[Federal Register Volume 87, Number 200 (Tuesday, October 18, 2022)]
[Notices]
[Pages 63047-63050]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-22572]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2022-0032]
Expanding Opportunities To Appear Before the Patent Trial and
Appeal Board
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Request for comments.
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SUMMARY: In this request for comments, the United States Patent and
Trademark Office (USPTO or Office) seeks public input on the
requirements to practice before the Patent Trial and Appeal Board (PTAB
or Board). The Office
[[Page 63048]]
seeks to ensure quality representation in PTAB proceedings under the
Leahy-Smith America Invents Act (AIA) without creating undue
restrictions or barriers to entry for practitioners wishing to appear
before the PTAB. The Office's goal is to expand the admission criteria
to practice before the PTAB so more Americans, including those from
traditionally under-represented and under-resourced communities, can
participate in Office practice, while maintaining the Office's high
standards necessary for the issuance and maintenance of robust and
reliable intellectual property rights.
DATES: Comment Deadline: Written comments must be received on or before
January 17, 2023.
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, one should
enter docket number PTO-P-2022-0032 on the homepage and click
``Search.'' The site will provide a search results page listing all
documents associated with this docket. Commenters can find a reference
to this notice and click on the ``Comment'' icon, complete the required
fields, and enter or attach their comments. Attachments to electronic
comments will be accepted in portable document format (PDF) or DOCX
format. Because comments will be made available for public inspection,
information that the submitter does not desire to make public, such as
an address or phone number, should not be included in the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of and
access to comments is not feasible due to a lack of access to a
computer and/or the internet, please contact the USPTO using the
contact information below for special instructions.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Vice Chief
Administrative Patent Judge; Scott Moore, Lead Administrative Patent
Judge; and/or Jamie Wisz, Lead Administrative Patent Judge; at 571-272-
9797.
SUPPLEMENTARY INFORMATION:
Summary
In this request for comments, the USPTO seeks feedback and
information on revising the criteria to practice before the PTAB in
proceedings under the AIA. The Office is also exploring changes or
improvements to training and development programs, such as the PTAB's
Legal Experience and Advancement Program (LEAP), to increase
opportunities for practitioners who wish to appear before the PTAB.
Background
Rules Currently Governing Practice Before the PTAB in AIA Proceedings
The Director of the USPTO has statutory authority to require a
showing by patent practitioners that they possess ``the necessary
qualifications to render applicants or other persons valuable service,
advice, and assistance in the presentation or prosecution of their
applications or other business before the Office.'' 35 U.S.C.
2(b)(2)(D). Thus, courts have determined that the USPTO Director bears
the primary responsibility for protecting the public from unqualified
practitioners. See Hsuan-Yeh Chang v. Kappos, 890 F. Supp. 2d 110, 116-
17 (D.D.C. 2012) (``Title 35 vests the [Director of the USPTO], not the
courts, with the responsibility to protect [US]PTO proceedings from
unqualified practitioners.'') (quoting Premysler v. Lehman, 71 F.3d
387, 389 (Fed. Cir. 1995)), aff'd sub nom., Hsuan-Yeh Chang v. Rea, 530
F. App'x 958 (Fed. Cir. 2013).
Pursuant to that authority and responsibility, the USPTO has
promulgated regulations, administered by the Office of Enrollment and
Discipline (OED), that provide that registration to practice in patent
matters before the USPTO requires a practitioner to demonstrate
possession of ``the legal, scientific, and technical qualifications
necessary for him or her to render applicants valuable service.'' 37
CFR 11.7(a)(2)(ii).\1\ The USPTO determines whether an applicant
possesses the legal qualification by administering a registration
examination, which applicants must past before being admitted to
practice. See 37 CFR 11.7(b)(ii). The USPTO sets forth guidance for
establishing possession of scientific and technical qualifications in
the General Requirements Bulletin for Admission to the Examination for
Registration to Practice in Patent Cases before the United States
Patent and Trademark Office (GRB). The GRB is available at
www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. The GRB also
contains the ``Application for Registration to Practice before the
United States Patent and Trademark Office.''
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\1\ Legal representation before Federal agencies is generally
governed by the provisions of 5 U.S.C. 500. However, that statute
provides a specific exception for representation in patent matters
before the USPTO. 5 U.S.C. 500(e). See 35 U.S.C. 2(b)(2)(D)
(formerly 35 U.S.C. 31).
