The United States Patent and Trademark Office’s new post-grant proceedings, including Inter Partes Review, are akin to litigation proceedings in several respects. As a result, the PTO Rules provide for the pro hac vice admission of litigation lawyers not licensed to practice before the Patent Office. However, practitioners should be aware that the grant of admission is not automatic and the application represents more than a mere formality.
Pursuant to 37 C.F.R. 42.10(c):
(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. For example, where the lead counsel is a registered practitioner, a motion to appear pro hac vice by counsel who is not a registered practitioner may be granted upon a showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.