[Federal Register Volume 88, Number 220 (Thursday, November 16, 2023)]
[Rules and Regulations]
[Pages 78644-78650]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-25234]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 11, and 41

[Docket No. PTO-C-2023-0010]
RIN 0651-AD67


Representation of Others in Design Patent Matters Before the 
United States Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

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SUMMARY: The U.S. Patent and Trademark Office (USPTO or Office) is 
amending the rules of practice in patent cases and the rules regarding 
the representation of others before the USPTO by creating a separate 
design patent practitioner bar whereby admitted design patent 
practitioners would practice in design patent proceedings only. Prior 
to this rulemaking, there was only one patent bar that applied to those 
who practice in patent matters before the Office, including in utility, 
plant, and design patents. The creation of a design patent practitioner 
bar does not impact the ability of those already registered to practice 
in any patent matters before the USPTO to continue to practice in any 
patent matters, including design patent matters, before the Office. 
Furthermore, it does not impact the ability of applicants for 
registration who meet the criteria to practice in all patent matters 
from qualifying for and upon passing the current registration exam, 
practicing in any patent matters before the Office, including design 
patent matters. Expanding the admission criteria of the patent bar 
encourages broader participation and keeps up with the ever-evolving 
technology and related teachings that qualify someone to practice 
before the USPTO. The Manual of Patent Examining Procedure will be 
updated in accordance with this final rule in due course.

DATES: This rule is effective January 2, 2024.

FOR FURTHER INFORMATION CONTACT: Will Covey, Deputy General Counsel for 
Enrollment and Discipline and Director of the Office of Enrollment and 
Discipline (OED), at 571-272-4097; and Scott C. Moore, Acting Vice 
Chief Administrative Patent Judge, Patent Trial and Appeal Board, at 
571-272-9797.

SUPPLEMENTARY INFORMATION: 

Purpose

    The Director of the USPTO has statutory authority to require a 
showing by patent practitioners that they possess ``the necessary 
qualifications to render applicants or other persons valuable service, 
advice, and assistance in the presentation or prosecution of their 
applications or other business before the Office.'' 35 U.S.C. 
2(b)(2)(D). Courts have determined that the USPTO Director bears the 
primary responsibility for protecting the public from unqualified 
practitioners. See Hsuan-Yeh Chang v. Kappos, 890 F. Supp. 2d 110, 116-
17 (D.D.C. 2012) (``Title 35 vests the [Director of the USPTO], not the 
courts, with the responsibility to protect [US]PTO proceedings from 
unqualified practitioners.'') (quoting Premysler v. Lehman, 71 F.3d 
387, 389 (Fed. Cir. 1995)), aff'd sub nom., Hsuan-Yeh Chang v. Rea, 530 
F. App'x 958 (Fed. Cir. 2013).
    Pursuant to that authority and responsibility, the USPTO 
promulgated regulations, administered by OED, that provide that 
registration to practice in patent matters before the USPTO requires a 
practitioner to demonstrate possession of ``the legal, scientific, and 
technical qualifications necessary for him or her to render applicants 
valuable service.'' See 37 CFR 11.7(a)(2)(ii). The

[[Page 78645]]

