47650 Federal Register / Vol. 73, No. 158 / Thursday, August 14, 2008 / Rules and Regulations 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1, 2, 7, 10, 11, and 41 

[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: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is adopting 

new rules governing the conduct of 

disciplinary investigations, issuing 

warnings when closing such 

investigations, disciplinary proceedings, 

non-disciplinary transfer to disability 

inactive status and reinstatement to 

practice before the Office. The Office is 

adopting a new rule regarding 

recognition to practice before the Office 

in trademark cases. The Office also is 

adopting a new rule to address a 

practitioner’s signature and certificate 

for correspondence filed in the Office. 

These changes will enable the Office to 

better protect the public from 

practitioners who do not comply with 

the Office’s ethics rules and from 

incapacitated practitioners. 

DATES: Effective Date: September 15, 

2008. 

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: Congress 

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. 

On December 12, 2003, the Office 

published Changes to Representation of 

Others Before the United States Patent 

and Trademark Office, a Notice of 

Proposed Rule Making in the Federal 

Register (68 FR 69441), 1278 Off. Gaz. 

Pat. Office 22 (Jan. 6, 2004) proposing to 

amend 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, disciplinary proceedings, 

issuing warnings, disciplinary 

proceedings, reinstatement, recognition 

to practice before the Office in 

trademark cases, and a practitioner’s 

signature and certificate for 

correspondence filed in the Office— 

principally rules 11.2, 11.3, 11.5, and 

11.14 through 11.61. One hundred sixtythree written comments were received. 

After reviewing the written comments, 

the Office decided to revise a number of 

the rules published in the December 12, 

2003 Notice. The Office published 

Changes to Representation of Others 

Before the United States Patent and 

Trademark Office, a Supplemental 

Notice of Proposed Rule Making 

(SNPR), on February 28, 2007, in the 

Federal Register (72 FR 9196), 1316 Off. 

Gaz. Pat. Office 123 (Mar. 27, 2007) 

regarding rules 11.1, 11.2, 11.3, 11.5, 

and 11.14 through 11.61 and requested 

additional comments on those revised 

proposed rules. The Office received 

fifteen comments from professional and 

intellectual property organizations, law 

firms, individual practitioners and 

members of the public. Many of the 

revised proposed rules were similar to 

the approach of the current regulations. 

Other revised 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. Following 

receipt and consideration of the 

comments, provisions included in the 

December 12, 2003 Notice regarding 

enrollment were adopted in final rules 

on July 26, 2004. See Changes to 

Representation of Others Before the 

United States Patent and Trademark 

Office, Final Rule, published in the 

Federal Register, 69 FR 35428 (June 24, 

2004), 1288 Off. Gaz. Pat. Office 109 

(November 16, 2004). Comments on 

proposed changes to the substantive 

ethics rules remain under consideration 

by the Office, and it is expected that the 

ethics rules will be the subject of a later, 

separate notice. 

In addition, several rules proposed in 

the December 12, 2003 Notice are 

directly or indirectly dependent on the 

development of electronic systems to 

implement rules governing annual fees, 

§ 11.8, and continuing legal education, 

§§ 11.12 and 11.13. For example, 

proposed §§ 11.8(d), 11.12 and 11.13 are 

directly dependent on development of 

the systems, whereas proposed 

§ 11.11(b) through 11.11(f) are 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 rules below do not 

refer to §§ 11.8(d), 11.11(b) through 

11.11(f), 11.12 and 11.13. 

The primary purposes for adopting 

procedures for disciplining practitioners 

who fail to conform to adopted 

standards and non-disciplinary 

procedures for transferring practitioners 

to disability inactive status include 

affording practitioners due process, 

protecting the public, preserving the 

integrity of the Office, and maintaining 

high professional standards. 

These final rules will be applied only 

prospectively, not retroactively. In 

implementing the foregoing, with 

respect to investigations, the rules will 

be applied to the future actions in 

pending investigations and in 

investigations commencing on or after 

the effective date of the final rules. With 

respect to disciplinary proceedings that 

have already been commenced by filing 

a complaint under 37 CFR 10.134 before 

the effective date of the final rules, the 

final rules will not apply. Instead, these 

disciplinary proceedings will continue 

under the rules in effect on the date the 

complaint under § 10.134 was filed. 

With regard to disciplinary proceedings 


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commenced after the effective date of 

the rules, the final rules will apply. 

With regard to § 11.5, the final rule will 

be applied only prospectively to 

assignments and licenses written on or 

after the effective date of the final rules. 

Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Parts 1, 2, 7, 11 and 41, are 

revised by amending §§ 1.4, 1.8, 1.9, 2.2, 

2.11, 2.17, 2.18, 2.19, 2.24, 2.33, 2.101, 

2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 

2.193, 7.25, 7.37, 11.1, 11.2, 11.3, 11.5 

and 41.5, and adding §§ 11.14 through 

11.99 as follows: 

Sections 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 

2.18, 2.19, 2.24, 2.33, 2.101, 2.102, 

2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 

7.25, 7.37: Sections 1.4(d)(3), 

1.4(d)(4)(i), 1.4(d)(4)(ii)(C), 

1.8(a)(2)(iii)(A), 1.9(j), 2.2(c), 2.11, 

2.17(a)–(c), 2.18(a), 2.19(b), 2.24, 

2.33(a)(3), 2.101(b), 2.102(a), 2.105(b)(1) 

and (c)(1), 2.111(b), 2.113 (b)(1), 

2.119(d), 2.161(b)(3), 2.193(c)(2), 7.25(a) 

and 7.37(b)(3) are revised to change or 

add an appropriate cross-reference to 

Part 11 or change a cross-reference to an 

appropriate section in Part 11. 

Section 11.1: The definitions of 

‘‘disqualified,’’ ‘‘Federal agency,’’

‘‘Federal program’’ and ‘‘Serious Crime’’

are added to the definitions, and the 

definitions of ‘‘attorney or lawyer’’ and 

‘‘State’’ are revised. ‘‘Disqualified,’’

which appears in § 11.24, 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. ‘‘Federal 

program’’ is defined as meaning any 

program established by an Act of 

Congress or administered by a Federal 

agency and ‘‘Federal agency’’ is defined 

as meaning any authority of the 

executive branch of the Government of 

the United States. 

The definition of ‘‘attorney or lawyer’’

is revised to correct an error. The Office 

published a final rule in the Federal 

Register of June 24, 2004 (69 FR 34428) 

entitled ‘‘Changes to Representation of 

Others Before the United States Patent 

and Trademark Office.’’ In that final 

rule, there was an inadvertent omission 

of the word ‘‘not’’ preceding the term 

‘‘under’’ in the first sentence of the 

definition of ‘‘attorney or lawyer’’ in 

§ 11.1. An attorney or lawyer in good 

standing with the highest court of a 

State should not also be ‘‘under an order 

of any court or Federal agency 

suspending, enjoining, restraining, 

disbarring or otherwise restricting the 

attorney from practice before the bar of 

another State or Federal agency.’’ The 

definition is corrected by inserting 

‘‘not’’ before ‘‘under’’ in the first 

sentence. 

The definition of state is revised to 

clarify that state includes 

Commonwealths and territories of the 

United States, as well as the fifty states 

and the District of Columbia. Thus, the 

‘‘court of * * * any State’’ in § 11.25(a) 

would include any courts of the fifty 

states, the District of Columbia, and 

Commonwealths and territories of the 

United States. 

Section 11.2: Section 11.2 provides 

for the appointment and duties of the 

Director of Enrollment and Discipline 

(OED Director), as well as petitions for 

review of decisions of the OED Director. 

Section 11.2(a) is revised to delete 

provisions for appointment of an OED 

Director in the event the OED Director 

is absent or recuses himself or herself 

from a case, as provision for these 

circumstances by rule is believed to be 

unnecessary. 

Section 11.2(b)(4) is revised to 

provide for conducting investigations of 

matters involving possible grounds for 

discipline of practitioners. Except in 

matters meriting summary dismissal, 

the OED Director will afford an accused 

practitioner an opportunity to respond 

to a reasonable inquiry before a 

disposition is recommended or 

undertaken. Section 11.2(b)(5) is added 

to include among the OED Director’s 

duties the initiation of a disciplinary 

proceeding and performance of such 

other duties in connection with 

investigations and disciplinary 

proceedings as may be necessary, 

provided the consent of a panel of three 

members of the Committee on 

Discipline is first obtained when 

required. Section 11.2(b)(6) is added to 

provide among the OED Director’s 

duties oversight of the preliminary 

screening of information and closing 

investigations as provided for in § 11.22. 

The titles of §§ 11.2(c) and 11.2(d) are 

revised to limit the petition provisions 

of these subsections to matters 

‘‘regarding enrollment or recognition.’’

Section 11.2(c) is revised to provide that 

a petition to the OED Director be 

accompanied by payment of the fee set 

forth in § 1.21(a)(5)(i). A sentence in 

§ 11.2(d) proposed in December 2003 

providing that ‘‘[a] decision dismissing 

a complaint or closing an investigation 

is not subject to review by petition’’ has 

been deleted from § 11.2(d). 

Section 11.2(d) also is revised to 

provide that a petition under this 

section must be accompanied by the fee 

set forth in § 1.21(a)(5)(ii), that a petition 

not filed within thirty days may be 

dismissed as untimely, that briefs and 

supporting memoranda must 

accompany the petition, and that an oral 

hearing will not be granted except when 

considered necessary by the USPTO 

Director. 

Section 11.2(e) is added to provide for 

filing a petition to invoke supervisory 

authority of the USPTO Director in 

disciplinary matters in appropriate 

circumstances. For example, a person 

dissatisfied with a decision dismissing a 

grievance or closing an investigation 

may petition the USPTO Director to 

exercise supervisory authority over the 

OED Director. The procedure in 

subsection (e) is comparable to the 

supervisory review procedure in § 1.181 

and assures supervisory review when 

appropriate. No fee is required for a 

petition to invoke the supervisory 

authority of the USPTO Director in 

disciplinary matters. 

A petition under § 11.2(e) must 

contain a statement of the facts involved 

and the point or points to be reviewed 

and the action requested. Briefs or 

memoranda 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 

filing of a petition will not stay an 

investigation, disciplinary proceeding or 

other proceedings. The petition may be 

dismissed as untimely if it is not filed 

within thirty days of the mailing date of 

the action or notice from which relief is 

requested. 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. 

Section 11.3: Section 11.3(a), which 

provides for suspension of rules, in 

essence, continues the provisions of 

former § 10.170 that could be applied to 

regulations addressing procedures. For 

example, the provisions of this section 

may be invoked by an applicant for 

registration to waive the sixty-day 

period set in § 11.7 for completing an 

application for registration where events 

beyond applicant’s control, such as a 

flood or fire, prevented applicant from 

supplying information to complete an 

application. The inclusion of § 11.3(a) 

should not be construed as an 

indication that there could ever be any 

extraordinary situation when justice 

requires waiver of a disciplinary rule. 

Section 11.3(b) is added to provide 

that no petition under this section may 

stay a disciplinary proceeding unless 

ordered by the USPTO Director or a 

hearing officer. 


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Section 11.5: The sole paragraph of 

§ 11.5 is renumbered as § 11.5(a). 

Section 11.5(a) substantially continues 

the provisions of § 11.5, except that 

‘‘applications’’ has been changed to 

‘‘matters’’ at the end of the first 

sentence. 

Subsection 11.5(b) is added to define 

practice before the Office as including a 

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. The section 

provides that nothing in § 11.5 prohibits 

a practitioner from employing or 

retaining non-practitioner assistants 

under the supervision of the practitioner 

to assist the practitioner in matters 

pending or contemplated to be 

presented before the Office. 

Section 11.5(b)(1) provides a 

definition of practice before the Office 

in patent matters, which includes 

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, 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; and drafting a 

communication for a public use, 

interference, reexamination proceeding, 

petition, appeal to the Board of Patent 

Appeals and Interferences, or other 

proceeding. This section also provides 

that registration to practice before the 

Office in patent cases sanctions the 

performance of those services which are 

reasonably necessary and incident to the 

preparation and prosecution of patent 

applications or other proceeding before 

the Office involving a patent application 

or patent in which the practitioner is 

authorized to participate. The services 

are identified as including consideration 

of the advisability of relying upon 

alternative forms of protection which 

may be available under state law, and 

drafting an assignment or causing an 

assignment to be executed in 

contemplation of filing or prosecution of 

a patent application if the practitioner is 

filing or prosecuting the patent 

application, and assignment does no 

more than replicate the terms of a 

previously existing oral or written 

obligation of assignment from one 

person or party to another person or 

party. 

Section 11.5(b)(2) provides a 

definition of practice before the Office 

in trademark matters which includes 

consulting with or giving advice to a 

client in contemplation of filing a 

trademark application or other 

document with the Office; preparing 

and prosecuting an application for 

trademark registration; preparing an 

amendment or response 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. 

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. The provisions of revised 

proposed § 11.19 would cover 

misconduct occurring in a non-lawyer 

or non-agent capacity. Section 11.19 

identifies several grounds for discipline, 

including, but not limited to, conduct 

that violates a mandatory disciplinary 

rule of the USPTO Code of Professional 

Responsibility and a conviction of a 

serious crime. 

Section 11.14: Section 11.14 is added 

to set forth who may practice before the 

Office in trademark and other nonpatent cases. Section 11.14(a), in 

essence, continues present practice 

under § 10.14(a) except as noted in the 

following discussion. The last sentence 

of § 11.14(a) adds a provision that 

registration as a patent practitioner does 

not entitle an individual to practice 

before the Office in trademark matters. 

An attorney who is no longer a member 

in good standing of the bar of the 

highest court of one state and not 

admitted to the bar in another state is 

not entitled to practice before the Office 

in trademark matters on the basis of the 

attorney’s registration as a patent 

practitioner. 

Thus, a practitioner registered with 

the Office as a patent attorney, but 

suspended or disbarred in the only state 

where the practitioner had been 

admitted to practice law, may not rely 

on the registration to continue to 

practice before the Office in trademark 

matters. Similarly, a practitioner 

registered as a patent attorney, but 

suspended or disbarred in the only state 

where the practitioner had been 

admitted to practice law, may not revert 

to registration as a patent agent prior to 

January 1, 1957, to continue to practice 

before the Office in trademark cases. 

Section 11.14(b) continues the present 

practice under § 10.14(b). A second 

sentence has been added to § 11.14(b) to 

assure clarity under the present practice 

that, but for the one exception in the 

first sentence of this section, registration 

as a patent agent does not itself entitle 

an individual to practice before the 

Office in trademark matters. 

Section 11.14(c) is added to continue 

the present practice under § 10.14(c), 

except as further clarified by the 

following provisions. The first sentence 

of § 11.14(c) is revised to provide that a 

foreign attorney or agent not a resident 

of the United States who seeks 

reciprocal recognition must file a 

written application for reciprocal 

recognition under paragraph (f) of 

§ 11.14 and prove to the satisfaction of 

the OED Director that he or she is 

possessed of good moral character and 

reputation. 

Sections 11.14(d) and (e) continue the 

present practices under former sections 

10.14(d) and (e), except as noted in the 

following discussion. In § 11.14(e), ‘‘on 

behalf of a client’’ has been added to the 

end of the first sentence to make it clear 

that no individual is permitted to 

represent others before the Office in 

trademark matters other than those 

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

of this section. 

Section 11.14(f) is added to expressly 

provide for filing an application for 

reciprocal recognition under § 11.14(c). 

This section codifies the practice of 

requiring an individual seeking 

reciprocal recognition under § 11.14(c) 

to apply in writing to the OED Director 

for reciprocal recognition and pay the 

fee specified in § 1.21(a)(1)(i). 

Section 11.15: Section 11.15 is added 

to provide for refusal to recognize a 

practitioner. This section continues the 

present practice under former § 10.15. 

The second sentence makes clear that a 

practitioner who is suspended or 

excluded is not entitled to practice 

before the Office in patent, trademark, 

or other non-patent matters while 

suspended or excluded. 

Sections 11.16–11.17: Sections 11.16–

11.17 are reserved. 

Section 11.18: Section 11.18(a) is 

added to continue the present practice 

under former § 10.18(a), and extend the 

practice to all documents filed with a 

hearing officer in a disciplinary 

proceeding. But for specified 

exceptions, every document filed with 

the Office or a hearing officer in a 

disciplinary proceeding must bear a 

signature, personally signed by such 

practitioner, in compliance with 

§ 1.4(d)(1). 

Section 11.18(b)(1) is added to 

continue the present practice of 

providing that a party presenting a 

paper certifies to the truthfulness of the 

content of his or her submissions to the 

Office. The term ‘‘party’’ is not limited 

to practitioners, and includes 


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applicants. The provisions of 

§ 11.18(b)(1) continue the present 

practice under § 10.18(b)(1), except for 

extending the practice to submissions to 

a hearing officer in a disciplinary 

proceeding. Inasmuch as the hearing 

officer may be employed by another 

Federal agency, extension of the 

provisions of this section to submission 

to the hearing officer is believed to be 

appropriate. The provisions of 

§ 11.18(b)(1) continue the present 

practice under § 10.18(b)(1) except as 

follows. Section 11.18(b)(1) is clarified 

to prohibit ‘‘willfully and knowingly’’

making false, fictitious or fraudulent 

statements or representations or 

‘‘willfully and knowingly’’ making or 

using a false writing or document 

knowing the same to contain any false, 

fictitious, or fraudulent statement or 

entry. This section repeats an obligation 

all parties submitting papers to the 

Office otherwise have under 18 U.S.C. 

1001. This section applies the statutory 

standard of conduct applicable to the 

submission of material facts in courts to 

proceedings in the Office and to 

disciplinary proceedings. 

Section 11.18(b)(1) also provides that 

whoever violates the provisions of 

§ 11.18(b)(1) is subject to penalties in 

criminal statutes in addition to those 

under 18 U.S.C. 1001. Inasmuch as an 

offending paper may have little or no 

probative value, § 11.18(b)(1) provides 

that violation of the rule may jeopardize 

the probative value of the paper. 

Unlike § 10.18(b)(1), § 11.18(b)(1) does 

not provide that violations of paragraph 

(b)(1) may jeopardize the validity of the 

application or document inasmuch as 

the conditions for valid application are 

set by statute. Similarly, unlike 

§ 10.18(b)(1), § 11.18(b)(1) does not 

provide that violations of paragraph 

(b)(1) may jeopardize the validity or 

enforceability of any patent, trademark 

registration, or certificate resulting 

therefrom. It is unnecessary that the 

regulation remind parties of any civil 

jeopardy to which they are subject for a 

violation of paragraph (b)(1). 

Section 11.18(b)(2) is added to 

provide that a party submitting a paper 

certifies to the best of the party’s 

knowledge, information and belief, 

formed after an inquiry reasonable 

under the circumstances, that the paper 

is not being presented for any improper 

purpose, that other legal contentions 

therein are warranted by existing law or 

by a nonfrivolous argument for the 

establishment of new law, that 

allegations and factual contentions have 

evidentiary support, and that denials of 

factual contentions are warranted on the 

evidence or are reasonably based on a 

lack of information or belief. Section 

11.18(b)(2) continues the current 

practice under former § 10.18(b)(2) 

except for substitution of ‘‘any 

proceeding’’ for prosecution in 

subsection 11.18(b)(2)(i). 

Section 11.18(c) is added to provide a 

non-exhaustive list of sanctions or 

actions the USPTO Director may take, 

after notice and reasonable opportunity 

to respond, for a violation of paragraph 

(b)(2)(i) through (b)(2)(iv) of § 11.18. 

Section 11.18(c) continues some of the 

sanctions under former § 10.18(c), 

including precluding a party or 

practitioner from submitting a paper, or 

presenting or contesting an issue; 

requiring a terminal disclaimer; or 

terminating the proceedings in the 

Office. Section 11.18(c) adds specific 

sanctions and actions, for example, 

striking the offending paper, referring a 

practitioner’s conduct to the Director of 

Enrollment and Discipline for 

appropriate action; affecting the weight 

given to the offending paper; and 

terminating the proceedings in the 

Office. 

These sanctions in § 11.18(c) conform 

to those discussed in conjunction with 

the 1993 Amendment to Rule 11 of the 

Federal Rules of Civil Procedure. The 

commentary to the 1993 Amendment 

indicated that a court ‘‘has available a 

variety of possible sanctions to impose 

for violations, such as striking the 

offending paper; * * * referring the 

matter to disciplinary authorities.’’ Like 

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

provisions in § 11.18 do not attempt to 

exhaustively enumerate the factors that 

should be considered or the appropriate 

sanctions. The Office anticipates that in 

taking action under § 11.18 in applying 

sanctions, it would use the proper 

considerations utilized in issuing 

sanctions or taking action under Rule 

11. Consideration may be given, for 

example, to whether the improper 

conduct was willful or negligent; 

whether it was part of a pattern of 

activity, or an isolated event; whether it 

infected an entire application, or only 

one particular paper; whether the 

person has engaged in similar conduct 

in other matters; whether the conduct 

was intended to injure; what effect the 

conduct had on the administrative 

process in time and expense; whether 

the responsible person is trained in law; 

what is needed to deter that person from 

repetition in the same case; and what is 

needed to deter similar conduct by 

others. All of these in a particular case 

may be proper considerations. See, 28 

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

Notes, 1993 Amendments, Subdivisions 

(b) and (c). 

Section 11.18(d) is added to continue 

the present practice under former 

§ 10.18(d) of providing notice that any 

practitioner violating the provisions of 

§ 11.18 may also be subject to 

disciplinary action. 

Section 11.19: Section 11.19 is added 

to set forth the disciplinary jurisdiction 

of the Office. Section 11.19(a) sets forth 

a list of practitioners who are subject to 

the disciplinary jurisdiction of the 

Office. These include practitioners 

administratively suspended, all 

practitioners engaged in practice before 

the Office; practitioners registered to 

practice before the Office in patent 

cases; inactivated practitioners, 

practitioners authorized to take 

testimony; and practitioners who have 

been transferred to disability inactive 

status, reprimanded, suspended, or 

excluded from the practice of law. 

Inasmuch as these rules are being 

adopted before the adoption of 

§ 11.11(b) regarding administrative 

suspension and § 11.11(c) regarding 

administrative suspension, in 

connection with continuing education 

and annual fees, § 11.19(a) does not 

reference those actions. Instead, 

§ 11.19(a) references practitioners 

inactivated under § 10.11. Also 

practitioners who have resigned are 

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. 

Section 11.19(b) is added to set forth 

the grounds for discipline and grounds 

for transfer to disability inactive status. 

The grounds for discipline include 

conviction of a serious crime, 

§ 11.19(b)(1); discipline on ethical 

grounds imposed in another jurisdiction 

or disciplinary disqualification from 

participating in or appearing before any 

Federal program or agency, 

§ 11.19(b)(2); and failure to comply with 

any order of a Court disciplining a 

practitioner, § 11.19(b)(3); or any final 

decision of the USPTO Director in a 

disciplinary matter; violation of the 

mandatory Disciplinary Rules identified 

in sections 10.20(b), § 11.19(b)(4); or 

violation of the oath or declaration 

taken by the practitioner, § 11.19(b)(5). 

Section 11.19(b)(2) is added to set 

forth grounds for transfer to disability 

inactive status. The grounds include 

being transferred to disability inactive 

status in another jurisdiction; being 

judicially declared incompetent, being 

judicially ordered to be involuntarily 

committed after a hearing on the 

grounds of insanity, incompetency or 

disability, or being placed by court 

order under guardianship or 

conservatorship; or filing a motion 

requesting a disciplinary proceeding be 

held in abeyance because the 


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practitioner is suffering from a disability 

or addiction that makes it impossible for 

the practitioner to adequately defend 

the charges in the disciplinary 

proceeding. 

Section 11.19(c) is added to set forth 

the manner for handling petitions to 

disqualify a practitioner. This section 

continues the present practice under 

former § 10.130(b). 

Section 11.19(d) is added to provide 

for the OED Director to refer the 

existence of circumstances suggesting 

unauthorized practice of law to the 

authorities in the appropriate 

jurisdiction(s). 

Section 11.20: Section 11.20 is added 

to set forth the disciplinary sanctions 

the USPTO Director may impose on a 

practitioner after notice and opportunity 

for a hearing, as well as to set forth 

transfer to disability inactive status. 

Section 11.20(a)(2) provides for 

exclusion from practice before the 

Office. Suspension may be imposed for 

a period that is appropriate under the 

facts and circumstances of the case. 

Section 11.20(a)(3) provides for 

reprimand, including both public and 

private reprimand. 

Section 11.20(a)(4) provides for 

probation in lieu of or in addition to any 

other disciplinary sanction. The order 

imposing probation sets forth in writing 

the conditions of probation as well as 

whether, and to what extent, the 

practitioner is required to notify clients 

of the probation. The order also 

establishes procedures for the 

supervision of probation. Violation of 

any condition of probation is cause for 

the probation to be revoked, and the 

disciplinary sanction to be imposed for 

the remainder of the probation period. 

Revocation of probation occurs after an 

order to show cause why probation 

should not be revoked is resolved 

adversely to the practitioner. 

Section 11.20(b) is added to provide 

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 is 

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 11.20(c) is added to set forth 

transfer to disability inactive status. 

This section provides that the USPTO 

Director may, after notice and 

opportunity for a hearing, and where 

grounds exist to believe a practitioner 

has been transferred to disability 

inactive status in another jurisdiction, 

or has been judicially declared 

incompetent; judicially ordered to be 

involuntarily committed after a hearing 

on the grounds of incompetency or 

disability, or placed by court order 

under guardianship or conservatorship, 

transfer the practitioner to disability 

inactive status. 

Section 11.21: Section 11.21 is added 

to codify the practice of issuing 

warnings. This section provides that a 

warning is not a disciplinary sanction. 

This section also provides that the 

‘‘OED Director may conclude an 

investigation with the issuance of a 

warning,’’ which ‘‘shall contain a brief 

statement of facts and imperative 

USPTO Rules of Professional Conduct 

relevant to the facts.’’ Inasmuch as a 

warning is not a disciplinary sanction, 

a warning would not be made public. 

Section 11.22: Section 11.22 is added 

to set forth provisions regarding the 

conduct of investigations of possible 

grounds for discipline. Section 11.22(a) 

authorizes the OED Director to 

investigate possible grounds for 

discipline. This section provides that an 

investigation may be initiated when the 

OED Director receives a grievance, 

information or evidence from any 

source suggesting possible grounds for 

discipline. The section further provides 

that 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. 

Section 11.22(b) provides for 

reporting information or evidence 

concerning possible grounds for 

discipline to the OED Director. Any 

person possessing information or 

evidence concerning possible grounds 

for discipline of a practitioner may 

report the information or evidence to 

the OED Director, who may request that 

the report be presented in the form of 

an affidavit or declaration. 

Section 11.22(c) provides that 

information or evidence coming from 

any source that presents or alleges facts 

suggesting possible grounds for 

discipline of a practitioner will be 

deemed a grievance. 

Section 11.22(d) provides for 

preliminary screening of information or 

evidence. This section provides that the 

‘‘OED Director shall examine all 

information or evidence concerning 

possible grounds for discipline of a 

practitioner.’’

Section 11.22(e) provides for notifying 

a practitioner of an investigation. The 

section provides that 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.’’

Section 11.22(f) provides for the OED 

Director requesting information and 

evidence in the course of an 

investigation. Subsection 11.22(f)(1) 

provides that in the course of 

conducting an investigation, the OED 

Director may request information or 

evidence regarding possible grounds for 

discipline of a practitioner 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. 

Subsection 11.22(f)(2) provides that 

the OED Director may request 

information and evidence regarding 

possible grounds for discipline of a 

practitioner from a non-grieving client 

either after obtaining the consent of the 

practitioner or upon a finding by a 

Contact Member of the Committee on 

Discipline, appointed in accordance 

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

believe that the possible ground for 

discipline alleged has occurred with 

respect to non-grieving clients. This 

section further provides that ‘‘[n]either 

a request for, nor disclosure of, such 

information shall constitute a violation 

of any of the Mandatory Disciplinary 

Rules identified in § 10.20(b) of Part 10 

of this Subsection.’’

Section 11.22(g) provides where the 

OED Director makes a request under 

paragraph (f)(2) of this section to the 

Contact Member of the Committee on 

Discipline, the Contact Member will 

not, with respect to the practitioner 

connected to the OED Director’s request, 

participate in the Committee on 

Discipline panel that renders a probable 

cause decision. 

Section 11.22(h) sets forth the actions 

the OED Director may take upon the 

conclusion of an investigation. The OED 

Director may close an investigation 

without issuing a warning or taking 

disciplinary action, issue a warning to 

the practitioner, institute formal charges 

upon approval of the Committee on 

Discipline, or enter into a settlement 

agreement with the practitioner and 

submit the same for approval to the 

USPTO Director. 

Section 11.22(i) provides for closing 

investigation without issuing a warning 

or taking disciplinary action. There are 

four circumstances under this section 

when the OED Director must terminate 

an investigation and decline to refer a 

matter to the Committee on Discipline. 

Under § 11.22(i)(1), the OED Director 

closes an investigation without issuing 

a warning or disciplinary action upon 

determining that either the information 

or evidence is unfounded. Under 


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§ 11.22(i)(2), the OED Director closes the 

investigation without issuing a warning 

or taking disciplinary action when it is 

determined that the information or 

evidence relates to matters not within 

the jurisdiction of the Office. Under 

§ 11.22(i)(3), the OED Director closes the 

investigation without issuing a warning 

or taking disciplinary action upon 

determining that 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. 

Under § 11.22(i)(2)(4), the OED Director 

closes the investigation without issuing 

a warning or taking disciplinary action 

when the available evidence is 

insufficient to conclude that there is 

probable cause to believe that grounds 

exist for discipline. 

Section 11.23: Section 11.23 is added 

to provide for a Committee on 

Discipline. Section 11.23(a) provides for 

the Committee to be appointed by the 

USPTO Director. The Committee on 

Discipline consists of at least three 

employees of the Office, and none of the 

Committee members are permitted to 

report directly or indirectly to the OED 

Director or any employee designated by 

the USPTO Director to decide 

disciplinary matters. This section 

further provides that each Committee 

member must be a member in good 

standing of the bar of the highest court 

of a State. The Committee members 

select a Chairperson from among 

themselves. Three Committee members 

constitute a panel of the Committee. 

Section 11.23(b) sets forth the powers 

and duties of the Committee on 

Discipline. The Committee is 

empowered and has the duty to meet in 

panels at the request of the OED 

Director and, after reviewing evidence 

presented by the OED Director, by 

majority vote of the panel, determine 

whether there is probable cause to bring 

charges under § 11.32 against a 

practitioner; and to prepare and forward 

its own probable cause findings and 

recommendations to the OED Director. 

Section 11.23(c) provides that no 

discovery is authorized of, and no 

member of the Committee may be 

required to testify about deliberations 

of, the Committee or of any panel. 

Section 11.24: Section 11.24 is added 

to provide procedures for reciprocal 

discipline of a practitioner. Section 

11.24(a) provides that a practitioner 

who is subject to the disciplinary 

jurisdiction of the Office and has been 

publicly censured, publicly 

reprimanded, subjected to probation, 

disbarred or suspended in another 

jurisdiction, or has been disciplinarily 

disqualified from participating in or 

appearing before any Federal program or 

agency shall notify the OED Director in 

writing of the same. This section also 

provides that 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. 

Section 11.24(a) further provides for 

the OED Director, upon receiving 

notification that a practitioner subject to 

the disciplinary jurisdiction of the 

Office has been disciplined, to obtain a 

certified copy of the record or order 

regarding the public censure, public 

reprimand, probation, disbarment, 

suspension or disciplinary 

disqualification and file the same with 

the USPTO Director. The information 

received by the OED Director may come 

from any source, and therefore, the 

actions by OED Director are 

independent of whether the practitioner 

has self-reported. Without Committee 

on Discipline authorization, the OED 

Director can file a complaint complying 

with § 11.34 with the USPTO Director 

against the practitioner predicated upon 

the public censure, public reprimand, 

probation, disbarment, suspension or 

disciplinary disqualification, and 

request the USPTO Director to issue a 

notice and order as set forth in 

§ 11.24(b). 

Under § 11.24(a) regarding a 

practitioner who has been disqualified 

from participating in or appearing 

before any Federal program or agency, 

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. 

Section 11.24(b) provides a procedure 

for initiating a reciprocal disciplinary 

proceeding. Under this section, the 

USPTO Director, upon receipt of a 

certified copy of the record or order 

regarding the practitioner, issues a 

notice directed to the practitioner in 

accordance with § 11.35 and to the OED 

Director. The notice includes (1) a copy 

of the record or order regarding the 

public censure, public reprimand, 

probation, disbarment, suspension, or 

disciplinary disqualification; (2) a copy 

of the complaint; and (3) an order 

directing the practitioner to file a 

response with the USPTO Director and 

the OED Director, within forty days of 

the date of the notice, establishing a 

genuine issue of material fact predicated 

upon the grounds set forth in 

§§ 11.24(d)(1)(i) through (d)(1)(iv) that 

the imposition of the identical public 

censure, public reprimand, probation, 

disbarment, suspension or disciplinary 

disqualification would be unwarranted 

and the reasons for the claim. In 

conformity with the changes to 

§ 11.24(a), ‘‘disciplined’’ has been 

changed to ‘‘censured, publicly 

reprimanded, subjected to probation, 

disbarred, suspended’’ in the first 

sentence of this section; ‘‘public 

censure, public reprimand, probation,’’

has been added to § 11.24(b)(1); and 

‘‘publicly censured, publicly 

reprimanded, placed on probation,’’ has 

been added to § 11.24(b)(3)(i). 

Section 11.24(c) sets forth the effect of 

a stay in another jurisdiction on a 

reciprocal disciplinary proceeding 

occurring in the Office. Under this 

section, if the discipline imposed by 

another jurisdiction, probation 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 conformity 

with the changes to § 11.24(a), 

‘‘discipline’’ has been changed to 

‘‘censure, public reprimand, probation, 

disbarment, suspension or disciplinary 

disqualification’’ in § 11.24(c). 

Section 11.24(d) provides for a 

hearing and imposition of discipline. 

Under this section the USPTO Director 

hears the matter on the documentary 

record and imposes the identical 

discipline unless the USPTO Director 

determines that there is a genuine issue 

of material fact of the nature set forth in 

§§ 11.24(d)(1)(i) through (iv). In 

conformity with the changes to 

§ 11.24(a), each occasion of ‘‘discipline’’

has been changed to ‘‘censure, public 

reprimand, probation, disbarment, 

suspension or disciplinary 

disqualification’’ in the second sentence 

of this section. 

The situation identified in 

§ 11.24(d)(1)(i) is that the procedure 

elsewhere was so lacking in notice or 

opportunity to be heard as to constitute 

a deprivation of due process. The 

situation identified in § 11.24(d)(1)(ii) is 

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. The situation in 

§ 11.24(d)(1)(iii) is that the imposition of 

the same discipline by the Office would 

result in grave injustice. The situation in 

§ 11.24(d)(1)(iv) is that the practitioner 

was not the person involved in the prior 

disciplinary matter. In conformity with 

the changes to § 11.24(a), ‘‘discipline’’

has been changed to ‘‘censure, public 

reprimand, probation, disbarment, 

suspension or disciplinary 

disqualification’’ in § 11.24(d)(1)(iii). 


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Under § 11.24(d)(2), if the USPTO 

Director determines that there is no 

genuine issue of material fact, the 

USPTO Director enters an appropriate 

final order. If the USPTO Director is 

unable to make such a determination 

because there is a genuine issue of 

material fact, the complaint is referred 

to a hearing officer for disposition and 

the practitioner is directed to file an 

answer to the complaint. 

Section 11.24(e) provides for the 

effect of the adjudication in another 

jurisdiction or Federal agency or 

program. This section sets forth that 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 a prima facie case for 

discipline or probation for purposes of 

a disciplinary proceeding in this Office. 

In conformity with the changes to 

§ 11.24(a), ‘‘discipline’’ has been 

changed to ‘‘censure, public reprimand, 

probation, disbarment, suspension or 

disciplinary disqualification’’ in this 

section. 

Section 11.24(f) sets forth the only 

circumstance when reciprocal 

discipline may be imposed nunc pro 

tunc. This section provides for imposing 

reciprocal discipline only upon the 

practitioner’s request and only if the 

practitioner promptly notified the OED 

Director of his or her censure, public 

reprimand, probation, disbarment, 

suspension or disciplinary 

disqualification in another jurisdiction, 

and establishes by clear and convincing 

evidence that the practitioner 

voluntarily ceased all activities related 

to practice before the Office and 

complied with all provisions of § 11.58. 

This section further provides that the 

effective date of any censure, public 

reprimand, probation, disbarment, 

suspension, or disciplinary 

disqualification imposed nunc pro tunc 

shall be the date the practitioner 

voluntarily ceased all activities related 

to practice before the Office and 

complied with all provisions of § 11.58. 

In conformity with the changes to 

§ 11.24(a), ‘‘discipline’’ has been 

changed to ‘‘censure, public reprimand, 

probation, disbarment, suspension’’ in 

the first sentence. In conformity with 

the changes to § 11.24(a), in the second 

sentence, ‘‘censure, public reprimand, 

probation,’’ has been inserted before 

‘‘suspension’’; a comma has been 

inserted after ‘‘suspension’’; ‘‘or’’ has 

been inserted between ‘‘suspension’’

and ‘‘disbarment’’; and ‘‘or disciplinary 

disqualification’’ has been added after 

‘‘disbarment.’’

Section 11.24(g) provides for 

reinstatement following a reciprocal 

discipline proceeding. Under this 

section, a practitioner may petition for 

reinstatement under conditions set forth 

in § 11.60 no sooner than completion of 

the period of reciprocal discipline 

imposed, and compliance with all 

provisions of § 11.58. 

Section 11.25: Section 11.25 is added 

to provide a procedure for interim 

suspension and discipline, after notice 

and opportunity for a hearing on the 

documentary record, based upon 

conviction of committing a serious 

crime. The first sentence of § 11.25(a) 

provides that 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. If the crime is not a serious 

crime, the OED Director processes the 

matter in the same manner as any other 

information or evidence of a possible 

violation of the Mandatory Disciplinary 

Rules identified in § 10.20(b) of Part 10. 

The reference to the Mandatory 

Disciplinary Rules of Part 10 will obtain 

until such time as the Rules of 

Professional Conduct are adopted, at 

which time this section will be 

amended to reference the imperative 

Rules of Professional Conduct. 

