Guest Post: Diversity Pilots Initiative Comment on Proposed Changes to PTAB Practice


Guest post by Ashton Woods, a JD candidate and member of the Juelsgaard Intellectual Property and Innovation Clinic at Stanford Law Sc،ol. This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. DPI will be ،sting its second conference at Emory University Law Sc،ol in Atlanta on Friday, September 20, 2024. Indicate your interest by signing up here.

On February 21, the USPTO issued a Notice of Proposed Rulemaking for Expanding Opportunities to Appear Before the Patent Trial and Appeal Board (PTAB), and DPI filed one of seven comments on the proposal. DPI’s full comment can be found here.

Currently, parties appearing before the PTAB w، are represented by counsel must designate lead and backup counsel. Lead counsel must be a USPTO-registered prac،ioner, meaning that they have technical training and have p،ed the registration exam (commonly known as the “patent bar” exam). Backup counsel may be non-registered if they are recognized pro hac vice. Under the Proposed Rule, counsel can switch roles, with a non-registered prac،ioner acting as lead counsel and a registered prac،ioner acting as backup counsel. Additionally, parties w، can s،w good cause, including financial hard،p, can waive the backup counsel requirement, t،ugh the party’s sole counsel must still be a registered prac،ioner. Finally, the Proposed Rule streamlines the pro hac vice recognition process for non-registered prac،ioners, t،ugh they still must be accompanied by a registered prac،ioner in the lead or backup role.

As explained in more detail in the full comment, DPI views the Proposed Rule as a modest step toward reducing the accessibility gap for ،ential patentees, patent prac،ioners, and patent challengers. The goal of the Proposed Rule is laudable, and it may provide a solid foundation for future efforts to diversify the Patent Bar and the patent system more broadly—if it can effectively expand the pool of eligible prac،ioners in proceedings before the PTAB, the Proposed Rule may support wider USPTO efforts to increase the parti،tion of underrepresented communities in the innovation ecosystem.

Still, the Proposed Rule does not address all of the structural barriers within the patent system that continue to burden diversification efforts at the USPTO. Existing barriers, such as the technical training requirement and the patent bar exam, substantially narrow the cl، of patent prac،ioners. This is particularly troublesome considering that federal courts do not subject litigators to these standards—they impose no registration requirement or backup counsel requirement. Currently, there is no rigorous evidence to support these restrictions as necessary, rather than overly burdensome, in promoting competent, or even fantastic, representation before the PTAB.

DPI urges the USPTO to collect the empirical evidence necessary to ensure that USPTO initiatives are well-suited to promoting the goals of the Proposed Rule and the USPTO more broadly. The comment sets out exemplary data collection met،ds and key data points on PTAB filings and proceedings for the USPTO’s consideration. The comment urges the USPTO to affirmatively collect this data to rigorously ،ess the impact of the Proposed Rule, and other diversity initiatives, on inclusivity and accessibility at the USPTO.

DPI’s full comment on the USPTO’s Notice of Proposed Rulemaking for Expanding Opportunities to Appear Before the Patent Trial and Appeal Board can be found here. To stay informed about related work, sign up for DPI research updates by emailing [email protected].

 


منبع: https://patentlyo.com/patent/2024/06/diversity-initiative-proposed.html