Office determines whether an applicant possesses the legal 
qualification by administering a registration examination, which 
applicants for registration must pass before being admitted to 
practice. See 37 CFR 11.7(b)(ii). To take the registration exam, 
applicants must first demonstrate they possess specific scientific and 
technical qualifications. The USPTO sets forth guidance for 
establishing possession of these scientific and technical 
qualifications in the General Requirements Bulletin for Admission to 
the Examination for Registration to Practice in Patent Cases Before the 
United States Patent and Trademark Office (GRB), available at 
www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. The GRB also 
contains the ``Application for Registration to Practice before the 
United States Patent and Trademark Office.''
    The criteria for practicing before the Office are and continue to 
be based in part on a determination of the types of scientific and 
technical qualifications and legal knowledge that are essential for 
practitioners to possess. This helps ensure that only competent 
practitioners who understand the applicable rules and regulations and 
have the background necessary to describe inventions in a full and 
clear manner are permitted to practice.
    Prior to this rule, there was only one patent bar that applied to 
those who practice in patent matters before the Office, including in 
utility, plant, and design patents. The same scientific and technical 
requirements for admission to practice applied regardless of the type 
of patent application (that is, whether the application is a utility 
patent application, a plant patent application, or a design patent 
application). To gather public input before undertaking a rulemaking 
that would expand to the patent bar, on October 18, 2022, the USPTO 
published a request for comments in which it requested comments on the 
scope and eligibility criteria of a design patent practitioner bar. See 
Expanding Admission Criteria for Registration To Practice in Patent 
Cases Before the United States Patent and Trademark Office (87 FR 
63044). On January 19, 2023, the USPTO extended the response period 
until January 31, 2023. See Expanding Admission Criteria for 
Registration To Practice in Patent Cases Before the United States 
Patent and Trademark Office (88 FR 3394).
    The Office received a number of comments in favor of the creation 
of a separate design patent practitioner bar which noted that a design 
patent practitioner bar would: (1) align the criteria for design patent 
practitioners with those of design patent examiners at the USPTO; (2) 
improve design patent practitioner quality and representation; (3) 
allow more under-represented groups to practice design patent law and 
aid more under-represented inventors in acquiring patents; (4) enable 
individuals with valuable knowledge of design to aid design patent 
prosecution; (5) lower the costs of obtaining design patents by 
promoting competition among practitioners; (6) ensure consistent, high-
quality design patents via qualified practitioners; (7) enlarge the 
pool of available service providers, including those practitioners 
whose background may be more tailored to the needs of a design patent 
applicant; and (8) increase economic opportunities for design 
practitioners by allowing them to access a new market for the provision 
of their professional services. The Office received a few comments that 
were not supportive of the creation of a separate design patent 
practitioner bar. These included statements that the division of the 
bar would cause confusion within the public, increase the cost of 
identifying appropriate counsel, add significant administrative and 
policing costs to the USPTO, and increase the risk of potential 
malpractice and ethical concerns.
    Of the options presented, the majority of those who were in favor 
of creating and implementing a design patent practitioner bar preferred 
that design patent practitioner bar applicants be required to take the 
current registration examination, with modified scientific and 
technical requirements. Those who were in favor of this option noted 
that if the modified scientific and technical requirements included 
design degrees, the patent quality of design patents would increase 
because individuals with design degrees would be better able to prepare 
and prosecute design patent applications. Additionally, commenters 
noted that this option could increase the pool of potential applicants, 
which could lead to beneficial procompetitive effects. Lastly, this 
option would mirror the hiring practices of the USPTO for design patent 
examiners in that the same degrees would enable the practice of design 
patent examination in the Office and in prosecution before the Office.

Proposed Rule: Comments and Responses

    On May 16, 2023, after considering all public input, the USPTO 
published a notice of proposed rulemaking, at 88 FR 31209, in which it 
proposed implementing a design patent practitioner bar. The notice of 
proposed rulemaking provided for a 90-day comment period.
    The USPTO received nine unique comments from three organizations 
and six individuals. These comments are publicly available at the 
Federal eRulemaking Portal at www.regulations.gov. The Office received 
comments both generally supporting and objecting to the creation and 
implementation of a design patent practitioner bar. A summary of the 
comments and the USPTO's responses are provided below.
    Comment 1: Three commenters opposed the proposal to create and 
implement a design patent practitioner bar, stating that a design 
patent practitioner would lack the training and experience to provide 
fully competent counsel concerning the differences between utility and 
design patent protection, have a bias favoring pursuit of design patent 
protection which could work against the client's interest, and that 
such a bar would create confusion amongst the public.
    Response 1: All practitioners, including design patent 
practitioners, are required to provide competent representation to 
their clients. ``Competent representation requires the legal, 
scientific, and technical knowledge, skill, thoroughness and 
preparation reasonably necessary for the representation.'' See 37 CFR 
11.101. In addition, all practitioners are required to be familiar with 
the Office's rules and regulations, as demonstrated by applicants 
taking and passing the registration examination. Confusion by the 
public is avoided in part by allowing design patent practitioners to 
indicate their designation as a ``design patent attorney'' or ``design 
patent agent,'' and requiring such practitioners to indicate ``design'' 
when they are signing USPTO documents.
    Based on the support of stakeholders and commenters, this 
rulemaking implements a design patent practitioner bar wherein design 
patent practitioner bar applicants would be required to take the 
current registration examination, with modified scientific and 
technical requirements. Applicants to the design patent practitioner 
bar should have a bachelor's, master's, or doctorate of philosophy 
degree in any of the following areas from an accredited college or 
university: industrial design, product design, architecture, applied 
arts, graphic design, fine/studio arts, or art teacher education, or a 
degree equivalent to one of these listed degrees. Accepting degrees 
equivalent to those design degrees listed above is in line with the 
current practice of accepting degrees that are equivalent to those

