[Federal Register Volume 72, Number 39 (Wednesday, February 28, 2007)]
[Proposed Rules]
[Pages 9196-9220]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 07-800]



[[Page 9195]]

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Part III





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 11



Changes to Representation of Others Before the United States Patent and



Trademark Office; Proposed Rule

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

[[Page 9196]]


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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.

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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 fifty-seven 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: 
<a href="/cdn-cgi/l/email-protection#0663726e6f657574736a63752865696b6b6368727546737576726928616970"><span class="__cf_email__" data-cfemail="3257465a5b514140475e57411c515d5f5f575c464172474142465d1c555d44">[email protected]</span></a>. Comments may also be submitted by mail 
addressed to: Mail Stop OED-Ethics Rules, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 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, Sec.  11.8, and continuing legal 
education. For example, Sec. Sec.  11.8(d), 11.12, and 11.13 are 
directly dependent on development of the systems, whereas Sec.  
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
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                Section                  Part 10 and Part 11 concordance
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11.1...................................  New definition of State.

[[Page 9197]]

 
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.
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 fifty-seven 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 Sec.  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.

[[Page 9198]]

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 Sec.  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 Sec.  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 Sec.  11.5 
adopted in the final rules on July 26, 2004, would be renumbered as 
Sec.  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 Sec.  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 Sec.  
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 
Sec.  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 non-practitioners 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

[[Page 9199]]

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 Sec.  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, Sec.  11.16 would be reserved. 
Requests for financial records during investigations are addressed 
infra under Sec.  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 Sec.  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 Sec.  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 Sec.  11.18(b). Commentators urged that the Office has no 
authority to impose monetary sanctions for violations of Sec.  
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 Sec.  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 Sec.  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 Sec.  
11.19 no longer includes ``other individuals'' within the disciplinary 
jurisdiction of the Office.
    Proposed Sec.  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 Sec.  
11.1, which is in the final rules adopted on July 26, 2004. It is 
believed that the first paragraph of Sec.  11.1 sets forth in a manner 
superior to proposed rule Sec.  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 Sec.  11.19. 
As revised, Sec.  11.19(b) sets forth five grounds for discipline. 
Although Sec.  11.804 is not included in this notice, it is anticipated 
that Sec.  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

[[Page 9200]]

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 Sec.  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 Sec.  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, Sec.  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 Sec.  11.22(f).
    As discussed above, proposed Sec.  11.16, regarding financial books 
and records, has been withdrawn. Nevertheless, the OED Director may 
still request such information pursuant to revised proposed Sec.  
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 
Sec.  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 non-grieving 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

[[Page 9201]]

that good cause exists to believe that the possible ground for 
discipline alleged has occurred with respect to non-grieving 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 Sec.  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 Sec.  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 Sec.  554(a). The provision of Sec.  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 
Sec.  32 triggers Sec. Sec.  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 Sec.  
11.44. Current Sec.  10.144 and revised proposed Sec.  11.44 provide 
for conducting disciplinary proceedings before the administrative law 
judge or hearing officer pursuant to Sec.  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 Sec. Sec.  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 Sec. Sec.  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 Sec.  
11.24(d)(2), if the USPTO Director determines that any of the elements 
of Sec. Sec.  11.24(d)(1)(i)

[[Page 9202]]

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 Sec.  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 Sec.  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 Sec.  11.58.
    Reinstatement following reciprocal discipline is addressed in Sec.  
11.24(g). A practitioner could petition for reinstatement under 
conditions set forth in Sec.  11.60 no sooner than completion of the 
period of reciprocal discipline imposed, and compliance with all 
provisions of Sec.  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 Sec.  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 
Sec.  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 Sec.  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 Sec.  11.34 predicated upon the conviction. The OED 
Director would request issuance of a notice and order set forth in 
Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  
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 Sec.  
11.25(b)(3)(i). Interim suspension may be terminated in the interest of 
justice upon a showing of extraordinary circumstances. See Sec.  
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 Sec.  11.55. See 
Sec.  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 Sec.  
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 Sec.  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 Sec.  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 Sec.  11.22(b).
    Section 11.28: The provisions in Sec.  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 non-disciplinary instances. Instead, a practitioner may 
move to have the proceeding held in abeyance because of a current 
disability or addiction. See Sec.  11.28(a). If the practitioner's 
motion is granted, the practitioner will be transferred to disability 
inactive status

[[Page 9203]]

and precluded from practicing before the Office. See Sec.  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 Sec. Sec.  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 Sec.  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 Sec.  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 Sec.  
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 Sec.  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

[[Page 9204]]

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 Sec.  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 
Sec.  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 Sec.  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 Sec.  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 Sec.  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 
Sec.  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 Sec. Sec.  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

[[Page 9205]]

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 
for-profit, 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 
for-profit, 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

[[Page 9206]]

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:


Sec.  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:


Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  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:


Sec.  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:


Sec.  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

[[Page 9207]]

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:


Sec.  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 non-patent 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 Sec.  
1.21(a)(1)(i) of this subchapter.


Sec.  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.


