Statute of Limitations Provisions for Office Disciplinary Proceedings
The AIA amends 35 U.S.C. § 32 by adding between the third and fourth sentences the following language: “A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office . . . .” (125 Stat. 284, 291.) 35 U.S.C. § 32 is further amended by the AIA to replace the U.S. District Court for the District of Columbia with the U.S. District Court for the Eastern District of Virginia as the proper venue to review the actions of the Director if requested by petition. (125 Stat. 284, 316.)
This amendment moves away from the previously accepted 5 year statute of limitations to commence a disciplinary action for violations of the U.S.P.T.O. Code of Professional Responsibility pursuant to 28 U.S.C. § 2462. (77 Fed. Reg. 45247, 45248.) 35 U.S.C. § 32 grants the Office of Enrollment and Discipline (OED) the authority to “take disciplinary action against any person, agent, or attorney who fails to comply with the regulations established under 35 U.S.C. § 2(b)2(D).” (Id.) The Director of OED takes four steps prior to commencing a § 11.32 disciplinary action against an accused practitioner. (Id.) The Director will (1) screen the allegations, (2) request information or evidence from the accused practitioner, (3) conduct an investigation after practitioner has been given an opportunity to respond, and (4) either close the investigation, issue a warning, enter settlement agreement with practitioner, or forward to the Committee on Discipline for determination of probable cause to file a § 11.32 disciplinary action. (Id., see 77 Fed. Reg. 457,458.)
On January 5, 2012, the U.S.P.T.O. published a notice of proposed rulemaking and request for comments. (77 Fed. Reg. 457.) Comments were submitted from one practitioner and the following organizations: American Bar Association (ABA) Section of Intellectual Property Law, American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), and Pharmaceutical Research and Manufacturers of America (PhRMA).
On July 31, 2012, the U.S.P.T.O. published final rules regarding the implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings in the Federal Register. (77 Fed. Reg. 45247.) The new rules amend §11.1 to define “grievance” as “a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.” (77 Fed. Reg. 45247, 45248.) The written submission need not come from any particular source and “written information or evidence received by the OED Director which presents specific information indicating possible grounds for discipline of an identified practitioner will be deemed a grievance.” (Id.) A grievance must be in written form. (Id.) Therefore, telephone inquiries to the OED will not be considered a grievance. (Id.) While there is no format for the written submission, the alleged practitioner must be identified and there must be sufficient evidence or information presented in order to determine whether grounds for discipline exist. (Id.) Lastly, notification to the Director pursuant to 37 C.F.R. 11.24(a) and 11.25, whereby practitioners are required notify the OED Director within 30 days of being disciplined by another jurisdiction or being convicted of a crime, will be treated as a grievance under 37 C.F.R. §11.1 and 11.34(d). (Id.) Further in view of the now presented definition of “grievance,” § 11.22 is revised. (77 Fed. Reg. 45247, 45248-49.)
The time period for which the Director has to initiate a disciplinary action is set forth in § 11.34. The rules set forth that “a complaint shall be filed within one year after the date on which the OED Director receives a grievance forming the basis of the complaint, and no complaint shall be filed more than ten years after the date on which the misconduct forming the basis for the proceeding occurred.” (77 Fed. Reg. 45247, 45249). Therefore, the finalized rules set the one-year statutory date at one year from the date when an officer or employee of OED receives a grievance forming the basis of a complaint. (77 Fed. Reg. 45247, 45248-49.) The final rule is a deviation from the previously proposed regulation. Under the proposed regulations the one year period “would have commenced for § 11.32 actions when the OED Director received a petitioner’s complete, written response to a § 11.22(f)(1)(ii) request for information and evidence issued by OED in response to a grievance.” (77 Fed. Reg. 45247, 45249, see 77. Fed. Reg. 457, 459.) The proposed regulations would have allowed the Director to complete steps (1) and (2) prior to commencing a disciplinary action against a practitioner before the one-year statutory period even began. The final rules indicate that this previously proposed regulation has not been adopted in response to the comments submitted. (77 Fed. Reg. 45247, 45249.) In order to prevent the filing of a complaint solely to meet the statutory deadline, the practitioner and OED can enter into a tolling agreement in order to provide additional time to resolve the matter without the filing of a complaint and subsequent litigation. (Id.) The Director can combine multiple grievances received close in time about a single practitioner into a single grievance. (Id.)
These rules became effective on August 30, 2012. A link to the rules published in the Federal Register can be accessed below: