Stranger in a Strange Land – USPTO Clarifies Rules for Pro Hac Vice Admission

By Ben Snitkoff

The new Inter Partes Review (“IPR”) and Post-Grant Review (“PGR”)  procedures are similar to district court litigation in many respects: there are opportunities for discovery, depositions, adverse motion practice, and a trial. As such, many participants in these proceedings may wish to retain experienced litigation counsel, who may not be registered to practice before the USPTO.

The regulation authorizing counsel to appear pro hac vice is 37 C.F.R. 42.10(c) and provides:

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 as 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 familiarity with the subject matter at issue in the proceeding.

The Patent Trial and Appeal Board (“PTAB”) recently clarified the procedures for filing a motion for admission pro hac vice, in IPR2013-00639. First, the motion shall be filed no sooner than 21 days after service of the petition, when the patent owner must file their mandatory notices. Any opposition must be filed within seven days after the motion, and no reply is allowed unless authorized by the PTAB.

The motion for admission pro hac vice must state good cause for admitting the attorney and be accompanied by an affidavit stating that the applicant:

  • Is a member in good standing of at least one Bar of a State or the District of Columbia.
  • Is not currently suspended or disbarred from any court or administrative body.
  • Has not been denied admission to any Bar or administrative body.
  • Has not been sanctioned or held in contempt by any court or administrative body.
  • Has read and will comply with the Office Patent Trial Practice Guide and the PTAB’s Rules of Practice.
  • Will be subject to the USPTO Rules of Professional Conduct.

Additionally, the applicant must list any other matters before the USPTO for which the individual has applied to appear pro hac vice within the last three years, and explain the applicant’s familiarity with the matter.

This last factor (familiarity with the matter) is perhaps the most important criterion in the PTAB’s decision-making.  In almost every instance where a pro hac vice motion has been granted, the decision has noted the existence of related civil litigation between the parties and the applicant’s role in the civil suit and familiarity with the subject matter of the challenged patents and the parties’ positions in the related litigation.

It also appears to be the policy of the PTAB that a party should not be represented solely by pro hac vice attorneys and that the lead counsel must be a PTO-registered practitioner.

Having patent prosecutors and litigators working together in an IPR or PGR proceeding will help both groups navigate the nuances of systems and procedures they may not be familiar with, and ensure that the litigation-like aspects are handled competently, and that the team is familiar with unique procedures and case law of the USPTO.

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