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01 ” The However, the final rule scrapped a proposal to permit non-registered counsel admitted pro hac vice to serve as lead counsel in America Invents Act (AIA) proceedings.
The Office issued a Notice of Proposed Rulemaking (NPRM) in February 2024 proposing to allow practitioners who are not registered with the patent bar to act as lead counsel in PTAB proceedings. The 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 the February NPRM, the Office received nine responses to the RFC and ultimately 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
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[is] designate both a lead counsel and at least one back-up counsel.Today’s final rule noted that there were seven comments submitted on the NPRM. Based on the feedback received, the USPTO will:Allow parties to proceed without backup counsel if they can establish a showing of “good cause,” such as lack of financial resources;
delay moving forward with the proposal to allow non-registered counsel admitted pro hac vice to serve as lead counsel in favor of a more “cautious approach”, including exploration of “a pilot project under which non-registered counsel who are admitted pro hac vice would be permitted to serve as lead counsel in at least some circumstances”;
- establish “a streamlined procedure for pro hac vice recognition of counsel who were recognized in a previous PTAB proceeding without requiring a fee”;
- revise the terminology in the proposed SSSS 42.10(c) and 42.15(e) to use the term “provisionally recognized PTAB attorney” rather than “PTAB-recognized practitioners” to refer to “non-registered counsel who are seeking or who have been granted pro hac vice recognition in a Board proceeding, and the terms ‘counsel’ or ‘person’ to refer to those seeking or who have been granted pro hac vice recognition”; and
- clarify that “non-registered counsel recognized pro hac vice must inform the Board of subsequent developments that render materially incomplete or incorrect information that was provided in connection with a request for pro hac vice”
- With respect to a showing of good cause to proceed without backup counsel, the final rule explains that the inquiry focuses on the needs of the party seeking relief, not the needs or preferences of counsel”–for example, a sole practitioner who prefers not to work with other counsel would not constitute good cause.
- 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. In “These changes will benefit the innovation ecosystem while maintaining safeguards that ensure high-quality legal representation.”
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Author: gustavofrazao
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Eileen McDermott
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