Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 457 

(ii) Each U.S. patent application 

publication by patent application 

publication number, first named 

inventor, and publication date; 

(iii) Each foreign patent or published 

foreign patent application by the 

country or patent office that issued the 

patent or published the application, an 

appropriate document number, first 

named inventor, and the publication 

date indicated on the patent or 

published application; 

(iv) Each printed publication is 

identified by publisher, author, title, 

pages being submitted, publication date, 

and place of publication, where 

available; and 

(vi) Each item of other information by 

date, if known. 

(2) A concise description of the 

relevance of each item listed pursuant to 

paragraph (c)(1) of this section; 

(3) A legible copy of each listed 

patent, publication, or other item of 

information in written form, or at least 

the pertinent portions thereof, other 

than U.S. patents and U.S. patent 

application publications, unless 

required by the Office; 

* * * * * 

5. Section 1.292 is removed and 

reserved. 

§ 1.292 [Reserved] 

Dated: December 30, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–33811 Filed 1–4–12; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 11 

[Docket No. PTO–C–2011–0089] 

RIN 0651–AC76 

Implementation of Statute of 

Limitations Provisions for Office 

Disciplinary Proceedings 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking, 

request for comments. 

SUMMARY: The Leahy-Smith America 

Invents Act (AIA) requires that 

disciplinary proceedings be commenced 

not later than the earlier of the date that 

is 10 years after the date on which the 

misconduct forming the basis of the 

proceeding occurred, or one year from 

the date on which the misconduct 

forming the basis of the proceeding was 

made known to an officer or employee 

of the United States Patent and 

Trademark Office (Office or USPTO), as 

prescribed in the regulations governing 

disciplinary proceedings. The Office 

initiates disciplinary proceedings via 

three types of disciplinary complaints: 

complaints predicated on the receipt of 

a probable cause determination from the 

Committee on Discipline; complaints 

seeking reciprocal discipline; and 

complaints seeking interim suspension 

based on a serious crime conviction. 

This notice proposes that the one-year 

statute of limitations commences, with 

respect to complaints predicated on the 

receipt of a probable cause 

determination from the Committee on 

Discipline, the date on which the 

Director, Office of Enrollment and 

Discipline (OED Director) receives from 

the practitioner a complete, written 

response to a request for information 

and evidence; with respect to 

complaints based on reciprocal 

discipline, the date on which the OED 

Director receives a certified copy of the 

record or order regarding the 

practitioner being publicly censured, 

publicly reprimanded, subjected to 

probation, disbarred, suspended, or 

disciplinarily disqualified; and, with 

respect to complaints for interim 

suspension based on a serious crime 

conviction, the date on which the OED 

Director receives a certified copy of the 

record, docket entry, or judgment 

demonstrating that the practitioner has 

been convicted of a serious crime. 

DATES: To be ensured of consideration, 

written comments must be received on 

or before March 5, 2012. 

ADDRESSES: Comments should be sent 

by electronic mail message over the 

Internet addressed to: 

OED_SOL@uspto.gov. Comments may 

also be submitted by mail addressed to: 

Mail Stop OED–Ethics Rules, United 

States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, Virginia 

22313–1450, marked to the attention of 

William R. Covey, Deputy General 

Counsel for Enrollment and Discipline 

and Director of the Office of Enrollment 

and Discipline. Comments may also be 

sent by electronic mail message over the 

Internet via the Federal eRulemaking 

Portal. See the Federal eRulemaking 

Portal Web site (http:// 

www.regulations.gov) for additional 

instructions on providing comments via 

the Federal eRulemaking Portal. 

Although comments may be 

submitted by postal mail, the Office 

prefers to receive comments by 

electronic mail message over the 

Internet because sharing comments with 

the public is more easily accomplished. 

Electronic comments are preferred to be 

submitted in plain text, but also may be 

submitted in ADOBE® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® portable document 

format. 

