[Federal Register Volume 89, Number 197 (Thursday, October 10, 2024)]
[Rules and Regulations]
[Pages 82172-82179]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-23319]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2023-0058]
RIN 0651-AD75
Expanding Opportunities To Appear Before the Patent Trial and
Appeal Board
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: As part of its initiatives to expand access to practice before
the U.S. Patent and Trademark Office (USPTO or Office), the USPTO
modifies the rules regarding representation by counsel at the Patent
Trial and Appeal Board (PTAB or Board) in proceedings under the Leahy-
Smith America Invents Act (AIA proceedings) to: permit parties to
proceed without back-up counsel upon a showing of good cause, such as a
lack of resources to hire two counsel; 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; and 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.
DATES: This rule is effective November 12, 2024.
FOR FURTHER INFORMATION CONTACT: Scott C. Moore, Acting Senior Lead
Administrative Patent Judge; or Michael P. Tierney, Vice Chief
Administrative Patent Judge, both at 571-272-9797.
SUPPLEMENTARY INFORMATION:
Background
The USPTO is focused on expanding American innovation for and from
all and has been examining the rules governing practice before the
Office to ensure that they are properly aligned with the types of work
performed by practitioners and the needs of clients. As part of this
effort, the USPTO recently expanded the admission
[[Page 82173]]
criteria for patent bar applicants and established a separate design
patent bar that is open to applicants who previously would not have
been eligible to practice before the Office. See Expanding Admission
Criteria for Registration To Practice in Patent Cases Before the United
States Patent and Trademark Office, 88 FR 31249 (May 16, 2023);
Representation of Others in Design Patent Matters Before the United
States Patent and Trademark Office, 88 FR 78644 (November 16, 2023). In
this final rule, the USPTO updates the rules governing practice before
the Board to simplify and streamline the pro hac vice admission process
and reduce litigation costs while ensuring parties continue to receive
high quality representation.
Rules Regarding Representation by Counsel in AIA Proceedings Prior to
This Final Rule
The Director of the USPTO has statutory authority to require those
seeking to practice before the Office to show 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, that provide that registration to practice before the USPTO
in patent matters or design patent matters requires a practitioner to
demonstrate possession of ``the legal, scientific, and technical
qualifications necessary for [them] 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 pass 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.
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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 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 lead counsel be a registered
practitioner. The regulation allows non-registered practitioners to be
back-up counsel upon a showing of good cause. For example, ``where the
lead counsel is a registered practitioner, 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.'' 37 CFR 42.10(c).
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 37 CFR part 42;
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 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.
Development of the Final Rule
On October 18, 2022, the USPTO published a request for comments in
which the Office sought feedback on potential ways to expand
opportunities for non-registered practitioners to appear before the
PTAB. Expanding Opportunities To Appear Before the Patent Trial and
Appeal Board, 87 FR 63047. The request asked several questions,
including: (1) whether the USPTO should permit non-registered
practitioners to appear as lead counsel in AIA proceedings, and if so,
whether they should 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.
The USPTO received nine comments in response to the request. Five
comments were in favor of retaining existing limits on non-registered
practitioners, while four comments generally supported expanding the
ways in which non-registered practitioners can participate in AIA
proceedings.
The comments were split on the issue of whether non-registered
practitioners should be permitted to appear as lead counsel. However,
some of the comments suggested that any potential issues with allowing
non-registered practitioners to serve as lead counsel could be remedied
by requiring that they be accompanied by a registered practitioner as
back-up counsel. Most of the comments indicated that the Office should
continue to require non-registered practitioners to meet fitness-to-
practice standards, but several comments agreed that it might be more
efficient and less costly to the parties to establish a separate
registry or
[[Page 82174]]
certification procedure that would permit non-registered practitioners
to avoid filing separate pro hac vice motions in each individual case.
