80 FR 78155 - USPTO Law School Clinic Certification Program
DEPARTMENT OF COMMERCE
Patent and Trademark Office Federal Register Volume 80, Issue 241 (December 16, 2015)
Patent and Trademark Office
Federal Register Volume 80, Issue 241 (December 16, 2015)
| Page Range | 78155-78159 | |
| FR Document | 2015-31627 |
[Federal Register Volume 80, Number 241 (Wednesday, December 16, 2015)] [Proposed Rules] [Pages 78155-78159] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2015-31627] [[Page 78155]] ======================================================================= ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 11 [Docket No.: PTO-C-2015-0018] RIN 0651-AC99 USPTO Law School Clinic Certification Program AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Notice of proposed rulemaking. ----------------------------------------------------------------------- SUMMARY: This rulemaking is required by a Public Law enacted on December 16, 2014. This law requires the United States Patent and Trademark Office (``Office'' or ``USPTO'') Director to establish regulations and procedures for application to and participation in the USPTO Law School Clinic Certification Program. This law removed the ``pilot'' status of the USPTO's existing law school clinic certification program. The program allows students enrolled in a participating law school's clinic to practice patent and trademark law before the USPTO under the direct supervision of a faculty clinic supervisor by drafting, filing, and prosecuting patent or trademark applications, or both, on a pro bono basis for clients who qualify for assistance from the law school's clinic. In this way, these student practitioners gain valuable experience drafting, filing, and prosecuting patent and trademark applications that would otherwise be unavailable to students while in law school. The program also facilitates the provision of pro bono services to trademark and patent applicants who lack the financial resources to pay for legal representation. The proposed rules incorporate the requirements and procedures developed and implemented during the pilot phase of the program. DATES: To be ensured of consideration, written comments must be received on or before February 16, 2016. ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to: [email protected]. Comments may also be submitted by mail addressed to: Mail Stop OED--Law School Rules, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, marked to the attention of William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline. Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (http://www.regulations.gov) for additional instructions on providing comments via the Federal eRulemaking Portal. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message over the Internet because sharing comments with the public is more easily accomplished. Electronic comments are preferred to be submitted in plain text, but also may be submitted in ADOBE[supreg] portable document format or MICROSOFT WORD[supreg] format. Comments not submitted electronically should be submitted on paper in a format that facilitates convenient digital scanning into ADOBE[supreg] portable document format. Comments will be made available for public inspection at the Office of Enrollment and Discipline, located on the 8th Floor of the Madison West Building, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing via the Office's Internet Web site (http://www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline, by telephone at 571-272-4097. SUPPLEMENTARY INFORMATION: Executive Summary A. Purpose of the Regulatory Action The proposed changes to part 11 aim to comply with the rulemaking requirement imposed by Public Law 113-227 (Dec. 16, 2014). This law requires the USPTO Director to establish regulations and procedures for application to and participation in the USPTO Law School Clinic Certification Program. This law removed the ``pilot'' status of the USPTO's law school clinic certification program. The program allows students enrolled in a participating law school's clinic to practice patent and trademark law before the USPTO by drafting, filing, and prosecuting patent or trademark applications, or both, on a pro bono basis for clients that qualify for assistance from the law school's clinic. The program provides law students enrolled in a participating clinic the opportunity to practice patent and trademark law before the USPTO under the direct supervision of a faculty clinic supervisor. In this way, these student practitioners gain valuable experience drafting, filing, and prosecuting patent and trademark applications that would otherwise be unavailable to students while in law school. The program also facilitates the provision of pro bono services to trademark and patent applicants that lack the financial resources to pay for legal representation. The proposed rules incorporate the requirements and procedures developed and implemented during the pilot phase of the program. B. Summary of the Major Provisions of the Regulatory Action in Question This NPRM proposes rules in 37 CFR 11.16 and 11.17 to formalize the process by which law schools, law school faculty, and law school students may participate in the USPTO Law School Clinic Certification Program. Discussion of Specific Rules The USPTO proposes to amend Sec. 11.1 to clarify the definition of ``attorney'' or ``lawyer'' to reflect the current practice of requiring attorneys to be active members, in good standing, of the highest court of any State, and otherwise eligible to practice law. The term ``State'' is elsewhere defined in Sec. 11.1 to mean any of the 50 states of the United States of America, the District of Columbia, and any Commonwealth or territory of the United States of America. The USPTO also proposes to amend the term ``practitioner'' to specifically include those students allowed to participate in the USPTO Law School Clinic Certification Program. The mechanism by which such students are allowed to participate is through a grant of limited recognition. Once granted limited recognition, such students are deemed practitioners and, as such, are subject to the USPTO Rules of Professional Conduct. By definition, only ``practitioners'' may represent others before the office. Law school students who are not participating in the USPTO Law School Clinic Certification Program may not practice before the USPTO, unless otherwise authorized to do so. The USPTO proposes to add Sec. Sec. 11.16 and 11.17, currently reserved, to establish the regulatory framework for the Law School Clinic Certification Program. Section 11.16 would establish the criteria for admission to, and continuing participation in, the USPTO Law School Clinic Certification Program, the qualifications necessary for approval as [[Page 78156]] a Faculty Clinic Supervisor, and the requirements for granting limited recognition to law school students. Schools participating in the program as of the date the final rule is published will not be required to reapply for admission but must apply for renewal at such time as the OED Director establishes. These criteria, deadlines for