The second sentence of § 11.25(a) 

provides that the OED Director, upon 

being advised or learning that a 

practitioner subject to the disciplinary 

jurisdiction of the Office has been 

convicted of a crime, must make a 

preliminary determination whether the 

crime constitutes a serious crime 

warranting interim suspension. The 

third sentence of § 11.25(a) provides 

that where the crime is a serious crime, 

the OED Director will file with the 

USPTO Director proof of the conviction 

and request that the USPTO Director 

issue a notice and order as set forth in 

§ 11.25(b)(2) of this section. The fourth 

sentence of § 11.25(a) provides that the 

OED Director must also, without 

Committee on Discipline authorization, 

file with the USPTO Director a 

complaint against the practitioner 

complying with § 11.34, predicated 

upon the conviction of a serious crime. 

The fifth sentence of § 11.25 provides 

that in the event the crime is not a 

serious crime, the OED Director must 

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. 

Section 11.25(b) provides a procedure 

for imposing interim suspension and 

referral for disciplinary proceeding in 

the case of a practitioner convicted of a 

serious crime. Section 11.25(b)(1) 

provides that the USPTO Director has 

authority to place a practitioner on 

interim suspension, after a hearing on 

the documentary record. 

Section 11.25(b)(2) provides for 

notifying the practitioner convicted of 

commission of a serious crime with 

notice of the proceeding. The USPTO 

Director issues a notice to the 

practitioner in accordance with 

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

Director. The notice contains 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 and OED Director, within thirty 

days of the date of the notice, of any 

genuine issue of material fact that the 

crime did not constitute a serious crime, 

that the practitioner is not the 

individual found guilty of the crime, or 

that the conviction was so lacking in 

notice or opportunity to be heard as to 

constitute a deprivation of due process. 

Section 11.25(b)(3) provides 

procedures for a hearing on and entry of 

a final order on the OED Director’s 

request for interim suspension. The 

request for interim suspension is heard 

by the USPTO Director on the 

documentary record unless the USPTO 

Director determines that the 

practitioner’s response establishes a 

genuine issue of material fact that the 

crime did not constitute a serious crime, 

the practitioner is not the person who 

committed the crime, or the conviction 

was so lacking in notice or opportunity 

to be heard as to constitute a 

deprivation of due process. If the 

USPTO Director determines that there is 

no genuine issue of material fact 

regarding those defenses an appropriate 

final order is entered regardless of the 

pendency of any criminal appeal. 

Conversely, if the USPTO Director is 

unable to make such determination 

because there is a genuine issue of 

material fact, the USPTO Director would 

enter a final order dismissing the 

request for interim suspension and 

referring the complaint to a hearing 

officer for a hearing. Under the latter 

circumstances, the USPTO Director 

would also direct the practitioner to file 

an answer to the complaint in 

accordance with § 11.36. Section 

11.25(b)(4) provides the USPTO Director 

with authority to terminate an interim 

suspension when it is in the interest of 

justice, and upon a showing of 

extraordinary circumstances, after 

affording the OED Director an 

opportunity to respond to the request to 

terminate interim suspension. 


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Section 11.25(b)(5) provides a 

procedure whereby the USPTO Director, 

upon entering an order for interim 

suspension, refers the complaint to the 

OED Director for institution of a formal 

disciplinary proceeding for an initial 

decision recommending the final 

disciplinary sanction to be imposed. 

The hearing officer, however, shall stay 

the disciplinary proceeding until all 

direct appeals from the conviction are 

concluded. Review of the initial 

decision of the hearing officer shall be 

pursuant to § 11.55. 

Section 11.25(c) sets forth the 

standard for proving conviction and 

guilt. Section 11.25(c)(1) addresses 

conviction in the United States. Under 

this section, 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 establishes a prima facie case by 

clear and convincing evidence that the 

practitioner was convicted of the crime 

and that the conviction was not lacking 

in due process. Section 11.25(c)(2) 

addresses 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 establishes a prima facie case by 

clear and convincing evidence that the 

practitioner was convicted of the crime 

and that the conviction was not lacking 

in due process. Nothing in this section 

precludes the practitioner from 

demonstrating in any hearing for 

interim suspension that there is a 

genuine issue of material fact to be 

considered when determining if the 

elements of a serious crime were 

committed in violating the criminal law 

of the foreign country and whether a 

disciplinary sanction should be entered. 

Section 11.25(d) provides that if the 

USPTO Director determines that the 

crime is not a serious crime, the 

complaint is to be referred to the OED 

Director for investigation under § 11.22 

and appropriate processing. 

Section 11.25(e) provides a procedure 

for reinstatement upon reversal or 

setting aside a finding of guilt or a 

conviction. Under § 11.25(e)(1), if the 

practitioner demonstrates that the 

underlying finding of guilt or conviction 

of serious crimes has been reversed or 

vacated, the order for interim 

suspension is to 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. Vacating the interim 

suspension does not terminate any other 

disciplinary proceeding then pending 

against the practitioner, the disposition 

of which is determined by the hearing 

officer on the basis of all available 

evidence other than the finding of guilt 

or conviction. Section 11.25(e)(2) sets 

forth the reinstatement procedure for a 

practitioner convicted of a serious 

crime. The practitioner petitions for 

reinstatement under conditions set forth 

in § 11.60 no sooner than five years after 

being discharged following completion 

of service of his or her sentence, or after 

completion of service under probation 

or parole, whichever is later. 

Section 11.25(f), which pertains to 

notifying clients and others of a 

practitioner’s interim suspension, by 

providing that an interim suspension 

under this section constitutes a 

suspension of the practitioner for the 

purpose of § 11.58. Therefore, the 

practitioner must notify clients and 

others in accordance with § 11.58. 

Section 11.26: Section 11.26 is added 

to introduce provisions for settlement in 

disciplinary matters. Under this section 

a settlement conference may occur 

between the OED Director and the 

practitioner before or after a complaint 

is filed under § 11.34. Any offers of 

compromise and any statements made 

during the course of settlement 

discussions are not 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 is 

effective only upon entry of a final 

decision by the USPTO Director. 

Section 11.27: Section 11.27 is added 

to provide a procedure for excluding a 

practitioner on consent. Section 11.27(a) 

provides that 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. The content of 

the affidavit is set forth in 

§§ 11.27(a)(1)(i) through 11.27(a)(3)(ii). 

Section 11.27(b) provides a procedure 

for the USPTO Director to review, and 

if appropriate, approve the exclusion on 

consent. Upon approval, the USPTO 

Director enters an order excluding the 

practitioner on consent and providing 

other appropriate actions. Upon entry of 

the order, the excluded practitioner 

must comply with the requirements set 

forth in § 11.58. Under § 11.27(c), when 

an affidavit under § 11.27(a) is received 

after a complaint under § 11.34 has been 

filed, the OED Director notifies the 

hearing officer. The hearing officer then 

enters an order transferring the 

disciplinary proceeding to the USPTO 

Director, who may enter an order 

excluding the practitioner on consent. 

Section 11.27(d) provides for 

reinstatement following exclusion on 

consent. Under this section, a 

practitioner excluded on consent under 

this section may not petition for 

reinstatement for five years. This section 

provides that an excluded practitioner 

who intends to reapply for admission to 

practice before the Office must comply 

with the provisions of § 11.58, and 

apply for reinstatement in accordance 

with § 11.60. This section provides that 

failure to comply with the provisions of 

§ 11.58 constitutes grounds for denying 

an application for reinstatement. 

Section 11.28: Section 11.28 is added 

to provide procedures for addressing 

disciplinary proceedings involving an 

incapacitated practitioner. Section 

11.28(a) provides a procedure for 

holding a disciplinary procedure in 

abeyance because of a practitioner’s 

incapacitation due to a current 

disability or addiction. Under 

§ 11.28(a)(1), in the course of a 

disciplinary proceeding, before the date 

set 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. 

The required content of the motion is 

set forth in § 11.28(a)(1)(i). The time for 

filing and serving the OED Director’s 

response, and the content of the 

response are set forth in § 11.28(a)(1)(ii). 

Section 11.28(a)(2) provides a procedure 

for disposition of the practitioner’s 

motion. Upon granting the practitioner’s 

motion, the OED Director transfers the 

practitioner to disability inactive status 

and publishes notice. The order may 

provide that, in the case of addiction to 

drugs or intoxicants, the practitioner 

will not be returned to active status 

absent satisfaction of specified 

conditions. Upon receipt of the order, 

the OED Director transfers the 

practitioner to disability inactive status, 

gives notice to the practitioner, causes 

notice to be published, and gives notice 

to appropriate authorities in the Office 

that the practitioner has been placed on 


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disability inactive status. The 

practitioner is required to comply with 

the provisions of § 11.58, and 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 §§ 11.28(c) or 

11.28(d). A practitioner on disability 

inactive status must seek permission 

from the OED Director to seek 

employment authorized under 

§ 11.58(e). Permission will be granted 

only if the practitioner has complied 

with all the conditions of §§ 11.58(a) 

through 11.58(d) applicable to disability 

inactive status. In the event that 

permission is granted, the practitioner 

must fully comply with the provisions 

of § 11.58(e). 

Section 11.28(b) provides a procedure 

whereby a practitioner transferred to 

disability inactive status in a 

disciplinary proceeding may move 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 § 11.28(a)(2) or any modification 

thereof. If the motion is granted, the 

disciplinary proceeding is resumed 

under a schedule established by the 

hearing officer. Section 11.28(c) sets 

forth the content of the practitioner’s 

motion for reactivation. 

Section 11.28(d) provides a procedure 

whereby the OED Director may move to 

terminate a prior order holding a 

pending disciplinary proceeding in 

abeyance and resume a disciplinary 

proceeding. The OED Director bears the 

burden of showing by clear and 

convincing evidence that the 

practitioner is able to defend himself or 

herself, and the hearing officer will hold 

an evidentiary hearing if there is any 

genuine issue as to one or more material 

facts. 

Section 11.28(e) provides for a 

hearing officer to take appropriate 

action if, in deciding a motion under 

§ 11.28(b) or § 11.28(d), 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 

appropriate action may include entry of 

an order directing the reactivation of the 

practitioner and resumption of the 

disciplinary proceeding. 

Section 11.29: Section 11.29 is added 

to provide for reciprocal transfer or 

initial transfer to disability inactive 

status of practitioners. Section 11.29(a) 

provides for notification of the OED 

Director. Section 11.29(a)(1) addresses 

transfer to disability inactive status in 

another jurisdiction as grounds for 

reciprocal transfer by the Office. Within 

thirty days of being transferred to 

disability inactive status in another 

jurisdiction a practitioner subject to the 

disciplinary jurisdiction of the Office is 

required to notify the OED Director in 

writing of the transfer. Upon 

notification from any source that a 

practitioner subject to the disciplinary 

jurisdiction of the Office has been 

transferred to disability inactive status 

in another jurisdiction, the OED 

Director is required to obtain a certified 

copy of the order and file it with the 

USPTO Director together with a request 

that the practitioner be transferred to 

disability inactive status, including the 

specific grounds therefor, and a request 

that the USPTO Director issue a notice 

and order as set forth in § 11.29(b). 

Section 11.29(a)(2) sets forth as 

grounds for initial transfer to disability 

inactive status, situations where a 

practitioner has been involuntarily 

committed, there is an adjudication of 

incompetency, or there is a courtordered placement of a practitioner 

under guardianship or conservatorship. 

Within thirty days of being judicially 

declared incompetent, being judicially 

ordered to be involuntarily committed 

after a hearing on the grounds of 

incompetency or disability, or being 

placed by court order under 

guardianship or conservatorship in 

another jurisdiction, a practitioner 

subject to the disciplinary jurisdiction 

of the Office must notify the OED 

Director in writing of the transfer. Upon 

notification from any source that a 

practitioner subject to the disciplinary 

jurisdiction of the Office has been 

transferred to disability inactive status 

in another jurisdiction, the OED 

Director is required to obtain a certified 

copy of the order and file it with the 

USPTO Director along with the requests 

described in 11.29(a)(1). 

Section 11.29(b) provides for serving 

notice on a practitioner to show cause 

why transfer to disability inactive status 

should not occur. The OED Director 

issues the notice, comporting with 

§ 11.35, directed to the practitioner 

upon receiving the information and 

requests from the OED Director. The 

notice contains a copy of the order or 

declaration from the other jurisdiction. 

The notice also contains an order 

directing the practitioner to inform the 

USPTO Director and OED Director, 

within 30 days from the date of the 

notice, a) his or her response to the OED 

Director’s request to transfer to 

disability status which shall establish 

any genuine issue of material fact 

supported by affidavit based on the 

grounds set forth in § 11.29(d) (1) 

through (4) that the transfer to disability 

inactive status would be unwarranted 

and the reasons therefor. 

Section 11.29(c) addresses the effect 

of stay of transfer or of a stay of a 

judicially declared incompetence, 

judicially ordered involuntary 

commitment on the grounds of 

incompetency or disability, or courtordered placement under guardianship 

or conservatorship. This section 

provides that in the event the transfer, 

judicially declared incompetence, 

judicially ordered involuntary 

commitment on the grounds of 

incompetency or disability, or courtordered placement under guardianship 

or conservatorship in the other 

jurisdiction has been stayed, any 

reciprocal transfer or transfer by the 

Office may be deferred until the stay 

expires. 

Section 11.29(d) provides for a 

hearing and transfer to disability 

inactive status. The request for transfer 

to disability inactive status shall be 

heard by the USPTO Director on the 

documentary record unless the USPTO 

Director determines that there is a 

genuine issue of material fact, in which 

case the USPTO Director may deny the 

request. Upon the expiration of 30 days 

from the date of the notice pursuant to 

the provisions of § 11.29(b), the USPTO 

Director shall consider any timely filed 

response and impose the identical 

transfer to disability inactive status 

unless the practitioner demonstrates by 

clear and convincing evidence and the 

USPTO Director finds there is a genuine 

issue of material fact by clear and 

convincing evidence that: (1) The 

procedure was so lacking in notice or 

opportunity to be heard as to constitute 

a deprivation of due process; (2) there 

was such infirmity of proof establishing 

the transfer to disability status, judicial 

declaration of incompetence, judicial 

order for involuntary commitment on 

the grounds of incompetency or 

disability, or placement by court order 

under guardianship or conservatorship 

that the USPTO Director could not, 

consistent with the Office’s duty, accept 

as final the conclusion on that subject; 

(3) the imposition of the same disability 

status or transfer to disability status by 

the USPTO Director would result in 

grave injustice; or (4) the practitioner is 

not the individual transferred to 

disability status, judicially declared 

incompetent, judicially ordered for 

involuntary commitment on the grounds 

of incompetency or disability, or placed 

by court order under guardianship or 

conservatorship. 

One example that it would be a grave 

injustice to impose disability status or 


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transfer to disability status might be that 

the reason no longer exists for the 

original transfer to disability inactive 

status, judicial declaration of 

incompetence, judicial order to be 

involuntarily committed on the grounds 

of incompetency or disability, or 

placement by court order under 

guardianship or conservatorship. A 

further example would be that the 

practitioner was not the person 

transferred to disability inactive status, 

judicially declared incompetent, 

judicially ordered to be involuntarily 

committed on the grounds of 

incompetency or disability, or placed by 

court order under guardianship or 

conservatorship. If the USPTO Director 

determines that there is no genuine 

issue of material facts with regard to any 

of the elements of §§ 11.29 (d)(1) 

through (4), the USPTO Director shall 

enter an appropriate final order. If the 

USPTO Director is unable to make that 

determination because there is a 

genuine issue of material fact, the 

USPTO Director shall enter an 

appropriate order dismissing the OED 

Director’s request for such reason. 

Section 11.29(e) provides for the 

effect of adjudication in other 

jurisdictions. This section provides that 

in all other aspects, a final adjudication 

in another jurisdiction that a 

practitioner is transferred to disability 

inactive status, is judicially declared 

incompetent, is judicially ordered to be 

involuntarily committed on the grounds 

of incompetency or disability, or is 

placed by court order under 

guardianship or conservatorship 

establishes the disability for purposes of 

a reciprocal transfer to or transfer to 

disability status before the Office. 

Section 11.29(f) provides that a 

practitioner who is transferred to 

disability inactive status under this 

section shall be deemed to have been 

refused recognition to practice before 

the Office so that the agency’s final 

order may be reviewed under 35 U.S.C. 

32. 

Section 11.29(g) provides for an order 

imposing reciprocal transfer to 

disability inactive status or order 

imposing initial transfer to disability 

inactive status. Under this section, an 

order by the USPTO Director imposing 

reciprocal transfer to disability inactive 

status, or transferring a practitioner to 

disability inactive status is effective 

immediately for an indefinite period 

until further order of the USPTO 

Director. A copy of the order 

transferring a practitioner to disability 

inactive status is served upon the 

practitioner, the practitioner’s guardian, 

and/or the director of the institution to 

which the practitioner has been 

committed in the manner the USPTO 

Director may direct. A practitioner 

reciprocally transferred or transferred to 

disability inactive status must comply 

with the provisions of § 11.58, and must 

not engage in practice before the Office 

in patent, trademark and other nonpatent law unless and until reinstated to 

active status. 

Section 11.29(h) provides for 

confidentiality of the proceeding and 

that orders transferring a practitioner to 

disability status be public. Under 

§ 11.29(h)(1) all proceedings under 

§ 11.29 involving allegations of 

disability of a practitioner are kept 

confidential unless and until the 

USPTO Director enters an order 

reciprocally transferring or transferring 

the practitioner to disability inactive 

status. Under § 11.29(h)(2), the OED 

Director must publicize any reciprocal 

transfer to disability inactive status or 

transfer to disability inactive status in 

the same manner as for the imposition 

of public discipline. 

Section 11.29(i) addresses activities 

provided for under § 11.58(e) of 

practitioners on disability inactive 

status. A practitioner on disability 

inactive status must seek permission 

from the OED Director to engage in an 

activity authorized under § 11.58(e). 

Permission will be granted only if the 

practitioner has complied with all the 

conditions of §§ 11.58(a) through 

11.58(d) applicable to disability inactive 

status. In the event that permission is 

granted, the practitioner must fully 

comply with the provisions of 

§ 11.58(e). 

Section 11.29(j) provides for 

reinstatement from disability inactive 

status. Section 11.29(j)(1) provides that 

no practitioner reciprocally transferred 

or transferred to disability inactive 

status under § 11.29 may resume active 

status except by order of the OED 

Director. Section 11.29(j)(2) provides 

that a practitioner reciprocally 

transferred or transferred to disability 

inactive status is entitled to petition the 

OED Director for transfer to active status 

once a year, or at whatever shorter 

intervals the USPTO Director may direct 

in the order transferring or reciprocally 

transferring the practitioner to disability 

inactive status or any modification 

thereof. Section 11.29(j)(3) provides that 

upon the filing of a petition for transfer 

to active status, the OED Director may 

take or direct whatever action is deemed 

necessary or proper to determine 

whether the incapacity has been 

removed, including a direction for an 

examination of the practitioner by 

qualified medical or psychological 

experts designated by the OED Director. 

The expense of the examination is paid 

and borne by the practitioner. Section 

11.29(j)(4) provides that with the filing 

of a petition for reinstatement to active 

status, the practitioner will be required 

to disclose the name of each 

psychiatrist, psychologist, physician 

and hospital or other institution by 

whom or in which the practitioner has 

been examined or treated since the 

transfer to disability inactive status. The 

practitioner must furnish the OED 

Director with written consent for the 

release of information and records 

relating to the incapacity if requested by 

the OED Director. Section 11.29(j)(5) 

provides that the OED Director may 

direct that the practitioner establish 

proof of competence and learning in 

law, which proof may include passing 

the registration examination. Section 

11.29(j)(6) provides that the OED 

Director shall grant the petition for 

transfer to active status upon a showing 

by clear and convincing evidence that 

the incapacity has been removed. 

Section 11.29(j)(7) provides that if a 

practitioner reciprocally transferred to 

disability inactive status on the basis of 

a transfer to disability inactive status in 

another jurisdiction, the OED Director 

may dispense with further evidence that 

the disability has been removed and 

may immediately direct reinstatement to 

active status upon such terms as are 

deemed proper and advisable. Section 

11.29(j)(8) provides that if a practitioner 

transferred to disability inactive status 

on the basis of a judicially declared 

incompetence, judicially ordered 

involuntary commitment on the grounds 

of incompetency or disability, or courtordered placement under guardianship 

or conservatorship has been declared to 

be competent, the OED Director may 

dispense with further evidence that the 

incapacity to practice law has been 

removed and may immediately direct 

reinstatement to active status. 

Sections 11.30 through 11.31: 

Sections 11.30 through 11.31 are 

reserved. 

Section 11.32: Section 11.32 is added 

to provide a procedure for instituting a 

disciplinary proceeding. Section 11.32, 

in essence, continues the provisions of 

former § 10.132, except as noted in the 

following discussion. Section 11.32(a) 

authorizes the OED Director to convene 

a meeting of ‘‘a panel of the Committee 

on Discipline,’’ as opposed to a 

‘‘meeting of the Committee on 

Discipline’’ provided for in former 

§ 10.132, and § 11.32(a) provides that 

the meeting may be convened after an 

investigation is conducted and after 

complying, where necessary, with the 

provisions of 5 U.S.C. 558(c), if ‘‘the 

OED Director is of the opinion that 

grounds exist for discipline under 


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§ 11.19(b)(3)–(5).’’ The panel of the 

Committee then determines as specified 

in § 11.23(b) whether a disciplinary 

proceeding shall be instituted. 

Section 11.33: Section 11.33 is 

reserved. 

Section 11.34: Section 11.34 is added 

to provide for the content and 

sufficiency of a complaint. Section 

11.34, in essence, continues the 

provisions of former § 10.134, except as 

noted in the following discussion. 

Section 11.34(a)(2) provides that the 

complaint must give a plain and concise 

description of the respondent’s ‘‘alleged 

grounds for discipline’’ instead of the 

‘‘alleged violations of the Disciplinary 

Rules by the practitioner’’ found in 

former § 10.134(a)(2). Section 11.34(a)(3) 

adds a provision that the complaint 

state the time ‘‘not less than thirty days 

from the date the complaint is filed’’ for 

respondent to file an answer. 

Section 11.34(b) provides that the 

complaint will be deemed sufficient if it 

fairly informs the respondent of ‘‘any 

grounds for discipline, and where 

applicable, Mandatory Disciplinary 

Rules identified in § 10.20(b) of Part 10 

of this Subsection that form the basis for 

the disciplinary proceeding,’’ whereas 

former § 10.134(b) provided that the 

complaint must fairly inform the 

respondent of ‘‘any violation of the 

Disciplinary Rules which form the basis 

for the disciplinary proceeding.’’ The 

reference to the Mandatory Disciplinary 

Rules of Part 10, instead of the 

imperative Rules of Professional 

Conduct, will obtain until such time as 

the Rules of Professional Conduct are 

adopted, at which time reference will be 

made to the imperative Rules of 

Professional Conduct. Section 11.34(c) 

adds a provision that ‘‘[t]he complaint 

shall be filed in the manner prescribed 

by the USPTO Director.’’

Section 11.35: Section 11.35 is added 

to provide for service of the complaint. 

Section 11.35, in essence, continues the 

provisions of former § 10.135, except as 

noted in the following discussion. 

Section 11.35(a)(2) provides for serving 

a complaint on a respondent by mailing 

a copy of the paper by ‘‘other delivery 

service’’ to respondent. The use of 

‘‘other delivery service that provides the 

ability to confirm delivery or attempted 

delivery,’’ in addition to first class mail 

and ‘‘Express Mail,’’ recognizes 

additional delivery services not 

recognized when former § 10.135 was 

adopted. Section 11.35(a)(4) adds a 

provision for delivery of a complaint 

‘‘[i]n the case of a respondent who 

resides outside the United States, by 

sending a copy of the complaint by any 

delivery service that provides ability to 

confirm delivery or attempted delivery, 

to: (i) [a] respondent who is a registered 

practitioner at the address provided to 

OED pursuant to § 11.11; or (ii) [a] 

respondent who is a nonregistered 

practitioner at the last address for the 

respondent known to the OED 

Director.’’ Unlike the provision of 

former § 10.135(b), § 11.35 does not 

require a second attempt to serve the 

complaint by any one of the procedures 

in § 11.35(a) before service is effected by 

publication. Section 11.35(b) provides 

for service by publication ‘‘for two 

consecutive weeks,’’ instead of the ‘‘four 

consecutive weeks’’ required by former 

§ 10.135(b), and the time for filing an 

answer is set at ‘‘thirty days from the 

second publication of the notice.’’

Section 11.35(b) also provides that 

‘‘[f]ailure to timely file an answer will 

constitute an admission of the 

allegations in the complaint in 

accordance with paragraph (d) of 

§ 11.36, and the hearing officer may 

enter an initial decision on default.’’

Section 11.35(c), which addresses 

serving a copy of a complaint on the 

attorney known to represent a 

respondent, provides that service on the 

attorney is in lieu of service on the 

respondent in the manner provided for 

in sections 11.35(a) or (b). 

Section 11.35(b) provides a procedure 

for accomplishing service if a copy of 

the complaint cannot be delivered to the 

respondent through any one of the 

procedures in § 11.35(a). In these 

circumstances, the OED Director serves 

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. 

Section 11.35(b) provides that failure to 

timely file an answer will constitute an 

admission of the allegations in the 

complaint in accordance with 

§ 11.36(d), and the hearing officer may 

enter an initial decision on default. 

Section 11.35(c) provides that if the 

respondent is known to the OED 

Director to be represented by an 

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

complaint is to be served on the 

attorney in lieu of the respondent in the 

manner provided for in § 11.35(a) or 

§ 11.35(b). 

Section 11.36: Section 11.36 is added 

to provide for the respondent’s answer 

to a complaint. Section 11.36, in 

essence, continues the provisions of 

former § 10.136, except as noted in the 

following discussion. Section 11.36(a) 

provides that the minimum thirty days 

for filing an answer runs ‘‘from the date 

the complaint is filed.’’

In § 11.36(b), the first sentence 

provides that when filing the answer 

with the hearing officer, it is to be filed 

‘‘at the address specified in the 

complaint.’’ In § 11.36(c), the third 

sentence requires respondent to state 

affirmatively any intent to raise a 

disability as a mitigating factor. The last 

three sentences in § 11.36(c) provide: 

that ‘‘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’’; that ‘‘a respondent who 

fails to do so cannot rely on a special 

matter of defense or disability’’; and that 

‘‘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.’’ 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 substantially 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 substantially the 

same standards as those set forth 

Section 9.32(i) of the American Bar 

Association Standards for Imposing 

Lawyer Sanctions (1992). Section 

11.36(d) provides that the hearing 

officer need receive no further evidence 

with respect to an allegation that is not 

denied by a respondent in the answer 

inasmuch as the allegation is deemed to 

be admitted and may be considered 

proven. Section 11.36(e) provides for 

entry of a default judgment if an answer 

is not timely filed. 

Section 11.37: Section 11.37 is 

reserved. 

Section 11.38: Section 11.38 is added 

to provide for a contested case. Section 

11.38, in essence, continues the 

provisions of former § 10.138. 

Section 11.39: Section 11.39 is added 

to provide for a hearing officer, the 

appointment and responsibilities of the 

hearing officer, and review of a hearing 

officer’s interlocutory orders and stays. 

Section 11.39, in essence, continues the 

provisions of former § 10.139, except as 

noted in the following discussion. 

Section 11.39(a), in addition to 

providing for the appointment of a 


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hearing officer by the USPTO Director 

under 5 U.S.C. 3105, also provides for 

a hearing officer appointed under 35 

U.S.C. 32. The hearing officer conducts 

the disciplinary proceedings. 

Section 11.39(b) provides that the 

hearing officer be independent of 

improper influence by requiring that the 

officer ‘‘not be subject to first level or 

second level supervision by the USPTO 

Director or his or her designee,’’ ‘‘not be 

subject to supervision of the person(s) 

investigating or prosecuting the case,’’

‘‘not be an individual who has 

participated in any manner in the 

decision to initiate the proceedings,’’

and ‘‘not have been employed under the 

immediate supervision of the 

practitioner.’’ The hearing officer must 

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. 

Section 11.39(b)(11) authorizes the 

hearing officer to impose against a party 

any of the sanctions provided in Rule 

37(b)(2) of the Federal Rules of Civil 

Procedure in the event that said party or 

any attorney, agent or designated 

witness of that party fails to comply 

with a protective order made pursuant 

to § 11.44(c). 

Section 11.39(c)(8) provides that the 

hearing officer has authority to adopt 

procedures and modify procedures for 

the orderly disposition of proceedings 

and sets forth a hearing officer’s 

responsibilities. Section 11.39(c)(10) 

provides that the hearing officer has 

authority to promote not only the 

efficient and timely conduct of a 

disciplinary proceeding, but also to 

promote the impartiality of the 

proceeding. 

Section 11.39(d) provides for the 

hearing officer issuing an initial 

decision ‘‘normally* * * within nine 

months of the date a complaint is filed,’’

instead of the six-month period used in 

former § 10.139(c). Section 11.39(d) 

provides for the initial decision issuing 

more than nine months after a 

complaint in the same circumstances 

contemplated by former § 10.139(c). 

Section 11.39(f) provides that if the 

OED Director or a respondent seeks 

review of an interlocutory order of a 

hearing officer under § 11.39(b)(2), any 

time period set by the hearing officer for 

taking action shall not be stayed unless 

ordered by the USPTO Director or the 

hearing officer. The language appearing 

in proposed § 11.39(f), ‘‘any time period 

set by the hearing officer for taking 

action shall not be stayed’’ has been 

changed to ‘‘any time period set by the 

hearing officer for taking action shall 

not be stayed.’’ The hearing officer sets 

times for the OED Director and 

respondent to act under §§ 11.39(c)(5) 

and (c)(8), but not for the hearing officer 

to act. Accordingly, the language was 

changed sua sponte to conform to the 

hearing officer’s recited responsibilities. 

Section 11.39(g) prohibits the hearing 

officer from engaging in ex parte 

discussions with any party on the merits 

of the complaint, beginning with 

appointment and ending when the final 

agency decision is issued. 

Section 11.40 is added to provide 

for representation of the respondent and 

the OED Director. Section 11.40(a), in 

essence, continues the provisions of 

former § 10.140(a). Section 11.40(b) 

provides for the OED Director to be 

represented by the Deputy General 

Counsel for Intellectual Property and 

Solicitor, and attorneys in the Office of 

the Solicitor. The attorneys representing 

the OED Director in disciplinary 

proceedings must 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 must 

remain screened from the investigation 

and prosecution of all disciplinary 

proceedings in order that they 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, for example, as 

they arise in a United States District 

Court or the United States Court of 

Appeals for the Federal Circuit. 

Section 11.41: Section 11.41 is added 

to provide for filing of papers. Section 

11.41, in essence, continues the 

provisions of former § 10.141 except as 

noted in the following discussion. The 

first sentence of § 11.41(a) provides that 

the provisions of not only § 1.8, but also 

§ 2.197, do not apply to disciplinary 

proceedings. The first sentence of 

former § 10.141 has been moved to be 

the second sentence of § 11.41(a). 

Section 11.41(b) provides that all papers 

filed after entry of an initial decision by 

the hearing officer are to be filed with 

the USPTO Director and that a copy of 

the paper shall be served on the OED 

Director. The provision of former 

§ 10.141(c) has been moved to be the 

third sentence of § 11.41(b). 

Section 11.42: Section 11.42 is added 

to provide for service of papers other 

than a complaint in a disciplinary 

proceeding. Section 11.42, in essence, 

continues the provisions of former 

§ 10.142 except as noted in the 

following discussion. Sections 

11.42(a)(2) and 11.42(b)(2) provide for 

serving a paper on the respondent’s 

attorney, or upon a respondent who is 

not represented, by mailing a copy of 

the paper by ‘‘other delivery service’’ to 

the attorney or the respondent. The use 

of ‘‘other delivery service,’’ in addition 

to first class mail and ‘‘Express Mail,’’

recognizes additional delivery services 

not recognized when former § 10.142 

was adopted. Similarly, § 11.42(c)(2) 

provides for the respondent serving a 

paper on the representative of the OED 

Director by mailing a copy by ‘‘other 

delivery service.’’

Section 11.43: Section 11.43 is added 

to provide for motions. In essence, 

§ 11.43 continues the provisions of 

former § 10.143. 

Section 11.44: Section 11.44 is added 

to provide for hearings in disciplinary 

proceedings. Except as noted in the 

following discussion, § 11.44, in 

essence, continues the provisions of 

former § 10.144. The third sentence of 

§ 11.44(a) provides that the hearing 

officer will set the time and place for the 

hearing. In doing so, the hearing officer 

should normally give preference to a 

Federal facility in the district where the 

Office’s principal office is located or 

Washington, DC, inasmuch as the 

practitioner is practicing before the 

Office. Nevertheless, the hearing officer 

should also give due regard to the 

convenience and needs of the parties, 

witnesses, or their representatives. The 

fifth sentence of § 11.44(a) provides that 

in cases involving an incarcerated 

respondent, any necessary oral hearing 

may be held at the location of 

incarceration. The seventh sentence of 

§ 11.44(a) provides that the hearing be 

conducted as if the proceeding were 

subject to 5 U.S.C. 556. In some 

instances, such as when the OED 

Director and respondent reach a 

settlement, an oral hearing is 

unnecessary, and therefore, no oral 

hearing is conducted. The eighth 

sentence of § 11.44(a) provides that a 

copy of the transcript shall be provided 

to the OED Director and the respondent 

at the expense of the Office. 

Section 11.44(b) provides that when 

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. 

Section 11.44(c) provides that a 

hearing under this section will not be 


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open to the public except that the 

hearing officer may grant a request by a 

respondent to open his or her hearing to 

the public and make the record of the 

disciplinary proceeding available for 

public inspection, provided, a protective 

order is entered to exclude from public 

disclosure information which is 

privileged or confidential under 

applicable laws or regulations. 

Section 11.45: Section 11.45 is added 

to provide for amendment of pleadings. 

This section permits the OED Director to 

amend the complaint to include 

additional charges with the 

authorization of the hearing officer, but 

without authorization from the 

Committee on Discipline. The amended 

charges may be based upon conduct 

committed before or after the complaint 

was filed. If amendment of the 

complaint is authorized, the hearing 

officer must authorize amendment of 

the answer. To avoid prejudice by the 

amendments to any party, reasonable 

opportunity is given to meet the 

allegations in the complaint or answer 

as amended, and the hearing officer 

makes findings on any issue presented 

by the complaint or answer as amended. 

Sections 11.46–11.48: Sections 11.46–

11.48 are reserved. 

Section 11.49: Section 11.49 is added 

to provide each party’s burden of proof. 

This section, in essence, continues the 

provisions of former § 10.149. 

Section 11.50: Section 11.50 is added 

to provide for applicable rules of 

evidence. This section, in essence, 

continues the provisions of former 

§ 10.150. 

Section 11.50(c), which provides for 

discovery of government documents, in 

essence, continues the provisions for 

former § 10.150(c) and further specifies 

that the discovery ‘‘include[es], but [is] 

not limited to, all papers in the file of 

a disciplinary investigation,’’ which are 

admissible without extrinsic evidence of 

authenticity. 

Section 11.51: Section 11.51 is added 

to provide for the use of depositions. 

Except as noted in the following 

discussion, § 11.51, in essence, 

continues the provisions of former 

§ 10.151. The last sentence in § 11.51(a), 

‘‘[d]epositions may not be taken to 

obtain discovery, except as provided for 

in paragraph (b) of this section,’’ is not 

found in former § 10.151, and has been 

added to § 11.51(a) to preclude the use 

of depositions to obtain discovery that 

the hearing officer has not authorized. 

Section 11.52: Section 11.52 provides 

for discovery. Except as noted in the 

following discussion, § 11.52, in 

essence, continues the provisions of 

former § 10.152. Section 11.52, like 

former § 10.152, requires a party to 

establish that discovery is reasonable 

and relevant. However, § 11.52 does not 

specify that the party seeking discovery 

must do so ‘‘in a clear and convincing 

manner.’’ It is sufficient that the party 

establish that discovery is reasonable 

and relevant. Section 11.52(b)(1), unlike 

former § 10.152(b), does not prohibit 

reasonable and relevant discovery that 

will be used solely for crossexamination. 

Section 11.53: Section 11.53, which 

provides for proposed findings and 

conclusions as well as post-hearing 

memorandum, in essence continues the 

provisions of former § 10.153. 

Section 11.54: Section 11.54 provides 

for proposed findings and conclusions 

as well as post-hearing memoranda. 

Except as noted in the following 

discussion, § 11.54, in essence, 

continues the provisions of former 

§ 10.154. To codify long-standing 

practice, § 11.54(a)(2) adds a provision 

specifically referencing inclusion of ‘‘an 

order of default judgment’’ in the 

decision, and for the hearing officer to 

transmit the entire record to the OED 

Director after issuing the decision. To 

improve efficiencies, § 11.52(a)(2) 

provides for the hearing officer to 

transmit a copy of the decision to the 

OED Director, instead of transmitting 

copies to both the OED Director and the 

OED Director’s representative. To 

conform with the inclusion of ‘‘an order 

of default judgment’’ in the decision, the 

last sentence of § 11.52(a)(2) also 

provides that 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. Section 11.54(b) 

provides that in determining any 

sanction after a finding that a 

practitioner has violated a ground for 

discipline, the following four factors 

must be considered if they are 

applicable: (1) Whether the practitioner 

has violated a duty owed to a client, to 

the public, to the legal system, or to the 

profession; (2) whether the practitioner 

acted intentionally, knowingly, or 

negligently; (3) the amount of the actual 

or potential injury caused by the 

practitioner’s misconduct; and (4) the 

existence of any aggravating or 

mitigating factors. 

Section 11.55: Section 11.55 is added 

to provide a procedure for appealing a 

decision to the USPTO Director. While 

§ 11.55, in essence, continues a number 

of the provisions of former § 10.155, 

numerous provisions have been added 

to clarify and codify procedures. For 

example, beginning with the second 

sentence, § 11.55(a) provides: that the 

‘‘appeal shall include the appellant’s 

brief;’’ that ‘‘[i]f more than one appeal 

is filed, the party who files the appeal 

first is the appellant for purpose of this 

rule;’’ ‘‘[i]f appeals are filed on the same 

day, the respondent is the appellant;’’

‘‘[i]f an appeal is filed, then the OED 

Director shall transmit the entire record 

to the USPTO Director;’’ that ‘‘[a]ny 

cross-appeal shall be filed within 

fourteen days after the date of service of 

the appeal pursuant to § 11.42, or thirty 

days after the date of the initial decision 

of the hearing officer, whichever is 

later;’’ that ‘‘[t]he cross-appeal shall 

include the cross-appellant’s brief;’’ that 

‘‘[a]ny appellee or cross-appellee brief 

must be filed within thirty days after the 

date of service pursuant to § 11.42 of an 

appeal or cross-appeal;’’ and that ‘‘[a]ny 

reply brief must be filed within fourteen 

days after the date of service of any 

appellee or cross-appellee brief.’’

