Federal Register / Vol. 89, No. 35 / Wednesday, February 21, 2024 / Proposed Rules 13017 

Federal agencies to assess the effects of 

their discretionary regulatory actions. In 

particular, the Act addresses actions 

that may result in the expenditure by a 

State, local, or tribal government, in the 

aggregate, or by the private sector of 

$100,000,000 (adjusted for inflation) or 

more in any one year. Though this 

proposed rule would not result in such 

an expenditure, we do discuss the 

potential effects of this proposed rule 

elsewhere in this preamble. 

F. Environment 

We have analyzed this proposed rule 

under Department of Homeland 

Security Directive 023–01, Rev. 1, 

associated implementing instructions, 

and Environmental Planning 

COMDTINST 5090.1 (series), which 

guide the Coast Guard in complying 

with the National Environmental Policy 

Act of 1969 (42 U.S.C. 4321–4370f), and 

have made a preliminary determination 

that this action is one of a category of 

actions that do not individually or 

cumulatively have a significant effect on 

the human environment. This proposed 

rule involves excising the 2000-yard 

inland portion TAPS Terminal security 

zone. Normally such actions are 

categorically excluded from further 

review under paragraph L60(b) of 

Appendix A, Table 1 of DHS Instruction 

Manual 023–01–001–01, Rev. 1. We 

seek any comments or information that 

may lead to the discovery of a 

significant environmental impact from 

this proposed rule. 

V. Public Participation and Request for 

Comments 

We view public participation as 

essential to effective rulemaking and 

will consider all comments and material 

received during the comment period. 

Your comment can help shape the 

outcome of this rulemaking. If you 

submit a comment, please include the 

docket number for this rulemaking, 

indicate the specific section of this 

document to which each comment 

applies, and provide a reason for each 

suggestion or recommendation. 

Submitting comments. We encourage 

you to submit comments through the 

Federal Decision-Making Portal at 

https://www.regulations.gov. To do so, 

go to https://www.regulations.gov, type 

USCG–2024–0157 in the search box and 

click ‘‘Search.’’ Next, look for this 

document in the Search Results column, 

and click on it. Then click on the 

Comment option. If you cannot submit 

your material by using https://

www.regulations.gov, call or email the 

person in the FOR FURTHER INFORMATION

CONTACT section of this proposed rule 

for alternate instructions. 

Viewing material in docket. To view 

documents mentioned in this proposed 

rule as being available in the docket, 

find the docket as described in the 

previous paragraph, and then select 

‘‘Supporting & Related Material’’ in the 

Document Type column. Public 

comments will also be placed in our 

online docket and can be viewed by 

following instructions on the https://

www.regulations.gov Frequently Asked 

Questions web page. Also, if you click 

on the Dockets tab and then the 

proposed rule, you should see a 

‘‘Subscribe’’ option for email alerts. The 

option will notify you when comments 

are posted, or a final rule is published. 

We review all comments received, but 

we will only post comments that 

address the topic of the proposed rule. 

We may choose not to post off-topic, 

inappropriate, or duplicate comments 

that we receive. 

Personal information. We accept 

anonymous comments. Comments we 

post to https://www.regulations.gov will 

include any personal information you 

have provided. For more about privacy 

and submissions to the docket in 

response to this document, see DHS’s 

eRulemaking System of Records notice 

(85 FR 14226, March 11, 2020). 

List of Subjects in 33 CFR Part 165 

Harbors, Marine safety, Navigation 

(water), Reporting and recordkeeping 

requirements, Security measures, 

Waterways. 

For the reasons discussed in the 

preamble, the Coast Guard is proposing 

to amend 33 CFR part 165 as follows: 

PART 165—REGULATED NAVIGATION 

AREAS AND LIMITED ACCESS AREAS 

■ 1. The authority citation for part 165 

continues to read as follows: 

Authority: 46 U.S.C. 70034, 70051, 70124; 

33 CFR 1.05–1, 6.04–1, 6.04–6, and 160.5; 

Department of Homeland Security Delegation 

No. 00170.1, Revision No. 01.3. 

■ 2. Revise § 165.1710(a)(1) to read as 

follows: 

§ 165.1710 Port Valdez and Valdez 

Narrows, Valdez, Alaska—security zones. 