admission, and any ancillary requirements, will be published in a bulletin on the Office of Enrollment and Discipline's law school clinic Web page. Section 11.16(a) would describe the purpose of the program. Section 11.16(b) would establish rules regarding applying for, and renewing, admission to the program. Law schools enrolled in the program on the effective date of these rules would be grandfathered into the program and would not be required to submit a new application. Law schools no longer participating in the program on the effective date, however, would be required to reapply for admission. Although not required to reapply for admission, participating law schools seeking to add a practice area (i.e., patents or trademarks) would be required to submit an application for such practice area. This section would establish that all law schools would be required to submit a renewal application on a biennial basis. Section 11.16(c) would specify that Faculty Clinic Supervisors are subject to the USPTO Rules of Professional Conduct, including those governing supervisory practitioners. See e.g., 37 CFR 11.501 and 11.502. As such, Faculty Clinic Supervisors, as well as the respective law school deans, are responsible for ensuring their schools have established a process that identifies conflicts of interest. Generally, the OED Director makes a determination regarding a proposed Faculty Clinic Supervisor's eligibility as part of the process of considering a law school's application for admission to the program. The OED Director may also make a determination whether to approve an additional, or a replacement, supervisor for one or more schools that have already been admitted to the program. In determining whether a Faculty Clinic Supervisor candidate possesses the number of years of experience required by paragraphs (c)(1)(ii) and (c)(2)(ii), the OED Director will measure the duration of experience from the date of the candidate's request for approval. Any additional criteria established by the OED Director, as set forth in paragraphs (c)(1)(v) and (c)(2)(v), will be published in a bulletin on the Office of Enrollment and Discipline's law school clinic Web page. Each practice area must be led by a fully-qualified, USPTO- approved, Faculty Clinic Supervisor for that practice area. Provided that they are approved by the USPTO, a law school's clinic may include a patent practice, a trademark practice, or both. The USPTO does not have a preference whether a law school includes both practice areas in one clinic or separates each discipline into its own clinic. For law school clinics approved to practice in both the patent and trademark practice areas, the USPTO may approve one individual to serve as a Faculty Clinic Supervisor for both practice areas, provided that the individual satisfies the USPTO's criteria to be both a Patent Faculty Clinic Supervisor and a Trademark Faculty Clinic Supervisor. Section 11.16(d) would provide the rules for providing limited recognition to students for the purpose of practicing before the USPTO. It would provide that registered patent agents, and attorneys enrolled in a Master of Laws (L.L.M.) program, who wish to participate in a clinic must abide by the same rules and procedures as other students in the program. Section 11.17 would establish rules concerning the continuing obligations of schools participating in the USPTO Law School Clinic Certification Program and specify those circumstances that may result in inactivation or removal of a school from the program. Section 11.17(a) would restate the requirement in Public Law 113- 227 that services rendered under the program will be provided on a pro- bono basis. Section 11.17(b) would establish procedures for law schools to report their program activities to the USPTO. Section 11.17(c) would establish procedures for inactivating a law school clinic. Inactive law schools are still considered by the USPTO to be ``participating'' in the program. Section 11.17(d) would establish procedures for removing a law school from the program and would explain the obligations of student practitioners in such event. Rulemaking Considerations Administrative Procedure Act: The changes in this proposed rulemaking involve rules of agency practice and procedure, and/or interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) (interpretive rules ``advise the public of the agency's construction of the statutes and rules which it administers'') (citation and internal quotation marks omitted); Nat'l Org. of Veterans'Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a statute is interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process are procedural under the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were procedural where they did not change the substantive standard for reviewing claims). Accordingly, prior notice and opportunity for public comment for the changes in this proposed rulemaking are not required pursuant to 5 U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (notice-and-comment procedures are required neither when an agency ``issue[s] an initial interpretive rule'' nor ``when it amends or repeals that interpretive rule''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for ``interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice,'' quoting 5 U.S.C. 553(b)(A)). The USPTO, however, is publishing these proposed rule changes for comment as it seeks the benefit of the public's views. Regulatory Flexibility Act: The Deputy General Counsel, United States Patent and Trademark Office, has certified to the Chief Counsel for Advocacy, Small Business Administration, that the proposed changes in this rulemaking will not have a significant economic impact on a substantial number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The USPTO Law School Clinic Certification Program is voluntary. Law schools, clinics, and clients may elect whether to participate in the program, and receive the benefits thereof. The primary effect of this rulemaking is not economic, but simply to formalize the requirements and procedures developed and implemented during the pilot phase of the program. The rulemaking proposes certain basic quarterly reporting requirements by participating law school clinics in order to provide information to the Office pertaining to the quality and use of their pro bono services. The information required for the report should be readily available to participating law school clinics and present a minimal administrative burden. Additionally, the Office currently has 47 participating law school clinics, and it is expected that this number may increase slightly. Accordingly, this reporting requirement and the rulemaking will not have a significant economic impact on a substantial number of small entities. [[Page 78157]] Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (September 30, 1993). Executive Order 13563 (Improving Regulation and Regulatory Review): The Office has complied with Executive Order 13563. Specifically, the Office has, to the extent feasible and applicable: (1) Made a reasoned determination that the benefits justify the costs of the rule; (2) tailored