9196 Federal Register / Vol. 72, No. 39 / Wednesday, February 28, 2007 / Proposed Rules 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 11 

[Docket No.: PTO–C–2005–0013] 

RIN 0651–AB55 

Changes to Representation of Others 

Before the United States Patent and 

Trademark Office 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Supplemental Notice of 

Proposed Rule Making. 

SUMMARY: In December 2003, the United 

States Patent and Trademark Office 

(Office) proposed amendments to, inter 

alia, the rules governing disciplinary 

proceedings for attorneys and agents 

who practice before the Office, 

principally rules 11.2, 11.3, 11.5, and 

11.14 through 11.62. One hundred fiftyseven written comments were received. 

After reviewing the written comments, 

the Office has decided to revise several 

of the rules as then proposed and 

request additional comments on those 

revised proposals. Other proposed rules 

contained in the earlier Notice of 

Proposed Rule making remain under 

consideration by the Office. This 

supplemental notice of proposed rule 

making sets forth revisions that the 

Office is proposing to the rules 

governing the conduct of investigations 

and disciplinary proceedings. Interested 

individuals are invited to comment on 

the proposed revisions in the rules. 

DATES: To be ensured of consideration, 

written comments must be received on 

or before May 29, 2007. 

ADDRESSES: The Office seeks comments 

regarding the proposed revisions set 

forth in the proposed rules. Comments 

should be sent by electronic mail 

message over the Internet addressed to: 

ethicsrules.comments@uspto.gov. 

Comments may also be submitted by 

mail addressed to: Mail Stop OEDEthics Rules, United States Patent and 

Trademark Office, P.O. Box 1450, 

Alexandria, Virginia 22313–1450 or by 

facsimile to (571) 273–4097, marked to 

the attention of Harry I. Moatz. 

Although comments may be submitted 

by mail or facsimile, the Office prefers 

to receive comments via the Internet. 

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. 

The comments will be available for 

public inspection at the Office of 

Enrollment and Discipline, located in 

Madison East, Eighth Floor, 600 Dulany 

Street, Alexandria, Virginia, and will be 

available via the Office Internet Web site 

(address: http://www.uspto.gov). 

Because comments will be made 

available for public inspection, 

information that is not desired to be 

made public, such as an address or 

phone number, should not be included 

in the comments. 

FOR FURTHER INFORMATION CONTACT: 

Harry I. Moatz (571) 272–6069), Director 

of Enrollment and Discipline (OED 

Director), directly by phone, by 

facsimile to (571) 273–6069 marked to 

the attention of Mr. Moatz, or by mail 

addressed to: Mail Stop OED-Ethics 

Rules, U.S. Patent and Trademark 

Office, P.O. Box 1450, Alexandria, 

Virginia 22313–1450. 

SUPPLEMENTARY INFORMATION: On 

December 12, 2003, the Office published 

a proposed rule in the Federal Register 

(68 FR 69441) amending parts 1 and 2 

of the rules and procedures governing 

patent and trademark prosecution (Title 

37 of the Code of Federal Regulations), 

reserving part 10 and introducing part 

11. Included in the proposed rules for 

part 11 were rules governing the 

conduct of investigations and 

disciplinary proceedings. Many of the 

proposed investigation and disciplinary 

procedural rules were in many ways 

similar to the approach of the current 

regulations. Other proposed rules were 

intended to introduce new disciplinary 

procedures for practitioners who have 

been suspended or disbarred in other 

disciplinary jurisdictions for ethical or 

professional misconduct, practitioners 

convicted of serious crimes, and 

practitioners having disability issues. 

The December 12, 2003 Notice also 

proposed changes to the ethics rules 

governing the conduct of recognized 

patent practitioners and others 

practicing before the Office as well as 

rules governing enrollment of 

recognized practitioners. The provisions 

on enrollment were adopted in final 

rules on July 26, 2004, 69 FR 35428. 

Comments on proposed changes to the 

substantive ethics rules remain under 

consideration by the Office. The current 

notice does not address those proposed 

rules. 

In addition, several proposed rules 

referenced are directly or indirectly 

dependent on the development of 

electronic systems to implement rules 

governing annual dues, § 11.8, and 

continuing legal education. For 

example, §§ 11.8(d), 11.12, and 11.13 

are directly dependent on development 

of the systems, whereas § 11.11(b) is 

indirectly dependent on the 

development. Further consideration of 

rules dependent on implementing 

electronic systems awaits completion of 

the development and implementation of 

the systems. Accordingly, the revised 

rules proposed below do not refer to 

rules that depend on implementing 

electronic systems, and no comments 

are invited regarding the omitted 

referrals. 

A detailed analysis is not included 

herein of the differences between the 

rules proposed in December 2003 

(proposed rules) and the revised rules 

currently proposed (revised proposed 

sections). A comparison of the proposed 

rules and the revised proposed sections 

is being made available on the Internet 

at http://www.uspto.gov/web/offices/ 

dcom/olia/oed/comparison_ab55.pdf. 

Comments are sought regarding the 

revised proposed sections that introduce 

significant procedural or substantive 

changes. The following revised proposed 

sections are believed to be those 

introducing such changes: 11.2, 11.5, 

11.18 through 11.22, 11.24 through 

11.26, 11.28, 11.44, 11.45, and 11.52. 

This supplemental notice includes other 

revised proposed sections (sections 11.1 

(definition of State), 11.3, 11.14, 11.15, 

11.23, 11.27, 11.29, 11.33 through 11.36, 

11.38 through 11.41, 11.43, 11.50, 11.51, 

and 11.54 through 11.61) that are not 

believed to contain significant 

procedural or substantive changes from 

the December 12, 2003 notice; proposed 

rules that have not been revised (11.29 

through 11.31, 11.37, 11.42, 11.46 

through 11.49, 11.53, and 11.63 through 

11.99); and two proposed rules that, as 

revised, have been reserved (11.16 and 

11.62). The latter three groups of rules 

have been included to provide both 

context and perspective for the revised 

proposed sections that contain 

significant changes. The table below is 

included to assist readers in correlating 

the revised proposed sections with the 

present rules. While it is believed that 

further comments are unnecessary 

regarding rules that have not been 

revised at all or whose revisions are not 

significantly changed in procedure or 

substance, comments may nevertheless 

be submitted. 

TABLE—CONCORDANCE OF SECTIONS

11.14 THROUGH 11.99 WITH PART

10 AND CURRENT PART 11 

Section Part 10 and Part 11 concordance 

11.1 ................ New definition of State. 


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TABLE—CONCORDANCE OF SECTIONS

11.14 THROUGH 11.99 WITH PART

10 AND CURRENT PART 11—Continued 

Section Part 10 and Part 11 concordance 

11.2 ................ 37 CFR 11.2(a), (b)(4), (c) 

and (d) changes in language; Subsections 

11.2(b)(5), (b)(6) and (e) 

are new. 

11.3 ................ 37 CFR 10.170, changes in 

language. 

11.5 ................ 37 CFR 10.5, Subsection (b) 

is new. 

11.14 .............. 37 CFR 10.14, changes in 

language; Subsection 

11.14(f) is new. 

11.15 .............. 37 CFR 10.15. 

11.16–11.17 

[Reserved] 

37 CFR 10.16–10.17. 

11.18 .............. 37 CFR 10.18, changes in 

language. 

11.19 .............. 37 CFR 10.1 and 10.130(b), 

changes in language; Subsections 11.19(b) and (d) 

are new. 

11.20 .............. New. 

11.21 .............. New. 

11.22 .............. New. 

11.23 .............. 37 CFR 10.4, changes in 

language. 

11.24 .............. New. 

11.25 .............. New. 

11.26 .............. 37 CFR 10.133(g), changes 

in language. 

11.27 .............. 37 CFR 10.133(b) through 

(g), changes in language. 

11.28 .............. New. 

11.29–11.31 

[Reserved] 

New. 

11.32 .............. 37 CFR 10.132, changes in 

language. 

11.33 [Reserved] New. 

11.34 .............. 37 CFR 10.134, changes in 

language; Subsection 

11.134(c) is new. 

11.35 .............. 37 CFR 10.135, changes in 

language; Subsection 

11.135(a)(4) is new. 

11.36 .............. 37 CFR 10.136, changes in 

language; Subsection 

11.36(e) is new. 

11.37 [Reserved] New. 

11.38 .............. 37 CFR 10.138, changes in 

language. 

11.39 .............. 37 CFR 10.139, changes in 

language; Subsections 

11.39(b) and (g) are new. 

11.40 .............. 37 CFR 10.140, changes in 

language. 

11.41 .............. 37 CFR 10.141, changes in 

language. 

11.42 .............. 37 CFR 10.142. 

11.43 .............. 37 CFR 10.143, changes in 

language. 

11.44 .............. 37 CFR 10.144, changes in 

language. 

11.45 .............. 37 CFR 10.145, changes in 

language and new. 

TABLE—CONCORDANCE OF SECTIONS

11.14 THROUGH 11.99 WITH PART

10 AND CURRENT PART 11—Continued 

Section Part 10 and Part 11 concordance 

11.4611.48 

[Reserved] 

37 CFR 10.146–10.148. 

11.49 .............. 37 CFR 10.149. 

11.50 .............. 37 CFR 10.150, changes in 

language. 

11.51 .............. 37 CFR 10.151, changes in 

language. 

11.52 .............. 37 CFR 10.152, changes in 

language. 

11.53 .............. 37 CFR 10.153. 

11.54 .............. 37 CFR 10.154, changes in 

language. 

11.55 .............. 37 CFR 10.155, changes in 

language; Subsections 

11.155(b) through (g) are 

new. 

11.56 .............. 37 CFR 10.156, changes in 

language. 

11.57 .............. 37 CFR 10.157, changes in 

language. 

11.58 .............. 37 CFR 10.158, changes in 

language, Subsection 

11.158(d) is new. 

11.59 .............. 37 CFR 10.159, changes in 

language, Subsection 

11.159(c) is new. 

11.60 .............. 37 CFR 10.160, changes in 

language, Subsections 

11.160(d) through (f) are 

new. 

11.61 .............. 37 CFR 10.61, changes in 

language; Subsections 

11.161(c) and (d) are new. 

11.62–11.99 

[Reserved] 

New. 

Comments regarding proposed rules 

11.100 through 11.900 remain under 

consideration. The Office expects to 

publish a separate supplemental notice 

of proposed rule making containing 

proposed revisions to 11.100 through 

11.900 and request comments. 

In response to the proposed rule 

making published December 12, 2003, 

the Office received one hundred fiftyseven communications with comments, 

including comments from seventeen 

organizations, thirteen law firms, seven 

businesses, one hundred fifteen 

individuals, and four anonymous 

sources. 

This notice will address only 

comments concerning the procedural 

aspects of the earlier proposed rules. It 

will not address questions concerning 

the scope or substance of the Office’s 

practitioner ethics program, which it is 

expected will be the subject of a 

separate notice. The Office has given 

full consideration to each and every 

public comment submitted during the 

comment period. The Office has revised 

proposed sections contained herein to 

retain and clarify, inter alia, the OED 

Director’s authority and responsibility 

for investigations and prosecuting 

disciplinary matters. The revised 

proposed sections clarify (1) procedures 

whereby the OED Director may conduct 

investigations, (2) consequences for 

violating § 11.18(b)(2), (3) the 

disciplinary jurisdiction of the Office, 

(4) procedures for reciprocal discipline 

of practitioners who have been 

suspended or disbarred for ethical or 

professional misconduct in other 

jurisdictions, (5) procedures for 

disciplining practitioners convicted of a 

serious crime, and (6) procedures for 

practitioners to raise their own 

disability issues. 

The revised proposed sections 

eliminate or introduce substantive and 

procedural changes to the proposed 

rules. Many revisions were not 

suggested by the comments. 

Accordingly, this notice will not 

address each comment. Instead, the 

chief comments pertaining to the 

revisions are addressed herein. 

Congress has granted express 

authority to the Office to ‘‘establish 

regulations, not inconsistent with law, 

which * * * may govern the 

recognition and conduct of agents, 

attorneys, or other persons representing 

applicants or other parties before the 

Office.’’ 35 U.S.C. 2(b)(2)(D). Congress 

also provided that the ‘‘Director may, 

after notice and opportunity for a 

hearing, suspend or exclude, either 

generally or in any particular case, from 

further practice before the Patent and 

Trademark Office, * * * any * * * 

agent, or attorney shown to be 

incompetent or disreputable, or guilty of 

gross misconduct, or who does not 

comply with the regulations established 

under section 2(b)(2)(D) of this title, or 

who shall, by word, circular, letter, or 

advertising, with intent to defraud in 

any manner, deceive, mislead, or 

threaten any applicant or prospective 

applicant, or other person having 

immediate or prospective business 

before the Office. The reasons for any 

such suspension or exclusion shall be 

duly recorded.’’ 35 U.S.C. 32. In so 

doing, Congress vested express and 

implied authority with the Office to 

prescribe rules of procedure that are 

applicable to practitioners recognized to 

practice before the Office. 

The primary purposes for adopting 

procedures for disciplining practitioners 

who fail to conform to adopted 

standards include affording 

practitioners due process, protecting the 

public, preserving the integrity of the 

Office, and maintaining high 

professional standards. 


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Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Part 11, is proposed to be 

amended as follows: 

Section 11.1: The definition of state 

would be revised to clarify that state 

includes Commonwealths and 

territories of the United States, as well 

as the fifty states and the District of 

Columbia. Thus, the ‘‘court of * * * 

any state’’ in § 11.25(a) would include 

any courts of the fifty states, the District 

of Columbia, and Commonwealths and 

territories of the United States. 

Section 11.2: Section 11.2 provides 

for the appointment and duties of the 

Director of Enrollment and Discipline 

(OED Director), as well as petitions for 

review of decisions of the OED Director. 

The duties have been revised to clarify 

that investigations are conducted in 

matters involving possible grounds for 

discipline, as opposed to specifying 

particular violations that would be 

subject to investigation. The duties are 

further revised to require the OED 

Director to provide practitioners with an 

opportunity to respond to a reasonable 

inquiry by the OED Director. The OED 

Director will make reasonable requests 

for information and documents to 

efficiently and effectively ascertain 

whether grounds for discipline exist. 

The revised proposed section also 

separates petitions to review the OED 

Director’s decisions in disciplinary 

matters from petitions in enrollment 

matters. Subsections 11.2(c) and (d) 

would be limited to petitions regarding 

enrollment and recognition. The Office 

is proposing a specific procedure for 

petitioning to invoke the supervisory 

authority of the USPTO Director in 

disciplinary matters in subsection (e). 

The procedure in subsection (e) is 

comparable to the supervisory review 

procedure in § 1.181 and assures 

supervisory review when appropriate. 

Section 11.3: Section 11.3, which 

provides for suspension of rules, has 

been revised to eliminate a prohibition 

in proposed rule 11.3(b) against 

petitioning to waive a disciplinary rule. 

However, elimination of the prohibition 

should not be construed as an 

indication that there could be any 

extraordinary situation when justice 

requires waiver of a disciplinary rule. 

The revised proposed section also 

eliminates the provisions in proposed 

rule 11.3(d) for qualified privilege for 

complaints submitted to the OED 

Director or any other official of the 

Office and for immunity for Office 

employees from disciplinary complaint 

under Part 11 for any conduct in the 

course of their official duties. 

Section 11.5: The provisions of the 

sole paragraph of § 11.5 adopted in the 

final rules on July 26, 2004, would be 

renumbered as § 11.5(a). Revised 

subsection 11.5(b) defines practice 

before the Office. Commentators urged 

that Congressional approval is needed to 

define practice before the Office. 

Authority to govern conduct implicitly 

includes authorization to recognize 

activities constituting practice before 

the Office. The Internal Revenue Service 

(IRS), citing as authority the provisions 

in, inter alia, 31 U.S.C. 330, defined 

practice before that agency. The 

language of § 330(b) and 35 U.S.C. 32 

are comparable. Section 330(b) provides 

‘‘[a]fter notice and opportunity for a 

proceeding, the Secretary may suspend 

or disbar from practice before the 

Department a representative who—(1) is 

incompetent; (2) is disreputable; (3) 

violates regulations prescribed under 

this section; or (4) with intent to 

defraud, willfully and knowingly 

misleads or threatens the person being 

represented or a prospective person to 

be represented.’’ The relevant language 

of § 32 is quoted above. Congressional 

approval to define practice is implicit in 

these comparable provisions. 

Accordingly, it is appropriate that the 

Office define practice before the Office. 

Revised proposed § 11.5(b) covers all 

areas of law practiced before the Office. 

This definition tracks the definition of 

‘‘practice’’ adopted by the IRS. See 26 

CFR 601.501(b)(10) and 31 CFR 10.2(d). 

The definition addresses law-related 

services that comprehend all matters 

presented to the Office relating to a 

client’s rights, privileges, duties and 

responsibilities under the laws and 

regulations administered by the Office. 

Commentators also expressed concern 

as to whether practice before the Office 

was defined too broadly by including 

participation in drafting applications 

and including activities ‘‘incident to the 

preparation and prosecution of patent 

applications before the Patent Office.’’

The Office does not seek to expand its 

jurisdiction. Accordingly, 

‘‘participation’’ in drafting applications 

and activities ‘‘incident to the 

preparation and prosecution of patent 

applications before the Patent Office’’

are no longer included in the definition. 

However, the Office has authority to 

inform registered practitioners whether 

activities are covered by their 

registration to practice before the Office. 

For example, drafting patent 

applications would continue to be 

practice before the Office. The revised 

proposed sections indicate that a 

registered practitioner must be able to 

provide clients with advice about 

relying upon alternative forms of 

protection that may be available under 

State law. The revised proposed section 

indicates that registered practitioners 

may use nonpractitioners to conduct 

many of the activities associated with 

practice before the Office, such as 

drafting patent applications, provided 

they work under the supervision of the 

registered practitioner. The rule permits 

the more than 30,000 registered patent 

practitioners to employ nonpractitioners to assist practitioners in 

providing cost-efficient services to 

clients. It also permits every attorney 

practicing before the Office in trademark 

cases to provide cost-efficient services. 

Thus, practitioners may provide their 

legal services at lower fees, a result 

favored by the Office and practitioners. 

The revised proposed section also 

recognizes that attorneys representing 

persons in enrollment and disciplinary 

matters are engaged in practice before 

the Office. 

But for limited situations noted 

below, a registered patent agent is not 

authorized by his or her registration to 

practice before the Office to draw up a 

contract or to select contract forms for 

a client relating to a patent, such as an 

assignment or a license, if the state in 

which the agent resides or practices 

considers drafting contracts the practice 

of law. Assignments and licenses are the 

creation of state, not federal, statutory 

law. Although 35 U.S.C. 152, 202, 204 

and 261 refer to assignment or licensure 

of patents or patent rights, assignments 

and licenses are forms of contracts, 

which are creatures of state, not federal 

law. Contracts are enforceable under 

state law. The authority to prepare 

contracts and provide advice regarding 

the terms to include in contracts is 

subject to the state law regarding who is 

authorized to practice law. In contrast, 

submission for recordation of 

assignments and licenses is a ministerial 

act that does not require legal training. 

It has been the long-standing position of 

the Office that a registered patent agent 

may prepare a patent assignment or 

license if not prohibited by state law, 

and an agent may submit the assignment 

or license for recordation. 

