37 C.F.R. §§ 11.19–11.58

§11.19. Disciplinary jurisdiction; grounds for discipline and for transfer to disability inactive status.

37 C.F.R. § 11.19

(a)

Disciplinary jurisdiction. All practitioners engaged in practice before the Office, all practitioners administratively suspended under § 11.11, all practitioners registered or recognized to practice before the Office in patent matters, all practitioners resigned or inactivated under § 11.11, all practitioners authorized under § 41.5(a) or § 42.10(c) of this chapter, and all practitioners transferred to disability inactive status or publicly disciplined by a duly constituted authority are subject to the disciplinary jurisdiction of the Office and to being transferred to disability inactive status. A non-practitioner is also subject to the disciplinary authority of the Office if the person engages in or offers to engage in practice before the Office without proper authority.

(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 or professional misconduct 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 any USPTO Rule of Professional Conduct; 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 this subpart 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).

(e)

The OED Director has the discretion to choose any of the independent grounds of discipline under paragraph (b) of this section and to pursue any of the procedures set forth in this subpart in every disciplinary proceeding.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28457, May 26, 2021; 88 FR 45087, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28457, May 26, 2021; 88 FR 45087, July 14, 2023]

§11.20. Disciplinary sanctions; Transfer to disability inactive status.

37 C.F.R. § 11.20

(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. The conditions of probation shall be stated in the order imposing probation. Violation of any condition of probation shall be cause for imposition of the disciplinary sanction. Imposition of the disciplinary sanction predicated upon violation of probation shall occur only after a notice to show cause why the disciplinary sanction should not be imposed is resolved adversely to the practitioner.

(b)

Conditions imposed with discipline. When imposing discipline, the USPTO Director may condition reinstatement upon the practitioner making restitution, successfully completing a professional responsibility course or examination, or any other condition deemed appropriate under the circumstances.

(c)

Transfer to disability inactive status. As set forth in § 11.29, the USPTO Director, after notice and opportunity for a hearing, may transfer a practitioner to disability inactive status where grounds exist to believe the practitioner has been transferred to disability inactive status in another jurisdiction, has been judicially declared incompetent, has been judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or has been placed by court order under guardianship or conservatorship.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28457, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28457, May 26, 2021]

§11.21. Warnings.

37 C.F.R. § 11.21

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 statement of facts and identify the USPTO Rules of Professional Conduct relevant to the facts.

Notes, amendments, and revision history

Amendments

[86 FR 28458, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28458, May 26, 2021]

§11.22. Disciplinary investigations.

37 C.F.R. § 11.22

(a)

The OED Director is authorized to investigate possible grounds for discipline. An investigation may be initiated when the OED Director receives a grievance, information or evidence from any source suggesting possible grounds for discipline. Neither unwillingness nor neglect by a grievant to prosecute a charge, nor settlement, compromise, or restitution with the grievant, shall in itself justify abatement of an investigation.

(b)

Any person possessing information or evidence concerning possible grounds for discipline of a practitioner may report the information or evidence to the OED Director. The OED Director may request that the report be presented in the form of an affidavit or declaration.

(c)

Notice to the OED Director. Upon receiving the notification required by § 11.24(a), 11.25(a), or 11.29(a), the OED Director shall obtain a certified copy of the record or order regarding such discipline, disqualification, conviction, or transfer. A certified copy of the record or order regarding the discipline, disqualification, conviction, or transfer shall be clear and convincing evidence that the practitioner has been disciplined, disqualified, convicted of a crime, or transferred to disability status by another jurisdiction.

(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 USPTO Rules of Professional Conduct.

(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 § 11.23(b) concerning such practitioner.

(h)

Disposition of investigation. Upon the conclusion of an investigation, the OED Director may take appropriate action, including but not limited to:

(1)

Closing the investigation without issuing a warning or taking disciplinary action;

(2)

Issuing a warning to the practitioner;

(3)

Instituting formal charges upon the approval of the Committee on Discipline;

(4)

Entering into a settlement agreement with the practitioner and submitting the same for the approval of the USPTO Director; or

(5)

Entering into a diversion agreement with the practitioner.

(i)

Closing investigation. 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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012; 78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021; 88 FR 45087, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012; 78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021; 88 FR 45087, July 14, 2023]

§11.23. Committee on Discipline.

37 C.F.R. § 11.23

(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.

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.24. Reciprocal discipline.

