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Trademark Law Summary
USPTO To Implement New Rules Governing Disciplinary Proceedings and Agency Practice
Changes to Representation of Others Before the United States Patent and Trademark Office
37 CFR Parts 1, 2, 7, 10, 11, and 41 (Docket No.: PTO–C–2005–0013) RIN 0651–AB55, 08/14/2008
Basic Information
Starting on September 18, 2008, the United States Patent and Trademark Office ("USPTO") will implement new rules governing the conduct of disciplinary investigations, issuance of warnings when closing such investigations, disciplinary proceedings, non-disciplinary transfer to disability inactive status and reinstatement to practice before the USPTO. Part of the new issuances involved a new rule regarding recognition to practice before the USPTO in trademark cases, and a new rule to address a practitioner’s signature and certificate for correspondence filed in the USPTO.These changes will enable the USPTO to better protect the public from practitioners who do not comply with the USPTO’s ethics rules and from incapacitated practitioners.
The statutory basis of this new agency issuance was the congressional grant of authority to the USPTO to ‘‘establish regulations, not inconsistent with law, which * * * may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.’’ 35 U.S.C. 2(b)(2)(D).
Congress also provided that the ‘‘Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, * * * any * * * agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded.’’ 35 U.S.C. 32.
In so doing, Congress vested express and implied authority with the USPTO to prescribe rules of procedure that are applicable to practitioners recognized to practice before the USPTO.
These final rules will be applied only prospectively, not retroactively. Further, the rules will be applied to the future actions in pending investigations and in investigations commencing on or after the effective date of the final rules. With respect to disciplinary proceedings that have already been commenced by filing a complaint under 37 CFR 10.134 before the effective date of the final rules, the final rules will not apply. Instead, these disciplinary proceedings will continue under the rules in effect on the date the complaint under § 10.134 was filed. With regard to disciplinary proceedings commenced after the effective date of the rules, the final rules will apply. With regard to § 11.5, the final rule will be applied only prospectively to assignments and licenses written on or after the effective date of the final rules.
View a PDF of the rule.Service
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