Comments will be made available for 

public inspection at the Office of 

Enrollment and Discipline, located on 

the 8th Floor of the Madison West 

Building, 600 Dulany Street, 

Alexandria, Virginia. Comments also 

will be available for viewing via the 

Office’s Internet Web site (http:// 

www.uspto.gov). Because comments will 

be made available for public inspection, 

information that the submitter does not 

desire to make public, such as an 

address or phone number, should not be 

included in the comments. 

FOR FURTHER INFORMATION CONTACT: 

William R. Covey, Deputy General 

Counsel for Enrollment and Discipline 

and Director of the Office of Enrollment 

and Discipline, by telephone at (571) 

272–4097. 

SUPPLEMENTARY INFORMATION: Under 35 

U.S.C. 32, the Office may take 

disciplinary action against any person, 

agent, or attorney who fails to comply 

with the regulations established under 

35 U.S.C. 2(b)(2)(D). Procedural 

regulations governing the investigation 

of possible grounds for discipline and 

the conduct of disciplinary proceedings 

are set forth at 37 CFR 11.19 et seq. 

Section 32 of Title 35, United States 

Code, as amended by the AIA, requires 

that a disciplinary proceeding be 

commenced not later than the earlier of 

either 10 years after the date on which 

the misconduct forming the basis for the 

proceeding occurred, or one year after 

the date on which the misconduct 

forming the basis for the proceeding is 

made known to an officer or employee 

of the Office, as prescribed in the 

regulations established under 35 U.S.C. 

2(b)(2)(D). Thus, the AIA’s amendment 

directs the Office to establish 

regulations clarifying when misconduct 

forming the basis for a disciplinary 

proceeding is made known to the Office. 

Prior to the AIA’s amendment to 35 

U.S.C. 32, disciplinary actions for 

violations of the USPTO Code of 

Professional Responsibility were 

generally understood to be subject to a 

five-year statute of limitations pursuant 

to 28 U.S.C. 2462. See, e.g., Sheinbein 

v. Dudas, 465 F.3d 493, 496 (Fed. Cir. 

2006). With the AIA’s new 10-year 


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limitation period, Congress provided the 

Office with five additional years to bring 

an action, thus ensuring that the Office 

had additional flexibility to initiate ‘‘a 

[disciplinary] proceeding for the vast 

bulk of misconduct that is discovered, 

while also staying within the limits of 

what attorneys can reasonably be 

expected to remember,’’ Congressional 

Record S1372–1373 (daily ed. March 8, 

2011) (statement of Sen. Kyl). Therefore, 

the new 10-year limitation period 

indicates congressional intent to extend 

the time permitted to file a disciplinary 

action against a practitioner who 

violates the USPTO Code of Professional 

Responsibility, rather than to allow such 

actions to become time-barred. See id. at 

S1372 (‘‘[A] strict five-year statute of 

limitations that runs from when the 

misconduct occurs, rather than from 

when it reasonably could have been 

discovered, would appear to preclude a 

section 32 proceeding for a significant 

number of cases of serious 

misconduct’’). 

The one-year limitation period in the 

AIA reflects that disciplinary actions 

should be filed in a timely manner from 

the date when misconduct forming the 

basis of a disciplinary complaint against 

a practitioner is made known to ‘‘that 

section of PTO charged with conducting 

section 32 proceedings,’’ Congressional 

Record S1372 (daily ed. March 8, 2011) 

(statement of Sen. Kyl). The proposed 

regulation satisfies the goal of 

commencing section 32 proceedings 

without undue delay. 

Generally speaking, there are four 

steps taken by the OED Director prior to 

the filing of a § 11.32 disciplinary 

complaint against a practitioner: (1) 

Preliminary screening of the allegations 

made against the practitioner, see 

§ 11.22(d); (2) requesting of information 

from the practitioner about his or her 

alleged conduct, see § 11.22(f)(1)(ii); (3) 

conducting a thorough investigation 

after providing the practitioner an 

opportunity to respond to the 

allegations, see § 11.22(a); and (4) 

submitting the investigated case to the 

Committee on Discipline for a 

determination of whether there is 

probable cause to bring charges against 

the practitioner, see § 11.32. 