The Office solicits comment on 

whether it should explicitly provide for 

circumstances in which a patent agent’s 

causing an assignment to be executed 

might be appropriate incidental to 

preparing and filing an application. For 

example, execution of a standard 

assignment document may be incidental 

to filing an application where the 

inventor is an employee of an 

organization, such as a corporation or 

partnership, and signed an agreement to 

assign inventions to the organization. It 


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would be also consistent with the law 

in some states for a registered patent 

agent who is a regular (salaried) 

employee of the organization acting for 

his or her employer to undertake to 

prepare assignments only for the 

employer. If commentators propose that 

the Office should provide for such 

situations, they should attempt to 

articulate standards by which actions 

strictly incidental to an agent’s duties in 

preparing applications can be 

distinguished from actions necessitating 

expert knowledge of state principles for 

which registered practitioner status does 

not prepare agents. 

The provision in proposed rule 

11.5(b)(3) regarding a practitioner’s 

conduct occurring in a non-practitioner 

capacity has been withdrawn as being 

unnecessary. Misconduct occurring in a 

non-lawyer or non-agent capacity would 

be covered by the provisions of revised 

proposed § 11.19, which identify several 

grounds for discipline, including, but 

not limited to, conduct that violates an 

imperative USPTO Rule of Professional 

Conduct and a conviction of a serious 

crime. 

Section 11.16: Proposed rule 11.16, 

regarding financial books and records, 

has been withdrawn. As revised, § 11.16 

would be reserved. Requests for 

financial records during investigations 

are addressed infra under § 11.22. 

Section 11.18: Section 11.18(b) 

provides that a practitioner certifies the 

truthfulness of the content of his or her 

submissions to the Office. Concern was 

expressed that the prohibition against 

‘‘knowingly and willfully’’ covering up 

by any ‘‘trick, scheme or device’’ a 

material fact is unduly broad and 

meaningless. However, the language in 

§ 11.18(b), ‘‘knowingly and willfully 

falsifies, conceals, or covers up by any 

trick, scheme, or device a material fact,’’

is taken from 18 U.S.C. 1001. Section 

1001, titled ‘‘Statements or entries 

generally,’’ provides: ‘‘Whoever, in any 

matter within the jurisdiction of any 

department or agency of the United 

States knowingly and willfully falsifies, 

conceals, or covers up by any trick, 

scheme, or device a material fact, or 

makes any false, fictitious or fraudulent 

statements or representations, or makes 

or uses any false writing or document 

knowing the same to contain any false, 

fictitious or fraudulent statement or 

entry, shall be fined not more than 

$10,000 or imprisoned not more than 

five years, or both.’’ The Office is only 

repeating an obligation with which 

practitioners otherwise have to comply. 

The section applies the statutory 

standard of conduct applicable to the 

submission of material facts in courts to 

proceedings in the Office. Case law has 

identified a number of circumstances 

involving knowingly falsifying material 

facts by trick, scheme, or device. See 

e.g., U.S. v. Zavala, 139 F.2d 830 (2d 

Cir. 1944). Accordingly, the language 

has not been changed. 

Section 11.18(b)(1) has been revised 

to clarify that the rule prohibits 

knowingly or willfully making false, 

fictitious, or fraudulent statements or 

representations or knowingly or 

willfully making or using a false writing 

or document known to contain any 

false, fictitious, or fraudulent statement 

or entry. The section has also been 

revised to point out that whoever 

violates the rule is subject to penalties 

of criminal statutes in addition to those 

under 18 U.S.C. 1001. Statements in this 

section to the effect that violations of 

the rule may jeopardize the validity of 

the application or document, or the 

validity or enforceability of any patent, 

trademark registration, or certificate 

resulting therefrom have been removed 

as being beyond the scope of 

§ 10.18(b)(1). Inasmuch as an offending 

paper may have little or no probative 

value, this section has been revised to 

state that violation of the rule may 

jeopardize the probative value of such a 

paper. 

Section 11.18(c) sets forth sanctions 

that may be imposed for violations of 

§ 11.18(b). Commentators urged that the 

Office has no authority to impose 

monetary sanctions for violations of 

§ 11.18(b). As revised, the rule sets forth 

a non-exhaustive list of sanctions and 

actions the Office may impose or take. 

The revised proposed section removes 

reference to imposition of monetary 

sanctions. The sanctions have been 

revised to include striking the offending 

paper, precluding a practitioner from 

submitting a paper, and sanctions 

affecting the weight given to the 

offending paper. Actions the Office may 

take include referring a practitioner’s 

conduct to the Office of Enrollment and 

Discipline for appropriate action. 

These sanctions conform to those 

discussed in conjunction with the 1993 

Amendment to Rule 11 of the Federal 

Rules of Civil Procedure. The 

commentary to the 1993 Amendment 

indicated that a court ‘‘has available a 

variety of possible sanctions to impose 

for violations, such as striking the 

offending paper; * * * referring the 

matter to disciplinary authorities.’’ Like 

Rule 11 of the Fed. R. Civ. P., the 

provisions in § 11.18 do not attempt to 

enumerate the factors that should be 

considered or the appropriate sanctions. 

The Office anticipates that in taking 

action under § 11.18 in applying 

sanctions, it would use the proper 

considerations utilized in issuing 

sanctions or taking action under Rule 

11. Consideration may be given, for 

example, to whether the improper 

conduct was willful or negligent; 

whether it was part of a pattern of 

activity, or an isolated event; whether it 

infected an entire application, or only 

one particular paper; whether the 

person has engaged in similar conduct 

in other matters; whether the conduct 

was intended to injure; what effect the 

conduct had on the administrative 

process in time and expense; whether 

the responsible person is trained in law; 

what is needed to deter that person from 

repetition in the same case; and what is 

needed to deter similar conduct by 

others: all of these in a particular case 

may be proper considerations. See 28 

U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm. 

Notes, 1993 Amendments, Subdivisions 

(b) and (c). 

Section 11.19: Section 11.19 sets forth 

the disciplinary jurisdiction of the 

Office. This section, as well as all other 

sections, have been revised to eliminate 

disciplinary provisions directed to 

‘‘other individuals.’’ Accordingly, 

revised proposed § 11.19 no longer 

includes ‘‘other individuals’’ within the 

disciplinary jurisdiction of the Office. 

Proposed § 11.19(b), which addressed 

the jurisdiction of courts and voluntary 

bar associations to discipline 

practitioners for misconduct, has been 

withdrawn in favor of the first 

paragraph of § 11.1, which is in the final 

rules adopted on July 26, 2004. It is 

believed that the first paragraph of 

§ 11.1 sets forth in a manner superior to 

proposed rule § 11.19(b) that nothing in 

‘‘this Part * * * preempt[s] the 

authority of each State to regulate the 

practice of law, except to the extent 

necessary for the United States Patent 

and Trademark Office to accomplish its 

Federal objectives.’’

‘‘Misconduct’’ was defined differently 

in proposed rules 11.19(c) and 11.804 in 

the December 12, 2003 proposed rule 

making. Proposed rule 11.19(c) 

identified misconduct constituting 

grounds for discipline whereas 

proposed rule 11.804 identified 

professional ‘‘misconduct.’’ Reference to 

‘‘misconduct’’ has been removed from 

revised § 11.19. As revised, § 11.19(b) 

sets forth five grounds for discipline. 

Although § 11.804 is not included in 

this notice, it is anticipated that § 11.804 

will be the only rule that describes 

professional ‘‘misconduct.’’ The 

grounds for discipline are clarified to 

provide consistency among the revised 

disciplinary procedural rules. The 

grounds for discipline are identified as 

conviction of a serious crime; discipline 

on ethical grounds imposed in another 

jurisdiction or disciplinary 


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disqualification from participating in or 

appearing before any Federal program or 

agency; failure to comply with any order 

of a Court disciplining a practitioner, or 

any final decision of the USPTO 

Director in a disciplinary matter; 

violation of the imperative USPTO 

Rules of Professional Conduct; and 

violation of the oath or declaration 

taken by the practitioner. 

Section 11.20: Section 11.20 sets out 

the disciplinary sanctions the USPTO 

Director may impose on a practitioner 

after notice and opportunity for a 

hearing. Subsection 11.20(a)(2) has been 

revised to provide for suspension for an 

appropriate period of time. The revised 

proposed section removes provisions 

that comments suggested needed 

clarification, such as providing for 

suspension for an ‘‘indefinite period’’

and suspension for a period not in 

excess of five years. As revised, 

suspension may be imposed for a period 

that is appropriate under the facts and 

circumstances of the case. Subsection 

11.20(a)(3) provides for reprimand, 

including both public and private 

reprimand. Subsection 11.20(b) 

provides that the USPTO Director may 

require a practitioner to make restitution 

either to persons financially injured by 

the practitioner’s conduct or to an 

appropriate client’s security trust fund, 

or both, as a condition of probation or 

of reinstatement. The restitution would 

be limited to the return of unearned 

practitioner fees or misappropriated 

client funds. The rule does not 

contemplate restitution for the value of 

an invention or patent. 

Section 11.21: Section 11.21 provides 

that a warning is not a disciplinary 

sanction and that the OED Director may 

issue a warning at the conclusion of an 

investigation. 

Inasmuch as a warning is not a 

disciplinary sanction, a warning would 

not be made public. A provision in the 

proposed rule requiring the OED 

Director to consult with and obtain the 

consent of a Committee on Discipline 

panel before issuing a warning has been 

removed as procedurally unnecessary 

and unduly burdensome. Another 

provision in the proposed rule, that the 

warning be final and unreviewable, also 

has been removed. To afford an avenue 

for review in disciplinary matters, 

paragraph (e) has been added to the 

revised § 11.3 to enable a practitioner to 

invoke the USPTO Director’s 

supervisory authority. 

Section 11.22: Section 11.22 sets forth 

provisions regarding the conduct of 

investigations. Consistent with 

suggestions from commentators, the rule 

has been revised to distinguish between 

complaints that initiate investigations 

and complaints that initiate disciplinary 

proceedings. Section 11.22 has been 

revised to refer to communications that 

initiate an investigation as grievances. 

The revised proposed sections, such as 

§ 11.34, refer to communications 

initiating disciplinary proceedings as 

complaints. The revised proposed 

sections also omit as unnecessary 

provisions specifying procedures for 

screening and docketing matters. 

As revised, § 11.22 provides that a 

practitioner will be notified in writing 

of the initiation of an investigation into 

whether the practitioner has engaged in 

conduct constituting grounds for 

discipline. In conducting an 

investigation, the OED Director may 

request information or evidence from 

the grievant, the practitioner, or any 

person who may reasonably be expected 

to provide information and evidence 

needed in connection with the 

grievance or investigation. See revised 

proposed § 11.22(f). 

As discussed above, proposed § 11.16, 

regarding financial books and records, 

has been withdrawn. Nevertheless, the 

OED Director may still request such 

information pursuant to revised 

proposed § 11.22(f) in order to protect 

the public from practitioners who 

commingle client funds or improperly 

fail to refund unearned client funds. For 

example, evidence that one account of 

a practitioner has not been properly 

maintained or that funds of one client 

have not been properly handled should 

constitute cause for verifying the 

accuracy of the account that the 

practitioner maintains or should 

maintain containing the funds of the 

client for practice before the Office. 

Additionally, either a check drawn on a 

client trust account returned, for 

example, due to insufficient funds, or 

the failure to timely refund unearned 

funds to a client should similarly 

constitute cause to verify the contents of 

the same account. Where the OED 

Director receives information or 

evidence involving possible financial 

issues, the request to the practitioner 

would be limited to copies of books and 

records maintained by or for the 

practitioner for practice before the 

Office regarding the client. The 

foregoing examples are the same as 

those the American Bar Association 

recommends as grounds for inquiring 

into a lawyer’s accounts. See Rule 30, 

Verification Of Bank Accounts, of the 

American Bar Association’s Rules for 

Lawyer Disciplinary Enforcement. The 

books and records received by the OED 

Director from the practitioner would be 

treated as confidential and their use will 

be limited to the Office’s investigation 

and disciplinary proceeding. 

As noted above, the OED Director may 

request information or evidence. The 

OED Director’s letters to practitioners 

request information; the letters are no 

longer called requirements for 

information. The Office’s regulatory 

ability to require information is on 

appeal to the Federal Circuit. Among 

the ethics rules that remain under 

consideration are the provisions of ABA 

Model Rule 8.1. Model Rule 8.1 

provides that, but for client confidences 

protected by another rule, a practitioner 

is prohibited from knowingly failing to 

respond to a lawful demand for 

information from a disciplinary 

authority. A practitioner’s failure to 

comply with the OED Director’s request 

for information conforming to Model 

Rule 8.1 would risk violating the rule. 

The Office intends by the change in 

nomenclature of the OED Director’s 

letter not to change the sanctioning 

ability of the Office. However, the 

Office’s regulatory ability to take 

sanctions in view of failure to comply 

with a request will be addressed in 

ethics rules that will follow as the Office 

will be informed by any judicial 

decision on the question. Additionally, 

the OED Director, when recommending 

that the Committee on Discipline 

approve the institution of formal 

charges, may reference the practitioner’s 

refusal to provide information or 

records. The Committee may draw an 

adverse inference from the practitioner’s 

refusal to provide information or 

records in determining whether 

probable cause exists to believe a 

disciplinary rule has been violated. 

When the Committee on Discipline 

finds probable cause, a disciplinary 

proceeding can be initiated. After the 

practitioner files an answer, the OED 

Director may seek the hearing officer’s 

permission to obtain a subpoena for 

production of relevant information or 

records. Proposed § 11.52, pertaining to 

discovery, has been revised to address 

expressed concerns that the current rule 

inappropriately limits discovery. 

Revised proposed section 11.52(a) 

would permit discovery when a party 

establishes that discovery is reasonable 

and relevant. Information or records 

refused during an investigation may be 

reasonable and relevant in discovery. 

See Rules 11.38 and 11.58(a). 

Section 11.22(f)(2) provides for 

requesting information and evidence 

regarding possible grounds for 

discipline of a practitioner from a nongrieving client. The request cannot be 

made unless the OED Director has 

obtained either the consent of the 

practitioner or a finding by a Contact 

Member of the Committee on Discipline 


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that good cause exists to believe that the 

possible ground for discipline alleged 

has occurred with respect to nongrieving clients. The Office agrees with 

the many comments that contacts with 

non-grieving clients about a practitioner 

without contacting the practitioner first 

should be rare. While many 

jurisdictions can contact non-grieving 

clients without established procedures, 

the Office considers that adoption of 

procedures to govern the exercise of 

such authority will best assure that this 

extraordinary step will be taken only 

when warranted. The Office therefore 

proposes to adapt a procedure followed 

in California, namely Rule 2410b, for 

the protection of practitioners and their 

clients. Accordingly, if a practitioner 

declines to consent, communication 

with the non-grieving client can occur if 

a Contact Member finds good cause to 

believe that a possible ground for 

discipline has occurred with respect to 

the non-grieving client. The Contact 

Member will closely scrutinize a 

showing made by the OED Director in 

deciding whether to grant or deny 

authorization to request the information 

or evidence. 

Requesting information and 

documents from practitioners, as well as 

from non-grieving clients enables the 

OED Director, and ultimately the Office, 

to efficiently and effectively ascertain 

whether grounds for disciplining a 

practitioner exist. The clarification of 

§ 11.22 is intended to result in a fair and 

consistent application of the rules to 

practitioners and enable the USPTO 

Director to protect the public. 

Section 11.24: Section 11.24 provides 

a procedure for reciprocal discipline of 

a practitioner who has been disbarred or 

suspended by another jurisdiction 

(including any federal court and any 

state or federal administrative body or 

tribunal), or disciplinarily disqualified 

from participating in or appearing 

before any Federal program or agency. 

The Office would define the terms 

‘‘disqualified,’’ ‘‘Federal program,’’ and 

‘‘Federal agency’’ for the purposes of 

deciding whether a practitioner has 

been disqualified from participating in 

or appearing before any Federal program 

or agency. For that purpose, 

‘‘disqualified’’ would mean any action 

that prohibits a practitioner from 

participating in or appearing before the 

program or agency, regardless of how 

long the prohibition lasts or the specific 

terminology used. The program or 

agency need not use the term 

‘‘disqualified’’ to describe the action. 

For example, an agency may use 

analogous terms such as ‘‘suspend,’’

‘‘decertify,’’ ‘‘exclude,’’ ‘‘expel,’’ or 

‘‘debar’’ to describe the practitioner’s 

disqualification from participating in 

the program or the agency. For the 

purposes of deciding whether a 

practitioner has been disqualified from 

participating in or appearing before any 

Federal program or agency, ‘‘Federal 

program’’ would mean any program 

established by an Act of Congress or 

administered by a Federal agency and 

‘‘Federal agency’’ would mean any 

authority of the executive branch of the 

Government of the United States. 

If an attorney has been disbarred or 

suspended in another jurisdiction, 

reciprocal discipline before the Office 

applies regardless whether the 

practitioner remains registered as an 

attorney or agent. If an attorney or 

registered patent agent is disciplinarily 

disqualified from participating in or 

appearing before any Federal program or 

agency, the practitioner is subject to 

reciprocal discipline before the Office. 

The revised proposed section applies 

reciprocal discipline to both attorneys 

and registered patent agents. 

The reciprocal disciplinary 

proceeding would be initiated before the 

USPTO Director. The practitioner would 

be served with notice of the reciprocal 

proceeding, and provided an 

opportunity to reply. The practitioner 

would also be provided with a copy of 

the record or order of disbarment, 

suspension or disciplinary 

disqualification, and a complaint. 

The USPTO Director would hear the 

reciprocal discipline matter on the 

documentary record unless the USPTO 

Director determines that an oral hearing 

is necessary. After careful review of the 

statute and case law, it has been 

concluded that oral hearings are not 

required for all licensing proceedings. 5 

U.S.C. 558 does not itself require the 

application of 5 U.S.C. 556 to licensing 

proceedings, such as a disciplinary case. 

5 U.S.C. 554 requires the application of 

§ 556 ‘‘in every case of adjudication 

required by statute to be determined on 

the record after opportunity for agency 

hearing,’’ with exceptions not 

applicable here. See § 554(a). The 

provision of § 554 applies only where 

Congress has clearly indicated that a 

hearing required by statute must be a 

‘‘trial-type hearing on the record.’’ R.R. 

Comm’n of Texas v. United States, 665 

F. 2d 221, 227 (D.C. Cir. 1985), citing 

United States v. Florida E. Coast Ry., 

410 U.S. 224, 234 (1973). There are no 

decisions so interpreting 35 U.S.C. 32. 

That statute requires ‘‘notice and 

opportunity for a hearing,’’ and that 

‘‘the reasons for any [resulting] 

suspension or exclusion shall be duly 

recorded.’’ A requirement to record the 

reasons for the decision is not the same 

as requiring a trial-type hearing. 

Accordingly, it is not believed that § 32 

triggers §§ 554 and 556. Procedural due 

process is afforded by providing notice 

and opportunity to be heard on a 

documentary record, and recording the 

reasons for the decision. This is 

consistent with enrollment proceedings 

where these matters have long been 

conducted on the documentary record. 

Where the USPTO Director determines 

an oral hearing in a reciprocal 

disciplinary matter is necessary, the 

same would be provided. 

No change is contemplated to 

continuing to have oral hearings in 

disciplinary proceedings before hearing 

officers conducted under § 11.44. 

Current § 10.144 and revised proposed 

§ 11.44 provide for conducting 

disciplinary proceedings before the 

administrative law judge or hearing 

officer pursuant to § 556. They also 

provide for the hearings to be 

stenographically recorded and 

transcribed, and the testimony of 

witnesses to be received under oath or 

affirmation. 

