attorney or
moral character and reputation, the OED ‘‘individual seeking registration.’’ agent to do so.
Director is of the opinion that the Response: The suggestion is moot Response: The suggestion has been
evidence of record does not establish since proposed § 11.7(j)(2) has not been adopted. Section 11.8(b) has been
that the individual seeking registration adopted. revised to remove the provision
possesses good moral character and Comment 71: One comment suggested requiring ‘‘a completed form to obtain
reputation, the OED Director shall issue that § 11.7(j)(2)(ii) refers to ‘‘rights’’ the Office’s authorization to use a digital
to the individual a notice to show cause listed in ‘‘paragraph (j)(2)(A),’’ whereas signature.’’
with reasons why the individual should § 11.7(j)(2(ii) should reference Comment 76: One comment suggested
not be registered. The notice shall give § 11.7(j)(2)(i), which is directed to ‘‘rules that § 11.6(c) appears to conflict with
the individual the opportunity for a of procedure.’’ State bar rules, which do not have
hearing before the Committee on Response: The suggestion is moot residency requirements, that the
Enrollment or withdrawing his or her since proposed § 11.7(j)(2) has not been proposed rules do not appear to prohibit
application for registration. adopted. aliens who no longer reside in the
Response: The suggestion has been Comment 72: One comment noted the United States to remain registered, and
adopted in part. As discussed with use of the terms ‘‘recommendation’’ and suggested that aliens no longer residing
regard to § 11.4, the Office will no ‘‘decision’’ in § 11.7(j)(3) is confusing in the United States may continue to be
longer provide for a Committee on and the need for consistency. registered and practice before the Office,
Enrollment, and the proposal to provide Response: The suggestion is moot that such continued work would not be
for oral enrollment hearings will not be since proposed § 11.7(j)(3) as well as in contravention of the immigration
adopted. The first two sentences have proposed §§ 11.7(j)(4) and 11.7(j)(5) laws as they would not be working in
been replaced by the following have not been adopted. the United States, and that a former
provisions: ‘‘[i]f, following inquiry and Comment 73: One comment suggested permanent resident would be eligible
consideration of the record, the OED that the first sentence of § 11.8(a) be for re-admission to the United States as
Director is of the opinion that the clarified to inform an individual who a special immigrant.
individual seeking registration has not passed the examination that he or she Response: The suggestion has not
satisfactorily established that he or she has two years within which to complete been adopted. State law is not
presently possesses good moral registration by revising the sentence to applicable. Under 5 U.S.C. 500(e), the
character and reputation, the OED read ‘‘an individual passing the Office is empowered to determine who
Director shall issue to the individual a registration examination who does not may practice before it with respect to
notice to show cause why the comply with the requirements of patent matters. New § 11.6(c) continues
individual’s application for registration paragraph (b) of this section within two the practice followed under current 37
should not be denied.’’ The ‘‘individual years after the date on a notice of CFR 10.6(c). Under § 11.6(c), only aliens
shall be given no less than ten days from passing the examination will be residing outside the United States
the date of the notice to reply. The required to retake the registration satisfying the requirements of that rule
notice shall be given by certified mail at examination.’’ may be registered. Such aliens must
the address appearing on the Response: The subject of the comment show that the patent office of the
application if the address is in the has been moved to § 11.8(c), which has country where they reside and are
United States, and by any other been revised to reflect this comment. registered practitioners grants
reasonable means if the address is Comment 74: One comment noted substantial reciprocity to attorneys and
outside the United States.’’ Following that § 11.8(b) requires that an attorney or agents admitted to practice before the
‘‘receipt of the individual’s response, or agent must submit a certificate of good USPTO in patent cases. At this time,
in the event of the absence of a standing from the bar of the highest only the Canadian Patent Office is
response, if any, the OED Director shall court of a state, whereas this would not considered to meet the requirements.
consider the individual’s response and be possible for agents. Aliens in the United States, such as
the record, and determine whether, in Response: The suggestion has been permanent residents, meeting the
the OED Director’s opinion, the adopted. Section 11.8(b) has been requirements of §§ 11.6(a) or 11.6(b) can
individual has sustained his or her amended to require only attorneys to be registered while they remain in the
burden of satisfactorily demonstrating submit a certificate of good standing United States. The provisions of
that he or she presently possesses good from the bar of the highest court of a § 11.9(b) continue the practice of
moral character and reputation.’’ state. granting limited recognition to aliens in
Comment 69: One comment objected Comment 75: One comment suggested the United States not meeting the
to the term ‘‘interrogated’’ in § 11.7(j)(1) the requirement in § 11.8(b) that requirements of §§ 11.6(a) or 11.6(b), but
as sounding like an inquisition, and attorneys and agents must file a who nevertheless show they are
suggested that the phrase ‘‘to be sworn completed form to obtain the Office’s authorized to prepare and prosecute
and interrogated’’ be changed to read ‘‘to authorization to use a digital signature patent applications; they may be granted
provide sworn testimony’’; and as a prerequisite for registration before limited recognition under § 11.9(b) to
suggested that ‘‘an adverse decision’’ is the Office is premature and practice while they remain in the

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United States. Upon departing the Comment 80: One comment suggested participated as an employee of the
United States, their authorization to that the first sentence of § 11.10(b), Office.’’
practice ceases, and they can be addressing restrictions on registration Response: This suggestion has not
registered only if the provisions of for current employees, be divided from been adopted. The substantive
§ 11.6(c) are satisfied. the second and subsequent sentences, restrictions are set forth in §§ 11.10(b)(1)
Comment 77: One comment objected which address restrictions on practice and 11.10(b)(2). Section 11.10(b)(3)
to the fifth sentence in § 11.9(b)(2), by former employees. provides definitions for use in
which states ‘‘[a]ny person admitted to Response: The suggestion has been interpreting the substantive provisions,
the United States to be trained in patent adopted in part. The first sentence has but does not impose additional
law shall not be admitted to the been deleted. The first sentence restrictions.
registration examination or granted prohibited registration of current Comment 84: One comment suggested
recognition until completion of that employees who had not been previously that §§ 11.10(b)(1) and 11.10(b)(2), like
training.’’ The comment suggested that registered. However, current employees 18 U.S.C. 207, not separate appearance
non-immigrant persons be registered. who pass the registration examination and influence portions of the statute
Response: The suggestion has been are permitted to be registered, but their into two separate and distinct
adopted in part. Section 11.9(b) has names are endorsed on the register as prohibitions.
been revised to provide limited inactive. They are not permitted to Response: These sections have been
recognition to a nonimmigrant alien practice in patent cases while they rewritten to remove the references to
who resides in the United States and remain employed by the Office. communications with the intent to
fulfills the provisions of §§ 11.7(a) and Comment 81: One comment objected influence, which are already included
(b) if the nonimmigrant alien is to §§ 11.10(b)(1) and 11.10(b)(2) as within the term ‘‘representation’’ as
authorized to be employed or trained in intertwining rules of conduct with defined by § 11.10(3)(i).
the United States in the capacity of commentary. Comment 85: Three comments
representing a patent applicant by Response: This suggestion has been suggested that the items listed in
preparing or prosecuting a patent adopted. The use of examples was §§ 11.10(b)(1)(i)–(iii) and 11.10(b)(2)(i)–
application. The fifth sentence in proposed to clarify the rules. However, (iii), should not be in the alternative as
proposed § 11.9(b) has not been the examples have been removed. It is proposed, but should be linked with
adopted. planned to expand the discussion of ‘‘and’’ so as to include all three
Comment 78: Three comments restrictions on former examiners in the conditions. Another comment suggested
suggested it is unclear whether a Manual of Patent Examining Procedure §§ 11.10(b)(1) and 11.10(b)(2) appear to
nonpractitioner assistant would be (MPEP). Appropriate examples will be present grammar and syntax problems
violating proposed § 11.10(a) if he or she included in the MPEP. that jam too many thoughts into a single
assisted a registered practitioner, for sentence, and do not work.
Comment 82: Three comments
Response: The suggestion has been
example, in the preparation of a patent suggested that §§ 11.10(b)(1) and (b)(2)
adopted. These provisions have been
application, even under the direction be revised to change ‘‘United States’’ to
rewritten for clarity.
and guidance of a registered ‘‘Office’’ to remove ambiguity. One Comment 86: One comment observed
practitioner. The question is raised in comment pointed out that all that unlike §§ 11.10(b)(1) and
part, because proposed § 11.5(b) does communications to the Office are in 11.10(b)(2), 18 U.S.C. 207 does not
not define ‘‘prosecution.’’ some sense to the United States. One specify that appearance is ‘‘formal and
Response: This suggestion has not comment pointed out that the ‘‘or’s’’ in informal’’ or that communications are
been adopted. Section 11.10(a) adds § 11.10(b)(1) result in the rule ‘‘oral or written,’’ and that the sections
nothing that was not already present in proscribing preparing someone’s tax be revised to conform with the statute.
the current 37 CFR 10.10(a). No action return or helping to write a letter to Response: The suggestion has been
has been taken regarding proposed their congressman. A fourth comment adopted in part. Section 11.10(b) does
§ 11.5(b). It is the registered practitioner, suggested that it is unnecessary to not implement or interpret 18 U.S.C.
as opposed to the non-practitioner, who reference United States or the Office 207. The references to appearances and
is responsible for compliance with inasmuch as the United States would be communications have been removed
§ 11.10(a). It is common practice for a party with respect to the prosecution from §§ 11.10(b)(1) and 11.10(b)(2) as
nonpractitioner assistants to work under of a patent application since the Office discussed in response to Comment 84.
the direct supervision of a registered would be regarded as one party and that Comment 87: One comment said the
practitioner in conducting many of the the United States has a direct and interchanging use in § 11.10(b) of
activities associated with practice before substantial interest since it is granting ‘‘individual,’’ ‘‘any person’’ and
the Office, and nothing in § 11.10(a) the monopoly for a patent or trademark. ‘‘employee’’ is somewhat confusing.
prohibits this activity so long as the Response: These comments have been Response: The suggestion has not
registered practitioner supervises and accepted. Only representation before the been adopted. The Office does not
remains responsible for the assistant’s Office is within the scope of this part, believe that the use of these terms
work. and the relevant provisions have been renders § 11.10(b) ambiguous, or that
Comment 79: One comment suggested revised to more clearly reflect this. using different or fewer terms would
that the subtitle of § 11.10(b), Comment 83: One comment suggested increase its clarity.
‘‘Undertaking for registration by former that it is unnecessary to include Comment 88: One comment said 18
Office employees’’ is not clear since the limitations in § 11.10(b)(1) beyond that U.S.C. 207 provides for a one-year
phrase ‘‘undertaking for registration’’ it can be construed merely to require restriction while § 11.10(b)(2) provides
would have no meaning to a person that former patent examiners cannot act for a two-year restriction, and suggested
unfamiliar with OED practice. as a representative or intend to bring that the period in the proposed rule be
Response: The suggestion has been influence, including ‘‘conduct occurring commensurate with the statutory
adopted. The subtitle of § 11.10(b) has behind the scenes,’’ for a period of two period.
been revised to read ‘‘Post employment years in a ‘‘particular matter in which he Response: The suggestion has not
agreement of former Office employees.’’ or she personally and substantially been adopted. While § 11.10(b)(2) does