The first step is the preliminary 

screening of allegations to evaluate 

whether they merit providing the 

practitioner the opportunity to address 

them. Allegations are often incomplete 

and do not provide the OED Director 

with a full picture of what may have 

transpired. In other words, mere 

allegations do not necessarily provide 

the OED Director with a reasonable 

basis for automatically seeking 

information from the practitioner 

regarding a possible ethical violation; 

therefore, the OED Director always 

conducts an initial review of the 

allegations. Moreover, the OED Director 

recognizes that issuing a request for 

information to the practitioner—the 

second step—typically triggers anxiety 

for the practitioner, may interfere with 

the practitioner’s practice, and may 

cause the practitioner to incur legal 

expenses in responding to investigative 

inquiries by OED. For this reason also, 

OED does not contact the practitioner 

automatically upon receipt of 

information alleging a practitioner 

committed an ethical violation. In short, 

the OED Director seeks the practitioner’s 

side of the story, if at all, only after the 

OED Director preliminarily screens the 

information and determines that 

possible grounds for discipline exist. 

See 37 CFR 11.22(d). 

During the preliminary screening 

process, an OED staff attorney reviews 

the allegations to determine whether 

they implicate any of the Disciplinary 

Rules of the USPTO Code of 

Professional Responsibility. To this end, 

the attorney may seek out additional 

evidence (review Office records, request 

additional information from the person 

making the allegations or from third 

persons, etc.) to ensure that the matter 

is disciplinary in nature and the 

allegations are supported by objective 

evidence. 

The OED’s preliminary screening may 

obviate the need to seek information 

from the practitioner because the 

screening often reveals that the 

allegations do not present a basis for 

filing a § 11.32 disciplinary action 

against the practitioner. Under such 

circumstances, the OED Director closes 

the case without contacting the 

practitioner. Hence, the preliminary 

screening helps ensure that a 

practitioner is not subjected to a 

premature request for information or its 

attendant stress, turmoil, and cost. The 

screening also ensures that the Office 

does not expend its limited resources 

seeking information from a practitioner 

unnecessarily. 

After the preliminary screening, if the 

OED Director determines that the 

allegations establish possible grounds 

for discipline, the OED Director seeks 

the practitioner’s side of the story—the 

second step prior to filing a § 11.32 

action. Specifically, the OED Director 

requests information or evidence from 

the practitioner pursuant to 

§ 11.22(f)(1)(ii). The practitioner will 

then have an opportunity to respond to 

the allegations levied against him or her. 

Typically, the OED Director does not 

and cannot have sufficient information 

to complete a thorough investigation— 

the third step—before the practitioner 

has had the opportunity to present his 

or her side of the story. 

Based on current caseload and staffing 

levels, the OED Director has set a goal 

to complete the preliminary screening 

and issue a § 11.22(f)(1)(ii) request, 

when warranted, to the practitioner 

under investigation within 60 calendar 

days of the initial receipt by the OED 

Director of information suggesting 

possible misconduct. OED will allow 

the practitioner 30 calendar days to 

provide a complete, written response 

and, as discussed below, may grant a 

reasonable request for an extension of 

time to respond. 

A complete response to an initial 

§ 11.22(f) request frequently raises 

factual issues that require further 

investigation before the OED Director 

can determine whether actual grounds 

for discipline exist. Hence, after the 

OED Director receives the practitioner’s 

response to the § 11.22(f)(1)(ii) request, 

the OED Director moves to the third 

step: conducting a thorough 

investigation of the allegations to 

uncover all relevant incriminating and 

exculpating evidence. The third step is 

time-consuming because it involves the 

OED Director undertaking a thorough 

fact-finding (e.g., reviewing issues 

raised for the first time by the 

practitioner, obtaining information from 

any person who may be reasonably 

expected to provide information or 

evidence in connection with the 

investigation pursuant to § 11.22(f)(iii) 

and from non-grieving clients pursuant 

to § 11.22(f)(2)) and performing legal 

analyses of issues. It is in the interests 

of the public as well as the practitioner 

under investigation that OED conduct a 

thorough investigation prior to 

determining whether the matter should 

be submitted to the Committee on 

Discipline pursuant to § 11.32. Hence, 

such additional follow-up investigative 

and legal work can take several months 

to complete. 