the rule to impose the least burden on society consistent with obtaining the regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector and the public as a whole, and provided on-line access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens and maintain flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes. Executive Order 13132: This rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (August 4, 1999). Executive Order 13175 (Tribal Consultation): This rulemaking will not: (1) have substantial direct effects on one or more Indian tribes; (2) impose substantial direct compliance costs on Indian tribal governments; or (3) preempt tribal law. Therefore, a tribal summary impact statement is not required under Executive Order 13175 (Nov. 6, 2000). Executive Order 13211 (Energy Effects): This rulemaking is not a significant energy action under Executive Order 13211 because this rulemaking is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, a Statement of Energy Effects is not required under Executive Order 13211 (May 18, 2001). Executive Order 12988 (Civil Justice Reform): This rulemaking meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996). Executive Order 13045 (Protection of Children): This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (Apr. 21, 1997). Executive Order 12630 (Taking of Private Property): This rulemaking will not effect a taking of private property or otherwise have taking implications under Executive Order 12630 (Mar. 15, 1988). Congressional Review Act: Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United States Patent and Trademark Office will submit a report containing the final rule and other required information to the U.S. Senate, the U.S. House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this notice are not expected to result in an annual effect on the economy of 100 million dollars or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreign-based enterprises in domestic and export markets. Therefore, this notice is not expected to result in a ``major rule'' as defined in 5 U.S.C. 804(2). Unfunded Mandates Reform Act of 1995: The changes in this rulemaking do not involve a Federal intergovernmental mandate that will result in the expenditure by State, local, and tribal governments, in the aggregate, of 100 million dollars (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of 100 million dollars (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq. National Environmental Policy Act: This rulemaking will not have any effect on the quality of environment and is thus categorically excluded from review under the National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq. National Technology Transfer and Advancement Act: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions which involve the use of technical standards. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) requires that the Office consider the impact of paperwork and other information collection burdens imposed on the public. This rulemaking involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). New information will be collected and a new information collection request to authorize the collection of new information involved in this notice is being submitted to OMB under the title ``Law School Clinic Certification Program.'' The proposed collection will be available at the OMB's Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain). In addition to the new items, this rulemaking action also seeks to associate the following item currently in a different OMB approved collection (0651-0012 Admission to Practice) with this proposed collection: Application by Student to Become a Participant in the Program (PTO-158LS). This transfer will consolidate all information collections relating to law student involvement in the Law School Clinic Certification Program into a single collection. Notwithstanding any other provision of law, no person is required to respond to, nor shall any person be subject to a penalty, for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number. List of Subjects in 37 CFR Part 11 Administrative practice and procedure, Inventions and patents, Lawyers, Reporting and recordkeeping requirements. For the reasons set forth in the preamble, the United States Patent and Trademark Office proposes to amend 37 CFR part 11 as follows: PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE 0 1. The authority citation for part 11 is revised to read as follows: Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 41; Sec. 1, Pub. L. 113-227, 128 Stat. 2114. 0 2. In Sec. 11.1, the definitions of ``Attorney or lawyer'' and ``Practitioner'' are revised to read as follows: [[Page 78158]] Sec. 11.1 Definitions. * * * * * Attorney or lawyer means an individual who is an active member in good standing of the bar of the highest court of any State. A non- lawyer means a person who is not an attorney or lawyer. * * * * * Practitioner means: (1) An attorney or agent registered to practice before the Office in patent matters; (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as provided by Sec. 11.14(a), (b), and (c), to practice before the Office in trademark matters or other non-patent matters; (3) An individual authorized to practice before the Office in a patent case or matters under Sec. 11.9(a) or (b); or (4) An individual authorized to practice before the Office under Sec. 11.16(d). * * * * * 0 3. Add Sec. 11.16 to read as follows: Sec. 11.16 Requirements for admission to the USPTO Law School Clinic Certification Program. (a) The USPTO Law School Clinic Certification Program allows students enrolled in a participating law school's clinic to practice before the Office in patent or trademark matters by drafting, filing, and prosecuting patent or trademark applications on a pro bono basis for clients that qualify for assistance from the law school's clinic. All law schools accredited by the American Bar Association are eligible for participation in the program, and shall be examined for acceptance using identical criteria. (b) Application for admission and renewal. (1) Application for admission. Non-participating law schools seeking admission to the USPTO Law School Clinic Certification Program, and participating law schools seeking to add a practice area, shall submit an application for admission for such practice area to the Office of Enrollment and Discipline in accordance with criteria and time periods set forth by the OED Director. (2) Renewal application. Each participating law school desiring to continue in the USPTO Law School Clinic Certification Program shall, biennially from a date assigned to the law school by the OED Director, submit a renewal application to the Office of Enrollment and Discipline in accordance with criteria set forth by the OED Director. (3) The OED Director may refuse admission or renewal of a law school to the USPTO Law School Clinic Certification Program if the OED Director determines that admission, or renewal, of the law school would fail to provide significant benefit to the public or the law students participating in the law school's clinic. (c) Faculty Clinic