[Federal Register Volume 60, Number 14 (Monday, January 23, 1995)]
[Proposed Rules]
[Pages 4395-4397]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-1602]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 10
[Docket No. 930366-4319]
RIN 0651-AA65
Cross-Appeals in Patent and Trademark Office Disciplinary
Proceedings
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Proposed rulemaking.
-----------------------------------------------------------------------
SUMMARY: On July 21, 1993, the Patent and Trademark Office (PTO)
proposed amending a rule of practice in practitioner disciplinary
proceedings. 58 FR 38994. The proposed rule change provides for a time
period for a party to a disciplinary proceeding to file a cross-appeal,
after the other party (the respondent or the Director of the Office of
Enrollment and Discipline) to the proceeding has appealed from the
initial decision of the administrative law judge (ALJ) to the
Commissioner. Currently, PTO rules do not provide for such a time
period. A party in a disciplinary proceeding may be interested in
appealing only if the other party has appealed. Allowing a time period
for filing a cross-appeal will give parties to disciplinary cases more
flexibility after an initial decision by the administrative
[[Page 4396]] law judge and will avoid the necessity of filing
contingent appeal simply to preserve rights in the event the other
party files an appeal.
One comment to the rule change proposed on July 21, 1993, was
received suggesting substantive changes. This second notice adopts that
suggested change.
DATES: Written comments must be received on or before February 22, 1995
to ensure consideration. An oral hearing will not be conducted.
ADDRESSES: Address written comments to Commissioner of Patents and
Trademarks, Box OED, Washington, DC 20231, marked to the attention of
Harry I. Moatz. Written comments will be available for public
inspection in Suite 518, on the 5th floor of Crystal Park I, located at
2011 Crystal Drive, Arlington, Virginia.
FOR FURTHER INFORMATION CONTACT:
Harry I. Moatz by telephone at (703) 308-5273 or by mail marked to his
attention and addressed to Commissioner of Patents and Trademarks, Box
OED, Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION: A Notice of Proposed Rulemaking was
published in the Federal Register (58 FR 38994) on July 21, 1993, and
in the Official Gazette of the PTO (1153 Off. Gaz. 32) on August 10,
1993. Comments were due August 20, 1993. One comment was received. The
comment suggested a substantive change to the original proposed
rulemaking. The PTO has adopted the change and is now publishing a
second notice requesting comments on the amended notice.
Pursuant to 37 CFR 10.132 et seq., the Director of the Office of
Enrollment and Discipline within the PTO may initiate a disciplinary
proceeding against a practitioner. If the proceeding is contested by
the practitioner and the Director continues to prosecute, an ALJ for
the Department of Commerce enters an initial decision which includes
findings of fact, conclusions of law and an order. 37 CFR Sec. 10.154.
Either party to the proceeding may appeal from the initial decision
of the ALJ to the Commissioner within thirty (30) days of the date of
the decision. 37 CFR Sec. 10.155(a). However, prior to this proposed
rule change, Sec. 101.155(a) did not provide for the filing of a cross-
appeal.
With regard to interference proceedings, 37 CFR Sec. 1.304(a)
addresses the filing of cross-appeals by stating in pertinent part
that:
the time for filing a cross-appeal [to the Court of Appeals for the
Federal Circuit] or cross-action [in a district court] expires (1)
14 days after service of the notice of appeal or the summons and
complaint or (2) two months after the date of decision of the Board
of Patent Appeals and Interferences, whichever is later.
The proposed rule change is similar to the cross-appeal authorized in
interference proceedings.
Response to and Analysis of Comment
The single comment suggested that the second sentence of the
proposed Sec. 10.155(a) be modified by adding ``pursuant to
Sec. 10.142'' after ``(1) 14 days after service of the appeal'' to make
clear that the period for filing a cross-appeal or reply brief runs
from service pursuant to Sec. 10.142. The suggestion is being adopted.
The comment further suggested that the fifth sentence in the rule
proposed on July 21, 1993, be separated into three new sentences. The
first and second new sentences make clear that ``the other party to an
appeal or cross-appeal may file a reply brief,'' and that a ``reply
brief by the respondent'' is to be ``served in duplicate with the
Director.'' The third new sentence provides a date certain for filing
any reply brief by avoiding uncertainty as to when ``receipt'' of an
appeal, cross-appeal or copy thereof occurs, and by relying on the date
of ``service pursuant to Sec. 10.142'' of an appeal, cross-appeal, or a
copy thereof. The suggestions have been adopted in the proposed rules.
