[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR11.7]

[Page 374-379]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 11_REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE--Table of Contents
 
           Subpart B_Recognition To Practice Before the USPTO
 
Sec. 11.7  Requirements for registration.

    (a) No individual will be registered to practice before the Office 
unless he or she has:
    (1) Applied to the USPTO Director in writing by completing an 
application for registration form supplied by the OED Director and 
furnishing all requested information and material; and
    (2) Established to the satisfaction of the OED Director that he or 
she:
    (i) Possesses good moral character and reputation;
    (ii) Possesses the legal, scientific, and technical qualifications 
necessary for him or her to render applicants valuable service; and
    (iii) Is competent to advise and assist patent applicants in the 
presentation and prosecution of their applications before the Office.
    (b)(1) To enable the OED Director to determine whether an individual 
has the qualifications specified in paragraph (a)(2) of this section, 
the individual shall:
    (i) File a complete application for registration each time admission 
to the registration examination is requested. A complete application for 
registration includes:
    (A) An application for registration form supplied by the OED 
Director wherein all requested information and supporting documents are 
furnished,
    (B) Payment of the fees required by Sec. 1.21(a)(1) of this 
subchapter,
    (C) Satisfactory proof of scientific and technical qualifications, 
and
    (D) For aliens, provide proof that recognition is not inconsistent 
with the terms of their visa or entry into the United States;
    (ii) Pass the registration examination, unless the taking and 
passing of the examination is waived as provided in paragraph (d) of 
this section. Unless examination is waived pursuant to paragraph (d) of 
this section, each individual seeking registration must take and pass 
the registration examination to enable the OED Director to determine 
whether the individual possesses the legal and competence qualifications 
specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section. An 
individual failing the examination may, upon receipt of notice of 
failure from OED, reapply for admission to the examination. An 
individual failing the examination must wait thirty days after the date 
the individual last took the examination before retaking the 
examination. An individual reapplying shall:
    (A) File a completed application for registration form wherein all 
requested information and supporting documents are furnished,
    (B) Pay the fees required by Sec. 1.21(a)(1) of this subchapter, 
and
    (C) For aliens, provide proof that recognition is not inconsistent 
with the terms of their visa or entry into the United States; and
    (iii) Provide satisfactory proof of possession of good moral 
character and reputation.
    (2) An individual failing to file a complete application for 
registration will not be admitted to the examination and will be 
notified of the incompleteness. Applications for registration that are 
incomplete as originally submitted will be considered only when they 
have been completed and received by OED, provided that this occurs 
within sixty days of the mailing date of the notice of incompleteness. 
Thereafter, a new and complete application for registration must be 
filed. Only an individual approved as satisfying the requirements of 
paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C) and (b)(1)(i)(D) of 
this section may be admitted to the examination.
    (3) If an individual does not reapply until more than one year after 
the mailing date of a notice of failure, that

[[Page 375]]

