[Federal Register Volume 73, Number 222 (Monday, November 17, 2008)]
[Rules and Regulations]
[Pages 67750-67759]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-27208]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 11
[Docket No.: PTO-C-2005-0013]
RIN 0651-AB55
Changes to Representation of Others Before the United States
Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
adopting new rules governing the conduct of individuals registered to
practice before the Office. The Office is adopting a new rule that
provides for an annual practitioner maintenance fee for those
recognized to practice before the Office in patent cases. These changes
will enable the Office to maintain a roster of registered practitioners
and, consequently, better protect the public from unqualified
practitioners. The Office is also making conforming amendments to 37
CFR 1.21.
DATES: Effective Date: December 17, 2008.
FOR FURTHER INFORMATION CONTACT: Harry I. Moatz , Director of
Enrollment and Discipline (OED Director), directly by phone at (571)
272-6069; by facsimile to (571) 273-6069 marked to the attention of Mr.
Moatz; or by mail addressed to: Mail Stop OED-Ethics Rules, U.S. Patent
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
SUPPLEMENTARY INFORMATION: Congress granted express authority to the
Office to ``establish regulations, not inconsistent with law, which * *
* may govern the recognition and conduct of agents, attorneys, or other
persons representing applicants or other parties before the Office.''
35 U.S.C. 2(b)(2)(D). Congress also provided that the ``Director may,
after notice and opportunity for a hearing, suspend or exclude, either
generally or in any particular case, from further practice before the
Patent and Trademark Office, * * * any person, agent, or attorney * * *
who does not comply with the regulations established under section
2(b)(2)(D) of this title. * * * The reasons for any such suspension or
exclusion shall be duly recorded.'' 35 U.S.C. 32. In so doing, Congress
vested express and implied authority with the Office to prescribe rules
of procedure that are applicable to practitioners recognized to
practice before the Office. Section 41(d) of Title 35, United States
Code, authorizes the establishment of fees for services related to
patents and not otherwise specified.
On December 12, 2003, the Office published Changes to
Representation of Others Before the United States Patent and Trademark
Office, a Notice of Proposed Rule Making in the Federal Register (68 FR
69441), 1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004), proposing to
amend parts 1 and 2 of the rules and procedures governing patent and
trademark prosecution (Title 37 of the Code of Federal Regulations),
reserving part 10 and introducing part 11. Included in the proposed
rules for part 11 were rules governing, inter alia, an annual fee for
practitioners and procedures for both collecting the fee and informing
practitioners who do not pay the fee of their situation--principally
rules 1.21, 11.8 and 11.11. One hundred sixty-three written comments
were received. Ninety of these written comments addressed the proposed
annual practitioner fee requirement.
Following receipt and consideration of the comments to the proposed
rules in the December 12, 2003 Notice regarding an annual fee and
procedures for both collecting the fee and informing practitioners who
do not pay the fee of their situation, the Office is prepared to
proceed to final rule making. The fee in the final rules is referenced
as the annual practitioner maintenance fee. The primary purposes for
adopting a fee and procedures for both collecting the fee and informing
practitioners who do not pay the fee of their situation is to maintain
a roster of registered practitioners, including affording practitioners
due process, protecting the public, preserving the integrity of the
Office, and maintaining high professional standards.
A registered practitioner in active status is one who is able to
represent clients and conduct business before the USPTO in patent
cases. To maintain active status, the practitioner would pay the annual
practitioner maintenance fee required under Sec. Sec. 1.21(a)(7)(i)
and 11.8(d).
[[Page 67751]]
An individual granted limited recognition under Sec. 11.9(b) is
one who is able to represent clients and conduct business before the
USPTO in patent cases under specified conditions. To maintain limited
recognition, the individual would pay the annual practitioner
maintenance fee required under Sec. Sec. 1.21(a)(8) and 11.8(d).
A registered practitioner in administrative inactive status or in
voluntary inactive status would be prohibited from representing
applicants or other parties and continuing to practice before the
Office in patent cases. Administrative inactive status is applied only
to a practitioner who is an employee of the USPTO, such as a patent
examiner, and to judges. Voluntary inactive status is available to
practitioners who have retired or are unable to continue their
practice, but still desire to maintain a recognized professional
association with the USPTO. Neither administrative inactive status nor
voluntary inactive status is available to persons having limited
recognition.
A registered practitioner under administrative inactive status is
not responsible for payment of the annual practitioner maintenance fee
while in this status. A registered practitioner under voluntary
inactive status is responsible for paying a reduced annual practitioner
maintenance fee during the period of inactivation. For the purposes of
this section, the fee for a registered practitioner in voluntary
inactive status is $25. If a condition occurs that automatically
terminates a practitioner's administrative inactive status, e.g.,
separation from the USPTO, it would be permissible for that
practitioner to seek a voluntary inactive status where the practitioner
does not intend to represent clients and practice before the Office but
still desires to maintain a professionally recognized association with
the Office.
A registered practitioner who failed to pay the annual practitioner
maintenance fee required under Sec. 11.8(d) would be administratively
suspended. A registered practitioner under active status can be
administratively suspended for failure to comply with payment of the
annual practitioner maintenance fee. A registered practitioner under
voluntary inactive status can be administratively suspended for failure
to comply with payment of the reduced annual practitioner maintenance
fee. An individual granted limited recognition who failed to pay the
annual practitioner maintenance fee required under Sec. 11.8(d) would
be administratively suspended.
The final rules will be applied as of the effective date of the
final rules, without retroactive effect. For example, a person
registered in the fiscal year in which the final rules become effective
would not be required to pay the annual practitioner maintenance fee in
that fiscal year. A further example is that unless a registered
practitioner is in administrative inactive status or voluntary inactive
status in the fiscal year in which the final rules become effective, a
registered practitioner must pay the annual practitioner maintenance
fee for active status. Still, a further example is that if the final
rules become effective in fiscal year 2009, no fees under the final
rules are due for fiscal year 2008. For purposes of these rules, the
fiscal year begins on October 1 and ends on September 30.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 11, is amended as
follows: Paragraph (d) of Sec. 11.8 introduces an annual practitioner
maintenance fee to be paid by registered practitioners in active status
and persons granted limited recognition under Sec. 11.9(b) to practice
in patent cases before the Office. The amount of the fee is set forth
in Sec. Sec. 1.21(a)(7)(i) and 1.21(a)(8), respectively. Adequate
notice of the due date for the annual practitioner maintenance fee will
be published and sent to practitioners in advance. Failure to comply
with these rules would subject a registered practitioner or person
granted limited recognition to administrative suspension set forth in
Sec. 11.11(b). In the past, the fees paid by applicants and patentees
have supported the costs of the activities that maintain the patent
practitioner's community reputation for integrity. The annual
practitioner maintenance fee is introduced pursuant to 35 U.S.C.