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not implement 18 U.S.C. 207, its two- employment or training contrary to the Vice Chief Administrative Patent Judge
year restriction parallels that of the immigration laws and their reliance on of the Board of Patent Appeals and
statute. registration to conduct themselves in Interferences to determine whether and
Comment 89: One comment suggested that manner would be inconsistent with the circumstances under which an
that § 11.11(a) be revised to change the requirement that they possess good attorney who is not registered may take
‘‘state bar’’ to ‘‘State bar’’ in the rules to moral character. Regulations prohibit testimony for an interference under 35
conform to the definition of ‘‘State’’ in some nonimmigrant aliens from U.S.C. 24, or under 37 CFR 1.672. The
§§ 11.1 and 11.7(h)(4). engaging in employment. See, e.g., 8 circumstances and necessity for setting
Response: The suggestion has been CFR 214.1(e). A nonimmigrant alien in forth circumstances can differ between
adopted. The lower case ‘‘s’’ in ‘‘state’’ the United States may not engage in any interferences. Accordingly, it is
or ‘‘states’’ has been changed to an upper employment unless the person has been inappropriate to attempt to provide in
case ‘‘s’’ wherever found in § 11.11(a). accorded a nonimmigrant classification the rule or commentary an exhaustive
Also, the designation of the first which authorizes employment or the listing of circumstances. The Judges will
paragraph of § 11.11 as paragraph (a) has person has been granted permission to exercise their discretion in determining
been deleted inasmuch as proposed engage in employment in accordance the circumstances under which the
§§ 11.11(b) through 11.11(f) remain with regulations found in Title 8 of the testimony will be taken.
under consideration, and no paragraph Code of Federal Regulations. A Comment 95: One comment suggested
following the first paragraph has been nonimmigrant alien who is permitted to that the registration procedure sequence
adopted. engage in employment may engage only in § 11.7 contains redundancy regarding
Comment 90: One comment suggested in such employment as has been scientific and technical training in
that the second sentence of § 11.11(a) authorized. Any unauthorized §§ 11.7(b)(1) and 11.7(b)(3); that the
does not parse. employment by a nonimmigrant alien procedure contained in § 11.7(b)(4) for
Response: The suggestion has been constitutes a failure to maintain status. retaking the examination upon failure
adopted. Although the language of the See, e.g., 8 CFR 214.1(e). The Bureau of should be a separate provision; that the
sentence is the same as found in 37 CFR Citizenship and Immigration Services qualifications considered are found in
10.11(a), the language has been updated (BCIS) determines which nonimmigrant § 11.7(b)(i) as well as §§ 11.7(b)(2) to
and revised. alien is authorized to be employed (b)(4) and (b)(6); that the requirement to
Comment 91: One comment suggested while in the United States, the capacity keep an application updated be
that the Office should be able to in which they are employed, and who separated from § 11.7(b)(2); and it is
maintain at least three e-mail addresses may employ them. The Office has no necessary to clarify why an individual
for practitioners (e.g., home, work, and authority to license nonimmigrant reapplying more than one-year after
‘‘permanent’’ e-mail addresses), and aliens to engage in employment, or to be failing the registration examination
send electronic communication to all of employed by an employer beyond that must again submit satisfactory proof of
these addresses to maximize the chance which the BCIS has sanctioned. his or her scientific training.
that a message is actually received by Comment 93: One comment suggested Response: The suggestion for
the intended practitioner. The cost of the phrase ‘‘such registration is not reorganizing the regulation is adopted in
doing this is virtually nothing. inconsistent with the terms upon which part. The provisions in proposed
Response: The suggestion has been the alien was admitted to, and resides § 11.7(b)(3) have been merged into
adopted in part. OED will maintain a in, the United States,’’ in §§ 11.6(a) and § 11.7(b)(1)(i)(C), and proposed
list of up to three e-mail addresses for 11.6(b), be defined to enable § 11.7(b)(5) has been revised and
a registered practitioner and § 11.11 has practitioners and the general public to renumbered § 11.7(b)(3). Proposed
been revised to provide for up to three understand what constitutes registration §§ 11.7(b)(4) and 11.7(b)(6) has been
e-mail addresses where the practitioner not inconsistent with the terms upon moved into § 11.7(b)(1) and renumbered
receives e-mail. Practitioners will be which the alien was admitted to and is §§ 11.7(b)(1)(ii) and 11.7(b)(1)(iii),
responsible for updating OED with each residing in the United States. respectively. The reference to
and every change of e-mail address. Response: The suggestion has not § 11.7(b)(3) in §§ 11.7(d)(1), 11.7(d)(2)
OED plans to use all the addresses been adopted. The admission of aliens and 11.7(d)(3) is revised to read as
furnished by a practitioner to to the United States and their authority § 11.7(b)(1)(i)(C). The procedure for
communicate with him or her. to be employed is dependent upon retaking the examination upon notice of
Comment 92: One comment suggested regulations promulgated by BCIS and its failure has been moved to
that the following groups of alien predecessor, the Immigration and § 11.7(b)(1)(ii). It is believed to be
attorneys and agents should be exempt Naturalization Service. Those preferable to consolidate in one
from the provisions of proposed regulations change with some paragraph the provisions for passing the
§§ 11.6(a) and 11.6(b), respectively: (1) frequency. It would not be prudent for examination and for retaking the
aliens who have visas acceptable for the Office to adopt definitions that examination upon failure. The
practice before the Office under current would be rendered inconsistent with the qualification provisions in § 11.7(b)(1)
Rule 10.6, whether or not they have yet regulations adopted by the BCIS. Case are not repeated in renumbered
entered the United States; and (2) aliens law provides guidance in defining the §§ 11.7(b)(2) and 11.7(b)(3). The latter
in the midst of the visa application meaning of the phrase, which has been sections address two matters not
process for practice before the Office in use since 1985. covered in § 11.7(b)(1); the consequence
acceptable under current Rule 10.6. Comment 94: One comment suggested of failing to file a complete application,
Requiring aliens in these groups to that the circumstances under which an and the necessity for an individual, who
obtain new visas is unduly burdensome unregistered attorney may take does not reapply until more than one
and impractical if the visas are testimony in an interference should be year after the mailing date of the notice
sufficient under the current rule. elaborated upon either in § 11.6(d) or in of failure, to again comply with
Response: The suggestion has not the commentary. § 11.7(b)(1).
been adopted. As discussed in response Response: The suggestion has not Individuals reapplying more than one
to Comment 23, empowering been adopted. Section 11.6(d) permits year after failing the registration
nonimmigrant aliens to engage in the Chief Administrative Patent Judge or examination must again submit

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satisfactory proof of their scientific official actions from all major patent not contain a provision addressing the
training because their files will have offices, advise on the interpretation of issue. The answer to each examination
been archived. The Office does not have patents and their validity, and advise question is located in the MPEP. The
facilities for on-site long-term storage of clients on the global patent positions MPEP will be available on the computer
files of individuals who fail the arising in the commonly encountered and will download quickly. Thus, the
examination. Ordering files from business situations. source of all correct answers will be
archived records could subject Response: The suggestion has not made available to all candidates.
applicants to unanticipated delays and been adopted. Under 35 U.S.C. Additional materials are unnecessary.
does not promote efficiency. While 2(b)(2)(D), registration is for the
recognition of agents and attorneys Rule Making Considerations
there are plans for scanning the files,
resources are limited at this time, and representing applicants or other parties Regulatory Flexibility Act
until scanning of all files is available, before the Office. Accordingly, the The Regulatory Flexibility Act, 5
files older than one year must be examination is properly confined to U.S.C. 601 et seq, requires agencies to
archived. aspects of drafting applications to be consider the economic impact of
Comment 96: One comment suggested filed in the Office as well as regulatory actions on small entities
that all practitioners be treated the same applications filed under the Patent when finalizing a rule making. If the
with respect to fitness, moral character, Cooperation Treaty, and responding to rule is expected to have a significant
and legal competence by: requiring all substantive official actions from the economic impact on a substantial
practitioners to have minimum Office. A practitioner advising clients number of small entities, the agency
technical and legal experience if they on their global patent positions arising must prepare a final regulatory
are to practice before the USPTO; in the commonly encountered business flexibility analysis (FRFA). However,
resolve the allegedly inherent situations should have the legal section 605(b) of the Regulatory
‘‘unauthorized practice of law’’ by knowledge, skill, thoroughness and Flexibility Act allows the head of an
agents by eliminating the agent status preparation reasonably necessary to agency to prepare a certification
altogether, allowing agent status for provide the advice. Practitioners statement in lieu of a FRFA if the rule
those only who complete the patent without the background should either making is not expected to have a
academy with four or more years’ prepare adequately to provide significant economic impact on a
experience; change the name ‘‘agent’’ to competent advice or refer the client to substantial number of small entities.
‘‘non-legal agent’’ or other name in order other practitioners prepared to provide The Deputy General Counsel for General
to protect the public and to put the the advice. Law 1 of the USPTO hereby certifies to
public on notice that they are not Comment 98: One comment referred
the Chief Counsel for Advocacy, Small
working with an attorney; notify agents to the comments on page 69448 of the
Business Administration, that this final
that they cannot practice law and Notice which indicated that the
rule will not have a significant
further limit their scope of practice to registration examination will be ‘‘open
economic impact on a substantial
preparing and filing applications, not book’’ in the sense that the MPEP would
number of small entities. The factual
prosecution of patent applications; and be accessible on-line in the
basis for the certification is as follows:
require a registered attorney to sign computerized examination. The
work done by an agent, and/or require comment suggested that individuals be Factual Basis for Certification
each agent to practice under the permitted to utilize a paper copy of the The primary purpose of the rule
supervision of registered attorney. MPEP because prohibiting paper package is to codify enrollment
Response: The suggestion has not resource material will, to some extent, procedures implementing computerized
been adopted. A requirement for adversely impact some individuals. delivery of the registration examination
minimum legal experience is subject to Response: The suggestion has not and to provide procedures for
the same weakness discussed in been adopted. Prior to taking an processing registration applications that
response to Comment 33. The Office is examination, a tutorial will be provided are more efficient and flexible for the
neither eliminating registration of patent by the commercial entity to all Office and applicants. At the outset, it
agents, nor requiring that they practice individuals to show them how to should be noted that the only persons
under the supervision of registered operate the computer, download and affected by the fee increases set forth in
attorneys. This rule making has not search the MPEP, and navigate among this rule package are those individuals
addressed any change of status for the questions. Further, we are in the seeking enrollment to become registered
patent agents. Patent agents serve a process of developing a tutorial that will patent practitioners or those individuals
variety of purposes, including helping be available either on or through a link seeking registration or reinstatement
make access to the patent system widely from the Office Web site to show how after certain events led to their
available. The Office will continue to the MPEP will be accessed and disbarment or suspension on ethical
register individuals as patent agents. navigated during the examination. Use
Issues affecting unauthorized practice of of a computer on this examination, as 1 By statute, the USPTO may establish

law will be addressed in the rules and on tests for driver’s licenses, is readily regulations, not inconsistent with law, which
commentary pertaining to § 11.5(b). The learned. ‘‘govern the recognition and conduct of agents,
attorneys or other persons representing applicants
period for comment on the proposed Comment 99: One comment inquired or other parties before the Office, and may require
rules for § 11.5(b) has been extended why candidates are no longer allowed to them, before being recognized as representatives of
until June 11, 2004. bring in their notes and/or reference applicants or other persons, to show that they are
Comment 97: One comment suggested books to the exam, and suggested that of good moral character and reputation and are
that to benefit from patent possessed of the necessary qualifications to render
they be able to bring notes used in to applicants or other persons valuable service,
harmonization, the registration preparing for the exam, an indexed advice, and assistance in the presentation or
examination given under § 11.7 should notebook on patent law material, and a prosecution of their applications or other business
place less emphasis on formalities and hard copy of the MPEP that has been before the Office[.]’’ 35 U.S.C. 2(b)(2)(D). The Under
Secretary of Commerce for Intellectual Property and
test each candidate’s ability to identify tabbed to the candidate’s liking. Director of the USPTO has delegated his authority
inventions, draft applications to global Response: The suggestion has not to the USPTO’s Deputy General Counsel For
standards, respond to substantive been adopted inasmuch as the rules do General Law. See AAO217–2 (2001).