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The rules that currently govern practice before the PTAB in AIA
proceedings differ somewhat from the rules that govern other types of
USPTO proceedings. In an AIA proceeding, 37 CFR 42.10(a) requires that
each represented party designate a lead counsel and at least one back-
up counsel. The regulation requires that the lead counsel be a
registered practitioner. The regulation allows non-registered
practitioners to 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.'' Id.
The Board typically requires that pro hac vice motions be filed in
accordance with the ``Order Authorizing Motion for Pro Hac Vice
Admission'' in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
00639, Paper 7 (PTAB Oct. 15, 2013) (the Unified Patents Order). The
Unified Patents Order requires that a motion for pro hac vice admission
must:
a. Contain a statement of facts showing there is good cause for the
Board to recognize counsel pro hac vice during the proceeding[; and]
b. Be accompanied by an affidavit or declaration of the individual
seeking to appear attesting to the following:
i. Membership in good standing of the Bar of at least one State or
the District of Columbia;
ii. No suspensions or disbarments from practice before any court or
administrative body;
iii. No application for admission to practice before any court or
administrative body ever denied;
iv. No sanctions or contempt citations imposed by any court or
administrative body;
v. The individual seeking to appear has read and will comply with
the Office Patent Trial Practice Guide and the Board's Rules of
Practice for Trials set forth in part 42 of 37 CFR;
vi. The individual will be subject to the USPTO Rules of
Professional Conduct set forth in 37 CFR 11.101 et. seq. and
disciplinary jurisdiction under 37 CFR 11.19(a);
vii. All other proceedings before the Office for which the
individual has applied to appear pro hac vice in the last three years;
and
viii. Familiarity with the subject matter at issue in the
proceeding.
Id. at 3. If the affiant or declarant is unable to provide any of
the information
[[Page 63049]]
requested above or make any of the required statements or
representations under oath, the Unified Patents Order requires that the
individual provide a full explanation of the circumstances as part of
the affidavit or declaration. Id. at 4.
The PTAB's Legal Experience and Advancement Program
LEAP is an existing PTAB program developed by the USPTO to provide
training and oral advocacy opportunities for less experienced advocates
to gain practical experience in proceedings before the PTAB. LEAP is
open to both registered and non-registered practitioners who have had
three or fewer substantive oral arguments in any federal tribunal,
including the PTAB. LEAP encourages parties to offer opportunities to
LEAP practitioners by offering up to 15 minutes of additional oral
argument time to parties that allow a LEAP practitioner to present
substantive arguments at a PTAB oral hearing. To further incentivize
parties and ensure high-quality representation, LEAP allows more
experienced counsel to assist a LEAP practitioner during oral
arguments, or clarify statements made by the LEAP practitioner, if
needed. The PTAB also offers additional training and development
opportunities to LEAP practitioners, including oral argument training
and the opportunity to participate in a mock oral hearing before a
panel of PTAB judges.
Request for Public Comments
The USPTO seeks written comments from the public on whether and how
the PTAB's rules and procedures should be modified to expand
eligibility to appear as the lead or back-up counsel in AIA
proceedings. The USPTO also seeks written comments on whether and how
changes should be made to PTAB training and development programs, such
as LEAP, in order to expand opportunities for practitioners who seek to
appear before the PTAB.
The USPTO welcomes any comments from the public on the proposals
covered in Requests 1-4 in this notice. The USPTO also poses specific
questions below and invites public feedback on them.
Request 1: Expanding Opportunities To Practice Before the PTAB by
Allowing Non-Registered Practitioners To Be Admitted To Practice Before
the PTAB
The PTAB's current rules and procedures seek to ensure quality
representation in AIA proceedings by requiring that any non-registered
practitioners be admitted pro hac vice in each AIA proceeding in which
they appear, and demonstrate good cause (e.g., that they are
experienced litigation attorneys who have established familiarity with
the subject matter at issue in an AIA proceeding). The USPTO is
considering changes to PTAB rules and procedures that maintain the
quality of representation while removing undue restrictions and actual
or perceived barriers for practitioners who wish to appear before the
PTAB in AIA trial proceedings.
Under current PTAB rules, a non-registered practitioner can only
appear in an AIA proceeding if the PTAB grants a pro hac vice motion.
