Ex parte and reexamination appeals
Once the calendar is finalized, the PTAB will send a Notice of Hearing to all involved in ex parte and reexamination appeals. The Notice of Hearing will indicate on the first page the date, time, hearing room, and location of the hearing.
Upon receiving the Notice of Hearing, the appellant will be required to respond, either confirming or waiving attendance at the hearing on the specified date and time. In inter partes reexaminations, copies of all communications to the USPTO must be served on opposing counsel. See 37 CFR § 1.903. This requirement applies to hearing-related correspondences such as, but not limited to:
- a confirmation or waiver of hearing attendance,
- a request for video or telephonic participation,
- a request for an easel or projector,
- a request for a hearing postponement,
- a request for pro hac vice admission, and
- a request for additional argument time.
The PTAB issues Notices of Hearing for heard appeals that have docketing notice dates that are approximately the same as the docketing notice dates of the PTAB’s oldest “on brief” appeals in the same technology. That way, an appellant’s decision to request an oral hearing neither accelerates nor delays a decision being rendered for that appeal.
Appellants have three ways to present a hearing before the PTAB. A hearing may be an oral argument in person, a telephonic conference, or a video appearance. The following clarifies each type of hearing:
- In-person hearing – An appellant appears before a panel of three (or more) judges at a designated PTAB hearing location. However, please be aware that up to two of the judges on a panel may participate remotely.
- Telephonic hearing – An appellant participates in the oral hearing via a telephonic connection. Currently, as a precautionary measure to protect the confidentiality of information, telephonic hearings are reserved for APJs and counsel. Upon receipt of a telephonic hearing request, the PTAB will issue an order specifying the phone number and time of the telephonic hearing. All expenses for the call will be borne by the appellant that requests the call.
- Video hearing – An appellant participates in the oral hearing via an audio-visual connection. An appellant that requests a video hearing will incur any associated costs with the arrangements of the video hearing. Upon receipt of the video hearing request, the PTAB will issue an order instructing the appellant to contact the PTAB to schedule a test of their equipment and connection. If the test is unsuccessful, the appellant will receive dial-in instructions to have a telephonic hearing instead of a video hearing, at that time. The PTAB also allows appellants the opportunity to request a video hearing from any available regional office location. However, due to the availability of resources, it may not be possible to grant the request in all instances.
- Remote viewing – The USPTO’s regional office locations in (1) Detroit, Michigan; (2) Dallas, Texas; (3) Denver, Colorado; and (4) San Jose, California are generally available for any member of the public to view a hearing, subject to room availability and advance coordination with the PTAB. For example, appellant’s in house counsel located in Palo Alto, California may wish to view the hearing from the USPTO’s regional office in San Jose, California as opposed to traveling to a hearing scheduled to occur at the USPTO’s headquarters in Alexandria, Virginia for time efficiency and economic considerations. To request remote viewing, appellant must inform the PTAB as to the USPTO’s regional office location and the number planning to view the hearing from the remote location. The PTAB will notify appellant if the request for remote viewing is granted. However, due to the availability of resources, it may not be possible to grant the request in all instances.
- Waived hearing – When an appellant has decided an oral hearing is no longer necessary, they can waive attendance. This waiver allows the panel to promptly act on the appeal without having to wait for the oral hearing date.
All of the above options are described on the Notice of Hearing. The appellant must choose an option in response to the Notice of Hearing.
For all options, the PTAB will provide a court reporter at the designated PTAB hearing location and will enter the transcript into the record.
AIA trials
In an AIA trial, the parties will be notified of the date and location of the oral argument in a Scheduling Order. The panel may also hold a conference with the parties after the Scheduling Order has been issued should it be necessary to consider a change to the previously scheduled date or location of the oral argument. Any changes to the oral argument date and location after the issuance of the initial Scheduling Order will be reflected in a separate order from the panel.
Oral argument – If an oral argument is requested, the parties will be notified of the finalized hearing date, time, and location by a Trial Hearing Order issued by the PTAB. The panel will ensure scheduling of oral arguments including subsequent changes are communicated to the hearing operations staff. Once a Trial Hearing Order has been issued, parties should address any requests for audio-visual equipment, via email, directly to Trials@uspto.gov within the designated period. Questions regarding specific audio-visual equipment should be directed to the PTAB at 571-272-9797.
Remote viewing – The USPTO’s regional office locations in (1) Detroit, Michigan; (2) Dallas, Texas; (3) Denver, Colorado; and (4) San Jose, California are generally available for any member of the public to view a hearing, subject to room availability and advance coordination with the PTAB. For example, a party’s in-house counsel located in Palo Alto, California may wish to view the hearing from the USPTO’s regional office in San Jose, California as opposed to traveling to a hearing scheduled to occur at the USPTO’s headquarters in Alexandria, Virginia for time efficiency and economic considerations. To request remote viewing, the party must submit a request to the PTAB via email to Trials@uspto.gov as to the USPTO’s regional office location and the number planning to view the hearing from the remote location. The PTAB will notify the party if the request for remote viewing is granted. However, due to the availability of resources, it may not be possible to grant the request in all instances.
