[Federal Register Volume 89, Number 197 (Thursday, October 10, 2024)]
[Rules and Regulations]
[Pages 82172-82179]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-23319]


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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: Final rule.

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SUMMARY: As part of its initiatives to expand access to practice before 
the U.S. Patent and Trademark Office (USPTO or Office), the USPTO 
modifies the rules regarding representation by counsel at the Patent 
Trial and Appeal Board (PTAB or Board) in proceedings under the Leahy-
Smith America Invents Act (AIA proceedings) to: permit parties to 
proceed without 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: This rule is effective November 12, 2024.

FOR FURTHER INFORMATION CONTACT: Scott C. Moore, Acting Senior Lead 
Administrative Patent Judge; or Michael P. Tierney, Vice Chief 
Administrative Patent Judge, both at 571-272-9797.

SUPPLEMENTARY INFORMATION:

Background

    The USPTO is focused on expanding American innovation for and from 
all and has been examining the rules governing practice before the 
Office to ensure that they are properly aligned with the types of work 
performed by practitioners and the needs of clients. As part of this 
effort, the USPTO recently expanded the admission

[[Page 82173]]

criteria for patent bar applicants and established a separate design 
patent bar that is open to applicants who previously would not have 
been eligible to practice before the Office. See Expanding Admission 
Criteria for Registration To Practice in Patent Cases Before the United 
States Patent and Trademark Office, 88 FR 31249 (May 16, 2023); 
Representation of Others in Design Patent Matters Before the United 
States Patent and Trademark Office, 88 FR 78644 (November 16, 2023). In 
this final rule, the USPTO updates the rules governing practice before 
the Board to simplify and streamline the pro hac vice admission process 
and reduce litigation costs while ensuring parties continue to receive 
high quality representation.

Rules Regarding Representation by Counsel in AIA Proceedings Prior to 
This Final Rule

    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, 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 [them] 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.
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    \1\ Legal 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).
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    The rules that 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 lead counsel be a registered 
practitioner. The regulation allows non-registered practitioners to be 
back-up counsel upon a showing of good cause. For example, ``where the 
lead counsel is a registered practitioner, 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.'' 37 CFR 42.10(c).
    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 37 CFR part 42;
    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.

Development of the Final Rule

    On October 18, 2022, the USPTO published a request for comments in 
which the Office sought feedback on potential ways to expand 
opportunities for non-registered practitioners to appear before the 
PTAB. Expanding Opportunities 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 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 USPTO received nine comments in response to the request. Five 
comments were in favor of retaining existing limits on non-registered 
practitioners, while four comments generally supported expanding the 
ways in which non-registered practitioners can participate in AIA 
proceedings.
    The comments were split on the issue of whether non-registered 
practitioners should be permitted to appear as lead counsel. However, 
some of the comments suggested that any potential issues with allowing 
non-registered practitioners to serve as lead counsel could be remedied 
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 non-registered practitioners to meet fitness-to-
practice standards, but several comments agreed that it might be more 
efficient and less costly to the parties to establish a separate 
registry or

[[Page 82174]]

certification procedure that would permit non-registered practitioners 
to avoid filing separate pro hac vice motions in each individual case. 
Several comments indicated that the rule requiring that parties retain 
both lead and back-up counsel might increase cost. Some of these 
comments asserted that the additional costs were justified to maintain 
the Office's high standards of representation, and others argued 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 comments that 
discussed 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 the Office 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.
    On February 21, 2024, after careful consideration of the public 
input received in response to the request for comments, the USPTO 
published a notice of proposed rulemaking (NPRM). See Expanding 
Opportunities To Appear Before the Patent Trial and Appeal Board, 89 FR 
13017. The NPRM granted a 90-day comment period and proposed to amend 
Sec.  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 NPRM also proposed to 
amend Sec.  42.10(c) to provide that (1) a non-registered 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 (2) 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 the payment of a fee. The NPRM also proposed to amend 
Sec.  42.10(c) to 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 might have materially impacted the grant of 
pro hac vice admission had the information been presented at the time 
of grant.

Proposed Rule: Comments and Responses

    The USPTO received a total of seven comments from five 
organizations and two individuals. The Office appreciates the 
thoughtful comments representing views from various public stakeholder 
communities. The comments are publicly available at the Federal 
eRulemaking Portal at www.regulations.gov/docket/PTO-P-2023-0058 and 
are addressed below.

