AIPLA Comments to USPTO on Expanding Opportunities to Appear Before the Patent Trial and Appeal Board

Written May 24, 2024

Arlington, VA. May 21, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO in response to the Notice of Proposed Rulemaking on Expanding Opportunities to Appear Before the Patent Trial and Appeal Board (PTAB).


AIPLA commends the USPTO's efforts to improve access to practice before the PTAB while maintaining public protection from unqualified practitioners. AIPLA applauds the support for individuals and smaller entities in the rulemaking.


AIPLA appreciates the effort to expand access to the USPTO, noting that it can reduce costs, improve efficiency, and enhance diversity. However, AIPLA finds that the proposed rules do not significantly expand opportunities to appear before the PTAB. The rules mainly simplify the process for existing PTAB counsel and do not meaningfully broaden the pool of practitioners. Provisions for under-resourced parties and allowing pro hac vice counsel as lead counsel are seen as largely cosmetic changes, as a registered practitioner co-counsel is still required. Therefore, AIPLA supports the rules but believes they fall short of expanding access.


The comments support the administrative efficiencies in streamlining pro hac vice admission for non-registered practitioners as PTAB-recognized counsel but emphasize the necessity of having registered practitioner co-counsel to protect public interests. AIPLA suggests clarifying the rules for when registered co-counsel becomes unavailable and recognizes that while experienced non-registered attorneys can handle significant portions of PTAB trials, we advise against bifurcating issues to exclude registered practitioners due to potential complexities and inefficiencies. AIPLA also appreciates the provision allowing under-resourced parties to proceed without backup counsel upon showing good cause, recommending a case-by-case assessment to determine true need.


Please download the comments posted to the right of this page to view in full.