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Representation at the PTAB and Litigation Counsel

By Kevin B. Laurence of Oblon Spivak McClelland Maier & Neustadt LLP and Matthew C. Phillips of Renaissance IP Law Group LLP

In an earlier article, we discussed prosecution bars in protective orders from district court litigation that limit representation of a party in an inter partes review or post-grant review (review proceeding) at the Patent Trial and Appeal Board (PTAB).1 Such prosecution bars ensure that after the patentee’s litigation counsel receives confidential information from the other party through discovery in the litigation then the litigation counsel cannot use that information to prosecute applications in the area related to the litigation. Prosecution bars increasingly address review proceedings due to the opportunity to amend claims in the patent being reviewed. In this article, we examine the composition of teams permitted by the PTAB to act as review counsel.

Review Counsel Includes Lead and Back-up Counsel

Each party in a review proceeding must be represented by an attorney who is designated as lead counsel and by at least one other attorney who is designated as back-up counsel.2 Lead counsel must be a registered patent attorney. Back-up counsel must be able to conduct business at the PTAB on behalf of the lead counsel and if not a patent attorney, the back-up counsel may be admitted pro hac vice.

Pro Hac Vice Admittance Of Back-up Counsel

PTAB Applie...

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