Proposed Amendment to Sec.  42.10(a) Permitting Parties To Proceed 
Without Back-Up Counsel Upon Showing of Good Cause

    Five comments supported the proposal to amend Sec.  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. Three of these comments favored the 
requirement that parties without back-up counsel be represented by a 
registered practitioner, noting that this requirement is essential to 
ensure quality representation and protect represented parties. One 
comment noted that this proposal would allow parties with limited 
resources to consider participating in AIA trial proceedings, thereby 
increasing opportunities for attorneys from small law firms and solo 
practitioners. Another comment suggested that the Board should go 
further and retain flexibility to allow a party to proceed without a 
registered practitioner in special circumstances. Yet another commenter 
supported the proposed amendments to Sec.  42.10(a) but suggested that 
the requirement to retain a registered practitioner might limit the 
proposed rule's impact.
    One comment opposed the proposed amendment to Sec.  42.10(a), 
arguing that no need has been shown for such a change, that this 
proposal might lead to situations in which a single counsel's limited 
availability frustrates the progress of proceedings, and that allowing 
parties to proceed without back-up counsel might limit opportunities 
for young attorneys and under-represented members of the legal 
profession.
    After considering the input from the comments, the USPTO is moving 
forward with a final rule providing that, upon a showing of good cause, 
the Board may permit a party to proceed without separate back-up 
counsel. For example, good cause may be present if a party demonstrates 
that it lacks the financial resources to retain both lead and back-up 
counsel. However, the Office notes that it would likely be difficult 
for a party to demonstrate a lack of financial resources where that 
party has also elected to pursue litigation involving the challenged 
patents in other forums. The Office also notes that the good cause 
inquiry focuses on the needs of the party seeking relief, not the needs 
or preferences of counsel. Thus, for example, the fact that lead 
counsel is a solo practitioner who prefers to work alone would not 
constitute good cause for a party to proceed without separate back-up 
counsel.
    Based on the comments and the Board's experience, the USPTO 
believes this rule will permit flexibility in situations in which good 
cause is shown, while ensuring that parties are represented by counsel 
having the requisite qualifications to engage in all matters before the 
PTAB, including in quasi-prosecution work such as claim amendments or 
reissue applications.\2\ The Office believes that permitting a 
represented party to proceed without a registered practitioner as 
either lead or back-up counsel would create an unacceptable risk that 
the party would not receive complete advice and guidance. The Office 
further notes that absent a stipulation of the parties, schedule 
changes require approval from the Board. The Board also has authority 
to reconsider prior decisions granting discretionary relief, and could 
thus revoke permission to proceed without back-up counsel, if 
appropriate. Therefore, the Board has adequate authority to prevent 
scheduling considerations from unduly prejudicing a party.
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    \2\ See Notice Regarding Options for Amendments by Patent Owner 
Through Reissue or Reexamination During a Pending AIA Trial 
Proceeding, 84 FR 16654 (April 22, 2019).
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Proposed Amendment to Sec.  42.10(c) Permitting Non-Registered Counsel 
To Serve as Lead Counsel With a Registered Practitioner as Back-Up 
Counsel

    Three comments supported the proposal to amend Sec.  42.10(c) to 
permit non-registered counsel admitted pro hac vice to serve as lead 
counsel in AIA proceedings, so long as back-up counsel is a registered 
practitioner. However, two of these commenters indicated that they were 
uncertain whether allowing lead and back-up counsel to switch roles 
would have the desired effect of expanding opportunities at the PTAB.
    Three comments opposed this proposal. These comments argued that it 
is important that lead counsel be qualified to discuss technical 
matters and quasi-prosecution matters such as claim amendments, that 
allowing non-