Supervisor. Any law school seeking admission to or participating in the USPTO Law School Clinic Certification Program must have at least one Faculty Clinic Supervisor for the patent practice area, if the clinic includes patent practice; and at least one Faculty Clinic Supervisor for the trademark practice area, if the clinic includes trademark practice. (1) Patent Faculty Clinic Supervisor. A Faculty Clinic Supervisor for a law school clinic's patent practice must: (i) Be a registered patent practitioner in active status and good standing with the Office of Enrollment and Discipline; (ii) Demonstrate at least 3 years experience in prosecuting patent applications before the Office within the 5 years immediately prior to the request for approval as a Faculty Clinic Supervisor; (iii) Assume full responsibility for the instruction and guidance of law students participating in the law school clinic's patent practice; (iv) Assume full responsibility for all patent applications and legal services, including filings with the Office, produced by the clinic; and (v) Comply with all additional criteria established by the OED Director. (2) Trademark Faculty Clinic Supervisor. A Faculty Clinic Supervisor for a law school clinic's trademark practice must: (i) Be an attorney as defined in Sec. 11.1; (ii) Demonstrate at least 3 years experience in prosecuting trademark applications before the Office within the 5 years immediately prior to the date of the request for approval as a Faculty Clinic Supervisor; (iii) Assume full responsibility for the instruction, guidance, and supervision of law students participating in the law school clinic's trademark practice; (iv) Assume full responsibility for all trademark applications and legal services, including filings with the Office, produced by the clinic; and (v) Comply with all additional criteria established by the OED Director. (3) A Faculty Clinic Supervisor under paragraph (c) of this section must submit a statement: (i) Assuming responsibility for performing conflicts checks for each law student and client in the relevant clinic practice area; (ii) Assuming responsibility for student instruction and work, including instructing, mentoring, overseeing, and supervising all participating law school students in the clinic's relevant practice area; (iii) Assuming responsibility for content and timeliness of all applications and documents submitted to the Office through the relevant practice area of the clinic; (iv) Assuming responsibility for all communications by clinic students to clinic clients in the relevant clinic practice area; (v) Assuming responsibility for ensuring that there is no gap in representation of clinic clients in the relevant practice area during student turnover, school schedule variations, inter-semester transitions, or other disruptions; (vi) Attesting to meeting the criteria of paragraph (c)(1) or (2) of this section based on relevant practice area of the clinic; and (vii) Attesting to all other criteria as established by the OED Director. (d) Limited recognition for law students participating in the USPTO Law School Clinic Certification Program. (1) The OED Director may grant limited recognition to practice before the Office in patent or trademark matters, or both, to law school students enrolled in a clinic of a law school that is participating in the USPTO Law School Clinic Certification Program upon submission and approval of an application by a law student to the Office of Enrollment and Discipline in accordance with criteria established by the OED Director. (2) In order to be granted limited recognition to practice before the Office in patent matters under the USPTO Law School Clinic Certification Program, a law student must: (i) Be enrolled in a law school that is an active participant in the USPTO Law School Clinic Certification Program; (ii) Be enrolled in the patent practice area of a clinic of the participating law school; (iii) Have successfully completed at least one year of law school or the equivalent; (iv) Have read the USPTO Rules of Professional Conduct and the relevant rules of practice and procedure for patent matters; (v) Be supervised by an approved Faculty Clinic Supervisor pursuant to paragraph (c)(1) of this section; (vi) Be certified by the dean of the participating law school, or one authorized to act for the dean, as: having completed the first year of law school or the equivalent, being in compliance with the law school's ethics code, and being of good moral character and reputation; [[Page 78159]] (vii) Neither ask for nor receive any fee or compensation of any kind for legal services from a clinic client on whose behalf service is rendered; (viii) Have proved to the satisfaction of the OED Director that he or she possesses the scientific and technical qualifications necessary for him or her to render patent applicants valuable service; and (ix) Comply with all additional criteria established by the OED Director. (3) In order to be granted limited recognition to practice before the Office in trademark matters under the USPTO Law School Clinic Certification Program, a law student must: (i) Be enrolled in a law school that is an active participant in the USPTO Law School Clinic Certification Program; (ii) Be enrolled in the trademark practice area of a clinic of the participating law school; (iii) Have successfully completed at least one year of law school or the equivalent; (iv) Have read the USPTO Rules of Professional Conduct and the relevant USPTO rules of practice and procedure for trademark matters; (v) Be supervised by an approved Faculty Clinic Supervisor pursuant to paragraph (c)(2) of this section; (vi) Be certified by the dean of the participating law school, or one authorized to act for the dean, as: having completed the first year of law school or the equivalent, being in compliance with the law school's ethics code, and being of good moral character and reputation; (vii) Neither ask for nor receive any fee or compensation of any kind for legal services from a clinic client on whose behalf service is rendered; and (viii) Comply with all additional criteria established by the OED Director. (4) Students registered to practice before the Office in patent matters as a patent agent, or authorized to practice before the Office in trademark matters under Sec. 11.14, must complete and submit a student application pursuant to paragraph (d)(1) of this section and meet the criteria of paragraph (d)(2) or (3) of this section, as applicable, in order to participate in the program. 