Expanding Opportunities To Appear Before the Patent Trial and Appeal Board, 82172-82179 [2024-23319]
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Federal Register / Vol. 89, No. 197 / Thursday, October 10, 2024 / Rules and Regulations
List of Subjects in 33 CFR Part 165
responsibilities between the Federal
Government and Indian tribes.
E. Unfunded Mandates Reform Act
The Unfunded Mandates Reform Act
of 1995 (2 U.S.C. 1531–1538) requires
Federal agencies to assess the effects of
their discretionary regulatory actions. In
particular, the Act addresses actions
that may result in the expenditure by a
State, local, or Tribal government, in the
aggregate, or by the private sector of
$100,000,000 (adjusted for inflation) or
more in any one year. Though this rule
will not result in such an expenditure,
we do discuss the effects of this rule
elsewhere in this preamble.
F. Environment
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G. Protest Activities
The Coast Guard respects the First
Amendment rights of protesters.
Protesters are asked to contact the
person listed in the FOR FURTHER
INFORMATION CONTACT section to
coordinate protest activities so that your
message can be received without
jeopardizing the safety or security of
people, places, or vessels.
16:07 Oct 09, 2024
PART 165—REGULATED NAVIGATION
AREAS AND LIMITED ACCESS AREAS
1. The authority citation for part 165
continues to read as follows:
■
Authority: 46 U.S.C 70034, 70051; 70124;
33 CFR 1.05–1, 6.04–1, 6.04–6, and 160.5;
Department of Homeland Security Delegation
No. 00170.1, Revision No. 01.3.
2. Add § 165.T08–0908 to read as
follows:
■
We have analyzed this rule under
Department of Homeland Security
Directive 023–01, Rev. 1, associated
implementing instructions, and
Environmental Planning COMDTINST
5090.1 (series), which guide the Coast
Guard in complying with the National
Environmental Policy Act of 1969 (42
U.S.C. 4321–4370f) and have
determined that this action is one of a
category of actions that do not
individually or cumulatively have a
significant effect on the human
environment. This rule involves moving
security zones lasting for the duration of
time that the M/V MARAN GAS
DELPHI, TRANIANO KNUTSEN,
ADAMASTOS, HELLAS ATHINA are
within the Corpus Christi Ship Channel
and La Quinta Channel while loaded
with cargo. It will prohibit entry within
a 500-yard radius of the M/V MARAN
GAS DELPHI, TRANIANO KNUTSEN,
ADAMASTOS, and HELLAS ATHINA
while the vessels are transiting loaded
within Corpus Christi Ship Channel and
La Quinta Channel. It is categorically
excluded from further review under
L60(a) in Appendix A, Table 1 of DHS
Instruction Manual 023–01–001–01,
Rev. 1. A record of Environmental
Consideration supporting this
determination is available in the docket.
For instructions on locating the docket,
see the ADDRESSES section of this
preamble.
VerDate Sep<11>2014
Harbors, Marine safety, Navigation
(water), Reporting and recordkeeping
requirements, Security measures,
Waterways.
For the reasons discussed in the
preamble, the Coast Guard amends 33
CFR part 165 as follows:
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§ 165.T08–0908 Security Zones; Corpus
Christi Ship Channel, Corpus Christi, TX.
(a) Location. All navigable waters
encompassing a 500-yard radius around
the M/V MARAN GAS DELPHI,
TRANIANO KNUTSEN, ADAMASTOS,
and HELLAS ATHINA, while the
vessels are in the Corpus Christi Ship
Channel and the La Quinta Ship
Channel.
(b) Definitions. As used in this
section, oesignated representative
means a commissioned, warrant, or
petty officer of the U.S. Coast Guard
assigned to units under the operational
control of USCG Sector Corpus Christi.
(c) Effective period. This section will
be in effect from October 7, 2024,
through October 17, 2024. This section
will be enforced when any of the vessels
are in the specified channels and
carrying cargo.