[[Page 78646]]

listed in the GRB under Category A. These listed degrees are currently 
acceptable for those applying for design patent examiner positions with 
the Office. To ensure applicants to the design patent practitioner bar 
have the requisite knowledge of USPTO rules and regulations, the USPTO 
also requires them to take and pass the current registration 
examination. Applicants are also required to undergo and pass a moral 
character evaluation. The evaluation would be the same evaluation that 
is conducted for all patent bar applicants and is described in the GRB.
    As mentioned above, admitted design patent practitioners may 
practice in design patent matters only. Patent practitioners admitted 
in the past, present, and future who have fulfilled the scientific and 
technical requirements as enumerated in the GRB in Categories A through 
C will be authorized to practice in all patent matters, including in 
utility, plant, and design patents.
    Comment 2: One commenter suggested that a study of the 
implementation of a design patent practitioner bar, its impact on 
applicants/clients, and its overall effect on an efficient and reliable 
patent system be conducted.
    Response 2: The USPTO issued a Request for Comments on this issue 
on October 18, 2022, requesting input on the creation and 
implementation of a design patent practitioner bar. See 87 FR 63044. 
Expanding the admission criteria of the patent bar would encourage 
broader participation and keep up with the ever-evolving technology and 
related teachings that qualify someone to practice before the USPTO. 
Based on the responses received, and the noted support of a design 
patent practitioner bar, the USPTO is proceeding with its 
implementation.
    Comment 3: Two commenters requested clarification regarding whether 
the USPTO will accept candidates with coursework and/or work 
experience, as currently accepted for USPTO employment.
    Response 3: The USPTO will accept degrees and evidence of 
equivalence to one of the listed degrees. Like the analysis for 
practice in all patent matters, the USPTO will evaluate each applicant 
for equivalency on a case-by-case basis.
    Comment 4: Two commenters expressed concern that design patent 
practitioners may claim, or that clients may inappropriately believe, 
that design patent practitioners have specialized skills, training, or 
approval beyond traditional patent practitioners, providing them with 
expertise in design. Another commenter expressed concern that design 
patent practitioners should indicate that they are qualified to 
practice in design patent matters only.
    Response 4: As per 37 CFR 1.32, ``[a]n attorney or agent registered 
under Sec.  11.6(d) may only act as a practitioner in design patent 
applications or other design patent matters or design patent 
proceedings.'' Per ethics rule, 37 CFR 11.101, all practitioners, 
including design patent practitioners, are required to provide 
competent representation to their clients. This includes properly 
informing their clients of practice limitations.
    Comment 5: One commenter expressed concern about design patent 
practitioners receiving a registration number and stated it would be 
beneficial to place a letter designation alongside the number.
    Response 5: Patent Center does not support alphabetic indicators 
alongside registration numbers. However, design patent practitioners 
will receive a particular registration number series to distinguish 
them from those practitioners who are authorized to practice in all 
patent matters.
    Comment 6: One commenter suggested that the USPTO remove all degree 
requirements for attorneys to sit for the registration examination.
    Response 6: Courts have determined that the USPTO Director bears 
the primary responsibility for protecting the public from unqualified 
practitioners. See Hsuan-Yeh Chang v. Kappos, 890 F. Supp. 2d 110, 116-
17 (D.D.C. 2012) (``Title 35 vests the [Director of the USPTO], not the 
courts, with the responsibility to protect [US]PTO proceedings from 
unqualified practitioners.'') (quoting Premysler v. Lehman, 71 F.3d 
387, 389 (Fed. Cir. 1995)), aff'd sub nom., Hsuan-Yeh Chang v. Rea, 530 
F. App'x 958 (Fed. Cir. 2013). Pursuant to that authority and 
responsibility, the USPTO promulgated regulations, administered by OED, 
that provide that registration to practice in patent matters before the 
USPTO requires a practitioner to demonstrate possession of ``the legal, 
scientific, and technical qualifications necessary for him or her to 
render applicants valuable service.'' See 37 CFR 11.7(a)(2)(ii). The 
USPTO sets forth guidance for establishing possession of these 
scientific and technical qualifications in the GRB. As these 
regulations and guidance have been long-standing, they are entitled to 
great weight. See Alaska Dep't of Envtl. Conservation v. EPA, 540 U.S. 
461, 487 (2004) (recognizing that the Court ``will normally accord 
particular deference to longstanding agency interpretations'' (quoting 
Barnhart v. Walton, 535 U.S. 212, 220 (2002))); Bragdon v. Abbott, 524 
U.S. 624, 644-45 (1998); NLRB v. Hendricks Cnty. Rural Elec. Membership 
Corp., 454 U.S. 170, 189-90 (1981); Menkes v. U.S. Dep't of Homeland 
Sec., 637 F.3d 319, 332 (D.C. Cir. 2011) (``It is highly significant 
here that the agency's `interpretation is one of long standing.' '' 
(quoting Walton, 535 U.S. at 221)); Estate of Landers v. Leavitt, 545 
F.3d 98, 107 (2d Cir. 2008) (finding that agency's ``longstanding'' 
interpretation was ``entitled to a great deal of persuasive weight''); 
Council Tree Commc'ns, Inc. v. FCC, 503 F.3d 284, 289 (3d Cir. 2007) 
(``[C]ourts give `considerable weight' to a `consistent and 
longstanding interpretation by the agency' responsible for 
administering a statute.'' (quoting Int'l Union of Elec. Radio & Mach. 
Workers v. Westinghouse Electric Corp., 631 F.2d 1094, 1106 (3d Cir. 
1980)).
    Comment 7: One commenter suggested that instead of having design 
patent bar applicants take the current registration examination, 
applicants take an entirely new and separate design bar examination. 
Such applicants would then be the only ones entitled to practice in 
design patent matters.
    Response 7: This suggestion has not been adopted. As previously 
indicated by other commenters, design bar practitioners need to be 
familiar with the practices and procedures of patent preparation and 
prosecution before the USPTO. This is what the current registration 
examination tests. Restricting the ability to practice in design patent 
matters from those who meet the criteria for registration to practice 
in all patent matters would take away a right from those already 
qualified and be unfair to those who may qualify in the future.