(a) * * * 

(1) Trans-Alaska Pipeline (TAPS) 

Valdez Terminal complex (Terminal), 

Valdez, Alaska and TAPS tank vessels. 

All waters enclosed within a line 

beginning on the southern shoreline of 

Port Valdez at 61°05′03.6′′ N, 146°25′42′′ 

W; thence northerly to yellow buoy at 

61°06′00′′ N, 146°25′42′′ W; thence east 

to the yellow buoy at 61°06′00′′ N, 

146°21′30′′ W; thence south to 61°05′06′′ 

N, 146°21′30′′ W; thence west along the 

shoreline to the beginning point. 

* * * * * 

Dated: February 14, 2024. 

S.K. Rousseau, 

Commander, U.S. Coast Guard, Captain of 

the Port Prince William Sound. 

[FR Doc. 2024–03486 Filed 2–20–24; 8:45 am] 

BILLING CODE 9110–04–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 42 

[Docket No. PTO–P–2023–0058] 

RIN 0651–AD75 

Expanding Opportunities To Appear 

Before the Patent Trial and Appeal 

Board 

AGENCY: United States Patent and 

Trademark Office, Department of 

Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: As part of its initiatives to 

expand access to practice before the 

U.S. Patent and Trademark Office 

(USPTO or Office), the USPTO proposes 

to amend the rules regarding admission 

to practice before the Patent Trial and 

Appeal Board (PTAB or Board) in 

proceedings under the Leahy-Smith 

America Invents Act (AIA proceedings) 

to give parties the option to designate 

non-registered practitioners who are 

recognized pro hac vice (i.e., granted 

recognition in a specific PTAB 

proceeding) as lead counsel; excuse 

parties from the requirement to 

designate back-up counsel upon a 

showing of good cause such as a lack of 

resources to hire two counsel; establish 

a streamlined alternative procedure for 

recognizing counsel pro hac vice that is 

available when counsel has previously 

been recognized pro hac vice in a 

different PTAB proceeding; and clarify 

that those recognized pro hac vice have 

a duty to inform the Board of 

subsequent events that render 

inaccurate or incomplete 

representations they made to obtain pro 

hac vice recognition. 

DATES: Written comments must be 

received on or before May 21, 2024. 

ADDRESSES: For reasons of government 

efficiency, comments must be submitted 

through the Federal eRulemaking Portal 

at www.regulations.gov. To submit 

comments via the portal, one should 

enter docket number PTO–P–2023–0058 

on the homepage and select ‘‘search.’’ 

The site will provide search results 


khammond on DSKJM1Z7X2PROD with PROPOSALS
13018 Federal Register / Vol. 89, No. 35 / Wednesday, February 21, 2024 / Proposed Rules 

1Legal representation before Federal agencies is 

generally governed by the provisions of 5 U.S.C. 

500. However, that statute provides a specific 

exception for representation in patent matters 

before the USPTO. 5 U.S.C. 500(e). See 35 U.S.C. 

2(b)(2)(D) (formerly 35 U.S.C. 31). 

listing all documents associated with 

this docket. Commenters can find a 

reference to this proposed rule and 

select the ‘‘Comment’’ icon, complete 

the required fields, and enter or attach 

their comments. Attachments to 

electronic comments will be accepted in 

Adobe® portable document format or 

Microsoft Word® format. Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

Visit the Federal eRulemaking Portal 

for additional instructions on providing 

comments via the portal. If electronic 

submission of or access to comments is 

not feasible due to a lack of access to a 

computer and/or the internet, please 

contact the USPTO using the contact 

information below for special 

instructions. 

FOR FURTHER INFORMATION CONTACT: 

Michael P. Tierney, Vice Chief 

Administrative Patent Judge, or Scott C. 

Moore, Acting Senior Lead 

Administrative Patent Judge, at 571– 

272–9797. 

SUPPLEMENTARY INFORMATION: 

Background 

The Director of the USPTO has 

statutory authority to require those 

seeking to practice before the Office to 

show that they possess ‘‘the necessary 

qualifications to render applicants or 

other persons valuable service, advice, 

and assistance in the presentation or 

prosecution of their applications or 

other business before the Office.’’ 35 

U.S.C. 2(b)(2)(D). Thus, courts have 

determined that the USPTO Director 

bears the primary responsibility for 

protecting the public from unqualified 

practitioners. See Hsuan-Yeh Chang v. 