See 37 CFR 42.10(c) (``The Board may recognize counsel pro hac vice
during a proceeding upon a showing of good cause, subject to the
condition that lead counsel be a registered practitioner and to any
other conditions as the Board may impose.''). For example, if a party
desired to be represented in an AIA proceeding by a non-registered
litigation attorney, the party would file a pro hac vice motion. The
motion would typically include a statement of facts demonstrating good
cause. For example, the statement of facts might demonstrate that the
individual seeking admission pro hac vice was an experienced litigation
attorney who had an established familiarity with the subject matter at
issue in the proceeding. The motion would also typically be accompanied
by a declaration or affidavit of the type described in the Unified
Patents Order. If the non-registered attorney were admitted pro hac
vice, PTAB rules would limit that individual to serving as back-up
counsel and require that a registered practitioner serve as the lead
counsel.
The USPTO is considering an additional procedure by which non-
registered practitioners could be admitted to practice before the PTAB,
much like the procedure in which certain district courts allow both pro
hac vice admissions and general admissions to the court. The USPTO
invites input on whether a non-registered practitioner should be
required to satisfy only the fitness-to-practice standards set forth in
the Unified Patents Order (e.g., no prior suspensions or disbarments,
no prior sanctions or contempt citations, familiarity with the PTAB's
rules and Trial Practice Guide) or additional standards for admission
to practice before the PTAB. The USPTO also invites comments on whether
a non-registered practitioner, such as one without a certain level of
experience in AIA proceedings, should be required to undergo additional
training before being admitted to practice before the PTAB.
Additionally, the USPTO invites comments on whether a non-registered
practitioner should be required to have experience beyond that required
to demonstrate good cause for pro hac vice admission (e.g., having
served as back-up counsel in a certain number of prior AIA proceedings)
before being admitted to practice before the PTAB. To the extent that
additional training and/or experience is suggested, the USPTO requests
detailed information regarding the benefits of requiring such training
and/or experience, as well as the impacts of that requirement.
Request 2: Expanding Opportunities for Non-Registered Practitioners To
Appear as the Lead Counsel
Under current PTAB rules, non-registered practitioners can only
serve as back-up counsel; a registered practitioner must serve as the
lead counsel. See 37 CFR 42.10(c) (``The Board may recognize counsel
pro hac vice during a proceeding upon a showing of good cause, subject
to the condition that lead counsel be a registered practitioner and to
any other conditions as the Board may impose.'').
The USPTO invites comments on whether and how the USPTO should
revise the PTAB's rules and procedures to permit a non-registered
practitioner who is admitted to practice before the PTAB under Request
1, or is admitted pro hac vice in an AIA proceeding, to serve as the
lead counsel in that proceeding. The USPTO invites input on whether a
non-registered practitioner, who wishes to serve at the lead counsel,
should be required to satisfy not only the fitness-to-practice
standards set forth in the Unified Patents Order (e.g., no prior
suspensions or disbarments, no prior sanctions or contempt citations,
familiarity with the PTAB's rules and Trial Practice Guide), but should
be required to undergo additional training. In addition, the USPTO
invites comments on whether a non-registered practitioner should be
required to have experience beyond that required to demonstrate good
cause for pro hac vice admission (e.g., having served as back-up
counsel in a certain number of prior AIA proceedings) before being
permitted to serve as the lead counsel in an AIA proceeding. To the
extent that additional training and/or experience is suggested, the
USPTO requests detailed information regarding the benefits that would
result from requiring such training and/or experience, as well as any
impacts.
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Request 3: Other Considerations Regarding Non-Registered Practitioners
Requests 1 and 2 above are directed to potential modifications to
PTAB rules and procedures related to non-registered practitioners. Such
non-registered practitioners may have less familiarity than registered
practitioners with certain matters that may arise during AIA
proceedings. For example, a non-registered practitioner may have less
familiarity with issues that may arise in a motion to amend, and may
not be aware of specific reissue and reexamination options that might
be available to a patent owner. Accordingly, the USPTO invites comments
on whether any rule permitting a non-registered practitioner to be
admitted to practice before the PTAB and/or to appear as the lead
counsel in an AIA proceeding should also require that the non-
registered practitioner be accompanied by a registered practitioner as
back-up counsel. The USPTO also invites comments on the impact on the
costs of an AIA proceeding that would result from requiring that the
lead or back-up counsel be a registered practitioner.