0 4. Add Sec. 11.17 to read as follows: Sec. 11.17 Requirements for participation in the USPTO Law School Clinic Certification Program. (a) Each law school participating in the USPTO Law School Clinic Certification Program must provide its patent and/or trademark services on a pro bono basis for clients that qualify for assistance from the law school's clinic. (b) Each law school participating in the USPTO Law School Clinic Certification Program shall, on a quarterly basis, provide the Office of Enrollment and Discipline with a report regarding its clinic activity, which shall include: (1) The number of law students participating in each of the patent and trademark practice areas of the school's clinic in the preceding quarter; (2) The number of faculty participating in each of the patent and trademark practice areas of the school's clinic in the preceding quarter; (3) The number of consultations provided to persons who requested assistance from the law school clinic in the preceding quarter; (4) The number of client representations undertaken for each of the patent and trademark practice areas of the school's clinic in the preceding quarter; (5) The identity and number of applications and responses filed in each of the patent and/or trademark practice areas of the school's clinic in the preceding quarter; (6) The number of patents issued, or trademarks registered, to clients of the clinic in the preceding quarter; and (7) All other information specified by the OED Director. (c) Inactivation of law schools participating in the USPTO Law School Certification Program. (1) The OED Director may inactivate a patent and/or trademark practice area of a participating law school: (i) If the participating law school does not have an approved Faculty Clinic Supervisor for the relevant practice area, as described in Sec. 11.16(c); (ii) If the participating law school does not meet each of the requirements and criteria for participation in the USPTO Law School Clinic Certification Program as set forth in Sec. 11.16, this section, or as otherwise established by the OED Director; or (iii) For other good cause as determined by the OED Director. (2) In the event that a practice area of a participating school is inactivated, the participating law school students must: (i) Immediately cease all student practice before the Office in the relevant practice area and notify each client of such; and (ii) Disassociate themselves from all client matters relating to practice before the Office in the relevant practice area, including complying with Office and State rules for withdrawal from representation. (3) A patent or trademark practice area of a law school clinic that has been inactivated may be restored to active status, upon application to and approval by the OED Director. (d) Removal of law schools participating in the USPTO Law School Clinic Certification Program. (1) The OED Director may remove a patent and/or trademark practice area of the clinic of a law school participating in the USPTO Law School Clinic Certification Program: (i) Upon request from the law school; (ii) If the participating law school does not meet each of the requirements and criteria for participation in the USPTO Law School Clinic Certification Program as set forth in Sec. 11.16, this section, or as otherwise established by the OED Director; or (iii) For other good cause as determined by the OED Director. (2) In the event that a practice area of a participating school is removed by the OED Director, the participating law school students must: (i) Immediately cease all student practice before the Office in the relevant practice area and notify the client of such; and (ii) Disassociate themselves from all client matters relating to practice before the Office in the relevant practice area, including complying with Office and State rules for withdrawal from representation. (3) A school that has been removed from participation in the USPTO Law School Clinic Certification Program under this section may reapply to the program in compliance with Sec. 11.16. Dated: December 8, 2015. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2015-31627 Filed 12-15-15; 8:45 am] BILLING CODE P
![Federal Register / Vol. 80, No. 241 / Wednesday, December 16, 2015 / Proposed Rules 78155
DEPARTMENT OF COMMERCE Internet via the Federal eRulemaking trademark law before the USPTO under
Portal. See the Federal eRulemaking the direct supervision of a faculty clinic
Patent and Trademark Office Portal Web site (http:// supervisor. In this way, these student
www.regulations.gov) for additional practitioners gain valuable experience
37 CFR Part 11 instructions on providing comments via drafting, filing, and prosecuting patent
[Docket No.: PTO–C–2015–0018] the Federal eRulemaking Portal. and trademark applications that would
Although comments may be otherwise be unavailable to students
RIN 0651–AC99 submitted by postal mail, the Office while in law school. The program also
prefers to receive comments by facilitates the provision of pro bono
USPTO Law School Clinic Certification electronic mail message over the services to trademark and patent
Program Internet because sharing comments with applicants that lack the financial
AGENCY: United States Patent and the public is more easily accomplished. resources to pay for legal representation.
Trademark Office, Commerce. Electronic comments are preferred to be The proposed rules incorporate the
submitted in plain text, but also may be requirements and procedures developed
ACTION: Notice of proposed rulemaking.
submitted in ADOBE® portable and implemented during the pilot phase
SUMMARY: This rulemaking is required document format or MICROSOFT of the program.
by a Public Law enacted on December WORD® format. Comments not
submitted electronically should be B. Summary of the Major Provisions of
16, 2014. This law requires the United the Regulatory Action in Question
States Patent and Trademark Office submitted on paper in a format that
(‘‘Office’’ or ‘‘USPTO’’) Director to facilitates convenient digital scanning This NPRM proposes rules in 37 CFR
establish regulations and procedures for into ADOBE® portable document 11.16 and 11.17 to formalize the process
application to and participation in the format. by which law schools, law school
USPTO Law School Clinic Certification Comments will be made available for faculty, and law school students may
Program. This law removed the ‘‘pilot’’ public inspection at the Office of participate in the USPTO Law School
status of the USPTO’s existing law Enrollment and Discipline, located on Clinic Certification Program.
school clinic certification program. The the 8th Floor of the Madison West Discussion of Specific Rules
program allows students enrolled in a Building, 600 Dulany Street,
Alexandria, Virginia. Comments also The USPTO proposes to amend § 11.1
participating law school’s clinic to
will be available for viewing via the to clarify the definition of ‘‘attorney’’ or
practice patent and trademark law
Office’s Internet Web site (http:// ‘‘lawyer’’ to reflect the current practice
before the USPTO under the direct
www.uspto.gov). Because comments will of requiring attorneys to be active
supervision of a faculty clinic
be made available for public inspection, members, in good standing, of the
supervisor by drafting, filing, and
information that the submitter does not highest court of any State, and
prosecuting patent or trademark
desire to make public, such as an otherwise eligible to practice law. The
applications, or both, on a pro bono
address or phone number, should not be term ‘‘State’’ is elsewhere defined in
basis for clients who qualify for
included in the comments. § 11.1 to mean any of the 50 states of the
assistance from the law school’s clinic.
