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Patent Trial and Appeal Board |
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New rules regarding back-up counsel and pro hac vice admission
Effective November 12, 2024
The USPTO recently issued a final rule to expand opportunities for different types of counsel to appear on behalf of parties before the USPTO while maintaining safeguards that ensure high quality legal representation. This rule governs who may practice before the Patent Trial and Appeal Board in America Invents Act (AIA) proceedings. The final rule goes into effect on November 12, 2024, as an amendment of 37 C.F.R. § 42.10.
In AIA proceedings, parties are generally represented by a “lead” counsel and at least one “back-up” counsel. The amended rule allows parties to file a motion to proceed without back-up counsel if they show good cause; lead counsel is still required to be a member of the patent bar (37 C.F.R. § 42.10(a)). If a party in a currently pending case wishes to file such a motion, they should contact the panel to seek authorization before filing it (37 C.F.R. § 42.20(b)).
The amendment also creates a new, streamlined, and fee-free procedure for seeking pro hac vice recognition for counsel previously recognized pro hac vice in an AIA proceeding. This new procedure requires a declaration or affidavit that satisfies Board requirements (37 C.F.R. 42.10(c)(2)). If a party in a currently pending case wishes to use this new procedure, they should first contact the panel and request the list of requirements.
The amendment also clarifies that all nonregistered attorneys recognized pro hac vice have a continuing obligation to inform the Board of developments relevant to their continued suitability for pro hac vice recognition (37 C.F.R. § 42.10(c)(3)). All counsel who appear before the Board should be aware of this continuing obligation.
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