After completing an investigation of 

the allegations against a practitioner, the 

OED Director has the authority to close 

the investigation without pursuing 

disciplinary action, issue a warning to 

the practitioner, enter into a proposed 

settlement agreement with the 

practitioner, or convene the Committee 

on Discipline to determine whether 

there is probable cause to file a § 11.32 

action against the practitioner. See 37 

CFR 11.22(h). Based on current caseload 

and staffing levels, the OED Director has 

set a goal to submit a matter to the 

Committee on Discipline for a probable 

cause determination—the fourth step— 

within 10 months of the initial receipt 

by the OED Director of the allegations 


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that a practitioner engaged in 

misconduct. 

Under the proposed regulation, the 

one-year statute of limitations begins to 

run for § 11.32 actions when the OED 

Director receives the practitioner’s 

complete, written response to a 

§ 11.22(f)(1)(ii) request. The proposed 

regulation reflects that a complete 

response to a § 11.22(f)(1)(ii) request 

usually is a significant step in making 

a practitioner’s misconduct known to 

the OED Director in an informed and 

meaningful way. This step in the 

process gives the practitioner an 

opportunity to respond to the 

allegations levied against him or her. 

Basic notions of fairness to the 

practitioner, and integrity of the 

process, are primary purposes for 

providing an opportunity to respond. 

Additionally, the proposed regulation 

provides the OED Director with needed 

flexibility in obtaining information from 

the practitioner. On a case-by-case basis, 

the OED Director has the authority to 

grant extensions of time to respond to a 

§ 11.22(f)(1)(ii) request for information. 

Such extensions may be important to 

the practitioner because they often give 

the practitioner the time needed to 

secure legal counsel, conduct his or her 

own inquiry, and prepare a complete, 

written response to the OED Director’s 

request. The OED Director grants such 

requests where it is appropriate to do so, 

taking into consideration whether an 

extension would jeopardize the timely 

completion of the investigation in light 

of any approaching deadline under the 

statute of limitations. Historically, the 

OED Director has granted 30-, 60-, or 

even 90-day extensions of time to 

practitioners. Under the proposed 

regulation, the OED Director is able to 

continue to afford a practitioner a 

reasonable period of time to address 

allegations of ethical violations because 

the limitation period would not 

commence until after the practitioner 

provides a complete, written response. 

The Office carefully considered, but 

decided against proposing, a regulation 

that commences the one-year limitation 

period for § 11.32 actions on the date on 

which the OED Director initially 

receives allegations about a practitioner. 

The Office did not choose such a 

regulation for three reasons. First, the 

Office usually receives information 

about a practitioner from a client who 

alleges that the practitioner acted 

improperly. While mere allegations of 

ethical violations may alert the Office 

that a client is subjectively dissatisfied 

with a practitioner, they often do not 

provide sufficient objective evidence 

that misconduct has occurred. The 

accuser’s naked assertions about a 

practitioner rarely put the Office on 

notice of misconduct forming the basis 

of a disciplinary proceeding because 

such statements often do not provide a 

complete, objective picture of what 

transpired between the practitioner and 

the client. It is also unfair to the 

practitioner that the basis of a 

disciplinary proceeding be predicated 

only on the allegations levied against 

him or her without providing the 

practitioner an opportunity to respond 

to the allegations. As discussed above, 

this basic notion of fairness to the 

practitioner against whom allegations of 

misconduct have been made is one main 

purpose of the proposed regulation. 

