The PTAB is responsible for conducting trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings; hearing appeals from adverse examiner decisions in patent applications and reexamination proceedings; and rendering decisions in interferences. In accordance with 35 U.S.C. § 6(c), panels of administrative patent judges (APJs) are responsible for adjudicating these cases. Each case shall be heard by at least three members of the PTAB, who shall be designated by the chief judge under authority delegated by the director.
Ex parte and reexamination appeals
When the PTAB receives an appeal, the intake database system assigns an appeal number that is directly associated with the application number. The appeal number can be used internally to track the appeal from start to finish. Generally, ex parte proceedings are decided on a first-in/first-out basis.
In accordance with 37 CFR § 41.47(b) (ex parte and reexamination appeals) and 37 CFR § 41.73(b) (inter partes appeals), a Request for Oral Hearing must be filed as a separate paper (not within the Notice of Appeal or any other paper). The required fee, as set forth in 37 CFR § 41.20(b)(3), must be paid within the appropriate time period as set forth in 37 CFR § 41.47(a) (ex parte appeals) or 37 CFR § 41.73(a) (inter partes reexamination appeals). The time for requesting an oral hearing cannot be extended.
If appellant receives an Order for a Non-Compliant Request for Oral Hearing, the appellant will need to file a petition under 37 CFR § 41.3 and the requisite fee under 37 CFR § 41.20(a) requesting that the hearing request be accepted. Such petition is due within 14 days from the Order. See 37 CFR § 41.3(e). The chief administrative patent judge or his/her designee will decide the petition. If the petition is denied, a refund of the fee for filing a request for oral hearing will not be granted.
If the request and fee are not filed as set forth above, the case will be assigned for consideration and the decision will be based on the briefs without an oral hearing. Appeals decided on the briefs are given the same consideration by the PTAB as appeals decided after an oral hearing. See 37 CFR § 41.47(a), § 1.73(c).
For AIA trials, a party may request oral argument on an issue raised in a paper, at a time set by the PTAB. The request must be filed as a separate paper and must specify the issues to be argued. See 37 CFR § 42.70(a). The judge(s) handling the matter will notify the parties of the hearing date and time by order issued by the PTAB.