37 C.F.R. § 11.24

(a)

Notice to the OED Director. Within 30 days of being publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended by another jurisdiction, or 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, is excluded on consent, or has resigned in lieu of discipline or 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 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. A certified copy of the record or order regarding the discipline shall establish a prima facie case by clear and convincing evidence that the practitioner has been publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended, or disciplinarily disqualified by another jurisdiction. In addition to the actions identified in § 11.22(h) and (i), the OED Director may, 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 may 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 the complaint and request for notice and order, 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 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. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. After expiration of the period specified in paragraph (b)(3) of this section, the USPTO Director shall consider the record and shall impose the identical public censure, public reprimand, probation, disbarment, suspension, or disciplinary disqualification unless the practitioner demonstrates by clear and convincing evidence, 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, regardless of the evidentiary standard, in another jurisdiction or Federal agency or program that a practitioner, whether or not admitted in that jurisdiction, has committed misconduct shall establish a prima facie case by clear and convincing evidence that the practitioner has engaged in misconduct under § 11.804(h).

(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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021]

§11.25. Interim suspension and discipline based upon conviction of committing a serious crime.

37 C.F.R. § 11.25

(a)

Notice to the OED Director. Upon being convicted of a crime in a court of the United States, any State, or a foreign country, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same within 30 days from the date of such conviction. Notwithstanding the preceding sentence, a practitioner is not required to notify the OED Director of a traffic offense that did not involve the use of alcohol or a controlled substance, did not result in a fine in excess of $300, and did not result in the imposition of any other punishment. 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 may 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 may, in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the conviction of a serious crime. If the crime is not a serious crime, the OED Director may process the matter in the same manner as any other information or evidence of a possible violation of any USPTO Rule of Professional Conduct 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 issue a notice directed to the practitioner in accordance with § 11.35, 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 by clear and convincing evidence 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. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. If the USPTO Director determines that there is no genuine issue of material fact, the USPTO Director shall enter an appropriate final order regarding the OED Director's request for interim suspension regardless of the 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 the conditions set forth in § 11.60 no earlier than after 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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021]

§11.26. Settlement.

37 C.F.R. § 11.26

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.

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.27. Exclusion on consent.

37 C.F.R. § 11.27

(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. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. The OED Director may also file comments in response to the affidavit. If the affidavit is approved, 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)

[Reserved]

(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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]

§11.28. Incapacitated practitioners in a disciplinary proceeding.

37 C.F.R. § 11.28

(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, 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 by the practitioner to be transferred to disability inactive status if the motion is granted; and

(E)

Written agreement by the practitioner not to practice before the Office in patent, trademark, or other non-patent matters while in 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 in 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 (d) of this section. A practitioner in disability inactive status must obtain permission from the OED Director to engage in paralegal activity permitted under § 11.58(h). Permission will be granted only if the practitioner has complied with all the conditions of § 11.58 applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(h).

(b)

Motion for reactivation. Any practitioner transferred to disability inactive status in a disciplinary proceeding may file with the hearing officer a motion for reactivation once a year beginning at any time not less than one year after the initial effective date of inactivation, or once during any shorter interval provided by the order issued pursuant to paragraph (a)(2) of this section or any modification thereof. If the motion is granted, the disciplinary proceeding shall resume under such schedule as may be established by the hearing officer.

(c)

Contents of motion for reactivation. A motion by the practitioner for reactivation alleging that a practitioner has recovered from a prior disability or addiction shall be accompanied by all available medical reports or similar documents relating thereto. The hearing officer may require the practitioner to present such other information as is necessary.

(d)

OED Director's motion to resume disciplinary proceeding held in abeyance.

(1)

The OED Director, having good cause to believe a practitioner is no longer incapacitated, may file a motion requesting the hearing officer to terminate a prior order holding in abeyance any pending proceeding because of the practitioner's disability or addiction. The hearing officer shall decide the matter presented by the OED Director's motion hereunder based on the affidavits and other admissible evidence attached to the OED Director's motion and the practitioner's response. The OED Director bears the burden of showing by clear and convincing evidence that the practitioner is able to defend himself or herself. If there is any genuine issue as to one or more material facts, the hearing officer will hold an evidentiary hearing.

(2)

The hearing officer, upon receipt of the OED Director's motion under paragraph (d)(1) of this section, may direct the practitioner to file a response. If the hearing officer requires the practitioner to file a response, the practitioner must present clear and convincing evidence that the prior self-alleged disability or addiction continues to make it impossible for the practitioner to defend himself or herself in the underlying proceeding being held in abeyance.