[[Page 82175]]

registered counsel to serve in the lead counsel role would weaken the 
Office's efforts to protect the public and facilitate robust and 
reliable intellectual property rights, and that no need has been shown 
to justify amending this portion of Sec.  42.10(c). These comments also 
suggested permitting non-registered counsel to serve as lead counsel 
would devalue the importance of a separate patent bar, increase the 
likelihood of sharp district court-like litigation tactics, and weaken 
safeguards against litigation misconduct.
    In addition, two comments noted that the proposed rule omitted 
language in the current rule pertaining to pro hac vice applicants 
having ``an established familiarity with the subject matter at issue'' 
in a proceeding. One of these comments suggested adding this language 
back into the rule, and the second requested clarification regarding 
whether pro hac vice counsel must have technical familiarity with the 
subject matter of a proceeding, rather than just legal familiarity.
    Further, the USPTO notes that it is focused on issuing and 
maintaining robust and reliable intellectual property rights, including 
robust and reliable patents resulting from amendments made in PTAB 
proceedings or amendments made through reissue or reexamination before, 
during, or after an AIA proceeding.\3\ Based on the Board's experience, 
the Office believes that requiring that lead counsel be a registered 
practitioner will help advance the USPTO's objectives by ensuring that 
parties are fully briefed on available quasi-prosecution options and 
have competent counsel to pursue quasi-prosecution amendments.
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    \3\ See supra n 2.
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    Based on the input from commenters and the USPTO's experience and 
objectives, the Office believes that a cautious approach is appropriate 
and will not move forward at this time with a final rule permitting 
non-registered counsel admitted pro hac vice to serve as lead counsel 
in AIA proceedings. Instead, the Office plans to explore a pilot 
project under which non-registered counsel who are admitted pro hac 
vice would be permitted to serve as lead counsel in at least some 
circumstances. The Office may consider moving forward at a future date 
with a rule permitting non-registered counsel admitted pro hac vice to 
serve as lead counsel in AIA proceedings, either in a limited or full 
capacity.
    The USPTO further notes that the language in Sec.  42.10(c) 
pertaining to pro hac vice applicants having an established familiarity 
with the subject matter of a proceeding is used as an example and does 
not impose a requirement. Nevertheless, in view of the comments, the 
Office modifies the rule to clarify that this language refers to legal 
familiarity with the subject matter of a proceeding. This change will 
resolve the ambiguity noted above by making clear that non-registered 
counsel need not demonstrate technical familiarity with the subject 
matter of a proceeding to demonstrate good cause for pro hac vice 
recognition. It also aligns with the new streamlined pro hac vice 
procedures. Though the USPTO expects counsel to likewise have technical 
familiarity with the subject matter, making technical familiarity a 
condition of admission would indicate that technical familiarity would 
have to be established for each new matter.

Proposed Amendment to Sec.  42.10(c) Streamlining Pro Hac Vice 
Admission Practice for Previous Pro Hac Vice Admittees

    Four comments supported the proposal to amend Sec.  42.10(c) to 
establish a streamlined procedure for pro hac vice recognition of 
counsel who were so recognized in a previous PTAB proceeding without 
requiring a fee. These comments noted that this proposal would 
streamline the pro hac vice admission process, decrease demands on the 
Board's scarce resources, and reduce expenses for the parties.
    One comment supported streamlining the pro hac vice recognition 
process for counsel who were previously so recognized but argued that 
recognition for such counsel should not be automatic and that the 
requestor should still be required to show good cause. One commenter 
opposed this proposal, arguing that it would result in a single grant 
of a pro hac vice motion effectively granting permission for a non-
registered attorney to appear in all future PTAB proceedings.
    After considering the input from the commenters, the USPTO is 
moving forward with a final rule that establishes a streamlined 
procedure for pro hac vice recognition of counsel who were recognized 
in a previous PTAB proceeding without requiring a fee. Based on the 
comments and the Board's experience, the Office believes that such a 
rule will minimize the burden and expense of seeking pro hac vice 
recognition in subsequent cases, while ensuring compliance with 
fitness-to-practice standards. The Office notes that the proposed rule 
contains language requiring the party seeking recognition to file a 
declaration or affidavit affirming that all requirements set forth by 
the Board for pro hac vice recognition are met and gives the opposing 
counsel an opportunity to object. These requirements, which are 
included in this final rule, require the requestor to demonstrate 
eligibility for pro hac vice recognition and ensure that pro hac vice 
recognition is not automatic in situations in which an opposing party 
contends pro hac vice recognition is not appropriate.

