[ad_1]
“The proposed rule would enable events to proceed with out separate backup counsel so long as the lead counsel is a registered practitioner; lead counsel might be a non-registered practitioner so long as there may be one registered practitioner appearing as counsel.”
The U.S. Patent and Trademark Workplace (USPTO) issued a Notice of Proposed Rulemaking (NPRM) right now that may enable practitioners who should not registered with the USPTO patent bar to behave as lead counsel in proceedings earlier than the Patent Trial and Attraction Board (PTAB).
The NPRM comes after a Request for Comments (RFC) revealed in October 2022 wherein the Workplace requested for enter on whether or not it ought to increase the standards to observe earlier than the PTAB. The RFC particularly requested for responses to the next questions:
“(1) whether or not the USPTO ought to allow non-registered practitioners to look as lead counsel in AIA proceedings, and in that case, whether or not they need to have to be accompanied by a registered practitioner as back-up counsel;
(2) whether or not the USPTO ought to set up a brand new process by which non-registered practitioners might be admitted to observe earlier than the PTAB;
(3) what impression numerous proposals would have on the price of illustration; and
(4) whether or not any modifications needs to be applied initially as a pilot program.”
In keeping with right now’s NPRM, the Workplace acquired 9 responses to the RFC and in the end has determined to suggest that practitioners should nonetheless be represented by a registered practitioner, however to permit events to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”
Presently, lead counsel on the PTAB have to be a registered practitioner. Non-registered practitioners could be back-up counsel, however solely “the place the lead counsel is a registered practitioner,” and when “a movement to look professional hac vice by counsel who is just not a registered practitioner [is] granted upon displaying that counsel is an skilled litigating lawyer and has a longtime familiarity with the subject material at challenge within the continuing.” Moreover, every represented social gathering should designate each a lead counsel and a minimum of one back-up counsel.
The NPRM would calm down these necessities in a lot of methods. First, the proposed rule would enable events to proceed with out separate backup counsel so long as the lead counsel is a registered practitioner. The proposal additionally offers that lead counsel might be a non-registered practitioner so long as there may be one registered practitioner appearing as counsel and would enable a earlier recognition of professional hac vice standing in an America Invents Act (AIA) to permit a person to be thought-about a PTAB-recognized practitioner eligible “for computerized professional hac vice admission in subsequent proceedings by way of a simplified and expedited course of that doesn’t require cost of a payment.”
In keeping with the NPRM, a lot of the feedback really useful retaining the requirement {that a} registered practitioner be concerned in PTAB proceedings and that non-registered practitioners meet “fitness-to-practice requirements” however stated it might be less expensive if non-registered practitioners may keep away from having to file separate professional hac vice motions in every case.
The rulemaking is a part of the USPTO’s ongoing effort to increase entry to observe earlier than the Workplace and to cut back prices for people and smaller entities. “By increasing the admission standards to observe earlier than the PTAB, we’re opening our doorways to extra participation within the innovation ecosystem, whereas not compromising our objective to make sure we challenge and preserve strong and dependable mental property rights,” stated USPTO Director Kathi Vidal.
Feedback have to be acquired by Might 21, 2024, by way of the Federal eRulemaking Portal by coming into docket quantity PTO-P-2023-0058.
[ad_2]
Source link
