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 law judge and will avoid the necessity of filing a
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 [March 16, 1995] to
ensure consideration. An oral hearing will not be conducted.
Addresses: Address written comments to Commissioner of Patents and
Trademarks, Box OED, Washington, D.C. 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 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 10.155(a). However, prior to this proposed rule
change, 10.155(a) did not provide for the filing of a cross-appeal.
With regard to interference proceedings, 37 CFR 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 10.155(a) be modified by adding
"pursuant to 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 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
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. 601 et seq.), 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 a
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 and Budget 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:
10.155 Appeal to the Commissioner.
(a) Within thirty (30) days from the date of the initial decision of
the administrative law judge under 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 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 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.
January 13, 1995 MICHAEL K. KIRK
Deputy Assistant Secretary
of Commerce and Deputy
Commissioner of Patents
and Trademarks