2(b)(2)(D) and 41(d). The annual practitioner maintenance fee will
recover the estimated average cost to the Office for the roster
maintenance process, including the costs of operating the disciplinary
system. Maintaining the roster of registered practitioners up-to-date
includes, for example, (i) processing additions to and deletions from
the roster, (ii) maintaining current practitioner address/telephone/e-
mail information, (iii) daily updating the roster with new changes of
address, (iv) conducting investigations of alleged practitioner
misconduct, and (v) conducting disciplinary proceedings against
practitioners. With an annual practitioner maintenance fee, the Office
will fund the disciplinary system as State disciplinary jurisdictions
do, by fees from the bar members. Bar disciplinary activities are
generally regarded as being in the interest of maintaining the Bar's
reputation for integrity and supporting the willingness of potential
clients to engage the services of practitioners. The continual updating
of the USPTO roster is also in the interest of assuring that registered
practitioners are identified to the public they seek and are authorized
to serve. It is problematic to charge patent applicants for this
activity since few patent applicants file grievances against
practitioners. Many of the filed grievances concern patent applications
that were not filed; applications that were filed or prosecuted
improperly; applications that should not have been filed in the first
place; or patent applicants who have not received the benefit of
competent counsel. The anomaly is magnified by the need for
disciplinary action concerning practitioners who have been convicted of
felonies or have been disciplined by state bars for matters other than
practice before the Office. By adopting an annual practitioner
maintenance fee to be paid by registered practitioners, the cost of
these activities is focused on those served by the roster maintenance
and disciplinary system--registered practitioners, not applicants.
Thus, USPTO will recover the costs associated with these activities
from the practitioners instead of the public in general. The funds
received from the annual practitioner maintenance fee would be directed
to this process. The annual practitioner maintenance fee would not be
imposed on persons during the fiscal year in which they are first
registered or recognized to practice before the Office.
Paragraph (a) of Sec. 11.11 provides for requiring practitioners
to notify the OED Director of their postal address and telephone number
for his or her business, as well as every change thereto. Additionally,
it requires practitioners to notify the OED Director of up to three e-
mail addresses for their business and every change to their e-mail
addresses. Notice of the change of address or telephone number must be
given within thirty days of the date of the change. Practitioners are
encouraged to provide their business e-mail address to facilitate the
Office's ability to communicate with the practitioners. A practitioner
who is an attorney in good standing with the bar of the highest court
of one or more states is also required to provide the OED Director with
the state bar identification number associated with each membership.
This will enable the OED Director to distinguish between individual
[[Page 67752]]
attorneys having the same or similar names. Further, the section
identifies the information that the OED Director will routinely publish
on the roster about each registered practitioner recognized to practice
before the Office in patent cases.
Paragraph (b) of Sec. 11.11 provides for administrative suspension
for failure to comply with the payment of the annual practitioner
maintenance fee required by Sec. 11.8(d).
Paragraph (b)(1) of Sec. 11.11 provides that the OED Director will
mail a notice to the practitioner advising of noncompliance, stating
the consequences of administrative suspension under paragraph (b)(5) of
this section if noncompliance is not timely remedied, and the
requirements for reinstatement under paragraph (f) of this section. The
notice also will demand compliance within sixty days and payment of a
delinquency fee. The notice also will be published. Paragraph (b)(1) of
Sec. 11.11 introduces payment of the delinquency fee. The amount of
the fee is set forth in Sec. 1.21(a)(9)(i). The amount of the fee is
set to recover the estimated average cost to the Office for processes
associated with a practitioner who is delinquent in payment of the
annual practitioner maintenance fee.
Paragraph (b)(2) of Sec. 11.11 provides that upon failure to
comply with the notice and demand within the allowed time, the OED
Director will send to the attorney, agent or person granted limited
recognition a Rule to Show Cause as to why he or she should not be
administratively suspended and no longer permitted to practice before
the Office in patent matters, or hold himself or herself out as being
registered or recognized to practice before the Office in patent
matters. The OED Director shall file a copy of the Rule to Show Cause
with the USPTO Director.
Paragraph (b)(3) of Sec. 11.11 provides that, within 30 days of
the OED Director sending the Rule to Show Cause, the attorney, agent or
person granted limited recognition may file a response to the Rule to
Show Cause with the USPTO Director and, if so, that the OED Director
may file a reply thereto. Under this section the USPTO Director hears
the matter on the documentary record and imposes the administrative
suspension unless the USPTO Director determines that there is a genuine
issue of material fact regarding notice or the failure to pay the
requisite fees.
Paragraph (b)(4) of Sec. 11.11 provides that an administratively
suspended attorney, agent or person granted limited recognition
continues to be responsible for paying his or her annual practitioner
maintenance fee required by Sec. 11.8(d).
Paragraph (b)(5) of Sec. 11.11 provides that an administratively
suspended attorney, agent or person granted limited recognition remains
subject to investigation and discipline for his or her conduct prior
to, during, or after the period he or she was administratively
suspended.
Paragraph (b)(6) of Sec. 11.11 provides that an administratively
suspended attorney, agent or person granted limited recognition cannot
practice before the Office in patent cases while under administrative
suspension. An administratively suspended attorney, agent or person
granted limited recognition who does not promptly obtain reinstatement
must comply with applicable ethics rules concerning withdrawal from
representation. An administratively suspended attorney, agent or person
granted limited recognition who knows he or she has been
administratively suspended will be subject to discipline for failing to
comply with the provisions of this paragraph.
Paragraph (c)(1) of Sec. 11.11 provides for administrative
inactivation of a registered practitioner who becomes employed by the
Office. The practitioner is not responsible for payments of the annual
practitioner maintenance fee each complete fiscal year while the
practitioner is in administratively inactive status.
Paragraph (c)(2) of Sec. 11.11 provides for administrative
inactivation of a registered practitioner who is a judge of a court of
record, full-time court commissioner, U.S. bankruptcy judge, U.S.
magistrate judge, or a retired judge who is eligible for temporary
judicial assignment and is not engaged in the practice of law. The
practitioner is not responsible for payments of the annual practitioner
maintenance fee each complete fiscal year while the practitioner is in
administratively inactive status.