Proposed Amendment to Sec.  42.10(c) Designating Previous Pro Hac Vice 
Admittees as ``PTAB-Recognized Practitioners''

    The proposed amendment to Sec.  42.10(c) used the term ``PTAB-
recognized practitioners'' to refer to non-registered counsel who were 
previously recognized pro hac vice by the Board. Two comments generally 
supported using this terminology to refer to counsel who were 
previously recognized pro hac vice. In contrast, two other comments 
argued that this terminology might lead members of the public to 
mistakenly believe that PTAB-recognized practitioners are registered 
practitioners, thereby diluting the importance of the patent bar. One 
other comment did not have a substantive objection to the term ``PTAB-
recognized practitioners'' but contended that this terminology is 
inconsistent with the definition of ``practitioners'' contained in 
Sec.  11.1. That comment asserted that the definition of 
``practitioner'' in Sec.  11.1 does not encompass non-registered 
counsel who are admitted pro hac vice in Board proceedings. Thus, the 
commenter argued, Sec.  42.10(c) should not use the term ``PTAB-
recognized practitioners'' to refer to non-registered counsel who are 
seeking or who were granted pro hac vice recognition. That comment 
noted that the same terminology problem appears in Sec.  42.15(e), 
which also uses the term ``practitioners'' to refer to counsel 
recognized pro hac vice. The comment suggested that Sec. Sec.  42.10(c) 
and 42.15(e) be revised to use the term ``counsel'' rather than 
``practitioner'' to refer to non-registered attorneys who are seeking 
or have been granted pro hac vice recognition. The comment further 
suggested that Sec.  42.15(e), which sets forth the fee for pro hac 
vice recognition, be revised to conform with the new procedure set 
forth in Sec.  42.10(c)(2) of this rule, which does not require the 
payment of a fee.
    The USPTO notes that the observation in the above-referenced 
comment with respect to the use of the term ``practitioner'' in Sec.  
11.1 is incorrect in that ``practitioner,'' as defined by Sec.  11.1, 
encompasses non-registered counsel

[[Page 82176]]

who are admitted pro hac vice in Board proceedings. Nevertheless, based 
on the totality of input from commenters, the Office revises the 
terminology in Sec. Sec.  42.10(c) and 42.15(e) to avoid using the term 
``practitioner'' so as to minimize the likelihood a member of the 
public will confuse such persons with registered practitioners. This 
final rule uses the term ``provisionally recognized PTAB attorney'' to 
refer to non-registered counsel who are seeking or who have been 
granted pro hac vice recognition in a Board proceeding, and the terms 
``counsel'' or ``person'' to refer to those seeking or who have been 
granted pro hac vice recognition. Based on input from comments, this 
final rule also revises Sec.  42.15(e) to replace the term ``non-
registered practitioners'' with ``counsel who are not registered 
practitioners'' and to conform this section with the new procedure 
created by Sec.  42.10(c)(2) of this final rule, which permits pro hac 
vice recognition in certain circumstances without the payment of a fee. 
As discussed below, such counsel are required to explicitly agree that 
they are subject to the USPTO Rules of Professional Conduct set forth 
in Sec. Sec.  11.101 et seq.

Proposed Amendment to Sec.  42.10(c) Clarifying Continuing Disclosure 
Duties of Pro Hac Vice Admittees

    Four comments supported the proposed amendment to Sec.  42.10(c) 
clarifying that non-registered counsel recognized pro hac vice 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. No comments opposed this 
proposal.
    After considering the input from the commenters, the USPTO is 
moving forward with the provision clarifying that non-registered 
counsel recognized pro hac vice 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. Based on the comments and the Board's experience, the 
Office believes this final rule will provide useful clarification and 
guidance regarding the obligations of those recognized pro hac vice.

