[Federal Register Volume 80, Number 241 (Wednesday, December 16, 2015)]
[Proposed Rules]
[Pages 78155-78159]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-31627]
[[Page 78155]]
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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.
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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]
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