Second, a regulation that proposes 

commencing the one-year limitation 

period on the date the OED Director 

initially receives allegations about a 

practitioner’s alleged misconduct would 

unnecessarily restrict the OED Director’s 

ability to grant reasonable extensions of 

time to respond to the OED Director’s 

initial request for information. As 

discussed above, such extensions are 

important to the practitioner. But the 

OED Director might be compelled to 

deny an extension of time out of 

necessity if the Office only had one year 

from the date of initial receipt of 

allegations about a practitioner to obtain 

and consider the practitioner’s side of 

the story; conduct and conclude an 

investigation; prepare and submit the 

matter to the Committee on Discipline; 

and prepare and file a disciplinary 

complaint based on the Committee’s 

probable cause determination. Likewise, 

it would not be in the best interest of the 

Office not to grant an extension because 

the OED Director strives to present all 

available, relevant evidence to the 

Committee on Discipline in every 

§ 11.32 disciplinary action. By 

comparison, the proposed regulation 

follows the long-standing practice of 

affording a practitioner a reasonable 

opportunity to respond to the 

allegations levied against him or her. 

Third, the Office is concerned that 

starting the one-year limitation period 

from the date the OED Director initially 

receives an allegation of misconduct 

might encourage dilatory responses and 

other delay tactics by practitioners, 

which would not be in the public 

interest. For example, a practitioner 

could simply choose to hinder the 

investigation by providing incomplete 

responses to § 11.22(f)(1)(ii) requests 

with the purpose of having the one-year 

limitation period run without the OED 

Director having received the 

practitioner’s side of the story. This 

would result in a less than thorough 

investigation being submitted to the 

Committee on Discipline to determine 

whether probable cause exists that the 

practitioner engaged in misconduct. 

The Office also carefully considered, 

but decided against proposing, an 

alternative regulation that starts the oneyear limitation period for § 11.32 actions 

on the date on which the OED Director 

decides, after conducting a preliminary 

screening of the initial information 

about a practitioner, to obtain the 

practitioner’s side of the story. Such a 

regulation would not provide the OED 

Director the same degree of flexibility in 

allowing extensions of time for the 

practitioner to respond to 

§ 11.22(f)(1)(ii) requests. Moreover, it 

would encroach on the sense of fair play 

that permeates the proposed regulation. 

The Office also considered, but chose 

not to propose, two other regulations 

starting the one-year limitation period 

for § 11.32 actions. The first would start 

the limitation period on the date that 

the OED Director submits a fully 

investigated case to a Committee on 

Discipline panel pursuant to 37 CFR 

11.32. The second would start the oneyear limitation period on the date the 

Committee on Discipline forwards its 

probable cause determination to the 

OED Director pursuant to 37 CFR 

11.23(b)(2). 

In addition to actions filed under 37 

CFR 11.32, the OED Director 

commences reciprocal disciplinary 

complaints under 37 CFR 11.24 and 

complaints for interim suspension 

predicated upon conviction of a serious 

crime under 37 CFR 11.25. Complaints 

under § 11.24 and § 11.25 are not 

submitted to the Committee on 

Discipline for a probable cause 

determination but are filed directly with 

the USPTO Director. See 37 CFR 11.24 

and 11.25. Complaints under § 11.24 

and § 11.25, however, must include a 

certified copy of the record showing that 

a practitioner was disciplined by 

another authority or convicted of a 

serious crime. Id. Obtaining certified 

copies of the requisite records is how 

the OED Director learns in a meaningful 

way of misconduct which can form the 

basis of a disciplinary proceeding 

brought under § 11.24 and § 11.25. 

It is OED’s practice to request a 

certified copy of the requisite records 

within 60 calendar days of receiving 

information suggesting that a 

practitioner has been disciplined by 

another authority or has been convicted 

of a serious crime. It also is OED’s 

practice to contact the practitioner 

within the same 60-day period for the 

purpose of providing the practitioner an 

opportunity to explain whether he or 

she is the same person who was 

disciplined by another licensing 


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460 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

authority or convicted of a serious 

crime. 

Here, the proposed regulation starts 

the one-year limitation period as of the 

date the OED Director receives a 

certified copy of the requisite records. 