individual must again comply with paragraph (b)(1)(i) of this section.
    (c) Each individual seeking registration is responsible for updating 
all information and answers submitted in or with the application for 
registration based upon anything occurring between the date the 
application for registration is signed by the individual, and the date 
he or she is registered or recognized to practice before the Office in 
patent matters. The update shall be filed within thirty days after the 
date of the occasion that necessitates the update.
    (d) Waiver of the Registration Examination for Former Office 
Employees--(1) Former patent examiners who by July 26, 2004, had not 
actively served four years in the patent examining corps, and were 
serving in the corps at the time of their separation. The OED Director 
may waive the taking of a registration examination in the case of any 
individual meeting the requirements of paragraph (b)(1)(i)(C) of this 
section who is a former patent examiner but by July 26, 2004, had not 
served four years in the patent examining corps, if the individual 
demonstrates that he or she:
    (i) Actively served in the patent examining corps of the Office and 
was serving in the corps at the time of separation from the Office;
    (ii) Received a certificate of legal competency and negotiation 
authority;
    (iii) After receiving the certificate of legal competency and 
negotiation authority, was rated at least fully successful in each 
quality performance element of his or her performance plan for the last 
two complete fiscal years as a patent examiner; and
    (iv) Was not under an oral or written warning regarding the quality 
performance elements at the time of separation from the patent examining 
corps.
    (2) Former patent examiners who on July 26, 2004, had actively 
served four years in the patent examining corps, and were serving in the 
corps at the time of their separation. The OED Director may waive the 
taking of a registration examination in the case of any individual 
meeting the requirements of paragraph (b)(1)(i)(C) of this section who 
is a former patent examiner and by July 26, 2004, had served four years 
in the patent examining corps, if the individual demonstrates that he or 
she:
    (i) Actively served for at least four years in the patent examining 
corps of the Office by July 26, 2004, and was serving in the corps at 
the time of separation from the Office;
    (ii) Was rated at least fully successful in each quality performance 
element of his or her performance plan for the last two complete fiscal 
years as a patent examiner in the Office; and
    (iii) Was not under an oral or written warning regarding the quality 
performance elements at the time of separation from the patent examining 
corps.
    (3) Certain former Office employees who were not serving in the 
patent examining corps upon their separation from the Office. The OED 
Director may waive the taking of a registration examination in the case 
of a former Office employee meeting the requirements of paragraph 
(b)(1)(i)(C) of this section who by petition demonstrates possession of 
the necessary legal qualifications to render to patent applicants and 
others valuable service and assistance in the preparation and 
prosecution of their applications or other business before the Office by 
showing that he or she has:
    (i) Exhibited comprehensive knowledge of patent law equivalent to 
that shown by passing the registration examination as a result of having 
been in a position of responsibility in the Office in which he or she:
    (A) Provided substantial guidance on patent examination policy, 
including the development of rule or procedure changes, patent 
examination guidelines, changes to the Manual of Patent Examining 
Procedure, development of training or testing materials for the patent 
examining corps, or development of materials for the registration 
examination or continuing legal education; or
    (B) Represented the Office in patent cases before Federal courts; 
and
    (ii) Was rated at least fully successful in each quality performance 
element of his or her performance plan for said position for the last 
two complete rating periods in the Office, and was not under an oral or 
written warning regarding such performance elements at the time of 
separation from the Office.

[[Page 376]]