Several comments indicated that the rule requiring that parties retain
both lead and back-up counsel might increase cost. Some of these
comments asserted that the additional costs were justified to maintain
the Office's high standards of representation, and others argued that
the additional costs might adversely impact certain parties.
Most of the comments expressed no opinion on whether any changes
should be addressed as a pilot program. Of the three comments that
discussed this issue, one favored implementing any changes as a pilot
program, one indicated that a pilot program would be unnecessary, and
one indicated a pilot program would be unnecessary if the Office were
to permit non-registered practitioners to appear as lead counsel with a
registered practitioner as back-up without making other substantive
changes to admissions standards.
On February 21, 2024, after careful consideration of the public
input received in response to the request for comments, the USPTO
published a notice of proposed rulemaking (NPRM). See Expanding
Opportunities To Appear Before the Patent Trial and Appeal Board, 89 FR
13017. The NPRM granted a 90-day comment period and proposed to amend
Sec. 42.10(a) to provide that, upon a showing of good cause, the Board
may permit a party to proceed without separate back-up counsel so long
as lead counsel is a registered practitioner. The NPRM also proposed to
amend Sec. 42.10(c) to provide that (1) a non-registered practitioner
admitted pro hac vice may serve as either lead or back-up counsel for a
party so long as a registered practitioner is also counsel of record
for that party and (2) a non-registered practitioner who was previously
recognized pro hac vice in an AIA proceeding and not subsequently
denied recognition pro hac vice shall be considered a PTAB-recognized
practitioner and shall be eligible for automatic pro hac vice admission
in subsequent proceedings via a simplified and expedited process that
does not require the payment of a fee. The NPRM also proposed to amend
Sec. 42.10(c) to provide that those recognized pro hac vice have a
duty to inform the Office of any developments that occur during the
course of a proceeding that might have materially impacted the grant of
pro hac vice admission had the information been presented at the time
of grant.
Proposed Rule: Comments and Responses
The USPTO received a total of seven comments from five
organizations and two individuals. The Office appreciates the
thoughtful comments representing views from various public stakeholder
communities. The comments are publicly available at the Federal
eRulemaking Portal at www.regulations.gov/docket/PTO-P-2023-0058 and
are addressed below.
Proposed Amendment to Sec. 42.10(a) Permitting Parties To Proceed
Without Back-Up Counsel Upon Showing of Good Cause
Five comments supported the proposal to amend Sec. 42.10(a) to
provide that upon a showing of good cause, the Board may permit a party
to proceed without separate back-up counsel so long as lead counsel is
a registered practitioner. Three of these comments favored the
requirement that parties without back-up counsel be represented by a
registered practitioner, noting that this requirement is essential to
ensure quality representation and protect represented parties. One
comment noted that this proposal would allow parties with limited
resources to consider participating in AIA trial proceedings, thereby
increasing opportunities for attorneys from small law firms and solo
practitioners. Another comment suggested that the Board should go
further and retain flexibility to allow a party to proceed without a
registered practitioner in special circumstances. Yet another commenter
supported the proposed amendments to Sec. 42.10(a) but suggested that
the requirement to retain a registered practitioner might limit the
proposed rule's impact.
One comment opposed the proposed amendment to Sec. 42.10(a),
arguing that no need has been shown for such a change, that this
proposal might lead to situations in which a single counsel's limited
availability frustrates the progress of proceedings, and that allowing
parties to proceed without back-up counsel might limit opportunities
for young attorneys and under-represented members of the legal
profession.
After considering the input from the comments, the USPTO is moving
forward with a final rule providing that, upon a showing of good cause,
the Board may permit a party to proceed without separate back-up
counsel. For example, good cause may be present if a party demonstrates
that it lacks the financial resources to retain both lead and back-up
counsel. However, the Office notes that it would likely be difficult
for a party to demonstrate a lack of financial resources where that
party has also elected to pursue litigation involving the challenged
patents in other forums. The Office also notes that the good cause
inquiry focuses on the needs of the party seeking relief, not the needs
or preferences of counsel. Thus, for example, the fact that lead
counsel is a solo practitioner who prefers to work alone would not
constitute good cause for a party to proceed without separate back-up
counsel.
