10.153 Proposed findings and conclusions;

post-hearing memorandum.

10.154 Initial decision of administrative law judge.

10.155 Appeal to the Commissioner. 10.156 Decision of the Commissioner. 10.157 Review of Commissioner's final decision.

10.158 Suspended or excluded practitioner. 10.159 Notice of suspension or exclusion. 10.160 Petition for reinstatement.

10.161 Savings clause.

10.162-10.169 [Reserved] 10.170 Suspension of rules.

AUTHORITY: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41.

SOURCE: 50 FR 5172, Feb. 6, 1985, unless otherwise noted.

§ 10.1 Definitions.

This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office. Nothing in this part shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the Patent and Trademark Office to accomplish its Federal objectives. Unless otherwise clear from the context, the following definitions apply to this part:

(a) Affidavit means affidavit, declaration under 35 U.S.C. 25 (see §1.68 and §2.20 of this subchapter), or statutory declaration under 28 U.S.C. 1746.

(b) Application includes an application for a design, plant, or utility patent, an application to reissue any patent, and an application to register a trademark.

(c) Attorney or lawyer means an individual who is a member in good standing of the bar of any United States court or the highest court of any State.

A "non-lawyer” is a person who is not an attorney or lawyer.

(d) Canon is defined in §10.20(a).

(e) Confidence is defined in § 10.57(a). (f) Differing interests include every interest that may adversely affect either the judgment or the loyalty of a practitioner to a client, whether it be a conflicting, inconsistent, diverse, or other interest.

(g) Director means the Director of Enrollment and Discipline.

(h) Disciplinary Rule is defined in § 10.20(b).

(i) Employee of a tribunal includes all employees of courts, the Office, and other adjudicatory bodies.

(j) Giving information within the meaning of § 10.23(c)(2) includes making (1) a written statement or representation or (2) an oral statement or representation.

(k) Law firm includes a professional legal corporation or a partnership.

(1) Legal counsel means practitioner. (m) Legal profession includes the individuals who are lawfully engaged in practice of patent, trademark, and other law before the Office.

(n) Legal service means any legal service which may lawfully be performed by a practitioner before the Office.

(0) Legal System includes the Office and courts and adjudicatory bodies which review matters on which the Office has acted.

(p) Office means Patent and Trademark Office.

(q) Person includes a corporation, an association, a trust, a partnership, and any other organization or legal entity.

(r) Practitioner means (1) an attorney or agent registered to practice before the Office in patent cases or (2) an individual authorized under 5 U.S.C. 500(b) or otherwise as provided by this subchapter, to practice before the Office in trademark cases or other non-patent cases. A “suspended or excluded practitioner" is a practitioner who is suspended or excluded under §10.156. A "non-practitioner" is an individual who is not a practitioner.

(s) A proceeding before the Office includes an application, a reexamination, a protest, a public use proceeding, a patent interference, an inter partes trademark proceeding, or any other

proceeding which is pending before the Office.

(t) Professional legal corporation means a corporation authorized by law to practice law for profit.

(u) Registration means registration to practice before the Office in patent

cases.

(v) Respondent is defined in §10.134(a)(1).

(w) Secret is defined in §10.57(a). (x) Solicit is defined in § 10.33. (y) State includes the District of Columbia, Puerto Rico, and other Federal territories and possessions.

(z) Tribunal includes courts, the Office, and other adjudicatory bodies.

(aa) United States means the United States of America, its territories and possessions.

$10.2 Director of Enrollment and Discipline.

(a) Appointment. The Commissioner shall appoint a Director of Enrollment and Discipline. In the event of the absence of the Director or a vacancy in the Office of the Director, the Commissioner may designate an employee of the Office to serve as acting Director of Enrollment and Discipline. The Director and any acting Director shall be an active member in good standing of the bar of a State.

(b) Duties. The Director shall:

(1) Receive and act upon applications for registration, prepare and grade the examination provided for in §10.7(b), maintain the register provided for in §10.5, and perform such other duties in connection with enrollment and recognition of attorneys and agents as may be necessary.

(2) Conduct investigations into possible violations by practitioners of Disciplinary Rules, with the consent of the Committee on Discipline initiate disciplinary proceedings under §10.132(b), and perform such other duties in connection with investigations and disciplinary proceedings as may be necessary.

