USPTO Diversion Pilot Program for Minor Issues of Misconduct Formalized

In addition to state bar disciplinary rules, the United States Patent and Trademark Office's (USPTO) bar has its own set of disciplinary rules, enforced by the Office of Enrollment and Discipline. These rules are set out in 37 C.F.R. Part 11.

On July 14, 2023, the USPTO issued a Final Rule announcing, “Changes to the Representation of Others Before the United States Patent and Trademark Office.”[1] These changes formalize the USPTO’s Diversion Pilot Program; this program was initially set up “for patent and trademark practitioners whose physical or mental health issues or law practice management issues resulted in minor misconduct.” In formalizing this program, USPTO disciplinary practice is now aligned with most state attorney disciplinary practices.

Other highlights of the final rule are:

• Foreign attorneys or agents granted reciprocal recognition to practice before the USPTO in trademark matters are required to provide and update their contact and licensure status information or have their recognition withdrawn so the public will have access to up-to date information;
• Deferral to a state’s attorney licensing authority regarding alternative business structures between a practitioner and a non-practitioner to reduce the potential for conflicts between the USPTO and the attorney licensing authority;
• Removal of a fee required when changing one’s status from a patent agent to a patent attorney;
• Removal of term “nonimmigrant alien” from provision regarding limited recognition for individuals who are neither U.S. citizens nor lawful permanent residents, but who nevertheless have been granted status and the authority to work in the United States by the U.S. Government in order to practice before the USPTO in patent matters; and
• Minor adjustments to other provisions related to the representation of others before the USPTO.

The Diversion Pilot Program began in September 2017 as an alternative to formal discipline. “The Diversion Pilot Program is available to practitioners whose physical or mental health issues (e.g., issues tied to substance/alcohol abuse) or law practice management issues (e.g., inadequate client communication or docket management) resulted in minor misconduct and little, if any, harm to a client.”[2] A practitioner’s participation in the Diversion Pilot Program is intended to provide the practitioner with an opportunity to rectify the underlying cause of the practitioner’s misconduct, thus reducing the chance that the misconduct will recur or escalate. Through the program, practitioners may avoid formal discipline by successfully completing diversion agreements with the OED Director. The criteria for participation are set forth at 37 C.F.R. §11.30. More information on the Diversion Pilot Program can be found on the USPTO website, https://www.uspto.gov/sites/default/files/documents/OED_Diversion_Pilot_Program.pdf .

Before formalizing the Diversion Pilot Program, the USPTO published proposed rules on September 8, 2022, and then received comments from four organizations and one individual. The comments are summarized in the notice of the final rule, https://public-inspection.federalregister.gov/2023-14606.pdf

Endnotes

[1] 88 Fed. Reg. 45,078 (July 14, 2023).

[2] https://www.uspto.gov/sites/default/files/documents/OED_Diversion_Pilot_Program.pdf