Thus, for reciprocal discipline 

complaints filed pursuant to § 11.24(a), 

this notice proposes that the one-year 

limitation period commences the date 

on which the OED Director receives a 

certified copy of the record or order 

regarding the practitioner being publicly 

censured, publicly reprimanded, 

subjected to probation, disbarred, 

suspended, or disciplinarily 

disqualified. For interim suspension 

complaints filed pursuant to § 11.25(a), 

the limitation period begins the date on 

which the OED Director receives a 

certified copy of the record, docket 

entry, or judgment demonstrating that 

the practitioner has been convicted of a 

serious crime. Based on current 

caseload and staffing levels, the OED 

Director has set a goal to file § 11.24 and 

§ 11.25 complaints with the USPTO 

Director within 60 calendar days of the 

date when OED obtains certified copies 

of the requisite records. 

Discussion of Specific Rule 

Section 11.22 would be revised to add 

subsection (f)(3), which would specify 

that the OED Director shall request 

information and evidence from the 

practitioner prior to convening a panel 

of the Committee on Discipline under 

§ 11.32. As discussed above, the second 

step prior to filing a complaint in a 

§ 11.32 action is to request information 

or evidence from the practitioner 

pursuant to § 11.22(f)(1)(ii). This allows 

the practitioner to provide the OED 

Director with his or her views as to the 

allegations during the course of the 

investigation. 

Section 11.34 would be revised to add 

subsection (d), which would specify the 

time in which the OED Director may file 

a disciplinary complaint against an 

individual subject to the disciplinary 

authority of the Office. Specifically, in 

accordance with the AIA, a complaint 

shall be filed not later than the earlier 

of either ten years after the date on 

which the misconduct forming the basis 

for the proceeding occurred, or one year 

after the date on which the misconduct 

forming the basis for the proceeding is 

made known to an officer or employee 

of the Office. The date on which the 

misconduct forming the basis for the 

proceeding is made known to an officer 

or employee of the Office is: (a) For 

complaints filed pursuant to section 

11.24, the date on which the OED 

Director receives a certified copy of the 

record or order regarding the 

practitioner being publicly censured, 

publicly reprimanded, subjected to 

probation, disbarred, suspended or 

disciplinarily disqualified; (b) for 

complaints filed pursuant to section 

11.25, the date on which the OED 

Director receives a certified copy of the 

record, docket entry or judgment 

demonstrating that the practitioner has 

been convicted of a serious crime; and 

(c) for complaints filed pursuant to 

§ 11.32, the date on which the OED 

Director receives from the practitioner, 

who is the subject of an investigation 

commenced under section § 11.22(a), a 

complete, written response to a request 

for information and evidence issued 

pursuant to § 11.22(f)(1)(ii). 

Rulemaking Considerations 

Administrative Procedure Act: This 

notice proposes to prescribe regulations 

to implement the statute of limitations 

provisions for commencing a 

disciplinary proceeding pursuant to the 

AIA. These proposed changes involve 

rules of agency practice and procedure 

and/or interpretive rules. See Bachow 

Commc’ns Inc. v. FCC, 237 F.3d 683, 

690 (DC Cir. 2001) (rules governing an 

application process are procedural 

under the Administrative Procedure 

Act); Inova Alexandria Hosp. v. Shalala, 

244 F.3d 342, 350 (4th Cir. 2001) (rules 

for handling appeals were procedural 

where they did not change the 

substantive standard for reviewing 

claims); Nat’l Org. of Veterans’ 

Advocates v. Sec’y of Veterans Affairs, 

260 F.3d 1365, 1375 (Fed. Cir. 2001) 

(rule that clarifies interpretation of a 

statute is interpretive). 

Accordingly, prior notice and 

opportunity for public comment are not 

required pursuant to 5 U.S.C. 553(b) or 

(c) (or any other law), and thirty-day 

advance publication is not required 

pursuant to 5 U.SC. 553(d) (or any other 

law). See Cooper Techs. Co. v. Dudas, 

536 F.3d 1330, 1336–37 (Fed. Cir. 2008) 

(stating that 5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), does not require notice 

and comment rulemaking for 

‘‘interpretative rules, general statements 

of policy, or rules of agency 

organization, procedure, or practice’’) 

(quoting 5 U.S.C. 553(b)(A)). The Office, 

however, is publishing these proposed 

changes and the Regulatory Flexibility 

Act certification discussion below, for 

comment as it seeks the benefit of the 

public’s views on the Office’s proposed 

implementation of these provisions of 

the AIA. 