Kappos, 890 F. Supp. 2d 110, 116–17 

(D.D.C. 2012) (‘‘Title 35 vests the 

[Director of the USPTO], not the courts, 

with the responsibility to protect 

[US]PTO proceedings from unqualified 

practitioners.’’) (quoting Premysler v. 

Lehman, 71 F.3d 387, 389 (Fed. Cir. 

1995)), aff’d sub nom., Hsuan-Yeh 

Chang v. Rea, 530 F. App’x 958 (Fed. 

Cir. 2013). 

Pursuant to that authority and 

responsibility, the USPTO has 

promulgated regulations, administered 

by the Office of Enrollment and 

Discipline (OED), that provide that 

registration to practice before the 

USPTO in patent matters or design 

patent matters requires a practitioner to 

demonstrate possession of ‘‘the legal, 

scientific, and technical qualifications 

necessary for him or her to render 

applicants valuable service.’’ 37 CFR 

11.7(a)(2)(ii).1 The USPTO determines 

whether an applicant possesses the legal 

qualification by administering a 

registration examination, which 

applicants must pass before being 

admitted to practice. See 37 CFR 

11.7(b)(ii). The USPTO sets forth 

guidance for establishing possession of 

scientific and technical qualifications in 

the General Requirements Bulletin for 

Admission to the Examination for 

Registration to Practice in Patent Cases 

before the United States Patent and 

Trademark Office (GRB). The GRB is 

available at www.uspto.gov/sites/ 

default/files/documents/OED_GRB.pdf. 

The GRB also contains the ‘‘Application 

for Registration to Practice before the 

United States Patent and Trademark 

Office.’’ 

The rules that currently govern 

practice before the PTAB in AIA 

proceedings differ somewhat from the 

rules that govern other types of USPTO 

proceedings. In an AIA proceeding, 37 

CFR 42.10(a) requires that each 

represented party designate a lead 

counsel and at least one back-up 

counsel. The regulation requires that the 

lead counsel be a registered practitioner. 

The regulation allows non-registered 

practitioners to be back-up counsel, but 

only ‘‘where the lead counsel is a 

registered practitioner,’’ and when ‘‘a 

motion to appear pro hac vice by 

counsel who is not a registered 

practitioner [is] granted upon showing 

that counsel is an experienced litigating 

attorney and has an established 

familiarity with the subject matter at 

issue in the proceeding.’’ Id. 

The Board typically requires that pro 

hac vice motions be filed in accordance 

with the ‘‘Order Authorizing Motion for 

Pro Hac Vice Admission’’ in Unified 

Patents, Inc. v. Parallel Iron, LLC, 

IPR2013–00639, Paper 7 (PTAB Oct. 15, 

2013) (the Unified Patents Order). The 

Unified Patents Order requires that a 

motion for pro hac vice admission must: 

a. Contain a statement of facts 

showing there is good cause for the 

Board to recognize counsel pro hac vice 

during the proceeding [; and] 

b. Be accompanied by an affidavit or 

declaration of the individual seeking to 

appear attesting to the following: 

i. Membership in good standing of the 

Bar of at least one State or the District 

of Columbia; 

ii. No suspensions or disbarments 

from practice before any court or 

administrative body; 

iii. No application for admission to 

practice before any court or 

administrative body ever denied; 

iv. No sanctions or contempt citations 

imposed by any court or administrative 

body; 

v. 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 37 CFR; 

vi. The individual will be subject to 

the USPTO Rules of Professional 

Conduct set forth in 37 CFR 11.101 et. 

seq. and disciplinary jurisdiction under 

37 CFR 11.19(a); 

vii. All other proceedings before the 

Office for which the individual has 

applied to appear pro hac vice in the 

last three years; and 

viii. Familiarity with the subject 

matter at issue in the proceeding. 