(e)

Action by the hearing officer. If, in deciding a motion under paragraph (b) or (d) of this section, the hearing officer determines that there is good cause to believe the practitioner is not incapacitated from defending himself or herself, or is not incapacitated from practicing before the Office, the hearing officer shall take such action as is deemed appropriate, including the entry of an order directing the reactivation of the practitioner and resumption of the disciplinary proceeding.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]

§11.29. Reciprocal transfer or initial transfer to disability inactive status.

37 C.F.R. § 11.29

(a)

Notice to the OED Director—

(1)

Transfer to disability inactive status in another jurisdiction as grounds for reciprocal transfer by the Office. Within 30 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 Office has been transferred to disability inactive status in another jurisdiction, the OED Director shall obtain a certified copy of the order. If the OED Director finds that transfer to disability inactive status is appropriate, 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 30 days of being 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 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. If the OED Director finds that transfer to disability inactive status is appropriate, 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 40 days from the date of the notice, establishing by clear and convincing evidence a genuine issue of material fact supported by an affidavit and predicated upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this section 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)

Transfer to disability inactive status.

(1)

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. The USPTO Director may order the OED Director or the practitioner to supplement the record with further information or argument. After expiration of the period specified in paragraph (b)(3) of this section, and after completion of any supplemental hearings, 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 court-ordered placement under guardianship or conservatorship, unless the practitioner demonstrates by clear and convincing evidence, and the USPTO Director finds there is a genuine issue of material fact that:

(i)

The procedure 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 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;

(iii)

The imposition of the same disability status or transfer to disability status by the USPTO Director would result in grave injustice; or

(iv)

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.

(2)

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)(i) through (d)(1)(iv) 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 this section and § 11.58 and shall not engage in practice before the Office in patent, trademark, and other non-patent 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 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 in disability inactive status must obtain permission from the OED Director to engage in paralegal activity permitted under § 11.58(h). Permission will be granted only if the practitioner has complied with all the conditions of § 11.58 applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(h).

(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 court-ordered 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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]

§11.30. Participation in the USPTO Diversion Program.

37 C.F.R. § 11.30

(a)

Before or after a complaint under § 11.34 is filed, the OED Director may dispose of a disciplinary matter by entering into a diversion agreement with a practitioner. Diversion agreements may provide for, but are not limited to, law office management assistance, counseling, participation in lawyer assistance programs, and attendance at continuing legal education programs. Neither the OED Director nor the practitioner is under any obligation to propose or enter into a diversion agreement. To be an eligible party to a diversion agreement, a practitioner cannot have been disciplined by the USPTO or another jurisdiction within the past three years, except that discipline by another jurisdiction is not disqualifying if that discipline in another jurisdiction was based on the conduct forming the basis for the current investigation.

(b)

For a practitioner to be eligible for diversion, the conduct at issue must not involve:

(1)

The misappropriation of funds or dishonesty, deceit, fraud, or misrepresentation;

(2)

Substantial prejudice to a client or other person as a result of the conduct;

(3)

A serious crime as defined in § 11.1; or

(4)

A pattern of similar misconduct unless the misconduct at issue is minor and related to a chronic physical or mental health condition or disease.

(c)

The diversion agreement is automatically completed when the terms of the agreement have been fulfilled. A practitioner's successful completion of the diversion agreement bars the OED Director from pursuing discipline based on the conduct set forth in the diversion agreement.

(d)

A material breach of the diversion agreement shall be cause for termination of the practitioner's participation in the diversion program. Upon a material breach of the diversion agreement, the OED Director may pursue discipline based on the conduct set forth in the diversion agreement.

Notes, amendments, and revision history

Amendments

[88 FR 45087, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[88 FR 45087, July 14, 2023]

§11.31. Reserved

37 C.F.R. § 11.31

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.32. Instituting a disciplinary proceeding.

37 C.F.R. § 11.32

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), the OED Director, after complying where necessary with the provisions of 5 U.S.C. 558(c), may convene a meeting of a panel of the Committee on Discipline. If convened, the panel of the Committee on Discipline shall then determine as specified in § 11.23(b) whether there is probable cause to bring disciplinary charges. If the panel of the Committee on Discipline determines that probable cause exists to bring charges, the OED Director may institute a disciplinary proceeding by filing a complaint under § 11.34.

Notes, amendments, and revision history

Amendments

[78 FR 20201, Apr. 3, 2013]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[78 FR 20201, Apr. 3, 2013]

§11.33. Reserved

37 C.F.R. § 11.33

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.34. Complaint.

37 C.F.R. § 11.34

(a)

A complaint instituting a disciplinary proceeding shall—

(1)

Name the person who is the subject of the complaint 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 USPTO Rules of Professional Conduct that form the basis for the disciplinary proceeding so that the respondent is able to adequately prepare a defense.