Section 11.55(b) provides that an 

appeal or cross-appeal must include 

exceptions to the decisions of the 

hearing officer and supporting reasons 

for those exceptions, and that any 

exception not raised will be deemed to 

have been waived and will be 

disregarded by the USPTO Director in 

reviewing the initial decision. 

Section 11.55(c) provides specific 

information regarding where briefs are 

filed, the content and arrangement of 

briefs, and paper size. Section 11.55(d) 

sets page limit lengths for briefs, as well 

as other requirements. Section 11.55(e) 

provides that the USPTO Director may 

refuse entry of a nonconforming brief. 

Section 11.55(g) proscribes filing further 

briefs or motions unless permitted by 

the USPTO Director. Section 11.55(i) 

provides that 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. 

Section 11.56: Section 11.56 is added 

to provide for a decision of the USPTO 

Director. Section 11.56, in essence, 

continues the provisions of former 

§ 10.156, except as noted in the 

following discussion. The second 

sentence of § 11.56(a) provides that the 

USPTO Director may, in addition to 

affirming, reversing or modifying the 

initial decision of the hearing officer, 

‘‘remand the matter to the hearing 

officer for such further proceedings as 

the USPTO Director may deem 

appropriate.’’

Section 11.56(b) provides that the 

final decision of the USPTO Director 


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may, in addition to the actions 

authorized in former § 10.156(b), reverse 

or modify the initial decision. This 

section also provides that a ‘‘final 

decision suspending or excluding a 

practitioner shall require compliance 

with the provisions of § 11.58;’’ and that 

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.’’

Section 11.56(c) adds several 

provisions not set forth in former 

§ 10.156. The respondent and the OED 

Director are limited to making a single 

request for reconsideration or 

modification of the decision by the 

USPTO Director, and the request must 

be filed within twenty days from the 

date of entry of the decision. No request 

for reconsideration or modification will 

be granted unless the request is based 

on newly discovered evidence or error 

of law or fact, and the requester must 

demonstrate that any newly discovered 

evidence could not have been 

discovered any earlier by due diligence. 

The request has 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. 

Section 11.57: Section 11.57 is added 

to provide for review of the final 

decision of the USPTO Director. Section 

11.57, in essence, continues the 

provisions of former § 10.157, except as 

noted in the following discussion. 

Section 11.57(a) provides that review of 

final decisions of the USPTO Director is 

available by petition filed in the United 

States District Court for the District of 

Columbia in accordance with the court’s 

local rule. Section 11.57(a) draws the 

practitioner’s attention to the necessity 

of serving the USPTO Director and 

complying with service requirements of 

Rule 4 of the Federal Rules of Civil 

Procedure and 37 CFR 104.2. 

Section 11.57(b), unlike former 

§ 10.156(b), provides that except for a 

request for reconsideration in § 11.56(c), 

‘‘an order for discipline in a final 

decision will not be stayed except on 

proof of exceptional circumstances.’’

Section 11.58: Section 11.58 is added 

to set forth the duties of a disciplined 

or resigned practitioner. Section 11.58, 

in essence, continues the provisions of 

former § 10.158, except as noted in the 

following discussion. Section 11.58, in 

addition to referring to a practitioner 

who is excluded or suspended, also 

refers to practitioners who have 

resigned. Practitioners who resign are 

those addressed in § 11.11(e). Section 

11.58(a) provides that an excluded, 

suspended or resigned practitioner will 

not be automatically reinstated at the 

end of his or her period of exclusion or 

suspension, that they must comply with 

the provisions of this section and 

§§ 11.12 and 11.60 to be reinstated, and 

that failure to comply with the 

provisions of this section may constitute 

both grounds for denying reinstatement 

or readmission and be cause for further 

action, including seeking further 

exclusion, suspension, and for 

revocation of any pending probation. 

Section 11.58(b)(1)(i) requires the 

practitioner to file, within thirty days 

after the date of entry of the order of 

exclusion, suspension, or acceptance of 

resignation, 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 

sections 11.58(b) and 11.58(c). 

Section 11.58(b)(1)(iii) requires that 

the practitioner give notice to state and 

Federal jurisdictions and administrative 

agencies to which the practitioner is 

admitted to practice and clients ‘‘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.’’ Section 

11.58(b)(1)(iii) requires practitioners to 

‘‘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.’’

Section 11.58(b)(1)(iv) requires the 

practitioners to ‘‘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.’’

Section 11.58(b)(1)(v) requires 

practitioners to ‘‘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.’’

Section 11.58(b)(1)(vii) requires 

practitioners to ‘‘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.’’

Section 11.58(b)(2) provides that 

within forty-five days after entry of the 

order of suspension, exclusion, or of 

acceptance of resignation, the 

practitioner must file with the OED 

Director an affidavit of compliance 

certifying that the practitioner has fully 

complied with the provisions of the 

order, § 11.58, and with Mandatory 

Disciplinary Rules identified in 

§ 10.20(b) of Part 10 for withdrawal from 

representation. Appended to the 

affidavit of compliance must be copies 

of specified documents, a schedule 

regarding bank accounts 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, a schedule describing the 

practitioner’s disposition of all client 

and fiduciary funds for practice before 

the Office, proof of proper distribution 

of the funds and closing of the accounts, 

a list of all other state, Federal and 

administrative jurisdictions to which 

the practitioner is admitted to practice, 

and an affidavit providing information 

specified in § 11.58(b)(2)(vi). 

Section 11.58(c) provides that after 

entry of the order of exclusion or 

suspension, or acceptance of 

resignation, the practitioner is 

proscribed from accepting any new 

retainer regarding immediate or 

prospective business before the Office, 

or engaging as a practitioner for another 

in any new case or legal matter 

regarding practice before the Office. The 

practitioner will be granted limited 

recognition for a period of thirty days. 

During the thirty-day period of limited 

recognition, the practitioner is to 

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 practitioner 

must so advise the client so that the 

client may make other arrangements. 


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Section 11.58(d) requires the 

practitioner to keep and maintain 

records of the various steps taken under 

§ 11.58 so that proof of compliance with 

this section and with the exclusion or 

suspension order will be available in 

any subsequent proceeding. The OED 

Director will require the practitioner to 

submit such proof as a condition 

precedent to the granting of any petition 

for reinstatement. 

Section 11.58(e) continues the 

practice under former § 10.158(c) for an 

excluded and suspended practitioner to 

act as a paralegal for another 

practitioner, and extending the practice 

to resigned practitioners and 

practitioners on disability inactive 

status. 

Section 11.58(f) continues the practice 

under former § 10.158(d) proscribing 

reinstatement of excluded and 

suspended practitioners who act as a 

paralegal or perform services under 

§ 11.58(e) unless they satisfy specified 

conditions, and extends the practice to 

resigned practitioners and practitioners 

on disability inactive status. 

Section 11.59: Section 11.59 is added 

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) provides that 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, unless the 

USPTO Director orders that the 

proceeding or a portion of the record be 

kept confidential. This section further 

provides that information may be 

withheld as necessary to protect the 

privacy of third parties or as directed in 

a protective order issued pursuant to 

§ 11.44(c). This section also provides 

that the record of a proceeding that 

results in a practitioner’s transfer to 

disability inactive status shall not be 

available to the public. 

Section 11.59(c) provides that an 

order excluding a practitioner on 

consent under § 11.27 and the affidavit 

required under paragraph (a) of § 11.27 

shall be available to the public unless 

the USPTO Director orders that the 

proceeding or a portion of the record be 

kept confidential. The section also 

provides that information in the order 

and affidavit may be withheld as 

necessary to protect the privacy of third 

parties or as directed in a protective 

order under § 11.44(c)(2). This section 

also provides that the affidavit required 

under § 11.27(a) shall not be used in any 

other proceeding except by order of the 

USPTO Director or upon written 

consent of the practitioner. 

Section 11.60: Section 11.60 is added 

to address petitions for reinstatement by 

excluded, suspended or resigned 

practitioners. Section 11.60 continues 

the practices of former § 10.160, except 

as noted in the following discussion. In 

addition to referencing suspended and 

excluded practitioners throughout the 

section, as did former § 10.160, § 11.60 

also specifically references and applies 

the provisions to a resigned practitioner. 

Section 11.60(a) prohibits the 

practitioners from resuming the practice 

of patent, trademark, or other nonpatent law before the Office until 

reinstated by order of the OED Director 

or the USPTO Director. 

Section 11.60(b) provides that 

excluded or suspended practitioners are 

eligible to apply for reinstatement only 

upon expiration of the period of 

suspension or exclusion and the 

practitioner’s full compliance with 

§ 11.58. An excluded practitioner can be 

eligible to apply for reinstatement no 

earlier than at least five years from the 

effective date of the exclusion. The 

section also provides that a resigned 

practitioner can be eligible to petition 

for reinstatement and must show 

compliance with § 11.58 no earlier than 

at least five years from the date the 

practitioner’s resignation is accepted 

and an order is entered excluding the 

practitioner on consent. 

Section 11.60(c) provides for filing a 

petition for reinstatement with the OED 

Director accompanied by the fee 

required by § 1.21(a)(10). A practitioner 

who has violated any provision of 

§ 11.58 is not eligible for reinstatement 

until a continuous period of the time in 

compliance with § 11.58 that is equal to 

the period of suspension or exclusion 

has elapsed. A resigned practitioner is 

not eligible for reinstatement until 

compliance with § 11.58 is shown. If a 

practitioner who is not eligible for 

reinstatement files a petition, or if the 

petition is insufficient or defective on 

its face, the OED Director may dismiss 

the petition. Otherwise the OED 

Director considers the petition for 

reinstatement. The practitioner seeking 

reinstatement has the burden of proof by 

clear and convincing evidence. The 

evidence must be included in or 

accompany the petition. The evidence 

must establish: that the practitioner has 

the good moral character and 

reputation, competency, and learning in 

law required under § 11.7 for admission; 

that resumption of practice before the 

Office will not be detrimental to the 

administration of justice or subversive 

to the public interest; and that the 

practitioner has complied with the 

provisions of § 11.58 for the full period 

of the suspension, or at least five years 

if the practitioner resigned or was 

excluded. 

Section 11.60(d)(1) provides for the 

OED Director to grant a petition for 

reinstatement where the practitioner has 

complied with §§ 11.60(c)(1) through 

(c)(3) by entering an order for 

reinstatement conditioned on payment 

of the costs of the disciplinary 

proceeding to the extent set forth in 

§ 11.60(d)(2). Section 11.60(d)(3) 

provides for granting relief, in whole or 

part, from an order assessing costs on 

grounds of hardship, special 

circumstances, or other good cause. 

Good cause may include, for example, 

the disciplinary proceeding costs in 

excess of $1,500 incurred by the 

practitioner were not anticipated 

because the disciplinary proceeding 

began before the effective date of these 

rules and concluded thereafter. Under 

the old rules, the maximum cost that 

could be recovered was $1,500. 

Section 11.60(e) provides that where 

the OED Director finds the practitioner 

is unfit to resume the practice of patent 

law before the Office, the practitioner is 

first provided with an opportunity to 

show cause in writing why the petition 

should not be denied. If unpersuaded by 

the practitioner’s showing, the OED 

Director must deny the petition. The 

OED Director may require the 

practitioner, in meeting the 

requirements of § 11.7, to take and pass 

an examination under § 11.7(b), ethics 

courses, and/or the Multistate 

Professional Responsibility 

Examination. The OED Director must 

provide findings, together with the 

record. The findings must include 

specified information regarding ‘‘Prior 

Proceedings.’’


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Section 11.60(f) provides for 

resubmission of petitions for 

reinstatement if a petition for 

reinstatement is denied. A petition for 

reinstatement may not be resubmitted 

until the expiration of at least one year 

following the denial unless the order of 

denial provides otherwise. 

Section 11.61: Section 11.61 is added 

to provide savings clauses and 

continues the current practice under 

former § 10.161, except as discussed 

below. Section 11.61(c) provides that 

sections 11.24, 11.25, 11.28 and 11.34 

through 11.57 apply to all proceedings 

in which the complaint is filed on or 

after the effective date of these 

regulations. Section 11.61(c) also 

provides that §§ 11.26 and 11.27 apply 

to matters pending on or after the 

effective date of these regulations. 

Section 11.61(d) provides that sections 

11.58 through 11.60 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. 

Sections 11.62—11.99. Sections 

11.62–11.99 are reserved. 

Section 41.5: Section 41.5(e) would be 

revised to change a cross-reference to 

§ 11.22. 

Response to comments: The Office 

published a notice proposing changes to 

the Office’s rules governing disciplinary 

proceedings for attorneys, registered 

patent agents and persons granted 

limited recognition to practice before 

the Office. See Changes to 

Representation of Others Before the 

United States Patent and Trademark 

Office; Notice of proposed rule making, 

68 FR 69442 (Dec. 12, 2003), 1278 Off. 

Gaz. Pat. Office 22 (Jan. 6, 2004) 

(proposed rule). The Office received one 

hundred forty-seven comments (from 

intellectual property organizations and 

patent practitioners) in response to this 

notice. The Office thereafter published a 

supplemental notice of proposed rule 

making for the rules governing 

disciplinary proceedings. See Changes 

to Representation of Others Before The 

United States Patent and Trademark 

Office, Supplemental Notice of 

Proposed Rule Making, 72 FR 9196 (Feb. 

28, 2007), 1316 Off. Gaz. Pat. Office 123 

(Mar. 27, 2007) (supplemental proposed 

rule). The Office received fourteen 

comments (from intellectual property 

organizations and patent practitioners) 

in response to this notice. The Office’s 

responses to the comments follow: 

Comment 1: Two comments suggested 

that the word ‘‘add’’ in the instructions 

for the amendment to § 11.1 be changed 

to ‘‘revise’’ inasmuch as a definition of 

‘‘State’’ was contained in the section in 

the rules adopted June 24, 2004. 

Response: The suggestion in the 

comment has been adopted. 

Comment 2: A comment inquired as 

to the meaning of ‘‘other proceedings’’

in § 11.2(c), and suggested that the rule 

either permit the Director to stay other 

proceedings or to stay the proceedings 

based on good and sufficient reasons 

presented by a prospective registrant in 

a petition. 

Response: The suggestion has not 

been adopted. This section, like 

§ 1.181(f), makes clear that the filing of 

a petition does not operate to stay any 

other proceeding. Thus, a petition by an 

applicant for registration who has paid 

the $1600 application fee and is seeking 

review of the decision requiring the 

payment, would not stay another 

proceeding in the Office regarding the 

same applicant, such as the processing 

of the individual’s application to take 

the registration examination. No rule is 

believed necessary to enable the OED 

Director, where appropriate, to 

coordinate other proceedings within the 

OED Director’s jurisdiction. 

Comment 3: Two comments suggested 

that clarification is required regarding 

whether a fee is needed for a petition 

under § 11.2(e). 

Response: No clarification is believed 

necessary. Section 11.2(e) does not 

provide for or otherwise refer to a fee to 

invoke the supervisory authority of the 

USPTO Director in appropriate 

circumstances in a disciplinary matter. 

Therefore, no fee for the petition is 

required in disciplinary matters. 

Comment 4: One comment, after 

noting that § 11.3 as revised to eliminate 

a prohibition against petitioning to 

waive a disciplinary rule and the 

explanation for the revision, suggested 

the elimination of provisions in § 11.3 

for suspensions of the rules. 

Response: The disciplinary rules 

containing the ethical standards of 

practice for practitioners will be only 

one of several subjects addressed in Part 

11. Part 11 currently includes, inter alia, 

rules addressing registration to practice, 

rules addressing investigations and 

rules for disciplinary procedures. 

Section 11.3 in Part 11, like § 1.183 in 

Part 1, provides both a procedure for 

requesting suspension of a rule, and a 

standard upon which the decision is 

made. 

Comment 5: A comment noted that 

§ 11.3 no longer provides immunity for 

complainants, witnesses, and 

disciplinary counsel, that the lack of 

immunity is contrary to longstanding 

policy found in Rule 12 of the Model 

Rules of Lawyer Disciplinary 

Enforcement for the reasons explained 

in the Commentary to Rule 12, and 

recommended that this section provide 

absolute immunity for complainants, 

witnesses and OED personnel. 

Response: While we appreciate the 

provisions of Rule 12 of the Model 

Rules of Lawyer Disciplinary 

Enforcement and the expressed reasons 

for providing immunity, it is beyond the 

authority of the USPTO Director to 

provide immunity by rule. For example, 

as discussed below regarding § 11.18, all 

persons filing written communications 

with the Office, including complainants, 

are subject to the provisions of 18 U.S.C. 

1001. The Office cannot provide 

complainants with immunity from 

violation of a criminal law. 

Comment 6: One comment observed 

that the first sentence of § 11.5 could be 

construed to imply that preparation and 

prosecution privileges do not 

encompass practice before the Board of 

Patent Appeals and Interferences 

inasmuch as an ex parte proceeding 

before the Board arguably is not 

prosecution of a patent application. The 

comment suggested revising the 

language to read ‘‘including 

representing applicants in patent 

matters before the Board of Patent 

Appeals and Interferences.’’

Response: The suggestion to revise 

§ 11.5(a) is adopted in part. In the first 

sentence, the word ‘‘applications’’ has 

been changed to ‘‘matters,’’ and the 

sentence now provides for keeping a 

register of the names of attorneys and 

agents who are ‘‘recognized as entitled 

to represent applicants having 

prospective or immediate business 

before the Office in the preparation and 

prosecution of patent matters.’’ The 

change is inclusive of representing 

applicants before the Board of Patent 

Appeals and Interferences in a patent 

matter. 

Comment 7: Two comments suggested 

that ‘‘or retaining’’ be added after 

‘‘employing’’ in the last sentence of 

§ 11.5(b). One comment pointed out that 

the addition conforms to Rule 5.3(a) of 

the American Bar Association’s Rules of 

Professional Conduct. The other 

comment pointed out that a practitioner 

may retain, as opposed to employ, a 

non-practitioner assistant, under the 

supervision of the practitioner to 

prepare presentations to the Office. 

Response: The suggestion to add ‘‘or 

retaining’’ after ‘‘employing’’ in the last 

sentence of § 11.5(b) has been adopted. 

Comment 8: Two comments presented 

similar suggestions for replacement of 

the phrase ‘‘in preparation of said 

presentations’’ in the last sentence of 

§ 11.5(b). One comment suggested 

replacing the phrase with ‘‘in matters 

pending or contemplated to be 

presented before the Office’’; the other 

suggested using ‘‘matters pending or 


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contemplated to be presented to the 

Office.’’ Both comments suggested the 

change would more accurately define 

the activities and be consistent with 

other language in this section. A third 

comment suggested the non-practitioner 

should be broadened to include a 

person or entity which is not technically 

the practitioner’s employee or on the 

practitioner’s payroll, and who may be 

an independent contractor who 

communicates or consults with a client 

in working with a practitioner. 

Response: The two similar 

suggestions for replacement of the 

phrase ‘‘in preparation of said 

presentations’’ have been adopted by 

replacing phrase with ‘‘matters pending 

or contemplated to be presented to the 

Office’’ in the last sentence of § 11.5(b). 

The suggestion to broaden the nonpractitioner to include a person or entity 

which is not technically the 

practitioner’s employee or on the 

practitioner’s payroll to communicate or 

consult with clients working for the 

practitioner has not been adopted. The 

persons and entities would not be 

subject to a practitioner’s supervision, 

and absent supervision or other 

controls, could be engaged in the 

unauthorized practice of law by 

providing unsupervised and incorrect 

legal advice. The Office’s Disciplinary 

Rules prohibit a practitioner from aiding 

another in the unauthorized practice of 

law. See 37 CFR 10.47. Persons or 

entities engaging in the unauthorized 

practice of law will be reported to the 

authorities in the appropriate 

jurisdiction(s). See § 11.19(d). The 

persons and entities contemplated by 

the suggestion are beyond the ambit of 

the Office’s Disciplinary Rules. Under 

the suggestion, the practitioners have no 

supervisory authority over the persons 

or entities, and therefore could violate 

the Disciplinary Rules for nonsupervision or aiding unauthorized 

practice of law. Thus, the Office could 

not protect the public from the actions 

of the persons or entities, though 

Congress has made the USPTO Director 

responsible for protecting the public 

from the misdeeds of those who practice 

before the Office. 

Comment 9: One comment urged that 

§ 11.5 places unnecessary and improper 

restrictions on practitioners who may 

work with non-practitioner invention 

developers who communicate or consult 

with clients who may want to file 

documents with the Office. The 

comment said it is unreasonable and 

improper for the Office to interfere with 

the relationship between invention 

promoters and practitioners by 

restricting practitioners from working 

with non-practitioners, including 

invention promoters who may consult 

or communicate with clients regarding 

their inventions, so long as legal advice 

and the filing of patent applications, 

attending hearings, etc. remain the 

responsibility of the practitioner. The 

comment suggested changes to § 11.5 to 

eliminate the following ‘‘overly broad’’

language: law-related services ‘‘that 

comprehend[] any matter connected 

with the presentation to the Office,’’ the 

preparation of necessary documents ‘‘in 

contemplation of filing the documents’’

with the Office, and ‘‘communicating 

with * * * a client concerning matters 

pending or contemplated to be 

presented before the Office’’ in § 11.5(b); 

‘‘consulting with * * * a client in 

contemplation of filing a patent 

application or other document with the 

office’’ in § 11.5(b)(1). The comment 

urged that a person who may have 

prospective business before the Office 

may want to utilize both lay and legal 

service providers in connection with his 

invention, including non-practitioners 

who merely assemble information to 

provide non-legal services at a much 

lower cost than practitioners would 

charge. 

Response: The Office disagrees that 

§ 11.5 places unnecessary and improper 

restrictions on practitioners who may 

work with non-practitioners who 

communicate or consult with clients. 

Nothing in the rule prevents a person 

having prospective business before the 

Office from utilizing both lay and legal 

service providers in connection with 

that person’s invention. Nonpractitioners who assemble information 

to provide only non-legal services at a 

cost may continue to provide non-legal 

services. However, non-practitioners 

who, for example, provide law-related 

services ‘‘that comprehend[] any matter 

connected with the presentation to the 

Office’’ or prepare necessary documents, 

such as patent applications, ‘‘in 

contemplation of filing the documents’’

with the Office must be employed or 

retained by the practitioner and under 

the practitioner’s supervision. The 

suggestion to change the language of 

§ 11.5 to enable non-practitioners to 

consult or communicate with clients 

regarding their inventions, and enable 

clients to obtain services at lower cost 

than practitioners can provide has not 

been adopted. Contrary to the comment, 

assembly of information is not always a 

non-legal service; for example, 

providing a list of patent references 

found in a search of the prior art is a 

non-legal service whereas transmitting 

information to the practitioner to use to 

describe the invention in a patent 

application is a legal service. The value 

of competent legal service and advice, 

including communications, 

consultations, and assembly of 

information for inventors can be 

significantly more valuable than its cost. 

Its value may be more significant for 

unsophisticated inventors who need 

expert evaluation of the merits or real 

prospects of legal protection for their 

invention. The Office ‘‘frequently finds 

itself challenged by so-called ‘invention 

promoters’ who exploit unsophisticated 

inventors, heap every invention with 

praise regardless of the merits or the real 

prospects of legal protection, and entice 

inventors into engagement agreements 

filled with hollow guarantees of patent 

protection and promises of royaltybearing licenses that seldom yield 

anything of any significant value.’’

Bender v. Dudas, 490 F.3d 1361, 1363 

(Fed Cir. 2007). A practitioner working 

with an unsupervised non-practitioner 

facilitates such practices. For example, 

in Bender, the Court found ‘‘[a]t no 

point did Gilden [a practitioner] consult 

with the inventors regarding the filing of 

a design patent application or the 

embellished drawings.’’ Id. at 1364. At 

a minimum, it is necessary that the 

practitioner representing the client not 

only consult with the client, but also 

that the consultation ‘‘otherwise 

advise[] that inventor on how best to 

proceed in his or her particular case.’’

Id. at 1365. Non-practitioners are not 

entitled to provide legal advice or 

otherwise practice law. To the extent 

practice of law includes a law-related 

service that comprehends any matter 

connected with the presentation to the 

Office, the preparation of necessary 

documents in contemplation of filing 

the documents with the Office, and 

communicating with * * * a client 

concerning matters pending or 

contemplated to be presented before the 

Office as in § 11.5(b), a practitioner 

authorized by relevant law must provide 

the legal services. For example, 

consultation with a client in 

contemplation of filing a patent 

application or other document with the 

Office as in § 11.5(b)(1) requires a 

registered practitioner to provide the 

services. A practitioner may not 

circumvent the Disciplinary Rules 

through the actions of another. See 37 

CFR 10.23(b)(2). For example, a nonpractitioner who is neither employed 

nor retained by the practitioner, or who 

is not under the supervision of the 

practitioner, may not assist the 

practitioner in matters pending or 

contemplated to be presented to the 

Office. 

Comment 10: Several comments 

responded to the Office’s inquiry 


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whether the rules ‘‘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.’’ Two comments pointed 

out that § 11.5(b)(1) would be internally 

inconsistent if patent agents could 

provide advice about ‘‘alternative forms 

of protection that may be available 

under state law’’ but not prepare and 

file assignments in connection with the 

applications they have prepared. One 

comment suggested that the Office lacks 

the authority to, and should not, 

prohibit a patent agent or registered 

patent attorney licensed only by the 

Office from preparing an assignment for 

an application he or she is prosecuting, 

while another comment recommended 

that the rule explicitly provide for 

preparing assignments and licenses for 

patent applicants and patentees. One 

comment said that it has been the 

Office’s position that a registered patent 

agent could both prepare a patent 

assignment or license if not prohibited 

by state law and submit the assignment 

or license for recordation, and 

recommended that this position be 

explicitly stated in the rules. The 

comment also urged that the rule follow 

the practice of states that permit 

paraprofessionals, such as patent agents 

to complete and modify assignment and 

license documents under an attorney’s 

supervision. The comment pointed out 

that allowing these types of activities is 

particularly important in a corporate 

environment where only one or two 

form agreements may be used in certain 

clearly defined situations. One comment 

suggested it is unnecessary for the 

Office to explicitly provide for 

appropriate circumstances when a 

patent agent may prepare an assignment 

and/or cause an assignment to be 

executed not only because these 

activities are incidental to the 

preparation and prosecution of patent 

applications or incidental to the record 

for an issued patent, but also because of 

the Office’s long-standing position a 

registered patent agent may prepare a 

patent assignment and cause such 

assignment to be executed if not 

prohibited by state law. One comment 

objected to a requirement that if a 

document is submitted for recordation 

by an attorney or agent, that the attorney 

or agent submitting the document must 

be separately licensed by the state bar in 

which the assignor and/or assignee 

lives, in addition to being licensed by 

the Office. Two comments inquired how 

the transfer of rights in the U.S. 

invention from a foreign inventor to a 

foreign company should be handled. 

One comment suggested the attorney or 

agent who is handling the substantive 

prosecution needs to be able to act fast 

to resolve ownership questions, for 

example to file a terminal disclaimer, or, 

for example, to ensure the correctness of 

the assignment recordation affirmations 

that the prosecuting attorney or agent 

makes when submitting the assignee’s 

name on the issue fee transmittal sheet. 

Several comments cited impracticalities 

and difficulties if a patent agent is 

unable to prepare assignments, for 

example, where the application to be 

assigned has multiple inventors living 

in different states, hiring an attorney for 

each state simply to cause an 

assignment to be executed in such State 

would be an unnecessary administrative 

burden. One comment suggested that 

agents be allowed to select, not draft or 

vary, one or more form assignments by 

having the Office adopt standard form 

assignments, and that the Office 

establish well-defined, common, 

specific ‘‘safe harbor’’ situations in 

which agents can recommend such 

standard forms to their clients. 

Response: The filing of an assignment, 

while not legally required for 

prosecution, is no doubt ‘‘reasonably 

necessary and incident to’’ prosecution 

of a patent application. This is true to 

enable an assignee of record of the 

entire interest to control prosecution of 

the application to the exclusion of the 

assignor. See 37 CFR 1.33(b)(4) and 

3.71. 

The diverse comments regarding the 

authority of practitioners to preparing 

assignments and licenses for patent 

applicants and patentees demonstrate 

the necessity for the Office to provide 

for appropriate circumstances when 

registered practitioners, including 

patent agents, may do so. Inasmuch as 

numerous situations involving 

assignments arise, the Office is not 

attempting by rule to explicitly identify 

all circumstances when a registered 

practitioner may prepare or cause an 

assignment to be signed. Instead, the 

provisions of § 11.5(b)(1) are written to 

broadly outline the circumstances when 

a practitioner may prepare an 

assignment for patent applicants and 

patentees by virtue of the practitioner’s 

registration. 

There is no statute or rule requiring 

training in contract law as a condition 

to be registered as a patent agent. No 

comment suggested any means whereby 

patent agents could receive adequate 

training and the competence to provide 

legal advice could be confirmed. Absent 

adequate training, a person drafting an 

assignment could overlook issues for 

which lawyers have received training. 

For example, in addition to preparing an 

assignment form, it may be necessary to 

advise whether the inventor is obligated 

to assign the invention, and if so, to 

whom. It may be necessary to resolve 

ownership questions, for example, to 

file a terminal disclaimer where there is 

no previously existing employment 

agreement or where an employment 

agreement contains no obligation to 

assign patent rights. In some situations, 

assignments lead to serious 

complexities, which can impact title 

and prevent patent enforcement. Patent 

agents are not empowered by their 

registration to provide advice about title 

and enforcement of patents. 

Accordingly, it is appropriate to set 

forth authority of practitioners to 

prepare an assignment or cause an 

assignment to be executed by virtue of 

their registration. 

Preparing an assignment or causing an 

assignment to be executed is 

appropriate only when they are 

reasonably necessary and incidental to 

the preparation and prosecution of a 

patent application, or other proceeding 

before the Office involving a patent 

application or patent in which the 

practitioner is authorized to participate. 

The patent application may be, for 

example, a provisional, nonprovisional 

or reissue application. Other 

proceedings include, for example, an 

interference or reexamination 

proceeding. A practitioner, by virtue of 

being registered, may prepare an 

assignment or cause it to be signed in 

the foregoing circumstances if in 

drafting the assignment the practitioner 

does no more than replicate the terms of 

a previously existing oral or written 

obligation of assignment from one 

person or party to another person or 

party. Registration does not authorize a 

registered practitioner to recommend or 

determine the terms to be included in 

an assignment. The practitioner is not 

authorized to select or recommend a 

particular form assignment from among 

standard form assignments. Registration 

does not authorize a practitioner to draft 

an assignment or other document in 

circumstances that do not contemplate a 

proceeding before the Office involving a 

patent application or patent. For 

example, where an assignment is 

prepared in contemplation of selling a 

patent or in contemplation of litigation, 

there is no proceeding before the Office. 

When, after a patent issues, there is no 

proceeding before the Office in which 

the patent agent may represent the 

patent owner, drafting an assignment or 

causing the assignment to be signed are 

not activities reasonably necessary and 

incidental to representing a patent 

owner before the Office. 


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Section 11.5(b)(1) provides 

circumstances in which a registered 

practitioner may prepare an assignment 

or cause an assignment to be executed. 

The assignment must be reasonably 

necessary and incidental to filing and 

prosecuting a patent application for the 

patent owner or the practitioner 

represents the patent owner after the 

patent issues in a proceeding before the 

Office. In drafting the assignment the 

practitioner must not do more than 

replicate the terms of a previously 

existing oral or written obligation of 

assignment from one person or party to 

another person or party. Thus, where a 

previously existing written employment 

agreement between an inventor and the 

employing corporation contains one or 

more clauses obligating an inventor to 

assign to the company inventions made 

in the course of employment, a 

practitioner may draft an assignment 

wherein the provisions replicate those 

of the employment agreement. 

Contrary to several comments, the 

Office has not taken the position that a 

registered patent agent could prepare a 

patent assignment or license for a patent 

if not prohibited by state law. The 

Office’s long-standing position has been 

that ‘‘[p]atent agents * * * cannot 

* * * perform various services which 

the local jurisdiction considers as 

practicing law. For example, a patent 

agent could not draw up a contract 

relating to a patent, such as an 

assignment or a license, if the state in 

which he/she resides considers drafting 

contracts as practicing law.’’ See 

General Information Concerning 

Patents, http://www.uspto.gov/web/ 

offices/pac/doc/general/index.html. 

Drawing up an assignment for an issued 

patent is not necessarily always 

reasonably necessary and incidental to 

filing or prosecuting a patent 

application or other proceeding before 

the Office involving a patent. For 

example, where a first party is selling 

and a second party is purchasing a 

patent, the transfer of patent rights 

between the parties is not a proceeding 

before the Office. Drafting an 

assignment for either party would be 

beyond the scope of recognition practice 

before the Office. 

A license is neither reasonably 

necessary nor incidental to filing or 

prosecuting a patent application or a 

proceeding before the Office involving a 

patent. Under Office rules only an 

assignee of the entire interest, not a 

licensee, may revoke previous powers in 

a patent application and be represented 

by a registered practitioner of the 

assignee’s own selection. See 37 CFR 

1.36. Similarly, the rules do not 

authorize a licensee to control the 

representation of a party in a 

reexamination or interference 

proceeding. Accordingly, the Office has 

not authorized patent agents to draft 

license agreements in contemplation of 

filing or prosecuting patent applications 

or conduct proceedings before the Office 

regarding issued patents. 

The suggestion to follow the practice 

of most states permitting 

paraprofessionals, such as patent agents, 

to complete and modify assignment and 

license documents under an attorney’s 

supervision need not be adopted. 

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. It is 

unnecessary for the Office to authorize 

practitioners to comply with state laws 

permitting paraprofessionals to act 

under the supervision of an attorney 

where the State’s authority to control 

the acts are not preempted by Federal 

law. It is not apparent from any 

comment that corporations or other 

organizations using few agreements in 

certain clearly defined situations have 

been or would be adversely impacted by 

the lack of an Office rule permitting 

patent agents to complete and modify 

documents assignment and license 

documents under an attorney’s 

supervision. 

No state was identified as prohibiting 

paraprofessionals from modifying 

assignments and license documents 

under a lawyer’s supervision. Modifying 

assignment and license documents 

could necessitate expert knowledge of 

state principles for which registered 

practitioner status does not prepare 

agents. Whereas a corporation or other 

organization may employ 

paraprofessionals, including patent 

agents, to act under a lawyer’s 

supervision, the attorney would remain 

responsible for the completed or 

modified document. There remains, 

however, registered patent agents who 

are self-employed and do not act under 

a lawyer’s supervision. Adopting a rule 

requiring registered patent agents to act 

under the supervision of lawyers to 

modify assignment and license 

documents does not address in a 

satisfactory manner when patent agents 

may prepare the documents in reliance 

on their registration to practice before 

Office. Thus, the circumstances 

contemplated in the suggestion do not 

obtain for all patent agents practicing 

before the Office. Inasmuch as 

assignments and licenses are the 

creation of state, not Federal, statute, 

authority to prepare these agreements 

and provide advice regarding the terms 

to include in them is subject to the state 

law regarding who is authorized to 

practice law. 

In a corporate or other organizational 

environment, where only one or two 

form agreements may be used in certain 

clearly defined situations, the 

provisions of § 11.5(b)(1) allowing a 

practitioner to replicate the terms of the 

form agreements support efficiencies 

sought by all interested parties. Section 

11.5(b)(1) is not limited to practitioners 

employed by a corporation or 

practitioners acting under the 

supervision of a lawyer. The 

practitioners may be self-employed or in 

firms. Section 11.5(b)(1) permits any 

registered practitioner to replicate the 

terms of the form agreements for an 

assignment in contemplation of filing or 

prosecuting a patent application, and 

submit the same to the Office for 

recordation in connection with a 

concurrently filed or pending patent 

application. For example, where an 

inventor and investor, each possibly 

represented by their own counsel, have 

reached terms for assignment of an 

invention in contemplation of filing a 

patent application, a patent agent may 

draft the assignment if the agent does no 

more than replicate the terms of the 

previously existing oral or written 

assignment agreement between the 

inventor and investor. It is not necessary 

for the registered practitioner to be 

under the supervision of a lawyer to 

provide the service inasmuch as the 

agent is functioning as a scrivener. 

It is not and has not been the intent 

of the Office to require the agent or 

attorney physically submitting a 

document for recordation to be 

separately licensed by the state bar in 

which the assignor and/or assignee 

lives. Additionally, there is no 

requirement that the attorney submitting 

a document for recordation in the Office 

be registered to practice before the 

Office. The recordation of documents is 

a ministerial act by the Office. The 

Office does not require the person or 

party submitting the document be 

registered to practice before the Office. 

For example, an assignment or license 

document may be submitted to the 

Office for recordation by a patent or 

trademark owner, a registered patent 

agent or a registered patent attorney 

who is separately licensed in a state 

other than the state wherein the attorney 

practices. However, whoever submits an 

assignment or license is responsible for 

ensuring the correctness of the 


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submitted documents. See 37 CFR 

11.18. Likewise, the registered 

practitioner submitting the assignee’s 

name on the issue fee transmittal sheet 

is responsible for ensuring the 

correctness of the contents of the sheet, 

including any representation that a 

party identified as an assignee is in the 

assignee. See § 11.18. 

Comments regarding the transfer of 

rights in the United States of inventions 

from a foreign inventor to a foreign 

company implicitly address an 

invention that occurs abroad. Any 

transfer of rights would likely arise 

under foreign law, which would 

determine the appropriate person to 

draft any original assignment or license 

reflecting the transfer of rights. A patent 

agent may draft assignment that 

transfers rights in the United States that 

merely replicates the provisions of the 

previously existing oral or written 

obligation of assignment in a foreign 

country between the persons or parties. 

In the absence of a previously existing 

obligation of assignment in a foreign 

country, an attorney, presumably after 

consultation with the client, could draft 

the assignment for the client. 

Suggestions that administrative 

burdens caused by not permitting patent 

agents to prepare assignments would 

justify permitting agents to draft 

assignments are unpersuasive. A typical 

situation cited is the administrative 

burden incurred when there is an 

application having multiple inventors 

living in different states if it is necessary 

to hire an attorney for each state simply 

to cause an assignment to be executed 

in such state instead of having an agent 

draft the assignment. The comments 

commonly assumed that all agents are 

competent to provide the legal services 

and the invention is to be assigned. 

First, there is no requirement that patent 

agents be trained in contract law to be 

registered to practice before the Office 

in patent cases. Absent adequate 

training, the client may not receive the 

legal advice and service the client has 

every right to expect. The possible 

temporary ‘‘convenience’’ of having a 

practitioner inadequately trained in the 

legal service the practitioner provides 

does not outweigh the need for 

competence. A practitioner is prohibited 

from handling a legal matter which the 

practitioner knows or should know that 

the practitioner is not competent to 

handle, without associating with 

another practitioner who is competent 

to handle it. See 37 CFR 10.77(b). 