Id. at 3. If the affiant or declarant is 

unable to provide any of the information 

requested above or make any of the 

required statements or representations 

under oath, the Unified Patents Order 

requires that the individual provide a 

full explanation of the circumstances as 

part of the affidavit or declaration. Id. at 

4. 

Proposed Changes 

On October 18, 2022, the USPTO 

published a Request for Comments in 

which the USPTO requested comments 

on potential ways to expand 

opportunities for non-registered 

practitioners to appear before the Patent 

Trial and Appeal Board. 87 FR 63047. 

The request asked several questions, 

including: (1) whether the USPTO 

should permit non-registered 

practitioners to appear as lead counsel 

in AIA proceedings, and if so, whether 

they should need to be accompanied by 

a registered practitioner as back-up 

counsel; (2) whether the USPTO should 

establish a new procedure by which 

non-registered practitioners could be 

admitted to practice before the PTAB; 

(3) what impact various proposals 

would have on the cost of 

representation; and (4) whether any 

changes should be implemented 

initially as a pilot program. The Office 

received nine comments in response to 

the request. Five comments were in 

favor of retaining existing limits on nonregistered practitioners, while four 

comments generally supported 

expanding the ways in which nonregistered practitioners can participate 

in AIA proceedings. During the 

comment period, the Office received 

several comments in favor of expanding 


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2See 84 FR 16654, Notice Regarding Options for 

Amendments by Patent Owner Through Reissue or 

Reexamination During a Pending AIA Trial 

Proceeding (April 2019). 

the ways in which non-registered 

practitioners can participate in PTAB 

AIA proceedings, and several comments 

opposing such changes. 

The comments were split on the issue 

of whether non-registered practitioners 

should be permitted to appear as lead 

counsel. Some of the comments, 

however, suggested that any potential 

issues with allowing non-registered 

practitioners to serve as lead counsel 

could be ameliorated by requiring that 

they be accompanied by a registered 

practitioner as back-up counsel. Most of 

the comments indicated that the Office 

should continue to require nonregistered practitioners to meet fitnessto-practice standards, but several 

comments agreed that it might be more 

efficient and less costly to the parties to 

establish a separate registry or 

certification procedure that would 

permit non-registered practitioners to 

avoid filing separate pro hac vice 

motions in each individual case. Several 

commentators indicated that the rule 

requiring that parties retain both lead 

and back-up counsel might increase 

cost, but their comments were split, 

with some arguing that the additional 

costs were justified in order to maintain 

the Office’s high standards of 

representation, and others arguing that 

the additional costs might adversely 

impact certain parties. Most of the 

comments expressed no opinion on 

whether any changes should be 

addressed as a pilot program. Of the 

three commentators that addressed this 

issue, one favored implementing any 

changes as a pilot program, one 

indicated that a pilot program would be 

unnecessary, and one indicated a pilot 

program would be unnecessary if we 

were to permit non-registered 

practitioners to appear as lead counsel 

with a registered practitioner as back-up 

without making other substantive 

changes to admissions standards. 

Therefore, to advance its goal of 

expanding access to practice before the 

USPTO while continuing to protect the 

public from unqualified practitioners, 

and based on the input from 

stakeholders and commenters, this 

proposed rule would retain the 

requirement that parties be represented 

by a registered practitioner, but would 

permit parties to designate a nonregistered practitioner as lead counsel 

and the registered practitioner as backup counsel. This proposed change 

would better the chances that teams 

doing work before the PTAB have the 

requisite qualifications to engage in all 

matters before the PTAB, including in 

quasi-prosecution work such as claim 

amendments. For instance, the proposed 

change would help ensure that counsel 

have the qualifications to advise their 

clients of all available options before the 

Office, including the ability of patent 

owners to amend claims in an issued 

patent through a reissue application or 

a request for reexamination before, 

during, or after an AIA proceeding at the 

PTAB.2

In order to support individuals, 

smaller entities and others who may be 

under-resourced, this proposed rule 

would permit parties to file a motion to 

be excused from the requirement of 

retaining both lead and back-up counsel 

for good cause including in the event 

that it lacked the financial resources to 

retain two counsel. 