Paragraph (d) of Sec. 11.11 provides for voluntary inactivation of
a registered practitioner. This section accommodates a registered
practitioner who, at the time of the request, does not represent
clients before the USPTO but still desires to maintain a recognized
professional association with the USPTO. The USPTO will not inquire
into reasons for seeking voluntary inactivation except that voluntary
inactivation will be denied if the practitioner is delinquent in paying
an annual practitioner maintenance fee or a delinquency fee. Voluntary
inactivation will not preclude the USPTO from inquiring or continuing
to inquire into possible ethical violations by the practitioner or
imposing discipline therefor. Reasons for seeking voluntary
inactivation may include retirement, health condition of the
practitioner (long-term illnesses), or a practitioner's decision to
practice in another substantive area.
Paragraph (d)(1) of Sec. 11.11 provides that a registered
practitioner may seek voluntary inactivation by filing a written
request to be endorsed as inactive.
Paragraph (d)(2) of Sec. 11.11 provides that a registered
practitioner whose status has been changed to a voluntary inactive
status continues to be responsible for paying his or her annual
practitioner maintenance fee required by Sec. 11.8(d) for such status.
Paragraph (d)(2) of Sec. 11.11 introduces payment of the annual
practitioner maintenance fee for inactive status. The amount of the
fee, $25, is set forth in Sec. 1.21(a)(7)(ii). The amount of the fee
is set to recover the estimated average cost to the Office for
processes associated with a practitioner who is in inactive status.
Paragraph (d)(3) of Sec. 11.11 provides that a registered
practitioner in voluntary inactive status is still subject to
investigation and discipline for ethical violations during the period
of inactivation.
Paragraph (d)(4) of Sec. 11.11 provides that a registered
practitioner in arrears in annual practitioner maintenance fees or
under administrative suspension for fee delinquency is ineligible to
seek or enter into voluntary inactive status.
Paragraph (d)(5) of Sec. 11.11 provides that a registered
practitioner may not practice before the Office in patent cases while
under voluntary inactive status. A practitioner in voluntary inactive
status will be subject to discipline for failing to comply with the
provisions of this paragraph. A voluntary inactive practitioner must
comply with applicable ethics rules concerning withdrawal from
representation.
Paragraph (d)(6) of Sec. 11.11 provides for restoration to active
status of a registered practitioner who is in voluntary inactive status
in accordance with Sec. 11.11(d). Paragraph (d)(6) of Sec. 11.11
introduces payment of the fee for requesting restoration to active
status from voluntary inactive status. The amount of the fee is set
forth in Sec. 1.21(a)(7)(iii). The amount of the fee is set to recover
the estimated average cost to the Office for processing the request.
The Office provides options for practitioners who are no longer
attorneys in good standing at their state bars but seek active status
before the USPTO. Since practitioners before the USPTO need not be
attorneys, a practitioner who has ceased to be a
[[Page 67753]]
member in good standing of the bar of the highest court of a state for
reasons other than ethical grounds may still seek to represent clients
in patent matters before the USPTO as a patent agent. It becomes
necessary to ensure that attorneys who are no longer members in good
standing in a state bar explain the basis of such status when seeking
restoration to active status before the USPTO. This section seeks to
avoid the possibility that an attorney under a disciplinary proceeding
or investigation in another disciplinary jurisdiction circumvents the
obligation of informing the USPTO of any matter that detrimentally
impacts the determination of the practitioner's moral character.
Any registered practitioner who is voluntarily inactivated pursuant
to paragraph (d) of this section and who is a licensed attorney may
comply with the submission of information and material pertaining to
the practitioner's moral character on proof of being a member in good
standing with the highest court of each state in which the practitioner
is licensed to practice. If the registered practitioner is no longer a
member in good standing of the highest court of another jurisdiction,
the practitioner must submit a signed declaration or affidavit
explaining the circumstances surrounding the practitioner's status in
the other jurisdiction to the satisfaction of the OED Director that the
reason for not being a member in good standing is not predicated on
moral character. If the statement submitted is not to the satisfaction
of the OED Director, the OED Director may decline restoration to active
status on grounds of present lack of good moral character and
reputation as set forth in Sec. 11.7. An adverse decision by the OED
Director is reviewable under Sec. 11.2. This does not preclude the
practitioner from submitting additional evidence to establish the
requisite moral character.
Paragraph (d)(6) of Sec. 11.11 also introduces payment of balance
due upon restoration to active status from voluntary inactive status.
The amount of the fee is set forth in Sec. 1.21(a)(7)(iv). The amount
of the fee is set to recover the balance of the estimated average cost
to the Office for maintaining the roster. It is the difference between
the annual practitioner maintenance fee for registered attorney or
agent in active status, $118, and the annual practitioner maintenance
fee for registered attorney or agent in voluntary inactive status, $25.
The annual practitioner maintenance fee has increased from $100
proposed in December 2003, to $118 adopted in the final rules. In the
nearly five years since the fee was proposed, the number of registered
practitioners has increased from 28,835 in December 2003 to more than
36,400 in July 2008, and the staff of the Office of Enrollment and
Discipline has been increased to maintain the enlarging roster of
registered practitioners. The increase in the fee is a reflection of
changes in the consumer price index and staffing adjustments from the
time the rule was proposed.
Paragraph (e) of Sec. 11.11 allows for resignation from practice
before the Office of a registered practitioner who is neither under
investigation under Sec. 11.22 for a possible violation of the
Mandatory Disciplinary Rules identified in Sec. 10.20(b) of Part 10,
subject to discipline under Sec. 11.24 or Sec. 11.25, nor subject to
an adverse probable cause determination by a panel of the Committee on
Discipline under Sec. 11.23(b).
Paragraph (f) of Sec. 11.11 establishes a procedure for
administrative reinstatement of a registered practitioner who has been
administratively suspended pursuant to Sec. 11.11(b) or who has
resigned pursuant to Sec. 11.11(d). Paragraph (f) provides for payment
of the annual practitioner maintenance fee set forth Sec. 1.21(a)(7)
for registered patent attorneys or agents, or the annual practitioner
maintenance fee set forth in Sec. 1.21(a)(8) for persons granted
limited recognition. Paragraph (f) of Sec. 11.11 also introduces
payment of both the delinquency fee and the administrative
reinstatement fee by the practitioner. The amount of the delinquency
fee is set forth in Sec. 1.21(a)(9)(i). The amount of the
administrative reinstatement fee is set forth in Sec. 1.21(a)(9)(ii).
The amount of the delinquency fee is set to recover the estimated
average cost to the Office for processes associated with a practitioner
who is delinquent in payment of annual practitioner maintenance fee.