Discussion of Specific Rules

    The USPTO amends Sec.  1.4(d)(1) to add the requirement that a 
design patent practitioner indicate their design patent practitioner 
status by placing the word ``design'' (in any format) adjacent to their 
handwritten signature.
    The USPTO amends Sec.  1.4(d)(2)(ii) to add the requirement that a 
design patent practitioner indicate their design patent practitioner 
status by placing the word ``design'' (in any format) adjacent to the 
last forward slash of their S-signature.
    The USPTO amends Sec.  1.32 to update the definition of 
``practitioner'' in light of the amendments to Sec.  11.6(d).
    A power of attorney naming the practitioners associated with a 
customer number filed in an application may only

[[Page 78647]]

include practitioners who are authorized to practice in that 
application. If a design practitioner is associated with a customer 
number, that customer number cannot be used to establish power of 
attorney in a utility or plant application. This applies even if a 
practitioner that is authorized to practice before the Office in all 
patent matters is also associated with that same customer number.
    The USPTO amends Sec.  11.1 to add a definition for ``design patent 
practitioner.''
    The USPTO amends Sec.  11.1 to amend paragraph (1) under the 
definition of ``practitioner'' to refer to Sec.  11.6.
    The USPTO amends Sec.  11.1 to amend the definition of ``register 
or roster'' to include design patent practitioners.
    The USPTO amends Sec.  11.5 to amend paragraph (b)(1) to add 
``all'' in view of new paragraph (b)(2), so that it is clear that 
(b)(1) defines the matters that a patent practitioner who is authorized 
to practice in all patent matters can practice; to remove ``public 
use'' proceedings, which are no longer held, and insert ``derivation'' 
proceedings; re-designate paragraph (b)(2) as paragraph (b)(3); and 
insert a new paragraph (b)(2), which defines practice before the Office 
in design patent matters.
    The USPTO amends Sec.  11.6 to re-designate paragraph (d) as 
paragraph (e), and insert a new paragraph (d) to clarify the parameters 
under which attorneys and agents may be registered as design patent 
practitioners.
    The USPTO amends Sec.  11.8(b) to require design patent 
practitioners to submit an oath or declaration under the same 
parameters as other registered practitioners.
    The USPTO amends Sec.  11.10(b) to restrict former employees of the 
USPTO from serving as design patent practitioners, commensurate with 
the restrictions placed on other registered practitioners.
    The USPTO amends Sec.  11.16(c) to clarify that only a practitioner 
registered under Sec.  11.6(a) or (b) may serve as a Patent Faculty 
Clinic Supervisor in the USPTO Law School Clinic Certification Program.
    The USPTO amends Sec.  11.704 to state that a registered 
practitioner under Sec.  11.6(a) who is an attorney may use the 
designation ``Patents,'' ``Patent Attorney,'' ``Patent Lawyer,'' 
``Registered Patent Attorney,'' or a substantially similar designation; 
a registered practitioner under Sec.  11.6(b) who is not an attorney 
may use the designation ``Patents,'' ``Patent Agent,'' ``Registered 
Patent Agent,'' or a substantially similar designation; a registered 
practitioner under Sec.  11.6(d) who is an attorney may use the 
designation ``Design Patent Attorney''; and a registered practitioner 
under Sec.  11.6(d) who is not an attorney (i.e., who is an agent) may 
use the designation ``Design Patent Agent.''
    The USPTO amends Sec.  41.106 by replacing the term ``registered 
patent practitioner'' with ``registered practitioner.'' This amendment 
is intended solely to conform the terminology of this section to that 
used elsewhere in part 41 and is not intended to alter the substantive 
scope of Sec.  41.106. For avoidance of doubt, the USPTO clarifies that 
the term ``registered practitioner,'' as used in parts 41 and 42, and 