In order to increase efficiency and 

reduce unnecessary expenses, this 

proposed rule would also establish a 

streamlined procedure for counsel who 

were previously recognized pro hac vice 

in a PTAB proceeding, minimizing the 

burden of expense of seeking pro hac 

vice admission in subsequent cases, 

while still ensuring compliance with 

fitness-to-practice standards. 

All who appear before the Board, 

including those recognized pro hac vice, 

have a duty of candor and good faith to 

the Office pursuant to 37 CFR 42.11. In 

order to provide more specific guidance 

regarding the obligations of those 

recognized pro hac vice, this proposed 

rule would clarify that such persons 

must inform the Board of subsequent 

developments that render materially 

incomplete or incorrect information that 

was provided in connection with a 

request for pro hac vice recognition. For 

example, notification would be required 

if a non-registered practitioner admitted 

pro hac vice in a proceeding was 

subsequently sanctioned, cited for 

contempt, suspended, disbarred, or 

denied admission by any court or 

administrative agency, or if the nonregistered practitioner were to no longer 

qualify as a member in good standing of 

the Bar of at least one State or the 

District of Columbia. 

The Office intends to proceed with 

rulemaking, rather than a pilot program, 

because the Office, based on its 

experience in conducting AIA 

proceedings, and having considered the 

comments received, agrees that a pilot 

program is not necessary for the 

successful implementation of the 

desired change. 

The USPTO promulgated a final rule 

effective January 2, 2024, which advised 

that ‘‘[f]or avoidance of doubt, the 

USPTO clarifies that the term 

‘‘registered practitioner,’’ as used in 

parts 41 and 42, and the term ‘‘USPTO 

patent practitioner,’’ as used in § 42.57, 

encompasses ‘‘design patent 

practitioners,’’ as defined in § 11.1.’’ 88 

FR 78649. For clarity, the USPTO 

reminds the public that § 11.5(b)(2) 

authorizes design patent practitioners to 

‘‘draft[ ] a communication for an 

interference, derivation, and/or 

reexamination proceeding, a petition, an 

appeal to or any other design patent 

proceeding before the Patent Trial and 

Appeal Board, or any other design 

patent proceeding.’’ Id. 

Discussion of Proposed Rule Changes 

The USPTO proposes to amend 

§ 42.10(a) to provide that upon a 

showing of good cause, the Board may 

permit a party to proceed without 

separate back-up counsel so long as lead 

counsel is a registered practitioner. 

The USPTO proposes to amend 

§ 42.10(c) to provide that a nonregistered practitioner admitted pro hac 

vice may serve as either lead or back-up 

counsel for a party so long as a 

registered practitioner is also counsel of 

record for that party, and to provide that 

a non-registered practitioner who was 

previously recognized pro hac vice in an 

AIA proceeding and not subsequently 

denied recognition pro hac vice shall be 

considered a PTAB-recognized 

practitioner, and shall be eligible for 

automatic pro hac vice admission in 

subsequent proceedings via a simplified 

and expedited process that does not 

require payment of a fee. The 

amendment would also provide that 

those recognized pro hac vice have a 

duty to inform the Office of any 

developments that occur during the 

course of a proceeding that that might 

have materially impacted the grant of 

pro hac vice admission had the 

information been presented at the time 

of grant. 

Rulemaking Requirements 

A. Administrative Procedure Act: The 

changes proposed by this rulemaking 

involve rules of agency practice and 

procedure, and/or interpretive rules, 

and do not require notice-and-comment 

rulemaking. See Perez v. Mortg. Bankers 

Ass’n, 575 U.S. 92, 97, 101 (2015) 

(explaining that interpretive rules 

‘‘advise the public of the agency’s 

construction of the statutes and rules 

which it administers’’ and do not 

require notice and comment when 

issued or amended); Cooper Techs. Co. 

v. Dudas, 536 F.3d 1330, 1336–37 (Fed. 

Cir. 2008) (5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), do not require noticeand-comment rulemaking for 

‘‘interpretative rules, general statements 


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13020 Federal Register / Vol. 89, No. 35 / Wednesday, February 21, 2024 / Proposed Rules 

of policy, or rules of agency 

organization, procedure, or practice’’); 

and JEM Broadcasting Co. v. F.C.C., 22 

F.3d 320, 328 (D.C. Cir. 1994) 

(explaining that rules are not legislative 

because they do not ‘‘foreclose effective 

opportunity to make one’s case on the 

merits’’). 

