Update on New USPTO Rules for Practice Before the Patent Trial and Appeal Board

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The U.S. Patent and Trademark Office (USPTO) has implemented three new rules impacting practice before the Patent Trial and Appeal Board (PTAB).

  1. The USPTO has made certain provisions from the motion to amend (MTA) pilot program permanent, including allowing a patent owner to request PTAB guidance on a motion to amend and to file a revised MTA.
  2. Parties can now request review by the director of the USPTO on various decisions related to AIA proceedings. The director also has the authority to initiate a review of such proceedings independent of a party's request.
  3. A new rule permits parties to proceed without backup counsel under specific circumstances and introduces a streamlined procedure for pro hac vice admission based on prior PTAB appearances. Notably, a prior proposal to allow unregistered attorneys to serve as lead counsel was not adopted. These updates aim to enhance efficiency and flexibility within PTAB proceedings.

Stay informed to navigate these changes effectively.

The U.S. Patent and Trademark Office recently issued three new rules governing practice before the Patent Trial and Appeal Board

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Attorney Advertising.

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