[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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