Section 11.24(c) has been revised to 

address stayed discipline. If a 

disciplinary sanction imposed by 

another jurisdiction or disciplinary 

disqualification imposed in the Federal 

program or agency has been stayed, any 

reciprocal discipline imposed by the 

USPTO may be deferred until the stay 

expires. 

In reciprocal discipline proceedings, 

the practitioner would be provided with 

a forty-day period to inform the USPTO 

Director of: (1) Any argument that the 

practitioner was not disbarred, 

suspended or disciplinarily 

disqualified; and (2) any claim, 

predicated upon the grounds set forth in 

§§ 11.24(d)(1)(i) through (d)(1)(iii), that 

the imposition of the identical 

discipline would be unwarranted and 

the reasons for that claim. After 

expiration of the forty-day period, the 

USPTO Director would consider any 

timely filed response. 

Pursuant to §§ 11.24(d)(1)(i) through 

(d)(1)(iii), the practitioner or OED 

Director could present one or more of 

the only following three arguments: (1) 

That the procedure elsewhere was so 

lacking in notice or opportunity to be 

heard as to constitute a deprivation of 

due process; (2) that there was such 

infirmity of proof establishing the 

conduct 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 

(3) that the imposition of the same 

discipline by the Office would result in 

grave injustice. Under § 11.24(d)(2), if 

the USPTO Director determines that any 

of the elements of §§ 11.24(d)(1)(i) 


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through (d)(1)(iii) exist, the USPTO 

Director would enter an appropriate 

order. For example, the USPTO Director 

might order a hearing before a hearing 

officer limited to the particular element. 

Revised proposed § 11.24(f) provides 

for conditions when it would be 

permissible to impose reciprocal 

discipline nunc pro tunc. The 

practitioner must have promptly 

notified the OED Director of his or her 

discipline or disciplinary 

disqualification and must clearly and 

convincingly establish that the 

practitioner voluntarily ceased all 

activities related to practice before the 

Office and complied with all provisions 

of § 11.58. In such circumstances, the 

effective nunc pro tunc date would be 

the date the practitioner voluntarily 

ceased all activities related to practice 

before the Office and complied with all 

provisions of § 11.58. 

Reinstatement following reciprocal 

discipline is addressed in § 11.24(g). A 

practitioner could petition for 

reinstatement under conditions set forth 

in § 11.60 no sooner than completion of 

the period of reciprocal discipline 

imposed, and compliance with all 

provisions of § 11.58. 

Section 11.25: Section 11.25 would 

provide a revised procedure for interim 

suspension and discipline based upon 

conviction of committing a serious 

crime. Revised proposed § 11.25 

parallels the procedure in Rule 19, 

Lawyers Found Guilty Of A Crime, of 

the Model Rules for Lawyer Disciplinary 

Enforcement of the American Bar 

Association. If a practitioner is 

convicted of a serious crime, the OED 

Director would initiate disciplinary 

action under this section without 

authorization of the Committee on 

Discipline. Serious crime was defined in 

proposed § 11.1 as meaning (1) any 

criminal offense classified as a felony 

under the laws of the United States, any 

state or any foreign country where the 

crime occurred, or (2) any crime a 

necessary element of which, as 

determined by the statutory or common 

law definition of such crime in the 

jurisdiction where the crime occurred, 

includes interference with the 

administration of justice, false swearing, 

misrepresentation, fraud, willful failure 

to file income tax returns, deceit, 

bribery, extortion, misappropriation, 

theft, or an attempt or a conspiracy or 

solicitation of another to commit a 

‘‘serious crime.’’ That definition, which 

is derived from the definitions of 

‘‘serious crime’’ included in Rule 19(C) 

of the American Bar Association Model 

Rules for Lawyer Disciplinary 

Enforcement and Rule I(B) of the 

American Bar Association Model 

Federal Rules of Disciplinary 

Enforcement, would apply in § 11.25. 

Before initiating action, the OED 

Director would exercise reasonable care 

to confirm that the crime is a ‘‘serious 

crime’’ and that the convicted 

individual is a practitioner before the 

Office. For example, OED would consult 

with either or both prosecutor or state 

disciplinary counsel to confirm the 

classification of the crime, as well as 

obtain information confirming the 

identity of the convicted individual. 

OED could also compare information it 

receives regarding convicted individuals 

with its records and other records in the 

Office, in addition to asking the 

practitioner whether he or she is the 

person who was convicted. The OED 

Director would file with the USPTO 

Director proof of the finding of guilt, 

and a complaint against the practitioner 

complying with § 11.34 predicated upon 

the conviction. The OED Director would 

request issuance of a notice and order 

set forth in § 11.25(b)(1). If the crime is 

not a serious crime, the matter would be 

processed in the same manner as any 

other information or evidence of a 

possible violation of an imperative Rule 

of Professional Conduct coming to the 

attention of the OED Director. 

Under revised proposed § 11.25(b), 

interim suspension could not be 

imposed until the practitioner has been 

afforded notice and opportunity to be 

heard. The USPTO Director would serve 

the practitioner with notice complying 

with § 11.35(a), (b) or (c) containing a 

copy of the court record; docket entry or 

judgment of conviction; a copy of the 

complaint; and an order directing the 

practitioner to inform the USPTO 

Director, within forty days of the date of 

the notice, of any predicate challenge 

establishing that interim suspension 

may not properly be ordered, such as 

that the crime did not constitute a 

‘‘serious crime’’ or that the practitioner 

is not the individual who was 

convicted. See § 11.25(b)(2). The hearing 

for interim suspension would be heard 

on the documentary record and the 

practitioner’s assertion of any predicate 

challenge. See § 11.25(b)(3). The 

practitioner would be placed on interim 

suspension immediately upon proof that 

the practitioner has been convicted of a 

serious crime regardless of the 

pendency of any appeal. See 

§ 11.25(b)(3)(i). Interim suspension may 

be terminated in the interest of justice 

upon a showing of extraordinary 

circumstances. See § 11.25(b)(3)(ii). 

Upon entering an order of interim 

suspension, the matter would be 

referred to the OED Director for 

institution of a formal disciplinary 

proceeding before a hearing officer. A 

disciplinary proceeding so instituted 

would not be brought to final hearing 

until all direct appeals from the 

conviction are concluded. Review of the 

initial decision of the hearing officer 

would be pursuant to § 11.55. See 

§ 11.25(b)(4). 

With respect to convictions in the 

United States, a certified copy of the 

court record, docket entry, or judgment 

of conviction in a court of the United 

States would be conclusive evidence 

that the practitioner committed the 

crime and was convicted. The sole issue 

in a formal disciplinary proceeding 

would be the nature and extent of the 

discipline to be imposed as a 

consequence of the conviction. See 

§ 11.25(c)(1). 

Inasmuch as not all other countries 

always meet minimum due process 

standards, a conviction in a foreign 

court even of a ‘‘serious crime’’ may not 

result in automatic disqualification. 

Therefore, a practitioner convicted in a 

foreign court of a serious crime may 

demonstrate in any hearing by clear and 

convincing evidence: that (1) the 

procedure in the foreign country was so 

lacking in notice or opportunity to be 

heard as to constitute a deprivation of 

due process and rebut the prima facie 

evidence of guilt, or (2) there are 

material facts to be considered when 

determining if a serious crime was 

committed and whether a disciplinary 

sanction should be entered. See 

§ 11.25(c)(ii). 

Section 11.26: Section 11.26 has been 

revised to introduce provisions for 

settlement in disciplinary matters. The 

proposed rules did not provide for 

settlement. The revised proposed 

section codifies current practices. 

Section 11.27: The provisions in 

§ 11.27 set forth the procedure for 

excluding a practitioner on consent. 

Subsection 11.27(b) has been revised to 

provide that upon entering an order 

excluding a practitioner, the USPTO 

Director may include in the order 

provisions for other appropriate actions, 

such as restitution of unearned fees or 

misappropriated funds. See § 11.22(b). 

Section 11.28: The provisions in 

§ 11.28 regarding incapacitated 

practitioners have been revised to be 

limited to apply to disciplinary 

proceedings. As revised, the OED 

Director would not initiate efforts to 

have a practitioner declared 

incapacitated in disciplinary or nondisciplinary instances. Instead, a 

practitioner may move to have the 

proceeding held in abeyance because of 

a current disability or addiction. See 

§ 11.28(a). If the practitioner’s motion is 

granted, the practitioner will be 

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and precluded from practicing before 

the Office. See § 11.28(a)(2). Upon 

motion of the practitioner or the OED 

Director, the practitioner may be 

restored to active status, which will 

cause the disciplinary proceeding to 

resume. See §§ 11.28(b), (d) and (e). A 

practitioner engaging in practice before 

the Office or representing a party in 

litigation while on disability inactive 

status would be good cause for the OED 

Director to file a motion to resume a 

disciplinary proceeding that has been 

held in abeyance. 

Section 11.36: Section 11.36, which 

provides for the practitioner’s answer to 

a complaint, has been revised to provide 

that a practitioner must affirmatively 

state any intent to raise disability as a 

mitigating factor. We agree with 

comments that disability itself should 

not be a mitigating factor. Accordingly, 

the revised proposed section requires 

the respondent practitioner to specify 

the disability, its nexus to the 

misconduct, and the reason it provides 

mitigation. Disability, such as mental 

disability or chemical dependency, 

including alcoholism or drug abuse, 

would be a mitigating factor only if the 

respondent practitioner makes an 

adequate showing of nexus and 

mitigation. Such a showing would be 

expected to include (1) medical 

evidence that the practitioner is affected 

by a chemical dependency or mental 

disability; (2) evidence that the 

chemical dependency or mental 

disability caused the misconduct; (3) the 

practitioner’s recovery from the 

chemical dependency or mental 

disability is demonstrated by a 

meaningful and sustained period of 

successful rehabilitation; (4) the 

recovery arrested the misconduct; and 

(5) recurrence of the misconduct is 

unlikely. These are the same standards 

set forth Section 9.32(i) of the American 

Bar Association Standards for Imposing 

Lawyer Sanctions (1992). 

Section 11.36(c) has been revised to 

require a disability defense to be raised 

at the answer stage. A practitioner who 

fails to raise the defense at the answer 

stage cannot rely on the disability 

absent a showing of good cause to the 

hearing officer for leave to amend the 

answer. Revised § 11.36(c) employs 

language similar to the requirement in 

the Federal Rules of Criminal Procedure 

for fixing a deadline for raising an 

insanity defense. Rule 12.2 of the Fed. 

R. Crim. P. states ‘‘A defendant who 

intends to assert a defense of insanity at 

the time of the alleged offense must so 

notify an attorney for the government in 

writing within the time provided for 

filing a pretrial motion, or at any later 

time the court sets, and file a copy of the 

notice with the clerk. A defendant who 

fails to do so cannot rely on an insanity 

defense. The court may, for good cause, 

allow the defendant to file the notice 

late, grant additional trial-preparation 

time, or make other appropriate orders.’’

Section 11.39: Section 11.39(g) has 

been added to provide that the hearing 

officer not engage in ex parte 

discussions with any party regarding the 

merits of the complaint, beginning with 

appointment and concluding with the 

final agency decision. The addition 

clarifies the period during which the 

hearing officer is not permitted to 

discuss the merits of a complaint. The 

period is of limited duration to enable 

counsel representing the agency to 

consult, if necessary, with the hearing 

officer if court review is sought of the 

final agency decision. 

Section 11.40: In view of changes in 

the Office’s organization and the 

authorities of the Deputy General 

Counsel for Intellectual Property and 

Solicitor, proposed § 11.40(b) has been 

revised to provide that the Solicitor and 

attorneys in the Office of the Solicitor 

shall represent the OED Director in 

disciplinary proceedings. 

Section 11.40(b) also has been revised 

to provide that the USPTO Director may 

consult with the OED Director and 

attorneys representing the OED Director 

after a final agency decision has been 

entered concerning any further 

proceedings. The need for consultation 

arises in the event that the practitioner 

seeks review of the decision in the 

United States District Court for the 

District of Columbia pursuant to 35 

U.S.C. 32. There is no necessity after a 

final agency decision issues to continue 

to maintain a wall between the USPTO 

Director or officials representing the 

USPTO Director, the OED Director, or 

those representing the OED Director. 

The revision codifies current practice 

and provides that after a final decision 

is entered in a disciplinary proceeding, 

the OED Director and attorneys 

representing the OED Director shall be 

available to counsel the USPTO 

Director, the General Counsel, and the 

Deputy General Counsel for General 

Law in any further proceedings. 

Section 11.44: Oral hearings before a 

hearing officer would be conducted as if 

the proceeding were subject to 5 U.S.C. 

556. A hearing officer would thus 

continue to preside over the 

disciplinary proceeding. An oral hearing 

would be unnecessary where, for 

example, there is a settlement, or the 

hearing officer entered an order default 

judgment or summary judgment. If there 

is an oral hearing, it would also 

continue to be stenographically 

recorded and transcribed, and the 

testimony of witnesses would continue 

to be received under oath or affirmation. 

A copy of the transcript of the hearing 

would continue to become part of the 

record. The OED Director and 

respondent would make their own 

arrangements with the stenographer to 

obtain a copy of the hearing transcript. 

An excluded or suspended practitioner 

would reimburse the Office for OED’s 

expense of the hearing transcript cost, 

and any fee paid for the services of the 

reporter. See proposed § 11.60(d)(2)(i). 

The expense of deposition transcripts 

would be borne by the party requesting 

depositions inasmuch as the rules are 

silent regarding such costs. 

Section 11.45: This section has been 

revised to provide for amending the 

complaint without authorization from 

the Committee on Discipline. The 

purpose of the amendments would be to 

include additional charges based upon 

conduct committed before or after the 

complaint was filed. The hearing officer 

would have to approve amendment of 

the complaint and authorize 

amendment of the answer. The revised 

practice conforms to disciplinary 

procedural rules adopted in several 

states. For example, Missouri 

Disciplinary Rule 5.15(b) provides that 

‘‘[i]f any amendment substantially 

changes the charges, the respondent 

shall be given a reasonable time to 

respond.’’ Florida’s Rule 3–7.6(h) is a 

disciplinary rule governing pleadings, 

including complaints, in Procedures 

Before a Referee. Rule 3–7.6(h)(6) 

provides ‘‘[p]leadings may be amended 

by order of the referee, and a reasonable 

time shall be given within which to 

respond thereto.’’ In the First 

Department of New York, disciplinary 

procedure § 605.11 provides 

‘‘[w]henever, in the course of any 

hearing under these Rules, evidence 

shall be presented upon which another 

charge or charges against the 

Respondent might be made, it shall not 

be necessary to prepare or serve an 

additional Notice of Charges with 

respect thereto, but the Referee may, 

after reasonable notice to the 

Respondent and an opportunity to 

answer and be heard, proceed to the 

consideration of such additional charge 

or charges as if they had been made and 

served at the time of service of the 

Notice of Charges, and may render its 

decision upon all such charges as may 

be justified by the evidence in the case.’’

As revised, procedural efficiencies are 

realized by reducing the time and 

resources needed to amend the 

complaint, while expediting resolution 

of all disciplinary issues that the OED 


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Director becomes aware of during the 

proceeding. 

Section 11.49: This section would 

maintain the ‘‘clear and convincing’’

burden of proof. Comments 

overwhelmingly expressed a preference 

for maintaining the current burden of 

proof, as opposed to reducing the 

burden to a preponderance of evidence. 

Section 11.52: Section 11.52(b)(1) has 

been revised pursuant to several 

suggestions to permit reasonable and 

relevant discovery. It also permits 

reasonable and relevant discovery of 

records and information a practitioner 

did not disclose or release during an 

investigation. The provision in the 

proposed rules for discovery of the 

identity of Government employees who 

have investigated the case has been 

eliminated as unnecessary inasmuch as 

the investigator(s) is or are named in 

and sign the inquiry letters mailed to 

the practitioner. 

Section 11.55: Section 11.55 has been 

reorganized and revised to clarify the 

process of appealing a decision to the 

USPTO Director. As revised, the rule 

would clarify who is the appellant and 

require all briefs, including reply briefs, 

to comply with specified standards. 

Section 11.56: Section 11.56(b) has 

been revised to provide that the final 

decision of the USPTO Director, in 

addition to disciplining a practitioner or 

dismissing a disciplinary proceeding, 

may also reverse or modify the initial 

decision. The revision conforms to 

current practice and inherent authority. 

Section 11.56(b) is further revised to 

provide that a final decision suspending 

or excluding a practitioner will require 

compliance with § 11.58. The final order 

also may condition reinstatement upon 

a showing that the practitioner has 

taken steps to correct or mitigate the 

matter forming the basis of the action or 

to prevent a recurrence of the same or 

similar conduct. Section 11.56(c) has 

been revised to add a ground on which 

a request for reconsideration or 

modification could be granted. 

Specifically, the request could be 

granted based on an error of law, a basis 

that is not provided for by the current 

rule. 

Section 11.57: Section 11.57(a), which 

pertains to review of final decisions of 

the USPTO Director at the United States 

District Court for the District of 

Columbia, has been revised to draw the 

practitioner’s attention to the necessity 

for complying with service requirements 

of Rule 4 of the Federal Rules of Civil 

Procedure and 37 CFR 104.2. Section 

11.57(b), as revised, provides that 

except as provided for in § 11.56(c), an 

order for discipline in a final decision 

will not be stayed except on proof of 

exceptional circumstances. Excluded or 

suspended practitioners would be 

unable to represent clients before the 

Office or earn income from representing 

clients before the Office. Accordingly, 

such circumstances are considered to be 

the normal result of exclusion or 

suspension, and would not render a 

case exceptional to merit a stay of 

discipline pending appeal. Proof of an 

exceptional circumstance necessarily 

requires a showing that there is reason 

to believe the practitioner would likely 

succeed on appeal. 

Section 11.58: Section 11.58(e) will 

continue to permit suspended, 

excluded, or resigned practitioners to 

act as paralegals for other registered 

practitioners. The public is adequately 

protected by requiring the practitioner 

to notify all clients he or she represents 

with immediate or prospective business 

before the Office of the disciplinary 

action and resulting suspension, 

exclusion, or resignation. See 

§ 11.58(b)(1)(iii). The clients include, for 

example, clients for whom the 

practitioner has prepared and filed 

papers at the Office, clients for whom 

the practitioner has been engaged to 

prepare documents to be filed in the 

Office but has yet to file any documents, 

and clients whom the practitioner has 

billed for work performed or to be 

performed. The public and other 

affected persons are adequately 

protected by precluding the suspended, 

excluded, or resigned practitioner from 

communicating directly with the 

employing practitioner’s clients, 

meeting with those clients, or rendering 

any legal advice or services to them. 

Proposed § 11.58(b)(1)(v) has been 

revised to provide that the disciplined 

or resigned practitioner must relinquish 

to the client or other practitioner 

designated by the client, all funds for 

practice before the Office, including any 

legal fees paid in advance that have not 

been earned and any advanced costs not 

expended. The revision provides 

operational efficiencies that enable the 

client, or the client’s new counsel in 

consultation with the client, to 

determine to whom funds should be 

transferred to enable the client to pursue 

his or her legal rights. 

Proposed rule 11.58(b), regarding 

reactivation of practitioners on 

disability inactive status, has been 

eliminated as unnecessary. The revised 

proposed sections have limited 

disability inactive status to practitioners 

who are in a disciplinary proceeding 

and provide procedures for their 

reactivation in revised proposed 

§ 11.28(b). Disability inactive status 

would be unavailable to practitioners 

who are not in a disciplinary 

proceeding. Accordingly, it is 

unnecessary to address reactivation of 

practitioners in disability inactive status 

in § 11.58. 