Nevertheless, the USPTO is 

publishing this proposed rule for 

comment to seek the benefit of the 

public’s views on the Office’s proposed 

regulatory changes. 

B. Regulatory Flexibility Act: For the 

reasons set forth in this rulemaking, the 

Senior Counsel for Regulatory and 

Legislative Affairs, Office of General 

Law, of the USPTO, has certified to the 

Chief Counsel for Advocacy of the Small 

Business Administration that the 

changes proposed in this rule will not 

have a significant economic impact on 

a substantial number of small entities. 

See 5 U.S.C. 605(b). 

This proposed rule would permit nonregistered practitioners to serve as lead 

counsel in Board proceedings; permit 

parties to proceed without back-up 

counsel upon a showing of good cause; 

create a new streamlined procedure for 

admitting counsel pro hac vice that is 

available for counsel who have 

previously been admitted pro hac vice 

in a different Board proceeding; and 

clarify that those recognized pro hac 

vice have a duty to inform the Board if 

the information presented in a request 

for pro hac vice recognition is no longer 

accurate or complete. These changes 

would not limit or restrict counsel who 

meet current eligibility criteria to 

practice before the Board and would not 

limit or restrict the ability of parties to 

designate counsel of their choosing. The 

USPTO does not collect or maintain 

statistics on the size status of impacted 

entities, which would be required to 

determine the number of small entities 

that would be affected by the rule. 

However, the changes in this rule are 

not expected to have any material 

impact on otherwise regulated entities 

because the changes to the regulations 

are procedural in nature, do not impose 

any significant new burdens or 

requirements on parties or counsel, and 

are designed to reduce the cost and 

complexity of Board proceedings. 

Although this proposal includes a new 

requirement to inform the Board if 

information submitted in a request for 

pro hac vice recognition is no longer 

accurate or complete, the number of 

impacted entities is expected to be very 

small and any additional cost burden is 

expected to be minimal. Accordingly, 

the changes proposed in this rule are 

expected to be of minimal additional 

burden to those practicing before the 

Office. 

For the reasons discussed above, this 

rulemaking will not have a significant 

economic impact on a substantial 

number of small entities. 

C. Executive Order 12866 (Regulatory 

Planning and Review): This rulemaking 

has been determined to be not 

significant for purposes of E.O. 12866 

(Sept. 30, 1993), as amended by E.O. 

14094 (Apr. 6, 2023). 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563 (Jan. 18, 2011). 

Specifically, and as discussed above, the 

Office has, to the extent feasible and 

applicable: (1) made a reasoned 

determination that the benefits justify 

the costs of the rule; (2) tailored the rule 

to impose the least burden on society 

consistent with obtaining the regulatory 

objectives; (3) selected a regulatory 

approach that maximizes net benefits; 

(4) specified performance objectives; (5) 

identified and assessed available 

alternatives; (6) involved the public in 

an open exchange of information and 

perspectives among experts in relevant 

disciplines, affected stakeholders in the 

private sector, and the public as a 

whole, and provided online access to 

the rulemaking docket; (7) attempted to 

promote coordination, simplification, 

and harmonization across Government 

agencies and identified goals designed 

to promote innovation; (8) considered 

approaches that reduce burdens and 

maintain flexibility and freedom of 

choice for the public; and (9) ensured 

the objectivity of scientific and 

technological information and 

processes. 

E. Executive Order 13132 

(Federalism): This rulemaking pertains 

strictly to federal agency procedures and 

does not contain policies with 

federalism implications sufficient to 

warrant preparation of a Federalism 

Assessment under E.O. 13132 (Aug. 4, 

1999). 

F. Executive Order 13175 (Tribal 

Consultation): This rulemaking will not: 

(1) have substantial direct effects on one 

or more Indian tribes; (2) impose 

substantial direct compliance costs on 

Indian tribal governments; or (3) 

preempt tribal law. Therefore, a tribal 

summary impact statement is not 

required under E.O. 13175 (Nov. 6, 

2000). 

G. Executive Order 13211 (Energy 

Effects): This rulemaking is not a 

significant energy action under E.O. 

