PTAB Rule Permits Solo Representation and Automatic Pro Hac Vice Admission

On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys. Full text of the final rule can be found here. The new regulations are intended to improve access to the PTAB and streamline existing processes. Expanding Opportunities to Appear Before the Patent Trial and Appeal Board, 89 Fed. Reg. 82172 (Oct. 10, 2024) (to be codified at 37 C.F.R. pt. 42).

Current regulations require parties to designate both lead counsel and at least one backup counsel for AIA proceedings. Id. at 82173. If backup counsel is not admitted to practice in front of the PTAB, the PTAB must grant a motion to appear pro hac vice. The motion must explain the attorney’s compliance with several qualifications and requires an accompanying fee. Id.; see alsoUnified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013). The USPTO issued a notice of proposed rulemaking (NPRM) on February 21, 2024, proposing various changes to PTAB procedures.

The NPRM initially proposed several changes, notably including: (1) permitting a party to proceed without backup counsel upon showing good cause; (2) permitting automatic admission—without a fee—of a nonregistered practitioner previously admitted pro hac vice; and (3) permitting a nonregistered attorney to serve as lead counsel alongside registered backup counsel. Expanding Opportunities to Appear Before the Patent Trial and Appeal Board, 89 Fed. Reg. at 82174; see also Expanding Opportunities to Appear Before the Patent Trial and Appeal Board, 89 Fed. Reg. 13017 (Feb. 21, 2024) (NPRM). The USPTO proposed these changes to “expand access to practice before the [USPTO]” and “simplify and streamline the pro hac vice admission process and reduce litigation costs.” Expanding Opportunities to Appear Before the Patent Trial and Appeal Board, 89 Fed. Reg. at 82172–73.

The recently issued final rule implements several provisions proposed in the NPRM and incorporates various amendments based on feedback received during the comment period. Id. at 82174.

First, the final rule permits a party to proceed without backup counsel upon showing good cause. Id. at 82178. The USPTO explained “good cause may be present if a party demonstrates that it lacks the financial resources to retain both lead and back-up counsel.” Id. at 82174. More specifically, “the good cause inquiry focuses on the needs of the party seeking relief, not the needs or preference of counsel.” Id. The USPTO noted “a solo practitioner who prefers to work alone would not constitute good cause.” Id. Comments in support of this proposal noted the potential for more small law firms and solo practitioners to participate in AIA trial proceedings. Id.

Second, the final rule implements a process for automatic admission of an attorney who previously appeared before the PTAB pro hac vice. Id. at 82175. An attorney previously admitted pro hac vice will be deemed a “provisionally recognized PTAB attorney” and will avoid paying a fee to appear before the PTAB. Id. at 82178. A provisionally recognized PTAB attorney must file a notice identifying a registered attorney serving as lead counsel, certifying the nonregistered attorney satisfies all the requirements for pro hac vice representation, and agreeing to be bound by the USPTO Rules of Professional Conduct. The attorney must also be “an experienced litigating attorney and [have] an established legal familiarity with the subject matter at issue in the proceeding.” Id. Upon filing the notice, an opposing party will have the opportunity to contest the admission by filing an objection within five business days. If opposing parties do not file an objection, the attorney is deemed admitted pro hac vice. Id.

Third, the USPTO declined to immediately adopt the proposed provision permitting an attorney admitted pro hac vice to serve as lead counsel. Comments from stakeholders opposing the proposal noted a concern with a nonregistered lead counsel’s ability to effectively discuss “quasi-prosecution matters” and the potential for introducing “sharp district court-like litigation tactics, and weaken safeguards against litigation misconduct.” Id. at 82175. The USPTO adopted a “cautious approach,” instead deciding to implement a future pilot program permitting “non-registered counsel who are admitted pro hac vice... to serve as lead counsel in at least some circumstances.” Id. The USPTO did not discuss in which circumstances it intends to implement the new pilot program.

These changes have the potential to streamline the process for parties appearing before the PTAB. Permitting parties to proceed without backup counsel in certain cases may benefit smaller firms and solo practitioners who may not typically have the resources to participate in PTAB proceedings. Id. at 82174. Similarly, the USPTO expects automatic approval of pro hac vice representation and elimination of the accompanying fee will “minimize the burden and expense of seeking pro hac vice recognition in subsequent cases.” Id. at 82175.

The final rule will become effective on November 12, 2024. Id. at 82172.