Section 11.59: Section 11.59 has been 

revised to improve information 

dissemination to protect the public from 

disciplined practitioners. Section 

11.59(a) provides for informing the 

public of the disposition of each matter 

in which public discipline has been 

imposed and of any other changes in a 

practitioner’s registration status. Public 

discipline is identified as exclusion, 

including exclusion on consent, 

suspension, and public reprimand. In 

the usual circumstances, the OED 

Director would give notice of public 

discipline and the reasons for the 

discipline to disciplinary enforcement 

agencies in the state where the 

practitioner is admitted practice, to 

courts where the practitioner is known 

to be admitted, and the public. The final 

decision of the USPTO Director would 

be published if public discipline is 

imposed. A redacted version of the final 

decision would be published if a private 

reprimand is imposed. Changes in 

status, such as suspended, excluded, or 

disability inactive status, would also be 

published. 

Section 11.59(b) has been revised to 

provide that, but for records that the 

USPTO Director orders to be kept 

confidential, records of every 

disciplinary proceeding where a 

practitioner is reprimanded, suspended, 

or excluded will be available to the 

public upon written request. An 

exception is provided to enable the 

Office to withhold information as 

necessary to protect the privacy and 

commercial interests of third parties. 

The record of a proceeding that results 

in a practitioner’s transfer to disability 

inactive status would not be available to 

the public. 

Section 11.60: Section 11.60 has been 

revised to refer to practitioners who 

have been excluded on consent as 

resigned practitioners and to provide for 

their reinstatement. 

Section 11.61: Sections 11.61(c) and 

(d) have been added to the savings 

clause to clarify when the specific rule 

changes would be effective. The 

provisions of §§ 11.24, 11.25, 11.28 and 

11.34 through 11.57 would apply to all 

proceedings in which the complaint is 

filed on or after the effective date of 

these regulations. Sections 11.26 and 

11.27 would apply to matters pending 

on or after the effective date of these 

regulations. Sections 11.58 through 

11.60 would apply to all cases in which 

an order of suspension or exclusion is 

entered or resignation is accepted on or 


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after the effective date of these 

regulations. 

Classification 

Regulatory Flexibility Act: The Deputy 

General Counsel for General Law, 

United States Patent and Trademark 

Office, certified to the Chief Counsel for 

Advocacy, Small Business 

Administration, that the changes in this 

notice of proposed rule making will not 

have a significant economic impact on 

a substantial number of small entities 

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

605(b)). The provisions of the 

Regulatory Flexibility Act relating to the 

preparation of an initial flexibility 

analysis are not applicable to this rule 

making because the rules will not have 

a significant economic impact on a 

substantial number of small entities. 

The primary purpose of the rule changes 

is to bring the USPTO’s disciplinary 

procedural rules for practitioners in line 

with the American Bar Association 

Model Rules, American Bar Association 

Model Rules for Lawyer Disciplinary 

Enforcement, American Bar Association 

Model Federal Rules of Disciplinary 

Enforcement and rules adopted by other 

federal agencies. This will ease the 

practitioners’ burden in learning and 

complying with USPTO regulations. 

The rule eliminates a fee of $130 for 

petitions in disciplinary cases to enable 

petitioners to invoke the supervisory 

authority of the USPTO Director. The 

rule does not affect the fee of $130 

previously adopted for petition to the 

Director of Enrollment and Discipline in 

enrollment and registration matters. 

The rule imposes a $1600 fee for a 

petition for reinstatement for a 

suspended or excluded practitioner and 

removes the $1500 cap on disciplinary 

proceeding costs that can be assessed 

against such a practitioner as a 

condition of reinstatement. 

Approximately five of the 30,000 

practitioners petition for reinstatement 

each year, and approximately two of 

these petitions occur under 

circumstances where disciplinary 

proceeding costs may be assessed. These 

changes, therefore, will not affect a 

substantial number of practitioners. 

Executive Order 13132: This notice of 

proposed rule making does not contain 

policies with federalism implications 

sufficient to warrant preparation of a 

Federalism Assessment under Executive 

Order 13132 (August 4, 1999). 

Executive Order 12866: This notice of 

proposed rule making has been 

determined to be not significant for 

purposes of Executive Order 12866 

(September 30, 1993). 

Paperwork Reduction Act: This 

supplemental notice of proposed rule 

making involves information collection 

requirements which are subject to 

review by the Office of Management and 

Budget (OMB) under the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.). This supplemental notice of 

proposed rule making contains revisions 

that the United States Patent and 

Trademark Office (USPTO) is proposing 

to the rules governing the conduct of 

professional responsibility 

investigations and disciplinary 

proceedings. The principal impact of 

the changes in this supplemental notice 

of proposed rule making is on registered 

practitioners. The information 

collections involved in this proposed 

rule have been previously reviewed and 

approved by OMB under OMB control 

numbers 0651–0012 and 0651–0017. 

The proposed revisions do not affect the 

information collection requirements for 

0651–0012 and 0651–0017, so the 

USPTO is not resubmitting these 

collections to OMB for review and 

approval. 

The title, description, and respondent 

description of the currently approved 

information collections for 0651–0012 

and 0651–0017 are shown below with 

estimates of the annual reporting 

burdens. Included in the estimates is the 

time for reviewing instructions, 

gathering and maintaining the data 

needed, and completing and reviewing 

the collection of information. 

OMB Number: 0651–0012 

Title: Admittance to Practice and 

Roster of Registered Patent Attorneys 

and Agents Admitted to Practice Before 

the Patent and Trademark Office 

(USPTO). 

Form Numbers: PTO–158, PTO–158A, 

PTO/275, PTO–107A, and PTO–1209. 

Type of Review: Approved through 

March of 2007. 

Affected Public: Individuals or 

households, businesses or other forprofit, Federal Government, and state, 

local, or tribal governments. 

Estimated Number of Respondents: 

20,231. 

Estimated Time per Response: 10 

minutes to 40 hours. 

Estimated Total Annual Burden 

Hours: 46,567 hours. 

Needs and Uses: The public uses the 

forms in this collection to ensure that all 

of the necessary information is provided 

to the USPTO and to request inclusion 

on the Register of Patent Attorneys and 

Agents. 

OMB Number: 0651–0017 

Title: Practitioner Records 

Maintenance, Disclosure, and Discipline 

Before the United States Patent and 

Trademark Office (USPTO). 

Form Numbers: None. 

Type of Review: Approved through 

July of 2007. 

Affected Public: Individuals or 

households, businesses or other forprofit, Federal Government, and state, 

local, or tribal governments. 

Estimated Number of Respondents: 

582. 

Estimated Time per Response: 5 

minutes to 60 hours. 

Estimated Total Annual Burden 

Hours: 8,334 hours. 

Needs and Uses: The information in 

this collection is necessary for the 

United States Patent and Trademark 

Office to comply with Federal 

regulations, 35 U.S.C. 6(a) and 35 U.S.C. 

31. The Office of Enrollment and 

Discipline collects this information to 

ensure compliance with the USPTO 

Code of Professional Responsibility, 37 

CFR 10.20–10.112. This Code requires 

that registered practitioners maintain 

complete records of clients, including 

all funds, securities, and other 

properties of clients coming into his/her 

possession, and render appropriate 

accounts to the client regarding such 

records, as well as report violations of 

the Code to the USPTO. The registered 

practitioners are mandated by the Code 

to maintain proper documentation so 

that they can fully cooperate with an 

investigation in the event of a report of 

an alleged violation and so that 

violations are prosecuted as appropriate. 

Comments are invited on: (1) Whether 

the collection of information is 

necessary for proper performance of the 

functions of the agency; (2) the accuracy 

of the agency’s estimate of the burden; 

(3) ways to enhance the quality, utility, 

and clarity of the information to be 

collected; and (4) ways to minimize the 

burden of the collection of information 

to respondents. 

Interested persons are requested to 

send comments regarding these 

information collections, including 

suggestions for reducing this burden, to 

Harry I. Moatz, Director of Enrollment 

and Discipline, Mail Stop OED-Ethics 

Rules, U.S. Patent and Trademark 

Office, P.O. Box 1450, Alexandria, 

Virginia 22313–1450, or to the Office of 

Information and Regulatory Affairs, 

Office of Management and Budget, New 

Executive Office Building, Room 10202, 

725 17th Street, NW., Washington, DC 

20503, Attention: Desk Officer for the 

United States Patent and Trademark 

Office. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 


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Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects 

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 would continue to read as 

follows: 

Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 

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

2. Section 11.1 is amended to add the 

definition of State as follows: 

§ 11.1 Definitions 

* * * * * 

State means any of the 50 states of the 

United States of America, the District of 

Columbia, and any Commonwealth or 

territory of the United States of 

America. 

* * * * * 

3. Section 11.2 is amended to revise 

paragraphs (a), (b)(4), (c) and (d) and 

add paragraphs (b)(5), (b)(6) and (e) to 

read as follows: 

§ 11.2 Director of the Office of Enrollment 

and Discipline. 

(a) Appointment. The USPTO Director 

shall appoint a Director of the Office of 

Enrollment and Discipline (OED 

Director). In the event of a vacancy in 

the office of the OED Director, the 

USPTO Director may designate an 

employee of the Office to serve as acting 

OED Director. The OED Director shall be 

an active member in good standing of 

the bar of a State. 

(b) * * * 

(4) Conduct investigations of matters 

involving possible grounds for 

discipline of practitioners coming to the 

attention of the OED Director. Except in 

matters meriting summary dismissal, no 

disposition shall be recommended or 

undertaken by the OED Director until 

the accused practitioner shall have been 

afforded an opportunity to respond to a 

reasonable inquiry by the OED Director. 

(5) With the consent of a panel of 

three members of the Committee on 

Discipline, initiate disciplinary 

proceedings under § 11.32 and perform 

such other duties in connection with 

investigations and disciplinary 

proceedings as may be necessary. 

(6) Oversee the preliminary screening 

of information and close investigations 

as provided for in § 11.22. 

(c) Petition to OED Director regarding 

enrollment or recognition. Any petition 

from any action or requirement of the 

staff of OED reporting to the OED 

Director shall be taken to the OED 

Director accompanied by payment of the 

fee set forth in § 1.21(a)(5)(i). Any such 

petition not filed within sixty days from 

the mailing date of the action or notice 

from which relief is requested will be 

dismissed as untimely. The filing of a 

petition will neither stay the period for 

taking other action which may be 

running, nor stay other proceedings. A 

final decision by the OED Director may 

be reviewed in accordance with the 

provisions of paragraph (d) of this 

section. 

(d) Review of OED Director’s decision 

regarding enrollment or recognition. A 

party dissatisfied with a final decision 

of the OED Director regarding 

enrollment or recognition may seek 

review of the decision upon petition to 

the USPTO Director accompanied by 

payment of the fee set forth in 

§ 1.21(a)(5)(ii). Any such petition to the 

USPTO Director waives a right to seek 

reconsideration from the OED Director. 

Any petition not filed within thirty days 

after the final decision of the OED 

Director may be dismissed as untimely. 

Briefs or memoranda, if any, in support 

of the petition shall accompany the 

petition. The petition will be decided on 

the basis of the record made before the 

OED Director. The USPTO Director in 

deciding the petition will consider no 

new evidence. Copies of documents 

already of record before the OED 

Director shall not be submitted with the 

petition. An oral hearing will not be 

granted except when considered 

necessary by the USPTO Director. Any 

request for reconsideration of the 

decision of the USPTO Director may be 

dismissed as untimely if not filed 

within thirty days after the date of said 

decision. 

(e) Petition to USPTO Director in 

disciplinary matters. Petition may be 

taken to the USPTO Director to invoke 

the supervisory authority of the USPTO 

Director in appropriate circumstances in 

disciplinary matters. Any such petition 

must contain a statement of the facts 

involved and the point or points to be 

reviewed and the action requested. 

Briefs or memoranda, if any, in support 

of the petition must accompany the 

petition. Where facts are to be proven, 

the proof in the form of affidavits or 

declarations (and exhibits, if any) must 

accompany the petition. The OED 

Director may be directed by the USPTO 

Director to file a reply to the petition, 

supplying a copy to the petitioner. An 

oral hearing will not be granted except 

when considered necessary by the 

USPTO Director. The mere filing of a 

petition will not stay an investigation, 

disciplinary proceeding or other 

proceedings. Any petition under this 

part not filed within thirty days of the 

mailing date of the action or notice from 

which relief is requested may be 

dismissed as untimely. Any request for 

reconsideration of the decision of the 

USPTO Director may be dismissed as 

untimely if not filed within thirty days 

after the date of said decision. 

4. Section 11.3 is revised to read as 

follows: 

§ 11.3 Suspension of rules. 

(a) Except as provided in paragraph 

(b) of this section, in an extraordinary 

situation, when justice requires, any 

requirement of the regulations of this 

Part which is not a requirement of 

statute may be suspended or waived by 

the USPTO Director or the designee of 

the USPTO Director, sua sponte, or on 

petition by any party, including the 

OED Director or the OED Director’s 

representative, subject to such other 

requirements as may be imposed. 

(b) No petition under this section 

shall stay a disciplinary proceeding 

unless ordered by the USPTO Director 

or a hearing officer. 

Subpart B—Recognition to Practice 

Before the USPTO 

5. Section 11.5 is revised to read as 

follows: 

§ 11.5 Register of attorneys and agents in 

patent matters; practice before the Office. 

(a) A register of attorneys and agents 

is kept in the Office on which are 

entered the names of all individuals 

recognized as entitled to represent 

applicants having prospective or 

immediate business before the Office in 

the preparation and prosecution of 

patent applications. Registration in the 

Office under the provisions of this part 

shall entitle the individuals so 

registered to practice before the Office 

only in patent matters. 

(b) Practice before the Office. Practice 

before the Office includes, but is not 

limited to, law-related service that 

comprehends any matter connected 

with the presentation to the Office or 

any of its officers or employees relating 

to a client’s rights, privileges, duties, or 

responsibilities under the laws or 

regulations administered by the Office 

for the grant of a patent or registration 

of a trademark, or for enrollment or 

disciplinary matters. Such presentations 


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include preparing necessary documents 

in contemplation of filing the 

documents with the Office, 

corresponding and communicating with 

the Office, and representing a client 

through documents or at interviews, 

hearings, and meetings, as well as 

communicating with and advising a 

client concerning matters pending or 

contemplated to be presented before the 

Office. Nothing in this section 

proscribes a practitioner from 

employing non-practitioner assistants 

under the supervision of the practitioner 

to assist the practitioner in preparation 

of said presentations. 

(1) Practice before the Office in patent 

matters. Practice before the Office in 

patent matters includes, but is not 

limited to, preparing and 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, considering the advisability of 

relying upon alternative forms of 

protection that may be available under 

State law, 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 a public 

use, interference, reexamination 

proceeding, petition, appeal to the 

Board of Patent Appeals and 

Interferences, or other proceeding. 

(2) Practice before the Office in 

trademark matters. Practice before the 

Office in trademark matters includes, 

but is not limited to, consulting with or 

giving advice to a client in 

contemplation of filing a trademark 

registration application or other 

document with the Office; preparing 

and prosecuting an application for 

trademark registration; preparing an 

amendment which may require written 

argument to establish the registrability 

of the mark; and conducting an 

opposition, cancellation, or concurrent 

use proceeding; or conducting an appeal 

to the Trademark Trial and Appeal 

Board. 

6. Sections 11.14 through 11.18 are 

added to read as follows: 

§ 11.14 Individuals who may practice 

before the Office in trademark and other 

non-patent matters. 

(a) Attorneys. Any individual who is 

an attorney may represent others before 

the Office in trademark and other nonpatent matters. An attorney is not 

required to apply for registration or 

recognition to practice before the Office 

in trademark and other non-patent 

matters. Registration as a patent attorney 

does not itself entitle an individual to 

practice before the Office in trademark 

matters. 

(b) Non-lawyers. Individuals who are 

not attorneys are not recognized to 

practice before the Office in trademark 

and other non-patent matters, except 

that individuals not attorneys who were 

recognized to practice before the Office 

in trademark matters under this chapter 

prior to January 1, 1957, will be 

recognized as agents to continue 

practice before the Office in trademark 

matters. Except as provided in the 

preceding sentence, registration as a 

patent agent does not itself entitle an 

individual to practice before the Office 

in trademark matters. 

(c) Foreigners. Any foreign attorney or 

agent not a resident of the United States 

who shall file a written application for 

reciprocal recognition under paragraph 

(f) of this section and prove to the 

satisfaction of the OED Director that he 

or she is registered or in good standing 

before the patent or trademark office of 

the country in which he or she resides 

and practices and is possessed of good 

moral character and reputation, may be 

recognized for the limited purpose of 

representing parties located in such 

country before the Office in the 

presentation and prosecution of 

trademark matters, provided: the patent 

or trademark office of such country 

allows substantially reciprocal 

privileges to those permitted to practice 

in trademark matters before the Office. 

Recognition under this paragraph shall 

continue only during the period that the 

conditions specified in this paragraph 

obtain. 

(d) Recognition of any individual 

under this section shall not be 

construed as sanctioning or authorizing 

the performance of any act regarded in 

the jurisdiction where performed as the 

unauthorized practice of law. 

(e) No individual other than those 

specified in paragraphs (a), (b), and (c) 

of this section will be permitted to 

practice before the Office in trademark 

matters on behalf of a client. Any 

individual may appear in a trademark or 

other non-patent matter in his or her 

own behalf. Any individual may appear 

in a trademark matter for: 

(1) A firm of which he or she is a 

member, 

(2) A partnership of which he or she 

is a partner, or 

(3) A corporation or association of 

which he or she is an officer and which 

he or she is authorized to represent, if 

such firm, partnership, corporation, or 

association is a party to a trademark 

proceeding pending before the Office. 

(f) Application for reciprocal 

recognition. An individual seeking 

reciprocal recognition under paragraph 

(c) of this section, in addition to 

providing evidence satisfying the 

provisions of paragraph (c) of this 

section, shall apply in writing to the 

OED Director for reciprocal recognition, 

and shall pay the application fee 

required by § 1.21(a)(1)(i) of this 

subchapter. 

§ 11.15 Refusal to recognize a practitioner. 

Any practitioner authorized to appear 

before the Office may be suspended, 

excluded, or reprimanded in accordance 

with the provisions of this Part. Any 

practitioner who is suspended or 

excluded under this Part shall not be 

entitled to practice before the Office in 

patent, trademark, or other non-patent 

matters while suspended or excluded. 

§ 11.16–11.17 [Reserved] 

§ 11.18 Signature and certificate for 

correspondence filed in the Office. 

(a) For all documents filed in the 

Office in patent, trademark, and other 

non-patent matters, and all documents 

filed with a hearing officer in a 

disciplinary proceeding, except for 

correspondence that is required to be 

signed by the applicant or party, each 

piece of correspondence filed by a 

practitioner in the Office must bear a 

signature, personally signed by such 

practitioner, in compliance with 

§ 1.4(d)(1) of this subchapter. 