The amount of the administrative reinstatement fee is set to recover
the estimated average cost to the Office for processes associated with
an application for reinstatement. A practitioner who resigned or was
administratively suspended for two or more years before the date the
Office receives a completed application from the person must also pass
the registration examination under Sec. 11.7(b)(1)(ii).
Response to comments: The Office published a notice proposing
changes to the Office's rules governing disciplinary proceedings for
attorneys, registered patent agents and persons granted limited
recognition to practice before the Office. See Changes to
Representation of Others Before the United States Patent and Trademark
Office; Notice of proposed rulemaking, 68 FR 69442 (Dec. 12, 2003),
1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) (proposed rule). The
Office received one hundred sixty-three comments (from intellectual
property organizations and patent practitioners) in response to this
notice. The Office's responses to the ninety comments regarding an
annual practitioner maintenance fee follow:
Comment 1: A number of comments noted that the staggered quarterly
schedule of annual fee due dates set forth in the proposed rule would
create an undue administrative burden on practitioners, particularly
those who practice in large law firms, and would increase the
possibility of confusion and inadvertent nonpayment of the fee. The
comments indicated a single due date for all practitioners would reduce
the administrative burden on practitioners and the Office, and would
reduce the risk of inadvertent nonpayment.
Response: The suggestion in the comments has been adopted. The
staggered quarterly schedule has been eliminated in favor of a single
annual due date for all practitioners.
Comment 2: A large number of comments, citing past history, raised
concern that annual practitioner maintenance fee payments would be
diverted, and therefore opposed the annual practitioner maintenance fee
on the basis that the fees would not be used to operate the roster
maintenance process, including the disciplinary system.
Response: The USPTO has operated with full access to fee
collections for the past four years. Annual practitioner maintenance
fees collected under section 11.8(d) will be used to support
maintenance of the roster of registered attorneys and agents, including
the disciplinary system.
Comment 3: Several comments raised concern that proposed section
11.8(d) did not require separate notice to practitioners of the payment
due date and, therefore, that practitioners would be more likely to
inadvertently overlook payment of the fee.
Response: The suggestion to add a specific notice provision in
section 11.8(d) has been adopted. Adequate notice of the due date will
be sent to each practitioner at the last address provided pursuant to
Sec. 11.11(a) and will be published in the Official Gazette as well.
It is expected that notice will also be published on the USPTO internet
Web site. Pursuant to section 11.11(a), to ensure proper delivery of
notices potentially affecting a practitioner's status, practitioners
are required to update contact information within 30 days of a change.
The USPTO has
[[Page 67754]]
implemented an on-line customer interface that will allow a
practitioner to access his or her records with a username and password
and to directly update address and contact information. Additionally,
under 11.11(b)(1), whenever it appears that a registered patent
attorney, a registered patent agent or a person granted limited
recognition has failed to comply with Sec. 11.8(d), the OED Director
shall publish and send a notice to the attorney, agent or person
granted limited recognition advising of the noncompliance, the
consequence of being administratively suspended under paragraph (b)(5)
of this section if noncompliance is not timely remedied, and the
requirements for reinstatement under paragraph (f) of this section. The
notice shall be published and sent to the attorney, agent or person
granted limited recognition by mail to the last postal address
furnished under paragraph (a) of this section or by e-mail addressed to
the last e-mail addresses furnished under paragraph (a) of this
section.
Comment 4: Several comments raised concern as to potential
prejudice to clients in cases where an attorney handling a matter
continues to make submissions to the USPTO after the attorney has been
administratively suspended for failure to pay the annual fee and
inquired as to how the USPTO would treat such submissions.
Response: Individuals representing others before the Office are
expected at all times to meet the requirements for practice before the
Office. Maintaining good standing and accurate contact information is
the responsibility of the practitioner. Practitioners who properly
update contact information on file with the Office of Enrollment and
Discipline should receive ample notice of deadlines for payment of the
annual practitioner maintenance fee and missed payment before the
practitioner would be administratively suspended. A practitioner who
has been administratively suspended may request an active member in his
or her firm to timely file papers requiring a practitioner's signature.
Nonetheless, a paper submitted in good faith by a practitioner who does
not know that he or she has been administratively suspended for failure
to pay the annual practitioner maintenance fee will be treated as
unsigned. In the case of a new complete application, the applicant will
receive a filing date because the signature of an attorney or agent on
transmittal papers is not required. In the case of an unsigned bona
fide response to an Office action, the submission will be treated in
accordance with 37 CFR 1.135(c), and applicant may be given a new
period of time to supply the omission. Practitioners should be aware,
however, that submission of a response having an omission may affect
patent term adjustment pursuant to 37 CFR 1.704(c)(7). In the case of
an issue fee payment, an unsigned issue fee transmittal form may lead
to abandonment of the application, in which case a petition to revive
would be required.
Comment 5: Several comments asserted government patent attorneys
and agents earn considerably less than the average annual income of
patent attorneys and agents in the United States, and indicated a
proposed $100 annual fee therefore would be excessively burdensome on
government patent attorneys and agents. The comment suggested a reduced
annual fee for attorneys and agents employed by the government. Similar
comments were received with respect to part-time practitioners, solo
practitioners and small law firms.
Response: The suggestion of a reduced annual practitioner
maintenance fee for specific groups of active practitioners has not
been adopted. The assertion in the comment that the average annual
income for government patent attorneys and agents of approximately
$80,000 is not supported in the comment. In any event, a $118 annual
practitioner maintenance fee for an individual with an annual income of
$80,000 represents about one seventh of one percent of the annual
income, which will not have a significant economic impact on a
substantial number of practitioners. The costs of maintaining the
roster, including conducting disciplinary investigations regarding
practitioners in such groups, is independent of the practitioner's
income. Accordingly, having a single fee for all active practitioners
is appropriate and fair.
Comment 6: Several comments suggested the annual practitioner
maintenance fee should not be instituted because collection of an
annual practitioner maintenance fee would increase the administrative
burden on the Office of Enrollment and Discipline, thereby offsetting
the collected fees with increased administrative costs.
Response: The suggestion has not been adopted. The Office of
Enrollment and Discipline has developed a system for payment of annual
fees through an on-line customer interface that will allow a
practitioner to submit payments directly. Additionally, law firm or
corporate administrators will be able to submit payments on behalf of
multiple practitioners. The system will minimize the administrative
burden on the Office of Enrollment and Discipline. Moreover, the on-
line customer interface will allow a practitioner to directly update
address and other contact information, further reducing the
administrative burden of the Office by obviating the need for periodic
surveys pursuant to Sec. 10.11 and the reinstatement fee previously
set forth in Sec. 1.21(a)(3). Annual fee payment also may be submitted
by mail or by hand delivery. It is also noted the $118 annual
practitioner maintenance fee is not calculated to pay for the cost of
administering a continuing education program for practitioners.