13211 because this rulemaking is not 

likely to have a significant adverse effect 

on the supply, distribution, or use of 

energy. Therefore, a Statement of Energy 

Effects is not required under E.O. 13211 

(May 18, 2001). 

H. Executive Order 12988 (Civil 

Justice Reform): This rulemaking meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden, as set forth in sections 

3(a) and 3(b)(2) of E.O. 12988 (Feb. 5, 

1996). 

I. Executive Order 13045 (Protection 

of Children): This rulemaking does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under E.O. 13045 (Apr. 

21, 1997). 

J. Executive Order 12630 (Taking of 

Private Property): This rulemaking will 

not effect a taking of private property or 

otherwise have taking implications 

under E.O. 12630 (Mar. 15, 1988). 

K. Congressional Review Act: Under 

the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule, the USPTO will 

submit a report containing the final rule 

and other required information to the 

U.S. Senate, the U.S. House of 

Representatives, and the Comptroller 

General of the Government 

Accountability Office. The changes in 

this rulemaking are not expected to 

result in an annual effect on the 

economy of $100 million or more, a 

major increase in costs or prices, or 

significant adverse effects on 

competition, employment, investment, 

productivity, innovation, or the ability 

of U.S.-based enterprises to compete 

with foreign-based enterprises in 

domestic and export markets. Therefore, 

this rulemaking is not expected to result 

in a ‘‘major rule’’ as defined in 5 U.S.C. 

804(2). 

L. Unfunded Mandates Reform Act of 

1995: The proposed changes in this 

rulemaking do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of $100 million (as adjusted) or more in 

any one year, or a Federal private sector 

mandate that will result in the 

expenditure by the private sector of 

$100 million (as adjusted) or more in 

any one year, and will not significantly 

or uniquely affect small governments. 

Therefore, no actions are necessary 

under the provisions of the Unfunded 

Mandates Reform Act of 1995. See 2 

U.S.C. 1501 et seq. 

M. National Environmental Policy Act 

of 1969: This rulemaking will not have 

any effect on the quality of the 

environment and is thus categorically 

excluded from review under the 

National Environmental Policy Act of 

1969. See 42 U.S.C. 4321 et seq. 


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N. National Technology Transfer and 

Advancement Act of 1995: The 

requirements of section 12(d) of the 

National Technology Transfer and 

Advancement Act of 1995 (15 U.S.C. 

272 note) are not applicable because this 

rulemaking does not contain provisions 

that involve the use of technical 

standards. 

O. Paperwork Reduction Act of 1995: 

The Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.) requires that the 

Office consider the impact of paperwork 

and other information collection 

burdens imposed on the public. This 

rulemaking involves information 

collection requirements that are subject 

to review and approval by the Office of 

Management and Budget (OMB) under 

the Paperwork Reduction Act. The 

collections of information involved in 

this rulemaking have been reviewed and 

previously approved by OMB under 

OMB control numbers 0651–0069 

(Patent Review and Derivation 

Proceedings). Updates to this 

information collection that result from 

the Final Rule will be submitted to the 

OMB as non-substantive change 

requests. 

Notwithstanding any other provision 

of law, no person is required to respond 

to, nor shall a person be subject to a 

penalty for failure to comply with, a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act, unless that collection of 

information has a currently valid OMB 

control number. 

P. E-Government Act Compliance: 

The USPTO is committed to compliance 

with the E-Government Act to promote 

the use of the internet and other 

information technologies, to provide 

increased opportunities for citizen 

access to government information and 

services, and for other purposes. 

List of Subjects in 37 CFR Part 42 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

For the reasons set forth in the 

preamble, the USPTO proposes to 

amend 37 CFR part 42 as follows: 

PART 42—TRIAL PRACTICE BEFORE 

THE PATENT TRIAL AND APPEAL 

BOARD 

■ 1. The authority citation for part 42 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 

135, 311, 312, 316, 321–326; Pub. L. 112–29, 

125 Stat. 284; and Pub. L. 112–274, 126 Stat. 

2456. 

■ 2. Amend § 42.10 by revising 

paragraphs (a) and (c) to read as follows: 

§ 42.10 Counsel. 