Therefore, clients represented by a 

practitioner would be disserved by that 

practitioner if the practitioner is not 

competent to provide advice whether 

multiple inventors living in different 

states are subject to the contract laws of 

all the states or one state, whether the 

inventors are obligated to assign the 

invention, whether the inventors should 

assign as opposed to license the 

invention absent a legal obligation to 

assign, and other legal implications of 

any agreement. Burdens may arise for 

practitioners and clients when the 

clients are not competently advised 

about available legal options, such as 

licensure or assignment, as well as the 

benefits, terms and costs of each option. 

The convenience of having a registered 

practitioner provide a legal service for 

which no training is required for 

registration does not outweigh the 

benefits of obtaining competent legal 

advice and assistance. 

The Office is not adopting the 

suggestion to allow agents to select, but 

not draft or vary, one or more form 

assignments by adopting standard form 

assignments, and that the Office 

establish well-defined, common 

situations, that would be specific ‘‘safe 

harbor’’ situations in which agents can 

recommend such standard forms to their 

clients. The very suggestion 

demonstrates the necessity for clients to 

receive competent legal advice before 

they sign any document transferring 

rights. There are numerous employment 

situations as well as other contractual 

and non-contractual situations requiring 

legal analysis and advice regarding 

whether and when an inventor is 

obligated to assign an invention, transfer 

shop rights in an invention, or license 

an invention. The situations are subject 

to state law, which varies from state to 

state. It would be inappropriate for the 

Office to adopt standard form 

assignments or adopt ‘‘safe harbors’’

inasmuch as no form or harbor could 

address or anticipate all possible terms 

and situations. Though the comment 

did not recommend that adoption of 

standard licensing forms and safe 

harbors for licensing, such action by the 

Office would be similarly imprudent. 

The fact that legal reference books 

provide numerous forms, rather than a 

single one, demonstrates that there is no 

standard for assignments or licenses, for 

which a ‘‘safe harbor’’ could be 

provided. Competent legal training is 

necessary to assess whether any rights 

in an invention should be transferred by 

assignment or license, as well as the 

terms for the transfer. 

Comment 11: Two comments urged 

that the weight of authority holds that 

a patent agent may not advise about the 

content of alternate forms of state 

intellectual property protection. One 

comment urged that the USPTO lacks 

jurisdiction over state law forms of 

intellectual property protection, under 

state law, patent agents are not licensed 

to provide such advice. One comment 

made the same observation for a 

registered lawyer who is not licensed in 

the state where he or she is practicing. 

Response: The Office is not expanding 

its jurisdiction over state law forms of 

intellectual property protection. Thus, 

§ 11.5(b)(1) does not provide for a patent 

agent advising about the content of 

alternate state forms of intellectual 

property protection. Section 11.5(b)(1), 

consistent with Supreme Court 

precedent, provides for ‘‘considering the 

advisability of relying upon alternative 

forms of protection which may be 

available under statute law.’’ In Sperry 

v. State of Florida ex rel Florida Bar, 

373 U.S. 379, 83 S.Ct. 1322 (1963), the 

Supreme Court said that the preparation 

and prosecution of patent applications 

for others constitutes the practice of 

law, which ‘‘inevitably requires the 

practitioner to consider and advise his 

clients as to the patentability of their 

inventions under the statutory criteria, 

35 U.S.C. 101—103, 161, 171, as well as 

to consider the advisability of relying 

upon alternative forms of protection 

which may be available under state 

law.’’ Id. 373 U.S. at 383, 83 S.Ct. at 

1323. Patent agents should consider the 

advisability of relying on the alternative 

forms of protection available under 

statute law. Inasmuch as the state laws 

are public, agents should refer clients to 

the statutes and suggest that the client 

consult with an attorney of the client’s 

choice in the state whether the statute 

has been adopted about the alternative 

forms of protection available under 

statute law. The same would obtain for 

a registered patent attorney who is not 

licensed in the state where the attorney 

is practicing unless the state where the 

attorney is practicing has authorized the 

attorney to provide legal services. For 

example, if the attorney is ‘‘corporate 

counsel’’ or ‘‘in-house counsel’’ and is 

licensed to practice law in another state, 

the attorney may provide legal advice 

about the state’s statutes to the 

attorney’s corporate employer if the 

state where the attorney is practicing 

has authorized the attorney to provide 

legal services for the attorney’s 

employer in the state where the attorney 

is practicing. 

Comment 12: One comment expressed 

doubt that listing explicit circumstances 

in which a patent agent may or may not 

participate is either necessary or 

helpful. Another comment urged that 

the ‘‘includes, but is not limited to’’

language in § 11.5 is vague and 

indefinite since it does not put the 

public on notice as to what else would 

constitute patent practice before the 

Office, that the Office needs to define 


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exactly what constitutes the practice of 

patent law subject to USPTO 

jurisdiction, and that the rule be 

amended to define practice before the 

Office as prosecution of patent 

applications before the Office, preparing 

assignments and licenses for patent 

applicants and patentees and rendering 

opinions on validity and infringement 

for clients. 

Response: The Office will not attempt 

by rule to define exactly what 

constitutes practice of patent law that is 

subject to the Office’s jurisdiction. The 

scope of activities involved in practice 

of patent law before the Office is not 

necessarily finite, and is subject to 

change as the patent statute changes and 

rules are promulgated to the implement 

statutory changes. Instead, § 11.5(b)(1) is 

written to provide that registration to 

practice before the Office in patent cases 

sanctions the performance of those 

services which are reasonably necessary 

and incident to the preparation and 

prosecution of patent applications or 

other proceedings before the Office 

involving a patent application or patent 

in which the practitioner is authorized 

to participate. The services are 

identified as including considering the 

advisability of relying upon alternative 

forms of protection which may be 

available under statute law, and drafting 

an assignment or causing an assignment 

to be executed for the patent owner in 

contemplation of filing or prosecution of 

a patent application for the patent 

owner, or the practitioner represents the 

patent owner after a patent issues in a 

proceeding before the Office, and in 

drafting the assignment the practitioner 

does no more than replicate the terms of 

a previously existing oral or written 

obligation of assignment from one 

person or party to another person or 

party. 

The suggestion to define practice 

before the Office as prosecution of 

patent applications before the Office has 

not been adopted. Inasmuch as practice 

before the Office in patent cases also 

includes, for example, representing a 

patent owner seeking reexamination of 

an application or before the Board of 

Appeals and Interferences, limiting 

practice before the Office to only 

prosecuting patent applications would 

be inappropriately narrow. 

The suggestion to define practice 

before the Office as rendering opinions 

on validity and infringement for clients 

has not been adopted. Whether a 

validity opinion involves practice before 

the Office depends on the circumstances 

in which the opinion is sought and 

furnished. For example, an opinion of 

the validity of another party’s patent 

when the client is contemplating 

litigation and not seeking reexamination 

of the other party’s patent could not be 

reasonably necessary and incident to the 

preparation and prosecution of patent 

applications or other proceedings before 

the Office involving a patent application 

or patent. In such situations, the 

opinion may constitute unauthorized 

practice of law. See Mahoning Cty. Bar 

Assn. v. Harpman, 608 N.E.2d 872 

(Ohio Bd.Unauth.Prac. 1993). Similarly, 

a validity opinion for the sale or 

purchase of the patent is neither the 

preparation nor the prosecution of a 

patent application. Likewise, the 

opinion is not a proceeding before the 

Office involving a patent application or 

patent. Registration to practice before 

the Office in patent cases does not 

authorize a person to provide a validity 

opinion that is not reasonably necessary 

and incident to representing parties 

before the Office. In contrast, a validity 

opinion issued in contemplation of 

filing a request for reexamination would 

be in contemplation of a proceeding 

before the Office involving a patent. Due 

to registration to practice before the 

Office in patent cases, a practitioner 

may issue a validity opinion in 

contemplation of filing a request for 

reexamination. 

In no circumstance would practice 

before the Office include the rendering 

of opinions on infringement. Under the 

law, the Office has no authority to 

resolve infringement cases. Thus, 

registration to practice before the Office 

in patent cases does not include 

authority to render infringement 

opinions. See Mahoning Cty. Bar Assn. 

v. Harpman, supra. 

Comment 13: One comment suggested 

that the Office not adopt the last 

sentence of § 11.14(a), ‘‘[r]egistration as 

a patent attorney does not itself entitle 

an individual to practice before the 

Office in trademark matters,’’ inasmuch 

as any attorney meeting the 

qualification of being a member in good 

standing of a State or Federal Bar can 

practice before the Office in trademark 

cases. Another comment queried why 

registration as a patent attorney does not 

itself entitle an individual to practice 

before the Office in trademark matters. 

Response: To clarify the intent of the 

last sentence of § 11.14(a), the term 

‘‘attorney’’ has been changed to 

‘‘practitioner.’’ The sentence now reads 

‘‘[r]egistration as a patent practitioner 

does not itself entitle an individual to 

practice before the Office in trademark 

matters.’’ Whether a practitioner 

registered on or after January 1, 1956, 

has been registered as a patent attorney 

or patent agent, the practitioner’s 

registration as an attorney or agent does 

not in itself entitle the practitioner to 

practice before the Office in trademark 

matters. To qualify to practice before the 

Office in trademark matters since 

January 1, 1956, a person must be an 

attorney meeting the statutory 

qualification of 5 U.S.C. 500 of being a 

member in good standing of the bar of 

the highest court of a State. However, 

the Office’s recognition of a lawyer to 

practice before the Office in trademark 

matters does not authorize the attorney 

to engage in the practice of law where 

the attorney is not authorized to practice 

law. See § 11.14(d), and its predecessor 

rules, 10.14(d) and 2.14(d). Inasmuch as 

membership in a bar of a Federal court 

is not a qualifying criteria set forth in 5 

U.S.C. 500 to practice before a Federal 

agency, it does not qualify a person to 

practice before the Office in trademark 

cases. A person lacking membership in 

good standing in the bar of the highest 

court of a state may not practice before 

the Office in trademark matters, even if 

the person is registered with the Office 

as a patent attorney. For example, a 

registered patent attorney who is 

suspended or disbarred on ethical 

grounds from practice of law or 

suspended on nonethical grounds, such 

as non-payment of annual dues, in State 

A, the only jurisdiction where the 

attorney was admitted to practice law, 

may not continue to practice before the 

Office in trademark matters following 

the effective date of the suspension or 

disbarment. 

Further, a nonlawyer registered as a 

patent agent after January 1, 1956, is not 

qualified to practice before the Office in 

trademark matters. A person who was 

registered as a patent agent after January 

1, 1956, and thereafter became an 

attorney who has remained in good 

standing with the bar of the highest 

court of a state may practice before the 

Office in trademark cases, even if the 

person never changed his or her 

registration status with the Office. 

Furthermore, a person registered as a 

patent agent before January 1, 1956, who 

changed his or her registration status at 

any time to registered patent attorney 

cannot revert after 1956 to being a 

patent agent registered before January 1, 

1956. If such a person does not maintain 

his or her membership in good standing 

with the bar of the highest court of a 

state, the person becomes an agent at 

that time and is not entitled to continue 

to represent others before the Office in 

trademark matters. Although the Office 

does not believe any person who was 

registered as a patent agent before 

January 1, 1956, has continuously 

remained registered as an agent and 

continues at this time to be so 

registered, the note at the end of 

§ 11.14(a), which grandfathers their 


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authorization to practice before the 

Office in trademark cases, has been 

maintained for the benefit of any such 

practitioners. 

Comment 14: A comment urged that 

§ 11.14(a) is inconsistent with 5 U.S.C. 

500(b), inasmuch as § 11.14(a) does not 

require attorneys to apply for 

recognition to practice, whereas section 

500(b) can be construed as requiring an 

attorney to file with the Office a written 

declaration setting forth the attorney’s 

current qualification. 

Response: Inasmuch as nothing in 

5 U.S.C. 500(b) directs any agency to 

require a written declaration setting 

forth an attorney’s current qualification, 

the lack of such a requirement in 

§ 11.14(a) is consistent with section 

500(b). Except in the electronic filing of 

documents in trademark matters, the 

Office does not require an attorney to 

declare that he or she is currently 

qualified. If any change to the practice 

should occur, the change would be set 

forth in Part 2 of the Rules of Practice. 

Comment 15: One comment sought 

clarification whether § 11.18(b)(1) refers 

to ‘‘all disciplinary proceedings or only 

to those under section 11.32.’’

Response: The provisions of 

§ 11.18(b)(1) are inclusive of all 

disciplinary proceedings, including 

those instituted under § 11.32. This is 

made clear by § 11.18(a), which 

provides in pertinent part, that it is for 

‘‘all documents filed in the Office in 

* * * other non-patent matters, and all 

documents filed with a hearing officer 

in a disciplinary proceeding.’’ For 

example, documents filed in the Office 

in ‘‘other non-patent matters’’ includes 

documents filed in disciplinary actions 

under §§ 11.24 through 11.26, and 

appeals under 11.55 in a disciplinary 

proceeding. 

Comment 16: One comment 

recommended that § 11.18(b)(1) be 

amended to exclude complainants from 

its purview, as complainants should 

have immunity in disciplinary matters. 

The comment pointed out that Rule 12 

of the Model Rules of Lawyer 

Disciplinary Enforcement of the 

American Bar Association provides for 

absolute immunity for members of the 

agency, complainants and witnesses 

although in a context of coordination 

with local law enforcement. 

Response: The recommendation to 

provide complainants with immunity 

has not been adopted. While the 

rationale for providing complainants 

with immunity is appreciated, all 

persons filing written communications 

with the Office, including complainants, 

are subject to the provisions of 18 U.S.C. 

1001, which provides, in pertinent part: 

[W]hoever, in any matter within the 

jurisdiction of the executive * * * branch of 

the Government of the United States, 

knowingly and willfully—(1) falsifies, 

conceals, or covers up by any trick, scheme, 

or device a material fact; (2) makes any 

materially false, fictitious, or fraudulent 

statement or representation; or (3) makes or 

uses any false writing or document knowing 

the same to contain any materially false, 

fictitious, or fraudulent statement or entry; 

shall be fined under this title, imprisoned not 

more than 5 years. 

The Office is without statutory 

authority to waive the foregoing 

statutory provisions, even for 

complainants submitting a grievance. 

Legislation granting immunity to 

complainants would first have to be 

enacted into law before any regulation 

could be adopted applying the law to 

complainants in the disciplinary 

process. 

Comment 17: A comment suggested 

that the mandatory language in 

§ 11.18(b), pertaining to ‘‘disciplinary 

proceeding’’ may conflict with 

§ 11.22(b), which provides that the OED 

Director may request that a grievant 

verify via affidavit information 

indicating possible grounds for 

discipline. 

Response: The mandatory language of 

§ 11.18(b)(2) pertaining to a 

‘‘disciplinary proceeding’’ is not seen as 

conflicting with § 11.22(b), which 

pertains to a grievance which may 

initiate an investigation. An 

investigation and a disciplinary 

proceeding are distinct processes. An 

investigation may be initiated when a 

grievance is received suggesting 

possible grounds for discipline. See 

§ 11.22(a). A disciplinary proceeding is 

initiated generally after an investigation 

under § 11.22. See § 11.32. A 

disciplinary proceeding also may be 

initiated in accordance with § 11.24, 

pertaining to reciprocal discipline, and 

§ 11.25(b), pertaining to interim 

suspension and discipline based on 

conviction of committing a serious 

crime. 

Comment 18: One comment queried 

the meaning of the terms ‘‘unnecessary 

delay’’ or ‘‘needless increase’’ in 

§ 11.18(b)(2)(i), and suggested that they 

be further defined. The comment 

suggested that if the terms are directed 

to prosecution laches, such laches is 

effectively diluted, if not eliminated, by 

the provisions in 35 U.S.C. 154 for a 20- 

year patent term. The comment also 

suggested that there could be good and 

sufficient reasons for a delay, such as 

poverty and that a practitioner’s advice 

to a client to file an application to keep 

the case alive should not be regarded as 

unnecessary delay. 

Response: The suggestion that the 

terms be further defined has not been 

adopted. The relevant language of 

§ 11.18(b)(2)(i), ‘‘not being presented for 

any improper purpose, such as to harass 

someone or to cause unnecessary delay 

or needless increase in the cost of’’ is 

taken from Rule 11 of the Federal Rules 

of Civil Procedure. Rule 11, titled 

‘‘Signing of Pleadings, Motions, and 

Other Papers; Representations to Court; 

Sanctions,’’ provides, in pertinent part, 

‘‘(b) Representations to Court. By 

presenting to the court (whether by 

signing, filing, submitting, or later 

advocating) a pleading, written motion, 

or other paper, an attorney or 

unrepresented party is certifying that to 

the best of the person’s knowledge, 

information, and belief, formed after an 

inquiry reasonable under the 

circumstances, (1) it is not being 

presented for any improper purpose, 

such as to harass or to cause 

unnecessary delay or needless increase 

in the cost of litigation.’’ The case law 

under Rule 11 construing the terms 

‘‘unnecessary delay’’ or ‘‘needless 

increase’’ provides practitioners with 

sufficient guidance for construing the 

use of the same terms in § 11.18(b)(1)(i). 

Contrary to the suggestion, the 

provisions of § 11.18(b)(1)(i) cover an 

array of different situations occurring in 

both patent and trademark proceedings. 

For example, the provision applies to: 

Third party filing a paper requesting 

withdrawal of an applicant’s previously 

published patent application from issue 

to consider prior art; to a third party 

filing papers in an applicant’s patent 

application to assert that the third party 

owns the claimed invention and 

discharging the practitioner engaged by 

the applicant to prosecute the 

application; as well as to a third party 

filing a notice of express abandonment 

in an applicant’s patent or trademark 

application. Applicants having legally 

sufficient reasons to properly file 

continuing applications may do so in 

compliance with § 11.18(b)(1)(i). 

Comment 19: Two comments noted 

that § 11.19(a) referenced ‘‘all 

practitioners administratively 

suspended under § 11.11(b);’’ ‘‘all 

practitioners inactivated under 

§ 11.11(c);’’ and ‘‘[p]ractitioners who 

have resigned under § 11.11(e),’’ but 

these sections were not included in the 

Supplemental Notice of Proposed Rule 

making. 

Response: While sections 11.11(b), 

11.11(c) and 11.11(e) were included in 

the Notice of Proposed Rule making 

published in 2004, these sections have 

not been adopted at this time. 

Accordingly, reference to these sections 

is deleted from § 11.19(a) at this time. 


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Instead of referring to practitioners 

inactivated under 11.11(c), § 11.19(a) 

refers to practitioners inactivated under 

§ 10.11. 

Comment 20: One comment suggested 

that § 11.19(b) appears to disclaim 

Federal pre-emption, that the comments 

make clear that the authority of State or 

other local Bar Associations is not 

diminished, and that § 11.19(b) is not 

necessarily inconsistent with that 

authority. 

Response: Contrary to the comment, 

nothing in § 11.19(b) disclaims Federal 

preemption. As stated in § 11.1, 

‘‘Nothing in this part shall be construed 

to preempt the authority of each State to 

regulate the practice of law, except to 

the extent necessary for the Patent and 

Trademark Office to accomplish its 

Federal objectives.’’ The USPTO 

Director is entitled to and does regulate 

the conduct of patent practitioners 

before the Office. The USPTO Director’s 

authority is not intended to and does 

preempt the authority of states to 

discipline attorneys.’’ Kroll v. Finnerty, 

242 F.3d 1359 (C.A.Fed. 2001). 

Comment 21: One comment agreed 

with the conviction of crimes as a basis 

for discipline, but suggested that 

‘‘serious crime’’ in § 11.19(b)(1) be 

further clarified in order to give the 

notice as to what constitutes the scope 

of a ‘‘serious crime.’’

Response: The suggestion that 

‘‘serious crime’’ be further clarified has 

not been adopted. The definition of 

‘‘serious crime’’ is believed to provide 

the public with adequate notice of those 

crimes that constitute a serious crime in 

the jurisdiction where the crime occurs. 

The first part of the definition of 

‘‘serious crime,’’ ‘‘any criminal offense 

classified as a felony under the laws of 

the United States, any state or any 

foreign country where the crime 

occurred,’’ informs the public that they 

must look to the definition of felony in 

the jurisdiction where the crime 

occurred. The second part of the 

definition, ‘‘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’ ’’ identifies for 

the public that non-felony crimes 

involving one of eleven elements would 

constitute a ‘‘serious crime.’’ The 

definition 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. It is appreciated that 

criminal conduct may be a 

misdemeanor in one jurisdiction and a 

felony in another. Nevertheless, 

practitioners should conduct themselves 

in all jurisdictions to comport with the 

laws of the jurisdiction in which they 

are located. 

Comment 22: Several comments 

observed that the references to the 

‘‘imperative USPTO Rules of 

Professional Conduct,’’ ‘‘§§ 11.100 et 

seq.’’ or similar language in sections 

11.19(b)(4), 11.19(c), 11.22(f)(2) and 

11.25 have no meaning since the Office 

has not adopted the rules it proposed in 

December 2003, and suggested that the 

expression be changed to ‘‘USPTO Rules 

of Professional Conduct as set forth in 

§§ 10.20 to 10.112 of Part 10 of this 

Subchapter’’ until the new disciplinary 

rules are adopted. 

Response: The suggestion to replace 

the reference to ‘‘imperative USPTO 

Rules of Professional Conduct’’ until the 

rules are adopted has been adopted, 

inasmuch as the disciplinary procedural 

rules are being adopted before the 

adoption of USPTO Rules of 

Professional Conduct. The current 

USPTO Code of Professional 

Responsibility in §§ 10.20 through 

10.112 remains in effect until USPTO 

Rules of Professional Conduct are 

adopted. As is made clear in 37 CFR 

10.20, not all of the rules of the USPTO 

Code of Professional Responsibility set 

forth in §§ 10.20 to 10.112 of Part 10 are 

mandatory. Some of the rules are 

aspirational. See 37 CFR 10.20(a). The 

Mandatory Disciplinary Rules of the 

Code of Professional Responsibility are 

identified in 37 CFR 10.20(b). The 

mandatory rules identified in § 10.20(b) 

are those that are referenced in sections 

11.19(b)(4), 11.19(c), 11.22(f)(2), 

11.25(a), 11.34(b), 11.58(b)(2) and 

11.58(f)(1)(ii) until the Rules of 

Professional Conduct are adopted. In 

addition to replacing references to 

‘‘imperative USPTO Rules of 

Professional Conduct,’’ references to 

§ 11.100 et seq, §§ 11.100 through 

11.806,’’ and the like will be replaced. 

Sections 11.19(b)(4), 11.19(c), 

11.22(f)(2), 11.25(a), 11.34(b), 

11.58(b)(2) and 11.58(f)(1)(ii) are revised 

to refer to ‘‘Mandatory Disciplinary 

Rules identified in § 10.20(b).’’ Section 

10.20(b) identifies the Mandatory 

Disciplinary Rules as §§ 10.22–10.24, 

10.31–10.40, 10.47–10.57, 10.62–10.68, 

10.77, 10.78, 10.84, 10.85, 10.87–10.89, 

10.92, 10.93, 10.101–10.103, 10.111, and 

10.112 of Part 10 of this Subchapter. 

Comment 23: One comment inquired 

whether § 11.19(b)(3) meant that a 

disciplined practitioner who does not 

comply with proposed Rule 11.58(b) can 

again be disciplined upon seeking 

reinstatement because he or she did not 

comply with Rule 11.58(b), and whether 

the same obtained for a State Court that 

stipulates how the practitioner should 

wind up his or her business after a 

disciplinary action. The comment 

suggested that further clarification is 

necessary. 

Response: The comment correctly 

recognized that a practitioner may be 

disciplined for failure to comply with 

an order issued by a court or a final 

decision issued by the USPTO Director 

disciplining the practitioner. For 

example, a suspended practitioner who 

continues to practice law in the 

jurisdiction where the practitioner has 

been suspended is subject to additional 

disciplinary action for practicing law 

with a suspended license. 

Comment 24: One comment suggested 

that the language of § 11.20(a)(3) be 

changed to afford the public with notice 

that both private and public reprimand 

exist. 

Response: The suggestion has been 

adopted by inserting ‘‘private or public’’

before ‘‘reprimand’’. 

Comment 25: One comment said the 

Office should not limit restitution in 

§ 11.20(b) to preclude an award of 

prejudgment interest, and suggested that 

the phrase ‘‘, along with any 

prejudgment interest’’ be added after 

‘‘misappropriated client funds.’’

Another comment pointed out that Rule 

10(A)(6) of the Model Rules of Lawyer 

Disciplinary Enforcement (MRLDE) does 

not limit restitution. 

Response: The suggestion has not 

been adopted. The restitution 

contemplated by § 11.20(b) is limited to 

the fees a client paid to a practitioner for 

the practitioner’s legal services that 

were not earned, and client’s funds that 

were delivered to and misappropriated 

by the practitioner. For example, where 

a client delivers funds to a practitioner 

to cover the practitioner’s fee for filing 

a patent application as well as the 

Office’s filing fee, and the practitioner 

neglects to file the application, the 

practitioner may be required to make 

restitution of funds for the filing fee and 

funds advanced for the practitioner’s 

fee. The MRLDE presumes a 

disciplinary structural scheme operating 

under the aegis of the highest court in 

a state. The Office, unlike the MRLDE, 

is an agency in a department of an 

executive branch of the Federal 

Government. The Office operates within 

its statutory authority granted by 

Congress. It lacks statutory authority to 


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resolve legal disputes over fees or funds, 

or to award prejudgment interest. A 

client seeking prejudgment interest 

should consult with an attorney of the 

client’s choice regarding available legal 

remedies, including enforcement of 

court-awarded judgments. 

Comment 26: One comment suggested 

that § 11.21 be amended to require the 

OED Director to provide a hearing 

before a hearing officer prior to issuance 

of a warning. Two comments suggested 

that the recipient of the warning be 

permitted to demand a hearing as a form 

of appeal, particularly if any aspect of 

this is public or is deemed to adversely 

reflect upon the practitioner’s fitness as 

a lawyer. To address the foregoing, the 

comments suggested additional 

language be added to § 11.23(b)(1) to 

provide a review process, or adoption of 

Rule 10(A)(5) of the Model Rules of 

Lawyer Disciplinary Enforcement 

(MRLDE) to require the practitioner’s 

consent and the approval of the chair of 

a hearing committee. 

Response: The suggestions have not 

been adopted as they are believed to be 

unnecessary. An avenue for review in a 

warning is already afforded by the rules. 

See § 11.2(e), which provides for filing 

a petition ‘‘to the USPTO Director to 

invoke the supervisory authority of the 

USPTO Director in appropriate 

circumstances in disciplinary matters.’’

Section 11.21 clearly provides that the 

warning is not public and is not a 

disciplinary action. Accordingly, no 

aspect of the warning adversely reflects 

upon the practitioner’s fitness before the 

Office. Nevertheless, the review process 

afforded by § 11.2(e) provides adequate 

protection of a warned-practitioner’s 

due process rights. 

Comment 27: One comment suggested 

that a warning under § 11.21 appears to 

be inconsistent with § 11.2(b)(4), which 

provides that, unless the action to be 

taken as the result of an investigation is 

a summary dismissal of the matter, the 

OED Director must give a practitioner an 

opportunity to be heard or an 

opportunity to appeal from the warning. 

Response: The comment misconstrues 

the provisions of § 11.2(b)(4). Section 

11.2(b)(4) contemplates issuance of a 

summary dismissal without an 

investigation. A summary dismissal 

would be appropriate where, for 

example, a grievant seeks the 

intervention of the Office to collect a 

debt a practitioner allegedly owes the 

grievant. Section 11.21 contemplates 

that the ‘‘OED Director may conclude an 

investigation with a warning.’’

Accordingly, the OED Director may not 

summarily dismiss a grievance and 

issue a warning to the practitioner 

without an investigation. If a grievant 

supplements the grievance with 

sufficient facts to demonstrate that there 

are possible grounds for disciplinary 

action, an investigation would then 

ensue with the possibility of being 

concluded with a warning or other 

authorized disposition. If, following an 

investigation, the OED Director 

concludes that there is insufficient 

evidence to believe a disciplinary rule 

has been violated, but the investigated 

matter provides the practitioner with an 

opportunity to ensure conformity with 

the Office’s disciplinary rules, the OED 

Director may issue a warning. The 

warning is neither public nor a sanction. 

The investigation provided the 

practitioner with an opportunity to be 

heard. A practitioner dissatisfied with 

the warning may petition to invoke the 

supervisory authority of the USPTO 

Director pursuant to § 11.2(e). 

Comment 28: One comment suggested 

that § 11.22 provide for operations as set 

forth in Rule 4(B)(6) (provide grievant 

notice of the status of disciplinary 

proceedings at all stages of the 

proceedings, copies of the same notices 

and orders the respondent receives as 

well as copies of respondent’s 

communications to the agency, except 

information that is subject to another 

client’s privilege); Rule 4(B)(13) (refer 

appropriate cases to an Alternatives to 

Discipline Program pursuant to MRLDE 

Rule 11(G), to a central intake office, or 

to any of the component agencies of the 

comprehensive system of lawyer 

regulation established by MRLDE Rule 

1); Rule 11(A) (evaluation of the 

information received); and Rule 11(B)(3) 

(provide for review of disciplinary 

counsel’s recommended disposition 

other than a dismissal or a referral to the 

Alternatives to Discipline Program shall 

be reviewed by the chair of a hearing 

committee) of the ABA’s Model Rules of 

Lawyer Disciplinary Enforcement 

(MRLDE). 

Response: The suggestion to provide 

grievants by rule with the mechanisms 

and proceedings set forth in MRLDE 

Rules 1(B), 4(B)(6) and (13), 11(A) and 

11(B)(3) has not been adopted. To the 

extent ‘‘disciplinary proceeding’’ in 

MRLDE Rule 1(B) contemplates 

investigations or other proceedings 

covered by the Privacy Act, 5 U.S.C. 

552a, protected records may not be 

disclosed unless the subject of the 

record consents or one of twelve 

exceptions apply. The exceptions do not 

enable the Office to provide a grievant 

with status information about 

investigations or proceedings, or to 

routinely distribute copies of all 

communications the respondent 

receives from and sends to the OED. 

One of the twelve exceptions permits 

protected information to be released as 

a routine use to persons who can be 

expected to provide information needed 

in connection with a grievance. In 

accordance with the authorized routine 

use of information, OED may provide a 

grievant with a copy of the respondent’s 

communication to obtain the grievant’s 

input needed in connection with the 

grievance. Regarding the suggestion to 

adopt MRLDE Rule 4(B)(13), the Office 

has neither the resources nor means for 

creating an Alternatives to Discipline 

Program or ‘‘component agencies’’ for 

lawyer regulation. In appropriate 

circumstances, the Office may commend 

a receptive practitioner to the same or 

similar programs operated by state bars 

or other agencies in the state where the 

practitioner is located. Regarding the 

suggestion to adopt MRLDE Rule 11(A), 

the OED Director evaluates all 

information received regarding possible 

grounds for discipline. If the person is 

not subject to the jurisdiction of the 

Office, the matter is referred to the 

appropriate entity. If the information is 

true and would not constitute 

misconduct or incapacity, the matter is 

dismissed. If the practitioner is subject 

to the Office’s jurisdiction and the 

information alleges facts which, if true, 

would constitute possible grounds for 

discipline, an investigation is 

conducted. At the conclusion of the 

investigation, the matter is evaluated 

and the OED Director may close the 

matter without taking further action, 

issue a warning under § 11.21, settle the 

matter under § 11.26, proceed with 

exclusion on consent in accordance 

with § 11.27, or pursue disciplinary 

action in accordance with § 11.32. 

Regarding the suggestion to adopt 

MRLDE Rule 11(B)(3), a 

recommendation by the OED Director to 

discipline or pursue a disciplinary 

proceeding against a practitioner is 

subject to review. For example, no 

disciplinary proceeding under § 11.34 

can be instituted without the Committee 

on Discipline finding probable cause 

under § 11.32, and no settlement or 

exclusion on consent can occur without 

the concurrence of the USPTO Director 

in accordance with §§ 11.26 and 11.27, 

respectively. Further, practitioners 

dissatisfied with a warning issued by 

the OED Director under § 11.21 may use 

the provisions of § 11.2(e) to petition to 

invoke the supervisory authority of the 

USPTO Director in disciplinary matters. 

Comment 29: One comment suggested 

that § 11.22(d) be amended to provide 

that the evidence the OED Director 

considers includes evidence indicating 

that a grievable offense did not occur. 

Response: It is unnecessary to 

mention in § 11.22 that the OED 


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Director considers evidence tending to 

negate a finding that a violation 

occurred. The OED Director necessarily 

considers such evidence. Evidence 

tending to negate the occurrence of a 

violation is considered, for example, 

when an investigation is closed without 

a warning or taking disciplinary action 

as in § 11.22(i)(1). The OED Director, 

when terminating an investigation 

under §§ 11.22(i)(2), 11.22(i)(3) and 

11.22(i)(4), also may consider such 

evidence. 

Comment 30: One comment observed 

that § 11.22(f)(1) would allow the OED 

Director to request financial books and 

records, including the nonpublic and 

proprietary records of a corporation or 

law firm, as well as attorney-client 

privileged information, and 

recommended limiting document 

inspection to an examination of escrow 

accounts and trust accounts for 

compliance with proposed Rule 

11.115(a). 

Response: The suggestion to limit the 

rule to permitting inspection of only 

escrow and trust accounts has not been 

adopted. Records required to be kept by 

law are ‘‘public records’’ outside the 

scope of the Fifth Amendment 

protection. In Shapiro v. United States, 

335 U.S. 1, 68 S.Ct. 1375, 92 L.Ed. 1787 

(1948), the court concluded that records 

and documents-sales invoices, sales 

books, ledgers, inventory records, 

contracts and sales records—required to 

be kept by valid regulations of the Office 

of Price Administration—could be 

subpoenaed by the Price Administrator 

without violating the individual’s right 

against self-incrimination. The required 

records doctrine has been applied in 

numerous and various circumstances, 

including records an attorney is 

required to maintain pertaining to client 

funds. See, for example, Andresen v. 

Bar Association of Montgomery County, 

305 A.2d 845 (Md. 1973), cert denied, 

414 U.S. 1065, 94 S.Ct. 572, 38 L.Ed.2d 

470 (1973). Under § 10.112(c)(3), a 

practitioner is required to ‘‘maintain 

complete records of all funds, securities 

and other properties of a client coming 

into the possession of the practitioner.’’

Regardless of the repository of client 

property, these are the financial records 

anticipated for review if issues arise as 

to the preservation and proper handling 

of client property. 

Comment 31: One comment suggested 

that § 11.22(f) be amended to provide 

safeguards to ensure that information in 

disciplinary investigations will be kept 

secure and confidential, free from 

requests from other government 

agencies or from the public under the 

Freedom of Information Act. 

Response: The suggestion to amend 

§ 11.22(f) to provide safeguards to 

ensure the security and confidentiality 

of the received information has not been 

adopted as it is believed to be 

unnecessary. Section 11.22 need not 

provide safeguards because information 

collected in an investigation is placed 

into a Privacy Act system of records, in 

this case COMMERCE/PAT-TM–2, 

Complaints, Investigations and 

Disciplinary Proceedings Relating to 

Registered Patent Attorneys and Agents, 

published at 70 FR 69522. Further the 

Privacy Act of 1974, 5 U.S.C. 552a, 

provides numerous protections for those 

records. Regarding the requests for 

release of these records under the 

Freedom of Information Act (FOIA), 

Privacy Act records may not be 

disclosed unless one of the subject 

parties of the record consents or one of 

twelve exceptions apply. One of the 

twelve exceptions provides for 

information that is releasable under 

FOIA. This is a statutory exception that 

cannot be altered by rule making. 

Generally, the information is protected 

from disclosure by FOIA exemptions 5 

and 6. See 5 U.S.C. 552(b)(5) and (6), 

respectively. Thus, the collected 

information is subject to the numerous 

protections of the Privacy Act, and will 

not be released to FOIA requests as 

provided for under current Federal law. 

Comment 32: One comment, 

pertaining to § 11.23, objected to the 

Committee on Discipline drawing any 

adverse inference when finding 

probable cause against a practitioner if 

the inference is based solely upon that 

practitioner’s refusal to produce 

information in response to a request for 

information by the OED Director. The 

comment addressed a statement in the 

‘‘Discussion of Specific Rules’’ in the 

SNPR about the ability of the Committee 

to ‘‘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.’’

72 FR 9200. 

Response: While we appreciate an 

objection to a finding of probable cause 

if it is based solely on a practitioner’s 

refusal to produce information, the 

‘‘Discussion of Specific Rules’’ did not 

state that such a finding is justified 

where it is based ‘‘solely’’ on refusal to 

produce information in response to a 

request for information. During an 

investigation, a practitioner is given the 

opportunity to provide answers to a 

reasonable inquiry, and where 

appropriate, produce records that are 

not protected by the attorney-client 

privilege or other protections. When the 

practitioner refuses to answer or provide 

unprivileged information, the OED 

Director still has the burden of 

providing the members of the 

Committee panel with sufficient 

evidence to determine that there is 

probable cause to bring charges that 

practitioner engaged in conduct 

involving grounds for discipline. See 

§ 11.23(b)(1). When the OED Director 

provides such sufficient, uncontested 

evidence, the Committee panel may 

properly find probable cause relying on 

the evidence presented by the OED 

Director, inferences drawn from that 

evidence, as well as adverse inferences 

drawn from the practitioner’s refusal to 

answer the inquiry or produce 

unprivileged information. A 

practitioner’s reliance on the Fifth 

Amendment to not answer or provide 

information may not preclude such 

inferences. Baxter v. Palmigiano, 425 

U.S. 308, 318, 96 S.Ct. 1551, 1558, 47 

L.Ed.2d 810 (1976) (‘‘[T]he Fifth 

Amendment does not forbid adverse 

inferences against parties to civil actions 

when they refuse to testify in response 

to probative evidence offered against 

them.’’); AGC, Maryland v. DiCicco, 802 

A.2d 1014 (Md. 2002); In re Henley, 518 

S.E.2d 418 (Ga. 1999). 

Comment 33: Two comments 

expressed concern with regard to 

§ 11.22(f)(2) that a client may waive the 

attorney-client privilege, as well as 

related protections by disclosing 

information to the OED Director. One 

comment suggested adding the 

following sentence to § 11.22(f)(2): ‘‘The 

OED Director shall not request 

information or evidence from a nongrieving client absent either written 

consent of the practitioner or a signed 

acknowledgement from the non-grieving 

client acknowledging that complying 

with the request could jeopardize the 

privileged or confidential nature of 

information disclosed to the OED 

Director as well as other information on 

the same subject.’’ Both comments 

suggested that in any request of a nongrieving client to provide information to 

the Office, the request be accompanied 

by a notice clearly warning that 

disclosure to the Office could waive any 

attorney-client privilege or other 

protection. 

