MANAGING IP
Rani Mehta December 09, 2022
The USPTO’s proposal to expand opportunities for non-registered lawyers at the PTAB could help in-house counsel if the attorneys have the right experience
The requirements for practising in front of the Patent Trial and Appeal Board could change soon.
The USPTO is giving the public until January 17 to comment on proposals to expand opportunities to appear before the board.
Attorneys who aren’t registered with the USPTO as patent lawyers can only serve as backup counsel by filing a motion to appear pro hac vice and can’t act as lead counsel.
The office is considering only requiring such attorneys to satisfy the fitness-to-practice standards to serve as backup counsel. Counsel can meet the standard if they have no prior suspensions, disbarments, sanctions or contempt citations and are familiar with the PTAB’s rules and trial practice guide.
The USPTO is weighing letting these attorneys serve as lead counsel on a case-by-case basis too.
Lawyers at six companies say this move would benefit in-house counsel as it would expand the talent pool. But the change wouldn’t radically alter their hiring strategies.
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Non-registered attorneys can still get experience, however, if they don’t already have it.
Lin at Sanofi says patent litigators without PTAB experience could partner with those who have already worked at the board.
“It’s usually not the case that just one person handles a PTAB matter,” she says.
Wendy Verlander, CEO of non-practising entity (NPE) Blackbird Technologies and managing partner of Verlander LLP in Boston, agrees, noting that she’s always open to hiring people who are smart and capable.
“I wouldn’t put someone in a lead counsel role without experience, but if you’re a smart lawyer and good at understanding technology, you could do this, just like every other thing that lawyers learn on the job,” she says.
Some non-registered attorneys might already have a decent amount of experience at the PTAB.
Verlander says she suspects there are a lot of lawyers who work on PTAB matters and help out with the briefs or see the trials even if they aren’t listed as lead or backup counsel.
For the full article, continue reading at Managing IP.