(d) Regulations. (1) The general
security zone regulations in subpart D of
this part apply. Entry into the zone is
prohibited unless authorized by the
Captain of the Port Sector Corpus
Christi (COTP) or a designated
representative.
(2) Persons or vessels desiring to enter
or pass through the zones must request
permission from the COTP Sector
Corpus Christi on VHF–FM channel 16
or by telephone at 361–939–0450.
(3) If permission is granted, all
persons and vessels shall comply with
the instructions of the COTP or
designated representative.
(d) Information broadcasts. The COTP
or a designated representative will
inform the public through Broadcast
Notices to Mariners (BNMs), Local
Notices to Mariners (LNMs), and/or
Marine Safety Information Bulletins
(MSIBs) as appropriate of the
enforcement times and dates for this
security zone.
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Dated: October 4, 2024.
T.H. Bertheau,
Captain, U.S. Coast Guard, Captain of the
Port, Sector Corpus Christi.
[FR Doc. 2024–23469 Filed 10–9–24; 8:45 am]
BILLING CODE 9110–04–P
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
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Final rule.
AGENCY:
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:
SUMMARY:
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
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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
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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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 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
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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 nonregistered practitioners to meet fitnessto-practice standards, but several
comments agreed that it might be more
efficient and less costly to the parties to
establish a separate registry or
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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 § 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 § 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 nonregistered 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 § 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.
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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-P2023-0058 and are addressed below.
Proposed Amendment to § 42.10(a)
Permitting Parties To Proceed Without
Back-Up Counsel Upon Showing of
Good Cause
Five comments supported the
proposal to amend § 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 § 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 § 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
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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.
Proposed Amendment to § 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 § 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 non2 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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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 § 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 quasiprosecution amendments.
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 § 42.10(c) pertaining to pro
hac vice applicants having an
established familiarity with the subject
3 See
supra n 2.
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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 § 42.10(c)
Streamlining Pro Hac Vice Admission
Practice for Previous Pro Hac Vice
Admittees
Four comments supported the
proposal to amend § 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-topractice 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
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82175
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 § 42.10(c)
Designating Previous Pro Hac Vice
Admittees as ‘‘PTAB-Recognized
Practitioners’’
The proposed amendment to
§ 42.10(c) used the term ‘‘PTABrecognized 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 PTABrecognized 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 § 11.1. That comment asserted that
the definition of ‘‘practitioner’’ in § 11.1
does not encompass non-registered
counsel who are admitted pro hac vice
in Board proceedings. Thus, the
commenter argued, § 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
§ 42.15(e), which also uses the term
‘‘practitioners’’ to refer to counsel
recognized pro hac vice. The comment
suggested that §§ 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 § 42.15(e), which sets
forth the fee for pro hac vice
recognition, be revised to conform with
the new procedure set forth in
§ 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 § 11.1 is incorrect in
that ‘‘practitioner,’’ as defined by § 11.1,
encompasses non-registered counsel
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who are admitted pro hac vice in Board
proceedings. Nevertheless, based on the
totality of input from commenters, the
Office revises the terminology in
§§ 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 § 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 § 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 §§ 11.101 et seq.
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Proposed Amendment to § 42.10(c)
Clarifying Continuing Disclosure Duties
of Pro Hac Vice Admittees
Four comments supported the
proposed amendment to § 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 § 42.10(c)(1), the Office has
dropped the proposed language that
would have permitted non-registered
counsel who are recognized pro hac vice
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to serve as lead counsel in favor of
moving forward with a pilot program.
The final rule retains the current
language of § 42.10(c) in place of the
language that was proposed in the
NPRM. The final rule includes two
modifications to the language in
§ 42.10(c). First, the following heading
has been added to the beginning of
§ 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
§ 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 § 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 § 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 ‘‘nonregistered practitioner’’ has been
replaced with ‘‘counsel who is not a
registered practitioner,’’ the term ‘‘nonregistered 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
§§ 11.101 et seq.