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grounds, denial of registration on impact of this rule package on law firms approximately 63.5% of these attorneys
grounds of lack of good moral character that may qualify as small entities. work in law firms. The average total
and reputation, or conviction of a felony compensation of attorneys in a law firm
Computerized Examination Fee
or crime involving moral turpitude or ranges from $102,841 to $299,391,
breach of fiduciary duty. Section 1.21(a)(1)(ii)(A) establishes a depending on whether the attorney is
Both attorneys and non-attorneys can $200 registration examination fee for of-counsel, a staff attorney, an associate
take the registration examination. test administration by a commercial attorney, a non-equity partner or an
Inasmuch as the income of attorneys entity. Individuals wishing to take the equity partner/shareholder. See, e.g.,
and non-attorneys differs, the computerized examination administered The 2003 Survey of Law Firm
discussion contained in this Regulatory by a commercial entity will pay the Economics, ‘‘National Individual Status
Flexibility Act certification considers entity an additional fee of $150. The Codes Total Compensation,’’ p. 169. The
the respective average incomes of both combined cost of $350 ($200 + $150) is relevant ‘‘Total Compensation’’ chart is
types of potential applicants. USPTO only $40 more than the $310 fee also available at www.altmanweil.com/
statistics indicate that over the course of previously charged by the Office. The pdf/2003SLFESample.pdf. Thus, the $40
the last four examinations (during 2002 $40 increase provides applicants with increase in total fees to take the
and 2003), on average approximately additional conveniences, such as the registration examination is insignificant
19% of applicants are licensed attorneys ability to take the examination in one of to attorneys, in comparison with their
at the time they seek registration to take over 400 locations throughout the average annual income.
the enrollment examination. For April country, thereby reducing travel and For those applicants who are not
2002, October 2002, April 2003, and associated expenses. The examination is licensed attorneys at the time they
October 2003, the number of applicants expected to be offered by the register to take the examination, it is
indicating they were attorneys was 26%, commercial entity five days a week, noted that the average income for males
16%, 17% and 16%, respectively. excluding holidays. Consequently, in the United States is about $58,000.
Conversely, the USPTO estimates that applicants will have more opportunities For females in the United States, the
approximately 81% of applicants are to take the examination, rather than average income is $41,000. See ‘‘Income
not licensed attorneys at the time they waiting for the Office to administer the In The United States: 2002 Current
seek registration to take the enrollment examination only twice per year. Population Reports Consumer Income’’
examination. issued by the U.S. Census Bureau, page
Substantial Number of Persons Affected
9, www.census.gov/prod/2003pubs/p60-
The Office does not require applicants Of approximately 5,897 applications 221.pdf. It is equally likely that an
to identify their affiliation with a filed in Fiscal Year 2003 for recognition applicant for registration is a male or
particular type of employer (law firm, to practice before the USPTO in patent female. Accordingly, it is assumed that
business, solo practitioner, etc.) at the cases, approximately 5,338 individuals the average income of an applicant is
time of application. Furthermore, the were admitted to take the examination. $49,500, the average of the incomes of
Office does not require applicants to Based upon the admission rate males and females in the United States.
categorize their employer as a large or (approximately 90%), the USPTO In comparison to the average income of
small entity. In a customer satisfaction estimates that approximately the same a citizen of the United States, the $40
survey answered by 1,651 patent number of individuals will be affected increase in total fees to take the
attorneys in 2002, the Office collected by the change to Sec. 1.21. computerized examination is not
data indicating that approximately significant.
63.5% of patent attorneys are affiliated Not a Significant Economic Impact
In addition, the Office is giving
with a law firm. The Office believes that The $40 increase in fees to take the applicants the option of taking the
the affiliation of attorney-applicants registration examination is insignificant. examination by computer or by paper
does not dramatically differ from the The previously charged $310 fee has not (discussed below). Applicants may
affiliation of patent attorneys who been increased since 1997. In choose the lower priced option of taking
responded to the survey. Thus, comparison to examination fees charged the computerized examination, rather
estimates for attorney income are based by various state bars, the $350 total fee than choosing to take the higher priced
on the compensation attorneys receive is quite low. See, e.g., Comprehensive paper examination. There is no
in law firms. Guide to Bar Admissions 2004, Chart XI, substantive difference between the
Only individuals, not legal entities, Bar Admissions Fees (National computerized and paper versions of the
may take the registration examination. Conference of Bar Examiners and examination. Applicants who take the
This is true even if the individual is a American Bar Association Section of computerized examination will not be
lawyer having a solo practice. The fees Legal Education and Admissions to the required to purchase computers,
associated with the application and Bar), also available on the Internet at software or computer programs.
examination may be paid by the www.ncbex.org/pub.htm. All state bars
individual applicant or by his or her charge bar examination fees. For non- Paper Examination Fee
employer. Employers, some of which attorneys, the state bar examination fee Section 1.21(a)(1)(ii)(B) establishes a
may qualify as small entities, are not ranges from $100 to $1,450, and for $450 registration examination fee for
required to pay the fees. Whether the attorneys, the fee ranges from $100 to test administration by the Office. For the
individual or the business (small or $2,500. The USPTO examination fee is past several decades, the Office of
large) bears the cost of the fees is at the less than or equal to the fee charged by Personnel Management administered a
option of the individual and the 34 states for non-attorneys, and less paper examination for the Office, which
employer. Inasmuch as the rules do not than or equal to the fee charged by 33 cost applicants $310. The Office must
require the business (large or small) to states for attorneys. charge the $450 fee in order to recoup
bear the cost of the fees, the Small As previously noted, the Office the higher costs of administering the
Business Administration’s size estimates that approximately 19% of paper examination. The examination
standards for offices of lawyers are not applicants seeking enrollment are provided for under Section
applicable. Thus, the Office has attorneys licensed to practice in a U.S. 1.21(a)(i)(ii)(B) will be given on paper
considered, but rejected, measuring the jurisdiction. Of this 19% of applicants, only once per year at or relatively near

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the USPTO headquarters office in who desire to take the examination on felony or crime involving moral
Alexandria, Virginia. paper. Applicants are not required, turpitude or breach of fiduciary duty;
under this rule making or any other and on petition for reinstatement by a
Not a Substantial Number of Small
statute or regulation, to take the paper person excluded or suspended on
Entities
examination. Taking the more expensive ethical grounds, or excluded on consent
The Office does not believe that a paper examination is solely at the from practice before the Office.
substantial number of applicants will discretion of the applicant.
request the Office to deliver the paper Not a Substantial Number of Small
In fact, the commercial entity
examination to them because the Entities
providing the computerized
administration and grading of such a examination will be able to The Office initially estimated that
paper examination will cost more and accommodate those applicants who there would be approximately two such
will take more time to process. Release require a reasonable accommodation. applications filed annually. In Fiscal
of results will take much longer than in Thus, there is no reason that an Year 2003, one application for
the case of the electronic examination. applicant would be required to take the registration and three petitions for
As a result, applicants who choose the paper examination administered by the reinstatement were filed with the
paper examination will not be eligible Office, which costs more than the Director of Enrollment and Discipline
for registration as quickly as those computerized examination given by a for applicants that would fall within the
passing the computerized examination. commercial entity. scope of this rule. In view of the figures
Based on the 5,897 applications for Fiscal Year 2003, the Office is
received in Fiscal Year 2003, the Office Petition Fee revising its estimate to four applications
estimates that the change to Sec. 1.21 Section 1.21(a)(5)(i) establishes a fee filed annually that would be affected by
would impact few (about 2%) of $130 for petitions to the Director of the provision in Sec. 1.21(a)(10). Based
registration applicants. It is estimated the Office of Enrollment and Discipline. on the 5,897 applications received in
that approximately 130 individuals will Fiscal Year 2003, the Office estimates
request that the Office administer a Not a Substantial Number of Small that the change to Sec. 1.21 would
paper examination to them and grade it Entities impact very few (0.06%) applicants. As
annually. The Office estimates that The Office initially estimated that such, the rule does not affect a
approximately one half of DC metro area there would be approximately 69 substantial number of individuals.
applicants may wish to take the paper petitions impacted by this fee. In Fiscal
Years 2002 and 2003, there were, Not a Significant Economic Impact
examination.
In Fiscal Year 2003, the number of respectively, 67 and 57 petitions to the The $1,600 fee is an increase of
local applicants taking the examination Director of Enrollment and Discipline $1,560 over the $40 application fee the
in each of two administrations was 235 filed by registration applicants. The affected individuals paid under the
and 238, respectively. In Fiscal Year Office is revising its estimate to be 62 previous rule, 37 CFR 1.21(a)(1)(i). This
2002, the number of local applicants petitions, the average of the number of fee increase is necessary in order for the
taking the examination in each of two the petitions filed in Fiscal Years 2002 Office to cover a portion of the expenses
administrations was 285 and 252, and 2003. Based on 5,897 applications associated with investigating and
respectively. In Fiscal Year 2001, the received in Fiscal Year 2003, the Office resolving these types of petitions, based
number of local applicants taking the estimates that the change to Sec. 1.21 on average hours spent by the OED
examination in each of two would impact few (about 0.1%) of Director, staff attorneys, paralegals, and
administrations was 270 and 285, registration applicants. As such, the rule clericals.
respectively. Assuming that one half of does not affect a substantial number of The adoption of the $1,600 fee will
the applicants would want to take the individuals. not have a significant economic impact
paper examination, the Office estimates on a substantial number of small
Not a Significant Economic Impact entities. For any given fiscal year, the
approximately 130 applicants will
desire to take the paper examination Adoption of the $130 fee will not persons who will be required to pay this
provided for under this final rule have a significant economic impact on fee will be attorneys an estimated 75%
section. As such, the rule does not affect a substantial number of small entities. of the time. Thus, in a majority of the
a substantial number of individuals. The average total compensation of situations where a practitioner must pay
lawyers in a law firm ranges from this fee, the average total compensation
Not a Significant Economic Impact $102,841 to $299,391. The average of attorneys in a law firm ranges from
The $450 fee is an increase of only annual income of an individual $102,841 to $299,391. In the remaining
$140 over the fee previously charged to applicant (non-attorney) is $49,500. situations, the average income of the
take the examination. person who will be required to pay this
As previously stated, approximately Application/Reinstatement Fee
fee is approximately $49,500. The $1540
19% of applicants are attorneys, and Section 1.21(a)(10) imposes a $1600 increase does not have a significant
approximately 63.5% of those attorneys fee on application by applicants for economic impact on either attorneys or
earn an average annual income ranging recognition or registration after non-attorneys.
from $102,841 to $299,391. disbarment or suspension on ethical
Approximately 81% of applicants are grounds, or resignation pending Regulatory Flexibility Act Comments
non-attorneys, with an average annual disciplinary proceedings in any other and Responses
income of $49,500. This fee increase jurisdiction; on application by a person The Office received five comments,
will not have a significant economic for recognition or registration who is three from individuals and two from an
impact on attorneys or non-attorneys. asserting rehabilitation from prior intellectual property law organization,
In addition, the paper examination is conduct that resulted in an adverse regarding the impact of these rules upon
provided as an alternative to the decision in the Office regarding the small entities. With regard to comments
computerized examination. In this way, person’s moral character; on application about rules promulgated in this final
the USPTO affords applicants a by a person for recognition or rule making, the comments are
voluntary, additional option for those registration after being convicted of a summarized and addressed below.