Regulatory Flexibility Act: As prior 

notice and an opportunity for public 

comment are not required pursuant to 5 

U.S.C. 553 or any other law, neither a 

regulatory flexibility analysis nor a 

certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) is 

required. See 5 U.S.C. 603. 

Nevertheless, the Deputy General 

Counsel for General Law of the United 

States Patent and Trademark Office has 

certified to the Chief Counsel for 

Advocacy, Small Business 

Administration, that the changes in this 

notice of proposed rulemaking will not 

have a significant economic impact on 

a substantial number of small entities 

(Regulatory Flexibility Act, 5 U.S.C. 

605(b)). The primary purpose of the 

proposed rule is to establish regulations 

pursuant to recent revisions to 35 U.S.C. 

32 that govern time limits for the Office 

to commence a disciplinary action. This 

proposed rule does not increase or 

change the burdens of practitioners 

involved in disciplinary proceedings or 

the investigation process. There are 

approximately 42,000 individuals 

registered to practice before the Office 

in patent matters and many unregistered 

attorneys who practice before the Office 

in trademark matters. In a typical year, 

the Office considers approximately 150 

to 200 matters concerning possible 

misconduct by individuals who practice 

before the Office in patent and/or 

trademark matters, and fewer than 100 

matters per year lead to a formal 

disciplinary proceeding or settlement. 

Thus, only a relatively small number of 

individuals are involved in the 

disciplinary process. Additionally, 

based on the Office’s experience in 

investigations that precede the 

disciplinary process, the Office does not 

anticipate this proposed rule will result 

in a significant increase, if any, in the 

number of individuals who are 

impacted by a disciplinary proceeding 

or investigation. Accordingly, the 

changes in this notice of proposed 

rulemaking will not have a significant 

economic impact on a substantial 

number of small entities. 

Executive Order 13132 (Federalism): 

This notice of proposed rulemaking 

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 (Regulatory 

Planning and Review): This notice of 

proposed rulemaking has been 

determined to be not significant for 

purposes of Executive Order 12866 

(September 30, 1993). 

Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563. Specifically, the Office 

has, to the extent feasible and 

applicable: (1) Made a reasoned 

determination that the benefits justify 


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the costs of the rule; (2) tailored the rule 

to impose the least burden on society 

consistent with obtaining the regulatory 

objectives; (3) selected a regulatory 

approach that maximizes net benefits; 

(4) specified performance objectives; (5) 

identified and assessed available 

alternatives; (6) involved the public in 

an open exchange of information and 

perspectives among experts in relevant 

disciplines, affected stakeholders in the 

private sector and the public as a whole, 

and provided on-line access to the 

rulemaking docket; (7) attempted to 

promote coordination, simplification, 

and harmonization across government 

agencies and identified goals designed 

to promote innovation; (8) considered 

approaches that reduce burdens and 

maintain flexibility and freedom of 

choice for the public; and (9) ensured 

the objectivity of scientific and 

technological information and 

processes. 

Executive Order 13175 (Tribal 

Consultation): This rulemaking will not: 

(1) Have substantial direct effects on one 

or more Indian tribes; (2) impose 

substantial direct compliance costs on 

Indian tribal governments; or (3) 

preempt tribal law. Therefore, a tribal 

summary impact statement is not 

required under Executive Order 13175 

(Nov. 6, 2000). 

Executive Order 13211 (Energy 

Effects): This rulemaking is not a 

significant energy action under 

Executive Order 13211 because this 

rulemaking is not likely to have a 

significant adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under Executive Order 13211 

(May 18, 2001). 

Executive Order 12988 (Civil Justice 

Reform): This rulemaking meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden as set forth in sections 

3(a) and 3(b)(2) of Executive Order 

12988 (Feb. 5, 1996). 