the term ``USPTO patent practitioner,'' as used in Sec.  42.57, 
encompasses ``design patent practitioners,'' as defined in Sec.  11.1.

Rulemaking Requirements

    A. Regulatory Flexibility Act: For the reasons set forth in this 
rulemaking, the Senior Counsel for Regulatory and Legislative Affairs, 
Office of General Law, of the USPTO, has certified to the Chief Counsel 
for Advocacy of the Small Business Administration that this rule will 
not have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    This rule amends the rules regarding the representation of others 
before the USPTO to create a separate design patent practitioner bar in 
which admitted design patent practitioners practice in design patent 
proceedings only. The creation of a design patent practitioner bar does 
not impact the ability of those already registered to practice in any 
patent matters, including design patent matters, before the USPTO. 
Furthermore, it does not impact the ability of applicants who meet the 
scientific and technical criteria as described in Categories A through 
C in the GRB, including qualifying for and passing the current 
registration exam and passing the moral character evaluation, to 
practice in any patent matters before the Office.
    The Regulatory Flexibility Act of 1980 (RFA) requires Federal 
agencies to consider the potential impact of regulations on small 
entities during the development of their rules. See 5 U.S.C. 601-612, 
as amended by the Small Business Regulatory Enforcement Fairness Act of 
1996, Public Law 104-121 (March 29, 1996). The term ``small entities'' 
is comprised of small businesses, not-for-profit organizations that are 
not dominant in their fields, and governmental jurisdictions with 
populations of less than 50,000. An ``individual'' is not defined by 
the RFA as a small entity and costs to an individual from a rule are 
not considered for RFA purposes. In addition, the courts have held that 
the RFA requires an agency to perform a regulatory flexibility analysis 
of small entity impacts only when a rule directly regulates small 
entities. Consequently, any indirect impacts from a rule to a small 
entity are not considered as costs for RFA purposes.
    This rulemaking creates a separate design patent practitioner bar 
that only impacts individuals who apply for recognition to practice 
before the USPTO in design patent proceedings and does not directly 
impact any small businesses. Additionally, the changes do not add 
requirements or costs beyond those that currently exist for applicants 
or members to the USPTO practitioner bar. The changes only expand the 
applicants that can represent certain matters before the USPTO. 
Applicants to the design patent practitioner bar are expected to pay 
the same application and examination fee as applicants who want to 
practice in all patent matters and are subject to existing requirements 
and procedures during the application process (for example, the same 
application and supporting documentation would be required of all 
applicants). Accordingly, the changes are expected to be of minimal or 
no additional burden to those practicing before the Office.
    The Office acknowledges that the creation of a design patent 
practitioner bar allows more practitioners to be recognized to practice 
before the USPTO, although they would be limited to design patent 
proceedings only. The Office considers these to be indirect impacts 
that are not considered to be costs for RFA purposes. The Office has 
not received any comments of data regarding the costs for RFA purposes.
    For the reasons discussed above, this rulemaking will not have a 
significant economic impact on a substantial number of small entities.
    B. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
E.O. 12866 (Sept. 30, 1993), as amended by Executive Order 14094 (April 
6, 2023).
    C. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with E.O. 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits;