FOR FURTHER INFORMATION CONTACT: United States of America, the District of
In this way, these student practitioners
William R. Covey, Deputy General Columbia, and any Commonwealth or
gain valuable experience drafting, filing,
Counsel for Enrollment and Discipline territory of the United States of
and prosecuting patent and trademark
and Director of the Office of Enrollment America.
applications that would otherwise be The USPTO also proposes to amend
unavailable to students while in law and Discipline, by telephone at 571–
272–4097. the term ‘‘practitioner’’ to specifically
school. The program also facilitates the include those students allowed to
provision of pro bono services to SUPPLEMENTARY INFORMATION:
participate in the USPTO Law School
trademark and patent applicants who Clinic Certification Program. The
Executive Summary
lack the financial resources to pay for mechanism by which such students are
legal representation. The proposed rules A. Purpose of the Regulatory Action
allowed to participate is through a grant
incorporate the requirements and The proposed changes to part 11 aim of limited recognition. Once granted
procedures developed and implemented to comply with the rulemaking limited recognition, such students are
during the pilot phase of the program. requirement imposed by Public Law deemed practitioners and, as such, are
DATES: To be ensured of consideration, 113–227 (Dec. 16, 2014). This law subject to the USPTO Rules of
written comments must be received on requires the USPTO Director to establish Professional Conduct. By definition,
or before February 16, 2016. regulations and procedures for only ‘‘practitioners’’ may represent
ADDRESSES: Comments should be sent application to and participation in the others before the office. Law school
by electronic mail message over the USPTO Law School Clinic Certification students who are not participating in
Internet addressed to: Program. This law removed the ‘‘pilot’’ the USPTO Law School Clinic
LSCCPComments@uspto.gov. Comments status of the USPTO’s law school clinic Certification Program may not practice
may also be submitted by mail certification program. The program before the USPTO, unless otherwise
addressed to: Mail Stop OED—Law allows students enrolled in a authorized to do so.
School Rules, United States Patent and participating law school’s clinic to The USPTO proposes to add §§ 11.16
Trademark Office, P.O. Box 1450, practice patent and trademark law and 11.17, currently reserved, to
tkelley on DSK3SPTVN1PROD with PROPOSALS
Alexandria, Virginia 22313–1450, before the USPTO by drafting, filing, establish the regulatory framework for
marked to the attention of William R. and prosecuting patent or trademark the Law School Clinic Certification
Covey, Deputy General Counsel for applications, or both, on a pro bono Program.
Enrollment and Discipline and Director basis for clients that qualify for Section 11.16 would establish the
of the Office of Enrollment and assistance from the law school’s clinic. criteria for admission to, and continuing
Discipline. The program provides law students participation in, the USPTO Law School
Comments may also be sent by enrolled in a participating clinic the Clinic Certification Program, the
electronic mail message over the opportunity to practice patent and qualifications necessary for approval as
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![78156 Federal Register / Vol. 80, No. 241 / Wednesday, December 16, 2015 / Proposed Rules
a Faculty Clinic Supervisor, and the Each practice area must be led by a interpretation of a statute is
requirements for granting limited fully-qualified, USPTO-approved, interpretive); Bachow Commc’ns Inc. v.
recognition to law school students. Faculty Clinic Supervisor for that FCC, 237 F.3d 683, 690 (D.C. Cir. 2001)
Schools participating in the program as practice area. Provided that they are (rules governing an application process
of the date the final rule is published approved by the USPTO, a law school’s are procedural under the Administrative
will not be required to reapply for clinic may include a patent practice, a Procedure Act); Inova Alexandria Hosp.
admission but must apply for renewal at trademark practice, or both. The USPTO v. Shalala, 244 F.3d 342, 350 (4th Cir.
such time as the OED Director does not have a preference whether a 2001) (rules for handling appeals were
establishes. These criteria, deadlines for law school includes both practice areas procedural where they did not change
admission, and any ancillary in one clinic or separates each the substantive standard for reviewing
requirements, will be published in a discipline into its own clinic. For law claims).
bulletin on the Office of Enrollment and school clinics approved to practice in Accordingly, prior notice and
Discipline’s law school clinic Web page. both the patent and trademark practice opportunity for public comment for the
Section 11.16(a) would describe the areas, the USPTO may approve one changes in this proposed rulemaking are
purpose of the program. individual to serve as a Faculty Clinic not required pursuant to 5 U.S.C. 553(b)
Section 11.16(b) would establish rules Supervisor for both practice areas, or (c), or any other law. See Perez, 135
regarding applying for, and renewing, provided that the individual satisfies S. Ct. at 1206 (notice-and-comment
admission to the program. Law schools the USPTO’s criteria to be both a Patent procedures are required neither when
enrolled in the program on the effective Faculty Clinic Supervisor and a an agency ‘‘issue[s] an initial
date of these rules would be Trademark Faculty Clinic Supervisor. interpretive rule’’ nor ‘‘when it amends
grandfathered into the program and Section 11.16(d) would provide the or repeals that interpretive rule’’);
would not be required to submit a new rules for providing limited recognition Cooper Techs. Co. v. Dudas, 536 F.3d
application. Law schools no longer to students for the purpose of practicing 1330, 1336–37 (Fed. Cir. 2008) (stating
participating in the program on the before the USPTO. It would provide that that 5 U.S.C. 553, and thus 35 U.S.C.