Based on the comments and the Board's experience, the USPTO
believes this rule will permit flexibility in situations in which good
cause is shown, while ensuring that parties are represented by counsel
having the requisite qualifications to engage in all matters before the
PTAB, including in quasi-prosecution work such as claim amendments or
reissue applications.\2\ The Office believes that permitting a
represented party to proceed without a registered practitioner as
either lead or back-up counsel would create an unacceptable risk that
the party would not receive complete advice and guidance. The Office
further notes that absent a stipulation of the parties, schedule
changes require approval from the Board. The Board also has authority
to reconsider prior decisions granting discretionary relief, and could
thus revoke permission to proceed without back-up counsel, if
appropriate. Therefore, the Board has adequate authority to prevent
scheduling considerations from unduly prejudicing a party.
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\2\ See Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding, 84 FR 16654 (April 22, 2019).
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Proposed Amendment to Sec. 42.10(c) Permitting Non-Registered Counsel
To Serve as Lead Counsel With a Registered Practitioner as Back-Up
Counsel
Three comments supported the proposal to amend Sec. 42.10(c) to
permit non-registered counsel admitted pro hac vice to serve as lead
counsel in AIA proceedings, so long as back-up counsel is a registered
practitioner. However, two of these commenters indicated that they were
uncertain whether allowing lead and back-up counsel to switch roles
would have the desired effect of expanding opportunities at the PTAB.
Three comments opposed this proposal. These comments argued that it
is important that lead counsel be qualified to discuss technical
matters and quasi-prosecution matters such as claim amendments, that
allowing non-
[[Page 82175]]
registered counsel to serve in the lead counsel role would weaken the
Office's efforts to protect the public and facilitate robust and
reliable intellectual property rights, and that no need has been shown
to justify amending this portion of Sec. 42.10(c). These comments also
suggested permitting non-registered counsel to serve as lead counsel
would devalue the importance of a separate patent bar, increase the
likelihood of sharp district court-like litigation tactics, and weaken
safeguards against litigation misconduct.
In addition, two comments noted that the proposed rule omitted
language in the current rule pertaining to pro hac vice applicants
having ``an established familiarity with the subject matter at issue''
in a proceeding. One of these comments suggested adding this language
back into the rule, and the second requested clarification regarding
whether pro hac vice counsel must have technical familiarity with the
subject matter of a proceeding, rather than just legal familiarity.
Further, the USPTO notes that it is focused on issuing and
maintaining robust and reliable intellectual property rights, including
robust and reliable patents resulting from amendments made in PTAB
proceedings or amendments made through reissue or reexamination before,
during, or after an AIA proceeding.\3\ Based on the Board's experience,
the Office believes that requiring that lead counsel be a registered
practitioner will help advance the USPTO's objectives by ensuring that
parties are fully briefed on available quasi-prosecution options and
have competent counsel to pursue quasi-prosecution amendments.
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\3\ See supra n 2.
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Based on the input from commenters and the USPTO's experience and
objectives, the Office believes that a cautious approach is appropriate
and will not move forward at this time with a final rule permitting
non-registered counsel admitted pro hac vice to serve as lead counsel
in AIA proceedings. Instead, the Office plans to explore 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. The Office may consider moving forward at a future date
with a rule permitting non-registered counsel admitted pro hac vice to
serve as lead counsel in AIA proceedings, either in a limited or full
capacity.
