You’re an experienced trial attorney, having represented clients in a number of patent cases in Federal Court throughout the country. Granted, you are not a registered patent attorney, but you can and have litigated circles around the “patent geeks”; in fact, you immediately point this fact out to a prospective client.

Until the AIA came into play, general litigators were in “tall cotton”. To a certain extent, they may still be, EXCEPT when a Federal case becomes diverted to the PTAB by way of an inter partes proceeding; an occurrence, by the way, which is becoming increasingly popular and frequent. Under 37 CFR 42.10(c) the lead attorney in the Federal action, as described above, can no longer serve in that role before the Board. Rather the lead counsel needs to be a “registered practitioner”, thereby relegating the previous lead litigator to “back-up” status.

So, here is the dynamic. A non-registered, senior litigator, as described above, must partner with a registered practitioner, even if that practitioner is a junior partner, associate, or patent agent. In the eyes of the USPTO, that senior litigator is at best, “back-up counsel,” which totally reverses the duty to supervise mandate as discussed in one of my earlier articles.