37 CFR 10.89 - Conduct in proceedings. | Title 37 - Patents, Trademarks, and Copyrights | Code of Federal Regulations

§ 10.89

Conduct in proceedings.

(a) A practitioner shall not disregard or advise a client to disregard any provision of this Subchapter or a decision of the Office made in the course of a proceeding before the Office, but the practitioner may take appropriate steps in good faith to test the validity of such provision or decision.

(b) In presenting a matter to the Office, a practitioner shall disclose:

(1) Controlling legal authority known to the practitioner to be directly adverse to the position of the client and which is not disclosed by opposing counsel or an employee of the Office.

(2) Unless privileged or irrelevant, the identities of the client the practitioner represents and of the persons who employed the practitioner.

(c) In appearing in a professional capacity before a tribunal, a practitioner shall not:

(1) State or allude to any matter that the practitioner has no reasonable basis to believe is relevant to the case or that will not be supported by admissible evidence.

(2) Ask any question that the practitioner has no reasonable basis to believe is relevant to the case and that is intended to degrade a witness or other person.

(3) Assert the practitioner's personal knowledge of the facts in issue, except when testifying as a witness.

(4) Assert the practitioner's personal opinion as to the justness of a cause, as to the credibility of a witness, as to the culpability of a civil litigant, or as to the guilt or innocence of an accused; but the practitioner may argue, on the practitioner's analysis of the evidence, for any position or conclusion with respect to the matters stated herein.

(5) Engage in undignified or discourteous conduct before the Office (see § 1.3 of the subchapter).

(6) Intentionally or habitually violate any provision of this subchapter or established rule of evidence.

Title 37 published on 2012-07-01

The following are only the Rules published in the Federal Register after the published date of Title 37.

For a complete list of all Rules, Proposed Rules, and Notices view the Rulemaking tab.

2013-04-03; vol. 78 # 64 - Wednesday, April 3, 2013

78 FR 20180 - Changes to Representation of Others Before The United States Patent and Trademark Office

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2013-07382
RIN	0651-AC81
Docket No.	PTO-C-2012-0034

DEPARTMENT OF COMMERCE, Patent and Trademark Office

Final rule.

Effective Date: May 3, 2013.

37 CFR Parts 1, 2, 7, 10, 11 and 41

Summary

The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association's (ABA) Model Rules of Professional Conduct (ABA Model Rules), which were published in 1983, substantially revised in 2003 and updated through 2012. The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings. These changes will enable the Office to better protect the public while also providing practitioners with substantially uniform disciplinary rules across multiple jurisdictions.

2012-08-14; vol. 77 # 157 - Tuesday, August 14, 2012

77 FR 48776 - Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2012-17907
RIN	0651-AC68
Docket No.	PTO-P-2011-0074

DEPARTMENT OF COMMERCE, Patent and Trademark Office

Final rule.

Effective Date: The changes in this final rule take effect on September 16, 2012. Applicability Date: The changes to 37 CFR 1.9, 1.12, 1.14, 1.17(g), 1.27, 1.32, 1.33, 1.36, 1.41, 1.42, 1.43, 1.45, 1.46, 1.53(f) and (h), 1.55, 1.56, 1.63, 1.64, 1.66, 1.67, 1.76, 1.78, 1.81, 1.105, 1.131, 1.153, 1.162, 1.172, 1.175, 1.211, 1.215, 1.321, 1.421, 1.422, 1.424, 1.431, 1.491, 1.495(a), (c), and (h), 1.497, 3.31, 3.71, 3.73, and 41.9, and the removal of 37 CFR 1.47 and 1.432, apply only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

37 CFR Parts 1, 3, 5, 10, and 41

Summary

The United States Patent and Trademark Office (Office) is revising the rules of practice to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA). The AIA permits a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent. The AIA also streamlines the requirements for the inventor's oath or declaration, and permits a substitute statement in lieu of an oath or declaration in certain circumstances. The Office is revising the rules of practice relating to the inventor's oath or declaration, including reissue oaths or declarations, and substitute statements signed by a person other than an inventor, and to provide for assignments containing oath or declaration statements. Additionally, the Office is revising the rules of practice relating to the inventor's oath or declaration to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Finally, to better facilitate processing of patent applications, the Office is revising and clarifying the rules of practice for power of attorney and prosecution of an application by an assignee.

2012-08-06; vol. 77 # 151 - Monday, August 6, 2012

77 FR 46615 - Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2012-18530
RIN	0651-AC66
Docket No.	PTO-P-2011-0072

DEPARTMENT OF COMMERCE, United States Patent and Trademark Office

Final rule.

Effective date: The changes in this final rule are effective on September 16, 2012.

37 CFR Parts 1, 5, 10, 11, and 41

Summary

The Leahy-Smith America Invents Act (AIA) expands the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provides for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding. The Office is revising the rules of practice to implement these post-patent provisions, as well as other miscellaneous provisions, of the AIA.

This is a list of United States Code sections, Statutes at Large, Public Laws, and Presidential Documents, which provide rulemaking authority for this CFR Part.

This list is taken from the Parallel Table of Authorities and Rules provided by GPO [Government Printing Office].

