The new post grant patent proceedings of the America Invents Act (AIA) are adjudicative in nature. That is to say, Derivation, Inter Partes Review (IPR) and Post Grant Review (PGR) will be conducted as trials before the Patent Trial & Appeal Board (PTAB). Patent examiners will no longer referee inter partes disputes at the USPTO (outside of legacy inter partes reexamination proceedings)
While IPR and PGR will include many litigation style mechanisms, such as limited discovery, protective orders, motions, etc, these proceedings will also embrace traditional functions of patent application prosecution. (e.g., claim amending and engineering/scientific analysis). As noted previously, non-registered practitioners can, in limited circumstances, be permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The PTAB will adopt this practice. Rule 42.10(c)
Recently, Chief Judge Smith explained the standard that will be applied to applications of non-registered practitioners by the PTAB.
The Office has proposed to allow for pro hac vice representation for non-registered practitioners before the Board in any of the four new administrative trial proceedings of inter partes review, post grant review, covered business method review, and derivation. In particular, the Board may recognize counsel pro hac vice during an administrative trial proceeding upon a showing of good cause, subject to conditions that the Board may impose, such as agreeing to be bound by the Office’s Code of Professional Responsibility. The Office has proposed to permit pro hac vice admission for non-registered practitioners in the new administrative trial proceedings for a few different reasons.
First, the Board currently permits pro hac vice admission in matters before it. From the Board’s experience, parties have found it helpful in certain circumstances to have a counsel that is experienced in handling expert testimony, cross examination, and other aspects of discovery.
Second, where a party has selected a non-registered practitioner to represent him/her in a patent infringement action and has expended significant financial or other resources in that infringement action, the Office recognizes that the party may wish to continue using the non-registered practitioner as one of the counsels in the new administrative trial proceedings.
Lastly, the Office proposes that the grant of a motion to appear pro hac vice be a discretionary action taking into account the specifics of the proceedings. In making this determination, the Board will consider the impact of granting pro hac vice admission on a party’s ability to timely complete the trial proceeding, if instituted, within the statutory twelve month window and to effectively participate in the proceeding. Similarly, the Office proposes that the revocation of pro hac vice admission be a discretionary action taking into account various factors, including incompetence, unwillingness to abide by the Office’s Rules of Professional Conduct, and incivility.
Accordingly, for these reasons, the Office believes that pro hac vice admission for non-registered patent practitioners in the new administrative trial proceedings balances the needs of clients to select their counsel against the desire for adequate safeguards for the USPTO, the profession, and the public.