(c) Review of Director's decision. Any final decision of the Director refusing to register an individual under §10.6, recognize an individual under §10.9 or $10.14(c), or reinstate a suspended or excluded petitioner under §10.160, may be reviewed by petition to the Commis

sioner upon payment of the fee set forth in §1.21(a)(5). A petition filed more than 30 days after the date of the decision of the Director may be dismissed as untimely. Any petition shall contain (1) a statement of the facts involved and the points to be reviewed and (2) the action requested. Briefs or memoranda, if any, in support of the petition shall accompany or be embodied therein. The petition will be decided on the basis of the record made before the Director and no new evidence will be considered by the Commissioner in deciding the petition. Copies of documents already of record before the Director shall not be submitted with the petition. An oral hearing on the petition will not be granted except when considered necessary by the Commissioner.

(Approved by the Office of Management and Budget under control number 0651-0012)

§ 10.3 Committee on Enrollment.

(a) The Commissioner may establish a Committee on Enrollment composed of one or more employees of the Office.

(b) The Committee on Enrollment shall, as necessary, advise the Director in connection with the Director's duties under § 10.2(b)(1).

§ 10.4 Committee on Discipline.

(a) The Commissioner shall appoint a Committee on Discipline. The Committee on Discipline shall consist of at least three employees of the Office, none of whom reports directly or indirectly to the Director or the Solicitor. Each member of the Committee on Discipline shall be a member in good standing of the bar of a State.

(b) The Committee on Discipline shall meet at the request of the Director and after reviewing evidence presented by the Director shall, by majority vote, determine whether there is probable cause to bring charges under §10.132 against a practitioner. 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.

(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.

INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

§10.5 Register of attorneys and agents in patent cases.

A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants before the Office in the preparation and prosecution of applications for patent. Registration in the Office under the provisions of this part shall only entitle the individuals registered to practice before the Office in patent cases.

§ 10.6 Registration of attorneys and agents.

(a) Attorneys. Any citizen of the United States who is an attorney and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office. When appropriate, any alien who is an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office, provided: Registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States and further provided: The alien may remain registered only (1) if the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or (2) if the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 10.9(b).

(b) Agents. Any citizen of the United States who is not an attorney and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office. When appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office, provided: Registration is not in

consistent with the terms upon which the alien was admitted to, and resides in, the United States, and further provided: The alien may remain registered only (1) if the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or (2) if the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 10.9(b).

NOTE: All individuals registered prior to November 15, 1938, were registered as attorneys, whether they were attorneys or not, and such registrations have not been changed.

(c) Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction of the Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices and who is possessed of the qualifications stated in §10.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided: The patent office of such country allows substantially reciprocal privileges to those admitted to practice before the United States Patent and Trademark Office. Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.

(Approved by the Office of Management and Budget under control number 0651-0012) [50 FR 5172, Feb. 6, 1985, as amended at 53 FR 38950, Oct. 4, 1988]

§ 10.7 Requirements for registration.

(a) No individual will be registered to practice before the Office unless he or she shall:

(1) Apply to the Commissioner in writing on a form supplied by the Director and furnish all requested information and material and

(2) Establish to the satisfaction of the Director that he or she is:

(i) Of good moral character and repute;

(ii) Possessed of the legal, scientific, and technical qualifications necessary to enable him or her to render applicants for patents valuable service; and (iii) Is otherwise competent to advise and assist applicants for patents in the presentation and prosecution of their applications before the Office.

(b) In order that the Director may determine whether an individual seeking to have his or her name placed upon the register has the qualifications specified in paragraph (a) of this secion, satisfactory proof of good moral character and repute and of sufficient basic training in scientific and technical matters must be submitted to the Director. Except as provided in this paragraph, each applicant for registration must take and pass an examination which is held from time to time. Each application for admission to take the examination for registration must be accompanied by the fee set forth in §1.21(a)(1) of this subchapter. The taking of an examination may be waived in the case of any individual who has actively served for at least four years in the patent examining corps of the Office. The examination will not be administered as a mere academic exercise.