    (4) To be eligible for consideration for waiver, an individual 
formerly employed by the Office within the scope of one of paragraphs 
(d)(1), (d)(2) or (d)(3) of this section must file a complete 
application for registration and pay the fee required by Sec. 
1.21(a)(1)(i) of this subchapter within two years of the individual's 
date of separation from the Office. All other individuals formerly 
employed by the Office, including former examiners, filing an 
application for registration or fee more than two years after separation 
from the Office, are required to take and pass the registration 
examination. The individual or former examiner must pay the examination 
fee required by Sec. 1.21(a)(1)(ii) of this subchapter within thirty 
days after notice of non-waiver.
    (e) Examination results. Notification of the examination results is 
final. Within sixty days of the mailing date of a notice of failure, the 
individual is entitled to inspect, but not copy, the questions and 
answers he or she incorrectly answered. Review will be under 
supervision. No notes may be taken during such review. Substantive 
review of the answers or questions may not be pursued by petition for 
regrade. An individual who failed the examination has the right to 
retake the examination an unlimited number of times upon payment of the 
fees required by Sec. 1.21(a)(1)(i) and (ii) of this subchapter, and a 
fee charged by a commercial entity administering the examination.
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under Sec. 11.6(c), in addition to satisfying 
the provisions of paragraphs (a) and (b) of this section, and the 
provisions of Sec. 11.8(c), shall pay the application fee required by 
Sec. 1.21(a)(1)(i) of this subchapter upon filing an application for 
registration.
    (g) Investigation of good moral character and reputation. (1) Every 
individual seeking recognition shall answer all questions in the 
application for registration and request(s) for comments issued by OED; 
disclose all relevant facts, dates and information; and provide verified 
copies of documents relevant to his or her good moral character and 
reputation. An individual who is an attorney shall submit a certified 
copy of each of his or her State bar applications and moral character 
determinations, if available.
    (2)(i) If the OED Director receives information from any source that 
reflects adversely on the good moral character or reputation of an 
individual seeking registration or recognition, the OED Director shall 
conduct an investigation into the good moral character and reputation of 
that individual. The investigation will be conducted after the 
individual has passed the registration examination, or after the 
registration examination has been waived for the individual, as 
applicable. An individual failing to timely answer questions or respond 
to an inquiry by OED shall be deemed to have withdrawn his or her 
application, and shall be required to reapply, pass the examination, and 
otherwise satisfy all the requirements of this section. No individual 
shall be certified for registration or recognition by the OED Director 
until, to the satisfaction of the OED Director, the individual 
demonstrates his or her possession of good moral character and 
reputation.
    (ii) The OED Director, in considering an application for 
registration by an attorney, may accept a State bar's character 
determination as meeting the requirements set forth in paragraph (g) of 
this section if, after review, the Office finds no substantial 
discrepancy between the information provided with his or her application 
for registration and the State bar application and moral character 
determination, provided that acceptance is not inconsistent with other 
rules and the requirements of 35 U.S.C. 2(b)(2)(D).
    (h) Good moral character and reputation. Evidence showing lack of 
good moral character and reputation may include, but is not limited to, 
conviction of a felony or a misdemeanor identified in paragraph (h)(1) 
of this section, drug or alcohol abuse; lack of candor; suspension or 
disbarment on ethical grounds from a State bar; and resignation from a 
State bar while under investigation.
    (1) Conviction of felony or misdemeanor. An individual who has been 
convicted of a felony or a misdemeanor involving moral turpitude, breach 
of trust, interference with the administration of justice, false 
swearing, misrepresentation,

[[Page 377]]

fraud, deceit, bribery, extortion, misappropriation, theft, or 
conspiracy to commit any felony or misdemeanor, is presumed not to be of 
good moral character and reputation in the absence of a pardon or a 
satisfactory showing of reform and rehabilitation, and shall file with 
his or her application for registration the fees required by Sec. 
1.21(a)(1)(ii) and (a)(10) of this subchapter. The OED Director shall 
determine whether individuals convicted of said felony or misdemeanor 
provided satisfactory proof of reform and rehabilitation.
    (i) An individual who has been convicted of a felony or a 
misdemeanor identified in paragraph (h)(1) of this section shall not be 
eligible to apply for registration during the time of any sentence 
(including confinement or commitment to imprisonment), deferred 
adjudication, and period of probation or parole as a result of the 
conviction, and for a period of two years after the date of completion 
of the sentence, deferred adjudication, and period of probation or 
parole, whichever is later.
    (ii) The following presumptions apply to the determination of good 
moral character and reputation of an individual convicted of said felony 
or misdemeanor:
    (A) The court record or docket entry of conviction is conclusive 
evidence of guilt in the absence of a pardon or a satisfactory showing 
of reform or rehabilitation; and
    (B) An individual convicted of a felony or any misdemeanor 
identified in paragraph (h)(1) of this section is conclusively deemed 
not to have good moral character and reputation, and shall not be 
eligible to apply for registration for a period of two years after 
completion of the sentence, deferred adjudication, and period of 
probation or parole, whichever is later.
    (iii) The individual, upon applying for registration, shall provide 
satisfactory evidence that he or she is of good moral character and 
reputation.
    (iv) Upon proof that a conviction has been set aside or reversed, 
the individual shall be eligible to file a complete application for 
registration and the fee required by Sec. 1.21(a)(1)(ii) of this 
subchapter and, upon passing the registration examination, have the OED 
Director determine, in accordance with paragraph (h)(1) of this section, 
whether, absent the conviction, the individual possesses good moral 
character and reputation.
    (2) Good moral character and reputation involving drug or alcohol 
abuse. An individual's record is reviewed as a whole to see if there is 
a drug or alcohol abuse issue. An individual appearing to abuse drugs or 
alcohol may be asked to undergo an evaluation, at the individual's 
expense, by a qualified professional approved by the OED Director. In 
instances where, before an investigation commences, there is evidence of 
a present abuse or an individual has not established a record of 
recovery, the OED Director may request the individual to withdraw his or 
her application, and require the individual to satisfactorily 
demonstrate that he or she is complying with treatment and undergoing 
recovery.
    (3) Moral character and reputation involving lack of candor. An 
individual's lack of candor in disclosing facts bearing on or relevant 
to issues concerning good moral character and reputation when completing 
the application or any time thereafter may be found to be cause to deny 
registration on moral character and reputation grounds.
    (4) Moral character and reputation involving suspension, disbarment, 
or resignation from a profession. (i) An individual who has been 
disbarred or suspended from practice of law or other profession, or has 
resigned in lieu of a disciplinary proceeding (excluded or disbarred on 
consent) shall be ineligible to apply for registration as follows:
    (A) An individual who has been disbarred from practice of law or 
other profession, or has resigned in lieu of a disciplinary proceeding 
(excluded or disbarred on consent) shall be ineligible to apply for 
registration for a period of five years from the date of disbarment or 
resignation.
    (B) An individual who has been suspended on ethical grounds from the 
practice of law or other profession shall be ineligible to apply for 
registration until expiration of the period of suspension.

