The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO's wider initiative to expand access to practice before the Office. Specifically, the proposed rule changes address, in part, comments received from the USPTO's October 2022 request for comments on ways to expand opportunities for non-registered practitioners ("NRP") (Fed. Reg. 63047). The proposed changes cover good cause exemptions to the PTAB's back-up counsel requirements, pro hac vice ("PHV") admission for NRPs, and new duty of notice requirements for PHV NRPs.
The regulation currently requires a party represented by counsel to designate lead counsel and at least one back-up counsel who can conduct business on behalf of lead counsel. 37 C.F.R. § 42.10. The proposal permits the PTAB to exempt a party demonstrating good cause from designating back-up counsel as long as lead counsel is a registered practitioner. As amended, a party may show good cause by demonstrating that it lacks financial resources to retain both lead and back-up counsel. It is unclear from the proposal's plain language, however, if this will be the exclusive method of showing good cause or if there will be other permissible situations. Notably, the USPTO particularly acknowledged "individuals, smaller entities and others who may be under resourced" in its comments accompanying this part of the proposed changes.
Additionally, the proposal would allow the PTAB to recognize NRPs appearing PHV as either lead or back-up counsel. The current regulation only allows NRPs to serve as back-up counsel. Under the proposal, NRPs will be permitted to serve as lead counsel on a showing of good cause, so long as at least one other practitioner designated to appear on behalf of the party during the proceeding is a registered practitioner. The amendment notes that NRPs may be granted PHV status on a showing that counsel is an experienced litigating attorney and back-up counsel will be a registered practitioner.
Relatedly, NRPs who have previously appeared PHV in an AIA proceeding and who were not subsequently denied PHV status will be considered PTAB-recognized practitioners. PHV motions must currently be filed as illustrated in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013). Under Unified Patents, PHV NRP applicants, like their registered counterparts, are subject to the USPTO Rules of Professional Conduct. Their motions for PHV admission must contain a statement of facts showing there is good cause for the PTAB to recognize counsel PHV during the proceeding, along with an affidavit or declaration attesting that the applicant meets eight specific professional conduct standards.
In contrast, PTAB-recognized practitioners will be eligible for automatic, fee-free, and expedited PHV admission after a party files notice of intent to designate them as lead or back-up counsel and the NRP files a certification. Objections to notices will be due within five business days. If no objection is filed, the PTAB-recognized practitioner will be admitted PHV after the party files notices identifying the practitioner as counsel of record. Even if an objection is filed, if the PTAB does not order otherwise within ten business days after the objection is filed, the PTAB-recognized practitioner will be admitted PHV.
Lastly, the proposal imposes an additional ethical duty on PHV NRPs. Currently, all individuals appearing before the PTAB are subject to the duties of candor and good faith imposed pursuant to 37 C.F.R. § 42.11. Under the amendments, PHV NRPs will have a continuing duty to notify the PTAB within 5 days of developments rendering their previous PHV application materially incomplete/incorrect, such as subsequent disbarment or sanctions.
In sum, the proposed changes would lower the barrier for NRPs to appear before the PTAB in AIA proceedings. The proposal is designed to expand access while protecting the public from unqualified practitioners. The USPTO hopes the proposal will increase efficiency and reduce unnecessary expenses.
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