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Comment: One comment suggested CFR 10.6(c). All registration example, as discussed in detail above,
that the Office is proposing ‘‘to requirements are substantially uniform. for the vast majority of individuals
registration institute [sic] fees based on All applicants have met the scientific seeking registration, the increase in the
assumptions of how much people and training qualifications found in the fee associated with admission to the
make.’’ The comment further states, ‘‘I regulations. Accordingly, all individuals examination is only $40. The increase in
am always disturbed that these fee registered to practice before the Office fees simply does not have a significant
schedules consider only full time and are believed to possess the requisite economic impact on individuals who
inactive attorneys. There is no level of competence. may qualify as small entities.
consideration given for part time The Office does not require Comment: Two letters from an
attorneys.’’ preceptorships (a period of training). As intellectual property law organization
Response: Inasmuch as the comment discussed in response to Comment 33, complained, in general, about whether
references ‘‘institut[ing]’’ fees, the supra, Commissioner Robertson, in a the USPTO has complied with the
comment is construed as referring to the 1933 report, termed the registration requirements of the Regulatory
annual fees (not previously charged) system upon submission of affidavits of Flexibility Act in certifying that the
that were included in the notice of attorneys as neither reliable nor notice of proposed rule making will not
proposed rule making. The instant rules satisfactory. Commissioner Robertson have a significant economic impact on
change only the fees associated with regarded the applicant’s showing of a substantial number of small entities.
becoming registered to practice. ‘‘several examples of his ability to Response: As noted above, the USPTO
Accordingly, changing the fees to prosecute a patent application’’ as has complied with all requirements of
become registered would not involve ‘‘perfunctory’’ and ‘‘certainly not the Regulatory Flexibility Act by
‘‘institut[ing]’’ fees for full time, part sufficient.’’ Additionally, the certifying that this rule making will not
time, or inactive attorneys who are Commissioner cited the required have a significant economic impact on
already registered to practice. The fees affidavit as being ‘‘subject to the great a substantial number of small entities.
considered in the instant final rules do weakness of friendship between The Office certified, in the Notice of
not address the annual fees. Thus, the attorneys and the applicant,’’ and that Proposed Rule Making, that an initial
Office will address the impact of annual an ‘‘established attorney hesitates to Regulatory Flexibility Act analysis was
fees upon part time attorneys when the refuse to make an affidavit as to not required because the notice of
final rule adopting annual fees is competency of one of his employees proposed rule making did not have a
promulgated. who is ambitious and is striving to significant economic impact on a
Comment: One comment suggested climb the ladder of success.’’ The substantial number of small entities. See
improvements in licensing (including practice was ended in 1934. The 68 F.R. 69442, 69510–69511 (Dec. 12,
preceptorship) in order to assist small suggested preceptorship, being subject 2003). With respect to this final rule
businesses and inventors who are not to the same weaknesses as the affidavit making, for a more detailed explanation
able to judge the qualifications of practice rejected by Commissioner of the certification, please see the
registered practitioners. The comment Robertson, is not satisfactory for the Factual Basis set forth in this section,
opines that the proposed rules allow same reasons. above.
incompetent practitioners to prey on Comment: One comment said the None of these comments change the
small businesses and individuals and proposed rules governing recognition of USPTO’s assessment that the
will increase the cost of obtaining individuals to practice should be preparation of a Regulatory Flexibility
meaningful patent protection for small carefully considered with regard to Act analysis is not required. This rule
businesses because of the loss of rights adverse consequences on smaller making will not have a significant
due to drafting inadequate businesses. The comment also suggested economic impact on a substantial
specifications and claims. that the proposed rules were not well number of small entities.
Response: The registration thought-out concerning whether they Executive Order 13132: This notice of
requirements set forth in this rule make access to the USPTO more rule making does not contain policies
package operate to protect small difficult and costly for small businesses. with federalism implications sufficient
entities, independent inventors and The comment also alleges that the to warrant preparation of a Federalism
large entities alike. These rules allow for proposed rules unnecessarily disrupt Assessment under Executive Order
a practitioner to provide legal services the prosecution of a significant number 13132 (August 4, 1999).
after certain registration requirements of patent applications currently before Executive Order 12866: This notice of
are met. Small entities may confidently the USPTO. rule making has been determined to be
rely upon the Office’s registration of Response: The rules adopted in this not significant for purposes of Executive
practitioners to the same extent that rule making package do not make access Order 12866 (September 30, 1993).
larger entities do. Thus, the rules do not to the Office more difficult or costly for Paperwork Reduction Act: This notice
increase the cost of obtaining small entities. The rules do not affect of rule making involves information
meaningful patent protection for either the Office fees for patent or trademark collection requirements which are
small or large businesses. applications. In fact, qualifying small subject to review by the Office of
The registration rules ensure that all entities pay reduced fees to obtain Management and Budget (OMB) under
recognized practitioners meet the same patents under the current fee structure. the Paperwork Reduction Act of 1995
scientific and technical competency The fees in this final rule package (44 U.S.C. 3501 et seq.). This rule
requirements to practice before the affect only individuals seeking introduces new information
USPTO. Of the 5,897 applicants for registration as attorneys or agents. Only requirements and fees into collection
registration in Fiscal Year 2003, individuals, not businesses or other 0651–0012. Additional information
approximately 5,338 were admitted to legal entities, may be registered to collection activities involved in this
the registration examination. About practice before the Office in patent notice of rule making are covered under
another 120 applicants are registered to cases. To the extent that an individual OMB control number 0651–0017.
practice pursuant to the last sentence of may qualify as a small entity, the The title, description, and respondent
37 CFR 10.7(b) or reciprocally registered economic impact of the fee increases in description of the currently approved
as foreign patent agents pursuant to 37 this rule package is not significant. For information collection 0651–0012 are

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shown below with an estimate of the suggestions for reducing this burden, to Virginia 22313–1450’’ or to specific
annual reporting burdens. Harry I. Moatz, Director of Enrollment areas within the Office as set out in
Included in this estimate is the time and Discipline, United States Patent and paragraphs (a)(1), and (a)(3)(iii) of this
for reviewing instructions, gathering Trademark Office, P.O. Box 1450, section. When appropriate,
and maintaining the data needed, and Alexandria, Virginia 22313–1450, or to correspondence should also be marked
completing and reviewing the collection the Office of Information and Regulatory for the attention of a particular office or
of information. The principal impact of Affairs of OMB, New Executive Office individual.
the changes in this notice of rule making Building, 725 17th Street, NW., Room * * * * *
is to applicants seeking registration as 10235, Washington, DC 20503, (5) Office of Enrollment and
patent attorneys and agents. Attention: Desk Officer for the United Discipline correspondence. All
OMB Number: 0651–0012. States Patent and Trademark Office. correspondence directed to the Office of
Title: Admittance to Practice and Notwithstanding any other provision Enrollment and Discipline concerning
Roster of Registered Patent Attorneys of law, no person is required to respond enrollment, registration, and
and Agents Admitted to Practice Before to nor shall a person be subject to a investigation matters should be
the United States Patent and Trademark penalty for failure to comply with a addressed to Mail Stop OED, Director of
Office (USPTO). collection of information subject to the
Form Numbers: PTO–158, PTO158A, the United States Patent and Trademark
requirements of the Paperwork Office, P.O. Box 1450, Alexandria,
PTO–275, PTO–107A, PTO–1209. Reduction Act unless that collection of
Affected Public: Individuals or Virginia 22313–1450.
information displays a currently valid
households, business or other for-profit, * * * * * *
OMB control number.
Federal Government, and State, local or ■ 3. Section 1.21 is amended by revising
tribal governments. List of Subjects paragraph (a) to read as follows:
Estimated Number of Respondents: 37 CFR Part 1 § 1.21 Miscellaneous fees and charges.
24,024.
Estimated Time Per Response: The Administrative practice and * * * * *
USPTO estimates that it takes the public procedure, Courts, Freedom of (a) Registration of attorneys and
30 minutes to complete either an information, Inventions and patents, agents:
application for registration to practice Reporting and recordkeeping (1) For admission to examination for
before the USPTO, or an application for requirements, Small businesses. registration to practice:
a foreign resident to practice before the 37 CFR Part 10 (i) Application Fee (non-refundable)—
USPTO and, depending upon the $40.00
complexity of the situation, to gather, Administrative practice and (ii) Registration examination fee
prepare and submit the application. It is procedure, Inventions and patents, (A) For test administration by
estimated to take 20 minutes to Lawyers, Reporting and recordkeeping commercial entity—$200.00
complete undertakings under 37 CFR requirements.
(B) For test administration by the
10.10(b); 10 minutes to complete data 37 CFR Part 11 USPTO—$450.00
sheets; 5 minutes to complete the oath (2) On registration to practice or grant
or affirmation; 45 minutes to complete Administrative practice and
procedure, Inventions and patents, of limited recognition under § 11.9(b) or
the petition for waiver of regulations; (c)—$100.00
and 90 minutes to complete the written Lawyers, Reporting and recordkeeping
requirements. (3) For reinstatement to practice—
request for reconsideration of $40.00
disapproval notice of application and ■ For the reasons set forth in the (4) For certificate of good standing as
the petition for reinstatement to preamble, the United States Patent and an attorney or agent—$10.00
practice. These times include time to Trademark Office is amending 37 CFR (i) Suitable for framing—$20.00
gather the necessary information, parts 1, 10, and 11 as follows:
(ii) [Reserved]
prepare and submit the forms and
PART 1—RULES OF PRACTICE IN (5) For review of decision:
requirements in this collection.
Estimated Total Annual Burden PATENT CASES (i) By the Director of Enrollment and
Hours: 6,078. Discipline under § 11.2(c)—$130.00
■ 1. The authority citation for 37 CFR (ii) Of the Director of Enrollment and
Needs and Uses: The public uses the
part 1 continues to read as follows: Discipline under § 11.2(d)—$130.00
forms in this collection to apply for the
examination for registration, to ensure Authority: 35 U.S.C. 2(b)(2), unless (6)–(9) [Reserved]
that all of the necessary information is otherwise noted. (10) On application by a person for
provided to the USPTO and to request ■ 2. Section 1.1 is amended by revising recognition or registration after
inclusion on the Register of Patent paragraph (a) introductory text and by disbarment or suspension on ethical
Attorneys and Agents. adding paragraph (a)(5) to read as grounds, or resignation pending
Comments have been invited on: (1) follows: disciplinary proceedings in any other
Whether the collection of information is jurisdiction; on application by a person
necessary for proper performance of the § 1.1 Addresses for non-trademark for recognition or registration who is
functions of the agency; (2) the accuracy correspondence with the United States asserting rehabilitation from prior
of the agency’s estimate of the burden; Patent and Trademark Office. conduct that resulted in an adverse
(3) ways to enhance the quality, utility, (a) In general. Except as provided in decision in the Office regarding the
and clarity of the information to be paragraphs (a)(3)(i), (a)(3)(ii), and (d)(1) person’s moral character; and on
collected; and (4) ways to minimize the of this section, all correspondence application by a person for recognition
burden of the collection of information intended for the United States Patent or registration after being convicted of a
to respondents. and Trademark Office must be felony or crime involving moral
Interested persons were requested to addressed to either ‘‘Director of the turpitude or breach of fiduciary duty; on
send comments regarding these United States Patent and Trademark petition for reinstatement by a person
information collections, including Office, P.O. Box 1450, Alexandria, excluded or suspended on ethical