(a) If a party is represented by 

counsel, the party must designate a lead 

counsel and at least one back-up 

counsel who can conduct business on 

behalf of the lead counsel, unless good 

cause is shown. The Board may permit 

a party to proceed without back-up 

counsel upon a showing of good cause, 

subject to the condition that lead 

counsel be a registered practitioner. A 

party may show good cause by 

demonstrating that it lacks the financial 

resources to retain both lead and backup counsel. 

* * * * * 

(c)(1) Pro hac vice recognition of nonregistered practitioners. The Board may 

recognize counsel who is not a 

registered practitioner pro hac vice 

during a proceeding, as either lead or 

back-up counsel, upon a showing of 

good cause, subject to the condition that 

at least one other counsel designated to 

appear on behalf of the party is a 

registered practitioner, and to any other 

conditions as the Board may impose. 

For example, a motion to permit counsel 

who is not a registered practitioner to 

appear pro hac vice in a proceeding may 

be granted upon a showing that counsel 

is an experienced litigating attorney and 

that back-up counsel will be a registered 

practitioner. 

(2) Pro hac vice recognition of PTABrecognized practitioners. (i) A nonregistered practitioner who has been 

previously recognized pro hac vice in a 

Board proceeding, and who has not 

subsequently been denied permission to 

appear pro hac vice in a Board 

proceeding, shall be considered a PTABrecognized practitioner. PTABrecognized practitioners shall be eligible 

for automatic pro hac vice admission in 

subsequent proceedings, as either lead 

or back-up counsel, subject to the 

following conditions. 

(ii) If a party seeks to be represented 

in a proceeding by a PTAB-recognized 

practitioner, that party may file a notice 

of intent to designate a PTABrecognized practitioner as either lead or 

back-up counsel. No fee is required for 

such a notice. The notice shall: 

(A) Identify a registered practitioner 

who will serve as co-counsel, and 

(B) Be accompanied by a certification 

in the form of a declaration or affidavit, 

in which the PTAB-recognized 

practitioner attests to satisfying all 

requirements set forth by the Board for 

pro hac vice recognition of a PTABrecognized practitioner, and agrees to be 

subject to the USPTO Rules of 

Professional Conduct set forth in 

§§ 11.101 et seq. of this chapter and 

disciplinary jurisdiction under 

§ 11.19(a) of this chapter. 

(iii) Any objection shall be filed 

within five business days after the filing 

of the notice. If an objection is not filed 

within five business days, the PTABrecognized practitioner shall be deemed 

admitted pro hac vice in that proceeding 

upon filing of updated mandatory 

notices identifying that practitioner as 

counsel of record. If an objection is filed 

within five business days, unless the 

Board orders otherwise within ten 

business days after the objection is filed, 

the PTAB-recognized practitioner shall 

be deemed admitted pro hac vice after 

updated mandatory notices identifying 

that practitioner as counsel of record are 

then filed. 

(iv) If a PTAB-recognized practitioner 

is unable to satisfy any of the 

requirements set forth by the Board, or 

is unable to make any of the required 

attestations under oath, this procedure 

is not available, and pro hac vice 

recognition must instead be sought 

under the process set forth in paragraph 

(c)(1) of this section. 

(3) Continuing duty of non-registered 

practitioners recognized pro hac vice. 

For the entire duration of any 

proceeding in which a non-registered 

practitioner is recognized pro hac vice 

pursuant to paragraph (c)(1) or (2) of 

this section, the non-registered 

practitioner has a continuing duty to 

notify the Board in writing within five 

business days if: 

(i) The non-registered practitioner is 

sanctioned, cited for contempt, 

suspended, disbarred, or denied 

admission by any court or 

administrative agency; 

(ii) The non-registered practitioner no 

longer qualifies as a member in good 

standing of the Bar of at least one State 

or the District of Columbia; or 

(iii) Any other event occurs that 

renders materially inaccurate or 

incomplete any representation that was 

made to the Board in connection with 

the request for pro hac vice recognition, 

provided, however, that non-registered 

practitioner is not required to inform the 

Board of subsequent applications for pro 

hac vice recognition unless such an 

application is denied. 

* * * * * 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–03523 Filed 2–20–24; 8:45 am] 

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