Response: The suggestion in the 

comment to add a sentence to 

§ 11.22(f)(2) requiring a signed 

acknowledgement of the non-grieving 

client has not been adopted. Requiring 

the OED Director to obtain the written 

consent of the client before requesting 

information would not only make 

investigations inefficient, but also 

unduly complicate an investigation. By 

having to first obtain the non-grieving 

client’s written consent, the process of 


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1 In 1968, the American Bar Association (ABA) 

established the Clark Committee (chaired by former 

U.S. Supreme Court Justice Tom Clark). The Clark 

Committee issued its Report, PROBLEMS AND 

RECOMMENDATIONS IN DISCIPLINARY 

ENFORCEMENT (Clark Report), 1 (1970). In 1989, 

the ABA established the McKay Commission 

(chaired by former N.Y.U. Law School Dean Robert 

B. McKay) to examine the effects of the Clark Report 

and to study additional reforms. The McKay 

Commission’s Report, LAWYER REGULATION 

FOR A NEW CENTURY (1992) is referred to as the 

McKay Report. 

requesting and obtaining the consent 

would be time-consuming. It also 

provides a practitioner with an 

opportunity to communicate and 

dissuade the client from cooperating 

with the investigation, and otherwise 

obstruct the investigation. Requesting 

information and documents from 

practitioners, as well as from nongrieving clients is intended to enable the 

OED Director, and ultimately the Office, 

to efficiently and effectively ascertain 

whether grounds for disciplining a 

practitioner exist. The OED Director, 

when requesting information from 

complaining clients of lawyers or 

registered patent agents, has frequently 

informed the clients that providing the 

requested information may waive 

attorney-client privilege or other 

protection. The Office will expand the 

practice to any occasion when the OED 

Director requests a non-grieving client 

to provide information by 

accompanying the request with a notice 

clearly warning that disclosure to the 

Office could waive any attorney-client 

privilege or other protection. 

Comment 34: A comment suggested, 

presumably with regard to § 11.22, that 

provision be made for an appeals 

mechanism, such as Rule 31 of the 

Model Rules of Lawyer Disciplinary 

Enforcement, whereby a grievant who is 

dissatisfied with the disposition of a 

matter by the OED Director may seek 

review, within a specified period, by an 

authority which may approve, modify or 

disapprove the dismissal, or direct that 

the matter be investigated by the OED 

Director. 

Response: It is unnecessary to provide 

an appeal mechanism limited to 

enabling a grievant, dissatisfied with the 

disposition of a matter, to obtain review 

of the matter. The provisions of § 11.2(e) 

for a petition to invoke the supervisory 

authority of the USPTO Director in 

disciplinary matters provide the 

suggested mechanism without addition 

of another rule. Grievants will be 

informed of the mechanism under 

§ 11.2(e) whereby they may obtain 

review of the disposition of the matter 

they grieve. 

Comment 35: One comment suggested 

that the Office should avoid devotion of 

time and effort to investigating 

regarding ‘‘importune grievances’’ by 

amending § 11.22(h)(2) to add ‘‘, such as 

matters arising in proceedings in 

Federal or state courts of original or 

appellate jurisdiction or other tribunals 

not within the Office.’’

Response: The suggestion to add 

language to § 11.22(h)(2) to provide that 

‘‘matters arising in proceedings in 

Federal or state courts of original or 

appellate jurisdiction or other tribunals 

[are] not within the Office’’ has not been 

adopted. Neither the grounds for 

discipline, nor the jurisdiction of the 

Office to discipline practitioners is 

limited to conduct occurring ‘‘within 

the Office.’’ The grounds for discipline 

include conduct that may involve 

proceedings in Federal or state courts or 

other tribunals, such as conviction of a 

serious crime, discipline on ethical 

grounds imposed in another 

jurisdiction, disciplinary 

disqualification from participating in or 

appearing before any Federal program or 

agency, and failure to comply with any 

order of a court disciplining the 

practitioner. 

Comment 36: One comment opined 

that § 11.22(h)(4) can be read to unduly 

limit the circumstances under which the 

OED Director can close an investigation, 

and suggested that it be broadened by 

revising the section to read as follows: 

‘‘There is insufficient clear and 

convincing evidence for a reasonable 

fact finder to conclude that there is 

probable cause to believe that grounds 

exist for discipline.’’

Response: The suggestion to add 

language to § 11.22(h)(4) to provide that 

there must be ‘‘insufficient clear and 

convincing evidence’’ has not been 

adopted. The suggested language 

actually limits the circumstances under 

which the OED Director, with the 

concurrence of the Committee on 

Discipline, may bring a disciplinary 

action by raising the level of proof from 

‘‘probable cause’’ to ‘‘clear and 

convincing.’’ The burden of proof before 

a grand jury to initiate a criminal 

proceeding is ‘‘probable cause,’’ not 

‘‘clear and convincing evidence.’’

Moreover, there is nothing in the 

language of § 11.22(h)(4) that should be 

understood or construed as permitting 

the ‘‘clear and convincing evidence’’

standard to be read into this section. 

Comment 37: One comment 

recommended that the panels of the 

Committee on Discipline referenced in 

§ 11.23(a) not exceed three members, 

and, citing the McKay Report,1 that each 

panel have a majority of non-Office 

employee members, and that no panel 

should function without one attorney 

practitioner member and one registered 

patent agent member. Another comment 

suggested that one member of the 

Committee be required to be a member 

of the public with experience 

representing clients before the Office. 

Response: The recommendation that 

the Committee on Discipline panels not 

exceed three members is consistent with 

the rule as proposed, and no change to 

the last sentence of § 11.23(a) appears 

necessary. 

The suggestions to require one or 

more non-Office employees or a member 

of the public to be on the Committee on 

Discipline have not been adopted as 

they are highly impractical for several 

reasons. First, adjudication of 

disciplinary proceedings is considered 

to be an inherently governmental 

function and the Federal Government 

may not contract for inherently 

governmental functions. See generally 

Federal Acquisition Regulation Part 7.5, 

and specifically § 7.503(c)(2). Further, 

there must be a mechanism to 

compensate those serving on the panel. 

It is impermissible to contract to pay the 

non-government employee panel 

members. In addition, even if it were 

permissible to add panel members by 

contract, such an arrangement would 

necessitate approval of a charter for the 

arrangement under the Federal Advisory 

Committee Act. The Federal Advisory 

Committee Act prohibits a collaborative 

group that is established or utilized by 

the government to provide advice or 

recommendations to an agency unless a 

charter is approved by the General 

Services Administration. See 5 U.S.C. 

App 2 section 1 et seq. Even if a charter 

is approved, the non-government 

employee panel members may provide 

only advice or recommendations; they 

may not adjudicate whether there is 

probable cause to bring disciplinary 

action against a practitioner. 

An alternative approach to paying the 

members would be to make the private 

practitioners Special Government 

Employees (SGEs) during their period of 

service. See 18 U.S.C. 202. As SGEs, the 

practitioners would be Government 

employees during their period of 

service, and the Federal Advisory 

Committee Act would no longer apply. 

The Committee panels would then be 

groups comprised solely of Government 

employees, which are not subject to the 

Federal Advisory Committee Act. See 41 

CFR 102–3.40(h). Appointment of 

private practitioners as SGEs would 

require a Federal statute creating such 

authority. For example, Patent Public 

Advisory Committee members may be 

appointed as SGEs under the authority 

of 35 U.S.C. 5. Currently the Office has 

no such statutory authority. Again, the 

non-government employee panel 


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members may provide only advice or 

recommendations; they may not 

adjudicate whether there is probable 

cause to bring disciplinary action 

against a practitioner. 

However, this solution has a 

significant drawback. Private 

practitioners would be subject to many 

of the ethical rules of Government 

employees during their periods of 

service. See generally Summary of 

Government Ethics Rules for SGEs, 

Justice Management Division, February 

6, 2006. Practitioners serving for greater 

than 60 days in the proceedings 365 

days would be prohibited from 

receiving fees for representing anyone 

with a matter pending before the 

Government, and from acting as an 

attorney or agent for a party pursuing a 

claim, such as a patent application, 

before the Government. See 18 U.S.C. 

203 and 205, respectively. While SGEs 

may serve up to 130 days in any 365- 

day period, the restrictions of 18 U.S.C. 

203 and 205 are triggered at the 60-day 

point. Practitioners would be effectively 

barred from patent and trademark work 

by this provision. Additionally, the 

arrangement is not beneficial to the 

Office. If members of the panel could 

only serve 60 days or less in a year, the 

Office would have to find and appoint 

members frequently, and panel 

members would not develop the 

expertise that comes with lengthier 

service. 

Second, including panel members 

from private practice would be 

extremely difficult due to screening for 

conflicts of interest. For example, if 

practitioner Smith is subject to review 

by a Committee panel, it is necessary to 

screen for conflicts between Smith and 

the panel members, and disclosure of 

the practitioner’s identity of the panel 

members from private practice to 

ascertain such conflicts could violate 

the Privacy Act, as discussed below. 

Further, it would be necessary to ensure 

that panel members from private 

practice are impartial, for example, that 

they do not represent clients with 

interests adverse to Smith’s clients. The 

Office does not know, and cannot 

compel Smith to disclose, the names of 

all of Smith’s clients to facilitate a 

conflicts check of panel members from 

private practice. Even if Smith’s clients 

were known, this could result in review 

of lists involving hundreds of clients. 

Using Office employees as panel 

members avoids this significant 

workload. 

Third, while the McKay Report does 

urge that disciplinary officials be 

independent, the report does not 

specifically urge that those who 

administer discipline be nongovernment employees. Rather, the 

recommendation for independence of 

disciplinary officials rests in 

distinguishing judicial regulation from 

self-regulation, not distinguishing 

employees from non-employees. See the 

McKay Report at recommendations 1, 5, 

and 6. The two primary reasons cited by 

the McKay Report are one, that the 

disciplinary process should be directed 

solely by disciplinary policy and not 

influenced by the politics of bar 

associations, and two, that the process 

be free from even the appearance of 

conflicts of interest or impropriety. See 

the McKay Report, introduction to 

recommendations 5 and 6. Neither of 

these factors suggests non-government 

employees have greater independence 

than employees. Further, the McKay 

Report is focused on judicial regulation 

of disciplinary systems to avoid selfregulation by state bars, whereas 

attorneys and agents practicing before a 

Federal administrative agency are 

regulated by that agency. 

The McKay Report criticizes selfregulation of the legal profession. 

Including private practitioners as 

members of the Office’s Committee on 

Discipline adds an element of selfregulation. The practitioners, who could 

only serve a limited number of days per 

year, would remain a part of private 

practice, and would have less 

independence than the full-time 

employees of the Office. 

In addition to the foregoing, release of 

information regarding an investigation 

to a member of the public on a panel 

would be inconsistent with the Privacy 

Act, 5 U.S.C. 552a. There are twelve 

exceptions under the Freedom of 

Information Act whereby information 

may be released with authorization. To 

the extent the suggestion contemplates 

attorneys and patent agents employed 

by other Government agencies, 

implementation would be operationally 

impractical. In view of the comments, 

the Office also considered and rejected 

having one or more members of the 

public serving in an advisory role to the 

panels as the panels consider whether 

there is probable cause. The Office 

appreciates the benefits that could 

accrue from including members of the 

public on the panels, including an 

increased credibility of the disciplinary 

process in the eyes of the public. There 

are a number of reasons the suggestions 

are not feasible. As already noted, nonemployees may not make inherently 

governmental decisions, such as finding 

probable cause to bring disciplinary 

proceedings thereby authorizing the 

proceedings to be initiated. Disclosure 

of the grievances, investigation files and 

deliberations to members of the public 

is not authorized as a routine use of the 

system of records under which these 

documents are maintained, and is 

inconsistent with the Privacy Act. 

Further, no practical or feasible means 

is apparent or suggested for adequately 

screening the public for conflicts of 

interest with the practitioner and the 

practitioner’s clients before disclosing 

records or information to the member of 

the public. The Office does not know all 

the clients of a practitioner and the 

members of the public, or even prior 

relationships between the practitioner 

and member of the public. Therefore, 

the Office could not ascertain the 

existence of potential or actual conflicts 

without obtaining the information 

voluntarily from each party, which is 

unlikely to occur. Therefore requiring a 

member of the public to be on each 

panel is neither legally nor realistically 

possible. The Office is considering 

establishing an advisory committee for 

the OED Director to provide advice 

regarding enrollment and disciplinary 

matters and will seek public input into 

the formation and role of such a 

committee. 

Comment 38: One comment suggested 

that language be inserted in § 11.23 to 

provide that a complaint should not be 

approved unless sufficient probable 

cause exists for a fact finder to conclude 

‘‘by clear and convincing evidence’’ that 

a violation has occurred. 

Response: The suggestion to add ‘‘by 

clear and convincing evidence’’ to 

§ 11.23 has not been adopted. The Office 

has used, and continues to use, a 

probable cause standard to initiate a 

disciplinary action. The ‘‘probable 

cause’’ standard differs from, and is not 

inclusive of, the ‘‘clear and convincing 

evidence’’ standard. A complaint is 

approved only after the Committee on 

Discipline, independent of the OED 

Director, reviews the record and 

information provided by the OED 

Director. A disciplinary proceeding is 

instituted under § 11.34 when the OED 

Director files a complaint, and the OED 

Director thereafter has the burden of 

proving the case against a practitioner 

by clear and convincing evidence. Use 

of the probable cause standard, as 

opposed to a ‘‘clear and convincing 

evidence’’ standard to initiate a 

disciplinary proceeding is appropriate. 

The Office, like the states and the 

District of Columbia, complies with due 

process standards applicable to 

administrative enforcement 

proceedings. All or most of the 

procedures specified in the ABA’s 

Model Rules for Lawyer Disciplinary 

Enforcement, which were devised in 

light of applicable due process and 

similar constraints, have been followed 


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by many states. Under those rules a 

screening body, independent of the 

disciplinary counsel, determines 

whether probable cause exists 

warranting formal charges. See 

Restatement (Third) of the Law 

Governing Lawyers Current through 

August 2007, Chapter 1, Regulation Of 

The Legal Profession, Topic 2, Process 

Of Professional Regulation, Title C, 

Professional Discipline Introductory 

Note. Probable cause is sufficient to 

institute civil proceedings. See 

Professional Real Estate Investors, Inc. 

v. Columbia Pictures Industries, Inc., 

508 U.S. 49, 63, 113 S.Ct. 1920, 1929 

(1993) (‘‘Probable cause to institute civil 

proceedings requires no more than a 

‘reasonabl[e] belie[f]’ that there is a 

chance that [a] claim may be held valid 

upon adjudication’’ quoting Hubbard v. 

Beatty & Hyde, Inc., 178 N.E.2d 485, 488 

(Mass. 1961)). A probable cause 

determination is not a constitutional 

prerequisite to a charging decision in a 

criminal matter. Gerstein v. Pugh, 420 

U.S. 103, 123, 95 S.Ct. 854, 868 (1974). 

Therefore, probable cause is an 

appropriate standard for the Office to 

use to initiate disciplinary proceedings. 

Comment 39: One comment suggested 

with regard to § 11.23(b) that the OED 

Director be required to present to the 

Committee on Discipline evidence that 

tends to negate the conclusion that a 

disciplinary violation occurred by 

inserting the phrase ‘‘including 

evidence that tends to negate the 

conclusion that a violation has 

occurred.’’

Response: The suggestion to insert the 

phrase ‘‘including evidence that tends 

to negate the conclusion that a violation 

has occurred’’ into § 11.23(b)(1) has not 

been adopted. The Office agrees and 

follows the practice suggested by the 

comment. That is, the investigation file 

is available to the Committee as it 

considers all the available evidence. It 

long has been the OED Director’s 

practice to make available to the 

Committee the entire investigation file, 

including every statement and 

document the practitioner has presented 

to explain his or her conduct. Thus, the 

Committee has the opportunity to 

consider evidence negating the 

conclusion that a disciplinary violation 

occurred and the insertion of the phrase 

is unnecessary. 

Comment 40: One comment 

recommended that the provisions of 

§ 11.24 be expanded to permit 

reciprocal disciplinary proceedings to 

also be initiated upon notice that a 

practitioner has been subject to public 

censure or public reprimand, probation, 

or placed on disability inactive status by 

a state or by a Federal court. 

Response: The recommendation to 

expand reciprocal disciplinary 

procedures to circumstances when a 

practitioner has been subjected to public 

censure or public reprimand, probation, 

or placed on disability inactive status 

has been adopted in part. The phrase 

‘‘publicly censured, publicly 

reprimanded, subjected to probation,’’

has been inserted in the first sentence of 

§ 11.24(a) after ‘‘being’’ (first 

occurrence) and before ‘‘disbarred.’’ The 

same or similar language has been 

inserted into the third and fourth 

sentences of § 11.24(a), as well as in 

sections 11.24(b), 11.24(b)(1), 

11.24(b)(3), 11.24(c), 11.24(d), 

11.24(d)(1)(iii), 11.24(d)(1)(iv), 11.24(e), 

and 11.24(f) to enable the sections to be 

consistent in scope and application. 

The recommendation to include 

practitioners placed on disability 

inactive status by a state or by a Federal 

court has not been adopted. Typically, 

states provide that where a lawyer has 

been judicially declared incompetent or 

committed to a mental hospital after a 

judicial hearing, or where a lawyer has 

been placed by court order under 

guardianship or conservatorship, or 

where a lawyer has been transferred to 

disability inactive status in another 

jurisdiction, the state’s highest court, 

upon proper proof of the fact, is 

authorized to enter an order transferring 

the lawyer to disability inactive status. 

A copy of the order must be served, in 

the manner the court may direct, upon 

the lawyer, his or her guardian or 

conservator, and the director of the 

institution to which the lawyer is 

committed. In some jurisdictions, the 

court suspends the lawyer instead of 

transferring the lawyer to disability 

inactive status. While the nature of the 

proceeding is protective of the public, in 

no sense is the proceeding disciplinary 

in nature. Accordingly, it would be 

inappropriate to include a court’s 

placement of a practitioner on disability 

inactive status in a reciprocal 

disciplinary rule. 

The Office does share the concern 

implicit in the comment that a 

practitioner placed on disability 

inactive status may not be competent to 

represent others before the Office. 

Therefore, a practitioner who has been 

suspended or placed on disability 

inactive status in another jurisdiction 

should not continue to practice before 

the Office unless and until the 

practitioner is restored to active status 

in the jurisdiction where the 

practitioner first obtained disability 

inactive status. 

Comment 41: Several comments 

suggested that the scope of crime 

required by the first sentence of 

§ 11.25(a) to be reported is too broad. 

One comment queried whether 

particular conduct, such as jay walking 

and traffic offenses, would be included. 

One comment suggested that the 

administrative burden of requiring 

practitioners to report and the OED 

Director to process crimes as trivial as 

traffic violations dictates that a 

notification requirement encompassing 

a narrower scope of convictions should 

be adopted, and recommended adopting 

a notification rule requiring notification 

of ‘‘serious crimes’’ excluding 

‘‘misdemeanor traffic offenses or traffic 

ordinance violations, not including the 

use of alcohol or drugs.’’

Response: The recommendation to 

narrow the scope of crimes reportable 

upon conviction has not been adopted. 

The definition of crime in § 11.1 

provides the public with notice of the 

criminal conduct that must be reported 

to the OED Director upon conviction. 

The burdens on practitioners and the 

OED Director are reasonable. The Office, 

unlike state courts that adopt 

disciplinary procedure rules, cannot 

direct court clerks, judges or 

prosecuting attorneys to report the 

criminal conviction of an attorney or 

registered patent agent to the Office. A 

number of jurisdictions require 

attorneys to self-report that they have 

been found guilty of a crime or plead 

guilty to a criminal charge. For example, 

see Rule IX, Section 10(a) of the rules 

governing the District of Columbia Bar. 

The scope of reportable crimes in the 

first sentence of § 11.25(a) should be 

broad and expansive, as it is simply 

information that the OED Director 

should have available in the OED 

Director’s continuing responsibility to 

oversee the good moral character of a 

practitioner and fitness in other respects 

necessary to continue to have the 

privilege to continue in the practice 

before the Office. If the crime is not a 

‘‘serious crime,’’ the OED Director will 

process the matter in the same manner 

as any other information coming to the 

attention of OED. 

Comment 42: One comment 

suggested, with regard to § 11.25, that a 

‘‘serious crime’’ violating some Federal 

or State law includes all ‘‘crimes’’

because § 11.1 defines ‘‘crime’’ as 

including ‘‘any offense declared to be a 

felony by Federal or State law’’ and a 

violation of foreign law is only a 

‘‘serious crime’’ and never a ‘‘crime.’’

The comment also suggested that if any 

felony is a ‘‘serious crime,’’ the 

reporting requirement may be too broad 

and administratively burdensome, and 

recommended limiting the reporting 

requirement to ‘‘crimes involving moral 

turpitude,’’ deleting the definition of 


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‘‘serious crimes,’’ and including 

violations of foreign laws as ‘‘crimes.’’

Response: The suggestions regarding 

‘‘serious crime’’ have not been adopted. 

While a ‘‘criminal offense classified as 

a felony under the laws of the United 

States, or any state * * * where the 

crime occurred’’ is, by definition in 

§ 11.1, a ‘‘serious crime,’’ all crimes are 

not serious crimes. For example, 

numerous criminal offenses under the 

laws of the United States and states are 

misdemeanors, not felonies. Only 

certain types of misdemeanors may 

qualify as a ‘‘serious crime.’’ By 

definition, a misdemeanor is a serious 

crime only if a necessary element of the 

crime ‘‘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’.’’ See § 11.1, ‘‘Serious 

Crime.’’ As not all misdemeanors 

involve any of the foregoing elements, 

not all misdemeanors can be a serious 

crime, and not every crime that violates 

some Federal or State law is a ‘‘serious 

crime.’’ Likewise, a violation of foreign 

law is not necessarily a ‘‘serious crime.’’

For example, to be a serious crime, the 

foreign law violated must be a criminal 

law that is classified as a felony in the 

foreign country. The second sentence of 

§ 11.25(a) distinguishes between 

‘‘serious crimes,’’ as the triggering event 

for Reciprocal Discipline, and ‘‘crime,’’

as it refers to the self-reporting aspect of 

the first sentence of § 11.25(a). The 

definition of ‘‘serious crime’’ is 

necessarily a higher standard than the 

definition of ‘‘crime.’’ The higher 

threshold for ‘‘serious crime’’ conduct is 

beyond that for which there is a 

continuing presumption of fitness. It 

follows that the reporting requirement is 

neither too broad nor administratively 

burdensome. Conviction of a ‘‘serious 

crime’’ overcomes and thereby triggers 

an immediate or expedited review of 

such conduct to protect the public, the 

profession and the Office from unfit and 

unacceptable practitioners by the 

imposition of discipline in an expedited 

fashion. Unlike ‘‘moral turpitude,’’ the 

definition of serious crime identifies, by 

an objective standard, crimes for which 

interim suspension is appropriate. 

Comment 43: One comment took 

issue with § 11.25(c) providing a 

practitioner with forty days to challenge 

the appropriateness of the entry of 

interim suspension where the 

practitioner has been convicted of a 

serious crime. The comment pointed out 

that given the conclusiveness of the 

criminal conviction under § 11.25(c), a 

long response time is not warranted in 

these cases because delay in these 

proceedings risks harm to the public. 

Response: The suggestion has been 

adopted to shorten the time a 

practitioner subject to interim 

suspension proceedings for conviction 

of a serious crime has to challenge the 

appropriateness of the entry of such a 

suspension. The Office concurs that a 

long response time is not warranted in 

these cases because delay in these 

proceedings risks harm to the public. 

Inasmuch as some registered 

practitioners are located abroad, 

adequate time must be provided to 

receive and reply to the notice. 

Accordingly, the reply period has been 

changed in § 11.25(b)(2)(iii) to thirty 

days, which is the same time provided 

for responding to a complaint in a 

disciplinary proceeding. 

Comment 44: One comment noted a 

typographical error in the first sentence 

of § 11.26 when reference should have 

been made to § 11.34 instead of § 11.24. 

Response: The suggestion to change 

the reference in the first sentence of 

§ 11.26 from § 11.24 to § 11.34 has been 

adopted. 

Comment 45: One comment 

recommended that § 11.34 require that 

the complaint list the specific PTO 

Rule(s) allegedly violated by adding the 

phrase ‘‘including citation to every 

imperative USPTO Rules of Professional 

Conduct allegedly violated’’ to the end 

of § 11.34(a)(2). 

Response: The recommendation to 

require the complaint to list the specific 

Office Rules of Professional Conduct 

that are alleged to be violated has not 

been adopted, as it is unnecessary. 

Listing the rules allegedly violated is 

provided for in § 11.34(b), which 

requires the complaint ‘‘fairly informs 

the respondent of any grounds for 

discipline, and where applicable, the 

Mandatory Disciplinary Rules identified 

in § 10.20(b) of Part 10 of this 

Subsection that form the basis for the 

disciplinary proceeding.’’ It is, and has 

long been, the practice to specifically 

list the Office rules allegedly violated by 

the practitioner’s conduct. 

Comment 46: Two comments urged 

the time provided in § 11.36(a) for 

answering a complaint should be 

measured from the date the complaint is 

served on the respondent, rather than 

the date it is filed to assure that 

respondents have an appropriate time 

within which to answer a complaint. 

Response: The suggestion to revise the 

time for filing an answer to be measured 

from the date the complaint is served 

has not been adopted. The current 

procedure used in disciplinary 

proceedings, measuring the time for 

filing an answer from the date the 

complaint is filed, is the same 

procedure used for prosecution of 

patent and trademark matters. 

Practitioners are familiar with the 

procedure, and practitioners may and 

do obtain extensions of time to file an 

answer. No difficulties have arisen with 

its operation in disciplinary matters. 

The current procedure provides all 

parties with a date certain from which 

to measure when a response is due. 

Inasmuch as service of the complaint 

may be by mail, and not all complaint 

recipients sign for delivered mail, 

changing the period to be measured 

from the date of service would 

necessitate elimination of service by 

first class mail. It has not been apparent 

that any benefit currently unavailable 

would be obtained by the change. 

Comment 47: Two comments urged, 

presumably with regard to § 11.39, that 

the USPTO Director adopt a policy of 

always appointing administrative law 

judges as hearing officers to maintain 

the requisite independence of the 

process. 

Response: The Office appreciates and 

understands the need for the hearing 

officer to be independent. The Patent 

Statute provides that the USPTO 

‘‘Director shall have the discretion to 

designate any attorney who is an officer 

or employee of the United States Patent 

and Trademark Office to conduct the 

hearing required by this section.’’ See 35 

U.S.C. 32. Accordingly, the provisions 

of § 11.39(a) have been written to be 

consistent with the statute. The 

USPTO’s current practice is to use 

administrative law judges from EPA as 

the hearing officer in disciplinary 

matters; however, the statute does not 

require administrative law judges from 

outside the agency be employed. 

Furthermore, a hearing officer cannot be 

subject to first level or second level 

supervision by either the USPTO 

Director or OED Director, or his or her 

designee. See § 11.39(b). Thus, where an 

employee of the Office is appointed 

under 35 U.S.C. 32 to conduct a 

disciplinary proceeding, the employee 

cannot be subject to first level or second 

level supervision by either the USPTO 

Director or OED Director, or his or her 

designee. 

Comment 48: One comment suggested 

amending § 11.43 to provide for 

‘‘motions, including all prehearing 

motions commonly filed under the 

Federal Rules of Civil Procedure, shall 

be filed with the administrative law 

judge.’’

Response: The suggestion presumably 

pertains to the first sentence of § 11.43, 

which provided that ‘‘[m]otions shall be 

filed with the hearing officer.’’ The 


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suggestion has been adopted to the 

extent that the phrase ‘‘, including all 

prehearing motions commonly filed 

under the Federal Rules of Civil 

Procedure, shall’’ has been substituted 

for ‘‘may’’ in the first sentence of 

§ 11.43. Inasmuch as this section, as 

well as sections 11.39, 11.41, and other 

sections, reference a hearing officer, the 

suggestion to limit the applicability of 

this section to an administrative law 

judge has not been accepted. 

Comment 49: One comment urged 

that § 11.44 be amended to require an 

oral hearing before the hearing officer 

should the practitioner request one in 

writing. The comment suggested that a 

practitioner should have, and probably 

constitutionally does have, an absolute 

right to have a hearing to confront 

witnesses and present evidence. 

Response: The comment that the 

hearing officer not have authority to 

overrule a practitioner’s request for an 

oral hearing is unpersuasive. The 

argument presumes that there are 

genuine issues of material fact. Under 

§ 11.44, an oral hearing would occur 

where there is a genuine issue of 

material fact. However, an oral hearing 

would be unnecessary where, for 

example, there is a settlement, or the 

practitioner fails to file an answer and 

the hearing officer enters an order 

default judgment. Similarly, an oral 

hearing is unnecessary if a summary 

judgment is appropriate and entered. 

‘‘The case law in this Circuit is clear 

that an agency is not required to hold 

an evidentiary hearing where it can 

serve absolutely no purpose. In such a 

circumstance, denial of a hearing may 

be proper even though the statute 

provides for adjudicatory proceedings. 

The agency, however, carries a heavy 

burden of persuasion.’’ Indep. Bankers 

Assoc. of Georgia v. Bd. Of Governors of 

the Fed. Reserve System, 516, F.2d 1206, 

1120 (D.C. Cir. 1975). See also 

Altenheim German Home v. Turnock, 

902 F.2d 582, 585 (7th Cir. 1990) (there 

is no right to an evidentiary hearing 

unless there is a genuine issue of 

material fact); Consolidated Oil & Gas. 

v. FERC, 806 F.2d 275, 279 (DC Cir. 

1986) (quoting Municipal Light Boards 

v. FPC, 450 F.2d 1341, 1345 (D.C. Cir. 

1971), cert. denied, 405 U.S. 989, 92 

S.Ct. 1251, 31 L.Ed. 455 (1972)) (‘‘An 

agency may dispose of a controversy on 

the pleadings without an evidentiary 

hearing when the opposing 

presentations reveal that no dispute of 

fact is involved * * *’’); Puerto Rico 

Aqueduct Sewer Auth. v. USEPA, 35 

F.3d 600, 608 (1st Cir. 1994) (quoting 

John D. Companos & Sons, Inc. v. FDA, 

854 F.2d 510, 552 (D.C. Cir. 1988)) 

‘‘Summary judgment may be entered not 

only for failure to comply with precise 

regulations, but also ‘on the basis of 

manifest noncompliance with general 

statutory or regulatory provisions 

***’ ’’. Clearly, a practitioner who has 

entered into a settlement, failed to 

answer a properly served complaint, or 

failed to raise a genuine dispute of 

material facts should not have an 

absolute right to an oral hearing to 

confront witnesses and present 

evidence. 

Comment 50: One comment stated 

that § 11.44(c) conflicts with longstanding policy of the American Bar 

Association that disciplinary 

proceedings be public. The policy is set 

forth in Rule 16(C) of the Model Rules 

of Lawyer Disciplinary Enforcement 

(MRLDE). Section 11.44(c) proposed 

that disciplinary proceedings, in effect, 

be public at the election of the 

respondent. The comment pointed out 

that mistrust that can develop when a 

governmental function is not 

functioning openly—even when it is 

functioning well. The comment 

acknowledged the need for 

confidentiality of matters prior to the 

filing and service of a petition for 

discipline to protect the respondent 

from publicity regarding unfounded 

accusations, that by keeping the 

investigative process confidential, the 

Office ensures that allegations of 

misconduct will continue to be 

thoroughly investigated and scrutinized, 

and that a case will not proceed if the 

allegations are frivolous or there is a 

lack of sufficient evidence of 

wrongdoing to warrant the initiation of 

disciplinary proceedings under §§ 11.32 

and 11.34. The comment further stated 

that once a finding of probable cause 

has been made, there is no longer a 

danger that the allegations against the 

practitioner are frivolous. The comment 

also recommended the addition of 

provisions providing for the imposition 

of protective orders where necessary set 

forth in Rule 16(E) of the MRLDE to 

address valid concerns regarding 

confidential and privileged information. 

Response: The recommendation to 

adopt the provisions of Rules 16(C) and 

16(E) of the MRLDE has not been 

adopted. The recommended change is 

not a logical extension of the rule 

proposed in Supplemental Notice of 

Proposed Rule Making on February 28, 

2007, in the Federal Register (72 FR 

9196). However, the recommendation 

will be further considered and public 

comment solicited to address a rule that 

would adopt the provisions of Rules 

16(C) and 16(E) of the MRLDE. 

Comment 51: Two comments 

suggested that the hearing officer’s 

authority to exclude evidence under 

§ 11.50(a) should be expanded from 

excluding ‘‘irrelevant, immaterial, or 

unduly repetitious’’ evidence to 

authority to exclude evidence if its 

‘‘probative value is substantially 

outweighed by the danger of unfair 

prejudice, confusion of the issues, or by 

considerations of undue delay, waste of 

time, or needless presentation of 

cumulative evidence.’’ This is the 

standard that applies under Fed. R. 

Evid. 403. One comment suggested that 

the Federal Rules of Evidence should 

apply, given the final appeal to the U.S. 

District Court for the District of 

Columbia. Another comment suggested 

that the Office follow Rule 18 of the 

American Bar Association’s Model 

Rules of Lawyer Disciplinary 

Enforcement to provide for the 

applicability of state rules of evidence 

in disciplinary proceedings, except as 

otherwise provided in the Office rules. 

Response: The suggestions to modify 

§ 11.50 have not been adopted. The 

language in § 11.50, ‘‘Agency may 

exclude evidence that is irrelevant, 

immaterial, or unduly repetitious,’’ is 

derived from 5 U.S.C. 556(d). The 

explanation the Office provided in 1985 

for not adopting the same or similar 

suggestions still obtains and is 

reproduced below. 

‘‘The PTO has explained in both the 

advance notice (49 FR 10020, column 2) 

and the notice of proposed rule making 

(49 FR 33801, columns 1 and 2) why it 

cannot adopt the Federal Rules of 

Evidence in disciplinary cases. The 

‘Federal Rules of Evidence * * * do not 

apply to administrative proceedings 

* * *.’ Davis, Administrative Law 

Treatise, § 14.01 (Supp. 1970). The 

controlling law is set out in 5 U.S.C. 

556(d) which provides in part: ‘Any oral 

or documentary evidence may be 

received, but the agency as a matter of 

policy shall provide for the exclusion of 

irrelevant, immaterial, or unduly 

repetitious evidence. A sanction may 

not be imposed or rule or order issued 

except on consideration of the whole 

record or those parts thereof cited by 

an[y] party and supported by and in 

accordance with the reliable, probative, 

and substantial evidence.’ It appears to 

be the concern of some of the comments 

that the Administrative Procedure Act 

does not articulate an appropriate 

standard of evidence and that hearsay 

may be admitted. Suffice it to say that 

many adjudications occur daily under 

the Administrative Procedure Act, 

including disciplinary proceedings. The 

following language appearing in an 

opinion of the Eleventh Circuit in TRWUnited Greenfield Division v. National 

Labor Relations Board, 716 F.2d 1391, 

1994 (11th Cir. 1983), may be helpful: 


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‘‘At the hearing the ALJ refused to allow 

five additional employees to testify that other 

employees ‘told them that such a statement 

had been made. TRW contends it was denied 

a full and fair hearing by the exclusion of this 

testimony. The general rule is that 

administrative tribunals are not bound by the 

strict rules of evidence governing jury trials. 

Opp Cotton Mills, Inc. v. Administrator of 

Wage & Hour Div., 312 U.S. 126, 155, 61 S.Ct. 

524, 537, 85 L.Ed. 624 (1971). Thus, the 

admission of testimony which would be 

deemed incompetent in judicial proceedings 

would not invalidate the administrative 

order. Tagg Bros. & Moorhead v. United 

States, 280 U.S. 420, 442, 50 S.Ct. 220, 225, 

74 L.Ed. 524 (1930). But this assurance of a 

desirable flexibility in administrative 

procedure does not go so far as to justify 

orders without a basis in evidence having 

rational probative force. Mere uncorroborated 

hearsay or rumor does not constitute 

substantial evidence. Consolidated Edison 

Co. v. N.L.R.B., 305 U.S. 197, 230, 59 S.Ct. 

206, 217, 83 L.Ed. 126 (1938). Therefore, the 

hearsay testimony of other employees would 

not have amounted to substantial evidence 

sufficient to support a finding for the 

company. We find that TRW was not denied 

a full and fair hearing by the judge’s refusal 

to admit hearsay testimony.’

‘‘See also Steadman v. Securities and 

Exchange Commission, 450 U.S. 91, 98 n.17 

(1981); Richardson v. Perales, 402 U.S. 389, 

410–411 (1971); Brown v. Gamage, 377 F.2d 

154, 158 (D.C. Cir.), cert. denied, 389 U.S. 

858 (1967); Annotation, Hearsay Evidence In 

Proceedings Before Federal Administrative 

Agencies, 6 ALR Fed 76 (1971); and Davis, 

Hearsay in Administrative Proceedings, 32 

Geo. Wash. L. Rev. 689 (1964).’’

Comment 52: One comment took 

issue with the last sentence of 

§ 11.51(b), which permits the hearing 

officer to refuse to admit deposition 

testimony that both the OED Director 

and the practitioner agree is admissible. 

The comment suggested that the phrase 

‘‘Unless the parties agree otherwise,’’ be 

placed at the beginning of the last 

sentence. 

Response: The suggestion to permit 

deposition testimony to be entered into 

the record if the parties agree has not 

been adopted. The rules should not 

limit the ability of the hearing officer to 

handle the proceedings, especially if the 

officer finds a reasonable basis to 

believe that the demeanor of the witness 

is involved. 

Comment 53: One comment objected 

to the provision in § 11.52(e) permitting 

the hearing officer to decide not to 

require pretrial disclosures of witnesses, 

exhibits, and the like. The comment 

urged that pre-trial disclosures should 

be mandatory absent either agreement of 

the parties to waive pre-trial disclosures 

or a showing of ‘‘good cause’’ by a party 

seeking to avoid them by replacing the 

phrase ‘‘The hearing officer may’’ with 

‘‘Absent good cause shown, the hearing 

officer shall’’. 

Response: The suggestion that 

§ 11.52(e) be amended to remove the 

hearing officer’s discretion to require 

pretrial disclosure has not been 

adopted. This section should not limit 

the ability of the hearing officer under 

§ 11.39(c) to manage the hearing, 

including whether to require pretrial 

disclosures. In proceedings under 

former § 10.152(e), administrative law 

judges frequently required pretrial 

disclosures in proceedings. The 

provisions of § 11.52(e) are not 

inconsistent with some states. 