Comment 7: Several comments asserted Congress has not provided
statutory authorization for the collection of an annual fee assessed
against practitioners.
Response: The annual practitioner maintenance fee is authorized
pursuant to the provisions of 35 U.S.C. 2(b)(2)(D) and 41(d).
Comment 8: Several comments suggested State bar associations carry
out a broader range of services than does the Office of Enrollment and
Discipline, and therefore asserted that an annual practitioner
maintenance fee is unwarranted.
Response: The $118 annual practitioner maintenance fee is
calculated on the basis of the cost of maintaining the roster,
including the disciplinary system. The $118 figure is not based on
services that are not provided by the Office of Enrollment and
Discipline.
Comment 9: Several comments indicated the annual practitioner
maintenance fee discriminates against patent practitioners over
trademark attorneys.
Response: The Office does not maintain a roster of U.S. attorneys
authorized to represent others before the Office in trademark and other
non-patent matters, and therefore these individuals impose a lesser
administrative burden. The vast majority of disciplinary investigations
and actions involve registered practitioners. To the extent an
unregistered practitioner is involved in a disciplinary proceeding, the
Office has the authority to seek to recover the cost of the proceeding
directly from the unregistered practitioner.
Comment 10: One comment asserted that many practitioners never
practice before the Office, but nonetheless find value in maintaining
registration because clients often prefer to have registered patent
practitioners handling their matters. The comment suggested such
individuals would rarely be the
[[Page 67755]]
basis of disciplinary proceedings at the Office and therefore should
not have to pay an annual practitioner maintenance fee.
Response: The Office incurs the same administrative cost of
maintaining the roster for practitioners who never practice as well as
active practitioners. Moreover, disciplinary proceedings are not
limited to conduct arising out of practice directly before the Office,
and a practitioner who does not practice may have an increased
possibility of client complaints stemming from unfamiliarity with
Office practice. It is noted that a practitioner has the option of
requesting voluntary inactive status under section 11.11(d) if the
practitioner is not actively representing others in patent matters
before the Office.
Comment 11: Several comments suggested there should be no annual
practitioner maintenance fee for individuals in voluntary inactive
status, and indicated the reduced annual practitioner maintenance fee
for voluntary inactive practitioners should be eliminated.
Response: The suggestion has not been adopted. The Office continues
to incur administrative costs in maintaining voluntary inactive
practitioners on the roster, and voluntary inactive practitioners may
be the subject of disciplinary investigation.
Comment 12: A number of comments asserted the cost of administering
the roster and operating the disciplinary system should continue to be
funded from application fees because practitioners will simply pass the
cost of the annual practitioner maintenance fee on to clients as an
overhead expense.
Response: The suggestion has not been adopted. Like state bars, the
cost of administering the roster, including operating the Office
disciplinary system, is properly borne primarily by practitioners
rather than pro se applicants and other applicants.
Comment 13: Several comments asserted registration is a one-time
event and suggested the costs of maintaining the roster and operating
the disciplinary system should be recovered solely from fees collected
at the time a practitioner applies for registration and initial
registration fees.
Response: The suggestion has not been adopted. Fees collected at
the time a practitioner applies for registration (i.e., application fee
and examination fee) recover the cost of processing applications for
registration and administering the registration examination; the
initial registration fee recovers the administrative costs of initial
registration. Maintaining the roster, including the disciplinary
system, are not one-time events; they are ongoing processes incurring
ongoing costs.
Comment 14: One comment indicated the annual practitioner
maintenance fee should not be implemented because it would create an
economic disincentive discouraging students and unemployed scientists
from taking and passing the registration examination.
Response: The suggestion has not been adopted. Persons newly
registered are not liable for annual practitioner maintenance during
the fiscal year in which they are first registered. Individuals may
choose to go on voluntary inactive status if they are not practicing.
Comment 15: One comment asserted a practitioner may not be
administratively suspended for failure to pay an annual practitioner
maintenance fee without first being afforded notice and the opportunity
for a hearing.
Response: Under Sec. 11.11(b), practitioners will be given advance
notice of an impending administrative suspension as well as the
opportunity for a hearing.
Comment 16: One comment suggested administrative suspension for
failure to pay an annual practitioner maintenance fee would infringe on
the right to free speech by preventing the administratively suspended
practitioner from talking to another person about a patent application.
Response: An administratively suspended practitioner would be
prohibited from practicing before the Office. The administratively
suspended practitioner would not be prohibited from talking to another
person about a patent application so long as the discussion does not
constitute the practice of law before the Office.
Rule Making Considerations
Regulatory Flexibility Act: The Deputy General Counsel for General
Law, United States Patent and Trademark Office, certified to the Chief
Counsel for Advocacy, Small Business Administration, that the changes
in this final rule will not have a significant impact on a substantial
number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
The provisions of the Regulatory Flexibility Act relating to the
preparation of a regulatory flexibility analysis are not applicable to
this final rule because the rule will not have a significant economic
impact on a substantial number of small entities.
The final rule assesses a $118 annual practitioner maintenance fee
upon registered attorneys and agents in active status and individuals
granted limited recognition under 37 CFR 11.9(b). The Office estimates
that approximately 37,000 practitioners will be subject to this fee
under the final rule. The Office estimates that, in 2006, the average
annual income in the United States of solo practitioners was $231,777;
of patent attorneys who are partners in private firms, $434,464; of
patent attorneys who are associates in private firms, $152,677; and of
corporate IP attorneys, $198,109; and the average annual salary of
patent agents in a firm in the United States was $92,761. AIPLA Report
of the Economic Survey 2007, pp. 10, I-21, I-35, I-58 and F-25 (2007).
Because the annual practitioner maintenance fee is less than one
seventh of one percent of practitioners having an average annual income
of $92,761 or more, this fee will not have a significant economic
impact on practitioners.
It is estimated that annually about 150 practitioners will be in
voluntary inactive status. Practitioners who choose voluntary inactive
status are not required to pay the $118 annual practitioner maintenance
fee. Rather, these practitioners must pay a $25 annual practitioner
maintenance fee that will be assessed annually to registered attorneys
and agents in voluntary inactive status. The Office estimates that the
average income of an inactive practitioner in 2006 would have been
comparable to the average income of a household the same year, $66,570.
