Expanding Opportunities To Appear Before the Patent Trial and Appeal Board

DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 42</CFR> <DEPDOC>[Docket No. PTO-P-2023-0058]</DEPDOC> <RIN>RIN 0651-AD75</RIN> <SUBJECT>Expanding Opportunities To Appear Before the Patent Trial and Appeal Board</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Notice of proposed rulemaking. <SUM> <HD SOURCE="HED">SUMMARY:</HD> As part of its initiatives to expand access to practice before the U.S. Patent and Trademark Office (USPTO or Office), the USPTO proposes to amend the rules regarding admission to practice before the Patent Trial and Appeal Board (PTAB or Board) in proceedings under the Leahy-Smith America Invents Act (AIA proceedings) to give parties the option to designate non-registered practitioners who are recognized <E T="03">pro hac vice</E> ( <E T="03">i.e.,</E> granted recognition in a specific PTAB proceeding) as lead counsel; excuse parties from the requirement to designate back-up counsel upon a showing of good cause such as a lack of resources to hire two counsel; establish a streamlined alternative procedure for recognizing counsel <E T="03">pro hac vice</E> that is available when counsel has previously been recognized <E T="03">pro hac vice</E> in a different PTAB proceeding; and clarify that those recognized <E T="03">pro hac vice</E> have a duty to inform the Board of subsequent events that render inaccurate or incomplete representations they made to obtain <E T="03">pro hac vice</E> recognition. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> Written comments must be received on or before May 21, 2024. </EFFDATE> <HD SOURCE="HED">ADDRESSES:</HD> For reasons of government efficiency, comments must be submitted through the Federal eRulemaking Portal at <E T="03">www.regulations.gov.</E> To submit comments via the portal, one should enter docket number PTO-P-2023-0058 on the homepage and select “search.” The site will provide search results listing all documents associated with this docket. Commenters can find a reference to this proposed rule and select the “Comment” icon, complete the required fields, and enter or attach their comments. Attachments to electronic comments will be accepted in Adobe® portable document format or Microsoft Word® format. 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. Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of or access to comments is not feasible due to a lack of access to a computer and/or the internet, please contact the USPTO using the contact information below for special instructions. <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Michael P. Tierney, Vice Chief Administrative Patent Judge, or Scott C. Moore, Acting Senior Lead Administrative Patent Judge, at 571-272-9797. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">Background</HD> The Director of the USPTO has statutory authority to require those seeking to practice before the Office to show that they possess “the necessary qualifications to render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office.” 35 U.S.C. 2(b)(2)(D). Thus, courts have determined that the USPTO Director bears the primary responsibility for protecting the public from unqualified practitioners. See <E T="03">Hsuan-Yeh Chang</E> v. <E T="03">Kappos,</E> 890 F. Supp. 2d 110, 116-17 (D.D.C. 2012) (“Title 35 vests the [Director of the USPTO], not the courts, with the responsibility to protect [US]PTO proceedings from unqualified practitioners.”) (quoting <E T="03">Premysler</E> v. <E T="03">Lehman,</E> 71 F.3d 387, 389 (Fed. Cir. 1995)), aff'd sub nom., <E T="03">Hsuan-Yeh Chang</E> v. <E T="03">Rea,</E> 530 F. App'x 958 (Fed. Cir. 2013). Pursuant to that authority and responsibility, the USPTO has promulgated regulations, administered by the Office of Enrollment and Discipline (OED), that provide that registration to practice before the USPTO in patent matters or design patent matters requires a practitioner to demonstrate possession of “the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service.” 37 CFR 11.7(a)(2)(ii). <SU>1</SU> <FTREF/> The USPTO determines whether an applicant possesses the legal qualification by administering a registration examination, which applicants must pass before being admitted to practice. See 37 CFR 11.7(b)(ii). The USPTO sets forth guidance for establishing possession of scientific and technical qualifications in the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office (GRB). The GRB is available at <E T="03">www.uspto.gov/sites/default/files/documents/OED_GRB.pdf.</E> The GRB also contains the “Application for Registration to Practice before the United States Patent and Trademark Office.” <FTNT> <SU>1</SU>  Legal representation before Federal agencies is generally governed by the provisions of 5 U.S.C. 500. However, that statute provides a specific exception for representation in patent matters before the USPTO. 5 U.S.C. 500(e). <E T="03">See</E> 35 U.S.C. 2(b)(2)(D) (formerly 35 U.S.C. 31). </FTNT> The rules that currently govern practice before the PTAB in AIA proceedings differ somewhat from the rules that govern other types of USPTO proceedings. In an AIA proceeding, 37 CFR 42.10(a) requires that each represented party designate a lead counsel and at least one back-up counsel. The regulation requires that the lead counsel be a registered practitioner. The regulation allows non-registered practitioners to be back-up counsel, but only “where the lead counsel is a registered practitioner,” and when “a motion to appear <E T="03">pro hac vice</E> by counsel who is not a registered practitioner [is] granted upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” <E T="03">Id.</E> The Board typically requires that <E T="03">pro hac vice</E> motions be filed in accordance with the “Order Authorizing Motion for <E T="03">Pro Hac Vice</E> Admission” in <E T="03">Unified Patents, Inc.</E> v. <E T="03">Parallel Iron, LLC,</E> IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013) (the <E T="03">Unified Patents</E> Order). The <E T="03">Unified Patents</E> Order requires that a motion for <E T="03">pro hac vice</E> admission must: a. Contain a statement of facts showing there is good cause for the Board to recognize counsel <E T="03">pro hac vice</E> during the proceeding [; and] b. Be accompanied by an affidavit or declaration of the individual seeking to appear attesting to the following: i. Membership in good standing of the Bar of at least one State or the District of Columbia; ii. No suspensions or disbarments from practice before any court or administrative body; iii. No application for admission to practice before any court or administrative body ever denied; iv. No sanctions or contempt citations imposed by any court or administrative body; v. The individual seeking to appear has read and will comply with the Office Patent Trial Practice Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37 CFR; vi. The individual will be subject to the USPTO Rules of Professional Conduct set forth in 37 CFR 11.101 <E T="03">et. seq.</E> and disciplinary jurisdiction under 37 CFR 11.19(a); vii. All other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three years; and viii. Familiarity with the subject matter at issue in the proceeding. <FP> <E T="03">Id.</E> at 3. If the affiant or declarant is unable to provide any of the information requested above or make any of the required statements or representations under oath, the <E T="03">Unified Patents</E> Order requires that the individual provide a full explanation of the circumstances as part of the affidavit or declaration. <E T="03">Id.</E> at 4. </FP> <HD SOURCE="HD1">Proposed Changes</HD> On October 18, 2022, the USPTO published a Request for Comments in which the USPTO requested comments on potential ways to expand opportunities for non-registered practitioners to appear before the Patent Trial and Appeal Board. 87 FR 63047. The request asked several questions, including: (1) whether the USPTO should permit non-registered practitioners to appear as lead counsel in AIA proceedings, and if so, whether they should need to be accompanied by a registered practitioner as back-up counsel; (2) whether the USPTO should establish a new procedure by which non-registered practitioners could be admitted to practice before the PTAB; (3) what impact various proposals would have on the cost of representation; and (4) whether any changes should be implemented initially as a pilot program. The Office received nine comments in response to the request. Five comments were in favor of retaining existing limits on non-registered practitioners, while four comments generally supported expanding the ways in which non-registered practitioners can participate in AIA proceedings. During the comment period, the Office received several comments in favor of expanding the ways in which non-registered practitioners can participate in PTAB AIA proceedings, and several comments opposing such changes. The comments were split on the issue of whether ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 33k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━