[[Page 78648]]

(4) specified performance objectives; (5) identified and assessed 
available alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided online access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
Government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    D. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under E.O. 13132 (Aug. 4, 1999).
    E. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under E.O. 13175 (Nov. 6, 2000).
    F. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under E.O. 13211 because this rulemaking is 
not likely to have a significant adverse effect on the supply, 
distribution, or use of energy. Therefore, a Statement of Energy 
Effects is not required under E.O. 13211 (May 18, 2001).
    G. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden, as set forth in sections 3(a) and 3(b)(2) of E.O. 
12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under E.O. 13045 (Apr. 21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under E.O. 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the U.S. Senate, the U.S. House of Representatives, and 
the Comptroller General of the Government Accountability Office. The 
changes in this rulemaking are not expected to result in an annual 
effect on the economy of $100 million or more, a major increase in 
costs or prices, or significant adverse effects on competition, 
employment, investment, productivity, innovation, or the ability of 
U.S.-based enterprises to compete with foreign-based enterprises in 
domestic and export markets. Therefore, this rulemaking is not expected 
to result in a ``major rule'' as defined in 5 U.S.C. 804(2).
    K. Unfunded Mandates Reform Act of 1995: The changes in this 
rulemaking do not involve a Federal intergovernmental mandate that will 
result in the expenditure by State, local, and tribal governments, in 
the aggregate of $100 million (as adjusted) or more in any one year, or 
a Federal private sector mandate that will result in the expenditure by 
the private sector of $100 million (as adjusted) or more in any one 
year, and will not significantly or uniquely affect small governments. 
Therefore, no actions are necessary under the provisions of the 
Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    L. National Environmental Policy Act of 1969: This rulemaking will 
not have any effect on the quality of the environment and is thus 
categorically excluded from review under the National Environmental 
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act of 1995: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    N. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq.) requires that the Office consider the 
impact of paperwork and other information collection burdens imposed on 
the public. This rulemaking involves information collection 
requirements that are subject to review and approval by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act. The 
collections of information involved in this rulemaking have been 
reviewed and previously approved by OMB under OMB control numbers 0651-
0012 (Admission to Practice and Roster of Registered Patent Attorneys 
and Agents Admitted to Practice Before the USPTO) and 0651-0017 
(Practitioner Conduct and Discipline). These information collections 
are updated alongside this final rulemaking, to reflect any updated 
forms included within these information collections. Any increased 
respondent and burden numbers associated with the introduction of the 
design patent practitioner bar options are included in that update.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act, unless that collection of information 
has a currently valid OMB control number.
    O. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

    For the reasons set forth in the preamble, the USPTO amends 37 CFR 
parts 1, 11, and 41 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for part 1 continues to read as follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Amend Sec.  1.4 by revising paragraphs (d)(1) introductory text and 
(d)(2)(ii) to read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d)(1) Handwritten signature. A design patent practitioner must 
indicate their design patent practitioner status by

[[Page 78649]]

placing the word ``design'' (in any format) adjacent to their 
handwritten signature. Each piece of correspondence, except as provided 
in paragraphs (d)(2) through (4), (e), and (f) of this section, filed 
in an application, patent file, or other proceeding in the Office that 
requires a person's signature, must:
* * * * *
    (2) * * *
    (ii) A patent practitioner (Sec.  1.32(a)(1)), signing pursuant to 
Sec.  1.33(b)(1) or (2), must supply their registration number either 
as part of the S-signature or immediately below or adjacent to the S-
signature. The hash (#) character may only be used as part of the S-
signature when appearing before a practitioner's registration number; 
otherwise, the hash character may not be used in an S-signature. A 
design patent practitioner must additionally indicate their design 
patent practitioner status by placing the word ``design'' (in any 
format) adjacent to the last forward slash of their S-signature.
* * * * *

0
3. Amend Sec.  1.32 by revising paragraph (a)(1) to read as follows:


Sec.  1.32  Power of attorney.