Sec.  11.16-11.17  [Reserved]


Sec.  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 
Sec.  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 non-practitioner, 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

[[Page 9208]]

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]


Sec.  11.19  Disciplinary jurisdiction.

    (a) All practitioners engaged in practice before the Office; all 
practitioners administratively suspended under Sec.  11.11(b); all 
practitioners registered to practice before the Office in patent cases; 
all practitioners inactivated under Sec.  11.11(c); all practitioners 
authorized under Sec.  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 Sec.  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 Sec.  11.8.
    (c) Petitions to disqualify a practitioner in ex parte or inter 
partes matters in the Office are not governed by Sec. Sec.  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).


Sec.  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

[[Page 9209]]

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.


Sec.  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.


Sec.  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 Sec.  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 Sec. Sec.  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.


Sec.  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 Sec.  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.


Sec.  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 
Sec.  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 Sec.  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

[[Page 9210]]

    (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 Sec.  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 Sec.  11.58.
    (g) Reinstatement following reciprocal discipline proceeding. A 
practitioner may petition for reinstatement under conditions set forth 
in Sec.  11.60 no sooner than completion of the period of reciprocal 
discipline imposed, and compliance with all provisions of Sec.  11.58.


Sec.  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 Sec.  
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 Sec.  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 Sec.  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

[[Page 9211]]

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 Sec.  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 Sec.  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 Sec.  11.58.


Sec.  11.26  Settlement.

    Before or after a complaint under Sec.  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.


Sec.  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 Sec.  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 Sec.  11.58.
    (c) When an affidavit under paragraph (a) of this section is 
received after a complaint under Sec.  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 Sec.  
11.58, and apply for reinstatement in accordance with Sec.  11.60. 
Failure to comply with the provisions of Sec.  11.58 constitutes 
grounds for denying an application for reinstatement.


Sec.  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 
Sec.  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 Sec.  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;

[[Page 9212]]

    (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 non-patent 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 Sec.  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 self-alleged 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.


Sec. Sec.  11.29-11.31  [Reserved]


Sec.  11.32  Initiating a disciplinary proceeding.

    If after conducting an investigation under Sec.  11.22(a) the OED 
Director is of the opinion that grounds exist for discipline under 
Sec.  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 Sec.  
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 Sec.  11.19(b)(3)-(5), the OED Director 
shall institute a disciplinary proceeding by filing a complaint under 
Sec.  11.34.


Sec.  11.33  [Reserved]


Sec.  11.34  Complaint.

    (a) A complaint instituting a disciplinary proceeding under Sec.  
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.


Sec.  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

[[Page 9213]]

ability to confirm delivery or attempted delivery to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec.  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 Sec.  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 Sec.  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 Sec.  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.


Sec.  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.


Sec.  11.37  [Reserved]


Sec.  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.


Sec.  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 Sec. Sec.  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 Sec.  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

[[Page 9214]]

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.


Sec.  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 
Sec.  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.


Sec.  11.41  Filing of papers.

    (a) The provisions of Sec. Sec.  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.


Sec.  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 Sec.  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.


Sec.  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.


Sec.  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

[[Page 9215]]

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 Sec.  11.59(b) the record of the entire disciplinary 
proceeding, including any settlement agreement, will be available for 
public inspection.


Sec.  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.


Sec. Sec.  11.46-11.48  [Reserved]


Sec.  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.


Sec.  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 Sec.  
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.


Sec.  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.


Sec.  11.52  Discovery.

Discovery shall not be authorized except as follows:
    (a) After an answer is filed under Sec.  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 (Sec.  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;

[[Page 9216]]

    (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.


Sec.  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.


Sec.  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.


Sec.  11.55  Appeal to the USPTO Director.

    (a) Within thirty days after the date of the initial decision of 
the hearing officer under Sec. Sec.  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 Sec.  11.42, or 
thirty days after the date of the initial decision of the hearing 
officer, whichever is later. The cross-appeal shall include the cross-
appellant's brief. Any appellee or cross-appellee brief must be filed 
within thirty days after the date of service pursuant to Sec.  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 cross-
appellee 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 
Sec.  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 8\1/2\ 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.


Sec.  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 Sec.  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.

[[Page 9217]]

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.


Sec.  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 Sec.  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 Sec.  104.2 of this Title.
    (b) Except as provided for in Sec.  11.56(c), an order for 
discipline in a final decision will not be stayed except on proof of 
exceptional circumstances.


Sec.  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 
Sec. Sec.  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 Sec.  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

[[Page 9218]]

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.


Sec.  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 Sec.  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 Sec.  11.27 shall be available to the 
public. However, the affidavit required under paragraph (a) of Sec.  
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.

[[Page 9219]]

Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  11.58 shall not be eligible for reinstatement until 
a continuous period of the time in compliance with Sec.  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 Sec.  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 Sec.  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 Sec.  11.58 for the full period of suspension, that the 
excluded practitioner has complied with the provisions of Sec.  11.58 
for at least five continuous years, or that the resigned practitioner 
has complied with Sec.  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 Sec.  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 Sec.  11.7, to take and pass an examination under Sec.  
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.


Sec.  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.

[[Page 9220]]

Sec.  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


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