(c)

The complaint shall be filed in the manner prescribed by the USPTO Director. The term “filed” means the delivery, mailing, or electronic transmission of a document to a hearing officer or designee in connection with a disciplinary complaint or related matter.

(d)

Time for filing a complaint. A complaint shall be filed within one year after the date on which the OED Director receives a grievance forming the basis of the complaint. No complaint shall be filed more than ten years after the date on which the misconduct forming the basis for the proceeding occurred.

(e)

Tolling agreements. The one-year period for filing a complaint under paragraph (d) of this section shall be tolled if the involved practitioner and the OED Director agree in writing to such tolling.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012; 78 FR 20201, Apr. 3, 2013; 86 FR 28460, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012; 78 FR 20201, Apr. 3, 2013; 86 FR 28460, May 26, 2021]

§11.35. Service of complaint.

37 C.F.R. § 11.35

(a)

A complaint may be served on a respondent by any of the following methods:

(1)

By delivering a copy of the complaint personally to the respondent, in which case the individual who delivers 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 Priority Mail Express®, first-class mail, or any delivery service that provides confirmation of 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 not registered 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 the 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 not registered at the last address for the respondent known to the OED Director.

(b)

If a copy of the complaint cannot be delivered to the respondent through any one of the procedures in paragraph (a) of this section, the OED Director shall serve the respondent by causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in which case the time for filing an answer shall be 30 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 § 11.36(d), 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 may 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.

Notes, amendments, and revision history

Amendments

[86 FR 28460, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28460, May 26, 2021]

§11.36. Answer to complaint.

37 C.F.R. § 11.36

(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.

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.37. Reserved

37 C.F.R. § 11.37

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.38. Contested case.

37 C.F.R. § 11.38

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.

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.39. Hearing officer; responsibilities; review of interlocutory orders; stays.

37 C.F.R. § 11.39

(a)

Designation. A hearing officer designated by the USPTO Director shall conduct disciplinary proceedings as provided by this part.

(b)

Independence of the hearing officer.

(1)

A hearing officer designated 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 designated 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 designated 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 designated in accordance with paragraph (a) of this section shall be either an administrative law judge appointed under 5 U.S.C. 3105 or an attorney designated under 35 U.S.C. 32. The hearing officer shall possess suitable experience and training in 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 (e)(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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]

§11.40. Representative for OED Director or respondent.

37 C.F.R. § 11.40

(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.

(c)

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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]

§11.41. Filing of papers.

37 C.F.R. § 11.41

(a)

The provisions of §§ 1.8 and 2.197 of this chapter 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. The term “filed” means the delivery, mailing, or electronic transmission of a document to a hearing officer or designee in connection with a disciplinary complaint or related matter.

(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 Priority Mail Express®, or by other means.

Notes, amendments, and revision history

Amendments

[69 FR 35452, June 24, 2004, as amended at 79 FR 63042, Oct. 22, 2014; 86 FR 28461, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[69 FR 35452, June 24, 2004, as amended at 79 FR 63042, Oct. 22, 2014; 86 FR 28461, May 26, 2021]

§11.42. Service of papers.

37 C.F.R. § 11.42

(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, Priority Mail Express®, 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, Priority Mail Express®, 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 for 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, Priority Mail Express®, 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 Priority Mail Express®.

(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.

Notes, amendments, and revision history

Amendments

[79 FR 63042, Oct. 22, 2014]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[79 FR 63042, Oct. 22, 2014]

§11.43. Motions before a hearing officer.

37 C.F.R. § 11.43

Motions, including all prehearing motions commonly filed under the Federal Rules of Civil Procedure, shall be served on the opposing party and filed with the hearing officer. Each motion shall set forth a basis for the requested relief, including a concise statement of the facts and supporting reasons, along with a citation of the authorities upon which the movant relies. For any motion for summary judgment or motion to dismiss, the basis shall be provided in a written memorandum accompanying the motion. All motions and memoranda shall be double-spaced and written in 12-point font unless otherwise ordered by the hearing officer. Unless the hearing officer extends the time for good cause, the opposing party shall serve and file a memorandum in response to any motion for summary judgment or motion to dismiss within 21 days of the date of service of the motion, and the moving party may file a reply memorandum within 14 days after service of the opposing party's responsive memorandum. Every motion must include a statement that the moving party or attorney for the moving party has conferred with the opposing party or attorney for the opposing party in a good-faith effort to resolve the issues raised by the motion and whether the motion is opposed. 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.

