Now that new patent trials are being conducted at the USPTO Patent Trial and Appeal Board (PTAB), questions are arising as to who can best represent the parties in such proceedings. Should it be patent attorneys, who have experience with Patent Office practice, or should it be litigators, who may have more experience taking depositions of opposing witnesses? The USPTO rules governing practice before the PTAB require designation of “lead counsel” who must be a “registered practitioner” (e.g., a patent attorney or patent agent registered to practice before the USPTO). But, 37 CFR § 42.10(c) permits appearance by a non-patent attorney with a showing that the attorney “is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” A recent board opinion outlines the requirements for such a motion to appear pro hac vice in an inter partes review proceeding.
The Board’s Requirements
The board opinion indicates that a motion to appear pro hac vice in an inter partes review proceeding should be filed no sooner than 21 days after service of the petition to institute the proceeding. Any opposition must be filed no later than one week after the filing of the underlying motion, and no reply shall be filed unless authorized by the board.
The board opinion indicates that a motion must be supported by a statement of facts and an affidavit or declaration by the individual seeking to appear. The statement of facts must show good cause for the board to recognize counsel pro hac vice during the proceeding. The affidavit or declaration must attest to the following:
- Membership in good standing of the bar of at least one state or the District of Columbia
- No suspensions or disbarments from practice before any court or administrative body
- No application for admission to practice before any court or administrative body ever denied
- No sanctions or contempt citations imposed by any court or administrative body
- 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 part 42 of the C.F.R.
- The individual will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a)
- All other proceedings before the office for which the individual has applied to appear pro hac vice in the last three (3) years
- Familiarity with the subject matter at issue in the proceeding.
If the individual is unable to provide any of this information or unable to make any of the required statements or representations under oath, the individual should provide a full explanation of the circumstances as part of the affidavit or declaration.
A Team Approach
The PTAB rules may promote a team approach to representation, where both patent attorneys and litigators represent both parties. (Of course, some attorneys are both registered patent attorneys and litigators.) Such an approach may not only serve the interests of the parties, but also may make it easier for the board to ensure that the proceedings are completed within the statutory deadlines.