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grounds, or excluded on consent from § 10.3 [Removed] 11.5 Register of attorneys and agents in
practice before the Office.—$1,600.00 ■ 9. Section 10.3 is removed and patent matters.
reserved. 11.6 Registration of attorneys and agents.
* * * * * 11.7 Requirements for registration.
■ 4. Section 1.31 is revised to read as § 10.5 [Removed] 11.8 Oath and registration fee.
follows: 11.9 Limited recognition in patent matters.
■ 10. Section 10.5 is removed and 11.10 Restrictions on practice in patent
§ 1.31 Applicants may be represented by a reserved. matters.
registered attorney or agent. 11.11 Notification.
§ 10.6 [Removed]
An applicant for patent may file and Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35
prosecute his or her own case, or he or ■ 11. Section 10.6 is removed and U.S.C. 2(b)(2)(D), 32.
she may be represented by a registered reserved.
attorney, registered agent, or other Subpart A—General Provisions
§ 10.7 [Removed]
individual authorized to practice before General Information
the United States Patent and Trademark ■ 12. Section 10.7 is removed and
Office in patent matters. See §§ 11.6 and reserved. § 11.1 Definitions.
11.9 of this subchapter. The United § 10.8 [Removed] This part governs solely the practice
States Patent and Trademark Office of patent, trademark, and other law
cannot aid in the selection of a ■ 13. Section 10.8 is removed and before the United States Patent and
registered attorney or agent. reserved. Trademark Office. Nothing in this part
§ 10.9 [Removed] shall be construed to preempt the
■ 5. Section 1.33, paragraph (c), is
authority of each State to regulate the
revised to read as follows: ■ 14. Section 10.9 is removed and practice of law, except to the extent
§ 1.33 Correspondence respecting patent
reserved. necessary for the United States Patent
applications, reexamination proceedings, § 10.10 [Removed] and Trademark Office to accomplish its
and other proceedings. Federal objectives. Unless otherwise
■ 15. Section 10.10 is removed and clear from the context, the following
* * * * *
reserved. definitions apply to this part:
(c) All notices, official letters, and
■ 16. Section 10.11 is revised to read as Attorney or lawyer means an
other communications for the patent
owner or owners in a reexamination follows: individual who is a member in good
proceeding will be directed to the standing of the highest court of any
§ 10.11 Removing names from the register.
attorney or agent of record (See State, including an individual who is in
A letter may be addressed to any good standing of the highest court of
§ 1.34(b)) in the patent file at the individual on the register, at the address
address listed on the register of patent one State and under an order of any
of which separate notice was last court or Federal agency suspending,
attorneys and agents maintained received by the Director, for the purpose
pursuant to §§ 11.5 and 11.11 of this enjoining, restraining, disbarring or
of ascertaining whether such individual otherwise restricting the attorney from
subchapter or, if no attorney or agent is desires to remain on the register. The
of record, to the patent owner or owners practice before the bar of another State
name of any individual failing to reply or Federal agency. A non-lawyer means
at the address or addresses of record. and give any information requested by a person or entity who is not an attorney
* * * * * the Director within a time limit or lawyer.
■ 6. Section 1.455 is amended by specified will be removed from the Belief or believes means that the
revising the first sentence of paragraph register and the names of individuals so person involved actually supposed the
(a) to read as follows: removed will be published in the fact in question to be true. A person’s
Official Gazette. The name of any belief may be inferred from
§ 1.455 Representation in international individual so removed may be circumstances.
applications. reinstated on the register as may be Conviction or convicted means any
(a) Applicants of international appropriate and upon payment of the confession to a crime; a verdict or
applications may be represented by fee set forth in § 1.21(a)(3) of this judgment finding a person guilty of a
attorneys or agents registered to practice subchapter. crime; any entered plea, including nolo
before the United States Patent and ■ 17. Part 11 is added as follows: contendre or Alford plea, to a crime; or
Trademark Office or by an applicant receipt of deferred adjudication
appointed as a common representative PART 11—REPRESENTATION OF (whether judgment or sentence has been
(PCT Art. 49, Rules 4.8 and 90 and OTHERS BEFORE THE UNITED entered or not) for an accused or pled
§ 11.9). * * * STATES PATENT AND TRADEMARK crime.
* * * * * OFFICE Crime means any offense declared to
be a felony or misdemeanor by Federal
PART 10—REPRESENTATION OF Subpart A—General Provisions or State law in the jurisdiction where
OTHERS BEFORE THE PATENT AND General Information the act occurs.
TRADEMARK OFFICE Sec.
Data sheet means a form used to
11.1 Definitions. collect the name, address, and
■ 7. The authority citation for 37 CFR 11.2 Director of the Office of Enrollment telephone information from individuals
Part 10 continues to read as follows: and Discipline. recognized to practice before the Office
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 11.3 Suspension of rules. in patent matters.
U.S.C. 2, 6, 32, 41.
Fiscal year means the time period
Subpart B—Recognition To Practice Before
the USPTO
from October 1st through the ensuing
§ 10.2 [Removed]
September 30th.
Patents, Trademarks, and Other Non-Patent Fraud or fraudulent means conduct
■ 8. Section 10.2 is removed and Law having a purpose to deceive and not
reserved. 11.4 [Reserved] merely negligent misrepresentation or

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failure to apprise another of relevant significantly more probable than not with the consent of the Committee on
information. that there will be no recurrence in the Discipline initiate disciplinary
Good moral character and reputation foreseeable future of the practitioner’s proceedings under § 10.132(b) of this
means the possession of honesty and prior disability or addiction. subchapter, and perform such other
truthfulness, trustworthiness and State means any of the 50 states of the duties in connection with investigations
reliability, and a professional United States of America, the District of and disciplinary proceedings as may be
commitment to the legal process and the Columbia, and other territories and necessary.
administration of justice, as well as the possessions of the United States of (5)–(7) [Reserved]
condition of being regarded as America. (c) Petition to OED Director. Any
possessing such qualities. Substantial when used in reference to petition from any action or requirement
Knowingly, known, or knows means degree or extent means a material matter of the staff of OED reporting to the OED
actual knowledge of the fact in question. of clear and weighty importance. Director shall be taken to the OED
A person’s knowledge may be inferred Suspend or suspension means a Director. Any such petition not filed
from circumstances. temporary debarring from practice within sixty days from the mailing date
Matter means any litigation, before the Office or other jurisdiction. of the action or notice from which relief
administrative proceeding, lobbying United States means the United States is requested will be dismissed as
activity, application, claim, of America, and the territories and untimely. The filing of a petition will
investigation, controversy, arrest, possessions the United States of not stay the period for taking other
charge, accusation, contract, America. action which may be running, or stay
negotiation, estate or family relations USPTO Director means the Director of other proceedings. A final decision by
practice issue, request for a ruling or the United States Patent and Trademark the OED Director may be reviewed in
other determination, or any other matter Office, or an employee of the Office accordance with the provisions of
covered by the conflict of interest rules delegated authority to act for the paragraph (d) of this section.
of the appropriate Government entity. Director of the United States Patent and
(d) Review of OED Director’s decision.
OED means the Office of Enrollment Trademark Office in matters arising
An individual dissatisfied with a final
and Discipline. under this part.
decision of the OED Director, except for
OED Director means the Director of
§ 11.2 Director of the Office of Enrollment a decision dismissing a complaint or
the Office of Enrollment and Discipline.
OED Director’s representatives means and Discipline. closing an investigation, may seek
attorneys within the USPTO Office of (a) Appointment. The USPTO Director review of the decision upon petition to
General Counsel who act as shall appoint a Director of the Office of the USPTO Director accompanied by
representatives of the OED Director. Enrollment and Discipline (OED payment of the fee set forth in
Office means the United States Patent Director). In the event of the absence of § 1.21(a)(5)(ii) of this subchapter. A
and Trademark Office. the OED Director or a vacancy in the decision dismissing a complaint or
Practitioner means: office of the OED Director, or in the closing an investigation is not subject to
(1) An attorney or agent registered to event that the OED Director recuses review by petition. Any petition not
practice before the Office in patent himself or herself from a case, the filed within sixty days from the mailing
matters, USPTO Director may designate an date of the final decision of the OED
(2) An individual authorized under 5 employee of the Office to serve as acting Director will be dismissed as untimely.
U.S.C. 500(b) or otherwise as provided OED Director. The OED Director and Any petition shall be limited to the facts
by § 10.14(b), (c), and (e) of this any acting OED Director shall be an of record. Briefs or memoranda, if any,
subchapter, to practice before the Office active member in good standing of the in support of the petition shall
in trademark matters or other non- bar of a State. accompany or be embodied therein. The
patent matters, or (b) Duties. The OED Director shall: USPTO Director in deciding the petition
(3) An individual authorized to (1) Supervise staff as may be will consider no new evidence. Copies
practice before the Office in a patent necessary for the performance of the of documents already of record before
case or matters under § 11.9(a) or (b). OED Director’s duties. the OED Director need not be submitted
Proceeding before the Office means an (2) Receive and act upon applications with the petition. No oral hearing on the
application for patent, an application for for registration, prepare and grade the petition will be held except when
reissue, a reexamination, a protest, a examination provided for in § 11.7(b), considered necessary by the USPTO
public use matter, an inter partes patent maintain the register provided for in Director. Any request for
matter, correction of a patent, correction § 11.5, and perform such other duties in reconsideration of the decision of the
of inventorship, an application to connection with enrollment and USPTO Director will be dismissed as
register a trademark, an inter partes recognition of attorneys and agents as untimely if not filed within thirty days
trademark matter, an appeal, a petition, may be necessary. after the mailing date of said decision.
and any other matter that is pending (3) Conduct investigations into the If any request for reconsideration is
before the Office. moral character and reputation of any filed, the decision on reconsideration
Reasonable or reasonably when used individual seeking to be registered as an shall be the final agency action.
in relation to conduct by a practitioner attorney or agent, or of any individual
seeking limited recognition, deny § 11.3 Suspension of rules.
means the conduct of a reasonably
prudent and competent practitioner. registration or recognition of individuals In an extraordinary situation, when
Registration means registration to failing to demonstrate possession of justice requires, any requirement of the
practice before the Office in patent good moral character and reputation, regulations of this part which is not a
proceedings. and perform such other duties in requirement of statute may be
Roster means a list of individuals who connection with enrollment matters and suspended or waived by the USPTO
have been registered as either a patent investigations as may be necessary. Director or the designee of the USPTO
attorney or patent agent. (4) The Director shall conduct Director, sua sponte or on petition of
Significant evidence of rehabilitation investigations into possible violations any party, including the OED Director or
means satisfactory evidence that is by practitioners of Disciplinary Rules, the OED Director’s representative,