Executive Order 13045 (Protection of 

Children): This rulemaking does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under Executive Order 

13045 (Apr. 21, 1997). 

Executive Order 12630 (Taking of 

Private Property): This rulemaking will 

not effect a taking of private property or 

otherwise have taking implications 

under Executive Order 12630 (Mar. 15, 

1988). 

Unfunded Mandates Reform Act of 

1995: The changes proposed in this 

notice do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of 100 million dollars (as adjusted) or 

more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of 100 million dollars (as adjusted) or 

more in any one year, and will not 

significantly or uniquely affect small 

governments. Therefore, no actions are 

necessary under the provisions of the 

Unfunded Mandates Reform Act of 

1995. See 2 U.S.C. 1501 et seq. 

National Environmental Policy Act: 

This rulemaking will not have any effect 

on the quality of the environment and 

is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

National Technology Transfer and 

Advancement Act: The requirements of 

section 12(d) of the National 

Technology Transfer and Advancement 

Act of 1995 (15 U.S.C. 272 note) are not 

applicable because this rulemaking does 

not contain provisions which involve 

the use of technical standards. 

Paperwork Reduction Act: This 

rulemaking does not create any 

information collection requirements 

under the Paperwork Reduction Act of 

1995 (44 U.S.C. 3501 et seq.). 

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. 

Congressional Review Act: Under the 

Congressional Review Act provisions of 

the Small Business Regulatory 

Enforcement Fairness Act of 1996 (5 

U.S.C. 801 et seq.), prior to issuing any 

final rule, the USPTO will submit a 

report containing the final rule and 

other required information to the United 

States Senate, the United States House 

of Representatives, and the Comptroller 

General of the Government 

Accountability Office. However, this 

action is not a major rule as defined by 

5 U.S.C. 804(2). 

List of Subjects in 37 CFR Part 11 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers, Reporting and recordkeeping 

requirements. 

For the reasons set forth in the 

preamble, the United States Patent and 

Trademark Office proposes to amend 37 

CFR Part 11 as follows: 

PART 11—REPRESENTATION OF 

OTHERS BEFORE THE UNITED 

STATES PATENT AND TRADEMARK 

OFFICE 

1. The authority citation for 37 CFR 

Part 11 continues to read as follows: 

Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 

35 U.S.C. 2(b)(2), 32, 41. 

2. Section 11.22 is amended to add 

paragraph (f)(3) as follows: 

* * * * * 

(f) Request for information and 

evidence by OED Director. 

* * * * * 

(3) The OED Director shall request 

information and evidence from the 

practitioner prior to convening a panel 

of the Committee on Discipline under 

§ 11.32. 

* * * * * 

3. Section 11.34 is amended to add 

paragraph (d) as follows: 

§ 11.34 Complaint. 

* * * * * 

(d) Time for filing a complaint. A 

complaint shall be filed not later than 

the earlier of either ten years after the 

date on which the misconduct forming 

the basis for the proceeding occurred, or 

one year after the date on which the 

misconduct forming the basis for the 

proceeding is made known to an officer 

or employee of the Office. The date on 

which the misconduct forming the basis 

for the proceeding is made known to an 

officer or employee of the Office is: 

(1) with respect to complaints under 

§ 11.24, the date on which the OED 

Director receives a certified copy of the 

record or order regarding the 

practitioner being publicly censured, 

publicly reprimanded, subjected to 

probation, disbarred, suspended, or 

disciplinarily disqualified; 

(2) with respect to complaints under 

§ 11.25, the date on which the OED 

Director receives a certified copy of the 

record, docket entry, or judgment 

demonstrating that the practitioner has 

been convicted of a serious crime; and 

(3) with respect to complaints under 

§ 11.32, the date on which the OED 

Director receives from the practitioner, 

who is the subject of an investigation 

commenced under section § 11.22(a), a 

complete, written response to a request 

for information and evidence issued 

pursuant to § 11.22(f)(1)(ii). 

Dated: December 30, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–33814 Filed 1–4–12; 8:45 am] 

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