Comment 54: One comment said that 

§ 11.52(f), which provides that after a 

witness testifies for a party, if the 

opposing party requests, the party may 

be required to produce, prior to crossexamination, any documents relied 

upon by the witness in giving his or her 

testimony, is a burdensome discovery, 

which will only delay the proceedings, 

and suggested deletion of this section. 

Response: The suggestion to delete 

§ 11.52(f) has been adopted. In addition 

to the lack of a definition of ‘‘written 

statement,’’ the provision could be 

burdensome for both parties. For 

example, if a witness studied a ‘‘written 

statement’’ several days before the 

hearing and did not bring it to the 

proceeding, the hearing officer could 

grant a recess to allow the party to get 

the statement and provide the opposing 

party time to review the statement 

before the witness is cross-examined. 

The proceeding should not be so 

prolonged for each witness. However, 

the deletion of this subsection should 

not be construed as prohibiting the 

hearing officer from exercising 

discretion to assure a fair hearing. For 

example, after a witness testifies for a 

party, the hearing officer may grant the 

opposing party’s motion, prior to crossexamination, to produce any documents 

the witness reviewed during direct 

examination or to refresh the witness’s 

memory. 

Comment 55: One comment suggested 

that the framework adopted by the 

American Bar Association in Rule 10(C) 

of the Model Rules of Lawyer 

Disciplinary Enforcement (MRLDE) for 

imposing lawyer sanctions replace the 

provisions of § 11.54(b) for imposing 

sanctions. The comment pointed out 

that the 1986 Standards for Imposing 

Lawyer Sanctions has been widely 

adopted and utilized in state 

disciplinary systems. Another comment 

suggested that due to inapplicability, 

each factor of § 11.54(b) should not be 

mechanically addressed, and the rule 

should reflect as much. 

Response: The suggestion has been 

substantially adopted. The wide 

adoption and utilization of the 

framework of MRLDE Rule 10(C) in state 

disciplinary systems for imposing 

sanctions would benefit the Office by 

providing the precedent and 

consistency for imposing practitioner 

sanctions in the Office’s discipline 

system that are necessary for fairness to 

the public and the practitioners. The 

provision of MRLDE Rule 10(C)(1), 

‘‘whether the practitioner has violated a 

duty owed to a client, to the public, to 

the legal system, or to the profession,’’

has been substituted in § 11.54(b)(1) for 

‘‘[t]he public interest.’’ The ‘‘duty owed 

* * * to the public’’ is inclusive of the 

‘‘[t]he public interest’’ factor of former 

§ 10.154(b)(1). The ‘‘duty owed * * * to 

the legal system, or to the profession’’ is 

broader than, but inclusive of, the 

‘‘integrity of the legal patent profession’’

of former § 10.154(b)(4). The duty owed 

to the legal system and profession 

includes integrity with regard to the 

Office in patent, trademark and other 

non-patent matters, as well as duties 

beyond integrity owed to the entire legal 

system, including to the Office. The 

duty owed to ‘‘a client’’ introduces a 

new consideration to consider when 

imposing a sanction. 

The provision of MRLDE Rule 

10(C)(2), ‘‘whether the practitioner acted 

intentionally, knowingly, or 

negligently,’’ has been substituted in 

§ 11.54(b)(2) for ‘‘[t]he seriousness of the 

grounds for discipline.’’ Actions 

committed intentionally, knowingly, or 

negligently implicitly are serious for a 

practitioner, and the substituted 

language is generally comparable in 

scope to the factor in former § 10.154(b). 

The substitution also provides the 

Office disciplinary system and courts 

with clear and well-understood actions 

to focus upon when imposing sanctions. 

The provision of MRLDE Rule 

10(C)(3), ‘‘the amount of the actual or 

potential injury caused by the 

practitioner’s misconduct,’’ has replaced 

the factor of former § 11.54(b)(3), ‘‘the 

deterrent effects deemed necessary.’’ No 

one factor of MRLDE Rule 10(C) is 

expressed in terms of being a deterrent 

effect. Rather, all the factors together 

may have a deterrent effect. 

The provision of MRLDE Rule 

10(C)(4), ‘‘[t]he existence of any 

aggravating or mitigating factors,’’ has 

been substituted for the factor of former 

§ 11.54(b)(4), ‘‘any extenuating 

circumstances.’’ The words ‘‘mitigating 

factors’’ are comparable with the 

‘‘extenuating circumstances’’ of former 

§ 10.54(b)(5). The inclusion of ‘‘any 

aggravating * * * factor’’ introduces a 

new consideration for imposing a 

sanction. 

The Office concurs with the 

observation that inasmuch as all factors 


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do not necessarily obtain in each case, 

they need not be addressed. Therefore, 

§ 11.54(b) provides for their 

consideration ‘‘if applicable.’’

In substantially adopting the 

framework of MRLDE Rule 10(C), the 

Office notes its anticipation that existing 

precedent applying the factors under 

former § 10.154(b) could still be relied 

upon with regard to the application of 

analogous factors in § 11.54(b). Also, in 

adopting this framework, it is 

appropriate that the Office present 

below the American Bar Association’s 

commentary accompanying the 

standards. The commentary provides 

guidance that may and can be consulted 

and considered by the Office, courts, the 

OED Director and the representatives of 

the OED Director when imposing or 

recommending sanctions. The 

commentary that follows has been 

modified for applicability to 

disciplinary proceedings in the Office: 

These standards provide a framework to 

guide the courts and disciplinary 

agencies, including disciplinary 

counsel, in imposing sanctions, thereby 

providing the flexibility to select the 

appropriate sanction in each particular 

case of practitioner misconduct. The 

sanction imposed may depend on the 

presence of aggravating or mitigating 

factors. The following lists of 

aggravating and mitigating 

circumstances are found in Standard 9 

of the American Bar Association’s 

Standards for Imposing Lawyer 

Sanctions. Aggravating factors include: 

Prior disciplinary offenses; dishonest or 

selfish motive; a pattern of misconduct; 

multiple offenses; bad faith obstruction 

of the disciplinary proceeding by 

intentionally failing to comply with 

rules or orders of the disciplinary 

agency; submission of false evidence, 

false statements or other deceptive 

practices during disciplinary process; 

refusal to acknowledge wrongful nature 

of conduct; vulnerability of victim; 

substantial experience in the practice of 

law; and indifference to making 

restitution. Mitigating factors include: 

absence of prior disciplinary record, 

absence of dishonest or selfish motive; 

personal or emotional problems; timely 

good faith effort to make restitution or 

to rectify consequences of misconduct; 

full and free disclosure to disciplinary 

board or cooperative attitude toward 

proceedings; inexperience in the 

practice of law; character or reputation; 

physical or mental disability or 

impairment; delay in disciplinary 

proceedings; interim rehabilitation; 

imposition of other penalties or 

sanctions; remorse; and remoteness of 

prior offenses. The Standards for 

Imposing Lawyer Sanctions set forth a 

comprehensive system for determining 

sanctions, permitting flexibility and 

creativity in assigning sanctions in 

particular cases of practitioner 

misconduct. Use of the Standards will 

help achieve the degree of consistency 

in the imposition of lawyer discipline 

necessary for fairness to the public and 

the bar. 

Comment 56: One comment stated 

that it appears that the USPTO 

Director’s review of the hearing officer’s 

decision is a de novo decision but the 

standard of the decision is not explicitly 

stated in § 11.56, and suggested 

clarifying the matter by inserting ‘‘de 

novo’’ between ‘‘shall’’ and ‘‘decide,’’ or 

specifying some other standard that is 

deemed appropriate. 

Response: The suggestion to specify 

in § 11.56(a) that the decision of the 

USPTO Director, upon appeal from the 

initial decision of the hearing officer, is 

de novo has been adopted in part. 

Section 11.56(a) is revised to add a 

sentence providing that on appeal from 

the initial decision, the USPTO Director 

has authority to conduct a de novo 

review of the factual record. This is 

consistent with Administrative 

Procedure Act (APA). The Office is 

empowered by the APA, 5 U.S.C 551, et 

seq. to conduct an independent review 

of the factual record before it. ‘‘On 

appeal from or review of the initial 

decision, the agency has all the powers 

which it would have in making the 

initial decision except as it may limit 

the issues on notice or by rule.’’ 5 U.S.C. 

557(b). 

Comment 57: One comment said that 

the Director’s decision is not always as 

thorough as the hearing officer’s 

decision, and suggested adding to 

§ 11.56(a), maybe after the second 

sentence, ‘‘The initial decision is 

adopted unless modified.’’

Response: The suggestion to add a 

provision that the ‘‘initial decision is 

adopted unless modified’’ has not been 

adopted. The current practice is that 

each individual decision of the USPTO 

Director indicates those instances, and 

to what extent, the USPTO Director 

adopts the findings of fact and law of 

the administrative law judge hearing the 

matter. Under § 11.55(b), exceptions to 

the hearing officer’s decision and 

supporting reasons must be included in 

the appeal if they are to be preserved. 

Therefore, the USPTO Director need not 

consider or adopt portions of the 

hearing officer’s decision to which no 

exception has been filed. It is more 

prudent that the Office continue with 

that practice rather than change the rule. 

Comment 58: One comment said that 

the duties set forth in § 11.58 that apply 

to lawyers who have resigned or who 

have been excluded or suspended 

should apply to lawyers placed on 

disability inactive status. Rule 27 of the 

American Bar Association’s Model 

Rules for Lawyer Disciplinary 

Enforcement provides that, in state 

disciplinary proceedings, a lawyer 

placed on disability inactive status must 

notify clients, co-counsel and opposing 

counsel of the transfer and must also 

comply with other notice, record 

retention and rules relating to 

withdrawal from cases and return of 

client property and fees. The comment 

noted that such notice is protective of 

clients. 

Response: Section 11.28(a)(2) 

provides that a practitioner on disability 

inactive status ‘‘shall comply with the 

provisions of § 11.58.’’ Nevertheless, the 

recommendation that the duties set 

forth in § 11.58 that apply to lawyers 

who have resigned or who have been 

excluded or suspended should apply to 

lawyers placed on disability inactive 

status has been construed as suggesting 

that § 11.58 specifically reference those 

on disability inactive status. The 

suggestion has been adopted and 

expanded to all practitioners, lawyers as 

well as patent agents, on disability 

inactive status. Reference to a 

‘‘practitioner transferred to disability 

inactive status’’ or ‘‘transfer to disability 

inactive status,’’ as appropriate, has 

been added to §§ 11.58(a), 11.58(b), 

11.58(b)(1), 11.58(b)(1)(i), 11.58(b)(1)(ii), 

11.58(b)(1)(iii), 11.58(b)(2)(vi), 11.58(c), 

11.58(d), 11.58(e), 11.58(e)(1), 

11.58(e)(3), 11.58(f), 11.58(f)(1)(i), 

11.58(f)(1)(ii) and 11.58(f)(2)(ii). Further, 

the title of § 11.58 has been revised to 

be ‘‘Duties of disciplined or resigned 

practitioner, or practitioner on disability 

inactive status.’’

Comment 59: One comment regarding 

§ 11.58(b)(1)(ii) doubted that the Office 

intended to require, for example, a large 

law firm to notify every client with 

business before the Office of the 

discipline or exclusion of a practitioner 

who, though designated by the firm 

through its customer number, 

nonetheless has no substantive 

involvement in prosecuting that client’s 

application. The comment suggested 

that such notice should be required only 

if the practitioner was substantively 

involved, as in 37 CFR 1.56, in any 

business of the client before the Office. 

Response: The suggestion to limit 

notification of suspension or exclusion 

to only those clients for whom the 

practitioner is substantively involved in 

prosecuting that client’s application has 

not been adopted. It is the intent of the 

Office to require the practitioner, not the 

firm, to notify all clients the practitioner 


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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. Consistent with 

compliance with the ethical duties of 

the firm’s members, the firm must 

enable the practitioner to notify the 

clients, for example, by identifying 

every client and every client’s 

applications in which the practitioner, 

though designation by the firm’s 

customer number(s), has a power of 

attorney or authorization of agent. The 

requirement obtains whenever and 

however the practitioner is given a 

power of attorney to represent the 

client. The Office appreciates that a firm 

may include all practitioners in the firm 

or all partners on every power of 

attorney, including appointment 

through use of a firm’s customer 

number. The practitioner, by virtue of a 

power of attorney, may represent all 

clients who have appointed the 

practitioner, irrespective of whether the 

practitioner is substantively involved in 

the client’s case. The practitioner may 

share in the fees the client pays to the 

firm, even if the practitioner is not 

substantively involved in the client’s 

applications before the Office. The 

client is entitled to know whether a 

practitioner empowered to represent the 

client has been disciplined. 

The Office does not require that a 

power of attorney filed in a patent or 

trademark application include an 

appointment of all practitioners who are 

partners or associates in firm. The 

power of attorney filed in a patent or 

trademark application may be limited to 

a particular practitioner or group of 

practitioners. In the latter case, a 

practitioner in a large firm who is given 

a power of attorney in only a small 

number of the firm’s cases may comply 

with the provisions of § 11.58(b)(1)(ii) 

by providing notice only to the clients 

in a small number of cases from whom 

the practitioner received a power of 

attorney. 

Comment 60: Two comments pointed 

out that § 11.58(b)(2)(vi) refers to 

‘‘§ 11.11(a),’’ a designation not included 

in the July 2004 rules, and requested 

clarification. 

Response: Section 11.58(b)(2)(vi) 

should have referenced ‘‘§ 11.11’’

because subsections have not been 

added to § 11.11 since it was adopted. 

Therefore, the reference has been 

changed to § 11.11. 

Comment 61: One comment regarding 

§ 11.58(b) observed that some 

suspended or excluded practitioners 

may not satisfy the conditions for 

reinstatement, and suggested adding a 

third provision, ‘‘to provide tax records 

or other proof of employment during 

discipline period’’ to § 10.160(c). 

Response: The suggestion to add a 

subsection to § 11.58(b) requiring 

suspended and excluded practitioners 

to provide tax records or other proof of 

employment during the period the 

discipline period has not been adopted. 

A suspended and excluded practitioner 

is prohibited from ‘‘engag[ing] in any 

practice of patent, trademark and other 

non-patent law before the Office.’’ See 

§ 11.58(a). The practitioner must ‘‘not 

hold himself or herself out as authorized 

to practice law before the Office,’’

§ 11.58(b)(3); ‘‘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,’’

§ 11.58(b)(4), and ‘‘not render legal 

advice or services to any person having 

immediate or prospective business 

before the Office as to that business,’’

§ 11.58(b)(5). The practitioner seeking 

reinstatement has the burden of proof by 

clear and convincing evidence, and a 

practitioner who has violated any 

provision of § 11.58 is not eligible for 

reinstatement. See § 11.60(c). If the OED 

Director has good cause to believe a 

suspended or excluded practitioner has 

continued to practice before the Office 

after being ordered suspended or 

excluded, the rules are sufficiently 

broad to permit the OED Director to 

request records showing the sources of 

a practitioner’s income and employment 

following the order of suspension or 

exclusion. 

Comment 62: One comment 

recommended that § 11.59(a) be revised 

to include reports to the American Bar 

Association’s National Lawyer 

Regulatory Data Bank (NLRDB), the only 

national repository of information 

concerning public disciplinary 

sanctions imposed against lawyers and 

other regulatory actions from all states 

and the District of Columbia, some 

Federal courts and some Federal 

agencies. The comment noted that the 

NLRDB has been receiving reports of 

public regulatory actions from the 

USPTO since 2001 and was referenced 

in the originally proposed rules under 

its former name, the National Discipline 

Data Bank. 

Response: The recommendation to 

revise § 11.59(a) to specifically include 

reporting to the NLRB has not been 

adopted. It is not necessary for this 

section to specify every agency, 

institution or other member of the 

public to which reports are sent 

regarding the lawyers being 

disciplinarily sanctioned. The NLRB is 

within the scope of the public to whom 

public disciplinary sanctions imposed 

against lawyers have been and will 

continue to be reported. 

Comment 63: One comment noted 

that § 11.59(c) provides that the affidavit 

that accompanies a request for exclusion 

on consent is confidential, while the 

order of exclusion is public. The 

comment recommended that the 

admissions leading to the sanction 

should be known inasmuch as the 

sanction imposed is public and keeping 

admissions private may serve to further 

public distrust of these proceedings. In 

support thereof, the comment noted that 

under Rules 21(E) and 10(D) of the 

American Bar Association’s Model 

Rules of Disciplinary Enforcement, an 

affidavit accompanying a petition for 

discipline on consent that would result 

in a public sanction is public, unless 

covered by a protective order. The 

comment also noted that a disciplined 

practitioner is protected by the 

statement in § 11.59 (c) that the affidavit 

cannot be used in any other proceeding 

except by order of the USPTO Director 

or with the practitioner’s written 

consent. 

Response: The recommendation to 

revise § 11.59(c) to provide that 

admissions leading to the agreed upon 

sanction should be made known to the 

public unless covered by a protective 

order is adopted in part. This section is 

revised to provide that unless the 

USPTO Director orders that the 

proceeding or portion of the record be 

kept confidential, both the order 

excluding a practitioner and the 

affidavit required under § 11.27(a) will 

be available to the public. There are two 

exceptions. Information from the order 

or affidavit may be withheld as 

necessary to protect the privacy of third 

parties or as directed in a protective 

order under § 11.44(c). This section 

continues to provide that the affidavit 

shall not be used in any other 

proceeding except by order the USPTO 

Director or upon written consent of the 

practitioner. 

Comment 64: One comment suggested 

that inasmuch as records regarding a 

warning are not to be made available to 

the public this be made clear by 

inserting into § 11.59(b) after ‘‘be kept 

confidential’’ the phrase ‘‘or it concerns 

a warning issued under Section 11.21’’. 

Response: The suggestion to add the 

phrase ‘‘or it concerns a warning issued 

under § 11.21’’ to § 11.59(b) has not 

been adopted. The suggested phrase 

implies that matters concerning a 

warning are other than confidential and 

are protected only by reason of the 

suggested phrase. Section 11.59 need 


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not provide safeguards because 

information collected in an 

investigation is placed into a Privacy 

Act system of records, in this case 

COMMERCE/PAT–TM–2, Complaints, 

Investigations and Disciplinary 

Proceedings Relating to Registered 

Patent Attorneys and Agents, published 

at 70 FR 69522. Furthermore, the 

Privacy Act of 1974, 5 U.S.C. 552a, 

provides numerous protections for those 

records. Regarding the requests for 

release of these records under the 

Freedom of Information Act (FOIA), 

Privacy Act records may not be 

disclosed unless the subject of the 

record consents or one of twelve 

exceptions apply. One of the twelve 

exceptions provides for information that 

is releasable under FOIA. This is a 

statutory exception that cannot be 

altered by rule making. Generally, the 

information in investigation files, 

including warnings, is protected from 

disclosure by FOIA exemptions 5 and 6. 

See 5 U.S.C. 552(b)(5) and (6), 

respectively. Thus, information 

regarding a warning, including the 

warning, is among the collected 

information that is subject to the 

numerous protections of the Privacy 

Act, and will not be released to FOIA 

requesters as provided for under current 

Federal law. 

Comment 65: One comment noted 

that some people may not have satisfied 

the conditions for reinstatement, and 

suggested adding ‘‘(3) to provide tax 

records or other proof of employment 

during discipline period’’ to § 11.60(c). 

Response: The suggestion to add a 

provision to § 11.60(c) requiring 

suspended or excluded practitioners to 

provide tax records or other proof of 

employment during the period of 

discipline has not been adopted. An 

excluded, suspended or resigned 

practitioner, or practitioner transferred 

to disability inactive status is prohibited 

from practicing before the Office. See 

§ 11.58(a). The practitioner must keep 

and maintain records of the steps taken 

under § 11.58 to provide proof in a 

subsequent proceeding, such as 

reinstatement, of compliance with the 

provisions of § 11.58. See § 11.58(d). 

The OED Director must seek evidence of 

compliance with § 11.58. See § 11.58(d). 

If the practitioner acts as a paralegal or 

performs services under § 11.58(e), to be 

reinstated the practitioner must file an 

affidavit explaining the acts performed 

in that capacity and show compliance 

with the provisions of § 11.58. See 

§ 11.58(f). A practitioner who has 

violated any provision of § 11.58 is 

ineligible for reinstatement. See 

§ 11.60(c). If the showing is insufficient, 

the OED Director may request additional 

showings, including, where appropriate, 

evidence of employment as a paralegal. 

The evidence sought may include any 

written employment agreement and 

income tax withholding statements for 

the relevant time period. 

Rule Making Considerations 

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 

final rule will not have a significant 

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 a regulatory flexibility 

analysis are not applicable to this final 

rule because the rule 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 removes the $1500 cap on 

disciplinary proceeding costs that can 

be assessed, as a condition of 

reinstatement, against a practitioner 

who has been suspended or excluded 

from practice before the Office. 

Approximately five of the roughly 

35,000 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 notice of final 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 notice of final rule making 

contains revisions that the United States 

Patent and Trademark Office (USPTO) is 

adopting to the rules governing the 

conduct of professional responsibility 

investigations and disciplinary 

proceedings. The principal impact of 

the changes in this notice of final rule 

making is on registered practitioners. 

The information collections involved in 

this final rule have been previously 

reviewed and approved by OMB under 

OMB control numbers 0651–0012 and 

0651–0017. The 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, PTO–1209, PTO–

2126, PTO–2149 and PTO–2150. 

Type of Review: Approved through 

December of 2010. 

Affected Public: Individuals or 

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

local, or tribal governments. 

Estimated Number of Respondents: 

72,122. 

Estimated Time per Response: 5 

minutes to 40 hours. 

Estimated Total Annual Burden 

Hours: 89,475 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. 2(B)(2)(d). The 

Office of Enrollment and Discipline 

collects this information to insure 

compliance with the USPTO Code of 

Professional Responsibility, 37 CFR 

10.20–10.112. This Code requires that 

registered practitioners maintain 


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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. 

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 2010. 

Affected Public: Individuals or 

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

local, or tribal governments. 

Estimated Number of Respondents: 

532. 

Estimated Time per Response: 2 hours 

to 60 hours. 

Estimated Total Annual Burden 

Hours: 10,402 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. 

2(B)(2)(d). The Office of Enrollment and 

Discipline collects this information to 

insure 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 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects 

37 CFR Part 1 

Administrative practice and 

procedure, Patents. 

37 CFR Part 2 

Administrative practice and 

procedure, Trademarks. 

37 CFR Part 7 

Administrative practice and 

procedure, International registration, 

Trademarks. 

37 CFR Part 10 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers, Reporting and recordkeeping 

requirements. 

37 CFR Part 11 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers, Reporting and recordkeeping 

requirements. 

37 CFR Part 41 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

■ For the reasons set forth in the 

preamble, the United States Patent and 

Trademark Office is amending 37 CFR 

parts 1, 2, 7, 10, 11 and 41 as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

■ 1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2)(D). 

■ 2. In § 1.4, revise paragraphs (d)(3) 

and (d)(4)(i), and add paragraph 

(d)(4)(ii)(C) to read as follows: 

§ 1.4 Nature of correspondence and 

signature requirements. 

* * * * * 

(d) * * * 

(3) Forms. The Office provides forms 

to the public to use in certain situations 

to assist in the filing of correspondence 

for a certain purpose and to meet certain 

requirements for patent applications 

and proceedings. Use of the forms for 

purposes for which they were not 

designed is prohibited. No changes to 

certification statements on the Office 

forms (e.g., oath or declaration forms, 

terminal disclaimer forms, petition 

forms, and nonpublication request form) 

may be made. The existing text of a 

form, other than a certification 

statement, may be modified, deleted, or 

added to, if all text identifying the form 

as an Office form is removed. The 

presentation to the Office (whether by 

signing, filing, submitting, or later 

advocating) of any Office form with text 

identifying the form as an Office form 

by a party, whether a practitioner or 

non-practitioner, constitutes a 

certification under § 11.18(b) of this 

chapter that the existing text and any 

certification statements on the form 

have not been altered other than 

permitted by EFS-Web customization. 

(4) Certifications. (i) Section 11.18 

certifications: The presentation to the 

Office (whether by signing, filing, 

submitting, or later advocating) of any 

paper by a party, whether a practitioner 

or non-practitioner, constitutes a 

certification under § 11.18(b) of this 

subchapter. Violations of § 11.18(b)(2) of 

this subchapter by a party, whether a 

practitioner or non-practitioner, may 

result in the imposition of sanctions 

under § 11.18(c) of this subchapter. Any 

practitioner violating § 11.18(b) of this 

subchapter may also be subject to 

disciplinary action. See §§ 11.18(d) and 

11.804(b)(9) of this subchapter. 

(ii) * * * 

(C) Sanctions: Violations of the 

certifications as to the signature of 

another or a person’s own signature, set 

forth in paragraphs (d)(4)(ii)(A) and (B) 

of this section, may result in the 

imposition of sanctions under § 11.18(c) 

and (d) of this chapter. 

* * * * * 

■ 3. Revise § 1.8(a)(2)(iii)(A) to read as 

follows: 

§ 1.8 Certificate of mailing or 

transmission. 

(a) * * * 

(2) * * * 

(iii) * * * 

(A) Correspondence filed in 

connection with a disciplinary 


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proceeding under part 11 of this 

chapter. 

* * * * * 

■ 4. Revise § 1.9(j) to read as follows: 

§ 1.9 Definitions. 

* * * * * 

(j) Director as used in this chapter, 

except for part 11 of this chapter, means 

the Under Secretary of Commerce for 

Intellectual Property and Director of the 

United States Patent and Trademark 

Office. 

* * * * * 

PART 2—RULES OF PRACTICE IN 

TRADEMARK CASES 

■ 5. The authority citation for 37 CFR 

part 2 continues to read as follows: 

Authority: 15 U.S.C. 1123, 35 U.S.C. 2, 

unless otherwise noted. 

■ 6. Revise § 2.2(c) to read as follows: 

§ 2.2 Definitions. 

* * * * * 

(c) Director as used in this chapter, 

except for part 10 and part 11, means 

the Under Secretary of Commerce for 

Intellectual Property and Director of the 

United States Patent and Trademark 

Office. 

* * * * * 

■ 7. Revise § 2.11 to read as follows: 

§ 2.11 Applicants may be represented by 

an attorney. 

Representation before the Office is 

governed by § 11.14 of this chapter. The 

Office cannot aid in the selection of an 

attorney. 

■ 8. Revise § 2.17(a) through (c) to read 

as follows: 

§ 2.17 Recognition for representation. 

(a) When an attorney as defined in 

§ 11.1 of this chapter acting in a 

representative capacity appears in 

person or signs a document in practice 

before the United States Patent and 

Trademark Office in a trademark case, 

his or her personal appearance or 

signature shall constitute a 

representation to the United States 

Patent and Trademark Office that, under 

the provisions of § 11.14 and the law, he 

or she is authorized to represent the 

particular party in whose behalf he or 

she acts. Further proof of authority to 

act in a representative capacity may be 

required. 

(b) Before any non-lawyer, as 

specified in § 11.14(b) of this chapter, 

will be allowed to take action of any 

kind with respect to an application, 

registration or proceeding, a written 

authorization from the applicant, 

registrant, party to the proceeding, or 

other person entitled to prosecute such 

application or proceeding must be filed. 

(c) To be recognized as a 

representative, an attorney as defined in 

§ 11.1 of this chapter may file a power 

of attorney, appear in person, or sign a 

document on behalf of an applicant or 

registrant that is filed with the Office in 

a trademark case. 

* * * * * 

■ 9. Revise § 2.18(a) to read as follows: 

§ 2.18 Correspondence, with whom held. 

(a) If an attorney transmits 

documents, or a written power of 

attorney is filed, the Office will send 

correspondence to the attorney 

transmitting the documents, or to the 

attorney designated in the power of 

attorney, provided that the attorney is 

an attorney as defined in § 11.1 of this 

chapter. 

* * * * * 

■ 10. Revise § 2.19(b) to read as follows: 

§ 2.19 Revocation of power of attorney; 

withdrawal. 

* * * * * 

(b) If the requirements of § 10.40 of 

this chapter are met, an attorney 

authorized under § 11.14 to represent an 

applicant, registrant or party in a 

trademark case may withdraw upon 

application to and approval by the 

Director. 

■ 11. Revise § 2.24 to read as follows: 

§ 2.24 Designation of domestic 

representative by foreign applicant. 

If an applicant is not domiciled in the 

United States, the applicant may 

designate by a document filed in the 

United States Patent and Trademark 

Office the name and address of some 

person resident in the United States on 

whom may be served notices or process 

in proceedings affecting the mark. If the 

applicant does not file a document 

designating the name and address of a 

person resident in the United States on 

whom may be served notices or process 

in proceedings affecting the mark, or if 

the last person designated cannot be 

found at the address given in the 

designation, then notices or process in 

proceedings affecting the mark may be 

served on the Director. The mere 

designation of a domestic representative 

does not authorize the person 

designated to prosecute the application 

unless qualified under paragraph (a), (b) 

or (c) of § 11.14 of this subchapter and 

authorized under § 2.17(b). 

■ 12. Revise § 2.33(a)(3) to read as 

follows: 

§ 2.33 Verified statement. 

(a) * * * 

(3) An attorney as defined in § 11.1 of 

this chapter who has an actual or 

implied written or verbal power of 

attorney from the applicant. 

* * * * * 

■ 13. Revise § 2.101(b) introductory text 

to read as follows: 

§ 2.101 Filing an opposition. 

* * * * * 

(b) Any person who believes that he, 

she or it would be damaged by the 

registration of a mark on the Principal 

Register may file an opposition 

addressed to the Trademark Trial and 

Appeal Board and must serve a copy of 

the opposition, including any exhibits, 

on the attorney of record for the 

applicant or, if there is no attorney, on 

the applicant or on the applicant’s 

domestic representative, if one has been 

appointed, at the correspondence 

address of record in the Office. The 

opposer must include with the 

opposition proof of service pursuant to 

§ 2.119 at the correspondence address of 

record in the Office. If any service copy 

of the opposition is returned to the 

opposer as undeliverable, the opposer 

must notify the Board within ten days 

of receipt of the returned copy. The 

opposition need not be verified, but 

must be signed by the opposer or the 

opposer’s attorney, as specified in § 11.1 

of this chapter, or other authorized 

representative, as specified in § 11.14(b) 

of this chapter. Electronic signatures 

pursuant to § 2.193(c)(1)(iii) are required 

for oppositions filed through ESTTA 

under paragraphs (b)(1) or (2) of this 

section. 

* * * * * 

■ 14. Revise § 2.102(a) introductory text 

to read as follows: 

§ 2.102 Extension of time for filing an 

opposition. 

(a) Any person who believes that he, 

she or it would be damaged by the 

registration of a mark on the Principal 

Register may file in the Office a written 

request, addressed to the Trademark 

Trial and Appeal Board, to extend the 

time for filing an opposition. The 

written request need not be verified, but 

must be signed by the potential opposer 

or by the potential opposer’s attorney, as 

specified in § 11.1 of this chapter, or 

authorized representative, as specified 

in § 11.14(b) of this chapter. Electronic 

signatures pursuant to § 2.193(c)(1)(iii) 

are required for electronically filed 

extension requests. 

* * * * * 

■ 15. Revise § 2.105(b)(1) and (c)(1) to 

read as follows: 


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§ 2.105 Notification to parties of 

opposition proceeding(s). 

* * * * * 

(b) * * * 

(1) If the opposition is transmitted by 

an attorney, or a written power of 

attorney is filed, the Board will send the 

notification to the attorney transmitting 

the opposition or to the attorney 

designated in the power of attorney, 

provided that the person is an 

‘‘attorney’’ as defined in § 11.1 of this 

chapter. 

(c) * * * 

(1) If the opposed application 

contains a clear indication that the 

application is being prosecuted by an 

attorney, as defined in § 11.1 of this 

chapter, the Board shall send the 

documents described in this section to 

applicant’s attorney. 

* * * * * 

■ 16. Revise § 2.111(b) to read as 

follows: 

§ 2.111 Filing petition for cancellation. 

* * * * * 

(b) Any person who believes that he, 

she or it is or will be damaged by a 

registration may file a petition, 

addressed to the Trademark Trial and 

Appeal Board, for cancellation of the 

registration in whole or in part. 

Petitioner must serve a copy of the 

petition, including any exhibits, on the 

owner of record for the registration, or 

on the owner’s domestic representative 

of record, if one has been appointed, at 

the correspondence address of record in 

the Office. The petitioner must include 

with the petition for cancellation proof 

of service, pursuant to § 2.119, on the 

owner of record, or on the owner’s 

domestic representative of record, if one 

has been appointed, at the 

correspondence address of record in the 

Office. If any service copy of the 

petition for cancellation is returned to 

the petitioner as undeliverable, the 

petitioner must notify the Board within 

ten days of receipt of the returned copy. 

The petition for cancellation need not 

be verified, but must be signed by the 

petitioner or the petitioner’s attorney, as 

specified in § 11.1 of this chapter, or 

other authorized representative, as 

specified in § 11.14(b) of this chapter. 

Electronic signatures pursuant to 

§ 2.193(c)(1)(iii) are required for 

petitions submitted electronically via 

ESTTA. The petition for cancellation 

may be filed at any time in the case of 

registrations on the Supplemental 

Register or under the Act of 1920, or 

registrations under the Act of 1881 or 

the Act of 1905 which have not been 

published under section 12(c) of the 

Act, or on any ground specified in 

section 14(3) or (5) of the Act. In all 

other cases, the petition for cancellation 

and the required fee must be filed 

within five years from the date of 

registration of the mark under the Act or 

from the date of publication under 

section 12(c) of the Act. 

* * * * * 

■ 17. Revise § 2.113(b)(1) to read as 

follows: 

§ 2.113 Notification of cancellation 

proceeding. 

* * * * * 

(b) * * * 

(1) If the petition for cancellation is 

transmitted by an attorney, or a written 

power of attorney is filed, the Board will 

send the notification to the attorney 

transmitting the petition for cancellation 

or to the attorney designated in the 

power of attorney, provided that person 

is an ‘‘attorney’’ as defined in § 11.1 of 

this chapter. 

* * * * * 

■ 18. Revise § 2.119(d) to read as 

follows: 

§ 2.119 Service and signing of papers. 

* * * * * 

(d) If a party to an inter partes 

proceeding is not domiciled in the 

United States and is not represented by 

an attorney or other authorized 

representative located in the United 

States, the party may designate by 

document filed in the United States 

Patent and Trademark Office the name 

and address of a person resident in the 

United States on whom may be served 

notices or process in the proceeding. If 

the party has appointed a domestic 

representative, official communications 

of the United States Patent and 

Trademark Office will be addressed to 

the domestic representative unless the 

proceeding is being prosecuted by an 

attorney at law or other qualified person 

duly authorized under § 11.14(c) of this 

subchapter. If the party has not 

appointed a domestic representative and 

the proceeding is not being prosecuted 

by an attorney at law or other qualified 

person, the Office will send 

correspondence directly to the party, 

unless the party designates in writing 

another address to which 

correspondence is to be sent. The mere 

designation of a domestic representative 

does not authorize the person 

designated to prosecute the proceeding 

unless qualified under § 11.14(a), or 

qualified under § 11.14(b) and 

authorized under § 2.17(b). 

* * * * * 

■ 19. Revise § 2.161(b)(3) to read as 

follows: 

§ 2.161 Requirements for a complete 

affidavit or declaration of continued use or 

excusable nonuse. 

* * * * * 

(b) * * * 

(3) An attorney as defined in § 11.1 of 

this chapter who has an actual or 

implied written or verbal power of 

attorney from the owner. 

* * * * * 

■ 20. Revise § 2.193(c)(2) to read as 

follows: 

§ 2.193 Trademark correspondence and 

signature requirements. 

* * * * * 

(c) * * * 

(2) The presentation to the Office 

(whether by signing, filing, submitting, 

or later advocating) of any document by 

a party, whether a practitioner or nonpractitioner, constitutes a certification 

under § 11.18(b) of this chapter. 

Violations of § 11.18(b)(2) of this 

chapter by a party, whether a 

practitioner or non-practitioner, may 

result in the imposition of sanctions 

under § 11.18(c) of this chapter. Any 

practitioner violating § 11.18(b) may 

also be subject to disciplinary action. 

See §§ 11.18(d) and 11.23(c)(15). 

* * * * * 

PART 7—RULES OF PRACTICE IN 

FILINGS PURSUANT TO THE 

PROTOCOL RELATING TO THE 

MADRID AGREEMENT CONCERNING 

THE INTERNATIONAL REGISTRATION 

OF MARKS 

■ 21. The authority citation for 37 CFR 

part 7 continues to read as follows: 

Authority: 15 U.S.C. 1123, 35 U.S.C. 2, 

unless otherwise noted. 

■ 22. Revise § 7.25(a) to read as follows: 

§ 7.25 Sections of part 2 applicable to 

extension of protection. 

(a) Except for §§ 2.22, 2.23, 2.130, 

2.131, 2.160 through 2.166, 2.168, 2.173, 

2.175, 2.181 through 2.186 and 2.197, 

all sections in part 2 and all sections in 

parts 10 and all sections in part 11 of 

this chapter shall apply to an extension 

of protection of an international 

registration to the United States, 

including sections related to 

proceedings before the Trademark Trial 

and Appeal Board, unless otherwise 

stated. 

* * * * * 

■ 23. Revise § 7.37(b)(3) to read as 

follows: 

§ 7.37 Requirements for a complete 

affidavit or declaration of use in commerce 

or excusable nonuse. 

* * * * * 

(b) * * * 


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(3) An attorney as defined in § 11.1 of 

this chapter who has an actual written 

or verbal power of attorney or an 

implied power of attorney from the 

holder. 

* * * * * 

PART 10—REPRESENTATION OF 

OTHERS BEFORE THE PATENT AND 

TRADEMARK OFFICE 

■ 24. The authority citation for 37 CFR 

part 10 continues to read as follows: 

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

U.S.C. 2, 6, 32, 41. 

■ 25. The undesignated center heading, 

‘‘Individuals Entitled to Practice Before 

the Patent and Trademark Office,’’ is 

removed. 

§ 10.14 [Removed and reserved] 

■ 26. Section 10.14 is removed and 

reserved. 

§ 10.15 [Removed and reserved] 

■ 27. Section 10.15 is removed and 

reserved. 

§ 10.18 [Removed and reserved] 

■ 28. Section 10.18 is removed and 

reserved. 

■ 29. The undesignated center heading 

‘‘Investigations and Disciplinary 

Proceedings’’ is removed. 

§ 10.130–10.145 [Removed and reserved] 

■ 30. Sections 10.130 through 10.145 

are removed and reserved. 

§ 10.149–10.161 [Removed and reserved] 

■ 31. Sections 10.149 through 10.161 

are removed and reserved. 

§ 10.170 [Removed and reserved] 

■ 32. Section 10.170 is removed and 

reserved. 

