New Statute of Limitations for Disciplinary Proceedings

by Dennis Crouch

The USPTO has issued its final rules relating to changes to the statute of limitations for initiating disciplinary proceedings against US patent attorneys and agents.  77 FR 45247. The change is required by the America Invents Act of 2011 (AIA) and will have an effective date of August 30, 2012.

Under the new law, any disciplinary proceeding before the USPTO must 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.  The statute also authorizes the USPTO to regulate the process of informing USPTO officers. 

Here, the final rules identify two key points:

• The one-year statute of limitations is triggered once the Office of Enrollment
  and Discipline (OED) Director receives a grievance forming the basis of
  the complaint.
• The OED will accept a grievance from any source, but it must be in writing.

Prior to this change, disciplinary actions were generally understood to be subject to a five-year statute of limitations.

This final rule amends the rule that was proposed in January 2012.  In the original proposal, the one-year timeline would not have been triggered until the USPTO first completed a preliminary review of the case and received a “complete, written response” from the accused practitioner.”  At that time, I commented that the USPTO’s interpretation of the one-year deadline was in tension to the text of the new statute.