The USPTO further notes that the language in Sec. 42.10(c)
pertaining to pro hac vice applicants having an established familiarity
with the subject matter of a proceeding is used as an example and does
not impose a requirement. Nevertheless, in view of the comments, the
Office modifies the rule to clarify that this language refers to legal
familiarity with the subject matter of a proceeding. This change will
resolve the ambiguity noted above by making clear that non-registered
counsel need not demonstrate technical familiarity with the subject
matter of a proceeding to demonstrate good cause for pro hac vice
recognition. It also aligns with the new streamlined pro hac vice
procedures. Though the USPTO expects counsel to likewise have technical
familiarity with the subject matter, making technical familiarity a
condition of admission would indicate that technical familiarity would
have to be established for each new matter.
Proposed Amendment to Sec. 42.10(c) Streamlining Pro Hac Vice
Admission Practice for Previous Pro Hac Vice Admittees
Four comments supported the proposal to amend Sec. 42.10(c) to
establish a streamlined procedure for pro hac vice recognition of
counsel who were so recognized in a previous PTAB proceeding without
requiring a fee. These comments noted that this proposal would
streamline the pro hac vice admission process, decrease demands on the
Board's scarce resources, and reduce expenses for the parties.
One comment supported streamlining the pro hac vice recognition
process for counsel who were previously so recognized but argued that
recognition for such counsel should not be automatic and that the
requestor should still be required to show good cause. One commenter
opposed this proposal, arguing that it would result in a single grant
of a pro hac vice motion effectively granting permission for a non-
registered attorney to appear in all future PTAB proceedings.
After considering the input from the commenters, the USPTO is
moving forward with a final rule that establishes a streamlined
procedure for pro hac vice recognition of counsel who were recognized
in a previous PTAB proceeding without requiring a fee. Based on the
comments and the Board's experience, the Office believes that such a
rule will minimize the burden and expense of seeking pro hac vice
recognition in subsequent cases, while ensuring compliance with
fitness-to-practice standards. The Office notes that the proposed rule
contains language requiring the party seeking recognition to file a
declaration or affidavit affirming that all requirements set forth by
the Board for pro hac vice recognition are met and gives the opposing
counsel an opportunity to object. These requirements, which are
included in this final rule, require the requestor to demonstrate
eligibility for pro hac vice recognition and ensure that pro hac vice
recognition is not automatic in situations in which an opposing party
contends pro hac vice recognition is not appropriate.
Proposed Amendment to Sec. 42.10(c) Designating Previous Pro Hac Vice
Admittees as ``PTAB-Recognized Practitioners''
The proposed amendment to Sec. 42.10(c) used the term ``PTAB-
recognized practitioners'' to refer to non-registered counsel who were
previously recognized pro hac vice by the Board. Two comments generally
supported using this terminology to refer to counsel who were
previously recognized pro hac vice. In contrast, two other comments
argued that this terminology might lead members of the public to
mistakenly believe that PTAB-recognized practitioners are registered
practitioners, thereby diluting the importance of the patent bar. One
other comment did not have a substantive objection to the term ``PTAB-
recognized practitioners'' but contended that this terminology is
inconsistent with the definition of ``practitioners'' contained in
Sec. 11.1. That comment asserted that the definition of
``practitioner'' in Sec. 11.1 does not encompass non-registered
counsel who are admitted pro hac vice in Board proceedings. Thus, the
commenter argued, Sec. 42.10(c) should not use the term ``PTAB-
recognized practitioners'' to refer to non-registered counsel who are
seeking or who were granted pro hac vice recognition. That comment
noted that the same terminology problem appears in Sec. 42.15(e),
which also uses the term ``practitioners'' to refer to counsel
recognized pro hac vice. The comment suggested that Sec. Sec. 42.10(c)
and 42.15(e) be revised to use the term ``counsel'' rather than
``practitioner'' to refer to non-registered attorneys who are seeking
or have been granted pro hac vice recognition. The comment further
suggested that Sec. 42.15(e), which sets forth the fee for pro hac
vice recognition, be revised to conform with the new procedure set
forth in Sec. 42.10(c)(2) of this rule, which does not require the
payment of a fee.
