There has been some concern that the “patent lawyer guild” has run amok in light of the requirement that lead counsel in Inter Partes Review and Post Grant Review be patent practitioners (i.e., registered patent attorneys). It will be interesting to watch, therefore, how stringent the PTAB will be with regard motions to appear pro hac vice – an option for non-practitioners to appear in IPR/PGR proceedings as backup counsel, per 37 CFR 42.10(c):
“The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions as the Board may impose.”
[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]”The Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to the condition that lead counsel be a registered practitioner and to any other conditions as the Board may impose.” — 37 CFR 42.10(c)[/pullquote]
Thus far, the Board seems receptive to allowing non-practitioners to participate in inter partes review proceedings, though, to date, the Board has only authorized the filing of a motion pro hac vice, but has not actually granted any such motions. For example, in a recent order from the PTAB in IPR2013-00010 (Motorola Mobility LLC v. Arnouse), authorization was granted for Motorola to file a motion for pro hac vice admission. This authorization offers insight into the Board’s thought process both from the perspective of the timing of briefing relating to the motion, as well as the content of such a motion.
First, with regard to timing, the Board instructed that such a motion seeking admission pro hac vice should not be filed any sooner than 21 days after the service of the petition (when patent owner mandatory notices are due). Order at 2. Any opposition is due within one week of the filing of the underlying motion. Order at 3. But, no opposition can be filed without authorization of the Board. Id. As such, this is another reminder that parties must have authorization to make most filings in inter partes review proceedings.
Second, with regard to content of a motion seeking admission pro hac vice, the board instructed that the motion must contain facts showing there is good cause to recognize counsel. Order at 3. Also, the motion must contain a declaration of the individual seeking to be admitted that includes requirements similar to requests for admission to appear pro hac vice that have been a mainstay in district court litigation (member of good standing in at least one bar, no suspensions or disbarments, etc.).
Time will tell whether the inter partes review and post grant review procedures become a largely patent bar-centric practice or whether non-practitioners will be freely allowed to participate. At the outset, the Board seems more than willing to consider the latter course.