(b) By presenting to the Office or 

hearing officer in a disciplinary 

proceeding (whether by signing, filing, 

submitting, or later advocating) any 

paper, the party presenting such paper, 

whether a practitioner or nonpractitioner, is certifying that—

(1) All statements made therein of the 

party’s own knowledge are true, all 

statements made therein on information 

and belief are believed to be true, and 

all statements made therein are made 

with the knowledge that whoever, in 

any matter within the jurisdiction of the 

Office, knowingly and willfully falsifies, 

conceals, or covers up by any trick, 

scheme, or device a material fact, or 

knowingly and willfully makes any 

false, fictitious, or fraudulent statements 

or representations, or knowingly and 

willfully makes or uses any false writing 

or document knowing the same to 

contain any false, fictitious, or 

fraudulent statement or entry, shall be 

subject to the penalties set forth under 

18 U.S.C. 1001 and any other applicable 

criminal statute, and violations of the 

provisions of this section may 


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jeopardize the probative value of the 

paper; and 

(2) To the best of the party’s 

knowledge, information and belief, 

formed after an inquiry reasonable 

under the circumstances, 

(i) The paper is not being presented 

for any improper purpose, such as to 

harass someone or to cause unnecessary 

delay or needless increase in the cost of 

any proceeding before the Office; 

(ii) The other legal contentions 

therein are warranted by existing law or 

by a nonfrivolous argument for the 

extension, modification, or reversal of 

existing law or the establishment of new 

law; 

(iii) The allegations and other factual 

contentions have evidentiary support or, 

if specifically so identified, are likely to 

have evidentiary support after a 

reasonable opportunity for further 

investigation or discovery; and 

(iv) The denials of factual contentions 

are warranted on the evidence, or if 

specifically so identified, are reasonably 

based on a lack of information or belief. 

(c) Violations of any of paragraphs 

(b)(2)(i) through (iv) of this section are, 

after notice and reasonable opportunity 

to respond, subject to such sanctions or 

actions as deemed appropriate by the 

USPTO Director, which may include, 

but are not limited to, any combination 

of—

(1) Striking the offending paper; 

(2) Referring a practitioner’s conduct 

to the Director of Enrollment and 

Discipline for appropriate action; 

(3) Precluding a party or practitioner 

from submitting a paper, or presenting 

or contesting an issue; 

(4) Affecting the weight given to the 

offending paper; 

(5) Requiring a terminal disclaimer or 

reducing the term of a patent for a 

period equal to the period the offending 

paper is advocated; or 

(6) Terminating the proceedings in the 

Office. 

(d) Any practitioner violating the 

provisions of this section may also be 

subject to disciplinary action. 

7. Part 11 is amended to add Subpart 

C to read as follows: 

Subpart C—Investigations And 

Disciplinary Proceedings 

Jurisdiction, Sanctions, Investigations, 

and Proceedings 

Sec. 

11.19 Disciplinary jurisdiction. 

11.20 Disciplinary sanctions. 

11.21 Warnings. 

11.22 Investigations. 

11.23 Committee on Discipline. 

11.24 Reciprocal discipline. 

11.25 Interim suspension and discipline 

based upon conviction of committing a 

serious crime. 

11.26 Settlement. 

11.27 Exclusion on consent. 

11.28 Incapacitated practitioners in a 

disciplinary proceeding. 

11.29–11.31 [Reserved] 

11.32 Initiating a disciplinary proceeding. 

11.33 [Reserved] 

11.34 Complaint. 

11.35 Service of complaint. 

11.36 Answer to complaint. 

11.37 [Reserved] 

11.38 Contested case. 

11.39 Hearing officer; appointment; 

responsibilities; review of interlocutory 

orders; stays. 

11.40 Representative for OED Director or 

respondent. 

11.41 Filing of papers. 

11.42 Service of papers. 

11.43 Motions. 

11.44 Hearings. 

11.45 Amendment of pleadings. 

11.46–11.48 [Reserved] 

11.49 Burden of proof. 

11.50 Evidence. 

11.51 Depositions. 

11.52 Discovery. 

11.53 Proposed findings and conclusions; 

post-hearing memorandum. 

11.54 Initial decision of hearing officer. 

11.55 Appeal to the USPTO Director. 

11.56 Decision of the USPTO Director. 

11.57 Review of final decision of the 

USPTO Director. 

11.58 Duties of disciplined or resigned 

practitioner. 

11.59 Dissemination of disciplinary and 

other information. 

11.60 Petition for reinstatement. 

11.61 Savings clause. 

11.62–11.99 [Reserved] 

§ 11.19 Disciplinary jurisdiction. 

(a) All practitioners engaged in 

practice before the Office; all 

practitioners administratively 

suspended under § 11.11(b); all 

practitioners registered to practice 

before the Office in patent cases; all 

practitioners inactivated under 

§ 11.11(c); all practitioners authorized 

under § 11.6(d) to take testimony; and 

all practitioners reprimanded, 

suspended, or excluded from the 

practice of law by a duly constituted 

authority, including by the USPTO 

Director, are subject to the disciplinary 

jurisdiction of the Office. Practitioners 

who have resigned under § 11.11(e) 

shall also be subject to such jurisdiction 

with respect to conduct undertaken 

prior to the resignation and conduct in 

regard to any practice before the Office 

following the resignation. 

(b) Grounds for discipline. The 

following, whether done individually by 

a practitioner or in concert with any 

other person or persons and whether or 

not done in the course of providing legal 

services to a client, or in a matter 

pending before the Office, constitute 

grounds for discipline. Grounds for 

discipline include: 

(1) Conviction of a serious crime; 

(2) Discipline on ethical grounds 

imposed in another jurisdiction or 

disciplinary disqualification from 

participating in or appearing before any 

Federal program or agency; 

(3) Failure to comply with any order 

of a Court disciplining a practitioner, or 

any final decision of the USPTO 

Director in a disciplinary matter; 

(4) Violation of the imperative USPTO 

Rules of Professional Conduct; or 

(5) Violation of the oath or declaration 

taken by the practitioner. See § 11.8. 

(c) Petitions to disqualify a 

practitioner in ex parte or inter partes 

matters in the Office are not governed 

by §§ 11.19 through 11.806 and will be 

handled on a case-by-case basis under 

such conditions as the USPTO Director 

deems appropriate. 

(d) The OED Director may refer the 

existence of circumstances suggesting 

unauthorized practice of law to the 

authorities in the appropriate 

jurisdiction(s). 

§ 11.20 Disciplinary sanctions. 

(a) Types of discipline. The USPTO 

Director, after notice and opportunity 

for a hearing, and where grounds for 

discipline exist, may impose on a 

practitioner the following types of 

discipline: 

(1) Exclusion from practice before the 

Office; 

(2) Suspension from practice before 

the Office for an appropriate period of 

time; 

(3) Reprimand; or 

(4) Probation. Probation may be 

imposed in lieu of or in addition to any 

other disciplinary sanction. Any 

conditions of probation shall be stated 

in writing in the order imposing 

probation. The order shall also state 

whether, and to what extent, the 

practitioner shall be required to notify 

clients of the probation. The order shall 

establish procedures for the supervision 

of probation. Violation of any condition 

of probation shall be cause for the 

probation to be revoked, and the 

disciplinary sanction to be imposed for 

the remainder of the probation period. 

Revocation of probation shall occur only 

after an order to show cause why 

probation should not be revoked is 

resolved adversely to the practitioner. 

(b) Conditions imposed with 

discipline. When the USPTO Director 

imposes discipline, the practitioner may 

be required to make restitution either to 

persons financially injured by the 

practitioner’s conduct or to an 

appropriate client’s security trust fund, 

or both, as a condition of probation or 

of reinstatement. Such restitution shall 

be limited to the return of unearned 


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practitioner fees or misappropriated 

client funds. Any other reasonable 

condition may also be imposed, 

including a requirement that the 

practitioner take and pass a professional 

responsibility examination. 

§ 11.21 Warnings. 

A warning is not a disciplinary 

sanction. The OED Director may 

conclude an investigation with the 

issuance of a warning. The warning 

shall contain a brief statement of facts 

and imperative USPTO Rules of 

Professional Conduct relevant to the 

facts. 

§ 11.22 Investigations. 

(a) The OED Director is authorized to 

investigate possible grounds for 

discipline. An investigation may be 

initiated when the OED Director 

receives a grievance, information or 

evidence from any source suggesting 

possible grounds for discipline. Neither 

unwillingness nor neglect by a grievant 

to prosecute a charge, nor settlement, 

compromise, or restitution with the 

grievant, shall in itself justify abatement 

of an investigation. 

(b) Any person possessing 

information or evidence concerning 

possible grounds for discipline of a 

practitioner may report the information 

or evidence to the OED Director. The 

OED Director may request that the 

report be presented in the form of an 

affidavit or declaration. 

(c) Information or evidence coming 

from any source which presents or 

alleges facts suggesting possible grounds 

for discipline of a practitioner will be 

deemed a grievance. 

(d) Preliminary screening of 

information or evidence. The OED 

Director shall examine all information 

or evidence concerning possible 

grounds for discipline of a practitioner. 

(e) Notification of investigation. The 

OED Director shall notify the 

practitioner in writing of the initiation 

of an investigation into whether a 

practitioner has engaged in conduct 

constituting possible grounds for 

discipline. 

(f) Request for information and 

evidence by OED Director. (1) In the 

course of the investigation, the OED 

Director may request information and 

evidence regarding possible grounds for 

discipline of a practitioner from: 

(i) The grievant, 

(ii) The practitioner, or 

(iii) Any person who may reasonably 

be expected to provide information and 

evidence needed in connection with the 

grievance or investigation. 

(2) The OED Director may request 

information and evidence regarding 

possible grounds for discipline of a 

practitioner from a non-grieving client 

either after obtaining the consent of the 

practitioner or upon a finding by a 

Contact Member of the Committee on 

Discipline, appointed in accordance 

with § 11.23(d), that good cause exists to 

believe that the possible ground for 

discipline alleged has occurred with 

respect to non-grieving clients. Neither 

a request for, nor disclosure of, such 

information shall constitute a violation 

of any of the Rules of Professional 

Conduct contained in §§ 11.100 et seq. 

(g) Disposition of investigation. Upon 

the conclusion of an investigation, the 

OED Director may: 

(1) Close the investigation without 

issuing a warning, or taking disciplinary 

action; 

(2) Issue a warning to the practitioner; 

(3) Institute formal charges upon the 

approval of the Committee on 

Discipline; or 

(4) Enter into a settlement agreement 

with the practitioner and submit the 

same for approval of the USPTO 

Director. 

(h) Closing investigation without 

issuing a warning or taking disciplinary 

action. The OED Director shall 

terminate an investigation and decline 

to refer a matter to the Committee on 

Discipline if the OED Director 

determines that: 

(1) The information or evidence is 

unfounded; 

(2) The information or evidence 

relates to matters not within the 

jurisdiction of the Office; 

(3) As a matter of law, the conduct 

about which information or evidence 

has been obtained does not constitute 

grounds for discipline, even if the 

conduct may involve a legal dispute; or 

(4) The available evidence is 

insufficient to conclude that there is 

probable cause to believe that grounds 

exist for discipline. 

§ 11.23 Committee on Discipline. 

(a) The USPTO Director shall appoint 

a Committee on Discipline. The 

Committee on Discipline shall consist of 

at least three employees of the Office. 

None of the Committee members shall 

report directly or indirectly to the OED 

Director or any employee designated by 

the USPTO Director to decide 

disciplinary matters. Each Committee 

member shall be a member in good 

standing of the bar of the highest court 

of a State. The Committee members 

shall select a Chairperson from among 

themselves. Three Committee members 

will constitute a panel of the 

Committee. 

(b) Powers and duties of the 

Committee on Discipline. The 

Committee shall have the power and 

duty to: 

(1) Meet in panels at the request of the 

OED Director and, after reviewing 

evidence presented by the OED Director, 

by majority vote of the panel, determine 

whether there is probable cause to bring 

charges under § 11.32 against a 

practitioner; and 

(2) Prepare and forward its own 

probable cause findings and 

recommendations to the OED Director. 

(c) No discovery shall be authorized 

of, and no member of the Committee on 

Discipline shall be required to testify 

about deliberations of, the Committee 

on Discipline or of any panel. 

(d) The Chairperson shall appoint the 

members of the panels and a Contact 

Member of the Committee on Discipline. 

§ 11.24 Reciprocal discipline. 

(a) Notification of OED Director. 

Within thirty days of being disbarred or 

suspended by another jurisdiction, or 

being disciplinarily disqualified from 

participating in or appearing before any 

Federal program or agency, a 

practitioner subject to the disciplinary 

jurisdiction of the Office shall notify the 

OED Director in writing of the same. A 

practitioner is deemed to be disbarred if 

he or she is disbarred, excluded on 

consent, or has resigned in lieu of a 

disciplinary proceeding. Upon receiving 

notification from any source or 

otherwise learning that a practitioner 

subject to the disciplinary jurisdiction 

of the Office has been so disciplined or 

disciplinarily disqualified, the OED 

Director shall obtain a certified copy of 

the record or order regarding the 

disbarment, suspension, or disciplinary 

disqualification and file the same with 

the USPTO Director. The OED Director 

shall, in addition, without Committee 

on Discipline authorization, file with 

the USPTO Director a complaint 

complying with § 11.34 against the 

practitioner predicated upon the 

disbarment, suspension, or disciplinary 

disqualification. The OED Director shall 

request the USPTO Director to issue a 

notice and order as set forth in 

paragraph (b) of this section. 

(b) Notification served on practitioner. 

Upon receipt of a certified copy of the 

record or order regarding the 

practitioner being so disciplined or 

disciplinarily disqualified together with 

the complaint, the USPTO Director shall 

forthwith issue a notice directed to the 

practitioner in accordance with § 11.35 

and to the OED Director containing: 

(1) A copy of the record or order 

regarding the disbarment, suspension, 

or disciplinary disqualification; 

(2) A copy of the complaint; and 


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(3) An order directing the practitioner 

to inform the USPTO Director, within 

forty days of the date of the notice, of: 

(i) Any argument that the practitioner 

was not disbarred, suspended, or 

disciplinarily disqualified; and 

(ii) Any claim by the practitioner, 

predicated upon the grounds set forth in 

paragraphs (d)(1)(i) through (d)(1)(iii) of 

this section, that the imposition of the 

identical discipline would be 

unwarranted and the reasons for that 

claim. 

(c) Effect of stay in another 

jurisdiction. In the event the discipline 

imposed by another jurisdiction or 

disciplinary disqualification imposed in 

the Federal program or agency has been 

stayed, any reciprocal discipline 

imposed by the USPTO may be deferred 

until the stay expires. 

(d) Hearing and discipline to be 

imposed. (1) The USPTO Director shall 

hear the matter on the documentary 

record unless the USPTO Director 

determines that an oral hearing is 

necessary. After expiration of the forty 

days from the date of the notice 

pursuant to provisions of paragraph (b) 

of this section, the USPTO Director shall 

consider any timely filed response and 

impose the identical discipline unless 

the practitioner or OED Director clearly 

and convincingly demonstrates, or the 

USPTO Director finds, that it clearly 

appears upon the face of the record from 

which the discipline is predicated, that: 

(i) The procedure elsewhere was so 

lacking in notice or opportunity to be 

heard as to constitute a deprivation of 

due process; 

(ii) There was such infirmity of proof 

establishing the conduct 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 

(iii) The imposition of the same 

discipline by the Office would result in 

grave injustice. 

(2) If the USPTO Director determines 

that any of the elements of paragraphs 

(d)(1)(i) through (d)(1)(iii) of this section 

exist, the USPTO Director shall enter an 

appropriate order. 

(e) Conclusiveness of adjudication in 

another jurisdiction or Federal agency 

or program. In all other respects, a final 

adjudication in another jurisdiction or 

Federal agency or program that a 

practitioner, whether or not admitted in 

that jurisdiction, has been guilty of 

misconduct shall establish conclusively 

the ground for discipline for purposes of 

a disciplinary proceeding in this Office. 

(f) Reciprocal discipline—action 

where practice has ceased. Upon 

request by the practitioner, reciprocal 

discipline may be imposed nunc pro 

tunc only if the practitioner promptly 

notified the OED Director of his or her 

discipline or disciplinary 

disqualification in another jurisdiction, 

and establishes by clear and convincing 

evidence that the practitioner 

voluntarily ceased all activities related 

to practice before the Office and 

complied with all provisions of § 11.58. 

The effective date of any suspension or 

disbarment imposed nunc pro tunc shall 

be the date the practitioner voluntarily 

ceased all activities related to practice 

before the Office and complied with all 

provisions of § 11.58. 

(g) Reinstatement following reciprocal 

discipline proceeding. A practitioner 

may petition for reinstatement under 

conditions set forth in § 11.60 no sooner 

than completion of the period of 

reciprocal discipline imposed, and 

compliance with all provisions of 

§ 11.58. 

§ 11.25 Interim suspension and discipline 

based upon conviction of committing a 

serious crime. 

(a) Notification of OED Director. Upon 

being convicted of a crime in a court of 

the United States, any State, or a foreign 

country, a practitioner subject to the 

disciplinary jurisdiction of the Office 

shall notify the OED Director in writing 

of the same within thirty days from the 

date of such conviction. Upon being 

advised or learning that a practitioner 

subject to the disciplinary jurisdiction 

of the Office has been convicted of a 

crime, the OED Director shall make a 

preliminary determination whether the 

crime constitutes a serious crime 

warranting immediate interim 

suspension. If the crime is a serious 

crime, the OED Director shall file with 

the USPTO Director proof of the 

conviction and request the USPTO 

Director to issue a notice and order set 

forth in paragraph (b)(2) of this section. 

The OED Director shall in addition, 

without Committee on Discipline 

authorization, file with the USPTO 

Director a complaint against the 

practitioner complying with § 11.34 

predicated upon the conviction of a 

serious crime. If the crime is not a 

serious crime, the OED Director shall 

process the matter in the same manner 

as any other information or evidence of 

a possible violation of an imperative 

Rule of Professional Conduct coming to 

the attention of the OED Director. 

(b) Immediate interim suspension and 

referral for disciplinary proceeding. All 

proceedings under this section shall be 

handled as expediously as possible. 

(1) The USPTO Director has authority 

to place a practitioner on interim 

suspension. The USPTO Director may 

refer any portion of the interim 

suspension proceeding to a hearing 

officer with appropriate directions. 

(2) Notification served on practitioner. 

Upon receipt of a certified copy of the 

court record, docket entry or judgment 

demonstrating that the practitioner has 

been so convicted together with the 

complaint, the USPTO Director shall 

forthwith issue a notice directed to the 

practitioner in accordance with 

§ 11.35(a), (b) or (c), and to the OED 

Director, containing: 

(i) A copy of the court record, docket 

entry, or judgment of conviction; 

(ii) A copy of the complaint; and 

(iii) An order directing the 

practitioner to inform the USPTO 

Director, within forty days of the date of 

the notice, of any predicate challenge 

establishing that interim suspension 

may not properly be ordered, such as 

the crime did not constitute a serious 

crime or that the practitioner is not the 

individual found guilty. 

(3) Hearing and interim suspension. 

The matter shall be heard on the 

documentary record for the order for 

interim suspension and the 

practitioner’s assertion of any predicate 

challenge. 

(i) Interim Suspension. The USPTO 

Director shall place a practitioner on 

interim suspension immediately upon 

proof that the practitioner has been 

convicted of a serious crime, regardless 

of the pendency of any appeal. 

(ii) Termination. The USPTO Director 

has authority to terminate an interim 

suspension. In the interest of justice, the 

USPTO Director may terminate an 

interim suspension at any time upon a 

showing of extraordinary circumstances, 

after affording the OED Director an 

opportunity to respond to the request to 

terminate interim suspension. 

(4) Referral for disciplinary 

proceeding. Upon entering an order of 

interim suspension, the USPTO Director 

shall refer the matter to the OED 

Director for institution of a formal 

disciplinary proceeding. A disciplinary 

proceeding so instituted shall be stayed 

by the hearing officer until all direct 

appeals from the conviction are 

concluded. Review of the initial 

decision of the hearing officer shall be 

pursuant to § 11.55. 