The USPTO also recognizes that circumstances may change during the
course of an AIA proceeding in a way that might create a need for the
services of a registered practitioner. For example, the assistance of a
registered practitioner might be valuable if the patent owner
contemplates or files a motion to amend. Therefore, the USPTO invites
comments on whether any rule that permits a party to be represented
solely by a non-registered practitioner in an AIA proceeding should
require that party to subsequently retain a registered practitioner as
back-up counsel upon the occurrence of certain circumstances or events.
The types of changes discussed and contemplated above may represent
notable modifications to the rules and procedures that currently govern
practice before the PTAB in AIA proceedings. The impacts of these types
of changes may be difficult to anticipate beforehand, and may not be
apparent to the USPTO or the public until well after any such changes
are implemented. Accordingly, it may be desirable for the USPTO to
retain flexibility to modify or refine any of the changes contemplated
in this notice before they become permanent. Therefore, the USPTO
invites comments on whether any of the changes to PTAB rules and
procedures discussed in this notice should, if adopted, be implemented
initially as a pilot program.
Request 4: Training and Development Programs and Potential Changes to
LEAP
The USPTO is interested in offering training and development
programs that will expand opportunities for practitioners desiring to
practice before the PTAB, and thereby further the USPTO's goal of
enabling more Americans to participate in the innovation ecosystem. The
PTAB's LEAP is an example of such a program. As discussed above, LEAP
practitioners benefit from specialized training and are given the
opportunity to present mock oral arguments before a panel of PTAB
judges. LEAP also incentivizes parties in AIA proceedings to allow LEAP
practitioners to present substantive arguments during PTAB oral
hearings. The USPTO is considering whether other types of training or
development options might further expand opportunities for those
wishing to practice before the PTAB. Accordingly, the USPTO invites
comments on whether there are additional training and/or development
options that the USPTO should offer to increase opportunities for less-
experienced practitioners to appear as counsel in AIA proceedings and/
or serve as the lead counsel in AIA proceedings.
Initially, LEAP was open only to practitioners who had three or
fewer substantive oral arguments in any Federal tribunal and seven or
fewer years of experience as a licensed attorney or patent agent. The
PTAB recently eliminated the requirement that LEAP practitioners have
seven or fewer years of experience in order to expand the pool of
eligible practitioners. The USPTO is considering whether there are
other changes to LEAP that might further its goals. Accordingly, the
USPTO invites comments on whether it should make any changes to LEAP to
increase opportunities for candidates to appear before the PTAB in AIA
proceedings and/or serve as the lead counsel in AIA proceedings.
Questions on Expanding Opportunities To Appear Before the PTAB
As noted above, the USPTO welcomes comments on potential proposals
for expanding eligibility to appear before the PTAB in AIA proceedings
and/or serve as the lead counsel in AIA proceedings in ways that would
further the USPTO's goals. The USPTO also welcomes comments on whether
additional training or development programs should be offered, and
whether changes to LEAP should be made, to increase opportunities. The
USPTO is particularly interested in the public's input on the questions
below; commenters are welcome to address any or all of the questions:
1. Are there any changes to PTAB rules or procedures that the
Office or the PTAB should make to increase opportunities to appear and/
or serve as counsel and/or the lead counsel in AIA proceedings, such as
any discussed in Requests 1-3 above?
1.1. If you answered ``yes'' to question 1 as to the lead counsel,
should the rules require that a non-registered practitioner have prior
experience in AIA proceedings and/or have completed training before
being designated as the lead counsel? What level of experience and/or
type of training should be required?
2. Should any rule or procedure revised by the Office that permits
a non-registered practitioner to be designated as the lead counsel in
an AIA proceeding also require that any such non-registered
practitioner be accompanied by a registered practitioner as back-up
counsel? If not, are there any circumstances or events that might occur
during the course of an AIA proceeding (e.g., the contemplated or
actual filing of a motion to amend) that might warrant requiring a
registered practitioner to then appear as back-up counsel?
3. Would a rule requiring that the lead counsel or back-up counsel
in an AIA proceeding be a registered practitioner have a significant
impact on the costs of such a proceeding? If so, what would the impact
be, and would the impact be justified?
4. Should any of the changes discussed above, if adopted, be
implemented as a pilot program?
5. Are there additional training and/or development programs the
Office should offer to increase opportunities for less-experienced
practitioners to appear as counsel and/or serve as the lead counsel in
AIA proceedings?
6. Are there any changes to LEAP that the Office should make to
increase opportunities to appear and/or serve as the lead counsel in
AIA proceedings?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-22572 Filed 10-17-22; 8:45 am]
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