The Patent Trial and Appeal Board (Board) has published an updated Oral Hearing Guide to reflect current practice before the Board. The changes include:
- Remote option for participating in America Invents Act (AIA) trials
- Viewing remote a Board hearing, either in person or remotely
- Clarification for using demonstratives in ex parte appeals hearings
- Clarification on requesting pro hac vice admission
1. Remote Participation in Board Hearings for AIA Trials
AIA trial participants can request remote oral arguments. Specifically, when requesting an oral hearing, the party should indicate 1) its preference for an in-person or remote hearing and 2) if in person, the preferred location. If the parties cannot agree on an in-person or remote hearing, the Board will notify the parties of their decision.
2. Remote Participation in Board Hearings for Ex Parte and Reexamination Proceedings
Ex parte or reexamination applicants may request 1) an in-person hearing at the designated location; 2) an in-person hearing at any United States Patent Office location; 3) a videoconference hearing; or 4) a telephone hearing. If a party requests an in-person hearing at the designated Board location, at least one of the Administrative Patent Judges (APJ) will appear in person. If a party requests an alternative Patent Office location, the Board must approve the alternative location if approved—there is no guarantee that any APJs will appear in-person.
3. Public Requests to View PTAB Hearings
The revised Oral Hearing Guide allows two ways for the public to observe a hearing: in-person or remote. The public can view a hearing at the designated hearing location or at an alternative Patent Office location.
Additionally, the public can request to remotely view any public hearing. The request for remote viewing must be made at least five (5) days before the hearing via e-mail (PTABHearings@uspto.gov).
4. Submitting Demonstratives for Ex Parte and Reexamination Proceedings
A participating party can submit ex parte or reexamination demonstratives through the Patent Center, instead of facsimile as formerly required. Demonstratives must be filed ten (10) days before a hearing date.
5. Pro Hac Vice Admission for Reexaminations and Ex Parte Proceedings
The Board may permit a person other than a registered patent practitioner to appear as counsel in a particular proceeding. A registered practitioner may request pro hac vice admission of a non-registered counsel to accompany the registered practitioner and appear in hearings.
For ex parte appeals, the pro hac vice request must be filed as a petition, as opposed to a motion in an AIA trial. Pro hac vice petitions for reexaminations and ex parte appeals must be filed as a separate filing, instead of facsimile, in accordance with 37 C.F.R. §§1.6 and 41.3, and preferably provide a courtesy copy to the Board’s hearing clerk via e-mail (PTABHearings@uspto.gov).
Practice Tips
The updated Oral Hearing Guide provides clarity for practice before the Board for the procedures in requesting an in person or remote Oral Hearing. Applicants/representatives are cautioned to follow procedures to ensure Oral Hearing requests and demonstrative filings will be processed by the Board correctly to ensure the best possible outcome at the Board.
Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.