Final Rule Codifies Existing BPAI Practice

As a reminder, non-registered practitioners have, in limited circumstances, been permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The USPTO proposed adopting this practice for the new post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB) 37 C.F.R § 42.10(c). The final rule, which issued last week, maintains the pro hac vice provision but adds a bit of a twist.

In the earlier discussion on this topic, I relayed the explanation of Chief Judge Smith as provided on the USPTO website (America Invents Act (AIA) micro site) relative to the proposed pro hac vice rule. In essence, Judge Smith outlined the types of conditions that were contemplated by proposed rule 42.10(c).

The final rule more concretely codifies the expectations of the USPTO while ensuring that registered practitioners drive the PTAB proceedings.

The rule pertaining to counsel (§ 42.10) appearing before the PTAB has been changed as follows:

1. Where the previous rule suggested that lead and back up counsel be identified, the final rule requires such identification. § 42.10(a).

2. Lead counsel must be a registered practitioner, and back up counsel may be recognized pro hac vice upon a showing of good cause (such as where the applying attorney is an experienced litigator AND familiar with the subject patent). The Board reserves the right to impose additional conditions, for example, a stipulation that the recognized attorney be bound by USPTO ethical and disciplinary controls. § 42.10(c)

In essence, the final rule seemingly adopts the previous patent interference rule with an additional, registered practitioner safeguard.

As explained in the previous interference rule, Contested Case Practice Guide, § 41.5 Counsel, [t]he Board may authorize a person other than a registered practitioner to appear as counsel in a specific proceeding. But the practice note of the same section of the Guide emphasizes that [c]contested cases can be technically, legally, and procedurally complex. Consequently, a motion to appear pro hac vice will rarely be granted unless the counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the contested case. (emphasis added)

It remains unclear if pro hac practice will be any more common at the PTAB relative to patent interference practice, especially as registered practitioners are required to be lead counsel irregardless.