Patent Bar Required or Not?
The USPTO continues to work to fashion rules to implement the new post grant proceedings of
the Leahy-Smith America Invents Act (AIA). One can only speculate that
the new "trial" like, post grant proceedings of the AIA will be closely
modeled on the procedures of existing patent interference practice. This
is because the USPTO, aside from patent interference, has limited
experience in presiding over the types of contested proceedings
contemplated by Inter Partes Review (IPR) and Post Grant Review (PGR).
In patent interferences, the Trial Division
of the existing Board of Patent Appeals & Interferences (BPAI)
conducts proceedings based upon a Standing Order. Patent
interference requires an in depth knowledge of a difficult and
relatively obscure aspect of patent law. As such, the attorneys
who conduct these proceedings are seldom general litigators, but almost
always registered patent attorneys with substantial experience in
handling interferences-i.e., members of "the interference bar."
However, such is not required.
As explained in the Contested Case Practice Guide, § 41.5 Counsel, [t]he Board may authorize a person other than a registered practitioner to appear as counsel in a specific proceeding. But the practice note of the same section of the Guide emphasizes that [c]ontested cases can be technically, legally, and procedurally complex. Consequently, a motion to appear pro hac vice will rarely be granted
unless the counsel is an experienced litigating attorney and has an
established familiarity with the subject matter at issue in the
contested case. (emphasis added) See, e.g., Howell v. Lentz, 83 USPQ2d 1381 (PTOBPAI 2006) [enhanced version available to lexis.com subscribers], discussed in Gholz, A Critique of Recent Opinions in Patent Interferences, 90 JPTOS 9, 20-21 (2008).
So, although it is rarely utilized, pro hac vice practice does exist in patent interferences.
Will this procedural nuance be adopted by
the the new Patent Trial & Appeal Board (PTAB) for the umbrella rule
set contemplated for PGR and IPR proceedings
While patent interference may serve as a
baseline model with respect to IPR and PGR procedural rule makers, the
substantive issues of a patent interference trial relating to priority
are quite different from the traditional prosecution based mechanisms of
IPR and PGR. These differences must be taken in consideration.
interferences are terminated during or at the end of the first phase,
which usually involves only issues of patentability, including
patentability over the prior art available against each party and claim
and count scope-including the correspondence of or non-correspondence of
the parties' claims (including claims that the parties seek to add to
their cases in interference in order to get around their respective
patentability problems) to the count or counts of the interference.
interference proceeds to the second phase, which usually involves issues
of priority, derivation, and inventorship. The focus of the second
phase is not patentability of the parties' claims.
Both IPR and
PGR will include substantive amendment opportunities and prior art
analysis that are the hallmark of prosecution practice before the USPTO,
and will be the very same issues tried by the PTAB fact finders. Of
course, the very same practice when before the examining corps of the
USPTO requires a registered patent agent or attorney.
It is true
that both IPR and PGR (like interferences) will have limited discovery,
and other ancillary litigation style mechanisms. Yet, the layering of
litigation style mechanisms onto a prosecution foundation would still
seem to warrant the USPTO registration requirement historically required
to pursue such patentability determinations before the agency.
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