USPTO Implements New PTAB Rules Effective November 12, 2024

By Babak Akhlaghi on November 1, 2024. In a significant move to streamline America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), the United States Patent and Trademark Office (USPTO) recently announced changes set to take effect on November 12, 2024. These changes aim to simplify the pro hac vice admission process at the PTAB and also reduce litigation costs while ensuring high-quality representation before the USPTO continues to remain a standard.

Balancing Cost Management and Quality Representation

The newly implemented rules streamline the requirement for parties appearing before the PTAB, allowing them to manage costs more effectively by not mandating both a lead and backup counsel. While the lead counsel must be a registered patent attorney, flexibility is introduced by permitting the party not to have backup counsel when justified by good cause. This approach particularly benefits parties with limited financial resources, ensuring they can still receive high-quality legal representation without the financial burden of hiring multiple practitioners.

The new rules emphasize that the focus should be on the needs of the parties rather than the preferences of the counsel, ensuring that legal representation remains informed and comprehensive. The PTAB retains the authority to oversee proceedings and can revoke permission if needed to protect the interests of involved parties, maintaining the integrity of the process.

The USPTO's decision not to allow non-registered attorneys as lead counsel ensures that all parties are guided by professionals with all necessary qualifications to handle complex matters before the PTAB, including in quasi-prosecution work such as claim amendments or reissue applications.

Streamlining the Pro Hac Vice Admission Process

The new rules mark a pivotal shift in how non-registered practitioners can participate in PTAB proceedings. Historically, their presence was mandatory and these attorneys faced a rigorous process to gain pro hac vice admission, which included filing detailed motions and providing affidavits to demonstrate their good legal standing and expertise in litigation and specific knowledge of the subject matter. With the updated regulations, the process has been simplified for those who have once obtained such admission to appear before the PTAB, allowing for a more straightforward and expedited admission for them.

Feedback and Final Decision

The journey to these final rules began with a request for public feedback in October 2022, which revealed a mix of opinions on expanding roles for non-registered practitioners. After careful consideration of these comments and a subsequent notice of proposed rulemaking in February 2024, the USPTO crafted a balanced approach that addresses the needs of diverse legal entities while upholding the quality of service expected in PTAB matters.

Conclusion

The newly implemented PTAB rules set by the USPTO ensure quality legal representation while managing costs effectively. By mandating that registered patent practitioners serve as lead counsel without requiring a compulsory backup counsel, these rules ensure clients receive expert guidance on both technical and procedural matters before the PTAB. This approach significantly benefits clients with limited financial resources, making PTAB proceedings more accessible and inclusive. By prioritizing quality representation and financial accessibility, I believe the USPTO has struck a commendable balance that enhances the efficiency and fairness of the PTAB process.