To expand opportunities to practice before the United States Patent and Trademark Office (USPTO) while maintaining safeguards that ensure high-quality legal representation, we are issuing a final rule to amend the rules governing who may practice before the Patent Trial and Appeal Board (PTAB or Board). The final rule responds to input received from the public, including responses to our previous request for comments and notice of proposed rulemaking.
Under current criteria, represented parties must retain both lead and back-up counsel, and lead counsel must be a registered practitioner (a member of the patent bar). If a party wishes to retain a non-registered attorney as back-up counsel, that party must file a pro hac vice motion seeking permission for that attorney to appear in a specific proceeding, pay a fee, and wait for the Board to act on the motion.
This final rule will allow parties to proceed without back-up counsel upon a showing of good cause. It will also establish a simplified and expedited alternative procedure by which parties can request that a non-registered attorney be recognized pro hac vice. This new procedure, which will be available so long as counsel was recognized pro hac vice in a prior PTAB proceeding, will not require a fee and, in most circumstances, will not require the party to wait for the Board to act on the request. Parties will still retain the option of seeking recognition of counsel via a traditional pro hac vice motion.
This final rule will also clarify that non-registered attorneys who are granted leave to appear pro hac vice have a continuing obligation to inform the Board of developments relevant to their continued suitability for pro hac vice recognition.
Based on input received from the public, we are not proceeding at this time with a final rule that would permit non-registered attorneys to appear as lead counsel. Instead, we intend to pursue a pilot project under which non-registered attorneys who are recognized pro hac vice would be permitted, in certain circumstances, to appear as lead counsel.
“Thanks to valuable input we received from the public, our final rule on practicing before the PTAB provides additional opportunities for attorneys to participate in PTAB proceedings,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “These changes will benefit the innovation ecosystem while maintaining safeguards that ensure high-quality legal representation.”
The full text of the final rule is available in the Federal Register. This final rule will become effective on November 12.