PART 11—REPRESENTATION OF 

OTHERS BEFORE THE UNITED 

STATES PATENT AND TRADEMARK 

OFFICE 

■ 33. The authority citation for 37 CFR 

part 11 continues to read as follows: 

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

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

■ 34. Amend § 11.1 to add the 

definitions of ‘‘Disqualified,’’ ‘‘Federal 

program,’’ ‘‘Federal agency,’’

‘‘Mandatory Disciplinary Rule,’’ and 

‘‘Serious crime,’’ and revise the 

definitions of ‘‘Attorney or lawyer’’ and 

‘‘State’’ as follows: 

§ 11.1 Definitions. 

* * * * * 

Attorney or lawyer means an 

individual who is a member in good 

standing of the highest court of any 

State, including an individual who is in 

good standing of the highest court of 

one State and not under an order of any 

court or Federal agency suspending, 

enjoining, restraining, disbarring or 

otherwise restricting the attorney from 

practice before the bar of another State 

or Federal agency. A non-lawyer means 

a person who is not an attorney or 

lawyer. 

* * * * * 

Disqualified means 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. 

Federal agency means any authority 

of the executive branch of the 

Government of the United States. 

Federal program means any program 

established by an Act of Congress or 

administered by a Federal agency. 

* * * * * 

Mandatory Disciplinary Rule is a rule 

identified in § 10.20(b) of this chapter as 

a Disciplinary Rule. 

* * * * * 

Serious crime means: 

(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.’’

* * * * * 

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. 

* * * * * 

■ 35. Revise §§ 11.2(a), (b)(4), (c) and (d) 

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

to read as follows: 

§ 11.2 Director of the Office of Enrollment 

and Discipline. 

(a) Appointment. The USPTO Director 

shall appoint a Director of the Office of 

Enrollment and Discipline (OED 

Director). In the event of a vacancy in 

the office of the OED Director, the 

USPTO Director may designate an 

employee of the Office to serve as acting 

OED Director. The OED Director shall be 

an active member in good standing of 

the bar of the highest court 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 under § 11.22(h) shall be 

recommended or undertaken by the 

OED Director until the accused 

practitioner shall have been afforded an 

opportunity to respond to a reasonable 

inquiry by the OED Director. 

(5) With the consent of a panel of 

three members of the Committee on 

Discipline, initiate disciplinary 

proceedings under § 11.32 and perform 

such other duties in connection with 

investigations and disciplinary 

proceedings as may be necessary. 

(6) Oversee the preliminary screening 

of information and close investigations 

as provided for in § 11.22. 

(c) Petition to OED Director regarding 

enrollment or recognition. Any petition 

from any action or requirement of the 

staff of OED reporting to the OED 

Director shall be taken to the OED 

Director accompanied by payment of the 

fee set forth in § 1.21(a)(5)(i) of this 

chapter. 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. The petitioner may 

file a single request for reconsideration 

of a decision within thirty days of the 

date of the decision. Filing a request for 

reconsideration stays the period for 

seeking review of the OED Director’s 

decision until a final decision on the 

request for reconsideration is issued. A 

final decision by the OED Director may 

be reviewed in accordance with the 

provisions of paragraph (d) of this 

section. 

(d) Review of OED Director’s decision 

regarding enrollment or recognition. A 

party dissatisfied with a final decision 

of the OED Director regarding 

enrollment or recognition may seek 

review of the decision upon petition to 

the USPTO Director accompanied by 

payment of the fee set forth in 

§ 1.21(a)(5)(ii) of this chapter. 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 


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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. 

■ 36. Revise § 11.3 to read as follows: 

§ 11.3 Suspension of rules. 

(a) 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 

■ 37. Revise § 11.5 to read as follows: 

§ 11.5 Register of attorneys and agents in 

patent matters; practice before the Office. 

(a) A register of attorneys and agents 

is kept in the Office on which are 

entered the names of all individuals 

recognized as entitled to represent 

applicants having prospective or 

immediate business before the Office in 

the preparation and prosecution of 

patent applications. Registration in the 

Office under the provisions of this part 

shall entitle the individuals so 

registered to practice before the Office 

only in patent matters. 

(b) Practice before the Office. Practice 

before the Office includes, but is not 

limited to, law-related service that 

comprehends any matter connected 

with the presentation to the Office or 

any of its officers or employees relating 

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

responsibilities under the laws or 

regulations administered by the Office 

for the grant of a patent or registration 

of a trademark, or for enrollment or 

disciplinary matters. Such presentations 

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 or retaining non-practitioner 

assistants under the supervision of the 

practitioner to assist the practitioner in 

matters pending or contemplated to be 

presented before the Office. 

(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, 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 or any 

other proceeding before the Board of 

Patent Appeals and Interferences, or 

other proceeding. Registration to 

practice before the Office in patent cases 

sanctions the performance of those 

services which are reasonably necessary 

and incident to the preparation and 

prosecution of patent applications or 

other proceeding before the Office 

involving a patent application or patent 

in which the practitioner is authorized 

to participate. The services include: 

(i) Considering the advisability of 

relying upon alternative forms of 

protection which may be available 

under state law, and 

(ii) Drafting an assignment or causing 

an assignment to be executed for the 

patent owner in contemplation of filing 

or prosecution of a patent application 

for the patent owner, where the 

practitioner represents the patent owner 

after a patent issues in a proceeding 

before the Office, and when drafting the 

assignment the practitioner does no 

more than replicate the terms of a 

previously existing oral or written 

obligation of assignment from one 

person or party to another person or 

party. 

(2) Practice before the Office in 

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 

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. 

§ 11.12–11.13 [Added and Reserved] 

■ 38. Add and reserve §§ 11.12 and 

11.13. 

■ 39. Add §§ 11.14 and 11.15 to read as 

follows: 

§ 11.14 Individuals who may practice 

before the Office in trademark and other 

non-patent matters. 

(a) Attorneys. Any individual who is 

an attorney as defined in § 11.1 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 practitioner 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 


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recognized as agents to continue 

practice before the Office in trademark 

matters. Except as provided in the 

preceding sentence, registration as a 

patent agent does not itself entitle an 

individual to practice before the Office 

in trademark matters. 

(c) Foreigners. Any foreign attorney or 

agent not a resident of the United States 

who shall file a written application for 

reciprocal recognition under paragraph 

(f) of this section and prove to the 

satisfaction of the OED Director that he 

or she is registered or in good standing 

before the patent or trademark office of 

the country in which he or she resides 

and practices and is possessed of good 

moral character and reputation, may be 

recognized for the limited purpose of 

representing parties located in such 

country before the Office in the 

presentation and prosecution of 

trademark matters, provided: the patent 

or trademark office of such country 

allows substantially reciprocal 

privileges to those permitted to practice 

in trademark matters before the Office. 

Recognition under this paragraph shall 

continue only during the period that the 

conditions specified in this paragraph 

obtain. 

(d) Recognition of any individual 

under this section shall not be 

construed as sanctioning or authorizing 

the performance of any act regarded in 

the jurisdiction where performed as the 

unauthorized practice of law. 

(e) No individual other than those 

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

of this section will be permitted to 

practice before the Office in trademark 

matters on behalf of a client. Any 

individual may appear in a trademark or 

other non-patent matter in his or her 

own behalf. Any individual may appear 

in a trademark matter for: 

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

member, 

(2) A partnership of which he or she 

is a partner, or 

(3) A corporation or association of 

which he or she is an officer and which 

he or she is authorized to represent, if 

such firm, partnership, corporation, or 

association is a party to a trademark 

proceeding pending before the Office. 

(f) Application for reciprocal 

recognition. An individual seeking 

reciprocal recognition under paragraph 

(c) of this section, in addition to 

providing evidence satisfying the 

provisions of paragraph (c) of this 

section, shall apply in writing to the 

OED Director for reciprocal recognition, 

and shall pay the application fee 

required by § 1.21(a)(1)(i) of this 

subchapter. 

§ 11.15 Refusal to recognize a practitioner. 

Any practitioner authorized to appear 

before the Office may be suspended, 

excluded, or reprimanded in accordance 

with the provisions of this Part. Any 

practitioner who is suspended or 

excluded under this Part shall not be 

entitled to practice before the Office in 

patent, trademark, or other non-patent 

matters while suspended or excluded. 

§ 11.16–11.17 [Added and Reserved] 

■ 40. Add and reserve §§ 11.16 and 

11.17. 

■ 41. Add § 11.18 to read as follows: 

§ 11.18 Signature and certificate for 

correspondence filed in the Office. 

(a) For all documents filed in the 

Office in patent, trademark, and other 

non-patent matters, and all documents 

filed with a hearing officer in a 

disciplinary proceeding, except for 

correspondence that is required to be 

signed by the applicant or party, each 

piece of correspondence filed by a 

practitioner in the Office must bear a 

signature, personally signed by such 

practitioner, in compliance with 

§ 1.4(d)(1) of this subchapter. 

(b) By presenting to the Office or 

hearing officer in a disciplinary 

proceeding (whether by signing, filing, 

submitting, or later advocating) any 

paper, the party presenting such paper, 

whether a practitioner or nonpractitioner, is certifying that—

(1) All statements made therein of the 

party’s own knowledge are true, all 

statements made therein on information 

and belief are believed to be true, and 

all statements made therein are made 

with the knowledge that whoever, in 

any matter within the jurisdiction of the 

Office, knowingly and willfully falsifies, 

conceals, or covers up by any trick, 

scheme, or device a material fact, or 

knowingly and willfully makes any 

false, fictitious, or fraudulent statements 

or representations, or knowingly and 

willfully makes or uses any false writing 

or document knowing the same to 

contain any false, fictitious, or 

fraudulent statement or entry, shall be 

subject to the penalties set forth under 

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

criminal statute, and violations of the 

provisions of this section may 

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; or 

(5) Terminating the proceedings in the 

Office. 

(d) Any practitioner violating the 

provisions of this section may also be 

subject to disciplinary action. 

■ 42. 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; Jurisdiction 

to transfer to disability inactive status. 

11.20 Disciplinary sanctions; Transfer to 

disability inactive status. 

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 Reciprocal transfer or initial transfer 

to disability inactive status. 

11.30–11.31 [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. 


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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] 

Subpart C—Investigations and 

Disciplinary Proceedings; Jurisdiction, 

Sanctions, Investigations, and 

Proceedings 

§ 11.19 Disciplinary jurisdiction; 

Jurisdiction to transfer to disability inactive 

status. 

(a) All practitioners engaged in 

practice before the Office; all 

practitioners administratively 

suspended; all practitioners registered 

to practice before the Office in patent 

cases; all practitioners inactivated; all 

practitioners authorized under § 11.6(d) 

to take testimony; and all practitioners 

transferred to disability inactive status, 

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 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; Grounds 

for transfer to disability inactive status. 

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 

or grounds for transfer to disability 

inactive status. 

(1) Grounds for discipline include: 

(i) Conviction of a serious crime; 

(ii) Discipline on ethical grounds 

imposed in another jurisdiction or 

disciplinary disqualification from 

participating in or appearing before any 

Federal program or agency; 

(iii) Failure to comply with any order 

of a Court disciplining a practitioner, or 

any final decision of the USPTO 

Director in a disciplinary matter; 

(iv) Violation of a Mandatory 

Disciplinary Rule identified in 

§ 10.20(b) of Part 10 of this Subchapter; 

or 

(v) Violation of the oath or declaration 

taken by the practitioner. See § 11.8. 

(2) Grounds for transfer to disability 

inactive status include: 

(i) Being transferred to disability 

inactive status in another jurisdiction; 

(ii) Being judicially declared 

incompetent, being judicially ordered to 

be involuntarily committed after a 

hearing on the grounds of insanity, 

incompetency or disability, or being 

placed by court order under 

guardianship or conservatorship; or 

(iii) Filing a motion requesting a 

disciplinary proceeding be held in 

abeyance because 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. 

(c) Petitions to disqualify a 

practitioner in ex parte or inter partes 

matters in the Office are not governed 

by §§ 11.19 through 11.60 and will be 

handled on a case-by-case basis under 

such conditions as the USPTO Director 

deems appropriate. 

(d) The OED Director may refer the 

existence of circumstances suggesting 

unauthorized practice of law to the 

authorities in the appropriate 

jurisdiction(s). 

§ 11.20 Disciplinary sanctions; Transfer to 

disability inactive status. 

(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 censure; 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 

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. 

(c) Transfer to disability inactive 

status. The USPTO Director, after notice 

and opportunity for a hearing may, and 

where grounds exist to believe a 

practitioner has been transferred to 

disability inactive status in another 

jurisdiction, or has been judicially 

declared incompetent; judicially 

ordered to be involuntarily committed 

after a hearing on the grounds of 

incompetency or disability, or placed by 

court order under guardianship or 

conservatorship, transfer the 

practitioner to disability inactive status. 

§ 11.21 Warnings. 

A warning is neither public nor 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 Mandatory Disciplinary Rules 

identified in § 10.20(b) of Part 10 of this 

Subchapter relevant to the facts. 

§ 11.22 Investigations. 

(a) The OED Director is authorized to 

investigate possible grounds for 

discipline. An investigation may be 

initiated when the OED Director 

receives a grievance, information or 

evidence from any source suggesting 

possible grounds for discipline. Neither 

unwillingness nor neglect by a grievant 

to prosecute a charge, nor settlement, 

compromise, or restitution with the 

grievant, shall in itself justify abatement 

of an investigation. 

(b) Any person possessing 

information or evidence concerning 

possible grounds for discipline of a 

practitioner may report the information 

or evidence to the OED Director. The 

OED Director may request that the 

report be presented in the form of an 

affidavit or declaration. 


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(c) Information or evidence coming 

from any source which presents or 

alleges facts suggesting possible grounds 

for discipline of a practitioner will be 

deemed a grievance. 

(d) Preliminary screening of 

information or evidence. The OED 

Director shall examine all information 

or evidence concerning possible 

grounds for discipline of a practitioner. 

(e) Notification of investigation. The 

OED Director shall notify the 

practitioner in writing of the initiation 

of an investigation into whether a 

practitioner has engaged in conduct 

constituting possible grounds for 

discipline. 

(f) Request for information and 

evidence by OED Director. 

(1) In the course of the investigation, 

the OED Director may request 

information and evidence regarding 

possible grounds for discipline of a 

practitioner from: 

(i) The grievant, 

(ii) The practitioner, or 

(iii) Any person who may reasonably 

be expected to provide information and 

evidence needed in connection with the 

grievance or investigation. 

(2) The OED Director may request 

information and evidence regarding 

possible grounds for discipline of a 

practitioner from a non-grieving client 

either after obtaining the consent of the 

practitioner or upon a finding by a 

Contact Member of the Committee on 

Discipline, appointed in accordance 

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

believe that the possible ground for 

discipline alleged has occurred with 

respect to non-grieving clients. Neither 

a request for, nor disclosure of, such 

information shall constitute a violation 

of any of the Mandatory Disciplinary 

Rules identified in § 10.20(b) of this 

subchapter. 

(g) Where the OED Director makes a 

request under paragraph (f)(2) of this 

section to a Contact Member of the 

Committee on Discipline, such Contact 

Member shall not, with respect to the 

practitioner connected to the OED 

Director’s request, participate in the 

Committee on Discipline panel that 

renders a probable cause determination 

under paragraph (b)(1) of this section 

concerning such practitioner, and that 

forwards the probable cause finding and 

recommendation to the OED Director 

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

(h) 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. 

(i) Closing investigation without 

issuing a warning or taking disciplinary 

action. The OED Director shall 

terminate an investigation and decline 

to refer a matter to the Committee on 

Discipline if the OED Director 

determines that: 

(1) The information or evidence is 

unfounded; 

(2) The information or evidence 

relates to matters not within the 

jurisdiction of the Office; 

(3) As a matter of law, the conduct 

about which information or evidence 

has been obtained does not constitute 

grounds for discipline, even if the 

conduct may involve a legal dispute; or 

(4) The available evidence is 

insufficient to conclude that there is 

probable cause to believe that grounds 

exist for discipline. 

§ 11.23 Committee on Discipline. 

(a) The USPTO Director shall appoint 

a Committee on Discipline. The 

Committee on Discipline shall consist of 

at least three employees of the Office. 

None of the Committee members shall 

report directly or indirectly to the OED 

Director or any employee designated by 

the USPTO Director to decide 

disciplinary matters. Each Committee 

member shall be a member in good 

standing of the bar of the highest court 

of a State. The Committee members 

shall select a Chairperson from among 

themselves. Three Committee members 

will constitute a panel of the 

Committee. 

(b) Powers and duties of the 

Committee on Discipline. The 

Committee shall have the power and 

duty to: 

(1) Meet in panels at the request of the 

OED Director and, after reviewing 

evidence presented by the OED Director, 

by majority vote of the panel, determine 

whether there is probable cause to bring 

charges under § 11.32 against a 

practitioner; and 

(2) Prepare and forward its own 

probable cause findings and 

recommendations to the OED Director. 

(c) No discovery shall be authorized 

of, and no member of the Committee on 

Discipline shall be required to testify 

about deliberations of, the Committee 

on Discipline or of any panel. 

(d) The Chairperson shall appoint the 

members of the panels and a Contact 

Member of the Committee on Discipline. 

§ 11.24 Reciprocal discipline. 

(a) Notification of OED Director. 

Within thirty days of being publicly 

censured, publicly reprimanded, 

subjected to probation, 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 publicly 

censured, publicly reprimanded, 

subjected to probation, disbarred, 

suspended or disciplinarily 

disqualified, the OED Director shall 

obtain a certified copy of the record or 

order regarding the public censure, 

public reprimand, probation, 

disbarment, suspension or disciplinary 

disqualification and file the same with 

the USPTO Director. The OED Director 

shall, in addition, without Committee 

on Discipline authorization, file with 

the USPTO Director a complaint 

complying with § 11.34 against the 

practitioner predicated upon the public 

censure, public reprimand, probation, 

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 publicly censured, 

publicly reprimanded, subjected to 

probation, disbarred, suspended or 

disciplinarily disqualified together with 

the complaint, the USPTO Director shall 

issue a notice directed to the 

practitioner in accordance with § 11.35 

and to the OED Director containing: 

(1) A copy of the record or order 

regarding the public censure, public 

reprimand, probation, disbarment, 

suspension or disciplinary 

disqualification; 

(2) A copy of the complaint; and 

(3) An order directing the practitioner 

to file a response with the USPTO 

Director and the OED Director, within 

forty days of the date of the notice 

establishing a genuine issue of material 

fact predicated upon the grounds set 

forth in paragraphs (d)(1)(i) through 

(d)(1)(iv) of this section that the 

imposition of the identical public 

censure, public reprimand, probation, 

disbarment, suspension or disciplinary 


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disqualification would be unwarranted 

and the reasons for that claim. 

(c) Effect of stay in another 

jurisdiction. In the event the public 

censure, public reprimand, probation, 

disbarment, suspension 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 

shall impose the identical public 

censure, public reprimand, probation, 

disbarment, suspension or disciplinary 

disqualification unless the practitioner 

clearly and convincingly demonstrates, 

and the USPTO Director finds there is 

a genuine issue of material fact 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; 

(iii) The imposition of the same 

public censure, public reprimand, 

probation, disbarment, suspension or 

disciplinary disqualification by the 

Office would result in grave injustice; or 

(iv) Any argument that the 

practitioner was not publicly censured, 

publicly reprimanded, placed on 

probation, disbarred, suspended or 

disciplinarily disqualified. 

(2) If the USPTO Director determines 

that there is no genuine issue of material 

fact, the USPTO Director shall enter an 

appropriate final order. If the USPTO 

Director is unable to make such 

determination because there is a 

genuine issue of material fact, the 

USPTO Director shall enter an 

appropriate order: 

(i) Referring the complaint to a 

hearing officer for a formal hearing and 

entry of an initial decision in 

accordance with the other rules in this 

part, and 

(ii) Directing the practitioner to file an 

answer to the complaint in accordance 

with § 11.36. 

(e) 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 a prima facie 

case by clear and convincing evidence 

that the practitioner violated 37 CFR 

10.23, as further identified under 37 

CFR 10.23(c)(5), (or any successor 

regulation identifying such public 

censure, public reprimand, probation, 

disbarment, suspension or disciplinary 

disqualification as a basis for 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 

censure, public reprimand, probation, 

disbarment, suspension or disciplinary 

disqualification in another jurisdiction, 

and establishes by clear and convincing 

evidence that the practitioner 

voluntarily ceased all activities related 

to practice before the Office and 

complied with all provisions of § 11.58. 

The effective date of any public censure, 

public reprimand, probation, 

suspension, disbarment or disciplinary 

disqualification imposed nunc pro tunc 

shall be the date the practitioner 

voluntarily ceased all activities related 

to practice before the Office and 

complied with all provisions of § 11.58. 

(g) Reinstatement following reciprocal 

discipline proceeding. A practitioner 

may petition for reinstatement under 

conditions set forth in § 11.60 no sooner 

than completion of the period of 

reciprocal discipline imposed, and 

compliance with all provisions of 

§ 11.58. 

§ 11.25 Interim suspension and discipline 

based upon conviction of committing a 

serious crime. 

(a) Notification of OED Director. Upon 

being convicted of a crime in a court of 

the United States or any State, or 

violating a criminal law of 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 interim suspension. If the 

crime is a serious crime, the OED 

Director shall file with the USPTO 

Director proof of the conviction and 

request the USPTO Director to issue a 

notice and order set forth in paragraph 

(b)(2) of this section. The OED Director 

shall in addition, without Committee on 

Discipline authorization, file with the 

USPTO Director a complaint against the 

practitioner complying with § 11.34 

predicated upon the conviction of a 

serious crime. If the crime is not a 

serious crime, the OED Director shall 

process the matter in the same manner 

as any other information or evidence of 

a possible violation of a Mandatory 

Disciplinary Rule identified in 

§ 10.20(b) of this subchapter coming to 

the attention of the OED Director. 

(b) Interim suspension and referral for 

disciplinary proceeding. All 

proceedings under this section shall be 

handled as expeditiously as possible. 

(1) The USPTO Director has authority 

to place a practitioner on interim 

suspension after hearing the request for 

interim suspension on the documentary 

record. 

(2) Notification served on practitioner. 

Upon receipt of a certified copy of the 

court record, docket entry or judgment 

demonstrating that the practitioner has 

been so convicted together with the 

complaint, the USPTO Director shall 

forthwith issue a notice directed to the 

practitioner in accordance with 

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

Director, containing: 

(i) A copy of the court record, docket 

entry, or judgment of conviction; 

(ii) A copy of the complaint; and 

(iii) An order directing the 

practitioner to file a response with the 

USPTO Director and the OED Director, 

within forty days of the date of the 

notice, establishing that there is a 

genuine issue of material fact that the 

crime did not constitute a serious crime, 

the practitioner is not the individual 

found guilty of the crime, or that the 

conviction was so lacking in notice or 

opportunity to be heard as to constitute 

a deprivation of due process. 

(3) Hearing and final order on request 

for interim suspension. The request for 

interim suspension shall be heard by the 

USPTO Director on the documentary 

record unless the USPTO Director 

determines that the practitioner’s 

response establishes a genuine issue of 

material fact that: The crime did not 

constitute a serious crime, the 

practitioner is not the person who 

committed the crime, or that the 

conviction was so lacking in notice or 

opportunity to be heard as to constitute 

a deprivation of due process. If the 

USPTO Director determines that there is 

no genuine issue of material fact 

regarding the defenses set forth in the 

preceding sentence, the USPTO Director 

shall enter an appropriate final order 

regarding the OED Director’s request for 

interim suspension regardless of the 


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pendency of any criminal appeal. If the 

USPTO Director is unable to make such 

determination because there is a 

genuine issue of material fact, the 

USPTO Director shall enter a final order 

dismissing the request and enter a 

further order referring the complaint to 

a hearing officer for a hearing and entry 

of an initial decision in accordance with 

the other rules in this part and directing 

the practitioner to file an answer to the 

complaint in accordance with § 11.36. 

(4) 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. 

(5) Referral for disciplinary 

proceeding. Upon entering a final order 

imposing interim suspension, the 

USPTO Director shall refer the 

complaint to a hearing officer to 

conduct a formal disciplinary 

proceeding. The formal disciplinary 

proceeding, however, shall be stayed by 

the hearing officer until all direct 

appeals from the conviction are 

concluded. Review of the initial 

decision of the hearing officer shall be 

pursuant to § 11.55. 

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

Conviction in the United States. For 

purposes of a hearing for interim 

suspension and a hearing on the formal 

charges in a complaint filed as a 

consequence of the conviction, a 

certified copy of the court record, 

docket entry, or judgment of conviction 

in a court of the United States or any 

State shall establish a prima facie case 

by clear and convincing evidence that 

the practitioner was convicted of a 

serious crime and that the conviction 

was not lacking in notice or opportunity 

to be heard as to constitute a 

deprivation of due process. 

(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 

establish a prima facie case by clear and 

convincing evidence that the 

practitioner was convicted of a serious 

crime and that the conviction was not 

lacking in notice or opportunity to be 

heard as to constitute a deprivation of 

due process. However, nothing in this 

paragraph shall preclude the 

practitioner from demonstrating by clear 

and convincing evidence in any hearing 

on a request for interim suspension 

there is a genuine issue of material fact 

to be considered when determining if 

the elements of a serious crime were 

committed in violating the criminal law 

of the foreign country 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 

complaint shall be referred to the OED 

Director for investigation under § 11.22 

and processing as is appropriate. 

(e) Reinstatement—(1) Upon reversal 

or setting aside a finding of guilt or a 

conviction. If a practitioner suspended 

solely under the provisions of paragraph 

(b) of this section demonstrates that the 

underlying finding of guilt or conviction 

of serious crimes has been reversed or 

vacated, the order for interim 

suspension shall be vacated and the 

practitioner shall be placed on active 

status unless the finding of guilt was 

reversed or the conviction was set aside 

with respect to less than all serious 

crimes for which the practitioner was 

found guilty or convicted. The vacating 

of the interim suspension will not 

terminate any other disciplinary 

proceeding then pending against the 

practitioner, the disposition of which 

shall be determined by the hearing 

officer before whom the matter is 

pending, on the basis of all available 

evidence other than the finding of guilt 

or conviction. 

(2) Following conviction of a serious 

crime. Any practitioner convicted of a 

serious crime and disciplined in whole 

or in part in regard to that conviction, 

may petition for reinstatement under 

conditions set forth in § 11.60 no sooner 

than five years after being discharged 

following completion of service of his or 

her sentence, or after completion of 

service under probation or parole, 

whichever is later. 

(f) Notice to clients and others of 

interim suspension. An interim 

suspension under this section shall 

constitute a suspension of the 

practitioner for the purpose of § 11.58. 

§ 11.26 Settlement. 

Before or after a complaint under 

§ 11.34 is filed, a settlement conference 

may occur between the OED Director 

and the practitioner. Any offers of 

compromise and any statements made 

during the course of settlement 

discussions shall not be admissible in 

subsequent proceedings. The OED 

Director may recommend to the USPTO 

Director any settlement terms deemed 

appropriate, including steps taken to 

correct or mitigate the matter forming 

the basis of the action, or to prevent 

recurrence of the same or similar 

conduct. A settlement agreement shall 

be effective only upon entry of a final 

decision by the USPTO Director. 

§ 11.27 Exclusion on consent. 

(a) Required affidavit. The OED 

Director may confer with a practitioner 

concerning possible violations by the 

practitioner of the Rules of Professional 

Conduct whether or not a disciplinary 

proceeding has been instituted. A 

practitioner who is the subject of an 

investigation or a pending disciplinary 

proceeding based on allegations of 

grounds for discipline, and who desires 

to resign, may only do so by consenting 

to exclusion and delivering to the OED 

Director an affidavit declaring the 

consent of the practitioner to exclusion 

and stating: 

(1) That the practitioner’s consent is 

freely and voluntarily rendered, that the 

practitioner is not being subjected to 

coercion or duress, and that the 

practitioner is fully aware of the 

implications of consenting to exclusion; 

(2) That the practitioner is aware that 

there is currently pending an 

investigation into, or a proceeding 

involving allegations of misconduct, the 

nature of which shall be specifically set 

forth in the affidavit to the satisfaction 

of the OED Director; 

(3) That the practitioner 

acknowledges that, if and when he or 

she applies for reinstatement under 

§ 11.60, the OED Director will 

conclusively presume, for the limited 

purpose of determining the application 

for reinstatement, that: 

(i) The facts upon which the 

investigation or complaint is based are 

true, and 

(ii) The practitioner could not have 

successfully defended himself or herself 

against the allegations in the 

investigation or charges in the 

complaint. 

(b) Action by the USPTO Director. 

Upon receipt of the required affidavit, 

the OED Director shall file the affidavit 

and any related papers with the USPTO 

Director for review and approval. Upon 

such approval, the USPTO Director will 

enter an order excluding the practitioner 

on consent and providing other 

appropriate actions. Upon entry of the 

order, the excluded practitioner shall 

comply with the requirements set forth 

in § 11.58. 

(c) When an affidavit under paragraph 

(a) of this section is received after a 

complaint under § 11.34 has been filed, 

the OED Director shall notify the 

hearing officer. The hearing officer shall 

enter an order transferring the 

disciplinary proceeding to the USPTO 

Director, who may enter an order 

excluding the practitioner on consent. 


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(d) Reinstatement. Any practitioner 

excluded on consent under this section 

may not petition for reinstatement for 

five years. A practitioner excluded on 

consent who intends to reapply for 

admission to practice before the Office 

must comply with the provisions of 

§ 11.58, and apply for reinstatement in 

accordance with § 11.60. Failure to 

comply with the provisions of § 11.58 

constitutes grounds for denying an 

application for reinstatement. 

§ 11.28 Incapacitated practitioners in a 

disciplinary proceeding. 

(a) Holding in abeyance a disciplinary 

proceeding because of incapacitation 

due to a current disability or 

addiction—(1) Practitioner’s motion. In 

the course of a disciplinary proceeding 

under § 11.32, but before the date set by 

the hearing officer for a hearing, the 

practitioner may file a motion 

requesting the hearing officer to enter an 

order holding such proceeding in 

abeyance based on the contention that 

the practitioner is suffering from a 

disability or addiction that makes it 

impossible for the practitioner to 

adequately defend the charges in the 

disciplinary proceeding. 

(i) Content of practitioner’s motion. 

The practitioner’s motion shall, in 

addition to any other requirement of 

§ 11.43, include or have attached 

thereto: 

(A) A brief statement of all material 

facts; 

(B) Affidavits, medical reports, official 

records, or other documents and the 

opinion of at least one medical expert 

setting forth and 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; 

(D) Written consent that the 

practitioner be transferred to disability 

inactive status if the motion is granted; 

and 

(E) A written agreement by the 

practitioner to not practice before the 

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

status. 

(ii) Response. The OED Director’s 

response to any motion hereunder shall 

be served and filed within thirty 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 transfer the practitioner to 

disability inactive status, give notice to 

the practitioner, cause notice to be 

published, and give notice to 

appropriate authorities in the Office that 

the practitioner has been placed on 

disability inactive status. The 

practitioner shall comply with the 

provisions of § 11.58, and shall not 

engage in practice before the Office in 

patent, trademark and other non-patent 

law until a determination is made of the 

practitioner’s capability to resume 

practice before the Office in a 

proceeding under paragraph (c) or 

paragraph (d) of this section. A 

practitioner on disability inactive status 

must seek permission from the OED 

Director to engage in an activity 

authorized under § 11.58(e). Permission 

will be granted only if the practitioner 

has complied with all the conditions of 

§§ 11.58(a) through 11.58(d) applicable 

to disability inactive status. In the event 

that permission is granted, the 

practitioner shall fully comply with the 

provisions of § 11.58(e). 

(b) Motion for reactivation. Any 

practitioner transferred to disability 

inactive status in a disciplinary 

proceeding may file with the hearing 

officer a motion for reactivation once a 

year beginning at any time not less than 

one year after the initial effective date 

of inactivation, or once during any 

shorter interval provided by the order 

issued pursuant to paragraph (a)(2) of 

this section or any modification thereof. 

If the motion is granted, the disciplinary 

proceeding shall resume under such 

schedule as may be established by the 

hearing officer. 

(c) Contents of motion for 

reactivation. A motion by the 

practitioner for reactivation alleging that 

a practitioner has recovered from a prior 

disability or addiction shall be 

accompanied by all available medical 

reports or similar documents relating 

thereto. The hearing officer may require 

the practitioner to present such other 

information as is necessary. 

(d) OED Director’s motion to resume 

disciplinary proceeding held in 

abeyance. (1) The OED Director, having 

good cause to believe a practitioner is 

no longer incapacitated, may file a 

motion requesting the hearing officer to 

terminate a prior order holding in 

abeyance any pending proceeding 

because of the practitioner’s disability 

or addiction. The hearing officer shall 

decide the matter presented by the OED 

Director’s motion hereunder based on 

the affidavits and other admissible 

evidence attached to the OED Director’s 

motion and the practitioner’s response. 

The OED Director bears the burden of 

showing by clear and convincing 

evidence that the practitioner is able to 

defend himself or herself. If there is any 

genuine issue as to one or more material 

facts, the hearing officer will hold an 

evidentiary hearing. 

(2) The hearing officer, upon receipt 

of the OED Director’s motion under 

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

direct the practitioner to file a response. 

If the hearing officer requires the 

practitioner to file a response, the 

practitioner must present clear and 

convincing evidence that the prior selfalleged disability or addiction continues 

to make it impossible for the 

practitioner to defend himself or herself 

in the underlying proceeding being held 

in abeyance. 

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

deciding a motion under paragraph (b) 

or (d) of this section, the hearing officer 

determines that there is good cause to 

believe the practitioner is not 

incapacitated from defending himself or 

herself, or is not incapacitated from 

practicing before the Office, the hearing 

officer shall take such action as is 

deemed appropriate, including the entry 

of an order directing the reactivation of 

the practitioner and resumption of the 

disciplinary proceeding. 

§ 11.29 Reciprocal transfer or initial 

transfer to disability inactive status. 

(a) Notification of OED Director. (1) 

Transfer to disability inactive status in 

another jurisdiction as grounds for 

reciprocal transfer by the Office. Within 

thirty days of being transferred to 

disability inactive status in another 

jurisdiction, a practitioner subject to the 

disciplinary jurisdiction of the Office 

shall notify the OED Director in writing 

of the transfer. Upon notification from 

any source that a practitioner subject to 

the disciplinary jurisdiction of the 


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Office has been transferred to disability 

inactive status in another jurisdiction, 

the OED Director shall obtain a certified 

copy of the order. The OED Director 

shall file with the USPTO Director: 

(i) The order; 

(ii) A request that the practitioner be 

transferred to disability inactive status, 

including the specific grounds therefor; 

and 

(iii) A request that the USPTO 

Director issue a notice and order as set 

forth in paragraph (b) of this section. 

(2) Involuntary commitment, 

adjudication of incompetency or court 

ordered placement under guardianship 

or conservatorship as grounds for initial 

transfer to disability inactive status. 

Within thirty days of being judicially 

declared incompetent, being judicially 

ordered to be involuntarily committed 

after a hearing on the grounds of 

incompetency or disability, or being 

placed by court order under 

guardianship or conservatorship in 

another jurisdiction, a practitioner 

subject to the disciplinary jurisdiction 

of the Office shall notify the OED 

Director in writing of such judicial 

action. Upon notification from any 

source that a practitioner subject to the 

disciplinary jurisdiction of the Office 

has been subject to such judicial action, 

the OED Director shall obtain a certified 

copy of the order. The OED Director 

shall file with the USPTO Director: 

(i) The order; 

(ii) A request that the practitioner be 

transferred to disability inactive status, 

including the specific grounds therefor; 

and 

(iii) A request that the USPTO 

Director issue a notice and order as set 

forth in paragraph (b) of this section. 

(b) Notice served on practitioner. 

Upon receipt of a certified copy of an 

order or declaration issued by another 

jurisdiction demonstrating that a 

practitioner subject to the disciplinary 

jurisdiction of the Office has been 

transferred to disability inactive status, 

judicially declared incompetent, 

judicially ordered to be involuntarily 

committed after a judicial hearing on 

the grounds of incompetency or 

disability, or placed by court order 

under guardianship or conservatorship, 

together with the OED Director’s 

request, the USPTO Director shall issue 

a notice, comporting with § 11.35, 

directed to the practitioner containing: 

(1) A copy of the order or declaration 

from the other jurisdiction, 

(2) A copy of the OED Director’s 

request; and 

(3) An order directing the practitioner 

to file a response with the USPTO 

Director and the OED Director, within 

30 days from the date of the notice, 

establishing a genuine issue of material 

fact supported by an affidavit and 

predicated upon the grounds set forth in 

§ 11.29(d) (1) through (4) that a transfer 

to disability inactive status would be 

unwarranted and the reasons therefor. 

(c) Effect of stay of transfer, judicially 

declared incompetence, judicially 

ordered involuntarily commitment on 

the grounds of incompetency or 

disability, or court-ordered placement 

under guardianship or conservatorship. 

In the event the transfer, judicially 

declared incompetence, judicially 

ordered involuntary commitment on the 

grounds of incompetency or disability, 

or court-ordered placement under 

guardianship or conservatorship in the 

other jurisdiction has been stayed there, 

any reciprocal transfer or transfer by the 

Office may be deferred until the stay 

expires. 

(d) Hearing and transfer to disability 

inactive status. The request for transfer 

to disability inactive status shall be 

heard by the USPTO Director on the 

documentary record unless the USPTO 

Director determines that there is a 

genuine issue of material fact, in which 

case the USPTO Director may deny the 

request. Upon the expiration of 30 days 

from the date of the notice pursuant to 

the provisions of paragraph (b) of this 

section, the USPTO Director shall 

consider any timely filed response and 

impose the identical transfer to 

disability inactive status based on the 

practitioner’s transfer to disability status 

in another jurisdiction, or shall transfer 

the practitioner to disability inactive 

status based on judicially declared 

incompetence, judicially ordered 

involuntary commitment on the grounds 

of incompetency or disability, or courtordered placement under guardianship 

or conservatorship, unless the 

practitioner demonstrates by clear and 

convincing evidence, or the USPTO 

Director finds there is a genuine issue of 

material fact by clear and convincing 

evidence that: 

(1) The procedure was so lacking in 

notice or opportunity to be heard as to 

constitute a deprivation of due process; 

(2) There was such infirmity of proof 

establishing the transfer to disability 

status, judicial declaration of 

incompetence, judicial order for 

involuntary commitment on the grounds 

of incompetency or disability, or 

placement by court order under 

guardianship or conservatorship that the 

USPTO Director could not, consistent 

with Office’s duty, accept as final the 

conclusion on that subject; 

(3) The imposition of the same 

disability status or transfer to disability 

status by the USPTO Director would 

result in grave injustice; or 

(4) The practitioner is not the 

individual transferred to disability 

status, judicially declared incompetent, 

judicially ordered for involuntary 

commitment on the grounds of 

incompetency or disability, or placed by 

court order under guardianship or 

conservatorship. 