(c) Within two months from the date an applicant is notified that he or she failed an examination, the applicant may request regrading of the examination upon payment of the fee set forth in §1.21(a)(6). Any applicant requesting regrading shall particularly point out the errors which the applicant believed occurred in the grading of his or her examination.

(Approved by the Office of Management and Budget under control number 0651-0012)

§ 10.8 Oath and registration fee.

Before an individual may have his or her name entered on the register of attorneys and agents, the individual must, after his or her application is approved, subscribe and swear to an oath or make a declaration prescribed by the Commissioner and pay the registration fee set forth in §1.21(a)(2) of this subchapter.

(Approved by the Office of Management and Budget under control number 0651-0012)

§ 10.9 Limited recognition in patent

cases.

(a) Any individual not registered under §10.6 may, upon a showing of circumstances which render it necessary or justifiable, be given limited recognition by the Director to prosecute as attorney or agent a specified application or specified applications, but limited recognition under this paragraph shall not extend further than the application or applications specified.

(b) When registration of a resident alien under paragraph (a) or (b) of § 10.6 is not appropriate, the resident alien may be given limited recognition as may be appropriate under paragraph (a) of this section.

(c) An individual not registered under §10.6 may, if appointed by applicant to do so, prosecute an international application only before the U.S. International Searching Authority and the U.S. International Preliminary Examining Authority, provided: The individual has the right to practice before the national office with which the international application is filed (PCT Art. 49, Rule 90 and §1.455) or before the International Bureau when acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.

[50 FR 5172, Feb. 6, 1985, as amended at 58 FR 4348, Jan. 14, 1993; 60 FR 21440, May 2, 1995]

§ 10.10 Restrictions on practice in patent cases.

(a) Only practitioners who are registered under § 10.6 or individuals given limited recognition under §10.9 will be permitted to prosecute patent applications of others before the Office.

(b) No individual who has served in the patent examining corps of the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking,

(1) Not to prosecute or aid in any manner in the prosecution of any patent application pending in any patent examining group during his or her period of service therein and

(2) Not to prepare or prosecute or to assist in any manner in the preparation or prosecution of any patent application of another (i) assigned to such group for examination and (ii) filed within two years after the date he or

she left such group, without written authorization of the Director. Associated and related classes in other patent examining groups may be required to be included in the undertaking or designated classes may be excluded from the undertaking. When an application for registration is made after resignation from the Office, the applicant will not be registered if he or she has prepared or prosecuted or assisted in the preparation or prosecution of any patent application as indicated in the paragraph. Knowingly preparing prosecuting or providing assistance in the preparation or prosecution of any patent application contrary to the provisions of this paragraph shall constitute misconduct under §10.23(c)(13) of this part.

or

(c) A practitioner who is an employee of the Office cannot prosecute or aid in any manner in the prosecution of any patent application before the Office.

(d) Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility.

(Approved by the Office of Management and Budget under control number 0651-0012)

[53 FR 38950, Oct. 4, 1988; 53 FR 41278, Oct. 20, 1988]

§ 10.11 Removing names from the register.

(a) Registered attorneys and agents shall notify the Director of any change of address. Any notification to the Director of any change of address shall be separate from any notice of change of address filed in individual applications.

(b) A letter may be addressed to any individual on the register, at the address of which separate notice was last received by the Director, for the purpose of ascertaining whether such individual desires to remain on the register. The name of any individual failing to reply and give any information requested by the Director within a time limit specified will be removed from the register and the names of individuals so removed will be published in the Official Gazette. The name of any individual so removed may be reinstated on the register as may be appro

priate and upon payment of the fee set forth in §1.21(a)(3) of this subchapter. (Approved by the Office of Management and Budget under control number 0651-0012)

88 10.12-10.13 [Reserved]

§10.14 Individuals who may practice before the Office in trademark and other non-patent cases.

(a) Attorneys. Any individual who is an attorney may represent others before the Office in trademark and other non-patent cases. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent

cases.

(b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent cases, except that individuals not attorneys who were recognized to practice before the Office in trademark cases under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark cases.

(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall prove to the satisfaction of the Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark cases, provided: The patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark cases before the United States Patent and Trademark Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.

(d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.

(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark