Expanding Opportunities To Appear Before the Patent Trial and Appeal Board, 13017-13021 [2024-03523]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 35 (Wednesday, February 21, 2024)]
[Proposed Rules]
[Pages 13017-13021]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-03523]


=======================================================================
-----------------------------------------------------------------------

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

[[Page 13018]]

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[supreg] 
portable document format or Microsoft Word[supreg] 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.''
---------------------------------------------------------------------------

    \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).
---------------------------------------------------------------------------

    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 non-registered practitioners, while four 
comments generally supported expanding the ways in which non-registered 
practitioners can participate in AIA proceedings. During the comment 
period, the Office received several comments in favor of expanding

[[Page 13019]]

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 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 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 non-registered practitioner as lead counsel and 
the registered practitioner as back-up 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\
---------------------------------------------------------------------------

    \2\ See 84 FR 16654, Notice Regarding Options for Amendments by 
Patent Owner Through Reissue or Reexamination During a Pending AIA 
Trial Proceeding (April 2019).
---------------------------------------------------------------------------

    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 non-
registered 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 Sec.  42.57, encompasses 
``design patent practitioners,'' as defined in Sec.  11.1.'' 88 FR 
78649. For clarity, the USPTO reminds the public that Sec.  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 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 USPTO proposes to amend Sec.  42.10(c) to provide that 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 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 notice-and-comment 
rulemaking for ``interpretative rules, general statements

[[Page 13020]]

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 non-registered 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.

[[Page 13021]]

    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

0
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.

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, 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 back-up 
counsel.
* * * * *
    (c)(1) Pro hac vice recognition of non-registered 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 PTAB-recognized practitioners. (i) 
A non-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 PTAB-recognized practitioner. PTAB-recognized 
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 PTAB-recognized 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 PTAB-recognized practitioner, 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 within five business days after 
the filing of the notice. If an objection is not filed within five 
business days, the PTAB-recognized 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]
BILLING CODE 3510-16-P