Notes, amendments, and revision history

Amendments

[88 FR 45088, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[88 FR 45088, July 14, 2023]

§11.44. Hearings.

37 C.F.R. § 11.44

(a)

The hearing officer shall preside over hearings in disciplinary proceedings. After the time for filing an answer has elapsed, 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. The hearing officer may order a hearing to be conducted by remote videoconference in whole or in part. Oral hearings will be 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 also 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 issued by the hearing officer, the hearing officer may deem the respondent to have waived the opportunity for a hearing and may proceed with the hearing in the absence of the respondent. Where the respondent does not appear, the hearing officer may strike the answer or any other pleading, deem the respondent to have admitted the facts as alleged in the complaint, receive evidence in aggravation or mitigation, enter a default judgment, and/or enter an initial decision imposing discipline on 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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021; 88 FR 45088, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021; 88 FR 45088, July 14, 2023]

§11.45. Amendment of pleadings.

37 C.F.R. § 11.45

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.

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.46-11.48. Reserved

37 C.F.R. § 11.46-11.48

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.49. Burden of proof.

37 C.F.R. § 11.49

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.

Notes, amendments, and revision history

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

§11.50. Evidence.

37 C.F.R. § 11.50

(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, speculative, 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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28462, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28462, May 26, 2021]

§11.51. Depositions.

37 C.F.R. § 11.51

(a)

Depositions for use at the hearing in lieu of the personal appearance of a witness before the hearing officer may be taken by the respondent or the OED Director by agreement; or upon a showing of good cause and with the approval of, and under such conditions as may be deemed appropriate by, the hearing officer. If a motion to take a deposition is granted, the hearing officer shall authorize a subpoena to be issued pursuant to 35 U.S.C. 24. If the deponent is a USPTO employee, the respondent shall comply with the requirements of part 104 of this chapter.

(b)

A party seeking a deposition shall give reasonable notice of not less than 14 days unless a shorter period is agreed upon by the parties or authorized by the hearing officer. The notice shall state the date, time, and place of the deposition.

(c)

Depositions may be taken upon oral or written questions before any officer authorized to administer an oath or affirmation in the place where the deposition is to be taken. Deposition expenses shall be borne by the party at whose instance the deposition is taken.

(d)

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 Priority Mail Express® not less than five days before the date of the taking of the deposition unless the parties mutually agree otherwise.

(e)

Testimony by deposition may be recorded by audiovisual means provided that:

(1)

The notice of deposition states that the method of recording is audiovisual, and

(2)

A written transcript of the deposition is prepared by a court reporter who was present at the deposition and recorded the testimony.

(f)

A party on whose behalf a deposition is taken shall file with the hearing officer a copy of a transcript of the deposition signed by a court reporter and a copy of any audiovisual recording and shall serve one copy of the transcript and any audiovisual recording upon the opposing party.

(g)

Depositions may not be taken to obtain discovery, except as provided for in paragraph (h) of this section.

(h)

When the OED Director and the respondent agree in writing, a discovery 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 into evidence before the hearing officer unless he or she orders the deposition admitted into 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.

Notes, amendments, and revision history

Amendments

[86 FR 28462, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28462, May 26, 2021]

§11.52. Written discovery.

37 C.F.R. § 11.52

(a)

After an answer is filed under § 11.36, a party may file a motion under § 11.43 seeking authorization to propound written discovery of relevant evidence, including:

(1)

A reasonable number of requests for admission, including requests for admission as to the genuineness of documents;

(2)

A reasonable number of interrogatories;

(3)

A reasonable number of documents to be produced for inspection and copying; and

(4)

A reasonable number of things other than documents to be produced for inspection.

(b)

The motion shall include a copy of the proposed written discovery requests 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. Any response shall include specific objections to each request, if any. Any objection not raised in the response will be deemed to have been waived.

(c)

The hearing officer may authorize any discovery requests the hearing officer deems to be reasonable and relevant. Unless the hearing officer orders otherwise, within 5 days of the hearing officer authorizing any discovery requests, the moving party shall serve a copy of the authorized discovery requests to the opposing party and, within 30 days of such service, the opposing party shall serve responses to the authorized discovery requests.

(d)

Discovery shall not be authorized under paragraph (c) of this section of any matter that:

(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 before the Office;

(4)

Relates to experts;

(5)

Is privileged; or

(6)

Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or other representative of a party.

(e)

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.

(f)

A request for admission will be deemed admitted if the party to whom the request is directed fails to respond or object to the request within the time allowed.