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subject to such other requirements as (1) If the alien continues to lawfully (2) Established to the satisfaction of
may be imposed. reside in the United States and the OED Director that he or she:
registration does not become (i) Possesses good moral character and
Subpart B—Recognition To Practice inconsistent with the terms upon which reputation;
Before the USPTO the alien continues to lawfully reside in (ii) Possesses the legal, scientific, and
the United States or technical qualifications necessary for
Patents, Trademarks, and Other Non-
(2) If the alien ceases to reside in the him or her to render applicants valuable
Patent Law
United States, the alien is qualified to be service; and
§ 11.4 [Reserved] registered under paragraph (c) of this (iii) Is competent to advise and assist
section. See also § 11.9(b). patent applicants in the presentation
§ 11.5 Register of attorneys and agents in and prosecution of their applications
patent matters. (c) Foreigners. Any foreigner not a
resident of the United States who shall before the Office.
A register of attorneys and agents is (b)(1) To enable the OED Director to
file proof to the satisfaction of the OED
kept in the Office on which are entered determine whether an individual has
Director that he or she is registered and
the names of all individuals recognized the qualifications specified in paragraph
in good standing before the patent office
as entitled to represent applicants (a)(2) of this section, the individual
of the country in which he or she
having prospective or immediate shall:
resides and practices, and who is
business before the Office in the (i) File a complete application for
possessed of the qualifications stated in
preparation and prosecution of patent registration each time admission to the
§ 11.7, may be registered as a patent
applications. Registration in the Office registration examination is requested. A
agent to practice before the Office for
under the provisions of this part shall complete application for registration
the limited purpose of presenting and
entitle the individuals so registered to includes:
prosecuting patent applications of
practice before the Office only in patent (A) An application for registration
applicants located in such country,
matters. form supplied by the OED Director
provided that the patent office of such
wherein all requested information and
§ 11.6 Registration of attorneys and country allows substantially reciprocal
supporting documents are furnished,
agents. privileges to those admitted to practice (B) Payment of the fees required by
(a) Attorneys. Any citizen of the before the Office. Registration as a § 1.21(a)(1) of this subchapter,
United States who is an attorney and patent agent under this paragraph shall (C) Satisfactory proof of scientific and
who fulfills the requirements of this part continue only during the period that the technical qualifications, and
may be registered as a patent attorney to conditions specified in this paragraph (D) For aliens, provide proof that
practice before the Office. When obtain. Upon notice by the patent office recognition is not inconsistent with the
appropriate, any alien who is an of such country that a patent agent terms of their visa or entry into the
attorney, who lawfully resides in the registered under this section is no United States;
United States, and who fulfills the longer registered or no longer in good (ii) Pass the registration examination,
requirements of this part may be standing before the patent office of such unless the taking and passing of the
registered as a patent attorney to country, and absent a showing of cause examination is waived as provided in
practice before the Office, provided that why his or her name should not be paragraph (d) of this section. Unless
such registration is not inconsistent removed from the register, the OED examination is waived pursuant to
with the terms upon which the alien Director shall promptly remove the paragraph (d) of this section, each
was admitted to, and resides in, the name of the patent agent from the individual seeking registration must
United States and further provided that register and publish the fact of removal. take and pass the registration
the alien may remain registered only: Upon ceasing to reside in such country, examination to enable the OED Director
(1) If the alien continues to lawfully the patent agent registered under this to determine whether the individual
reside in the United States and section is no longer qualified to be possesses the legal and competence
registration does not become registered under this section, and the qualifications specified in paragraphs
inconsistent with the terms upon which OED Director shall promptly remove the (a)(2)(ii) and (a)(2)(iii) of this section.
the alien continues to lawfully reside in name of the patent agent from the An individual failing the examination
the United States, or register and publish the fact of removal. may, upon receipt of notice of failure
(2) If the alien ceases to reside in the (d) Interference matters. The Chief from OED, reapply for admission to the
United States, the alien is qualified to be Administrative Patent Judge or Vice examination. An individual failing the
registered under paragraph (c) of this Chief Administrative Patent Judge of the examination must wait thirty days after
section. See also § 11.9(b). Board of Patent Appeals and the date the individual last took the
(b) Agents. Any citizen of the United Interferences shall determine whether examination before retaking the
States who is not an attorney, and who and the circumstances under which an examination. An individual reapplying
fulfills the requirements of this part may attorney who is not registered may take shall:
be registered as a patent agent to testimony for an interference under 35 (A) File a completed application for
practice before the Office. When U.S.C. 24, or under § 1.672 of this registration form wherein all requested
appropriate, any alien who is not an subchapter. information and supporting documents
attorney, who lawfully resides in the are furnished,
United States, and who fulfills the § 11.7 Requirements for registration.
(B) Pay the fees required by
requirements of this part may be (a) No individual will be registered to § 1.21(a)(1) of this subchapter, and
registered as a patent agent to practice practice before the Office unless he or (C) For aliens, provide proof that
before the Office, provided that such she has: recognition is not inconsistent with the
registration is not inconsistent with the (1) Applied to the USPTO Director in terms of their visa or entry into the
terms upon which the alien was writing by completing an application for United States; and
admitted to, and resides in, the United registration form supplied by the OED (iii) Provide satisfactory proof of
States, and further provided that the Director and furnishing all requested possession of good moral character and
alien may remain registered only: information and material; and reputation.

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(2) An individual failing to file a separation from the patent examining periods in the Office, and was not under
complete application for registration corps. an oral or written warning regarding
will not be admitted to the examination (2) Former patent examiners who on such performance elements at the time
and will be notified of the July 26, 2004, had actively served four of separation from the Office.
incompleteness. Applications for years in the patent examining corps, (4) To be eligible for consideration for
registration that are incomplete as and were serving in the corps at the time waiver, an individual formerly
originally submitted will be considered of their separation. The OED Director employed by the Office within the scope
only when they have been completed may waive the taking of a registration of one of paragraphs (d)(1), (d)(2) or
and received by OED, provided that this examination in the case of any (d)(3) of this section must file a
occurs within sixty days of the mailing individual meeting the requirements of complete application for registration
date of the notice of incompleteness. paragraph (b)(1)(i)(C) of this section who and pay the fee required by
Thereafter, a new and complete is a former patent examiner and by July § 1.21(a)(1)(i) of this subchapter within
application for registration must be 26, 2004, had served four years in the two years of the individual’s date of
filed. Only an individual approved as patent examining corps, if the separation from the Office. All other
satisfying the requirements of individual demonstrates that he or she: individuals formerly employed by the
paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (i) Actively served for at least four Office, including former examiners,
(b)(1)(i)(C) and (b)(1)(i)(D) of this section years in the patent examining corps of filing an application for registration or
may be admitted to the examination. the Office by July 26, 2004, and was fee more than two years after separation
(3) If an individual does not reapply serving in the corps at the time of from the Office, are required to take and
until more than one year after the separation from the Office; pass the registration examination. The
mailing date of a notice of failure, that (ii) Was rated at least fully successful individual or former examiner must pay
individual must again comply with in each quality performance element of the examination fee required by
paragraph (b)(1)(i) of this section. his or her performance plan for the last § 1.21(a)(1)(ii) of this subchapter within
(c) Each individual seeking two complete fiscal years as a patent thirty days after notice of non-waiver.
registration is responsible for updating examiner in the Office; and (e) Examination results. Notification
(iii) Was not under an oral or written of the examination results is final.
all information and answers submitted
warning regarding the quality Within sixty days of the mailing date of
in or with the application for
performance elements at the time of a notice of failure, the individual is
registration based upon anything
separation from the patent examining entitled to inspect, but not copy, the
occurring between the date the
corps. questions and answers he or she
application for registration is signed by
(3) Certain former Office employees incorrectly answered. Review will be
the individual, and the date he or she
who were not serving in the patent under supervision. No notes may be
is registered or recognized to practice
examining corps upon their separation taken during such review. Substantive
before the Office in patent matters. The
from the Office. The OED Director may review of the answers or questions may
update shall be filed within thirty days
waive the taking of a registration not be pursued by petition for regrade.
after the date of the occasion that An individual who failed the
examination in the case of a former
necessitates the update. examination has the right to retake the
Office employee meeting the
(d) Waiver of the Registration requirements of paragraph (b)(1)(i)(C) of examination an unlimited number of
Examination for Former Office this section who by petition times upon payment of the fees required
Employees. (1) Former patent examiners demonstrates possession of the by § 1.21(a)(1)(i) and (ii) of this
who by July 26, 2004, had not actively necessary legal qualifications to render subchapter, and a fee charged by a
served four years in the patent to patent applicants and others valuable commercial entity administering the
examining corps, and were serving in service and assistance in the preparation examination.
the corps at the time of their separation. and prosecution of their applications or (f) Application for reciprocal
The OED Director may waive the taking other business before the Office by recognition. An individual seeking
of a registration examination in the case showing that he or she has: reciprocal recognition under § 11.6(c),
of any individual meeting the (i) Exhibited comprehensive in addition to satisfying the provisions
requirements of paragraph (b)(1)(i)(C) of knowledge of patent law equivalent to of paragraphs (a) and (b) of this section,
this section who is a former patent that shown by passing the registration and the provisions of § 11.8(c), shall pay
examiner but by July 26, 2004, had not examination as a result of having been the application fee required by
served four years in the patent in a position of responsibility in the § 1.21(a)(1)(i) of this subchapter upon
examining corps, if the individual Office in which he or she: filing an application for registration.
demonstrates that he or she: (A) Provided substantial guidance on (g) Investigation of good moral
(i) Actively served in the patent patent examination policy, including character and reputation. (1) Every
examining corps of the Office and was the development of rule or procedure individual seeking recognition shall
serving in the corps at the time of changes, patent examination guidelines, answer all questions in the application
separation from the Office; changes to the Manual of Patent for registration and request(s) for
(ii) Received a certificate of legal Examining Procedure, development of comments issued by OED; disclose all
competency and negotiation authority; training or testing materials for the relevant facts, dates and information;
(iii) After receiving the certificate of patent examining corps, or development and provide verified copies of
legal competency and negotiation of materials for the registration documents relevant to his or her good
authority, was rated at least fully examination or continuing legal moral character and reputation. An
successful in each quality performance education; or individual who is an attorney shall
element of his or her performance plan (B) Represented the Office in patent submit a certified copy of each of his or
for the last two complete fiscal years as cases before Federal courts; and her State bar applications and moral
a patent examiner; and (ii) Was rated at least fully successful character determinations, if available.
(iv) Was not under an oral or written in each quality performance element of (2)(i) If the OED Director receives
warning regarding the quality his or her performance plan for said information from any source that
performance elements at the time of position for the last two complete rating reflects adversely on the good moral

