IP Hot Topic: USPTO Maintains Patent Bar Requirement to Serve as Lead PTAB Counsel

Associate Carson Smith is also an author of this IP Hot Topic.

The U.S. Patent & Trademark Office (USPTO) published a final rule on October 10, 2024, that reaffirms that only members of the patent bar may serve as lead counsel in AIA proceedings before the Patent Trial and Appeal Board (PTAB). The final rule signifies a retreat from a proposed change by the USPTO earlier this year that would have allowed non-registered attorneys to appear as lead counsel in PTAB proceedings on a pro hac vice basis.

However, in an effort to expand PTAB practice opportunities, the final rule establishes a streamlined process for recognizing pro hac vice appearances when the requesting counsel has been recognized in a prior PTAB proceeding. Additionally, the final rule now allows parties to be represented only by lead counsel, without backup counsel, upon showing good cause (e.g., lack of resources).

Read the final rule: Expanding Opportunities to Appear Before the Patent Trial and Appeal Board.