(g)

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,

(iii)

A complete statement of all opinions to which the expert is expected to testify and the basis and reasons for them, and

(iv)

A description of all facts or data considered by the expert in forming the opinions; and

(4)

Copies of memoranda reflecting the respondent's own statements to administrative representatives.

Notes, amendments, and revision history

Amendments

[86 FR 28462, May 26, 2021, as amended at 88 FR 45088, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28462, May 26, 2021, as amended at 88 FR 45088, July 14, 2023]

§11.53. Proposed findings and conclusions; post-hearing memorandum.

37 C.F.R. § 11.53

(a)

Except in cases in which the respondent has failed to answer the complaint or the amended complaint, or appear at a hearing, 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.

(b)

The OED Director shall serve and file a post-hearing memorandum within 30 days after the hearing transcript has been filed with the hearing officer. The respondent shall have 30 days after service of the OED Director's post-hearing memorandum to file a responsive post-hearing memorandum. The OED Director may file a reply memorandum within 21 days after service of any responsive post-hearing memorandum.

(c)

The respondent shall serve and file a post-hearing memorandum with respect to any asserted affirmative defenses, or other matters for which the respondent bears the burden of proof, within 30 days after the hearing transcript has been filed with the hearing officer. The OED Director shall have 30 days after service of the respondent's post-hearing memorandum to file a responsive post-hearing memorandum. The respondent may file a reply memorandum within 21 days after service of any responsive post-hearing memorandum.

(d)

The OED Director's and the respondent's responsive post-hearing memoranda shall be limited to 50 pages, 12-point font, double-spacing, and one-inch margins, and the reply memoranda shall be limited to 25 pages, 12-point font, double-spacing, and one-inch margins, unless otherwise ordered by the hearing officer.

(e)

The hearing officer may extend the time for filing a post-hearing memorandum and may also increase the page limits, for good cause shown.

Notes, amendments, and revision history

Amendments

[86 FR 28463, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28463, May 26, 2021]

§11.54. Initial decision of hearing officer.

37 C.F.R. § 11.54

(a)

The hearing officer shall make an initial decision in the case. The decision will include:

(1)

A statement of findings of fact and conclusions of law, as well as the reasons or bases for those findings and conclusions with specific 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, of probation, or an order dismissing the complaint. The order also may impose any conditions deemed appropriate under the circumstances.

(b)

The initial decision of the hearing officer shall explain the reason for any default judgment, reprimand, suspension, exclusion, or probation and shall explain any conditions imposed with discipline. In determining any sanction, the following four factors shall be considered if they are applicable:

(1)

Whether the practitioner has violated a duty owed to a client, the public, the legal system, or 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.

(c)

The hearing officer shall transmit a copy of the initial decision to the OED Director and to the respondent and shall transmit the record of the proceeding to the OED Director within 14 days, or as soon as practicable if thereafter, of the date of the initial decision.

(d)

In the absence of an appeal to the USPTO Director, the decision of the hearing officer will, without further proceedings, become the final decision of the USPTO Director 30 days from the date of the decision of the hearing officer.

Notes, amendments, and revision history

Amendments

[86 FR 28463, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28463, May 26, 2021]

§11.55. Appeal to the USPTO Director.

37 C.F.R. § 11.55

(a)

Within 14 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 by filing a notice of appeal. The notice shall be filed with the General Counsel for the USPTO Director at the address set forth in § 1.1(a)(3)(iv) of this chapter and served on the opposing party. If both parties file notices of appeal, the first to file is deemed the appellant for purposes of this rule. If both file on the same day, the respondent is deemed the appellant.

(b)

Any notice of cross-appeal shall be filed within 14 days after the date of service of the notice of appeal.

(c)

After a notice of appeal is filed, the OED Director shall transmit the entire record to the USPTO Director and provide a copy to the respondent.

(d)

The appellant's brief shall be filed within 30 days after the date of service of the record.

(e)

Any appellee's brief shall be filed within 30 days after the date of service of the appellant's brief.

(f)

The appellant's and appellee's briefs shall comply with the Federal Rules of Appellate Procedure 28(a)(2), (3), (5), (10), and 32(a)(4)-(7) unless otherwise ordered by the USPTO Director.

(g)

Any reply brief shall be filed within 14 days after the date of service of the appellee's brief and, unless otherwise ordered by the USPTO Director, shall comply with Rules 28(c) and 32(a)(4)-(7) of the Federal Rules of Appellate Procedure.

(h)

If a cross-appeal has been filed, the parties shall comply with Rules 28.1(c), (e), and (f) of the Federal Rules of Appellate Procedure unless otherwise ordered by the USPTO Director.