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character or reputation of an individual misdemeanor provided satisfactory that he or she is complying with
seeking registration or recognition, the proof of reform and rehabilitation. treatment and undergoing recovery.
OED Director shall conduct an (i) An individual who has been (3) Moral character and reputation
investigation into the good moral convicted of a felony or a misdemeanor involving lack of candor. An
character and reputation of that identified in paragraph (h)(1) of this individual’s lack of candor in disclosing
individual. The investigation will be section shall not be eligible to apply for facts bearing on or relevant to issues
conducted after the individual has registration during the time of any concerning good moral character and
passed the registration examination, or sentence (including confinement or reputation when completing the
after the registration examination has commitment to imprisonment), deferred application or any time thereafter may
been waived for the individual, as adjudication, and period of probation or be found to be cause to deny registration
applicable. An individual failing to parole as a result of the conviction, and on moral character and reputation
timely answer questions or respond to for a period of two years after the date grounds.
an inquiry by OED shall be deemed to of completion of the sentence, deferred (4) Moral character and reputation
have withdrawn his or her application, adjudication, and period of probation or involving suspension, disbarment, or
and shall be required to reapply, pass parole, whichever is later. resignation from a profession. (i) An
the examination, and otherwise satisfy (ii) The following presumptions apply individual who has been disbarred or
all the requirements of this section. No to the determination of good moral suspended from practice of law or other
individual shall be certified for character and reputation of an profession, or has resigned in lieu of a
registration or recognition by the OED individual convicted of said felony or disciplinary proceeding (excluded or
Director until, to the satisfaction of the misdemeanor: disbarred on consent) shall be ineligible
OED Director, the individual (A) The court record or docket entry to apply for registration as follows:
demonstrates his or her possession of (A) An individual who has been
of conviction is conclusive evidence of
good moral character and reputation. disbarred from practice of law or other
guilt in the absence of a pardon or a
profession, or has resigned in lieu of a
(ii) The OED Director, in considering satisfactory showing of reform or
disciplinary proceeding (excluded or
an application for registration by an rehabilitation; and disbarred on consent) shall be ineligible
attorney, may accept a State bar’s (B) An individual convicted of a to apply for registration for a period of
character determination as meeting the felony or any misdemeanor identified in five years from the date of disbarment
requirements set forth in paragraph (g) paragraph (h)(1) of this section is or resignation.
of this section if, after review, the Office conclusively deemed not to have good (B) An individual who has been
finds no substantial discrepancy moral character and reputation, and suspended on ethical grounds from the
between the information provided with shall not be eligible to apply for practice of law or other profession shall
his or her application for registration registration for a period of two years be ineligible to apply for registration
and the State bar application and moral after completion of the sentence, until expiration of the period of
character determination, provided that deferred adjudication, and period of suspension.
acceptance is not inconsistent with probation or parole, whichever is later. (C) An individual who was not only
other rules and the requirements of 35 (iii) The individual, upon applying for disbarred, suspended or resigned in lieu
U.S.C. 2(b)(2)(D). registration, shall provide satisfactory of a disciplinary proceeding, but also
(h) Good moral character and evidence that he or she is of good moral convicted in a court of a felony, or of
reputation. Evidence showing lack of character and reputation. a crime involving moral turpitude or
good moral character and reputation (iv) Upon proof that a conviction has breach of trust, shall be ineligible to
may include, but is not limited to, been set aside or reversed, the apply for registration until the
conviction of a felony or a misdemeanor individual shall be eligible to file a conditions in paragraphs (h)(1) and
identified in paragraph (h)(1) of this complete application for registration (h)(4) of this section are fully satisfied.
section, drug or alcohol abuse; lack of and the fee required by § 1.21(a)(1)(ii) of (ii) An individual who has been
candor; suspension or disbarment on this subchapter and, upon passing the disbarred or suspended, or who
ethical grounds from a State bar; and registration examination, have the OED resigned in lieu of a disciplinary
resignation from a State bar while under Director determine, in accordance with proceeding shall file an application for
investigation. paragraph (h)(1) of this section, registration and the fees required by
(1) Conviction of felony or whether, absent the conviction, the § 1.21(a)(1)(ii) and (a)(10) of this
misdemeanor. An individual who has individual possesses good moral subchapter; provide a full and complete
been convicted of a felony or a character and reputation. copy of the proceedings that led to the
misdemeanor involving moral (2) Good moral character and disbarment, suspension, or resignation;
turpitude, breach of trust, interference reputation involving drug or alcohol and provide satisfactory proof that he or
with the administration of justice, false abuse. An individual’s record is she possesses good moral character and
swearing, misrepresentation, fraud, reviewed as a whole to see if there is a reputation. The following presumptions
deceit, bribery, extortion, drug or alcohol abuse issue. An shall govern the determination of good
misappropriation, theft, or conspiracy to individual appearing to abuse drugs or moral character and reputation of an
commit any felony or misdemeanor, is alcohol may be asked to undergo an individual who has been licensed to
presumed not to be of good moral evaluation, at the individual’s expense, practice law or other profession in any
character and reputation in the absence by a qualified professional approved by jurisdiction and has been disbarred,
of a pardon or a satisfactory showing of the OED Director. In instances where, suspended on ethical grounds, or
reform and rehabilitation, and shall file before an investigation commences, allowed to resign in lieu of discipline,
with his or her application for there is evidence of a present abuse or in that jurisdiction:
registration the fees required by an individual has not established a (A) A copy of the record resulting in
§ 1.21(a)(1)(ii) and (a)(10) of this record of recovery, the OED Director disbarment, suspension or resignation is
subchapter. The OED Director shall may request the individual to withdraw prima facie evidence of the matters
determine whether individuals his or her application, and require the contained in the record, and the
convicted of said felony or individual to satisfactorily demonstrate imposition of disbarment or suspension,

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or the acceptance of the resignation of misconduct was attributable in part to any other reasonable means if the
the individual shall be deemed the use of a controlled substance or address is outside the United States.
conclusive that the individual has alcohol, where abstinence may be (2) Following receipt of the
committed professional misconduct. demonstrated by, but is not necessarily individual’s response, or in the absence
(B) The individual is ineligible for limited to, enrolling in and complying of a response, the OED Director shall
registration and is deemed not to have with a self-help or professional consider the individual’s response, if
good moral character and reputation treatment program; any, and the record, and determine
during the period of the imposed (8) If the specific misconduct was whether, in the OED Director’s opinion,
discipline. attributable in part to a medically the individual has sustained his or her
(iii) The only defenses available with recognized mental disease, disorder or burden of satisfactorily demonstrating
regard to an underlying disciplinary illness, proof that the individual sought that he or she possesses good moral
matter resulting in disbarment, professional assistance, and complied character and reputation.
suspension on ethical grounds, or with the treatment program prescribed (k) Reapplication for registration. An
resignation in lieu of a disciplinary by the professional, and submitted individual who has been refused
proceeding are set out below, and must letters from the treating psychiatrist/ registration for lack of good moral
be shown to the satisfaction of the OED psychologist verifying that the character or reputation may reapply for
Director: medically recognized mental disease, registration two years after the date of
(A) The procedure in the disciplinary disorder or illness will not impede the the decision, unless a shorter period is
court was so lacking in notice or individual’s ability to competently otherwise ordered by the USPTO
opportunity to be heard as to constitute practice before the Office; Director. An individual, who has been
a deprivation of due process; (9) Payment of the fine imposed in notified that he or she is under
(B) There was such infirmity of proof connection with any criminal investigation for good moral character
establishing the misconduct as to give conviction; and reputation may elect to withdraw
rise to the clear conviction that the (10) Correction of behavior his or her application for registration,
Office could not, consistently with its responsible in some degree for the and may reapply for registration two
duty, accept as final the conclusion on misconduct; years after the date of withdrawal. Upon
that subject; or (11) Significant and conscientious
reapplication for registration, the
(C) The finding of lack of good moral involvement in programs designed to
individual shall pay the fees required by
character and reputation by the Office provide social benefits or to ameliorate
§ 1.21(a)(1)(ii) and (a)(10) of this
would result in grave injustice. social problems; and
(i) Factors that may be taken into (12) Change in attitude from that subchapter, and has the burden of
consideration when evaluating which existed at the time of the act of showing to the satisfaction of the OED
rehabilitation of an individual seeking a misconduct in question as evidenced by Director his or her possession of good
moral character and reputation any or all of the following: moral character and reputation as
determination. The factors enumerated (i) Statements of the individual; prescribed in paragraph (b) of this
below are guidelines to assist the OED (ii) Statements from persons familiar section. Upon reapplication for
Director in determining whether an with the individual’s previous registration, the individual also shall
individual has demonstrated misconduct and with subsequent complete successfully the examination
rehabilitation from an act of misconduct attitudes and behavioral patterns; prescribed in paragraph (b) of this
or moral turpitude. The factors include: (iii) Statements from probation or section, even though the individual has
(1) The nature of the act of parole officers or law enforcement previously passed a registration
misconduct, including whether it officials as to the individual’s social examination.
involved moral turpitude, whether there adjustments; and § 11.8 Oath and registration fee.
were aggravating or mitigating (iv) Statements from persons
competent to testify with regard to (a) After an individual passes the
circumstances, and whether the activity
neuropsychiatry or emotional examination, or the examination is
was an isolated event or part of a
disturbances. waived, the OED Director shall
pattern;
(2) The age and education of the (j) Notice to Show Cause. The OED promptly publish a solicitation for
individual at the time of the misconduct Director shall inquire into the good information concerning the individual’s
and the age and education of the moral character and reputation of an good moral character and reputation.
individual at the present time; individual seeking registration, The solicitation shall include the
(3) The length of time that has passed providing the individual with the individual’s name, and business or
between the misconduct and the opportunity to create a record on which communication postal address.
present, absent any involvement in any a decision is made. If, following inquiry (b) An individual shall not be
further acts of moral turpitude, the and consideration of the record, the registered as an attorney under § 11.6(a),
amount of time and the extent of OED Director is of the opinion that the registered as an agent under § 11.6(b) or
rehabilitation being dependent upon the individual seeking registration has not (c), or granted limited recognition under
nature and seriousness of the act of satisfactorily established that he or she § 11.9(b) unless within two years of the
misconduct under consideration; possesses good moral character and mailing date of a notice of passing
(4) Restitution by the individual to reputation, the OED Director shall issue registration examination or of waiver of
any person who suffered monetary to the individual a notice to show cause the examination the individual files
losses through acts or omissions of the why the individual’s application for with the OED Director a completed Data
individual; registration should not be denied. Sheet, an oath or declaration prescribed
(5) Expungement of a conviction; (1) The individual shall be given no by the USPTO Director, and the
(6) Successful completion or early less than ten days from the date of the registration fee set forth in § 1.21(a)(2) of
discharge from probation or parole; notice to reply. The notice shall be this subchapter. An individual seeking
(7) Abstinence from the use of given by certified mail at the address registration as an attorney under
controlled substances or alcohol for not appearing on the application if the § 11.6(a) must provide a certificate of
less than two years if the specific address is in the United States, and by good standing of the bar of the highest