Income, Poverty, and Health Insurance Coverage in the United States:
2006, Current Population Reports, Consumer Income, U.S. Department of
Commerce, pp. 27-29 (2007). The $25 annual practitioner maintenance fee
assessed annually to registered attorneys and agents in voluntary
inactive status is less than four one-hundredth of one percent of a
household's annual income. Thus, this fee does not have a significant
economic impact on a substantial number of small entities.
It is estimated that annually about ten practitioners in voluntary
inactive status will request restoration to active status. The final
rule imposes a $50 fee for requesting restoration to active status from
voluntary inactive status. As previously noted, the Office estimates
that, in 2008, the average annual income of patent attorneys in the
United States is over $100,000, and the average annual income of patent
agents in the United States is over $90,000. Thus, the $50 fee for
requesting restoration to active status from involuntary status does
not have a significant economic impact on a substantial number of small
entities.
It is also estimated that the requests of all practitioners in
voluntary inactive status for restoration to active status will
[[Page 67756]]
be granted. Thus, these practitioners (the Office estimates that there
will be ten) must then pay the balance of the annual practitioner
maintenance fee. These practitioners must pay an additional $93 fee for
the balance due upon restoration to active status from voluntary
inactive status ($118 minus the $25 inactive status fee already paid).
As previously noted, the total fee of $118 will not have a significant
economic impact on practitioners because it represents less than one
seventh of one percent of practitioners having an average annual income
of $92,761 or more. In addition, since only approximately ten
practitioners out of approximately 37,000 practitioners are expected to
be affected by this fee, this fee in the final rule will not impact a
substantial number of small entities.
It is estimated that about 175 practitioners will be delinquent in
paying their annual practitioner maintenance fee. The final rule
imposes a $50 delinquency fee. This fee can be avoided in its entirety
by simply paying the annual fee in a timely manner.
It is estimated that about 100 practitioners delinquent in paying
their annual practitioner maintenance fee will be administratively
suspended and will seek administrative reinstatement. The final rule
imposes a $100 administrative reinstatement fee. Again, this fee can be
avoided in its entirety by simply paying the annual fee prior to
administrative suspension.
Even assuming that a practitioner chooses to switch from inactive
to active status, and chooses to pay the fees late (by incurring a
delinquency fee, administrative reinstatement fee and annual
practitioner maintenance fee), the highest dollar amount assessed to
any practitioner in this situation would be $268. It is estimated that
only about 100 practitioners would be required to pay all of these
fees. Given that the Office estimates the average annual income of
patent attorneys in the United States is over $100,000, and the average
annual income of patent agents in the United States is over $90,000,
the total impact of all fees in this final rule does not have a
significant economic impact on a substantial number of small entities.
Executive Order 13132: This notice of final rule making does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(August 4, 1999).
Executive Order 12866: This notice of final rule making has been
determined to be significant for purposes of Executive Order 12866
(September 30, 1993).
Paperwork Reduction Act: This notice of final rule making involves
information collection requirements which are subject to review by the
Office of Management and Budget (OMB) under the Paperwork Reduction Act
of 1995 (44 U.S.C. 3501 et seq.). This notice of final rule making
contains revisions governing the payment of an annual practitioner
maintenance fee by patent practitioners to recover the costs of
maintaining a roster of persons authorized to practice in patent cases
before the USPTO and the costs of operating the USPTO disciplinary
system. The principal impact of the changes in this notice of final
rule making is on registered practitioners and individuals otherwise
recognized to practice in patent cases before the USPTO. The
information collections involved in this proposed rule have been
previously reviewed and approved by OMB under OMB control number 0651-
0012. The proposed revisions do not affect the information collection
requirements for 0651-0012, so the USPTO is not resubmitting the
collection to OMB for review and approval.
The title, description, and respondent description of the currently
approved information collections for 0651-0012 are shown below with
estimates of the annual reporting burdens. Included in the estimates is
the time for reviewing instructions, gathering and maintaining the data
needed, and completing and reviewing the collection of information.
OMB Number: 0651-0012.
Title: Admittance to Practice and Roster of Registered Patent
Attorneys and Agents Admitted to Practice Before the Patent and
Trademark Office (USPTO).
Form Numbers: PTO-158, PTO-158A, PTO-275, PTO-107A, PTO-1209, PTO-
2126, PTO-2149, and PTO-2150.
Type of Review: Approved through December of 2010.
Affected Public: Individuals or households, businesses or other
for-profit, Federal Government, and state, local, or tribal
governments.
Estimated Number of Respondents: 72,122.
Estimated Time per Response: 5 minutes to 40 hours.
Estimated Total Annual Burden Hours: 89,475 hours.
Needs and Uses: The public uses the forms in this collection to
ensure that all of the necessary information is provided to the USPTO
and to request inclusion on the Register of Patent Attorneys and
Agents.
Comments are Invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Harry I. Moatz, Director of Enrollment and Discipline, Mail
Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450, or to the Office of Information and
Regulatory Affairs, Office of Management and Budget, New Executive
Office Building, Room 10202, 725 17th Street, NW., Washington, DC
20503, Attention: Desk Officer for the United States Patent and
Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Patents.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
0
For the reasons set forth in the preamble, the United States Patent and
Trademark Office is amending 37 CFR Parts 1 and 11 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. In Sec. 1.21, remove and reserve paragraph (a)(3), and add
paragraphs (a)(7), (a)(8) and (a)(9) to read as follows:
Sec. 1.21 Miscellaneous fees and charges.
(a) * * *
(3) [Reserved]
* * * * *
(7) Annual practitioner maintenance fee for registered attorney or
agent.
(i) Active Status--$118.00.
(ii) Voluntary Inactive Status--$25.00.
[[Page 67757]]
(iii) Fee for requesting restoration to active status from
voluntary inactive status--$50.00.
(iv) Balance due upon restoration to active status from voluntary
inactive status--$93.00.
(8) Annual practitioner maintenance fee for individual granted
limited recognition--$118.00.
(9)(i) Delinquency fee--$50.00.
(ii) Administrative reinstatement fee--$100.00.
* * * * *
PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
0
3. Revise the authority citation for 37 CFR part 11 to read as follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32,
41.
0
4. Amend Sec. 11.8 by adding paragraph (d) to read as follows:
Sec. 11.8 Oath, registration fee, and annual practitioner maintenance
fee.
* * * * *
(d) Annual practitioner maintenance fee. A registered patent
attorney or agent shall annually pay to the USPTO Director a
practitioner maintenance fee in the amount set forth in Sec.
