Who Can Appear In Patent Trials Before The USPTO Patent Trial And Appeal Board?

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...