    (a) * * *
    (1) Patent practitioner means a registered patent attorney or 
registered patent agent under Sec.  11.6. An attorney or agent 
registered under Sec.  11.6(d) may only act as a practitioner in design 
patent applications or other design patent matters or design patent 
proceedings.
* * * * *

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
4. The authority citation for part 11 continues to read as follows:

    Authority:  5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 
41; Sec. 1, Pub. L. 113-227, 128 Stat. 2114.


0
5. Amend Sec.  11.1 by:
0
a. Adding in alphabetical order a definition for ``Design patent 
practitioner''; and
0
b. Revising the definitions of ``Practitioner'' and ``Roster or 
register''.
    The addition and revisions read as follows:


Sec.  11.1  Definitions.

* * * * *
    Design patent practitioner means a practitioner who is registered 
under Sec.  11.6(d).
* * * * *
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office 
in patent matters under Sec.  11.6;
    (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as 
provided by Sec.  11.14(a) through (c), to practice before the Office 
in trademark matters or other non-patent matters;
    (3) An individual authorized to practice before the Office in 
patent matters under Sec.  11.9(a) or (b); or
    (4) An individual authorized to practice before the Office under 
Sec.  11.16(d).
* * * * *
    Roster or register means a list of individuals who have been 
registered as a patent attorney, patent agent, or design patent 
practitioner.
* * * * *

0
6. Amend Sec.  11.5 by:
0
a. Revising paragraph (b)(1),
0
b. Re-designating paragraph (b)(2) as (b)(3), and
0
c. Adding new paragraph (b)(2).
    The revisions and addition read as follows:


Sec.  11.5  Register of attorneys and agents in patent matters; 
practice before the Office.

* * * * *
    (b) * * *
    (1) Practice before the Office in all patent matters. Practice 
before the Office in patent matters includes, but is not limited to, 
preparing or prosecuting any patent application; consulting with or 
giving advice to a client in contemplation of filing a patent 
application or other document with the Office; drafting the 
specification or claims of a patent application; drafting an amendment 
or reply to a communication from the Office that may require written 
argument to establish the patentability of a claimed invention; 
drafting a reply to a communication from the Office regarding a patent 
application; and drafting a communication for an interference, 
derivation, and/or reexamination proceeding, a petition, an appeal to 
or any other proceeding before the Patent Trial and Appeal Board, or 
any other patent proceeding. Registration to practice before the Office 
in patent matters authorizes the performance of those services that are 
reasonably necessary and incident to the preparation and prosecution of 
patent applications or other proceedings before the Office involving a 
patent application or patent in which the practitioner is authorized to 
participate. The services include:
    (i) Considering the advisability of relying upon alternative forms 
of protection which may be available under State law, and
    (ii) Drafting an assignment or causing an assignment to be executed 
for the patent owner in contemplation of filing or prosecution of a 
patent application for the patent owner, where the practitioner 
represents the patent owner after a patent issues in a proceeding 
before the Office, and when drafting the assignment the practitioner 
does no more than replicate the terms of a previously existing oral or 
written obligation of assignment from one person or party to another 
person or party.
    (2) Practice before the Office in design patent matters. (i) 
Practice before the Office in design patent matters includes, but is 
not limited to, preparing or prosecuting a design patent application; 
consulting with or giving advice to a client in contemplation of filing 
a design patent application or other document relating to a design 
patent application with the Office; drafting the specification or claim 
of a design patent application; drafting an amendment or reply to a 
communication from the Office that may require written argument to 
establish the patentability of a claimed design invention; drafting a 
reply to a communication from the Office regarding a design patent 
application; and drafting a communication for an interference, 
derivation, and/or reexamination proceeding, a petition, an appeal to 
or any other design patent proceeding before the Patent Trial and 
Appeal Board, or any other design patent proceeding.
    (ii) Design patent registration to practice before the Office in 
design patent matters authorizes the performance of those services that 
are reasonably necessary and incident to the preparation and 
prosecution of design patent applications or other proceedings before 
the Office involving a design patent application or design patent in 
which the practitioner is authorized to participate. The services 
include:
    (A) Considering the advisability of relying upon alternative forms 
of protection which may be available under State law, and
    (B) Drafting an assignment or causing an assignment to be executed 
for the design patent owner in contemplation of filing or prosecution 
of a design patent application for the design patent owner, where the 
design patent practitioner represents the design patent owner after a 
design patent issues in a proceeding before the Office, and when 
drafting the assignment the design patent practitioner does no more 
than replicate the terms of a previously existing oral or