1.21(a)(7) of this subchapter. Individuals granted limited recognition
under paragraph (b) of Sec. 11.9 shall annually pay to the USPTO
Director a practitioner maintenance fee in the amount set forth in
Sec. 1.21(a)(8) of this subchapter. Adequate notice shall be published
and sent to practitioners in advance of the due date for payment of the
annual practitioner maintenance fee. Payment shall be for the fiscal
year in which the annual practitioner maintenance fee is assessed.
Payment shall be due by the last day of the payment period. Persons
newly registered or granted limited recognition shall not be liable for
the annual practitioner maintenance fee during the fiscal year in which
they are first registered or granted limited recognition. Failure to
comply with the provisions of this paragraph (d) shall require the OED
Director to subject a practitioner to a delinquency fee penalty set
forth in Sec. 11.11(b)(1), and further financial penalties and
administrative suspension as set forth in Sec. 11.11(b)(2) and (b)(3).
0
5. Revise Sec. 11.11 to read as follows:
Sec. 11.11 Administrative suspension, inactivation, resignation, and
readmission.
(a) A registered attorney or agent must notify the OED Director of
his or her postal address for his or her office, up to three e-mail
addresses where he or she receives e-mail, and business telephone
number, as well as every change to any of said addresses or telephone
numbers within thirty days of the date of the change. A registered
attorney or agent shall, in addition to any notice of change of address
and telephone number filed in individual patent applications,
separately file written notice of the change of address or telephone
number to the OED Director. A registered practitioner who is an
attorney in good standing with the bar of the highest court of one or
more States shall provide the OED Director with the State bar
identification number associated with each membership. The OED Director
shall publish from the roster a list containing the name, postal
business addresses, business telephone number, registration number, and
registration status as an attorney or agent of each registered
practitioner recognized to practice before the Office in patent cases.
(b) Administrative suspension. (1) Whenever it appears that a
registered patent attorney, a registered patent agent or a person
granted limited recognition under Sec. 11.9(b) has failed to comply
with Sec. 11.8(d), the OED Director shall publish and send a notice to
the attorney, agent or person granted limited recognition advising of
the noncompliance, the consequence of being administratively suspended
under paragraph (b)(5) of this section if noncompliance is not timely
remedied, and the requirements for reinstatement under paragraph (f) of
this section. The notice shall be published and sent to the attorney,
agent or person granted limited recognition by mail to the last postal
address furnished under paragraph (a) of this section or by e-mail
addressed to the last e-mail addresses furnished under paragraph (a) of
this section. The notice shall demand compliance and payment of a
delinquency fee set forth in Sec. 1.21(a)(9)(i) of this subchapter
within sixty days after the date of such notice.
(2) In the event a registered patent attorney, registered patent
agent or person granted limited recognition fails to comply with the
notice of paragraph (b)(1) of this section within the time allowed, the
OED Director shall publish and send in the manner provided for in
paragraph (b)(1) of this section to the attorney, agent, or person
granted limited recognition a Rule to Show Cause why his or her
registration or recognition should not be administratively suspended,
and he or she no longer be permitted to practice before the Office in
patent matters or in any way hold himself or herself out as being
registered or authorized to practice before the Office in patent
matters. The OED Director shall file a copy of the Rule to Show Cause
with the USPTO Director.
(3) Within 30 days of the OED Director's sending the Rule to Show
Cause identified in Sec. 11.11(b)(2), the registered patent attorney,
registered patent agent or person granted limited recognition may file
a response to the Rule to Show Cause with the USPTO Director. The
response must set forth the factual and legal bases why the person
should not be administratively suspended. The registered patent
attorney, registered patent agent or person granted limited recognition
shall serve the OED Director with a copy of the response at the time it
is filed with the USPTO Director. Within ten days of receiving a copy
of the response, the OED Director may file a reply with the USPTO
Director that includes documents demonstrating that the notice
identified in Sec. 11.11(b)(1) was published and sent to the
practitioner in accordance with Sec. 11.11(b)(1). A copy of the reply
by the OED Director shall be served on the registered patent attorney,
registered patent agent or person granted limited recognition. When
acting on the Rule to Show Cause, if the USPTO Director determines that
there are no genuine issues of material fact regarding the Office's
compliance with the notice requirements under this section or the
failure of the person to pay the requisite fees, the USPTO Director
shall enter an order administratively suspending the registered patent
attorney, registered patent agent or person granted limited
recognition. Otherwise, the USPTO Director shall enter an appropriate
order dismissing the Rule to Show Cause. Nothing herein shall permit an
administratively suspended registered patent attorney, registered
patent agent or person granted limited recognition to seek a stay of
the administrative suspension during the pendency of any review of the
USPTO Director's final decision.
(4) An administratively suspended attorney, agent or person granted
limited recognition remains responsible for paying his or her annual
practitioner maintenance fee required by Sec. 11.8(d).
(5) An administratively suspended attorney, agent or person granted
limited recognition is subject to investigation and discipline for his
or her conduct prior to, during, or after the period he or she was
administratively suspended.
(6) An administratively suspended attorney, agent or person granted
limited recognition is prohibited from
[[Page 67758]]
practicing before the Office in patent cases while administratively
suspended. An attorney, agent or person granted limited recognition who
knows he or she has been administratively suspended under this section
will be subject to discipline for failing to comply with the provisions
of this paragraph.
(c) Administrative Inactivation. (1) Any registered practitioner
who shall become employed by the Office shall comply with Sec. 10.40
of this subchapter for withdrawal from the applications, patents, and
trademark matters wherein he or she represents an applicant or other
person, and notify the OED Director in writing of said employment on
the first day of said employment. The name of any registered
practitioner employed by the Office shall be endorsed on the roster as
administratively inactive. The practitioner shall not be responsible
for payments of the annual practitioner maintenance fee each complete
fiscal year while the practitioner is in administratively inactive
status. Upon separation from the Office, the practitioner may request
reactivation by completing and filing an application, Data Sheet,
signing a written undertaking required by Sec. 11.10, and paying the
fee set forth in Sec. 1.21(a)(1)(i) of this subchapter. Upon
restoration to active status, the practitioner shall be responsible for
paying the annual practitioner maintenance fee for the fiscal year in
which the practitioner is restored to active status. An
administratively inactive practitioner remains subject to the
provisions of the Mandatory Disciplinary Rules identified in Sec.