effective date, however, would be registered patent agents, and attorneys 2(b)(2)(B), does not require notice and
required to reapply for admission. enrolled in a Master of Laws (L.L.M.) comment rulemaking for ‘‘interpretative
Although not required to reapply for program, who wish to participate in a rules, general statements of policy, or
admission, participating law schools clinic must abide by the same rules and rules of agency organization, procedure,
seeking to add a practice area (i.e., procedures as other students in the or practice,’’ quoting 5 U.S.C.
patents or trademarks) would be program. 553(b)(A)). The USPTO, however, is
required to submit an application for Section 11.17 would establish rules publishing these proposed rule changes
such practice area. This section would concerning the continuing obligations of for comment as it seeks the benefit of
establish that all law schools would be schools participating in the USPTO Law the public’s views.
required to submit a renewal School Clinic Certification Program and Regulatory Flexibility Act: The Deputy
application on a biennial basis. specify those circumstances that may General Counsel, United States Patent
Section 11.16(c) would specify that result in inactivation or removal of a and Trademark Office, has certified to
Faculty Clinic Supervisors are subject to school from the program. the Chief Counsel for Advocacy, Small
the USPTO Rules of Professional Section 11.17(a) would restate the Business Administration, that the
Conduct, including those governing requirement in Public Law 113–227 that proposed changes in this rulemaking
supervisory practitioners. See e.g., 37 services rendered under the program will not have a significant economic
CFR 11.501 and 11.502. As such, will be provided on a pro-bono basis. impact on a substantial number of small
Faculty Clinic Supervisors, as well as Section 11.17(b) would establish entities (Regulatory Flexibility Act, 5
the respective law school deans, are procedures for law schools to report U.S.C. 605(b)). The USPTO Law School
responsible for ensuring their schools their program activities to the USPTO. Clinic Certification Program is
have established a process that Section 11.17(c) would establish voluntary. Law schools, clinics, and
identifies conflicts of interest. procedures for inactivating a law school clients may elect whether to participate
Generally, the OED Director makes a clinic. Inactive law schools are still in the program, and receive the benefits
determination regarding a proposed considered by the USPTO to be thereof. The primary effect of this
Faculty Clinic Supervisor’s eligibility as ‘‘participating’’ in the program. rulemaking is not economic, but simply
part of the process of considering a law Section 11.17(d) would establish to formalize the requirements and
school’s application for admission to the procedures for removing a law school procedures developed and implemented
program. The OED Director may also from the program and would explain the during the pilot phase of the program.
make a determination whether to obligations of student practitioners in The rulemaking proposes certain basic
approve an additional, or a replacement, such event. quarterly reporting requirements by
supervisor for one or more schools that participating law school clinics in order
have already been admitted to the Rulemaking Considerations to provide information to the Office
program. In determining whether a Administrative Procedure Act: The pertaining to the quality and use of their
Faculty Clinic Supervisor candidate changes in this proposed rulemaking pro bono services. The information
possesses the number of years of involve rules of agency practice and required for the report should be readily
experience required by paragraphs procedure, and/or interpretive rules. See available to participating law school
(c)(1)(ii) and (c)(2)(ii), the OED Director Perez v. Mortg. Bankers Ass’n, 135 S. Ct. clinics and present a minimal
tkelley on DSK3SPTVN1PROD with PROPOSALS
will measure the duration of experience 1199, 1204 (2015) (interpretive rules administrative burden. Additionally, the
from the date of the candidate’s request ‘‘advise the public of the agency’s Office currently has 47 participating law
for approval. Any additional criteria construction of the statutes and rules school clinics, and it is expected that
established by the OED Director, as set which it administers’’) (citation and this number may increase slightly.
forth in paragraphs (c)(1)(v) and internal quotation marks omitted); Nat’l Accordingly, this reporting requirement
(c)(2)(v), will be published in a bulletin Org. of Veterans’Advocates v. Sec’y of and the rulemaking will not have a
on the Office of Enrollment and Veterans Affairs, 260 F.3d 1365, 1375 significant economic impact on a
Discipline’s law school clinic Web page. (Fed. Cir. 2001) (rule that clarifies substantial number of small entities.
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![Federal Register / Vol. 80, No. 241 / Wednesday, December 16, 2015 / Proposed Rules 78159
(vii) Neither ask for nor receive any Certification Program shall, on a (d) Removal of law schools
fee or compensation of any kind for quarterly basis, provide the Office of participating in the USPTO Law School
legal services from a clinic client on Enrollment and Discipline with a report Clinic Certification Program. (1) The
whose behalf service is rendered; regarding its clinic activity, which shall OED Director may remove a patent and/
(viii) Have proved to the satisfaction include: or trademark practice area of the clinic
of the OED Director that he or she (1) The number of law students of a law school participating in the
possesses the scientific and technical participating in each of the patent and USPTO Law School Clinic Certification
qualifications necessary for him or her trademark practice areas of the school’s Program:
to render patent applicants valuable clinic in the preceding quarter; (i) Upon request from the law school;
service; and (2) The number of faculty (ii) If the participating law school
(ix) Comply with all additional participating in each of the patent and does not meet each of the requirements
criteria established by the OED Director. trademark practice areas of the school’s and criteria for participation in the
(3) In order to be granted limited clinic in the preceding quarter; USPTO Law School Clinic Certification
recognition to practice before the Office (3) The number of consultations Program as set forth in § 11.16, this
in trademark matters under the USPTO provided to persons who requested section, or as otherwise established by
Law School Clinic Certification assistance from the law school clinic in the OED Director; or
Program, a law student must: the preceding quarter; (iii) For other good cause as
(i) Be enrolled in a law school that is (4) The number of client determined by the OED Director.