The USPTO notes that the observation in the above-referenced
comment with respect to the use of the term ``practitioner'' in Sec.
11.1 is incorrect in that ``practitioner,'' as defined by Sec. 11.1,
encompasses non-registered counsel
[[Page 82176]]
who are admitted pro hac vice in Board proceedings. Nevertheless, based
on the totality of input from commenters, the Office revises the
terminology in Sec. Sec. 42.10(c) and 42.15(e) to avoid using the term
``practitioner'' so as to minimize the likelihood a member of the
public will confuse such persons with registered practitioners. This
final rule uses the term ``provisionally recognized PTAB attorney'' 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. Based on input from comments, this
final rule also revises Sec. 42.15(e) to replace the term ``non-
registered practitioners'' with ``counsel who are not registered
practitioners'' and to conform this section with the new procedure
created by Sec. 42.10(c)(2) of this final rule, which permits pro hac
vice recognition in certain circumstances without the payment of a fee.
As discussed below, such counsel are required to explicitly agree that
they are subject to the USPTO Rules of Professional Conduct set forth
in Sec. Sec. 11.101 et seq.
Proposed Amendment to Sec. 42.10(c) Clarifying Continuing Disclosure
Duties of Pro Hac Vice Admittees
Four comments supported the proposed amendment to Sec. 42.10(c)
clarifying 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 recognition. No comments opposed this
proposal.
After considering the input from the commenters, the USPTO is
moving forward with the provision clarifying 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
recognition. Based on the comments and the Board's experience, the
Office believes this final rule will provide useful clarification and
guidance regarding the obligations of those recognized pro hac vice.
Changes From the Proposed Rule
In light of the comments received, this final rule makes revisions
to the NPRM as follows.
In Sec. 42.10(c)(1), the Office has dropped the proposed language
that would have permitted non-registered counsel who are recognized pro
hac vice to serve as lead counsel in favor of moving forward with a
pilot program. The final rule retains the current language of Sec.
42.10(c) in place of the language that was proposed in the NPRM. The
final rule includes two modifications to the language in Sec.
42.10(c). First, the following heading has been added to the beginning
of Sec. 42.10(c)(1): ``Pro hac vice recognition of a person other than
a registered practitioner.'' This language is similar to the heading in
the proposed version of Sec. 42.10(c)(1) and does not change the
substance of the rule. Second, the term ``established familiarity'' has
been replaced with ``established legal familiarity.'' This change
clarifies, in response to a comment, that an established legal
familiarity with the issues in a proceeding is sufficient to support a
request for pro hac vice admission, and technical familiarity is not a
stated requirement.
To conform Sec. 42.10(c)(2) with the change discussed above, the
Office has deleted language that would have permitted a non-registered
attorney admitted pro hac vice to serve as lead counsel.
In Sec. 42.10(c)(2) and (3), the term ``PTAB-recognized
practitioner'' has been replaced with ``provisionally recognized PTAB
attorney.'' This change was made in response to commenter concerns that
the public might confuse ``PTAB-recognized practitioners'' with
registered practitioners. Also, the term ``non-registered
practitioner'' has been replaced with ``counsel who is not a registered
practitioner,'' the term ``non-registered practitioners recognized pro
hac vice'' has been replaced with ``a person recognized pro hac vice,''
and certain instances of the term ``practitioner'' have been replaced
with the term ``counsel.'' These minor changes in terminology remove
the use of the term ``practitioner'' to refer to counsel who are
seeking or have been granted pro hac vice recognition. Notwithstanding
these changes, which are being made to avoid confusion, those admitted
pro hac vice remain ``practitioners'' under USPTO rules, and must
explicitly agree that they are subject to the USPTO Rules of
Professional Conduct set forth in Sec. Sec. 11.101 et seq.