(5) If the USPTO Director determines 

that there is no genuine issue of material 

fact with regard to any of the elements 

of paragraphs (d)(1) through (4) of this 

section, the USPTO Director shall enter 

an appropriate final order. If the USPTO 

Director is unable to make that 

determination because there is a 

genuine issue of material fact, the 

USPTO Director shall enter an 

appropriate order dismissing the OED 

Director’s request for such reason. 

(e) Adjudication in other jurisdiction. 

In all other aspects, a final adjudication 

in another jurisdiction that a 

practitioner be transferred to disability 

inactive status, is judicially declared 

incompetent, is judicially ordered to be 

involuntarily committed on the grounds 

of incompetency or disability, or is 

placed by court order under 

guardianship or conservatorship shall 

establish the disability for purposes of a 

reciprocal transfer to or transfer to 

disability status before the Office. 

(f) A practitioner who is transferred to 

disability inactive status under this 

section shall be deemed to have been 

refused recognition to practice before 

the Office for purposes of 35 U.S.C. 32. 

(g) Order imposing reciprocal transfer 

to disability inactive status or order 

imposing initial transfer to disability 

inactive status. An order by the USPTO 

Director imposing reciprocal transfer to 

disability inactive status, or transferring 

a practitioner to disability inactive 

status shall be effective immediately, 

and shall be for an indefinite period 

until further order of the USPTO 

Director. A copy of the order 

transferring a practitioner to disability 

inactive status shall be served upon the 

practitioner, the practitioner’s guardian, 

and/or the director of the institution to 

which the practitioner has been 

committed in the manner the USPTO 

Director may direct. A practitioner 

reciprocally transferred or transferred to 

disability inactive status shall comply 

with the provisions of § 11.58, and shall 

not engage in practice before the Office 

in patent, trademark and other nonpatent law unless and until reinstated to 

active status. 

(h) Confidentiality of proceeding; 

Orders to be public—(1) Confidentiality 

of proceeding. All proceedings under 

this section involving allegations of 

disability of a practitioner shall be kept 

confidential until and unless the 


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USPTO Director enters an order 

reciprocally transferring or transferring 

the practitioner to disability inactive 

status. 

(2) Orders to be public. The OED 

Director shall publicize any reciprocal 

transfer to disability inactive status or 

transfer to disability inactive status in 

the same manner as for the imposition 

of public discipline. 

(i) Employment of practitioners on 

disability inactive status. A practitioner 

on disability inactive status must seek 

permission from the OED Director to 

engage in an activity authorized under 

§ 11.58(e). Permission will be granted 

only if the practitioner has complied 

with all the conditions of §§ 11.58(a) 

through 11.58(d) applicable to disability 

inactive status. In the event that 

permission is granted, the practitioner 

shall fully comply with the provisions 

of § 11.58(e). 

(j) Reinstatement from disability 

inactive status. (1) Generally. No 

practitioner reciprocally transferred or 

transferred to disability inactive status 

under this section may resume active 

status except by order of the OED 

Director. 

(2) Petition. A practitioner 

reciprocally transferred or transferred to 

disability inactive status shall be 

entitled to petition the OED Director for 

transfer to active status once a year, or 

at whatever shorter intervals the USPTO 

Director may direct in the order 

transferring or reciprocally transferring 

the practitioner to disability inactive 

status or any modification thereof. 

(3) Examination. Upon the filing of a 

petition for transfer to active status, the 

OED Director may take or direct 

whatever action is deemed necessary or 

proper to determine whether the 

incapacity has been removed, including 

a direction for an examination of the 

practitioner by qualified medical or 

psychological experts designated by the 

OED Director. The expense of the 

examination shall be paid and borne by 

the practitioner. 

(4) Required disclosure, waiver of 

privilege. With the filing of a petition for 

reinstatement to active status, the 

practitioner shall be required to disclose 

the name of each psychiatrist, 

psychologist, physician and hospital or 

other institution by whom or in which 

the practitioner has been examined or 

treated for the disability since the 

transfer to disability inactive status. The 

practitioner shall furnish to the OED 

Director written consent to the release of 

information and records relating to the 

incapacity if requested by the OED 

Director. 

(5) Learning in the law, examination. 

The OED Director may direct that the 

practitioner establish proof of 

competence and learning in law, which 

proof may include passing the 

registration examination. 

(6) Granting of petition for transfer to 

active status. The OED Director shall 

grant the petition for transfer to active 

status upon a showing by clear and 

convincing evidence that the incapacity 

has been removed. 

(7) Reinstatement in other 

jurisdiction. If a practitioner is 

reciprocally transferred to disability 

inactive status on the basis of a transfer 

to disability inactive status in another 

jurisdiction, the OED Director may 

dispense with further evidence that the 

disability has been removed and may 

immediately direct reinstatement to 

active status upon such terms as are 

deemed proper and advisable. 

(8) Judicial declaration of 

competency. If a practitioner is 

transferred to disability inactive status 

on the basis of a judicially declared 

incompetence, judicially ordered 

involuntary commitment on the grounds 

of incompetency or disability, or courtordered placement under guardianship 

or conservatorship has been declared to 

be competent, the OED Director may 

dispense with further evidence that the 

incapacity to practice law has been 

removed and may immediately direct 

reinstatement to active status. 

§§ 11.30–11.31 [Reserved] 

§ 11.32 Instituting a disciplinary 

proceeding. 

If after conducting an investigation 

under § 11.22(a), the OED Director is of 

the opinion that grounds exist for 

discipline under §§ 11.19(b)(3) through 

(5), the OED Director, after complying 

where necessary with the provisions of 

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

of a panel of the Committee on 

Discipline. The panel of the Committee 

on Discipline shall then determine as 

specified in § 11.23(b) whether a 

disciplinary proceeding shall be 

instituted. If the panel of the Committee 

on Discipline determines that probable 

cause exists to bring charges under 

§§ 11.19(b)(3) through (5), the OED 

Director shall institute a disciplinary 

proceeding by filing a complaint under 

§ 11.34. 

§ 11.33 [Reserved] 

§ 11.34 Complaint. 

(a) A complaint instituting a 

disciplinary proceeding under 

§§ 11.25(b)(4) or 11.32 shall: 

(1) Name the practitioner who may 

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

(2) Give a plain and concise 

description of the respondent’s alleged 

grounds for discipline; 

(3) State the place and time, not less 

than thirty days from the date the 

complaint is filed, for filing an answer 

by the respondent; 

(4) State that a decision by default 

may be entered if an answer is not 

timely filed by the respondent; and 

(5) Be signed by the OED Director. 

(b) A complaint will be deemed 

sufficient if it fairly informs the 

respondent of any grounds for 

discipline, and where applicable, the 

Mandatory Disciplinary Rules identified 

in § 10.20(b) of this subchapter that form 

the basis for the disciplinary proceeding 

so that the respondent is able to 

adequately prepare a defense. 

(c) The complaint shall be filed in the 

manner prescribed by the USPTO 

Director. 

§ 11.35 Service of complaint. 

(a) A complaint may be served on a 

respondent in any of the following 

methods: 

(1) By delivering a copy of the 

complaint personally to the respondent, 

in which case the individual who gives 

the complaint to the respondent shall 

file an affidavit with the OED Director 

indicating the time and place the 

complaint was delivered to the 

respondent. 

(2) By mailing a copy of the complaint 

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

any delivery service that provides 

ability to confirm delivery or attempted 

delivery to: 

(i) A respondent who is a registered 

practitioner at the address provided to 

OED pursuant to § 11.11, or 

(ii) A respondent who is a 

nonregistered practitioner at the last 

address for the respondent known to the 

OED Director. 

(3) By any method mutually agreeable 

to the OED Director and the respondent. 

(4) In the case of a respondent who 

resides outside the United States, by 

sending a copy of the complaint by any 

delivery service that provides ability to 

confirm delivery or attempted delivery, 

to: 

(i) A respondent who is a registered 

practitioner at the address provided to 

OED pursuant to § 11.11; or 

(ii) A respondent who is a 

nonregistered practitioner at the last 

address for the respondent known to the 

OED Director. 

(b) If a copy of the complaint cannot 

be delivered to the respondent through 

any one of the procedures in paragraph 

(a) of this section, the OED Director 

shall serve the respondent by causing an 

appropriate notice to be published in 


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the Official Gazette for two consecutive 

weeks, in which case, the time for filing 

an answer shall be thirty days from the 

second publication of the notice. Failure 

to timely file an answer will constitute 

an admission of the allegations in the 

complaint in accordance with paragraph 

(d) of § 11.36, and the hearing officer 

may enter an initial decision on default. 

(c) If the respondent is known to the 

OED Director to be represented by an 

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

complaint shall be served on the 

attorney in lieu of service on the 

respondent in the manner provided for 

in paragraph (a) or (b) of this section. 

§ 11.36 Answer to complaint. 

(a) Time for answer. An answer to a 

complaint shall be filed within the time 

set in the complaint but in no event 

shall that time be less than thirty days 

from the date the complaint is filed. 

(b) With whom filed. The answer shall 

be filed in writing with the hearing 

officer at the address specified in the 

complaint. The hearing officer may 

extend the time for filing an answer 

once for a period of no more than thirty 

days upon a showing of good cause, 

provided a motion requesting an 

extension of time is filed within thirty 

days after the date the complaint is 

served on respondent. A copy of the 

answer, and any exhibits or attachments 

thereto, shall be served on the OED 

Director. 

(c) Content. The respondent shall 

include in the answer a statement of the 

facts that constitute the grounds of 

defense and shall specifically admit or 

deny each allegation set forth in the 

complaint. The respondent shall not 

deny a material allegation in the 

complaint that the respondent knows to 

be true or state that respondent is 

without sufficient information to form a 

belief as to the truth of an allegation, 

when in fact the respondent possesses 

that information. The respondent shall 

also state affirmatively in the answer 

special matters of defense and any 

intent to raise a disability as a mitigating 

factor. If respondent intends to raise a 

special matter of defense or disability, 

the answer shall specify the defense or 

disability, its nexus to the misconduct, 

and the reason it provides a defense or 

mitigation. A respondent who fails to do 

so cannot rely on a special matter of 

defense or disability. The hearing officer 

may, for good cause, allow the 

respondent to file the statement late, 

grant additional hearing preparation 

time, or make other appropriate orders. 

(d) Failure to deny allegations in 

complaint. Every allegation in the 

complaint that is not denied by a 

respondent in the answer shall be 

deemed to be admitted and may be 

considered proven. The hearing officer 

at any hearing need receive no further 

evidence with respect to that allegation. 

(e) Default judgment. Failure to timely 

file an answer will constitute an 

admission of the allegations in the 

complaint and may result in entry of 

default judgment. 

§ 11.37 [Reserved] 

§ 11.38 Contested case. 

Upon the filing of an answer by the 

respondent, a disciplinary proceeding 

shall be regarded as a contested case 

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

Evidence obtained by a subpoena issued 

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

into the record or considered unless 

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

previously authorized by the hearing 

officer. 

§ 11.39 Hearing officer; appointment; 

responsibilities; review of interlocutory 

orders; stays. 

(a) Appointment. A hearing officer, 

appointed by the USPTO Director under 

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

conduct disciplinary proceedings as 

provided by this Part. 

(b) Independence of the Hearing 

Officer. (1) A hearing officer appointed 

in accordance with paragraph (a) of this 

section shall not be subject to first level 

or second level supervision by either the 

USPTO Director or OED 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 conducting hearings, reaching a 

determination, and rendering an initial 

decision in an equitable manner. 

(c) Responsibilities. The hearing 

officer shall have authority, consistent 

with specific provisions of these 

regulations, to: 

(1) Administer oaths and affirmations; 

(2) Make rulings upon motions and 

other requests; 

(3) Rule upon offers of proof, receive 

relevant evidence, and examine 

witnesses; 

(4) Authorize the taking of a 

deposition of a witness in lieu of 

personal appearance of the witness 

before the hearing officer; 

(5) Determine the time and place of 

any hearing and regulate its course and 

conduct; 

(6) Hold or provide for the holding of 

conferences to settle or simplify the 

issues; 

(7) Receive and consider oral or 

written arguments on facts or law; 

(8) Adopt procedures and modify 

procedures for the orderly disposition of 

proceedings; 

(9) Make initial decisions under 

§§ 11.25 and 11.54; and 

(10) Perform acts and take measures 

as necessary to promote the efficient, 

timely, and impartial conduct of any 

disciplinary proceeding. 

(d) Time for making initial decision. 

The hearing officer shall set times and 

exercise control over a disciplinary 

proceeding such that an initial decision 

under § 11.54 is normally issued within 

nine months of the date a complaint is 

filed. The hearing officer may, however, 

issue an initial decision more than nine 

months after a complaint is filed if there 

exist circumstances, in his or her 

opinion, that preclude issuance of an 

initial decision within nine months of 

the filing of the complaint. 

(e) Review of interlocutory orders. The 

USPTO Director will not review an 

interlocutory order of a hearing officer 

except: 

(1) When the hearing officer shall be 

of the opinion: 

(i) That the interlocutory order 

involves a controlling question of 

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 by the hearing 

officer for taking action 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. 


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§ 11.40 Representative for OED Director or 

respondent. 

(a) A respondent may represent 

himself or herself, or be represented by 

an attorney before the Office in 

connection with an investigation or 

disciplinary proceeding. The attorney 

shall file a written declaration that he or 

she is an attorney within the meaning of 

§ 11.1 and shall state: 

(1) The address to which the attorney 

wants correspondence related to the 

investigation or disciplinary proceeding 

sent, and 

(2) A telephone number where the 

attorney may be reached during normal 

business hours. 

(b) The Deputy General Counsel for 

Intellectual Property and Solicitor, and 

attorneys in the Office of the Solicitor 

shall represent the OED Director. The 

attorneys representing the OED Director 

in disciplinary proceedings shall not 

consult with the USPTO Director, the 

General Counsel, the Deputy General 

Counsel for General Law, or an 

individual designated by the USPTO 

Director to decide disciplinary matters 

regarding the proceeding. The General 

Counsel and the Deputy General 

Counsel for General Law shall remain 

screened from the investigation and 

prosecution of all disciplinary 

proceedings in order that they shall be 

available as counsel to the USPTO 

Director in deciding disciplinary 

proceedings unless access is appropriate 

to perform their duties. After a final 

decision is entered in a disciplinary 

proceeding, the OED Director and 

attorneys representing the OED Director 

shall be available to counsel the USPTO 

Director, the General Counsel, and the 

Deputy General Counsel for General 

Law in any further proceedings. 

§ 11.41 Filing of papers. 

(a) The provisions of §§ 1.8 and 2.197 

of this subchapter do not apply to 

disciplinary proceedings. All papers 

filed after the complaint and prior to 

entry of an initial decision by the 

hearing officer shall be filed with the 

hearing officer at an address or place 

designated by the hearing officer. 

(b) All papers filed after entry of an 

initial decision by the hearing officer 

shall be filed with the USPTO Director. 

A copy of the paper shall be served on 

the OED Director. The hearing officer or 

the OED Director may provide for filing 

papers and other matters by hand, by 

‘‘Express Mail,’’ or by other means. 

§ 11.42 Service of papers. 

(a) All papers other than a complaint 

shall be served on a respondent who is 

represented by an attorney by: 

(1) Delivering a copy of the paper to 

the office of the attorney; or 

(2) Mailing a copy of the paper by 

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

delivery service to the attorney at the 

address provided by the attorney under 

§ 11.40(a)(1); or 

(3) Any other method mutually 

agreeable to the attorney and a 

representative for the OED Director. 

(b) All papers other than a complaint 

shall be served on a respondent who is 

not represented by an attorney by: 

(1) Delivering a copy of the paper to 

the respondent; or 

(2) Mailing a copy of the paper by 

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

delivery service to the respondent at the 

address to which a complaint may be 

served or such other address as may be 

designated in writing by the respondent; 

or 

(3) Any other method mutually 

agreeable to the respondent and a 

representative of the OED Director. 

(c) A respondent shall serve on the 

representative for the OED Director one 

copy of each paper filed with the 

hearing officer or the OED Director. A 

paper may be served on the 

representative for the OED Director by: 

(1) Delivering a copy of the paper to 

the representative; or 

(2) Mailing a copy of the paper by 

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

delivery service to an address 

designated in writing by the 

representative; or 

(3) Any other method mutually 

agreeable to the respondent and the 

representative. 

(d) Each paper filed in a disciplinary 

proceeding shall contain therein a 

certificate of service indicating: 

(1) The date on which service was 

made; and 

(2) The method by which service was 

made. 

(e) The hearing officer or the USPTO 

Director may require that a paper be 

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

(f) Service by mail is completed when 

the paper mailed in the United States is 

placed into the custody of the U.S. 

Postal Service. 

§ 11.43 Motions. 

Motions, including all prehearing 

motions commonly filed under the 

Federal Rules of Civil Procedure, shall 

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, prior to a decision on the 

motion, the parties resolve issues raised 

by a motion presented to the hearing 

officer, the parties shall promptly notify 

the hearing officer. 

§ 11.44 Hearings. 

(a) The hearing officer shall preside 

over hearings in disciplinary 

proceedings. The hearing officer shall 

set the time and place for the hearing. 

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. A copy of the 

transcript shall be provided to the OED 

Director and the respondent at the 

expense of the Office. 

(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 

the public and make the record of the 

disciplinary proceeding available for 

public inspection, provided, a protective 

order is entered to exclude from public 

disclosure information which is 

privileged or confidential under 

applicable laws or regulations. 

§ 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. 


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§§ 11.46–11.48 [Reserved] 

§ 11.49 Burden of proof. 

In a disciplinary proceeding, the OED 

Director shall have the burden of 

proving the violation by clear and 

convincing evidence and a respondent 

shall have the burden of proving any 

affirmative defense by clear and 

convincing evidence. 

§ 11.50 Evidence. 

(a) Rules of evidence. The rules of 

evidence prevailing in courts of law and 

equity are not controlling in hearings in 

disciplinary proceedings. However, the 

hearing officer shall exclude evidence 

that is irrelevant, immaterial, or unduly 

repetitious. 

(b) Depositions. Depositions of 

witnesses taken pursuant to § 11.51 may 

be admitted as evidence. 

(c) Government documents. Official 

documents, records, and papers of the 

Office, including, but not limited to, all 

papers in the file of a disciplinary 

investigation, are admissible without 

extrinsic evidence of authenticity. These 

documents, records, and papers may be 

evidenced by a copy certified as correct 

by an employee of the Office. 

(d) Exhibits. If any document, record, 

or other paper is introduced in evidence 

as an exhibit, the hearing officer may 

authorize the withdrawal of the exhibit 

subject to any conditions the hearing 

officer deems appropriate. 

(e) Objections. Objections to evidence 

will be in short form, stating the 

grounds of objection. Objections and 

rulings on objections will be a part of 

the record. No exception to the ruling is 

necessary to preserve the rights of the 

parties. 

§ 11.51 Depositions. 

(a) Depositions for use at the hearing 

in lieu of personal appearance of a 

witness before the hearing officer may 

be taken by respondent or the OED 

Director upon a showing of good cause 

and with the approval of, and under 

such conditions as may be deemed 

appropriate by, the hearing officer. 

Depositions may be taken upon oral or 

written questions, upon not less than 

ten days’ written notice to the other 

party, before any officer authorized to 

administer an oath or affirmation in the 

place where the deposition is to be 

taken. The parties may waive the 

requirement of ten days’ notice and 

depositions may then be taken of a 

witness at a time and place mutually 

agreed to by the parties. When a 

deposition is taken upon written 

questions, copies of the written 

questions will be served upon the other 

party with the notice, and copies of any 

written cross-questions will be served 

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

five days before the date of the taking of 

the deposition unless the parties 

mutually agree otherwise. A party on 

whose behalf a deposition is taken shall 

file a copy of a transcript of the 

deposition signed by a court reporter 

with the hearing officer and shall serve 

one copy upon the opposing party. 

Expenses for a court reporter and 

preparing, serving, and filing 

depositions shall be borne by the party 

at whose instance the deposition is 

taken. Depositions may not be taken to 

obtain discovery, except as provided for 

in paragraph (b) of this section. 

(b) When the OED Director and the 

respondent agree in writing, a 

deposition of any witness who will 

appear voluntarily may be taken under 

such terms and conditions as may be 

mutually agreeable to the OED Director 

and the respondent. The deposition 

shall not be filed with the hearing 

officer and may not be admitted in 

evidence before the hearing officer 

unless he or she orders the deposition 

admitted in evidence. The admissibility 

of the deposition shall lie within the 

discretion of the hearing officer who 

may reject the deposition on any 

reasonable basis including the fact that 

demeanor is involved and that the 

witness should have been called to 

appear personally before the hearing 

officer. 

§ 11.52 Discovery. 

Discovery shall not be authorized 

except as follows: 

(a) After an answer is filed under 

§ 11.36 and when a party establishes 

that discovery is reasonable and 

relevant, the hearing officer, under such 

conditions as he or she deems 

appropriate, may order an opposing 

party to: 

(1) Answer a reasonable number of 

written requests for admission or 

interrogatories; 

(2) Produce for inspection and 

copying a reasonable number of 

documents; and 

(3) Produce for inspection a 

reasonable number of things other than 

documents. 

(b) Discovery shall not be authorized 

under paragraph (a) of this section of 

any matter which: 

(1) Will be used by another party 

solely for impeachment; 

(2) Is not available to the party under 

35 U.S.C. 122; 

(3) Relates to any other disciplinary 

proceeding; 

(4) Relates to experts except as the 

hearing officer may require under 

paragraph (e) of this section; 

(5) Is privileged; or 

(6) Relates to mental impressions, 

conclusions, opinions, or legal theories 

of any attorney or other representative 

of a party. 

(c) The hearing officer may deny 

discovery requested under paragraph (a) 

of this section if the discovery sought: 

(1) Will unduly delay the disciplinary 

proceeding; 

(2) Will place an undue burden on the 

party required to produce the discovery 

sought; or 

(3) Consists of information that is 

available: 

(i) Generally to the public; 

(ii) Equally to the parties; or 

(iii) To the party seeking the 

discovery through another source. 

(d) Prior to authorizing discovery 

under paragraph (a) of this section, the 

hearing officer shall require the party 

seeking discovery to file a motion 

(§ 11.43) and explain in detail, for each 

request made, how the discovery sought 

is reasonable and relevant to an issue 

actually raised in the complaint or the 

answer. 

(e) The hearing officer may require 

parties to file and serve, prior to any 

hearing, a pre-hearing statement that 

contains: 

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

proposed exhibits to be used in 

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

(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. 

§ 11.53 Proposed findings and 

conclusions; post-hearing memorandum. 

Except in cases in which the 

respondent has failed to answer the 

complaint or amended complaint, the 

hearing officer, prior to making an 

initial decision, shall afford the parties 

a reasonable opportunity to submit 

proposed findings and conclusions and 

a post-hearing memorandum in support 

of the proposed findings and 

conclusions. 

§ 11.54 Initial decision of hearing officer. 

(a) The hearing officer shall make an 

initial decision in the case. The decision 

will include: 

(1) A statement of findings of fact and 

conclusions of law, as well as the 


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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 

four factors must be considered if they 

are applicable: 

(1) Whether the practitioner has 

violated a duty owed to a client, to the 

public, to the legal system, or to the 

profession; 

(2) Whether the practitioner acted 

intentionally, knowingly, or negligently; 

(3) The amount of the actual or 

potential injury caused by the 

practitioner’s misconduct; and 

(4) The existence of any aggravating or 

mitigating factors. 

§ 11.55 Appeal to the USPTO Director. 

(a) Within thirty days after the date of 

the initial decision of the hearing officer 

under §§ 11.25 or 11.54, either party 

may appeal to the USPTO Director. The 

appeal shall include the appellant’s 

brief. If more than one appeal is filed, 

the party who files the appeal first is the 

appellant for purpose of this rule. If 

appeals are filed on the same day, the 

respondent is the appellant. If an appeal 

is filed, then the OED Director shall 

transmit the entire record to the USPTO 

Director. Any cross-appeal shall be filed 

within fourteen days after the date of 

service of the appeal pursuant to 

§ 11.42, or thirty days after the date of 

the initial decision of the hearing 

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

thirty days after the date of service 

pursuant to § 11.42 of an appeal or 

cross-appeal. Any reply brief must be 

filed within fourteen days after the date 

of service of any appellee or crossappellee brief. 

(b) An appeal or cross-appeal must 

include exceptions to the decisions of 

the hearing officer and supporting 

reasons for those exceptions. Any 

exception not raised will be deemed to 

have been waived and will be 

disregarded by the USPTO Director in 

reviewing the initial decision. 

(c) All briefs shall: 

(1) Be filed with the USPTO Director 

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

of this subchapter and served on the 

opposing party; 

(2) Include separate sections 

containing a concise statement of the 

disputed facts and disputed points of 

law; and 

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

and 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 result in the initial 

decision being final and effective thirty 

days from the date of the initial decision 

of the hearing officer. 

§ 11.56 Decision of the USPTO Director. 

(a) The USPTO Director shall decide 

an appeal from an initial decision of the 

hearing officer. On appeal from the 

initial decision, the USPTO Director has 

authority to conduct a de novo review 

of the factual record. The USPTO 

Director may affirm, reverse, or modify 

the initial decision or remand the matter 

to the hearing officer for such further 

proceedings as the USPTO Director may 

deem appropriate. In making a final 

decision, the USPTO Director shall 

review the record or the portions of the 

record designated by the parties. The 

USPTO Director shall transmit a copy of 

the final decision to the OED Director 

and to the respondent. 

(b) A final decision of the USPTO 

Director may dismiss a disciplinary 

proceeding, reverse or modify the initial 

decision, reprimand a practitioner, or 

may suspend or exclude the practitioner 

from practice before the Office. A final 

decision suspending or excluding a 

practitioner shall require compliance 

with the provisions of § 11.58. The final 

decision may also condition the 

reinstatement of the practitioner upon a 

showing that the practitioner has taken 

steps to correct or mitigate the matter 

forming the basis of the action, or to 

prevent recurrence of the same or 

similar conduct. 

(c) The respondent or the OED 

Director may make a single request for 

reconsideration or modification of the 

decision by the USPTO Director if filed 

within twenty days from the date of 

entry of the decision. No request for 

reconsideration or modification shall be 

granted unless the request is based on 

newly discovered evidence or error of 

law or fact, and the requestor must 

demonstrate that any newly discovered 

evidence could not have been 

discovered any earlier by due diligence. 

Such a request shall have the effect of 

staying the effective date of the order of 

discipline in the final decision. The 

decision by the USPTO Director is 

effective on its date of entry. 

§ 11.57 Review of final decision of the 

USPTO Director. 

(a) Review of the final decision by the 

USPTO Director in a disciplinary case 

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

petition filed in accordance with 35 

U.S.C. 32. The Respondent must serve 

the USPTO Director with the petition. 

Respondent must serve the petition in 

accordance with Rule 4 of the Federal 

Rules of Civil Procedure and § 104.2 of 

this Title. 

(b) Except as provided for in 

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

final decision will not be stayed except 

on proof of exceptional circumstances. 

§ 11.58 Duties of disciplined or resigned 

practitioner, or practitioner on disability 

inactive status. 

(a) An excluded, suspended or 

resigned practitioner, or practitioner 

transferred to disability inactive status 

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 


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suspension. An excluded, suspended or 

resigned practitioner, or practitioner 

transferred to disability inactive status 

must comply with the provisions of this 

section 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, or 

practitioner transferred to disability 

inactive status shall: 

(1) Within thirty days after the date of 

entry of the order of exclusion, 

suspension, acceptance of resignation, 

or transfer to disability inactive status: 

(i) File a notice of withdrawal as of 

the effective date of the exclusion, 

suspension, acceptance of resignation, 

or transfer to disability inactive status 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 State and 

Federal jurisdictions and administrative 

agencies to which the practitioner is 

admitted to practice 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, 

acceptance of resignation, or transferred 

to disability inactive status 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, 

resignation, or transfer to disability 

inactive status 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, resignation or transfer to 

disability inactive status, and state in 

the notice the mailing address of each 

client of the excluded, suspended or 

resigned practitioner, or practitioner 

transferred to disability inactive status 

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 

Mandatory Disciplinary Rules identified 

in § 10.20(b) of this subchapter for 

withdrawal from representation. 

Appended to the affidavit of compliance 

shall be: 

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

names and addresses 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, or a practitioner 

transferred to disability inactive status 

shall continue to file a statement in 

accordance with § 11.11, regarding any 

change of residence or other address to 

which communications may thereafter 

be directed, so that the excluded or 

suspended practitioner, or practitioner 

transferred to disability inactive status 

may be located if a grievance is received 

regarding any conduct occurring before 

or after the 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 as to that 

business. 

(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 the practitioner’s or the 

practitioner’s firm’s office and the 

practitioner’s or the practitioner’s firm’s 

stationery to delete therefrom any 


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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, or practitioner 

transferred to disability inactive status 

after entry of the order of exclusion or 

suspension, acceptance of resignation, 

or transfer to disability inactive status 

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, or 

practitioner transferred to disability 

inactive status 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, or practitioner 

transferred to disability inactive status 

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, or 

practitioner transferred to disability 

inactive status shall so advise the client 

so that the client may make other 

arrangements. 

(d) Required records. An excluded, 

suspended or resigned practitioner, or 

practitioner transferred to disability 

inactive status 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, or practitioner on 

disability inactive status 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, or practitioner 

transferred to disability inactive status 

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, or practitioner 

transferred to disability inactive status 

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, or practitioner 

transferred to disability inactive status 

acts as a paralegal or performs services 

under paragraph (e) 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, or practitioner 

transferred to disability inactive status, 

and 

(ii) Shows by clear and convincing 

evidence that the excluded, suspended 

or resigned practitioner, or practitioner 

transferred to disability inactive status 

has complied with the provisions of this 

section and all Mandatory Disciplinary 

Rules identified in § 10.20(b) of this 

subchapter; 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, or practitioner 

transferred to disability inactive status 

has complied with paragraph (c) of this 

section. 

§ 11.59 Dissemination of disciplinary and 

other information. 

(a) The OED Director shall inform the 

public of the disposition of each matter 

in which public discipline has been 

imposed, and of any other changes in a 

practitioner’s registration status. Public 

discipline includes exclusion, as well as 

exclusion on consent; suspension; and 

public reprimand. Unless otherwise 

ordered by the USPTO Director, the 

OED Director shall give notice of public 

discipline and the reasons for the 

discipline to disciplinary enforcement 

agencies in the State where the 

practitioner is admitted to practice, to 

courts where the practitioner is known 

to be admitted, and the public. If public 

discipline is imposed, the OED Director 

shall cause a final decision of the 

USPTO Director to be published. Final 

decisions of the USPTO Director 

include default judgments. See 

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

imposed, the OED Director shall cause 

a redacted version of the final decision 

to be published. 

(b) Records available to the public. 

Unless the USPTO Director orders that 

the proceeding or a portion of the record 

be kept confidential, the OED Director’s 

records of every disciplinary proceeding 

where a practitioner is reprimanded, 

suspended, or excluded, including 

when said sanction is imposed by 

default judgment, shall be made 

available to the public upon written 

request, except that information may be 

withheld as necessary to protect the 

privacy of third parties or as directed in 

a protective order issued pursuant to 

§ 11.44(c). 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. Unless the USPTO Director 

orders that the proceeding or a portion 

of the record be kept confidential, an 

order excluding a practitioner on 

consent under § 11.27 and the affidavit 

required under paragraph (a) of § 11.27 

shall be available to the public, except 

that information in the order or affidavit 


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Federal Register / Vol. 73, No. 158 / Thursday, August 14, 2008 / Rules and Regulations 47703 

may be withheld as necessary to protect 

the privacy of third parties or as 

directed in a protective order under 

§ 11.44(c). The affidavit required under 

paragraph (a) of § 11.27 shall not be 

used in any other proceeding except by 

order of the USPTO Director or upon 

written consent of the practitioner. 

§ 11.60 Petition for reinstatement. 

(a) Restrictions on reinstatement. An 

excluded, suspended or resigned 

practitioner shall not resume practice of 

patent, trademark, or other non-patent 

law before the Office until reinstated by 

order of the OED Director or the USPTO 

Director. 

(b) Petition for reinstatement. An 

excluded or suspended practitioner 

shall be eligible to apply for 

reinstatement only upon expiration of 

the period of suspension or exclusion 

and the practitioner’s full compliance 

with § 11.58. An excluded practitioner 

shall be eligible to apply for 

reinstatement no earlier than at least 

five years from the effective date of the 

exclusion. A resigned practitioner shall 

be eligible to petition for reinstatement 

and must show compliance with § 11.58 

no earlier than at least five years from 

the date the practitioner’s resignation is 

accepted and an order is entered 

excluding the practitioner on consent. 

(c) Review of reinstatement petition. 

An excluded, suspended or resigned 

practitioner shall file a petition for 

reinstatement accompanied by the fee 

required by § 1.21(a)(10) of this 

subchapter. The petition for 

reinstatement shall be filed with the 

OED Director. An excluded or 

suspended practitioner who has 

violated any provision of § 11.58 shall 

not be eligible for reinstatement until a 

continuous period of the time in 

compliance with § 11.58 that is equal to 

the period of suspension or exclusion 

has elapsed. A resigned practitioner 

shall not be eligible for reinstatement 

until compliance with § 11.58 is shown. 

If the excluded, suspended or resigned 

practitioner is not eligible for 

reinstatement, or if the OED Director 

determines that the petition is 

insufficient or defective on its face, the 

OED Director may dismiss the petition. 

Otherwise the OED Director shall 

consider the petition for reinstatement. 

The excluded, suspended or resigned 

practitioner seeking reinstatement shall 

have the burden of proof by clear and 

convincing evidence. Such proof shall 

be included in or accompany the 

petition, and shall establish: 

(1) That the excluded, suspended or 

resigned practitioner has the good moral 

character and reputation, competency, 

and learning in law required under 

§ 11.7 for admission; 

(2) That the resumption of practice 

before the Office will not be detrimental 

to the administration of justice or 

subversive to the public interest; and 

(3) That the suspended practitioner 

has complied with the provisions of 

§ 11.58 for the full period of suspension, 

that the excluded practitioner has 

complied with the provisions of § 11.58 

for at least five continuous years, or that 

the resigned practitioner has complied 

with § 11.58 upon acceptance of the 

resignation. 

(d) Petitions for reinstatement—

Action by the OED Director granting 

reinstatement. (1) If the excluded, 

suspended or resigned practitioner is 

found to have complied with paragraphs 

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

OED Director shall enter an order of 

reinstatement, which shall be 

conditioned on payment of the costs of 

the disciplinary proceeding to the extent 

set forth in paragraphs (d)(2) and (3) of 

this section. 

(2) Payment of costs of disciplinary 

proceedings. Prior to reinstatement to 

practice, the excluded or suspended 

practitioner shall pay the costs of the 

disciplinary proceeding. The costs 

imposed pursuant to this section 

include all of the following: 

(i) The actual expense incurred by the 

OED Director or the Office for the 

original and copies of any reporter’s 

transcripts of the disciplinary 

proceeding, and any fee paid for the 

services of the reporter; 

(ii) All expenses paid by the OED 

Director or the Office which would 

qualify as taxable costs recoverable in 

civil proceedings; and 

(iii) The charges determined by the 

OED Director to be ‘‘reasonable costs’’ of 

investigation, hearing, and review. 

These amounts shall serve to defray the 

costs, other than fees for services of 

attorneys and experts, of the Office of 

Enrollment and Discipline in the 

preparation or hearing of the 

disciplinary proceeding, and costs 

incurred in the administrative 

processing of the disciplinary 

proceeding. 

(3) An excluded or suspended 

practitioner may be granted relief, in 

whole or in part, only from an order 

assessing costs under this section or 

may be granted an extension of time to 

pay these costs, in the discretion of the 

OED Director, upon grounds of 

hardship, special circumstances, or 

other good cause. 

(e) Petitions for reinstatement—Action 

by the OED Director denying 

reinstatement. If the excluded, 

suspended or resigned practitioner is 

found unfit to resume the practice of 

patent law before the Office, the OED 

Director shall first provide the excluded, 

suspended or resigned practitioner with 

an opportunity to show cause in writing 

why the petition should not be denied. 

Failure to comply with § 11.12(c) shall 

constitute unfitness. If unpersuaded by 

the showing, the OED Director shall 

deny the petition. The OED Director 

may require the excluded, suspended or 

resigned practitioner, in meeting the 

requirements of § 11.7, to take and pass 

an examination under § 11.7(b), ethics 

courses, and/or the Multistate 

Professional Responsibility 

Examination. The OED Director shall 

provide findings, together with the 

record. The findings shall include on 

the first page, immediately beneath the 

caption of the case, a separate section 

entitled ‘‘Prior Proceedings’’ which 

shall state the docket number of the 

original disciplinary proceeding in 

which the exclusion or suspension was 

ordered. 

(f) Resubmission of petitions for 

reinstatement. If a petition for 

reinstatement is denied, no further 

petition for reinstatement may be filed 

until the expiration of at least one year 

following the denial unless the order of 

denial provides otherwise. 

(g) Reinstatement proceedings open to 

public. Proceedings on any petition for 

reinstatement shall be open to the 

public. Before reinstating any excluded 

or suspended practitioner, the OED 

Director shall publish a notice of the 

excluded or suspended practitioner’s 

petition for reinstatement and shall 

permit the public a reasonable 

opportunity to comment or submit 

evidence with respect to the petition for 

reinstatement. 

§ 11.61 Savings clause. 

(a) A disciplinary proceeding based 

on conduct engaged in prior to 

September 15, 2008 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 September 15, 

2008. 

(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 September 15, 2008. 


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47704 Federal Register / Vol. 73, No. 158 / Thursday, August 14, 2008 / Rules and 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 

September 15, 2008. 

§§ 11.62–11.99 [Reserved] 

PART 41—PRACTICE BEFORE THE 

BOARD OF PATENT APPEALS AND 

INTERFERENCES 

■ 43. The authority citation for 37 CFR 

part 41 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 

23, 32, 41, 134, 135. 

■ 44. Revise § 41.5(e) to read as follows: 

§ 41.5 Counsel. 

* * * * * 

(e) Referral to the Director of 

Enrollment and Discipline. Possible 

violations of the disciplinary rules in 

part 11 of this subchapter may be 

referred to the Office of Enrollment and 

Discipline for investigation. See § 11.22 

of this subchapter. 

Date: July 31, 2008. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. E8–18109 Filed 8–13–08; 8:45 am] 

BILLING CODE 3510–16–P 


sroberts on PROD1PC70 with RULES