Expanding opportunities to practice before the PTAB

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Patent Trial and Appeal Board

Expanding opportunities to practice before the PTAB

To expand opportunities to practice before the United States Patent and Trademark Office (USPTO) while maintaining quality, we are issuing a Notice of Proposed Rulemaking (NPRM) to amend the criteria individuals must meet to practice before the Patent Trial and Appeal Board (PTAB or Board). The NPRM responds to input received from the public, including responses to our previous Request for Comments.

Under current criteria, only members of the USPTO patent bar are eligible to appear as lead counsel in America Invents Act (AIA) proceedings involving third-party challenges to issued patents. Other attorneys may only appear if granted permission in a specific proceeding, and are limited to acting as backup counsel.

The proposed amendments would give parties the option to designate non-registered practitioners whom the Board has recognized on a pro hac vice basis as lead counsel, allow parties to proceed without backup counsel upon a showing of good cause, and establish a streamlined alternative procedure for pro hac vice admission that is available when counsel was recognized pro hac vice in a previous proceeding. The proposed amendments would also clarify that those recognized pro hac vice have a continuing obligation to inform the Board of developments relevant to their continued suitability for pro hac vice recognition.

Under these proposed amendments, parties would still retain the option of seeking the recognition of counsel via a traditional pro hac vice motion, and parties would still be required to be represented by a registered practitioner as either lead or backup counsel.

“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 Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

The full text of the NPRM is available in the Federal Register. Stakeholders are encouraged to submit comments through the Federal eRulemaking Portal starting tomorrow until May 21, 2024.

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