(i)

References to the record in the briefs must be to the pages of the certified record.

(j)

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.

(k)

The USPTO Director may refuse entry of a nonconforming brief.

(l)

The USPTO Director will decide the appeal on the record made before the hearing officer.

(m)

Unless the USPTO Director permits, no further briefs or motions shall be filed.

(n)

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 any earlier by due diligence.

(o)

Motions shall be served on the opposing party and filed with the USPTO Director. Each motion shall be accompanied by a written memorandum setting forth a concise statement of the facts and supporting reasons, along with a citation of the authorities upon which the movant relies. Unless extended by the USPTO Director for good cause, within 21 days of the date of service of the motion, an opposing party shall serve and file a response to the motion, and the moving party may file a reply within 14 days after service of the opposing party's responsive memorandum. All memoranda shall comply with Rules 32(a)(4)-(6) of the Federal Rules of Appellate Procedure unless otherwise ordered by the USPTO Director. Every motion must include a statement that the moving party or attorney for the moving party has conferred with the opposing party or attorney for the opposing party in a good faith effort to resolve the issues raised by the motion and whether the motion is opposed. If, prior to a decision on the motion, the parties resolve issues raised by a motion presented to the USPTO Director, the parties shall promptly notify the USPTO Director.

(p)

The USPTO Director may extend the time for filing a brief upon the granting of a motion setting forth good cause warranting the extension.

Notes, amendments, and revision history

Amendments

[86 FR 28463, May 26, 2021, as amended at 88 FR 45088, July 14, 2023]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28463, May 26, 2021, as amended at 88 FR 45088, July 14, 2023]

§11.56. Decision of the USPTO Director.

37 C.F.R. § 11.56

(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 20 days from the date of entry of the decision. The other party may file a response to the request for reconsideration within 14 days of the filing of the request. No request for reconsideration or modification shall be granted unless the request is based on newly discovered evidence or clear 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.

Notes, amendments, and revision history

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28464, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28464, May 26, 2021]

§11.57. Review of final decision of the USPTO Director.

37 C.F.R. § 11.57

(a)

Review of the final decision by the USPTO Director in a disciplinary case may be had by a petition filed in accordance with 35 U.S.C. 32. Any such petition shall be filed within 30 days after the date of the final decision.

(b)

The respondent must serve the USPTO Director with the petition. The respondent must serve the petition in accordance with Rule 4 of the Federal Rules of Civil Procedure and § 104.2 of this chapter.

(c)

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.

Notes, amendments, and revision history

Amendments

[86 FR 28464, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28464, May 26, 2021]

§11.58. Duties of disciplined practitioner or practitioner in disability inactive status.

37 C.F.R. § 11.58

(a)

Compliance requirements. An excluded or suspended practitioner will not be automatically reinstated at the end of his or her period of exclusion or suspension. Unless otherwise ordered by the USPTO Director, an excluded or suspended practitioner must comply with the provisions of this section and § 11.60 to be reinstated. A practitioner transferred to disability inactive status must comply with the provisions of this section and § 11.29 to be reinstated unless otherwise ordered by the USPTO Director. Failure to comply with the provisions of this section may constitute grounds for denying reinstatement and cause for further action.

(b)

Practice prohibitions. Any excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall:

(1)

Not engage in practice before the Office in patent, trademark, or other non-patent matters;

(2)

Not advertise or otherwise hold himself or herself out as authorized or able to practice before the Office; and

(3)

Take all necessary steps to remove any advertisements or other representations that would reasonably suggest that the practitioner is authorized or able to practice before the Office.

(c)

Thirty-day requirements. Within 30 days after the date of the order of exclusion, suspension, or transfer to disability inactive status, an excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall:

(1)

Withdraw from representation in all matters pending before the Office;

(2)

Provide written notice of the order of exclusion, suspension, or transfer to disability inactive status to all State and Federal jurisdictions and administrative agencies to which the practitioner is admitted to practice;

(3)

Provide to all clients having immediate or prospective business before the Office in patent, trademark, or other non-patent matters:

(i)

Written notice of the order of exclusion, suspension, or transfer to disability inactive status, that calls attention to the practitioner's lack of authority to act as a practitioner after the effective date of the order; specifies any urgent dates for the client's matters; and advises the client to act promptly to seek legal advice elsewhere if the client is not already represented by another practitioner;

(ii)

Any papers or other property to which the clients are entitled, or schedule a suitable time and place where the papers and other property may be obtained, and call attention to any urgency for obtaining the papers or other property; and

(iii)

Any unearned fees for practice before the Office and any advanced costs not expended;

(4)

Provide written notice of the order of exclusion, suspension, or transfer to disability inactive status to all opposing parties in matters pending before the Office and provide in the notice a mailing address for each client of the practitioner who is a party in the pending matter; and

(5)

Serve all notices required by paragraphs (c)(2), (c)(3), and (c)(4) of this section by certified mail, return receipt requested, unless the intended recipient is located outside the United States. Where the intended recipient is located outside the United States, all notices shall be sent by a delivery service that provides the ability to confirm delivery or attempted delivery.