an active participant in the USPTO Law representations undertaken for each of (2) In the event that a practice area of
School Clinic Certification Program; the patent and trademark practice areas a participating school is removed by the
(ii) Be enrolled in the trademark of the school’s clinic in the preceding
practice area of a clinic of the OED Director, the participating law
quarter; school students must:
participating law school; (5) The identity and number of
(iii) Have successfully completed at (i) Immediately cease all student
applications and responses filed in each practice before the Office in the relevant
least one year of law school or the of the patent and/or trademark practice
equivalent; practice area and notify the client of
areas of the school’s clinic in the such; and
(iv) Have read the USPTO Rules of
preceding quarter; (ii) Disassociate themselves from all
Professional Conduct and the relevant (6) The number of patents issued, or
USPTO rules of practice and procedure client matters relating to practice before
trademarks registered, to clients of the the Office in the relevant practice area,
for trademark matters; clinic in the preceding quarter; and
(v) Be supervised by an approved including complying with Office and
(7) All other information specified by State rules for withdrawal from
Faculty Clinic Supervisor pursuant to
the OED Director. representation.
paragraph (c)(2) of this section; (c) Inactivation of law schools
(vi) Be certified by the dean of the (3) A school that has been removed
participating in the USPTO Law School from participation in the USPTO Law
participating law school, or one
Certification Program. School Clinic Certification Program
authorized to act for the dean, as: having
(1) The OED Director may inactivate under this section may reapply to the
completed the first year of law school or
a patent and/or trademark practice area program in compliance with § 11.16.
the equivalent, being in compliance
of a participating law school:
with the law school’s ethics code, and (i) If the participating law school does Dated: December 8, 2015.
being of good moral character and not have an approved Faculty Clinic Michelle K. Lee,
reputation; Supervisor for the relevant practice area, Under Secretary of Commerce for Intellectual
(vii) Neither ask for nor receive any Property and Director of the United States
as described in § 11.16(c);
fee or compensation of any kind for (ii) If the participating law school Patent and Trademark Office.
legal services from a clinic client on does not meet each of the requirements [FR Doc. 2015–31627 Filed 12–15–15; 8:45 am]
whose behalf service is rendered; and and criteria for participation in the BILLING CODE P
(viii) Comply with all additional
USPTO Law School Clinic Certification
criteria established by the OED Director.
(4) Students registered to practice Program as set forth in § 11.16, this
before the Office in patent matters as a section, or as otherwise established by ENVIRONMENTAL PROTECTION
patent agent, or authorized to practice the OED Director; or AGENCY
(iii) For other good cause as
before the Office in trademark matters
determined by the OED Director. 40 CFR Part 52
under § 11.14, must complete and
(2) In the event that a practice area of
submit a student application pursuant [EPA–R05–OAR–2015–0196; FRL–9940–11–
a participating school is inactivated, the
to paragraph (d)(1) of this section and Region 5]
participating law school students must:
meet the criteria of paragraph (d)(2) or (i) Immediately cease all student
(3) of this section, as applicable, in Air Plan Approval; Minnesota and
practice before the Office in the relevant Michigan; Revision to Taconite Federal
order to participate in the program. practice area and notify each client of
■ 4. Add § 11.17 to read as follows: Implementation Plan
such; and
§ 11.17 Requirements for participation in (ii) Disassociate themselves from all AGENCY: Environmental Protection
the USPTO Law School Clinic Certification client matters relating to practice before Agency (EPA).
Program. the Office in the relevant practice area, ACTION: Proposed rule; reopening of
tkelley on DSK3SPTVN1PROD with PROPOSALS
(a) Each law school participating in including complying with Office and public comment period.
the USPTO Law School Clinic State rules for withdrawal from
Certification Program must provide its representation. SUMMARY: Environmental Protection
patent and/or trademark services on a (3) A patent or trademark practice Agency (EPA) is reopening the public
pro bono basis for clients that qualify for area of a law school clinic that has been comment period for a proposed rule
assistance from the law school’s clinic. inactivated may be restored to active published October 22, 2015. On
(b) Each law school participating in status, upon application to and approval November 23, 2015, EPA received a
the USPTO Law School Clinic by the OED Director. request from the National Tribal Air
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Document Created: 2015-12-16 01:01:27
Document Modified: 2015-12-16 01:01:27
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Proposed Rules | |
| Action | Notice of proposed rulemaking. | |
| Dates | To be ensured of consideration, written comments must be received on or before February 16, 2016. | |
| Contact | William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline, by telephone at 571-272-4097. | |
| FR Citation | 80 FR 78155 | |
| RIN Number | 0651-AC99 | |
| CFR Associated | Administrative Practice and Procedure; Inventions and Patents; Lawyers and Reporting and Recordkeeping Requirements |
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