01-21480. Interpretation of Registration of Agents and Representative for Director of Enrollment and Discipline in Disciplinary Proceedings

AGENCY:

Patent and Trademark Office, Commerce.

ACTION:

Interpretation of regulation.

SUMMARY:

The United States Patent and Trademark Office (USPTO or “Office”) implements an interpretation of certain regulatory provisions. These provisions concern the composition and operations of the Committee on Discipline and representation of the Director in disciplinary cases. The interpretation is necessary in view of the recent creation of the Office of General Counsel at the USPTO. The Patent and Trademark Office Efficiency Act (PTOEA) reestablished the Patent and Trademark Office as the United States Patent and Trademark Office, a performance-based organization with responsibility for its own operations. Consequently, the Office has responsibility for many functions formerly provided by the Department of Commerce.

EFFECTIVE DATE:

The interpretation is issued August 24, 2001.

ADDRESSES:

Director of the United States Patent and Trademark Office, Washington, D.C. 20231

FOR FURTHER INFORMATION CONTACT:

Harry Moatz, by mail addressed to United States Patent and Trademark Office, Box OED, Washington, DC 20231, (Attn: OED Director) or by facsimile transmission to [phone], or by electronic mail at [e-mail].

SUPPLEMENTARY INFORMATION:

37 CFR 10.140(b) relates to whom within the USPTO represents the Director of Enrollment and Discipline (OED Director) in disciplinary proceedings, and who shall be available as counsel to the Director of the United States Patent and Trademark Office (USPTO Director) in deciding such proceedings. For example, it states that at least two associate solicitors shall be designated to represent the OED Director. It also states that the Solicitor and Deputy Solicitor shall advise the USPTO Director.

Additionally, the last sentence of 37 CFR 10.4(b) identifies the USPTO employees that shall not participate in rendering a decision on disciplinary changes. Among those identified as not participating in rendering decisions are associate and assistant solicitors of the Office of the Solicitor. In addition, the PTOEA designated the head of the USPTO as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. 35 U.S.C. 3(a)(1).

As a result, it is necessary and appropriate to interpret the last sentence of § 10.4(b) and § 10.140(b) in view of this reorganization. Because these are interpretive statements of rules, they are exempt from notice and comment rulemaking under 5 U.S.C. 553(b)(3)(A). For the reasons set forth in the preamble, the United States Patent and Trademark Office interprets §§ 10.4(b) and 10.140(b) as follows:

The last sentence of § 10.4(b) provides, “When charges are brought against a practitioner, no member of the Committee on Discipline, employee under the direction of the Director, or associate solicitor or assistant solicitor in the Office of the Solicitor shall participate in rendering a decision on the charges.” This sentence is construed as providing that when charges are brought against a practitioner, the designated attorneys in the Office of General Counsel (including assistant and associate solicitors, and associate counsel) shall not participate in rendering a decision on the charges.

The first sentence of § 10.140(b) provides, “The Commissioner shall designate at least two associate solicitors in the Office of the Solicitor to act as representatives for the Director in disciplinary proceedings.” This sentence is construed as authorizing the USPTO Director to designate at least two attorneys (including assistant and associate solicitors, and associate counsel) in the Office of General Counsel to act as representatives for the OED Director in disciplinary proceedings.

The second sentence of § 10.140(b) provides, “In prosecuting disciplinary proceedings, the designated associate solicitors shall not involve the Solicitor or the Deputy Solicitor.” This sentence is construed as providing that in prosecuting disciplinary proceedings, the designated attorneys in the Office of General Counsel (including assistant and associate solicitors, and associate counsel) shall not involve the General Counsel or the Deputy General Counsel for General Law.

The third sentence of § 10.140(b) provides, “The Solicitor and the Deputy Solicitor shall remain insulated from the investigation and prosecution of all disciplinary proceedings in order that they shall be available as counsel to the Commissioner in deciding disciplinary proceedings.” This is construed as providing that the General Counsel and the Deputy General Counsel for General Law shall remain insulated 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. However, the Deputy General Counsel for Intellectual Property Law and Solicitor shall not remain insulated from the investigation and prosecution of disciplinary proceedings, and thus shall not be available to counsel the USPTO Director in deciding such proceedings.

Dated: August 20, 2001.

Nicholas P. Godici,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.