USPTO Proposes Rule to Relax Requirements for Practice Before PTAB

“The proposed rule would allow parties to proceed without separate backup counsel as long as the lead counsel is a registered practitioner; lead counsel could be a non-registered practitioner as long as there is one registered practitioner acting as counsel.”

PTABThe U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that would allow practitioners who are not registered with the USPTO patent bar to act as lead counsel in proceedings before the Patent Trial and Appeal Board (PTAB).

The NPRM comes after a Request for Comments (RFC) published in October 2022 in which the Office asked for input on whether it should expand the criteria to practice before the PTAB. The RFC specifically asked for responses to the following questions:

“(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.”

According to today’s NPRM, the Office received nine responses to the RFC and ultimately has decided to propose that practitioners must still be represented by a registered practitioner, but to allow parties to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”

Presently, lead counsel at the PTAB must be a registered practitioner. Non-registered practitioners can be back-up counsel, but only “where the lead counsel is a registered practitioner,” and when “a motion to appear pro hac vice 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.” Additionally, each represented party must designate both a lead counsel and at least one back-up counsel.

The NPRM would relax these requirements in a number of ways. First, the proposed rule would allow parties to proceed without separate backup counsel as long as the lead counsel is a registered practitioner. The proposal also provides that lead counsel could be a non-registered practitioner as long as there is one registered practitioner acting as counsel and would allow a previous recognition of pro hac vice status in an America Invents Act (AIA) proceeding to allow an individual to be considered a PTAB-recognized practitioner eligible “for automatic pro hac vice admission in subsequent proceedings via a simplified and expedited process that does not require payment of a fee.”

According to the NPRM, most of the comments recommended retaining the requirement that a registered practitioner be involved in PTAB proceedings and that non-registered practitioners meet “fitness-to-practice standards” but said it would be less costly if non-registered practitioners could avoid having to file separate pro hac vice motions in each case.

The rulemaking is part of the USPTO’s ongoing effort to expand access to practice before the Office and to reduce costs for individuals and smaller entities. “By expanding the admission criteria to practice before the PTAB, we are opening our doors to more participation in the innovation ecosystem, while not compromising our goal to ensure we issue and maintain robust and reliable intellectual property rights,” said USPTO Director Kathi Vidal.

Comments must be received by May 21, 2024, via the Federal eRulemaking Portal by entering docket number PTO-P-2023-0058.

Image Source: Deposit Photos
Author: gustavofrazao
Image ID: 120005790 



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Join the Discussion

7 comments so far.

  • [Avatar for Sarah Mcpherson]
    Sarah Mcpherson
    February 25, 2024 06:52 am

    I differ to your assumption. I am sure my story will bring back the need for what it used to be. Or the USPTO will possibly cease to exist when my facts are laid out.

  • [Avatar for David Lewis]
    David Lewis
    February 21, 2024 06:42 pm

    It used to be that the inventor could represent themselves during prosecution for doing essentially anything. Now, that is not quite the case. Now, to file an ADS, or if the inventor decides to assign the invention to an LLC, even if she/he owns the LLC in its entirety, suddenly, they need a registered agent. Interestingly, the break in the trend makes things more difficult for the individual inventor, whereas most of the trend makes things easier for corporations.

  • [Avatar for Anon]
    February 21, 2024 04:15 pm

    Mr. Morgan, whether or not the client retains control is NOT at issue with an administrative agency going beyond their own level of authority.

    Your answer is MISinformation – at best.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    February 21, 2024 01:40 pm

    Whether as lead counsel or associate counsel [as in the past], there are certainly situations, such as PTAB oral arguments, especially in contested inter-partes cases, in which using an attorney with oral arguments experience [including responding on the spot to the questioning] is preferable to using only a registered patent attorney without any such experience. In any case, it is the client who retains ultimate control over the client’s positions in the proceeding and decides what legal advice to take from which attorneys. In IPRs the latter is frequently the law firm handing the litigation, in which an IPR is just one aspect, and the case managing partner may or may not be someone who once passed the PTO agents and attorneys exam.

  • [Avatar for Anon]
    February 21, 2024 09:07 am

    I do expect the Administrative Agency (within the Executive Branch) to ACT in a political manner.

    I also expect them to be severely rebuffed (see Boundy and Tafas) when they exceed their authority.

    Sadly – and this is shown in regards to overreach of the Judicial Branch as well – the Checks and Balances system of each Branch being able (and doing so) to correct one of the other Branches appears to be broken, given the amounts of lobbying and Dark Money that has driven the supposed ‘most responsive’ Legislative Branch into a state of polarized morass.

    Innovation law should be the easiest path to obtain clarity, as the Quid Pro Quo does NOT involve ANY voices of “stakeholders” who have as their desire, weak innovation protection laws.

  • [Avatar for Anon]
    February 20, 2024 06:11 pm

    This should be DOA.

    The practice here is NOT before an Article III body.

    There is ZERO ability for the administrative agency within the Executive Branch to brandish such a change.

    Not by Notice and Comment.

    Not by anything.

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