10.20(b) of this subchapter, and to proceedings and sanctions under
Sec. Sec. 11.19 through 11.58 for conduct that violates a provision of
the Mandatory Disciplinary Rules identified in Sec. 10.20(b) of this
subchapter prior to or during employment at the Office. If, within 30
days after separation from the Office, the practitioner does not
request active status or another status, the practitioner will be
endorsed on the roster as voluntarily inactive and be subject to the
provisions of paragraph (d) of this section.
(2) Any registered practitioner who is a judge of a court of
record, full-time court commissioner, U.S. bankruptcy judge, U.S.
magistrate judge, or a retired judge who is eligible for temporary
judicial assignment and is not engaged in the practice of law may
request, in writing, that his or her name be endorsed on the roster as
administratively inactive. Upon acceptance of the request, the OED
Director shall endorse the name of the practitioner as administratively
inactive. The practitioner shall not be responsible for payment of the
annual practitioner maintenance fee for each complete fiscal year the
practitioner is in administratively inactive status. Following
separation from the bench, the practitioner may request restoration to
active status by completing and filing an application, Data Sheet,
signing a written undertaking required by Sec. 11.10, and paying the
fee set forth in Sec. 1.21(a)(1)(i) of this subchapter. Upon
restoration to active status, the practitioner shall be responsible for
paying the annual practitioner maintenance fee for the fiscal year in
which the practitioner is restored to active status.
(d) Voluntary Inactivation. (1) Except as provided in paragraph
(d)(4) of this section, any registered practitioner may voluntarily
enter inactive status by filing a request, in writing, that his or her
name be endorsed on the roster as voluntarily inactive. Upon acceptance
of the request, the OED Director shall endorse the name as voluntarily
inactive.
(2) A registered practitioner in voluntary inactive status shall be
responsible for payment of the annual practitioner maintenance fee for
voluntary inactive status set forth in Sec. 1.21(a)(7)(ii) of this
subchapter for each complete fiscal year the practitioner continues to
be in voluntary inactive status.
(3) A registered practitioner who seeks or enters into voluntary
inactive status is subject to investigation and discipline for his or
her conduct prior to, during, or after the period of his or her
inactivation.
(4) A registered practitioner who is in arrears in paying annual
practitioner maintenance fees or under administrative suspension for
annual practitioner maintenance fee delinquency is ineligible to seek
or enter into voluntary inactive status.
(5) A registered practitioner in voluntary inactive status is
prohibited from practicing before the Office in patent cases while in
voluntary inactive status. A practitioner in voluntary inactive status
will be subject to discipline for failing to comply with the provisions
of this paragraph. Upon acceptance of the request for voluntary
inactive status, the practitioner must comply with the provisions of
Sec. 10.40 of this subchapter.
(6) Any registered practitioner whose name has been endorsed as
voluntarily inactive pursuant to paragraph (d)(1) of this section and
is not under investigation, not subject to a disciplinary proceeding,
and not in arrears for the annual practitioner maintenance fee for
voluntary inactive status may be restored to active status on the
register as may be appropriate provided that the practitioner files a
written request for restoration, a completed application for
registration on a form supplied by the OED Director furnishing all
requested information and material, including information and material
pertaining to the practitioner's moral character and reputation under
Sec. 11.7(a)(2)(i) during the period of inactivation, a declaration or
affidavit attesting to the fact that the practitioner has read the most
recent revisions of the patent laws and the rules of practice before
the Office, and pays the fees set forth in Sec. Sec. 1.21(a)(7)(iii)
and (iv) of this subchapter.
(e) Resignation. A registered practitioner or a practitioner
recognized under Sec. 11.14(c), who is neither under investigation
under Sec. 11.22 for a possible violation of the Mandatory
Disciplinary Rules identified in Sec. 10.20(b) of Part 10 of this
subchapter, subject to discipline under Sec. Sec. 11.24 or 11.25, nor
a practitioner against whom no probable cause has been found by a panel
of the Committee on Discipline under Sec. 11.23(b), may resign by
notifying the OED Director in writing that he or she desires to resign.
Upon acceptance in writing by the OED Director of such notice, that
registered practitioner or practitioner under Sec. 11.14 shall no
longer be eligible to practice before the Office but shall continue to
file a change of address for five years thereafter in order that he or
she may be located in the event information regarding the
practitioner's conduct comes to the attention of the OED Director or
any grievance is made about his or her conduct while he or she engaged
in practice before the Office. The name of any registered practitioner
whose resignation is accepted shall be removed from the register,
endorsed as resigned, and notice thereof published in the Official
Gazette. Upon acceptance of the resignation by the OED Director, the
practitioner must comply with the provisions of Sec. 10.40 of this
subchapter.
(f) Administrative reinstatement. (1) Any registered practitioner
who has been administratively suspended pursuant to paragraph (b) of
this section, or who has resigned pursuant to paragraph (e) of this
section, may be reinstated on the register provided the practitioner
has applied for reinstatement on an application form supplied by the
OED Director, demonstrated compliance with the provisions of Sec. Sec.
11.7(a)(2)(i) and (iii), and paid the fees set forth in Sec. Sec.
1.21(a)(7)(i), (a)(9)(i) and (a)(9)(ii) of
[[Page 67759]]
this subchapter. Any person granted limited recognition who has been
administratively suspended pursuant to paragraph (b) of this section
may have their recognition reactivated provided the practitioner has
applied for reinstatement on an application form supplied by the OED
Director, demonstrated compliance with the provisions of Sec. Sec.
11.7(a)(2)(i) and (iii), and paid the fees set forth in Sec. Sec.
1.21(a)(8)(i), (a)(9)(i) and (a)(9)(ii) of this subchapter. A
practitioner who has resigned or was administratively suspended for two
or more years before the date the Office receives a completed
application from the person who resigned or was administratively
suspended must also pass the registration examination under Sec.
11.7(b)(1)(ii). Any reinstated practitioner is subject to investigation
and discipline for his or her conduct that occurred prior to, during,
or after the period of his or her administrative suspension or
resignation.
(2) Any registered practitioner whose registration has been
administratively inactivated pursuant to paragraph (c) of this section
may be reinstated to the register as may be appropriate provided within
two years after his or her employment with the Office ceases or within
two years after his or her employment in a judicial capacity ceases the
following is filed with the OED Director: a request for reinstatement,
a completed application for registration on a form supplied by the OED
Director furnishing all requested information and material, and the fee
set forth in Sec. 1.21(a)(9)(ii) of this subchapter. Any registered
practitioner inactivated or reinstated is subject to investigation and
discipline for his or her conduct before, during, or after the period
of his or her inactivation.
Dated: November 10, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E8-27208 Filed 11-14-08; 8:45 am]
BILLING CODE 3510-16-P