Expanding Opportunities To Appear Before the Patent Trial and Appeal Board

<RULE> 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> Final rule. <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 modifies the rules regarding representation by counsel at the Patent Trial and Appeal Board (PTAB or Board) in proceedings under the Leahy-Smith America Invents Act (AIA proceedings) to: permit parties to proceed without 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> This rule is effective November 12, 2024. </EFFDATE> <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Scott C. Moore, Acting Senior Lead Administrative Patent Judge; or Michael P. Tierney, Vice Chief Administrative Patent Judge, both at 571-272-9797. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">Background</HD> The USPTO is focused on expanding American innovation for and from all and has been examining the rules governing practice before the Office to ensure that they are properly aligned with the types of work performed by practitioners and the needs of clients. As part of this effort, the USPTO recently expanded the admission criteria for patent bar applicants and established a separate design patent bar that is open to applicants who previously would not have been eligible to practice before the Office. See Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 88 FR 31249 (May 16, 2023); Representation of Others in Design Patent Matters Before the United States Patent and Trademark Office, 88 FR 78644 (November 16, 2023). In this final rule, the USPTO updates the rules governing practice before the Board to simplify and streamline the <E T="03">pro hac vice</E> admission process and reduce litigation costs while ensuring parties continue to receive high quality representation. <HD SOURCE="HD2">Rules Regarding Representation by Counsel in AIA Proceedings Prior to This Final Rule</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, 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 [them] 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> <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). See 35 U.S.C. 2(b)(2)(D) (formerly 35 U.S.C. 31). </FTNT> The rules that 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 lead counsel be a registered practitioner. The regulation allows non-registered practitioners to be back-up counsel upon a showing of good cause. For example, “where the lead counsel is a registered practitioner, 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.” 37 CFR 42.10(c). 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 37 CFR part 42; 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 <E T="03">pro hac vice</E> in the last three years; and viii. Familiarity with the subject matter at issue in the proceeding. <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. <HD SOURCE="HD2">Development of the Final Rule</HD> On October 18, 2022, the USPTO published a request for comments in which the Office sought feedback on potential ways to expand opportunities for non-registered practitioners to appear before the PTAB. Expanding Opportunities 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 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 USPTO 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. The comments were split on the issue of whether non-registered practitioners should be permitted to appear as lead counsel. However, some of the comments suggested that any potential issues with allowing non-registered practitioners to serve as lead counsel could be remedied by requiring that they be accompanied by a registered practitioner as back-up counsel. Most of the comments indicated that the Office should continue to require non-registered practitioners to meet fitness-to-practice standards, but several comments agreed that it might be more efficient and less costly to the parties to establ ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 49k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━