The final rule contains two revisions to Sec. 42.15(e) that were
not contained in the NPRM but that commenters indicated were necessary
to conform this section to the revised version of Sec. 42.10 set forth
in this final rule. First, for the same reasons discussed above, the
term ``non-registered practitioners'' in Sec. 42.15(e) has been
replaced with ``counsel who are not registered practitioners.'' Second,
Sec. 42.15(e) has been revised to conform with Sec. 42.10(c)(2) of
this final rule, which provides for a new procedure for pro hac vice
recognition that does not require a fee.
Discussion of the Final Rule
Section 42.10(a) is amended to clarify that lead counsel must be a
registered practitioner and to provide that, upon a showing of good
cause, the Board may permit a party to proceed without separate back-up
counsel.
Section 42.10(c) is amended to clarify that an established legal
familiarity with the subject matter of a proceeding is sufficient to
support a request for pro hac vice recognition, and technical
familiarity is not required. Section 42.10(c) is also amended to
provide a new procedure whereby a non-registered attorney who was
previously recognized pro hac vice in an AIA proceeding and not
subsequently denied recognition pro hac vice shall be considered a
provisionally recognized PTAB practitioner and shall be eligible for
automatic pro hac vice admission in subsequent proceedings via a
simplified and expedited process that does not require the payment of a
fee. Section 42.10(c) is further amended to provide that those
recognized pro hac vice have a duty to inform the Office of any
developments that occur during the course of a proceeding that might
have materially impacted the grant of pro hac vice admission had the
information been presented at the time of grant. The terminology of
Sec. 42.10(c) is also amended to use the terms ``counsel'' or
``person'' rather than ``practitioner'' to refer to persons who are
seeking or have been granted pro hac vice recognition.
Section 42.15(e) is amended to replace the term ``non-registered
practitioners'' with the term ``counsel who are not registered
practitioners'' and to conform with Sec. 42.10(c)(2) of this final
rule, which permits certain persons to seek pro hac vice recognition
without the payment of a fee.
Rulemaking Requirements
A. Administrative Procedure Act: The changes in this rulemaking
involve rules of agency practice and procedure and/or interpretive
rules and do not require notice-and-comment rulemaking. See Perez v.
Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) (explaining that
interpretive rules ``advise the public of the agency's construction of
the statutes and rules which it administers'' and do not require
notice-and-comment when issued or amended); Cooper Techs. Co. v. Dudas,
536 F.3d 1330, 1336-37 (Fed.
[[Page 82177]]
Cir. 2008) (5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require
notice-and-comment rulemaking for ``interpretative rules, general
statements of policy, or rules of agency organization, procedure, or
practice''); and JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C.
Cir. 1994) (explaining that rules are not legislative because they do
not ``foreclose effective opportunity to make one's case on the
merits'').
Nevertheless, the USPTO chose to seek public comment before
implementing this rule to benefit from the public's input.
B. Regulatory Flexibility Act: For the reasons set forth in this
rulemaking, the Senior Counsel for Regulatory and Legislative Affairs,
Office of General Law, of the USPTO, has certified to the Chief Counsel
for Advocacy of the Small Business Administration that the changes in
this final rule will not have a significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b).
This rule permits parties to proceed without back-up counsel upon a
showing of good cause, creates a new streamlined procedure for
recognizing counsel pro hac vice that is available for counsel who have
previously been recognized pro hac vice in a different Board
proceeding, and clarifies that those recognized pro hac vice have a
duty to inform the Board if the information presented in a request for
pro hac vice recognition is no longer accurate or complete. These
changes do not limit or restrict counsel who meet current eligibility
criteria to practice before the Board and would not limit or restrict
the ability of parties to designate counsel of their choosing. The
USPTO does not collect or maintain statistics on the size status of
impacted entities, which would be required to determine the number of
small entities that will be affected by the rule. However, the changes
in this rule are not expected to have any material impact on otherwise
regulated entities because the changes to the regulations are
procedural in nature, do not impose any significant new burdens or
requirements on parties or counsel, and are designed to reduce the cost
and complexity of Board proceedings. Although this rule includes a new
requirement to inform the Board if information submitted in a request
for pro hac vice recognition is no longer accurate or complete, the
number of impacted entities is expected to be very small, and any
additional cost burden is expected to be minimal. Accordingly, the
changes in this rule are expected to be of minimal additional burden to
those practicing before the Office.
