A 5-point strategy for arguments to protect your invention

Some of the best advice for a lawyer when presenting a case during oral arguments is to keep it simple: Make it easy for the judges to decide in your favor.

Judges at the USPTO’s Patent Trial and Appeal Board (PTAB) sit in three-judge panels and decide every case based on the applicable law and specific facts in the record. They need to explain their reasoning in a written decision, stating why the prevailing party won the case.

Help judges decide in your favor by giving them all the information they need to fully support and prepare their written decision. A hearing is your opportunity to address crucial issues and effectively explain your position to the PTAB judges on the panel.

By following these tips for making effective arguments before the PTAB, you will set yourself up for the greatest chance of winning your case.

Know your audience. PTAB judges are experienced patent lawyers with a minimum of a Bachelor’s degree in science or engineering. They know the law, understand the technology, and are prepared.

In addition, the panel knows the arguments from reading the briefs submitted. Rather than spending time on a long summary of the invention to start your hearing, focus immediately on your arguments, including the specific reasons your client should prevail.

Use a roadmap. You should begin your oral argument with a roadmap that outlines the dispositive issues and highlights the strongest arguments you will address. A roadmap helps orientate the panel and structure how you will use your oral argument time.

Focus on facts. Focus on applying the law to the facts in the record during your oral argument, rather than reiterating legal standards or addressing the procedural history.

Nearly all patentability issues are resolved based on the facts of your case; very few require an extension or new interpretation of the law. You are limited to the facts in the record, however, and the judges will not entertain arguments or evidence presented for the first time during the hearing.

Use demonstratives. Consider using demonstratives, which often are slide presentations, to help in making your oral argument. These are useful tools to highlight the evidence and clarify misunderstandings. Be careful to not make demonstratives too elaborate, which may impede more than help during a hearing. 

Answer judges’ questions. You should anticipate questions from the panel. The hearing is an opportunity for the judges to clarify issues they find crucial to their decision.

Accordingly, you should be familiar with the entire record and address questions raised by the panel directly. After answering a question directly, explain why an issue favors, or at least is not harmful to, your client’s position.

For additional information, please see the PTAB Hearings Guide at uspto.gov/sites/default/files/documents/PTAB_hearings_guide_101520.pdf for more detailed information about hearings—including courtroom decorum, use of demonstratives, hearing facilities, and the current hearings schedule.