(c) Proof of conviction and guilt. (1) 

Conviction in the United States. For 

purposes of a hearing for interim 

suspension and a hearing on the formal 

charges in a complaint filed as a 

consequence of the conviction, a 

certified copy of the court record, 

docket entry, or judgment of conviction 

in a court of the United States or any 

State shall be conclusive evidence that 

the practitioner committed the crime 

and was convicted. The sole issue 


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before the hearing officer shall be the 

nature and extent of the discipline to be 

imposed as a consequence of the 

conviction. 

(2) Conviction in a foreign country. 

For purposes of a hearing for interim 

suspension and on the formal charges 

filed as a result of a finding of guilt, a 

certified copy of the court record, 

docket entry, or judgment of conviction 

in a court of a foreign country shall be 

conclusive evidence of the conviction 

and of any imposed confinement or 

commitment to imprisonment, and 

prima facie evidence of the 

practitioner’s commission of the crime 

of which the practitioner has been 

convicted. However, nothing in this 

paragraph shall preclude the 

practitioner from demonstrating in any 

hearing by clear and convincing 

evidence: 

(i) That the procedure in the foreign 

country was so lacking in notice or 

opportunity to be heard as to constitute 

a deprivation of due process and rebut 

the prima facie evidence of guilt; or 

(ii) Material facts to be considered 

when determining if a serious crime was 

committed and whether a disciplinary 

sanction should be entered. 

(d) Crime determined not to be serious 

crime. If the USPTO Director determines 

that the crime is not a serious crime, the 

matter shall be referred to the OED 

Director for investigation under § 11.22 

and processing as is appropriate. 

(e) Reinstatement. (1) Upon reversal 

or setting aside a finding of guilt or a 

conviction. If a practitioner suspended 

solely under the provisions of paragraph 

(b) of this section demonstrates that the 

underlying finding of guilt or conviction 

of serious crimes has been reversed or 

vacated, the order for interim 

suspension shall be vacated and the 

practitioner be placed on active status 

unless the finding of guilt was reversed 

or the conviction was set aside with 

respect to less than all serious crimes for 

which the practitioner was found guilty 

or convicted. The vacating of the 

interim suspension will not terminate 

any other disciplinary proceeding then 

pending against the practitioner, the 

disposition of which shall be 

determined by the hearing officer before 

whom the matter is pending, on the 

basis of all available evidence other than 

the finding of guilt or conviction. 

(2) Following conviction of a serious 

crime. Any practitioner convicted of a 

serious crime and disciplined in whole 

or in part in regard to that conviction, 

may petition for reinstatement under 

conditions set forth in § 11.60 no sooner 

than five years after being discharged 

following completion of service of his or 

her sentence, or after completion of 

service under probation or parole, 

whichever is later. 

(f) Notice to clients and others of 

interim suspension. An interim 

suspension under this section shall 

constitute a suspension of the 

practitioner for the purpose of § 11.58. 

§ 11.26 Settlement. 

Before or after a complaint under 

§ 11.24 is filed, a settlement conference 

may occur between the OED Director 

and the practitioner. Any offers of 

compromise and any statements made 

during the course of settlement 

discussions shall not be admissible in 

subsequent proceedings. The OED 

Director may recommend to the USPTO 

Director any settlement terms deemed 

appropriate, including steps taken to 

correct or mitigate the matter forming 

the basis of the action, or to prevent 

recurrence of the same or similar 

conduct. A settlement agreement shall 

be effective only upon entry of a final 

decision by the USPTO Director. 

§ 11.27 Exclusion on consent. 

(a) Required affidavit. The OED 

Director may confer with a practitioner 

concerning possible violations by the 

practitioner of the Rules of Professional 

Conduct whether or not a disciplinary 

proceeding has been instituted. A 

practitioner who is the subject of an 

investigation or a pending disciplinary 

proceeding based on allegations of 

grounds for discipline, and who desires 

to resign, may only do so by consenting 

to exclusion and delivering to the OED 

Director an affidavit declaring the 

consent of the practitioner to exclusion 

and stating: 

(1) That the practitioner’s consent is 

freely and voluntarily rendered, that the 

practitioner is not being subjected to 

coercion or duress, and that the 

practitioner is fully aware of the 

implications of consenting to exclusion; 

(2) That the practitioner is aware that 

there is currently pending an 

investigation into, or a proceeding 

involving allegations of misconduct, the 

nature of which shall be specifically set 

forth in the affidavit to the satisfaction 

of the OED Director; 

(3) That the practitioner 

acknowledges that, if and when he or 

she applies for reinstatement under 

§ 11.60, the OED Director will 

conclusively presume, for the limited 

purpose of determining the application 

for reinstatement, that: 

(i) The facts upon which the 

investigation or complaint is based are 

true, and 

(ii) The practitioner could not have 

successfully defended himself or herself 

against the allegations in the 

investigation or charges in the 

complaint. 

(b) Action by the USPTO Director. 

Upon receipt of the required affidavit, 

the OED Director shall file the affidavit 

and any related papers with the USPTO 

Director for review and approval. Upon 

such approval, the USPTO Director will 

enter an order excluding the practitioner 

on consent and providing other 

appropriate actions. Upon entry of the 

order, the excluded practitioner shall 

comply with the requirements set forth 

in § 11.58. 

(c) When an affidavit under paragraph 

(a) of this section is received after a 

complaint under § 11.34 has been filed, 

the OED Director shall notify the 

hearing officer. The hearing officer shall 

enter an order transferring the 

disciplinary proceeding to the USPTO 

Director, who may enter an order 

excluding the practitioner on consent. 

(d) Reinstatement. Any practitioner 

excluded on consent under this section 

may not petition for reinstatement for 

five years. A practitioner excluded on 

consent who intends to reapply for 

admission to practice before the Office 

must comply with the provisions of 

§ 11.58, and apply for reinstatement in 

accordance with § 11.60. Failure to 

comply with the provisions of § 11.58 

constitutes grounds for denying an 

application for reinstatement. 

§ 11.28 Incapacitated practitioners in a 

disciplinary proceeding. 

(a) Holding in abeyance a disciplinary 

proceeding because of incapacitation 

due to a current disability or addiction. 

(1) Practitioner’s motion. In the course 

of a disciplinary proceeding under 

§ 11.32, but before the date set by the 

hearing officer for a hearing, the 

practitioner may file a motion 

requesting the hearing officer to enter an 

order holding such proceeding in 

abeyance based on the contention that 

the practitioner is suffering from a 

disability or addiction that makes it 

impossible for the practitioner to 

adequately defend the charges in the 

disciplinary proceeding. 

(i) Content of practitioner’s motion. 

The practitioner’s motion shall, in 

addition to any other requirement of 

§ 11.43, include or have attached 

thereto: 

(A) A brief statement of all material 

facts; 

(B) Affidavits, medical reports, official 

records, or other documents setting 

forth or establishing any of the material 

facts on which the practitioner is 

relying; 

(C) A statement that the practitioner 

acknowledges the alleged incapacity by 

reason of disability or addiction; 


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(D) Written consent that the 

practitioner be transferred to disability 

inactive status if the motion is granted; 

and 

(E) A written agreement by the 

practitioner to not practice before the 

Office in patent, trademark or other nonpatent cases while on disability inactive 

status. 

(ii) Response. The OED Director’s 

response to any motion hereunder shall 

be served and filed within fourteen days 

after service of the practitioner’s motion 

unless such time is shortened or 

enlarged by the hearing officer for good 

cause shown, and shall set forth the 

following: 

(A) All objections, if any, to the 

actions requested in the motion; 

(B) An admission, denial or allegation 

of lack of knowledge with respect to 

each of the material facts in the 

practitioner’s motion and accompanying 

documents; and 

(C) Affidavits, medical reports, official 

records, or other documents setting 

forth facts on which the OED Director 

intends to rely for purposes of disputing 

or denying any material fact set forth in 

the practitioner’s papers. 

(2) Disposition of practitioner’s 

motion. The hearing officer shall decide 

the motion and any response thereto. 

The motion shall be granted upon a 

showing of good cause to believe the 

practitioner to be incapacitated as 

alleged. If the required showing is made, 

the hearing officer shall enter an order 

holding the disciplinary proceeding in 

abeyance. In the case of addiction to 

drugs or intoxicants, the order may 

provide that the practitioner will not be 

returned to active status absent 

satisfaction of specified conditions. 

Upon receipt of the order, the OED 

Director shall place the practitioner on 

disability inactive status, give notice to 

the practitioner, cause notice to be 

published, and give notice to 

appropriate authorities in the Office that 

the practitioner has been placed on 

disability inactive status. The 

practitioner shall comply with the 

provisions of § 11.58, and shall not 

engage in practice before the Office in 

patent, trademark and other non-patent 

law until a determination is made of the 

practitioner’s capability to resume 

practice before the Office in a 

proceeding under paragraph (c) or 

paragraph (d) of this section. 

(b) Motion for reactivation. Any 

practitioner transferred to disability 

inactive status in a disciplinary 

proceeding may file with the hearing 

officer a motion for reactivation once a 

year beginning at any time not less than 

one year after the initial effective date 

of inactivation, or once during any 

shorter interval provided by the order 

issued pursuant to paragraph (a)(2) of 

this section or any modification thereof. 

If the motion is granted, the disciplinary 

proceeding shall resume under such 

schedule as may be established by the 

hearing officer. 

(c) Contents of motion for 

reactivation. A motion by the 

practitioner for reactivation alleging that 

a practitioner has recovered from a prior 

disability or addiction shall be 

accompanied by all available medical 

reports or similar documents relating 

thereto. The hearing officer may require 

the practitioner to present such other 

information as is necessary. 

(d) OED Director’s motion to resume 

disciplinary proceeding held in 

abeyance. (1) The OED Director, having 

good cause to believe a practitioner is 

no longer incapacitated, may file a 

motion requesting the hearing officer to 

terminate a prior order holding in 

abeyance any pending proceeding 

because of the practitioner’s disability 

or addiction. The hearing officer shall 

decide the matter presented by the OED 

Director’s motion hereunder based on 

the affidavits and other admissible 

evidence attached to the OED Director’s 

motion and the practitioner’s response. 

The OED Director bears the burden of 

showing by clear and convincing 

evidence that the practitioner is able to 

defend himself or herself. If there is any 

genuine issue as to one or more material 

facts, the hearing officer will hold an 

evidentiary hearing. 

(2) The hearing officer, upon receipt 

of the OED Director’s motion under 

paragraph (d)(1) of this section, may 

direct the practitioner to file a response. 

If the hearing officer requires the 

practitioner to file a response, the 

practitioner must present clear and 

convincing evidence that the prior selfalleged disability or addiction continues 

to make it impossible for the 

practitioner to defend himself or herself 

in the underlying proceeding being held 

in abeyance. 

(e) Action by the hearing officer. If, in 

deciding a motion under paragraph (b) 

or (d) of this section, the hearing officer 

determines that there is good cause to 

believe the practitioner is not 

incapacitated from defending himself or 

herself, or is not incapacitated from 

practicing before the Office, the hearing 

officer shall take such action as is 

deemed appropriate, including the entry 

of an order directing the reactivation of 

the practitioner and resumption of the 

disciplinary proceeding. 

§§ 11.29–11.31 [Reserved] 

§ 11.32 Initiating a disciplinary proceeding. 

If after conducting an investigation 

under § 11.22(a) the OED Director is of 

the opinion that grounds exist for 

discipline under § 11.19(b)(3)–(5), the 

OED Director, and after complying 

where necessary with the provisions of 

5 U.S.C. 558(c), shall convene a meeting 

of a panel of the Committee on 

Discipline. The panel of the Committee 

on Discipline shall then determine as 

specified in § 11.23(b) whether a 

disciplinary proceeding shall be 

instituted. If the panel of the Committee 

on Discipline determines that probable 

cause exists to bring charges under 

§ 11.19(b)(3)–(5), the OED Director shall 

institute a disciplinary proceeding by 

filing a complaint under § 11.34. 

§ 11.33 [Reserved] 

§ 11.34 Complaint. 

(a) A complaint instituting a 

disciplinary proceeding under 

§ 11.25(b)(4) or 11.32 shall: 

(1) Name the practitioner who may 

then be referred to as the ‘‘respondent’’; 

(2) Give a plain and concise 

description of the respondent’s alleged 

grounds for discipline; 

(3) State the place and time, not less 

than thirty days from the date the 

complaint is filed, for filing an answer 

by the respondent; 

(4) State that a decision by default 

may be entered if an answer is not 

timely filed by the respondent; and 

(5) Be signed by the OED Director. 

(b) A complaint will be deemed 

sufficient if it fairly informs the 

respondent of any grounds for 

discipline, and where applicable, the 

imperative USPTO Rules of Professional 

Conduct that form the basis for the 

disciplinary proceeding so that the 

respondent is able to adequately prepare 

a defense. 

(c) The complaint shall be filed in the 

manner prescribed by the USPTO 

Director. 

§ 11.35 Service of complaint. 

(a) A complaint may be served on a 

respondent in any of the following 

methods: 

(1) By delivering a copy of the 

complaint personally to the respondent, 

in which case the individual who gives 

the complaint to the respondent shall 

file an affidavit with the OED Director 

indicating the time and place the 

complaint was handed to the 

respondent. 

(2) By mailing a copy of the complaint 

by ‘‘Express Mail,’’ first-class mail, or 

any delivery service that provides 


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ability to confirm delivery or attempted 

delivery to: 

(i) A respondent who is a registered 

practitioner at the address provided to 

OED pursuant to § 11.11, or 

(ii) A respondent who is a 

nonregistered practitioner at the last 

address for the respondent known to the 

OED Director. 

(3) By any method mutually agreeable 

to the OED Director and the respondent. 

(4) In the case of a respondent who 

resides outside the United States, by 

sending a copy of the complaint by any 

delivery service that provides ability to 

confirm delivery or attempted delivery, 

to: 

(i) A respondent who is a registered 

practitioner at the address provided to 

OED pursuant to § 11.11; or 

(ii) A respondent who is a 

nonregistered practitioner at the last 

address for the respondent known to the 

OED Director. 

(b) If a copy of the complaint cannot 

be delivered to the respondent through 

any one of the procedures in paragraph 

(a) of this section, the OED Director 

shall serve the respondent by causing an 

appropriate notice to be published in 

the Official Gazette for two consecutive 

weeks, in which case, the time for filing 

an answer shall be thirty days from the 

second publication of the notice. Failure 

to timely file an answer will constitute 

an admission of the allegations in the 

complaint in accordance with paragraph 

(d) of § 11.36, and the hearing officer 

may enter an initial decision on default. 

(c) If the respondent is known to the 

OED Director to be represented by an 

attorney under § 11.40(a), a copy of the 

complaint shall be served on the 

attorney in lieu of the respondent in the 

manner provided for in paragraph (a) or 

(b) of this section. 

§ 11.36 Answer to complaint. 

(a) Time for answer. An answer to a 

complaint shall be filed within the time 

set in the complaint but in no event 

shall that time be less than thirty days 

from the date the complaint is filed. 

(b) With whom filed. The answer shall 

be filed in writing with the hearing 

officer at the address specified in the 

complaint. The hearing officer may 

extend the time for filing an answer 

once for a period of no more than thirty 

days upon a showing of good cause, 

provided a motion requesting an 

extension of time is filed within thirty 

days after the date the complaint is 

served on respondent. A copy of the 

answer, and any exhibits or attachments 

thereto, shall be served on the OED 

Director. 

(c) Content. The respondent shall 

include in the answer a statement of the 

facts that constitute the grounds of 

defense and shall specifically admit or 

deny each allegation set forth in the 

complaint. The respondent shall not 

deny a material allegation in the 

complaint that the respondent knows to 

be true or state that respondent is 

without sufficient information to form a 

belief as to the truth of an allegation 

when in fact the respondent possesses 

that information. The respondent shall 

also state affirmatively in the answer 

special matters of defense and any 

intent to raise a disability as a mitigating 

factor. If respondent intends to raise a 

special matter of defense or disability, 

the answer shall specify the defense or 

disability, its nexus to the misconduct, 

and the reason it provides a defense or 

mitigation. A respondent who fails to do 

so cannot rely on a special matter of 

defense or disability. The hearing officer 

may, for good cause, allow the 

respondent to file the statement late, 

grant additional hearing preparation 

time, or make other appropriate orders. 

(d) Failure to deny allegations in 

complaint. Every allegation in the 

complaint that is not denied by a 

respondent in the answer shall be 

deemed to be admitted and may be 

considered proven. The hearing officer 

at any hearing need receive no further 

evidence with respect to that allegation. 

(e) Default judgment. Failure to timely 

file an answer will constitute an 

admission of the allegations in the 

complaint and may result in entry of 

default judgment. 

§ 11.37 [Reserved] 

§ 11.38 Contested case. 

Upon the filing of an answer by the 

respondent, a disciplinary proceeding 

shall be regarded as a contested case 

within the meaning of 35 U.S.C. 24. 

Evidence obtained by a subpoena issued 

under 35 U.S.C. 24 shall not be admitted 

into the record or considered unless 

leave to proceed under 35 U.S.C. 24 was 

previously authorized by the hearing 

officer. 

§ 11.39 Hearing officer; appointment; 

responsibilities; review of interlocutory 

orders; stays. 

(a) Appointment. A hearing officer, 

appointed by the USPTO Director under 

5 U.S.C. 3105 or 35 U.S.C. 32, shall 

conduct disciplinary proceedings as 

provided by this Part. 

(b) Independence of the Hearing 

Officer. (1) A hearing officer appointed 

in accordance with paragraph (a) of this 

section shall not be subject to first level 

or second level supervision by the 

USPTO Director or his or her designee. 

(2) A hearing officer appointed in 

accordance with paragraph (a) of this 

section shall not be subject to 

supervision of the person(s) 

investigating or prosecuting the case. 

(3) A hearing officer appointed in 

accordance with paragraph (a) of this 

section shall be impartial, shall not be 

an individual who has participated in 

any manner in the decision to initiate 

the proceedings, and shall not have 

been employed under the immediate 

supervision of the practitioner. 

(4) A hearing officer appointed in 

accordance with paragraph (a) of this 

section shall be admitted to practice law 

and have suitable experience and 

training to conduct the hearing, reach a 

determination, and render an initial 

decision in an equitable manner. 

(c) Responsibilities. The hearing 

officer shall have authority, consistent 

with specific provisions of these 

regulations, to: 

(1) Administer oaths and affirmations; 

(2) Make rulings upon motions and 

other requests; 

(3) Rule upon offers of proof, receive 

relevant evidence, and examine 

witnesses; 

(4) Authorize the taking of a 

deposition of a witness in lieu of 

personal appearance of the witness 

before the hearing officer; 

(5) Determine the time and place of 

any hearing and regulate its course and 

conduct; 

(6) Hold or provide for the holding of 

conferences to settle or simplify the 

issues; 

(7) Receive and consider oral or 

written arguments on facts or law; 

(8) Adopt procedures and modify 

procedures for the orderly disposition of 

proceedings; 

(9) Make initial decisions under 

§§ 11.25 and 11.54; and 

(10) Perform acts and take measures 

as necessary to promote the efficient, 

timely, and impartial conduct of any 

disciplinary proceeding. 

(d) Time for making initial decision. 

The hearing officer shall set times and 

exercise control over a disciplinary 

proceeding such that an initial decision 

under § 11.54 is normally issued within 

nine months of the date a complaint is 

filed. The hearing officer may, however, 

issue an initial decision more than nine 

months after a complaint is filed if there 

exist circumstances, in his or her 

opinion, that preclude issuance of an 

initial decision within nine months of 

the filing of the complaint. 