The final rule contains two revisions
to § 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
§ 42.10 set forth in this final rule. First,
for the same reasons discussed above,
the term ‘‘non-registered practitioners’’
in § 42.15(e) has been replaced with
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‘‘counsel who are not registered
practitioners.’’ Second, § 42.15(e) has
been revised to conform with
§ 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 nonregistered 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 § 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 § 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.
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Cir. 2008) (5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), do not require noticeand-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
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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
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82177
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
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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 nonsubstantive 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
1. The authority citation for part 42
continues to read as follows:
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■
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.
2. Amend § 42.10 by revising
paragraphs (a) and (c) to read as follows:
■
§ 42.10
Counsel.
(a) If a party is represented by
counsel, the party must designate a lead
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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 §§ 11.101 et seq. of this chapter and
disciplinary jurisdiction under
§ 11.19(a) of this chapter.
(iii) Any objection shall be filed by a
party within five business days after the
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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.
*
*
*
*
*
3. Amend § 42.15 by revising
paragraph (e) to read as follows:
■
§ 42.15
Fees.
*
*
*
*
*
(e) Fee for counsel who are not
registered practitioners, and who are not
seeking automatic recognition pursuant
to § 42.10(c)(2), to appear pro hac vice
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Federal Register / Vol. 89, No. 197 / Thursday, October 10, 2024 / Rules and Regulations
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
DEPARTMENT OF VETERANS
AFFAIRS
38 CFR Parts 38 and 39
RIN 2900–AR82
Outer Burial Receptacles
Department of Veterans Affairs.
Final rule.
AGENCY:
ACTION:
The Department of Veterans
Affairs (VA) is revising its regulation
that governs the outer burial receptacle
(OBR) monetary allowance for burials in
a VA national cemetery when a
privately purchased OBR is used in lieu
of a Government-furnished graveliner.
First, VA is expanding applicability of
the monetary allowance to burials in VA
grant-funded State and Tribal
cemeteries when a privately purchased
OBR was used, or where an OBR is
placed at the time of interment, at the
cost of the State or Tribal organization.
Second, VA is adding a provision to
reimburse States and Tribal
organizations for OBRs that are preplaced as part of a new construction or
expansion grant project. In addition, VA
is making minor conforming revisions to
its regulations governing aid for the
establishment, expansion, and
improvement of veterans cemeteries to
clarify that VA will reimburse the cost
of pre-placed OBRs separately from the
grant award. These changes implement
new authorities provided in the Johnny
Isakson and David P. Roe, M.D. Veterans
Health Care and Benefits Improvement
Act of 2020. VA also is removing
retroactive provisions no longer needed
because the relevant time period has
passed.
SUMMARY:
This rule is effective November
12, 2024.
FOR FURTHER INFORMATION CONTACT:
Michelle Myers, Management and
Program Analyst, Policy and Regulatory
Service, National Cemetery
Administration, Department of Veterans
Affairs, 810 Vermont Avenue NW,
Washington, DC 20420. Telephone:
(720) 607–0364. (This is not a toll-free
number.)
SUPPLEMENTARY INFORMATION: On
February 6, 2024, VA published a
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proposed rule in the Federal Register at
89 FR 8126 that proposed revisions to
38 CFR 38.629 to include provision of
OBRs for gravesites in State or Tribal
organization cemeteries funded through
VA grants. The proposed rule also
proposed revisions to 38 CFR 39.50 to
clarify that VA would reimburse the
cost of pre-placed OBRs separately from
the grant award and revisions to 38 CFR
39.122 to establish that a State or Tribal
organization that seeks payment in the
form of reimbursement or monetary
allowance for OBRs under § 38.629
would be subject to related inspections,
audits, and reporting. The public
comment period ended on April 8,
2024, and VA received no comments in
response to the proposed rule.