[[Page 78650]]

written obligation of assignment from one person or party to another 
person or party.
* * * * *

0
7. Amend Sec.  11.6 by re-designating paragraph (d) as (e) and adding a 
new paragraph (d).
    The addition reads as follows:


Sec.  11.6  Registration of attorneys and agents.

* * * * *
    (d) Design patent practitioners. Any citizen of the United States 
who is an attorney and who fulfills the requirements of this part may 
be registered as a design patent attorney to practice before the Office 
in design patent proceedings. Any citizen of the United States who is 
not an attorney, and who fulfills the requirements of this part may be 
registered as a design patent agent to practice before the Office in 
design patent proceedings.
* * * * *

0
8. Amend Sec.  11.8 by revising paragraph (b) to read as follows:


Sec.  11.8  Oath and registration fee.

* * * * *
    (b) An individual shall not be registered as an attorney under 
Sec.  11.6(a), registered as an agent under Sec.  11.6(b) or (c), 
registered as a design patent practitioner under Sec.  11.6(d), or 
granted limited recognition under Sec.  11.9(b) unless, within two 
years of the mailing date of a notice of passing the registration 
examination or of a waiver of the examination, the individual files 
with the OED Director a completed Data Sheet, an oath or declaration 
prescribed by the USPTO Director, and the registration fee set forth in 
Sec.  1.21(a)(2) of this subchapter. An individual seeking registration 
as an attorney under Sec.  11.6(a) must provide a certificate of good 
standing of the bar of the highest court of a State that is no more 
than six months old.
* * * * *

0
9. Amend Sec.  11.10 by revising paragraphs (b)(1) introductory text 
and (b)(2) introductory text to read as follows:


Sec.  11.10  Restrictions on practice in patent matters; former and 
current Office employees; government employees.

* * * * *
    (b) * * *
    (1) To not knowingly act as an agent, attorney, or design patent 
practitioner for or otherwise represent any other person:
* * * * *
    (2) To not knowingly act within two years after terminating 
employment by the Office as agent, attorney, or design patent 
practitioner for, or otherwise represent any other person:
* * * * *

0
10. Amend Sec.  11.16 by revising paragraph (c)(1)(i) to read as 
follows:


Sec.  11.16  Requirements for admission to the USPTO Law School Clinic 
Certification Program.

* * * * *
    (c) * * *
    (1) * * *
    (i) Be registered under Sec.  11.6(a) or (b) as a patent 
practitioner in active status and good standing with OED;
* * * * *

0
11. Amend Sec.  11.704 by revising paragraph (b) to read as follows:


Sec.  11.704  Communication of fields of practice and specialization.

* * * * *
    (b) A registered practitioner under Sec.  11.6(a) who is an 
attorney may use the designation ``Patents,'' ``Patent Attorney,'' 
``Patent Lawyer,'' ``Registered Patent Attorney,'' or a substantially 
similar designation. A registered practitioner under Sec.  11.6(b) who 
is not an attorney may use the designation ``Patents,'' ``Patent 
Agent,'' ``Registered Patent Agent,'' or a substantially similar 
designation. A registered practitioner under Sec.  11.6(d) who is an 
attorney may use the designation ``Design Patent Attorney.'' A 
registered practitioner under Sec.  11.6(d) who is not an attorney may 
use the designation ``Design Patent Agent.'' Unless authorized by Sec.  
11.14(b), a registered patent agent or design patent agent shall not 
hold themself out as being qualified or authorized to practice before 
the Office in trademark matters or before a court.
* * * * *

PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
12. The authority citation for part 41 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135, and Pub. L. 112-29.


0
13. Amend Sec.  41.106 by revising paragraph (f)(4) to read as follows:


Sec.  41.106  Filing and service.

* * * * *
    (f) * * *
    (4) A certificate made by a person other than a registered 
practitioner must be in the form of an affidavit.

Kathi Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-25234 Filed 11-15-23; 8:45 am]
BILLING CODE 3510-16-P