(e) Review of interlocutory orders. The 

USPTO Director will not review an 

interlocutory order of a hearing officer 

except: 

(1) When the hearing officer shall be 

of the opinion: 

(i) That the interlocutory order 

involves a controlling question of 


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procedure or law as to which there is a 

substantial ground for a difference of 

opinion, and 

(ii) That an immediate decision by the 

USPTO Director may materially advance 

the ultimate termination of the 

disciplinary proceeding, or 

(2) In an extraordinary situation 

where the USPTO Director deems that 

justice requires review. 

(f) Stays pending review of 

interlocutory order. If the OED Director 

or a respondent seeks review of an 

interlocutory order of a hearing officer 

under paragraph (b)(2) of this section, 

any time period set for taking action by 

the hearing officer shall not be stayed 

unless ordered by the USPTO Director 

or the hearing officer. 

(g) The hearing officer shall engage in 

no ex parte discussions with any party 

on the merits of the complaint, 

beginning with appointment and ending 

when the final agency decision is 

issued. 

§ 11.40 Representative for OED Director or 

respondent. 

(a) A respondent may represent 

himself or herself, or be represented by 

an attorney before the Office in 

connection with an investigation or 

disciplinary proceeding. The attorney 

shall file a written declaration that he or 

she is an attorney within the meaning of 

§ 11.1 and shall state: 

(1) The address to which the attorney 

wants correspondence related to the 

investigation or disciplinary proceeding 

sent, and 

(2) A telephone number where the 

attorney may be reached during normal 

business hours. 

(b) The Deputy General Counsel for 

Intellectual Property and Solicitor, and 

attorneys in the Office of the Solicitor 

shall represent the OED Director. The 

attorneys representing the OED Director 

in disciplinary proceedings shall not 

consult with the USPTO Director, the 

General Counsel, or the Deputy General 

Counsel for General Law regarding the 

proceeding. The General Counsel and 

the Deputy General Counsel for General 

Law shall remain screened from the 

investigation and prosecution of all 

disciplinary proceedings in order that 

they shall be available as counsel to the 

USPTO Director in deciding 

disciplinary proceedings unless access 

is appropriate to perform their duties. 

After a final decision is entered in a 

disciplinary proceeding, the OED 

Director and attorneys representing the 

OED Director shall be available to 

counsel the USPTO Director, the 

General Counsel, and the Deputy 

General Counsel for General Law in any 

further proceedings. 

§ 11.41 Filing of papers. 

(a) The provisions of §§ 1.8 and 2.197 

of this subchapter do not apply to 

disciplinary proceedings. All papers 

filed after the complaint and prior to 

entry of an initial decision by the 

hearing officer shall be filed with the 

hearing officer at an address or place 

designated by the hearing officer. 

(b) All papers filed after entry of an 

initial decision by the hearing officer 

shall be filed with the USPTO Director. 

A copy of the paper shall be served on 

the OED Director. The hearing officer or 

the OED Director may provide for filing 

papers and other matters by hand, by 

‘‘Express Mail,’’ or by other means. 

§ 11.42 Service of papers. 

(a) All papers other than a complaint 

shall be served on a respondent who is 

represented by an attorney by: 

(1) Delivering a copy of the paper to 

the office of the attorney; or 

(2) Mailing a copy of the paper by 

first-class mail, ‘‘Express Mail,’’ or other 

delivery service to the attorney at the 

address provided by the attorney under 

§ 11.40(a)(1); or 

(3) Any other method mutually 

agreeable to the attorney and a 

representative for the OED Director. 

(b) All papers other than a complaint 

shall be served on a respondent who is 

not represented by an attorney by: 

(1) Delivering a copy of the paper to 

the respondent; or 

(2) Mailing a copy of the paper by 

first-class mail, ‘‘Express Mail,’’ or other 

delivery service to the respondent at the 

address to which a complaint may be 

served or such other address as may be 

designated in writing by the respondent; 

or 

(3) Any other method mutually 

agreeable to the respondent and a 

representative of the OED Director. 

(c) A respondent shall serve on the 

representative for the OED Director one 

copy of each paper filed with the 

hearing officer or the OED Director. A 

paper may be served on the 

representative for the OED Director by: 

(1) Delivering a copy of the paper to 

the representative; or 

(2) Mailing a copy of the paper by 

first-class mail, ‘‘Express Mail,’’ or other 

delivery service to an address 

designated in writing by the 

representative; or 

(3) Any other method mutually 

agreeable to the respondent and the 

representative. 

(d) Each paper filed in a disciplinary 

proceeding shall contain therein a 

certificate of service indicating: 

(1) The date of which service was 

made; and 

(2) The method by which service was 

made. 

(e) The hearing officer or the USPTO 

Director may require that a paper be 

served by hand or by ‘‘Express Mail.’’

(f) Service by mail is completed when 

the paper mailed in the United States is 

placed into the custody of the U.S. 

Postal Service. 

§ 11.43 Motions. 

Motions may be filed with the hearing 

officer. The hearing officer will 

determine whether replies to responses 

will be authorized and the time period 

for filing such a response. No motion 

shall be filed with the hearing officer 

unless such motion is supported by a 

written statement by the moving party 

that the moving party or attorney for the 

moving party has conferred with the 

opposing party or attorney for the 

opposing party in an effort in good faith 

to resolve by agreement the issues raised 

by the motion and has been unable to 

reach agreement. If the parties prior to 

a decision on the motion resolve issues 

raised by a motion presented to the 

hearing officer, the parties shall 

promptly notify the hearing officer. 

§ 11.44 Hearings. 

(a) The hearing officer shall preside at 

hearings in disciplinary proceedings. If 

the hearing officer determines that an 

oral hearing is appropriate, the hearing 

officer shall set the time and place for 

a hearing. In setting a time and place, 

the hearing officer shall normally give 

preference to a Federal facility in the 

district where the Office’s principal 

office is located or Washington, DC, 

giving due regard to the convenience 

and needs of the parties, witnesses, or 

their representatives. In cases involving 

an incarcerated respondent, any 

necessary oral hearing may be held at 

the location of incarceration. Oral 

hearings will be stenographically 

recorded and transcribed, and the 

testimony of witnesses will be received 

under oath or affirmation. The hearing 

officer shall conduct the hearing as if 

the proceeding were subject to 5 U.S.C. 

556. A copy of the transcript of the 

hearing shall become part of the record. 

The OED Director and respondent shall 

make their own arrangements to obtain 

a copy of the transcript. 

(b) If the respondent to a disciplinary 

proceeding fails to appear at the hearing 

after a notice of hearing has been given 

by the hearing officer, the hearing 

officer may deem the respondent to 

have waived the right to a hearing and 

may proceed with the hearing in the 

absence of the respondent. 

(c) A hearing under this section will 

not be open to the public except that the 

hearing officer may grant a request by a 

respondent to open his or her hearing to 


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the public and make the record of the 

disciplinary proceeding available for 

public inspection, provided, Agreement 

is reached in advance to exclude from 

public disclosure information which is 

privileged or confidential under 

applicable laws or regulations. If a 

disciplinary proceeding results in 

disciplinary sanction against a 

practitioner, subject to § 11.59(b) the 

record of the entire disciplinary 

proceeding, including any settlement 

agreement, will be available for public 

inspection. 

§ 11.45 Amendment of pleadings. 

The OED Director may, without 

Committee on Discipline authorization, 

but with the authorization of the hearing 

officer, amend the complaint to include 

additional charges based upon conduct 

committed before or after the complaint 

was filed. If amendment of the 

complaint is authorized, the hearing 

officer shall authorize amendment of the 

answer. Any party who would 

otherwise be prejudiced by the 

amendment will be given reasonable 

opportunity to meet the allegations in 

the complaint or answer as amended, 

and the hearing officer shall make 

findings on any issue presented by the 

complaint or answer as amended. 

§§ 11.46–11.48 [Reserved] 

§ 11.49 Burden of proof. 

In a disciplinary proceeding, the OED 

Director shall have the burden of 

proving his or her case by clear and 

convincing evidence and a respondent 

shall have the burden of proving any 

affirmative defense by clear and 

convincing evidence. 

§ 11.50 Evidence. 

(a) Rules of evidence. The rules of 

evidence prevailing in courts of law and 

equity are not controlling in hearings in 

disciplinary proceedings. However, the 

hearing officer shall exclude evidence 

that is irrelevant, immaterial, or unduly 

repetitious. 

(b) Depositions. Depositions of 

witnesses taken pursuant to § 11.51 may 

be admitted as evidence. 

(c) Government documents. Official 

documents, records, and papers of the 

Office, including, but not limited to, all 

papers in the file of a disciplinary 

investigation, are admissible without 

extrinsic evidence of authenticity. These 

documents, records, and papers may be 

evidenced by a copy certified as correct 

by an employee of the Office. 

(d) Exhibits. If any document, record, 

or other paper is introduced in evidence 

as an exhibit, the hearing officer may 

authorize the withdrawal of the exhibit 

subject to any conditions the hearing 

officer deems appropriate. 

(e) Objections. Objections to evidence 

will be in short form, stating the 

grounds of objection. Objections and 

rulings on objections will be a part of 

the record. No exception to the ruling is 

necessary to preserve the rights of the 

parties. 

§ 11.51 Depositions. 

(a) Depositions for use at the hearing 

in lieu of personal appearance of a 

witness before the hearing officer may 

be taken by respondent or the OED 

Director upon a showing of good cause 

and with the approval of, and under 

such conditions as may be deemed 

appropriate by, the hearing officer. 

Depositions may be taken upon oral or 

written questions, upon not less than 

ten days’ written notice to the other 

party, before any officer authorized to 

administer an oath or affirmation in the 

place where the deposition is to be 

taken. The parties may waive the 

requirement of ten days’ notice and 

depositions may then be taken of a 

witness at a time and place mutually 

agreed to by the parties. When a 

deposition is taken upon written 

questions, copies of the written 

questions will be served upon the other 

party with the notice, and copies of any 

written cross-questions will be served 

by hand or ‘‘Express Mail’’ not less than 

five days before the date of the taking of 

the deposition unless the parties 

mutually agree otherwise. A party on 

whose behalf a deposition is taken shall 

file a copy of a transcript of the 

deposition signed by a court reporter 

with the hearing officer and shall serve 

one copy upon the opposing party. 

Expenses for a court reporter and 

preparing, serving, and filing 

depositions shall be borne by the party 

at whose instance the deposition is 

taken. Depositions may not be taken to 

obtain discovery, except as provided for 

in paragraph (b) of this section. 

(b) When the OED Director and the 

respondent agree in writing, a 

deposition of any witness who will 

appear voluntarily may be taken under 

such terms and conditions as may be 

mutually agreeable to the OED Director 

and the respondent. The deposition 

shall not be filed with the hearing 

officer and may not be admitted in 

evidence before the hearing officer 

unless he or she orders the deposition 

admitted in evidence. The admissibility 

of the deposition shall lie within the 

discretion of the hearing officer who 

may reject the deposition on any 

reasonable basis including the fact that 

demeanor is involved and that the 

witness should have been called to 

appear personally before the hearing 

officer. 

§ 11.52 Discovery. 

Discovery shall not be authorized except 

as follows: 

(a) After an answer is filed under 

§ 11.36 and when a party establishes 

that discovery is reasonable and 

relevant, the hearing officer, under such 

conditions as he or she deems 

appropriate, may order an opposing 

party to: 

(1) Answer a reasonable number of 

written requests for admission or 

interrogatories; 

(2) Produce for inspection and 

copying a reasonable number of 

documents; and 

(3) Produce for inspection a 

reasonable number of things other than 

documents. 

(b) Discovery shall not be authorized 

under paragraph (a) of this section of 

any matter which: 

(1) Will be used by another party 

solely for impeachment; 

(2) Is not available to the party under 

35 U.S.C. 122; 

(3) Relates to any other disciplinary 

proceeding; 

(4) Relates to experts except as the 

hearing officer may require under 

paragraph (e) of this section. 

(5) Is privileged; or 

(6) Relates to mental impressions, 

conclusions, opinions, or legal theories 

of any attorney or other representative 

of a party. 

(c) The hearing officer may deny 

discovery requested under paragraph (a) 

of this section if the discovery sought: 

(1) Will unduly delay the disciplinary 

proceeding; 

(2) Will place an undue burden on the 

party required to produce the discovery 

sought; or 

(3) Consists of information that is 

available: 

(i) Generally to the public; 

(ii) Equally to the parties; or 

(iii) To the party seeking the 

discovery through another source. 

(d) Prior to authorizing discovery 

under paragraph (a) of this section, the 

hearing officer shall require the party 

seeking discovery to file a motion 

(§ 11.43) and explain in detail, for each 

request made, how the discovery sought 

is reasonable and relevant to an issue 

actually raised in the complaint or the 

answer. 

(e) The hearing officer may require 

parties to file and serve, prior to any 

hearing, a pre-hearing statement that 

contains: 

(1) A list (together with a copy) of all 

proposed exhibits to be used in 

connection with a party’s case-in-chief; 


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(2) A list of proposed witnesses; 

(3) As to each proposed expert 

witness: 

(i) An identification of the field in 

which the individual will be qualified 

as an expert; 

(ii) A statement as to the subject 

matter on which the expert is expected 

to testify; and 

(iii) A statement of the substance of 

the facts and opinions to which the 

expert is expected to testify; 

(4) Copies of memoranda reflecting 

respondent’s own statements to 

administrative representatives. 

(f) After a witness testifies for a party, 

if the opposing party requests, the party 

may be required to produce, prior to 

cross-examination, any documents 

relied upon by the witness in giving his 

or her testimony. 

§ 11.53 Proposed findings and 

conclusions; post-hearing memorandum. 

Except in cases in which the 

respondent has failed to answer the 

complaint or amended complaint, the 

hearing officer, prior to making an 

initial decision, shall afford the parties 

a reasonable opportunity to submit 

proposed findings and conclusions and 

a post-hearing memorandum in support 

of the proposed findings and 

conclusions. 

§ 11.54 Initial decision of hearing officer. 

(a) The hearing officer shall make an 

initial decision in the case. The decision 

will include: 

(1) A statement of findings of fact and 

conclusions of law, as well as the 

reasons or bases for those findings and 

conclusions with appropriate references 

to the record, upon all the material 

issues of fact, law, or discretion 

presented on the record, and 

(2) An order of default judgment, of 

suspension or exclusion from practice, 

of reprimand, or an order dismissing the 

complaint. The hearing officer shall 

transmit a copy of the decision to the 

OED Director and to the respondent. 

After issuing the decision, the hearing 

officer shall transmit the entire record to 

the OED Director. In the absence of an 

appeal to the USPTO Director, the 

decision of the hearing officer, 

including a default judgment, will, 

without further proceedings, become the 

decision of the USPTO Director thirty 

days from the date of the decision of the 

hearing officer. 

(b) The initial decision of the hearing 

officer shall explain the reason for any 

default judgment, reprimand, 

suspension, or exclusion. In 

determining any sanction, the following 

should normally be considered: 

(1) The public interest; 

(2) The seriousness of the grounds for 

discipline; 

(3) The deterrent effects deemed 

necessary; 

(4) The integrity of the legal and 

patent professions; and 

(5) Any extenuating circumstances. 

§ 11.55 Appeal to the USPTO Director. 

(a) Within thirty days after the date of 

the initial decision of the hearing officer 

under §§ 11.25, or 11.54, either party 

may appeal to the USPTO Director. The 

appeal shall include the appellant’s 

brief. If more than one appeal is filed, 

the party who files the appeal first is the 

appellant for purpose of this rule. If 

appeals are filed on the same day, the 

respondent is the appellant. If an appeal 

is filed, then the OED Director shall 

transmit the entire record to the USPTO 

Director. Any cross-appeal shall be filed 

within fourteen days after the date of 

service of the appeal pursuant to 

§ 11.42, or thirty days after the date of 

the initial decision of the hearing 

officer, whichever is later. The crossappeal shall include the crossappellant’s brief. Any appellee or crossappellee brief must be filed within 

thirty days after the date of service 

pursuant to § 11.42 of an appeal or 

cross-appeal. Any reply brief must be 

filed within fourteen days after the date 

of service of any appellee or crossappellee brief. 

(b) An appeal or cross-appeal must 

include exceptions to the decisions of 

the hearing officer and supporting 

reasons for those exceptions. Any 

exception not raised will be deemed to 

have been waived and will be 

disregarded by the USPTO Director in 

reviewing the initial decision. 

(c) All briefs shall: 

(1) Be filed with the USPTO Director 

at the address set forth in § 1.1(a)(3)(ii) 

of this subchapter and served on the 

opposing party; 

(2) Include separate sections 

containing a concise statement of the 

disputed facts and disputed points of 

law; and 

(3) Be typed on 81⁄2 by 11-inch paper, 

and shall comply with Rule 32(a)(4)-(6) 

of the Federal Rules of Appellate 

Procedure. 

(d) An appellant’s, cross-appellant’s, 

appellee’s, and cross-appellee’s brief 

shall be no more than thirty pages in 

length, and comply with Rule 28(a)(2), 

(3), and (5) through (10) of the Federal 

Rules of Appellate Procedure. Any reply 

brief shall be no more than fifteen pages 

in length, and shall comply with Rule 

28(a)(2), (3), (8), and (9) of the Federal 

Rules of Appellate Procedure. 

(e) The USPTO Director may refuse 

entry of a nonconforming brief. 

(f) The USPTO Director will decide 

the appeal on the record made before 

the hearing officer. 

(g) Unless the USPTO Director 

permits, no further briefs or motions 

shall be filed. 

(h) The USPTO Director may order 

reopening of a disciplinary proceeding 

in accordance with the principles that 

govern the granting of new trials. Any 

request to reopen a disciplinary 

proceeding on the basis of newly 

discovered evidence must demonstrate 

that the newly discovered evidence 

could not have been discovered by due 

diligence. 

(i) In the absence of an appeal by the 

OED Director, failure by the respondent 

to appeal under the provisions of this 

section shall be deemed to be both 

acceptance by the respondent of the 

initial decision and waiver by the 

respondent of the right to further 

administrative or judicial review. 

§ 11.56 Decision of the USPTO Director. 

(a) The USPTO Director shall decide 

an appeal from an initial decision of the 

hearing officer. The USPTO Director 

may affirm, reverse, or modify the initial 

decision or remand the matter to the 

hearing officer for such further 

proceedings as the USPTO Director may 

deem appropriate. In making a final 

decision, the USPTO Director shall 

review the record or the portions of the 

record designated by the parties. The 

USPTO Director shall transmit a copy of 

the final decision to the OED Director 

and to the respondent. 

(b) A final decision of the USPTO 

Director may dismiss a disciplinary 

proceeding, reverse or modify the initial 

decision, reprimand a practitioner, or 

may suspend or exclude the practitioner 

from practice before the Office. A final 

decision suspending or excluding a 

practitioner shall require compliance 

with the provisions of § 11.58. The final 

decision may also condition the 

reinstatement of the practitioner upon a 

showing that the practitioner has taken 

steps to correct or mitigate the matter 

forming the basis of the action, or to 

prevent recurrence of the same or 

similar conduct. 

(c) The respondent or the OED 

Director may make a single request for 

reconsideration or modification of the 

decision by the USPTO Director if filed 

within twenty days from the date of 

entry of the decision. No request for 

reconsideration or modification shall be 

granted unless the request is based on 

newly discovered evidence or error of 

law or fact, and the requestor must 

demonstrate that any newly discovered 

evidence could not have been 

discovered any earlier by due diligence. 