For the reasons discussed above, this rulemaking will not have a
significant economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
E.O. 12866 (Sept. 30, 1993), as amended by E.O. 14094 (Apr. 6, 2023).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, and as discussed above, the Office has, to the
extent feasible and applicable: (1) made a reasoned determination that
the benefits justify the costs of the rule; (2) tailored the rule to
impose the least burden on society consistent with obtaining the
regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided online access to the rulemaking
docket; (7) attempted to promote coordination, simplification, and
harmonization across Government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
and maintain flexibility and freedom of choice for the public; and (9)
ensured the objectivity of scientific and technological information and
processes.
E. Executive Order 13132 (Federalism): This rulemaking pertains
strictly to Federal agency procedures and does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under E.O. 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian Tribal
governments; or (3) preempt Tribal law. Therefore, a Tribal summary
impact statement is not required under E.O. 13175 (Nov. 6, 2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under E.O. 13211 because this rulemaking is
not likely to have a significant adverse effect on the supply,
distribution, or use of energy. Therefore, a Statement of Energy
Effects is not required under E.O. 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden, as set forth in sections 3(a) and 3(b)(2) of E.O.
12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under E.O. 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under E.O. 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), the USPTO will submit a report containing
the final rule and other required information to the U.S. Senate, the
U.S. House of Representatives, and the Comptroller General of the
Government Accountability Office. The changes in this rulemaking are
not expected to result in an annual effect on the economy of $100
million or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of U.S.-based enterprises to compete with
foreign-based enterprises in domestic and export markets. Therefore,
this rulemaking is not a ``major rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes in this
rulemaking do not involve a Federal intergovernmental mandate that will
result in the expenditure by State, local, and tribal governments, in
the aggregate, of $100 million (as adjusted) or more in any one year,
or a Federal private sector mandate that will result in the expenditure
by the private sector of $100 million (as adjusted) or more in any one
year, and will not significantly or uniquely affect small governments.
Therefore, no actions are necessary under the provisions of the
Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act of 1969: This rulemaking will
not have any effect on the quality of the environment and is thus
categorically excluded from review under the National Environmental
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act of 1995: The
[[Page 82178]]
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions that involve the use of
technical standards.
O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of
1995 (44 U.S.C. 3501 et seq.) requires that the Office consider the
impact of paperwork and other information collection burdens imposed on
the public. This rulemaking involves information collection
requirements that are subject to review and approval by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act. The
collections of information involved in this rulemaking have been
reviewed and previously approved by OMB under OMB control number 0651-
0069 (Patent Review and Derivation Proceedings). Updates to this
information collection that result from the final rule will be
submitted to the OMB as non-substantive change requests.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
has a currently valid OMB control number.
P. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies, to provide increased opportunities
for citizen access to government information and services, and for
other purposes.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons set forth in the preamble, the USPTO amends 37 CFR
part 42 as follows:
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
1. The authority citation for part 42 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), 3, 6, 21, 23, 41, 134, 135, 143,
153, 311, 312, 314, 316, 318, 321-326, 328; Pub. L. 112-29, 125
Stat. 284; and Pub. L. 112-274, 126 Stat. 2456.
0
2. Amend Sec. 42.10 by revising paragraphs (a) and (c) to read as
follows:
Sec. 42.10 Counsel.
(a) If a party is represented by counsel, the party must designate
a lead counsel and at least one back-up counsel who can conduct
business on behalf of the lead counsel. Lead counsel must be a
registered practitioner. The Board may permit a party to proceed
without back-up counsel upon a showing of good cause. A party may show
good cause by demonstrating that it lacks the financial resources to
retain both lead and back-up counsel.