(d)

Forty-five-day requirements. Within 45 days after the date of the order of exclusion, suspension, or transfer to disability inactive status, an excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall file with the OED Director an affidavit of compliance certifying that the practitioner has fully complied with the provisions of the order, with this section, and with § 11.116 for withdrawal from representation. Appended to the affidavit of compliance shall be:

(1)

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;

(2)

A schedule showing the location, title, and account number 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;

(3)

A schedule describing, and evidence showing, 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;

(4)

A list of all State, Federal, and administrative jurisdictions to which the practitioner is admitted to practice; and

(5)

A description of the steps taken to remove any advertisements or other representations that would reasonably suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office.

(e)

Requirement to update correspondence address. 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.

(f)

Limited recognition for winding up practice. Unless otherwise provided by an order of the USPTO Director, an excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall not engage in any practice before the Office. The USPTO Director may grant such a practitioner limited recognition for a period of no more than 30 days to conclude work on behalf of a client on any matters pending before the Office. If such work cannot be concluded, the practitioner shall so advise the client so that the client may make other arrangements.

(g)

Required records. An excluded or suspended practitioner, or practitioner transferred to disability inactive status, shall retain copies of all notices sent and maintain records of the various steps taken under this section. The practitioner shall provide proof of compliance as a condition precedent to the granting of any petition for reinstatement.

(h)

Aiding another practitioner while suspended or excluded; acting as a paralegal. An excluded or suspended practitioner, or practitioner in disability inactive status, may act as a paralegal for a supervising practitioner or perform other services for the supervising practitioner that are normally performed by laypersons, provided:

(1)

The practitioner is under the direct supervision of the supervising practitioner;

(2)

The practitioner is a salaried employee of—

(i)

The supervising practitioner,

(ii)

The supervising practitioner's law firm, or

(iii)

A client-employer who employs the supervising practitioner as a salaried employee;

(3)

The supervising practitioner assumes full professional responsibility to any client and the Office for any work performed by the practitioner for the supervising practitioner; and

(4)

The practitioner does not—

(i)

Communicate directly in writing, orally, or otherwise with a client, or prospective client, of the supervising practitioner in regard to any immediate or prospective business before the Office;

(ii)

Render any legal advice or any legal services in regard to any immediate or prospective business before the Office; or

(iii)

Meet in person with, regardless of the presence of the supervising practitioner—

(A)

Any Office employee in connection with the prosecution of any patent, trademark, or other matter before the Office;

(B)

Any client, or prospective client, of the supervising practitioner, the supervising practitioner's law firm, or the client-employer of the supervising practitioner regarding immediate or prospective business before the Office; or

(C)

Any witness or potential witness whom the supervising practitioner, the supervising practitioner's law firm, or the supervising 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.

(i)

Reinstatement after aiding another practitioner while suspended or excluded. When an excluded or suspended practitioner, or practitioner transferred to disability inactive status, acts as a paralegal or performs services under paragraph (h) of this section, the practitioner shall not thereafter be reinstated to practice before the Office unless:

(1)

The practitioner has filed with the OED Director an affidavit that—

(i)

Explains in detail the precise nature of all paralegal or other services performed by the practitioner, and

(ii)

Shows by clear and convincing evidence that the practitioner has complied with the provisions of this section and all USPTO Rules of Professional Conduct; and

(2)

The supervising practitioner has filed with the OED Director a written statement that—

(i)

States that the supervising practitioner has read the affidavit required by paragraph (i)(1) of this section and that the supervising practitioner believes every statement in the affidavit to be true, and

(ii)

States that the supervising practitioner believes that the excluded or suspended practitioner, or practitioner transferred to disability inactive status, has complied with paragraph (h) of this section.

Notes, amendments, and revision history

Amendments

[86 FR 28464, May 26, 2021]

Source

Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.

Authority

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

Source

Source: 69 FR 35452, June 24, 2004, unless otherwise noted.

Amendments

[86 FR 28464, May 26, 2021]