Understanding how to make your best case before the board

When you watch a movie or television show with scenes from inside a courtroom, those scenes often feature a hearing with attorneys making arguments in front of a judge.

Though it might not be the first place you would think of, the USPTO also holds hearings. It houses the Patent Trial and Appeal Board (PTAB), which adjudicates certain patent-related legal proceedings.

As mentioned in previous articles, these legal proceedings include ex parte appeals (in which an appellant seeks review of a prior rejection of claims in a patent application by a USPTO examiner), and America Invents Act (AIA) trials (in which a petitioner asserts that a patent controlled by a patent owner should not have issued in the first place). In both of these proceedings, parties may request a hearing at the PTAB.

Hearings in ex parte appeals and AIA trials share some common features.

  • Parties can request a hearing to be held virtually or in person at any one of the USPTO’s offices (Alexandria, Virginia; Dallas, Texas; Denver, Colorado; Detroit, Michigan; and San Jose, California). There are no current in-person hearings due to COVID.
  • During the hearing, the parties may not present any new evidence or arguments not already present in the record.
  • PTAB hearings are viewable to the public, including both virtually and in person. Ex parte hearings are audio only. The public cannot view portions of AIA trials that involve confidential information.

Yet, ex parte appeals and AIA trials have some unique aspects.

During hearings involving ex parte appeals, the patent applicant—called the “appellant” before the PTAB—may choose whether to have a hearing.

If the appellant decides not to have a hearing, the case is referred to as “on-brief.” The PTAB decides the case entirely on written arguments submitted by the appellant and the examiner (these written briefs are discussed in the previous article on ex parte appeals).

But if the appellant opts to have a hearing, the case is referred to as “heard.” The appellant presents live arguments in front of the three judges assigned to the case. The examiner is normally not present at the hearing.

During the appellant’s presentation, the PTAB judges will likely ask questions and seek clarification on certain issues. The appellant is usually given 20 minutes to complete his or her presentation. Once a hearing is held, the PTAB issues a decision.

Unlike the appellant in ex parte appeals, the parties in AIA trials virtually always request a hearing.

Hearings in AIA trials proceed similarly to those in ex parte appeals, with the parties presenting their arguments and the judges asking questions. But unlike in a hearing in an ex parte appeal, in which the examiner is usually not present, both the petitioner and patent owner typically are present.

During an AIA trial hearing, the parties take turns presenting their arguments: The petitioner goes first, followed by the patent owner. Both parties are typically given 60 minutes total for their presentations.

The petitioner may reserve a portion of his or her time for rebuttal—a chance to address the patent owner’s initial presentation. The patent owner, in turn, may reserve a portion of time for sur-rebuttal—a chance to address the petitioner’s rebuttal. Following a hearing, the PTAB issues a decision.

In either situation, these hearings enable parties to present arguments and evidence in front of at least three judges. The hearings give the judges the opportunity to ask questions of the parties to help them decide the cases.

To learn more about hearings at the PTAB, and for information on how to attend a public PTAB hearing, visit the USPTO hearings webpage at uspto.gov/patents/ptab/hearings. For a broader overview on what the PTAB is and what it does, visit uspto.gov/ptab.