* * * * *
(c)(1) Pro hac vice recognition of a person other than a registered
practitioner. 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
the Board may impose. For example, where the lead counsel is a
registered practitioner, a motion to appear pro hac vice by counsel who
is not a registered practitioner may be granted upon showing that
counsel is an experienced litigating attorney and has an established
legal familiarity with the subject matter at issue in the proceeding.
(2) Pro hac vice recognition of provisionally recognized PTAB
attorneys. (i) Any counsel who is not a registered practitioner, who
has been previously recognized pro hac vice in a Board proceeding, and
who has not subsequently been denied permission to appear pro hac vice
in a Board proceeding shall be considered a provisionally recognized
PTAB attorney. Provisionally recognized PTAB attorneys shall be
eligible for automatic pro hac vice admission in subsequent
proceedings, subject to the following conditions.
(ii) If a party seeks to be represented in a proceeding by a
provisionally recognized PTAB attorney, that party may file a notice of
intent to designate a provisionally recognized PTAB attorney as back-up
counsel. No fee is required for such a notice. The notice shall:
(A) Identify a registered practitioner who will serve as lead
counsel, and
(B) Be accompanied by a certification in the form of a declaration
or affidavit in which the provisionally recognized PTAB attorney
attests to satisfying all requirements set forth by the Board for pro
hac vice recognition of a provisionally recognized PTAB attorney and
agrees to be subject to the USPTO Rules of Professional Conduct set
forth in Sec. Sec. 11.101 et seq. of this chapter and disciplinary
jurisdiction under Sec. 11.19(a) of this chapter.
(iii) Any objection shall be filed by a party within five business
days after the filing of the notice. If an objection is not filed
within five business days, the provisionally recognized PTAB attorney
shall be deemed admitted pro hac vice in that proceeding upon filing of
updated mandatory notices identifying that counsel as counsel of
record. If an objection is filed by a party within 5 business days,
unless the Board orders otherwise within 10 business days after the
objection is filed, the provisionally recognized PTAB attorney shall be
deemed admitted pro hac vice after updated mandatory notices
identifying that counsel as counsel of record are then filed.
(iv) If a provisionally recognized PTAB attorney is unable to
satisfy any of the requirements set forth by the Board, or is unable to
make any of the required attestations under oath, this procedure is not
available, and pro hac vice recognition must instead be sought under
the process set forth in paragraph (c)(1) of this section.
(3) Continuing duty of persons recognized pro hac vice. For the
entire duration of any proceeding in which counsel who is not a
registered practitioner is recognized pro hac vice pursuant to
paragraph (c)(1) or (2) of this section, the counsel who is not a
registered practitioner has a continuing duty to notify the Board in
writing within five business days if:
(i) The counsel who is not a registered practitioner is sanctioned,
cited for contempt, suspended, disbarred, or denied admission by any
court or administrative agency;
(ii) The counsel who is not a registered practitioner no longer
qualifies as a member in good standing of the Bar of at least one State
or the District of Columbia; or
(iii) Any other event occurs that renders materially inaccurate or
incomplete any representation that was made to the Board in connection
with the request for pro hac vice recognition, provided, however, that
counsel who is not a registered practitioner is not required to inform
the Board of subsequent applications for pro hac vice recognition
unless such an application is denied.
* * * * *
0
3. Amend Sec. 42.15 by revising paragraph (e) to read as follows:
Sec. 42.15 Fees.
* * * * *
(e) Fee for counsel who are not registered practitioners, and who
are not seeking automatic recognition pursuant to Sec. 42.10(c)(2), to
appear pro hac vice
[[Page 82179]]
before the Patent Trial and Appeal Board: $250.00
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-23319 Filed 10-9-24; 8:45 am]
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