[[Page 378]]

    (C) An individual who was not only disbarred, suspended or resigned 
in lieu of a disciplinary proceeding, but also convicted in a court of a 
felony, or of a crime involving moral turpitude or breach of trust, 
shall be ineligible to apply for registration until the conditions in 
paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
    (ii) An individual who has been disbarred or suspended, or who 
resigned in lieu of a disciplinary proceeding shall file an application 
for registration and the fees required by Sec. 1.21(a)(1)(ii) and 
(a)(10) of this subchapter; provide a full and complete copy of the 
proceedings that led to the disbarment, suspension, or resignation; and 
provide satisfactory proof that he or she possesses good moral character 
and reputation. The following presumptions shall govern the 
determination of good moral character and reputation of an individual 
who has been licensed to practice law or other profession in any 
jurisdiction and has been disbarred, suspended on ethical grounds, or 
allowed to resign in lieu of discipline, in that jurisdiction:
    (A) A copy of the record resulting in disbarment, suspension or 
resignation is prima facie evidence of the matters contained in the 
record, and the imposition of disbarment or suspension, or the 
acceptance of the resignation of the individual shall be deemed 
conclusive that the individual has committed professional misconduct.
    (B) The individual is ineligible for registration and is deemed not 
to have good moral character and reputation during the period of the 
imposed discipline.
    (iii) The only defenses available with regard to an underlying 
disciplinary matter resulting in disbarment, suspension on ethical 
grounds, or resignation in lieu of a disciplinary proceeding are set out 
below, and must be shown to the satisfaction of the OED Director:
    (A) The procedure in the disciplinary court was so lacking in notice 
or opportunity to be heard as to constitute a deprivation of due 
process;
    (B) There was such infirmity of proof establishing the misconduct as 
to give rise to the clear conviction that the Office could not, 
consistently with its duty, accept as final the conclusion on that 
subject; or
    (C) The finding of lack of good moral character and reputation by 
the Office would result in grave injustice.
    (i) Factors that may be taken into consideration when evaluating 
rehabilitation of an individual seeking a moral character and reputation 
determination. The factors enumerated below are guidelines to assist the 
OED Director in determining whether an individual has demonstrated 
rehabilitation from an act of misconduct or moral turpitude. The factors 
include:
    (1) The nature of the act of misconduct, including whether it 
involved moral turpitude, whether there were aggravating or mitigating 
circumstances, and whether the activity was an isolated event or part of 
a pattern;
    (2) The age and education of the individual at the time of the 
misconduct and the age and education of the individual at the present 
time;
    (3) The length of time that has passed between the misconduct and 
the present, absent any involvement in any further acts of moral 
turpitude, the amount of time and the extent of rehabilitation being 
dependent upon the nature and seriousness of the act of misconduct under 
consideration;
    (4) Restitution by the individual to any person who suffered 
monetary losses through acts or omissions of the individual;
    (5) Expungement of a conviction;
    (6) Successful completion or early discharge from probation or 
parole;
    (7) Abstinence from the use of controlled substances or alcohol for 
not less than two years if the specific misconduct was attributable in 
part to the use of a controlled substance or alcohol, where abstinence 
may be demonstrated by, but is not necessarily limited to, enrolling in 
and complying with a self-help or professional treatment program;
    (8) If the specific misconduct was attributable in part to a 
medically recognized mental disease, disorder or illness, proof that the 
individual sought professional assistance, and complied with the 
treatment program prescribed