Changes From the Proposed Rule

    In light of the comments received, this final rule makes revisions 
to the NPRM as follows.
    In Sec.  42.10(c)(1), the Office has dropped the proposed language 
that would have permitted non-registered counsel who are recognized pro 
hac vice to serve as lead counsel in favor of moving forward with a 
pilot program. The final rule retains the current language of Sec.  
42.10(c) in place of the language that was proposed in the NPRM. The 
final rule includes two modifications to the language in Sec.  
42.10(c). First, the following heading has been added to the beginning 
of Sec.  42.10(c)(1): ``Pro hac vice recognition of a person other than 
a registered practitioner.'' This language is similar to the heading in 
the proposed version of Sec.  42.10(c)(1) and does not change the 
substance of the rule. Second, the term ``established familiarity'' has 
been replaced with ``established legal familiarity.'' This change 
clarifies, in response to a comment, that an established legal 
familiarity with the issues in a proceeding is sufficient to support a 
request for pro hac vice admission, and technical familiarity is not a 
stated requirement.
    To conform Sec.  42.10(c)(2) with the change discussed above, the 
Office has deleted language that would have permitted a non-registered 
attorney admitted pro hac vice to serve as lead counsel.
    In Sec.  42.10(c)(2) and (3), the term ``PTAB-recognized 
practitioner'' has been replaced with ``provisionally recognized PTAB 
attorney.'' This change was made in response to commenter concerns that 
the public might confuse ``PTAB-recognized practitioners'' with 
registered practitioners. Also, the term ``non-registered 
practitioner'' has been replaced with ``counsel who is not a registered 
practitioner,'' the term ``non-registered practitioners recognized pro 
hac vice'' has been replaced with ``a person recognized pro hac vice,'' 
and certain instances of the term ``practitioner'' have been replaced 
with the term ``counsel.'' These minor changes in terminology remove 
the use of the term ``practitioner'' to refer to counsel who are 
seeking or have been granted pro hac vice recognition. Notwithstanding 
these changes, which are being made to avoid confusion, those admitted 
pro hac vice remain ``practitioners'' under USPTO rules, and must 
explicitly agree that they are subject to the USPTO Rules of 
Professional Conduct set forth in Sec. Sec.  11.101 et seq.
    The final rule contains two revisions to Sec.  42.15(e) that were 
not contained in the NPRM but that commenters indicated were necessary 
to conform this section to the revised version of Sec.  42.10 set forth 
in this final rule. First, for the same reasons discussed above, the 
term ``non-registered practitioners'' in Sec.  42.15(e) has been 
replaced with ``counsel who are not registered practitioners.'' Second, 
Sec.  42.15(e) has been revised to conform with Sec.  42.10(c)(2) of 
this final rule, which provides for a new procedure for pro hac vice 
recognition that does not require a fee.

Discussion of the Final Rule

    Section 42.10(a) is amended to clarify that lead counsel must be a 
registered practitioner and to provide that, upon a showing of good 
cause, the Board may permit a party to proceed without separate back-up 
counsel.
    Section 42.10(c) is amended to clarify that an established legal 
familiarity with the subject matter of a proceeding is sufficient to 
support a request for pro hac vice recognition, and technical 
familiarity is not required. Section 42.10(c) is also amended to 
provide a new procedure whereby a non-registered attorney who was 
previously recognized pro hac vice in an AIA proceeding and not 
subsequently denied recognition pro hac vice shall be considered a 
provisionally recognized PTAB practitioner and shall be eligible for 
automatic pro hac vice admission in subsequent proceedings via a 
simplified and expedited process that does not require the payment of a 
fee. Section 42.10(c) is further amended to 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 might 
have materially impacted the grant of pro hac vice admission had the 
information been presented at the time of grant. The terminology of 
Sec.  42.10(c) is also amended to use the terms ``counsel'' or 
``person'' rather than ``practitioner'' to refer to persons who are 
seeking or have been granted pro hac vice recognition.
    Section 42.15(e) is amended to replace the term ``non-registered 
practitioners'' with the term ``counsel who are not registered 
practitioners'' and to conform with Sec.  42.10(c)(2) of this final 
rule, which permits certain persons to seek pro hac vice recognition 
without the payment of a fee.

Rulemaking Requirements

    A. Administrative Procedure Act: The changes in 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.

[[Page 82177]]

Cir. 2008) (5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require 
notice-and-comment rulemaking for ``interpretative rules, general 
statements 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 chose to seek public comment before 
implementing this rule to benefit from the public's input.
    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 in 
this final rule will not have a significant economic impact on a 
substantial number of small entities. See 5 U.S.C. 605(b).
    This rule permits parties to proceed without back-up counsel upon a 
showing of good cause, creates a new streamlined procedure for 
recognizing counsel pro hac vice that is available for counsel who have 
previously been recognized pro hac vice in a different Board 
proceeding, and clarifies 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 do 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 will 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 rule 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 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 affect 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.), 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 a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The 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.
    N. National Technology Transfer and Advancement Act of 1995: The

[[Page 82178]]

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 number 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 amends 37 CFR 
part 42 as follows:

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
1. The authority citation for part 42 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 3, 6, 21, 23, 41, 134, 135, 143, 
153, 311, 312, 314, 316, 318, 321-326, 328; Pub. L. 112-29, 125 
Stat. 284; and Pub. L. 112-274, 126 Stat. 2456.