It is not guaranteed to be accurate or up-to-date, though we do refresh the database weekly. More limitations on accuracy are described at the GPO site.

United States Code

USC : Title 5 - GOVERNMENT ORGANIZATION AND EMPLOYEES

§ 500 - Administrative practice; general provisions

USC : Title 15 - COMMERCE AND TRADE

§ 1123 - Rules and regulations for conduct of proceedings in Patent and Trademark Office

USC : Title 35 - PATENTS

§ 2 - Powers and duties

§ 6 - Board of Patent Appeals and Interferences

§ 31 - Repealed.

§ 32 - Suspension or exclusion from practice

§ 41 - Patent fees; patent and trademark search systems

Title 37 published on 2012-07-01

The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR 10 after this date.

2013-04-03; vol. 78 # 64 - Wednesday, April 3, 2013

78 FR 20180 - Changes to Representation of Others Before The United States Patent and Trademark Office

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2013-07382
RIN	0651-AC81
Docket No.	PTO-C-2012-0034

DEPARTMENT OF COMMERCE, Patent and Trademark Office

Final rule.

Effective Date: May 3, 2013.

37 CFR Parts 1, 2, 7, 10, 11 and 41

Summary

The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association's (ABA) Model Rules of Professional Conduct (ABA Model Rules), which were published in 1983, substantially revised in 2003 and updated through 2012. The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings. These changes will enable the Office to better protect the public while also providing practitioners with substantially uniform disciplinary rules across multiple jurisdictions.

2012-10-18; vol. 77 # 202 - Thursday, October 18, 2012

77 FR 64190 - Changes to Representation of Others Before the United States Patent and Trademark Office

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2012-25355
RIN	0651-AC81
Docket No.	PTO-C-2012-0034

DEPARTMENT OF COMMERCE, United States Patent and Trademark Office

Notice of proposed rulemaking.

To be ensured of consideration, written comments must be received on or before December 17, 2012.

37 CFR Parts 1, 2, 7, 10, 11 and 41

Summary

The United States Patent and Trademark Office (Office or USPTO) proposes to align the USPTO's professional responsibility rules with those of most other U.S. jurisdictions by replacing the current Patent and Trademark Office Code of Professional Responsibility, adopted in 1985, based on the 1980 version of the Model Code of Professional Responsibility of the American Bar Association (“ABA”), with new USPTO Rules of Professional Conduct, which are based on the Model Rules of Professional Conduct of the ABA, which were published in 1983, substantially revised in 2003 and updated through 2011. Changes approved by the ABA House of Delegates in August 2012 have not been incorporated in these proposed rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations and proceedings.

2012-08-14; vol. 77 # 157 - Tuesday, August 14, 2012

77 FR 48776 - Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2012-17907
RIN	0651-AC68
Docket No.	PTO-P-2011-0074

DEPARTMENT OF COMMERCE, Patent and Trademark Office

Final rule.

Effective Date: The changes in this final rule take effect on September 16, 2012. Applicability Date: The changes to 37 CFR 1.9, 1.12, 1.14, 1.17(g), 1.27, 1.32, 1.33, 1.36, 1.41, 1.42, 1.43, 1.45, 1.46, 1.53(f) and (h), 1.55, 1.56, 1.63, 1.64, 1.66, 1.67, 1.76, 1.78, 1.81, 1.105, 1.131, 1.153, 1.162, 1.172, 1.175, 1.211, 1.215, 1.321, 1.421, 1.422, 1.424, 1.431, 1.491, 1.495(a), (c), and (h), 1.497, 3.31, 3.71, 3.73, and 41.9, and the removal of 37 CFR 1.47 and 1.432, apply only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

37 CFR Parts 1, 3, 5, 10, and 41

Summary

The United States Patent and Trademark Office (Office) is revising the rules of practice to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA). The AIA permits a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent. The AIA also streamlines the requirements for the inventor's oath or declaration, and permits a substitute statement in lieu of an oath or declaration in certain circumstances. The Office is revising the rules of practice relating to the inventor's oath or declaration, including reissue oaths or declarations, and substitute statements signed by a person other than an inventor, and to provide for assignments containing oath or declaration statements. Additionally, the Office is revising the rules of practice relating to the inventor's oath or declaration to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Finally, to better facilitate processing of patent applications, the Office is revising and clarifying the rules of practice for power of attorney and prosecution of an application by an assignee.

2012-08-06; vol. 77 # 151 - Monday, August 6, 2012

77 FR 46615 - Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act

GPO FDSys XML | Text

Additional Documents

type	regulations.gov
FR Doc.	2012-18530
RIN	0651-AC66
Docket No.	PTO-P-2011-0072

DEPARTMENT OF COMMERCE, United States Patent and Trademark Office

Final rule.

Effective date: The changes in this final rule are effective on September 16, 2012.

37 CFR Parts 1, 5, 10, 11, and 41

Summary

The Leahy-Smith America Invents Act (AIA) expands the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provides for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding. The Office is revising the rules of practice to implement these post-patent provisions, as well as other miscellaneous provisions, of the AIA.

37 CFR 10.89 - Conduct in proceedings.

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