During the final rule drafting process,
VA noted an unintended outcome based
on the proposed language of
§ 38.629(e)(2), which we have addressed
in this final rule. In the proposed rule,
the monetary allowance for OBRs
placed at the time of interment would
have only been payable if a State or
Tribal organization submitted a request
for payment within 1 year of interment.
However, with the time that has elapsed
while developing this rulemaking, the 1year limitation on filing requests for
payment would have created an
unintended barrier to awarding the
benefit from the earliest date authorized
by statute, January 5, 2023. This
provision would have unintentionally
prohibited the payment of the allowance
for burials that occurred more than 1
year prior to the final rule becoming
effective. To ensure that the payment of
the monetary allowance for OBRs
placed at the time of interment is
payable for all eligible burials, VA has
revised the provision to read: ‘‘Requests
for payment under this section for
burials that occur from January 5, 2023,
through December 31, 2024, must be
submitted by December 31, 2025.
Requests for payment under this section
for burials that occur on or after January
1, 2025, must be submitted within 1
year of interment.’’ This change
accommodates the lag in publishing this
rulemaking and ensures VA can provide
payment for claims that could not be
submitted until such time as this final
rule becomes effective.
VA has also made technical changes
to note the heading change to
§ 38.629(c) in the amendatory
instructions, which was inadvertently
omitted in the proposed rule, and to
conform to cross-reference conventions.
We added the phrase ‘‘of this chapter’’
after cross-references to other regulatory
sections in §§ 38.629(h), 39.50(e), and
39.122(a).
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82179
Because no comments were received
during the public comment period, VA
made no changes to the proposed
regulatory text besides the technical
changes described here.
Executive Orders 12866, 13563, and
14094
Executive Order 12866 (Regulatory
Planning and Review) directs agencies
to assess the costs and benefits of
available regulatory alternatives and,
when regulation is necessary, to select
regulatory approaches that maximize
net benefits (including potential
economic, environmental, public health
and safety effects, and other advantages;
distributive impacts; and equity).
Executive Order 13563 (Improving
Regulation and Regulatory Review)
emphasizes the importance of
quantifying both costs and benefits,
reducing costs, harmonizing rules, and
promoting flexibility. Executive Order
14094 (Modernizing Regulatory Review)
supplements and reaffirms the
principles, structures, and definitions
governing contemporary regulatory
review established in Executive Orders
12866 and 13563. The Office of
Information and Regulatory Affairs has
determined that this rulemaking is not
a significant regulatory action under
Executive Order 12866, as amended by
Executive Order 14094. The Regulatory
Impact Analysis associated with this
rulemaking can be found as a
supporting document at
www.regulations.gov.
Regulatory Flexibility Act
The Secretary hereby certifies that
this final rule will not have a significant
economic impact on a substantial
number of small entities as they are
defined in the Regulatory Flexibility Act
(5 U.S.C. 601–612). This final rule will
generally be small business neutral as it
applies only to State and Tribal entities
that have received a grant for a cemetery
under 38 U.S.C. 2408. The Secretary
acknowledges that some Tribal
governments may be considered small
entities; however, the economic impact
would be entirely beneficial. This final
rule will impose no mandatory
requirements or costs on Tribal
governments as a whole and will only
affect those that are recipients of
veterans cemetery grants. To the extent
that small entities are affected, the
impact of this final rule will be entirely
beneficial as it will provide
reimbursement for costs of OBRs
associated with casketed burials in
grant-funded cemeteries. Therefore,
pursuant to 5 U.S.C. 605(b), the initial
and final regulatory flexibility analysis
E:\FR\FM\10OCR1.SGM
10OCR1
Agencies
[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.
-----------------------------------------------------------------------
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.
---------------------------------------------------------------------------
\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 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.
---------------------------------------------------------------------------
\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).
---------------------------------------------------------------------------
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.
---------------------------------------------------------------------------
\3\ See supra n 2.
---------------------------------------------------------------------------
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