[[Page 379]]

by the professional, and submitted letters from the treating 
psychiatrist/psychologist verifying that the medically recognized mental 
disease, disorder or illness will not impede the individual's ability to 
competently practice before the Office;
    (9) Payment of the fine imposed in connection with any criminal 
conviction;
    (10) Correction of behavior responsible in some degree for the 
misconduct;
    (11) Significant and conscientious involvement in programs designed 
to provide social benefits or to ameliorate social problems; and
    (12) Change in attitude from that which existed at the time of the 
act of misconduct in question as evidenced by any or all of the 
following:
    (i) Statements of the individual;
    (ii) Statements from persons familiar with the individual's previous 
misconduct and with subsequent attitudes and behavioral patterns;
    (iii) Statements from probation or parole officers or law 
enforcement officials as to the individual's social adjustments; and
    (iv) Statements from persons competent to testify with regard to 
neuropsychiatry or emotional disturbances.
    (j) Notice to Show Cause. The OED Director shall inquire into the 
good moral character and reputation of an individual seeking 
registration, providing the individual with the opportunity to create a 
record on which a decision is made. If, following inquiry and 
consideration of the record, the OED Director is of the opinion that the 
individual seeking registration has not satisfactorily established that 
he or she possesses good moral character and reputation, the OED 
Director shall issue to the individual a notice to show cause why the 
individual's application for registration should not be denied.
    (1) The individual shall be given no less than ten days from the 
date of the notice to reply. The notice shall be given by certified mail 
at the address appearing on the application if the address is in the 
United States, and by any other reasonable means if the address is 
outside the United States.
    (2) Following receipt of the individual's response, or in the 
absence of a response, the OED Director shall consider the individual's 
response, if any, and the record, and determine whether, in the OED 
Director's opinion, the individual has sustained his or her burden of 
satisfactorily demonstrating that he or she possesses good moral 
character and reputation.
    (k) Reapplication for registration. An individual who has been 
refused registration for lack of good moral character or reputation may 
reapply for registration two years after the date of the decision, 
unless a shorter period is otherwise ordered by the USPTO Director. An 
individual, who has been notified that he or she is under investigation 
for good moral character and reputation may elect to withdraw his or her 
application for registration, and may reapply for registration two years 
after the date of withdrawal. Upon reapplication for registration, the 
individual shall pay the fees required by Sec. 1.21(a)(1)(ii) and 
(a)(10) of this subchapter, and has the burden of showing to the 
satisfaction of the OED Director his or her possession of good moral 
character and reputation as prescribed in paragraph (b) of this section. 
Upon reapplication for registration, the individual also shall complete 
successfully the examination prescribed in paragraph (b) of this 
section, even though the individual has previously passed a registration 
examination.