IP Alerts

February 22, 2024

In a recent announcement, the United States Patent and Trademark Office (USPTO) is proposing new rulemaking to expand access to practice before the PTAB. Specifically, the USPTO is proposing four changes. First, the USPTO is proposing to amend the rules regarding admission to practice before the Patent Trial and Appeal Board (PTAB) in proceedings under the Leahy-Smith America Invents Act (AIA proceedings) to give parties the option to designate non-registered practitioners who are recognized pro hac vice (i.e., granted recognition in a specific PTAB proceeding) as lead counsel. The second change would establish a streamlined alternative procedure for recognizing counsel pro hac vice that is available when counsel has previously been recognized pro hac vice in a different PTAB proceeding. The third proposes excusing parties from the requirement to designate back-up counsel upon a showing of good cause, such as a lack of resources to hire two counsel. Finally, the fourth proposed change attempts to clarify that those recognized pro hac vice have a duty to inform the Board of subsequent events that render inaccurate or incomplete representations they made to obtain pro hac vice recognition.

In October 2022, the USPTO published a Request for Comments regarding ways to expand opportunities for nonregistered practitioners to appear before the PTAB. Based in part on the received comments, the USPTO is proposing to retain the requirement that parties be represented by a registered practitioner, but “would permit parties to designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.” The USPTO believes such changes “may better support individuals, smaller entities and others who may be under resourced.” Additionally, in attempts to “increase efficiency and reduce unnecessary expenses,” the USPTO is further proposing the second change in attempts to streamline procedures once counsel has previously been recognized pro hac vice in a PTAB proceeding.

Comments can be submitted to the USPTO regarding these rule changes. Any such comments must be received by May 21, 2024 (within 90 days after the date of publication in the Federal Register) through the Federal eRulemaking Portal at www.regulations.gov.

For more information on this announcement, please contact Fitch Even partner Steve M. Freeland, author of this alert.


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