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35458 Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules and Regulations

court of a State that is no more than six given limited recognition under decision, approval, disapproval,
months old. § 11.9(a) or (b) are permitted to recommendation, the rendering of
(c) An individual who does not prosecute patent applications of others advice, investigation or otherwise.’’ To
comply with the requirements of before the Office; or represent others in participate personally means directly,
paragraph (b) of this section within the any proceedings before the Office. and includes the participation of a
two-year period will be required to (b) Post employment agreement of subordinate when actually directed by
retake the registration examination. former Office employee. No individual the former Office employee in the patent
who has served in the patent examining or patent application. Substantially
§ 11.9 Limited recognition in patent corps or elsewhere in the Office may means that the employee’s involvement
matters.
practice before the Office after must be of significance to the matter, or
(a) Any individual not registered termination of his or her service, unless form a basis for a reasonable appearance
under § 11.6 may, upon a showing of he or she signs a written undertaking of such significance. It requires more
circumstances which render it necessary agreeing: than official responsibility, knowledge,
or justifiable, and that the individual is (1) To not knowingly act as agent or perfunctory involvement, or
of good moral character and reputation, attorney for, or otherwise represent, or involvement on an administrative or
be given limited recognition by the OED assist in any manner the representation peripheral issue. A finding of
Director to prosecute as attorney or of, any other person: substantiality should be based not only
agent a specified patent application or (i) Before the Office, on the effort devoted to a patent or
specified patent applications. Limited (ii) In connection with any particular patent application, but also on the
recognition under this paragraph shall patent or patent application, importance of the effort. While a series
not extend further than the application (iii) In which said employee of peripheral involvements may be
or applications specified. Limited participated personally and insubstantial, the single act of approving
recognition shall not be granted while substantially as an employee of the or participation in a critical step may be
individuals who have passed the Office; and substantial. It is essential that the
examination or for whom the (2) To not knowingly act within two participation be related to a ‘‘particular
examination has been waived are years after terminating employment by patent or patent application.’’ (See
awaiting registration to practice before the Office as agent or attorney for, or paragraph (b)(3)(iii) of this section.)
the Office in patent matters. otherwise represent, or assist in any (B) Participation on ancillary matters.
(b) A nonimmigrant alien residing in manner the representation of any other An Office employee’s participation on
the United States and fulfilling the person: subjects not directly involving the
provisions of § 11.7(a) and (b) may be (i) Before the Office, substantive merits of a patent or patent
granted limited recognition if the (ii) In connection with any particular application may not be ‘‘substantial,’’
nonimmigrant alien is authorized by the patent or patent application, even if it is time-consuming. An
Bureau of Citizenship and Immigration (iii) If such patent or patent employee whose official responsibility
Services to be employed or trained in application was pending under the is the review of a patent or patent
the United States in the capacity of employee’s official responsibility as an application solely for compliance with
representing a patent applicant by officer or employee within a period of administrative control or budgetary
presenting or prosecuting a patent one year prior to the termination of such considerations and who reviews a
application. Limited recognition shall responsibility. particular patent or patent application
be granted for a period consistent with (3) The words and phrases in for such a purpose should not be
the terms of authorized employment or paragraphs (b)(1) and (b)(2) of this regarded as having participated
training. Limited recognition shall not section are construed as follows: substantially in the patent or patent
be granted or extended to a non-United (i) Represent and representation mean application, except when such
States citizen residing abroad. If acting as patent attorney or patent agent considerations also are the subject of the
granted, limited recognition shall or other representative in any employee’s proposed representation.
automatically expire upon the appearance before the Office, or (C) Role of official responsibility in
nonimmigrant alien’s departure from communicating with an employee of the determining substantial participation.
the United States. Office with intent to influence. Official responsibility is defined in
(c) An individual not registered under (ii) Assist in any manner means aid or paragraph (b)(3)(v) of this section.
§ 11.6 may, if appointed by an help another person on a particular ‘‘Personal and substantial participation’’
applicant, prosecute an international patent or patent application involving is different from ‘‘official
patent application only before the representation. responsibility.’’ One’s responsibility
United States International Searching (iii) Particular patent or patent may, however, play a role in
Authority and the United States application means any patent or patent determining the ‘‘substantiality’’ of an
International Preliminary Examining application, including, but not limited Office employee’s participation.
Authority, provided that the individual to, a provisional, substitute, (v) Official responsibility means the
has the right to practice before the international, continuation, divisional, direct administrative or operating
national office with which the continuation-in-part, or reissue patent authority, whether intermediate or final,
international application is filed as application, as well as any protest, and either exercisable alone or with
provided in PCT Art. 49, Rule 90 and reexamination, petition, appeal, or others, and either personally or through
§ 1.455 of this subchapter, or before the interference based on the patent or subordinates, to approve, disapprove, or
International Bureau when the USPTO patent application. otherwise direct Government actions.
is acting as Receiving Office pursuant to (iv) Participate personally and (A) Determining official
PCT Rules 83.1 bis and 90.1. substantially. (A) Basic requirements. responsibility. Ordinarily, those areas
The restrictions of § 11.10(a)(1) apply assigned by statute, regulation,
§ 11.10 Restrictions on practice in patent only to those patents and patent Executive Order, job description, or
matters. applications in which a former Office delegation of authority determine the
(a) Only practitioners who are employee had ‘‘personal and substantial scope of an employee’s ‘‘official
registered under § 11.6 or individuals participation,’’ exercised ‘‘through responsibility’’. All particular matters

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under consideration in the Office are prudent for an employee to maintain a contact the Department of Commerce for
under the ‘‘official responsibility’’ of the record of only patent application information concerning applicable post-
Director of the Office, and each is under numbers of the applications actually employment restrictions.
that of any intermediate supervisor acted upon by decision or (d) An employee of the Office may not
having responsibility for an employee recommendation, as well as those prosecute or aid in any manner in the
who actually participates in the patent applications under the employee’s prosecution of any patent application
or patent application within the scope official responsibility which he or she before the Office.
of his or her duties. A patent examiner has not acted upon. (e) Practice before the Office by
would have ‘‘official responsibility’’ for (D) Self-disqualification. A former Government employees is subject to any
the patent applications assigned to him employee, e.g., former patent examiner, applicable conflict of interest laws,
or her. cannot avoid the restrictions of this regulations or codes of professional
(B) Ancillary matters and official section through self-disqualification responsibility.
responsibility. Administrative authority with respect to a patent or patent
as used in paragraph (v) of this section application for which he or she § 11.11 Notification.
means authority for planning, otherwise had official responsibility. A registered attorney or agent must
organizing and controlling a patent or However, an employee who through notify the OED Director of his or her
patent application rather than authority self-disqualification does not participate postal address for his or her office, up
to review or make decisions on ancillary personally and substantially in a to three e-mail addresses where he or
aspects of a patent or patent application particular patent or patent application is she receives e-mail, and business
such as the regularity of budgeting not subject to the lifetime restriction of telephone number, as well as every
procedures, public or community paragraph (b)(1) of this section. change to any of said addresses, or
relations aspects, or equal employment (vi) Pending means that the matter
telephone numbers within thirty days of
opportunity considerations. was in fact referred to or under
the date of the change. A registered
Responsibility for such an ancillary consideration by persons within the
attorney or agent shall, in addition to
consideration does not constitute employee’s area of official
any notice of change of address and
official responsibility for the particular responsibility.
telephone number filed in individual
patent or patent application, except (4) Measurement of the two-year
patent applications, separately file
when such a consideration is also the restriction period. The two-year period
written notice of the change of address
subject of the employee’s proposed under paragraph (b)(2) of this section is
or telephone number to the OED
representation. measured from the date when the
(C) Duty to inquire. In order for a Director. A registered practitioner who
employee’s official responsibility in a
former employee, e.g., former patent is an attorney in good standing with the
particular area ends, not from the
examiner, to be barred from bar of the highest court of one or more
termination of service in the Office,
representing or assisting in representing States shall provide the OED Director
unless the two occur simultaneously.
another as to a particular patent or with the State bar identification number
The prohibition applies to all particular
patent application, he or she need not associated with each membership. The
patents or patent applications subject to
have known, while employed by the OED Director shall publish from the
such official responsibility in the one-
Office, that the patent or patent roster a list containing the name, postal
year period before termination of such
application was pending under his or business addresses, business telephone
responsibility.
her official responsibility. The former (c) Former employees of the Office. number, registration number, and
employee has a reasonable duty of This section imposes restrictions registration status as an attorney or
inquiry to learn whether the patent or generally parallel to those imposed in agent of each registered practitioner
patent application had been under his 18 U.S.C. 207(a) and (b)(1). This section, recognized to practice before the Office
or her official responsibility. Ordinarily, however, does not interpret these in patent cases.
a former employee who is asked to statutory provisions or any other post- Dated: June 14, 2004.
represent another on a patent or patent employment restrictions that may apply Jon W. Dudas,
application will become aware of facts to former Office employees, and such Acting Under Secretary of Commerce for
sufficient to suggest the relationship of former employees should not assume Intellectual Property and Acting Director of
the prior matter to his or her former that conduct not prohibited by this the United States Patent and Trademark
office, e.g., technology center, group or section is otherwise permissible. Former Office.
art unit. If so, he or she is under a duty employees of the Office, whether or not [FR Doc. 04–13766 Filed 6–23–04; 8:45 am]
to make further inquiry. It would be they are practitioners, are encouraged to BILLING CODE 3510–16–P

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