Other Considerations
This rule change conforms with the requirements of the Regulatory
Flexibility Act (5 U.S.C. 601et set.), Executive Orders 12612 and
12866, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
The General Counsel of the Department of Commerce has certified to
the Chief Counsel for Advocacy, Small Business Administration, that the
rule change will not have a significant economic impact on a
substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)). The principal impact of the rule change is to provide a
time period to file cross-appeal in a PTO disciplinary proceeding. See
the original notice of proposed rulemaking published in the Federal
Register, 58 FR at 38996.
The PTO has determined that the rule change has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612. The Office of
Management has determined that the rule change is not significant for
the purposes of Executive Order 12866.
The rule change will not impose a burden under the Paperwork
Reduction Act of 1980, 44 U.S.C. 3501 et seq., since no record keeping
or reporting requirements within the coverage of the Act are placed
upon the public.
List of Subjects in 37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set out in the preamble, and pursuant to the
authority contained in 35 U.S.C. 6, the PTO proposes to amend 37 CFR
part 10 as follows, wherein deletions are indicated by brackets ([ ])
and additions by arrows (><): part="" 10--representation="" of="" others="" before="" the="" patent="" and="" trademark="" office="" 1.="" the="" authority="" citation="" for="" 37="" cfr="" part="" 10="" would="" continue="" to="" read="" as="" follows:="" authority:="" 5="" u.s.c.="" 500;="" 15="" u.s.c.="" 1123;="" 35="" u.s.c.="" 6,="" 31,="" 32,="" 41.="" 2.="" section="" 10.155="" is="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 10.155="" appeal="" to="" the="" commissioner.="" (a)="" within="" thirty="" (30)="" days="" from="" the="" date="" of="" the="" initial="" decision="" of="" the="" administrative="" law="" judge="" under="" sec.="" 10.154,="" either="" party="" may="" appeal="" to="" the="" commissioner.="">If an appeal is taken, the time for filing
a cross-appeal expires (1) 14 days after the date of service of the
appeal pursuant to Sec. 10.142 or (2) 30 days after the date of the
initial decision of the administrative law judge, whichever is later.< an="" appeal="">or cross appeal< by="" the="" respondent="" will="" be="" filed="" and="" served="" with="" the="" director="" in="" duplicate="" and="" will="" include="" exceptions="" to="" the="" decisions="" of="" the="" administrative="" law="" judge="" and="" supporting="" reasons="" for="" those="" exceptions.="" if="" the="" director="" files="" the="" appeal="">or cross-appeal<, the="" director="" shall="" serve="">on the other party< a="" copy="" of="" the="" appeal="">or
cross-appeal<.>The other party to an appeal or cross-appeal may file a
reply brief. A respondent's reply brief shall be filed and served in
duplicate with the Director. The time for filing any reply brief
expires< [within]="" thirty="" (30)="" days="" after="">the date of< [receipt]="">service pursuant to Sec. 10.142< of="" an="" appeal="">, cross-appeal< or="" copy="" thereof[,="" the="" other="" party="" may="" file="" a="" reply="" brief,="" in="" duplicate="" with="" the="" director].="" if="" the="" director="" files="" [the]="">a< reply="" brief,="" the="" director="" shall="" serve="">on the other party< a="" copy="" of="" the="" reply="" brief.="" upon="" the="" filing="" of="" an="" appeal="">, cross appeal, if any,< and="" [a]="" reply="" brief="">s<, if="" any,="" the="" director="" shall="" transmit="" the="" entire="" record="" to="" the="" commissioner.="" *="" *="" *="" *="" *="" [[page="" 4397]]="" dated:="" january="" 13,="" 1995.="" michael="" k.="" kirk,="" deputy="" assistant="" secretary="" of="" commerce="" and="" deputy="" commissioner="" of="" patents="" and="" trademarks.="" [fr="" doc.="" 95-1602="" filed="" 1-20-95;="" 8:45="" am]="" billing="" code="" 3510-16-m="">