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Such a request shall have the effect of 

staying the effective date of the order of 

discipline in the final decision. The 

decision by the USPTO Director is 

effective on its date of entry. 

§ 11.57 Review of final decision of the 

USPTO Director. 

(a) Review of the final decision by 

USPTO Director in a disciplinary case 

may be had, subject to § 11.55(d), by a 

petition filed in the United States 

District Court for the District of 

Columbia in accordance with the local 

rule of said court. 35 U.S.C. 32. The 

Respondent must serve the USPTO 

Director with the petition. Respondent 

must serve the petition in accordance 

with Rule 4 of the Federal Rules of Civil 

Procedure and § 104.2 of this Title. 

(b) Except as provided for in 

§ 11.56(c), an order for discipline in a 

final decision will not be stayed except 

on proof of exceptional circumstances. 

§ 11.58 Duties of disciplined or resigned 

practitioner. 

(a) An excluded, suspended or 

resigned practitioner shall not engage in 

any practice of patent, trademark and 

other non-patent law before the Office. 

An excluded, suspended or resigned 

practitioner will not be automatically 

reinstated at the end of his or her period 

of exclusion or suspension. An 

excluded, suspended or resigned 

practitioner must comply with the 

provisions of this section and §§ 11.12 

and 11.60 to be reinstated. Failure to 

comply with the provisions of this 

section may constitute both grounds for 

denying reinstatement or readmission; 

and cause for further action, including 

seeking further exclusion, suspension, 

and for revocation of any pending 

probation. 

(b) Unless otherwise ordered by the 

USPTO Director, any excluded, 

suspended or resigned practitioner 

shall: 

(1) Within thirty days after the date of 

entry of the order of exclusion, 

suspension, or acceptance of 

resignation: 

(i) File a notice of withdrawal as of 

the effective date of the exclusion, 

suspension or acceptance of resignation 

in each pending patent and trademark 

application, each pending 

reexamination and interference 

proceeding, and every other matter 

pending in the Office, together with a 

copy of the notices sent pursuant to 

paragraphs (b) and (c) of this section; 

(ii) Provide notice to all bars of which 

the practitioner is a member and all 

clients the practitioner represents 

having immediate or prospective 

business before the Office in patent, 

trademark and other non-patent matters 

of the order of exclusion, suspension or 

resignation and of the practitioner’s 

consequent inability to act as a 

practitioner after the effective date of 

the order; and that, if not represented by 

another practitioner, the client should 

act promptly to substitute another 

practitioner, or to seek legal advice 

elsewhere, calling attention to any 

urgency arising from the circumstances 

of the case; 

(iii) Provide notice to the 

practitioner(s) for all opposing parties 

(or, to the parties in the absence of a 

practitioner representing the parties) in 

matters pending before the Office of the 

practitioner’s exclusion, suspension or 

resignation and, that as a consequence, 

the practitioner is disqualified from 

acting as a practitioner regarding 

matters before the Office after the 

effective date of the suspension, 

exclusion or resignation, and state in the 

notice the mailing address of each client 

of the excluded, suspended or resigned 

practitioner who is a party in the 

pending matter; 

(iv) Deliver to all clients having 

immediate or prospective business 

before the Office in patent, trademark or 

other non-patent matters any papers or 

other property to which the clients are 

entitled, or shall notify the clients and 

any co-practitioner of a suitable time 

and place where the papers and other 

property may be obtained, calling 

attention to any urgency for obtaining 

the papers or other property; 

(v) Relinquish to the client, or other 

practitioner designated by the client, all 

funds for practice before the Office, 

including any legal fees paid in advance 

that have not been earned and any 

advanced costs not expended; 

(vi) Take any necessary and 

appropriate steps to remove from any 

telephone, legal, or other directory any 

advertisement, statement, or 

representation which would reasonably 

suggest that the practitioner is 

authorized to practice patent, 

trademark, or other non-patent law 

before the Office; and 

(vii) Serve all notices required by 

paragraphs (b)(1)(ii) and (b)(1)(iii) of this 

section by certified mail, return receipt 

requested, unless mailed abroad. If 

mailed abroad, all notices shall be 

served with a receipt to be signed and 

returned to the practitioner. 

(2) Within forty-five days after entry 

of the order of suspension, exclusion, or 

of acceptance of resignation, the 

practitioner shall file with the OED 

Director an affidavit of compliance 

certifying that the practitioner has fully 

complied with the provisions of the 

order, this section, and with the 

imperative USPTO Rules of Professional 

Conduct for withdrawal from 

representation. Appended to the 

affidavit of compliance shall be: 

(i) A copy of each form of notice, the 

names and addressees of the clients, 

practitioners, courts, and agencies to 

which notices were sent, and all return 

receipts or returned mail received up to 

the date of the affidavit. Supplemental 

affidavits shall be filed covering 

subsequent return receipts and returned 

mail. Such names and addresses of 

clients shall remain confidential unless 

otherwise ordered by the USPTO 

Director; 

(ii) A schedule showing the location, 

title and account number of every bank 

account designated as a client or trust 

account, deposit account in the Office, 

or other fiduciary account, and of every 

account in which the practitioner holds 

or held as of the entry date of the order 

any client, trust, or fiduciary funds for 

practice before the Office; 

(iii) A schedule describing the 

practitioner’s disposition of all client 

and fiduciary funds for practice before 

the Office in the practitioner’s 

possession, custody or control as of the 

date of the order or thereafter; 

(iv) Such proof of the proper 

distribution of said funds and the 

closing of such accounts as has been 

requested by the OED Director, 

including copies of checks and other 

instruments; 

(v) A list of all other State, Federal, 

and administrative jurisdictions to 

which the practitioner is admitted to 

practice; and 

(vi) An affidavit describing the precise 

nature of the steps taken to remove from 

any telephone, legal, or other directory 

any advertisement, statement, or 

representation which would reasonably 

suggest that the practitioner is 

authorized to practice patent, 

trademark, or other non-patent law 

before the Office. The affidavit shall also 

state the residence or other address of 

the practitioner to which 

communications may thereafter be 

directed, and list all State and Federal 

jurisdictions, and administrative 

agencies to which the practitioner is 

admitted to practice. The OED Director 

may require such additional proof as is 

deemed necessary. In addition, for the 

period of discipline, an excluded or 

suspended practitioner shall continue to 

file a statement in accordance with 

§ 11.11(a), regarding any change of 

residence or other address to which 

communications may thereafter be 

directed, so that the excluded or 

suspended practitioner may be located 

if a grievance is received regarding any 

conduct occurring before or after the 


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exclusion or suspension. The 

practitioner shall retain copies of all 

notices sent and shall maintain 

complete records of the steps taken to 

comply with the notice requirements. 

(3) Not hold himself or herself out as 

authorized to practice law before the 

Office. 

(4) Not advertise the practitioner’s 

availability or ability to perform or 

render legal services for any person 

having immediate or prospective 

business before the Office. 

(5) Not render legal advice or services 

to any person having immediate or 

prospective business before the Office as 

to that business. 

(6) Promptly take steps to change any 

sign identifying a practitioner’s or the 

practitioner’s firm’s office and 

practitioner’s or the practitioner’s firm’s 

stationery to delete therefrom any 

advertisement, statement, or 

representation which would reasonably 

suggest that the practitioner is 

authorized to practice law before the 

Office. 

(c) An excluded, suspended or 

resigned practitioner, after entry of the 

order of exclusion or suspension, or 

acceptance of resignation, shall not 

accept any new retainer regarding 

immediate or prospective business 

before the Office, or engage as a 

practitioner for another in any new case 

or legal matter regarding practice before 

the Office. The excluded, suspended or 

resigned practitioner shall be granted 

limited recognition for a period of thirty 

days. During the thirty-day period of 

limited recognition, the excluded, 

suspended or resigned practitioner shall 

conclude work on behalf of a client on 

any matters that were pending before 

the Office on the date of entry of the 

order of exclusion or suspension, or 

acceptance of resignation. If such work 

cannot be concluded, the excluded, 

suspended or resigned practitioner shall 

so advise the client so that the client 

may make other arrangements. 

(d) Required records. An excluded, 

suspended or resigned practitioner shall 

keep and maintain records of the 

various steps taken under this section, 

so that in any subsequent proceeding 

proof of compliance with this section 

and with the exclusion or suspension 

order will be available. The OED 

Director will require the practitioner to 

submit such proof as a condition 

precedent to the granting of any petition 

for reinstatement. 

(e) An excluded, suspended or 

resigned practitioner who aids another 

practitioner in any way in the other 

practitioner’s practice of law before the 

Office, may, under the direct 

supervision of the other practitioner, act 

as a paralegal for the other practitioner 

or perform other services for the other 

practitioner which are normally 

performed by laypersons, provided: 

(1) The excluded, suspended or 

resigned practitioner is a salaried 

employee of: 

(i) The other practitioner; 

(ii) The other practitioner’s law firm; 

or 

(iii) A client-employer who employs 

the other practitioner as a salaried 

employee; 

(2) The other practitioner assumes full 

professional responsibility to any client 

and the Office for any work performed 

by the excluded, suspended or resigned 

practitioner for the other practitioner; 

(3) The excluded, suspended or 

resigned practitioner does not: 

(i) Communicate directly in writing, 

orally, or otherwise with a client of the 

other practitioner in regard to any 

immediate or prospective business 

before the Office; 

(ii) Render any legal advice or any 

legal services to a client of the other 

practitioner in regard to any immediate 

or prospective business before the 

Office; or 

(iii) Meet in person or in the presence 

of the other practitioner in regard to any 

immediate or prospective business 

before the Office, with: 

(A) Any Office employee in 

connection with the prosecution of any 

patent, trademark, or other case; 

(B) Any client of the other 

practitioner, the other practitioner’s law 

firm, or the client-employer of the other 

practitioner; or 

(C) Any witness or potential witness 

whom the other practitioner, the other 

practitioner’s law firm, or the other 

practitioner’s client-employer may or 

intends to call as a witness in any 

proceeding before the Office. The term 

‘‘witness’’ includes individuals who 

will testify orally in a proceeding before, 

or sign an affidavit or any other 

document to be filed in, the Office. 

(f) When an excluded, suspended or 

resigned practitioner acts as a paralegal 

or performs services under paragraph (c) 

of this section, the practitioner shall not 

thereafter be reinstated to practice 

before the Office unless: 

(1) The practitioner shall have filed 

with the OED Director an affidavit 

which: 

(i) Explains in detail the precise 

nature of all paralegal or other services 

performed by the excluded, suspended 

or resigned practitioner, and 

(ii) Shows by clear and convincing 

evidence that the excluded, suspended 

or resigned practitioner has complied 

with the provisions of this section and 

all imperative USPTO Rules of 

Professional Conduct; and 

(2) The other practitioner shall have 

filed with the OED Director a written 

statement which: 

(i) Shows that the other practitioner 

has read the affidavit required by 

paragraph (d)(1) of this section and that 

the other practitioner believes every 

statement in the affidavit to be true, and 

(ii) States why the other practitioner 

believes that the excluded, suspended 

or resigned practitioner has complied 

with paragraph (c) of this section. 

§ 11.59 Dissemination of disciplinary and 

other information. 

(a) The OED Director shall inform the 

public of the disposition of each matter 

in which public discipline has been 

imposed, and of any other changes in a 

practitioner’s registration status. Public 

discipline includes exclusion, as well as 

exclusion on consent; suspension; and 

public reprimand. Unless otherwise 

ordered by the USPTO Director, the 

OED Director shall give notice of public 

discipline and the reasons for the 

discipline to disciplinary enforcement 

agencies in the State where the 

practitioner is admitted practice, to 

courts where the practitioner is known 

to be admitted, and the public. If public 

discipline is imposed, the OED Director 

shall cause a final decision of the 

USPTO Director to be published. Final 

decisions of the USPTO Director 

include default judgments. See 

§ 11.54(a)(2). If a private reprimand is 

imposed, the OED Director shall cause 

a redacted version of the final decision 

to be published. 

(b) Records available to the public. 

Unless the USPTO Director orders that 

the proceeding or a portion of the record 

be kept confidential, the OED Director’s 

records of every disciplinary proceeding 

where a practitioner is reprimanded, 

suspended, or excluded, including 

when said sanction is imposed by 

default judgment, shall be made 

available to the public upon written 

request, except that information may be 

withheld as necessary to protect the 

privacy of third parties. The record of a 

proceeding that results in a 

practitioner’s transfer to disability 

inactive status shall not be available to 

the public. 

(c) Access to records of exclusion by 

consent. The order excluding a 

practitioner on consent under § 11.27 

shall be available to the public. 

However, the affidavit required under 

paragraph (a) of § 11.27 shall not be 

available to the public or made available 

for use in any other proceeding except 

by order of the USPTO Director or upon 

written consent of the practitioner. 


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§ 11.60 Petition for reinstatement. 

(a) Restrictions on reinstatement. An 

excluded, suspended or resigned 

practitioner shall not resume practice of 

patent, trademark, or other non-patent 

law before the Office until reinstated by 

order of the OED Director or the USPTO 

Director. 

(b) Petition for reinstatement. An 

excluded or suspended practitioner 

shall be eligible to apply for 

reinstatement only upon expiration of 

the period of suspension or exclusion 

and the practitioner’s full compliance 

with § 11.58. An excluded practitioner 

shall be eligible to apply for 

reinstatement no earlier than at least 

five years from the effective date of the 

exclusion. A resigned practitioner shall 

be eligible to petition for reinstatement 

and must show compliance with § 11.58 

no earlier than at least five years from 

the date the practitioner’s resignation is 

accepted and an order is entered 

excluding the practitioner on consent. 

(c) Review of reinstatement petition. 

An excluded, suspended or resigned 

practitioner shall file a petition for 

reinstatement accompanied by the fee 

required by § 1.21(a)(10) of this 

subchapter. The petition for 

reinstatement shall be filed with the 

OED Director. An excluded or 

suspended practitioner who has 

violated any provision of § 11.58 shall 

not be eligible for reinstatement until a 

continuous period of the time in 

compliance with § 11.58 that is equal to 

the period of suspension or exclusion 

has elapsed. A resigned practitioner 

shall not be eligible for reinstatement 

until compliance with § 11.58 is shown. 

If the excluded, suspended or resigned 

practitioner is not eligible for 

reinstatement, or if the OED Director 

determines that the petition is 

insufficient or defective on its face, the 

OED Director may dismiss the petition. 

Otherwise the OED Director shall 

consider the petition for reinstatement. 

The excluded, suspended or resigned 

practitioner seeking reinstatement shall 

have the burden of proof by clear and 

convincing evidence. Such proof shall 

be included in or accompany the 

petition, and shall establish: 

(1) That the excluded, suspended or 

resigned practitioner has the good moral 

character and reputation, competency, 

and learning in law required under 

§ 11.7 for admission; 

(2) That the resumption of practice 

before the Office will not be detrimental 

to the administration of justice or 

subversive to the public interest; and 

(3) That the suspended practitioner 

has complied with the provisions of 

§ 11.58 for the full period of suspension, 

that the excluded practitioner has 

complied with the provisions of § 11.58 

for at least five continuous years, or that 

the resigned practitioner has complied 

with § 11.58 upon acceptance of the 

resignation. 

(d) Petitions for reinstatement—

Action by the OED Director granting 

reinstatement. (1) If the excluded, 

suspended or resigned practitioner is 

found to have complied with paragraphs 

(c)(1) through (c)(3) of this section, the 

OED Director shall enter an order of 

reinstatement, which shall be 

conditioned on payment of the costs of 

the disciplinary proceeding to the extent 

set forth in paragraphs (2) and (3) below. 

(2) Payment of costs of disciplinary 

proceedings. Prior to reinstatement to 

practice, the excluded or suspended 

practitioner shall pay the costs of the 

disciplinary proceeding. The costs 

imposed pursuant to this section 

include all of the following: 

(i) The actual expense incurred by the 

OED Director or the Office for the 

original and copies of any reporter’s 

transcripts of the disciplinary 

proceeding, and any fee paid for the 

services of the reporter; 

(ii) All expenses paid by the OED 

Director or the Office which would 

qualify as taxable costs recoverable in 

civil proceedings; and 

(iii) The charges determined by the 

OED Director to be ‘‘reasonable costs’’ of 

investigation, hearing, and review. 

These amounts shall serve to defray the 

costs, other than fees for services of 

attorneys and experts, of the Office of 

Enrollment and Discipline in the 

preparation or hearing of the 

disciplinary proceeding, and costs 

incurred in the administrative 

processing of the disciplinary 

proceeding. 

(3) An excluded or suspended 

practitioner may be granted relief, in 

whole or in part, only from an order 

assessing costs under this section or 

may be granted an extension of time to 

pay these costs, in the discretion of the 

OED Director, upon grounds of 

hardship, special circumstances, or 

other good cause. 

(e) Petitions for reinstatement—Action 

by the OED Director denying 

reinstatement. If the excluded, 

suspended or resigned practitioner is 

found unfit to resume the practice of 

patent law before the Office, the OED 

Director shall first provide the excluded, 

suspended or resigned practitioner with 

an opportunity to show cause in writing 

why the petition should not be denied. 

Failure to comply with § 11.12(c) shall 

constitute unfitness. If unpersuaded by 

the showing, the OED Director shall 

deny the petition. The OED Director 

may require the excluded, suspended or 

resigned practitioner, in meeting the 

requirements of § 11.7, to take and pass 

an examination under § 11.7(b), ethics 

courses, and/or the Multistate 

Professional Responsibility 

Examination. The OED Director shall 

provide findings, together with the 

record. The findings shall include on 

the first page, immediately beneath the 

caption of the case, a separate section 

entitled ‘‘Prior Proceedings’’ which 

shall state the docket number of the 

original disciplinary proceeding in 

which the exclusion or suspension was 

ordered. 

(f) Resubmission of petitions for 

reinstatement. If a petition for 

reinstatement is denied, no further 

petition for reinstatement may be filed 

until the expiration of at least one year 

following the denial unless the order of 

denial provides otherwise. 

(g) Reinstatement proceedings open to 

public. Proceedings on any petition for 

reinstatement shall be open to the 

public. Before reinstating any excluded 

or suspended practitioner, the OED 

Director shall publish in the Official 

Gazette a notice of the excluded or 

suspended practitioner’s petition for 

reinstatement and shall permit the 

public a reasonable opportunity to 

comment or submit evidence with 

respect to the petition for reinstatement. 

§ 11.61 Savings clause. 

(a) A disciplinary proceeding based 

on conduct engaged in prior to the 

effective date of these regulations may 

be instituted subsequent to such 

effective date, if such conduct would 

continue to justify suspension or 

exclusion under the provisions of this 

part. 

(b) No practitioner shall be subject to 

a disciplinary proceeding under this 

part based on conduct engaged in before 

the effective date hereof if such conduct 

would not have been subject to 

disciplinary action before such effective 

date. 

(c) Sections 11.24, 11.25, 11.28 and 

11.34 through 11.57 shall apply to all 

proceedings in which the complaint is 

filed on or after the effective date of 

these regulations. Section 11.26 and 

11.27 shall apply to matters pending on 

or after the effective date of these 

regulations. 

(d) Sections 11.58 through 11.60 shall 

apply to all cases in which an order of 

suspension or exclusion is entered or 

resignation is accepted on or after the 

effective date of these regulations. 


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9220 Federal Register / Vol. 72, No. 39 / Wednesday, February 28, 2007 / Proposed Rules 

§ 11.62–11.99 [Reserved] 

Dated: February 5, 2007. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 07–800 Filed 2–27–07; 8:45 am] 

BILLING CODE 3510–16–P 


jlentini on PROD1PC65 with PROPOSAL2