0
2. Amend Sec.  42.10 by revising paragraphs (a) and (c) to read as 
follows:


Sec.  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. Lead counsel must be a 
registered practitioner. The Board may permit a party to proceed 
without back-up counsel upon a showing of good cause. A party may show 
good cause by demonstrating that it lacks the financial resources to 
retain both lead and back-up counsel.
* * * * *
    (c)(1) Pro hac vice recognition of a person other than a registered 
practitioner. The Board may recognize counsel pro hac vice during a 
proceeding upon a showing of good cause, subject to the condition that 
lead counsel be a registered practitioner and to any other conditions 
the Board may impose. For example, where the lead counsel is a 
registered practitioner, a motion to appear pro hac vice by counsel who 
is not a registered practitioner may be granted upon showing that 
counsel is an experienced litigating attorney and has an established 
legal familiarity with the subject matter at issue in the proceeding.
    (2) Pro hac vice recognition of provisionally recognized PTAB 
attorneys. (i) Any counsel who is not a registered 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 provisionally recognized 
PTAB attorney. Provisionally recognized PTAB attorneys shall be 
eligible for automatic pro hac vice admission in subsequent 
proceedings, subject to the following conditions.
    (ii) If a party seeks to be represented in a proceeding by a 
provisionally recognized PTAB attorney, that party may file a notice of 
intent to designate a provisionally recognized PTAB attorney as back-up 
counsel. No fee is required for such a notice. The notice shall:
    (A) Identify a registered practitioner who will serve as lead 
counsel, and
    (B) Be accompanied by a certification in the form of a declaration 
or affidavit in which the provisionally recognized PTAB attorney 
attests to satisfying all requirements set forth by the Board for pro 
hac vice recognition of a provisionally recognized PTAB attorney and 
agrees to be subject to the USPTO Rules of Professional Conduct set 
forth in Sec. Sec.  11.101 et seq. of this chapter and disciplinary 
jurisdiction under Sec.  11.19(a) of this chapter.
    (iii) Any objection shall be filed by a party within five business 
days after the filing of the notice. If an objection is not filed 
within five business days, the provisionally recognized PTAB attorney 
shall be deemed admitted pro hac vice in that proceeding upon filing of 
updated mandatory notices identifying that counsel as counsel of 
record. If an objection is filed by a party within 5 business days, 
unless the Board orders otherwise within 10 business days after the 
objection is filed, the provisionally recognized PTAB attorney shall be 
deemed admitted pro hac vice after updated mandatory notices 
identifying that counsel as counsel of record are then filed.
    (iv) If a provisionally recognized PTAB attorney 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 persons recognized pro hac vice. For the 
entire duration of any proceeding in which counsel who is not a 
registered practitioner is recognized pro hac vice pursuant to 
paragraph (c)(1) or (2) of this section, the counsel who is not a 
registered practitioner has a continuing duty to notify the Board in 
writing within five business days if:
    (i) The counsel who is not a registered practitioner is sanctioned, 
cited for contempt, suspended, disbarred, or denied admission by any 
court or administrative agency;
    (ii) The counsel who is not a 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 
counsel who is not a registered practitioner is not required to inform 
the Board of subsequent applications for pro hac vice recognition 
unless such an application is denied.
* * * * *

0
3. Amend Sec.  42.15 by revising paragraph (e) to read as follows:


Sec.  42.15  Fees.

* * * * *
    (e) Fee for counsel who are not registered practitioners, and who 
are not seeking automatic recognition pursuant to Sec.  42.10(c)(2), to 
appear pro hac vice

[[Page 82179]]

before the Patent Trial and Appeal Board: $250.00

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-23319 Filed 10-9-24; 8:45 am]
BILLING CODE 3510-16-P