Appeals
With regard to appeals, one or more registered patent practitioners of record may present arguments at the oral hearing on behalf of appellant. For example, two registered patent practitioners of record may split the allotted argument time between themselves as they see fit.
Counsel must identify the practitioner(s) who plan to appear to present arguments at the oral in the response to the Notice of Hearing. Counsel is not required to provide the Board notice when one registered practitioner of record intends to substitute for another. However, the Board requests the name of all persons presenting arguments at oral hearings so that the judges assigned to the panel can determine prior to the hearing whether any conflicts exist that may require their recusal from the appeal. Therefore, it is prudent for counsel to provide such notification. Counsel can notify the Board of such a substitution either by
- submitting a revised or corrected confirmation of attendance in accordance with the instructions set forth on the Notice of Hearing; or
- faxing a notification to the attention of the Patent Trial and Appeal Board Hearings Clerk at both:
- the USPTO Central Fax number, (571) 273-8300, and
- the PTAB Hearing Fax number, (571) 273-9797.
Sometimes a registered patent attorney who is not listed on the power of attorney wishes to present oral arguments in an appeal. Such a registered patent practitioner who is not of record can present oral arguments without the power of attorney having to be updated or changed. To do so, the registered patent practitioner who is of record may grant authority to the registered practitioner who is not of record by submitting a written authorization in the file. Such a paper may be a Form/PTO/SB/84 "Authorization to Act in a Representative Capacity." This form is available from the USPTO Internet web site at http://www.uspto.gov/web/forms/sb0084.pdf.
In appeals, registered patent practitioners of record sometimes wish to have inventors accompany them at the oral hearing when the inventors can better answer technical questions posed by the judges. Occasionally, registered practitioners will bring an inventor to the hearing and, at the outset of the hearing, request the panel's permission for the inventor to participate. While permission may be granted in such situations, such decisions are within the panel's discretion. As such, when a registered patent practitioner wishes to be accompanied by an inventor, it would be prudent for the practitioner to seek the panel's permission prior to the hearing date. A registered practitioner of record may fax such a request to the attention of the Patent Trial and Appeal Board Hearings Clerk at both:
- the USPTO Central Fax number, (571) 273-8300, and
- the PTAB Hearing Fax number, (571) 273-9797.
Upon receipt, the Hearings Clerk will forward the request to the panel for its consideration and recommendation. An Order will then be issued granting or denying the request.
Inventors who are unrepresented by a registered patent practitioner have the right to represent themselves and present oral arguments in appeals before the Board.
Inventors may also present arguments at oral hearings in appeals, even if otherwise represented by a registered patent practitioner, so long as the inventors have not assigned to another any rights in the invention. In such situations, the Board requests that a courtesy written notification be faxed to the attention of the Patent Trial and Appeal Board Hearings Clerk at both:
- the USPTO Central Fax number, (571) 273-8300, and
- the PTAB Hearing Fax number, (571) 273-9797.
The Hearings Clerk will notify the assigned panel.
If an inventor wishes to present arguments at the oral hearing in an appeal, but the inventor is represented by a registered patent practitioner, and the inventor has assigned to another any rights in the invention, the registered patent practitioner will have to file a request for pro hac vice admission of the inventor in accordance with the next section. Such a pro hac vice request should include authorization from all assignees.
Trials
With regard to AIA Trials and Interferences, designated Lead Counsel and/or Back-up Counsel may present arguments at the oral hearing.
Non-registered practitioners
The Board may authorize a person other than a registered patent practitioner to appear as counsel in a specific proceeding. See 37 C.F.R. § 41.5(a) (addressing reexaminations and ex parte appeals). See also, 37 C.F.R. § 42.10(c) (addressing trial practice and procedure for AIA proceedings). In order for non-registered counsel to accompany the registered practitioner and present arguments, the registered patent practitioner may move for pro hac vice admission of the non-registered counsel in the manner by which other motions are ordinarily filed for the particular type of proceeding. The Board's decision to grant any pro hac vice request is discretionary. Even if pro hac vice admission is granted, a registered patent practitioner of record generally must still be present at the oral hearing.
- For AIA trials, see, e.g., the guidelines set forth in IPR2013-00639 Order Authorizing Motion for Pro Hac Vice Admission, Paper 7, Oct. 15, 2013, http://www.uspto.gov/ip/boards/bpai/ipr201300639_authorize_pro_hac_new_rules.pdf.
- For appeals, requests for pro hac vice admission should be faxed to the attention of the Patent Trial and Appeal Board Hearings Clerk at both:
- (i) the USPTO Central Fax number, (571)273-8300, and
- (ii) the PTAB Hearing Fax number, (571) 273-9797.
The requests should set forth good cause showing why pro hac vice admission should be granted. In response to the request, an Order will be issued granting or denying the request.