Patents Post-Grant: General Litigators to Practice Before the New Patent Trial & Appeal Board?

Patents Post-Grant: General Litigators to Practice Before the New Patent Trial & Appeal Board?

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.

Most 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.

Rarely, an 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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