Patent Board Publishes Updated Guide for Oral Hearings | Manatt, Phelps & Phillips, LLP

Patent Board Publishes Updated Guide for Oral Hearings | Manatt, Phelps & Phillips, LLP

The Patents and Appeals Board (the Board) has published an updated Oral Hearing Guide to reflect current practice before the Board. Changes include:

  • Remote Option to Participate in America Invents Act (AIA) Trials
  • View a Council hearing remotely, in person or remotely
  • Clarification regarding the use of demonstratives in ex parte appeal hearings
  • Details on the application for admission pro hac vice

1. Remote Participation in Council Hearings for AIA Trials

Participants in the AIA trial may request remote oral arguments. Specifically, when requesting an oral hearing, the party must 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 Commission will notify the parties of its decision.

2. Remote participation in Council hearings for ex parte and review procedures

Ex parte or reexamination applicants may request 1) an in-person hearing at the designated location; 2) an in-person hearing at any U.S. Patent Office office; 3) a videoconference hearing; or 4) a telephonic hearing. If a party requests an in-person hearing at the designated Board office, at least one of the Administrative Patent Judges (APJs) will appear in person. If a party requests an alternate Patent Office office, the Board must approve the alternate location if approved—there is no guarantee that the APJs will appear in person.

3. Public Requests to View PTAB Hearings

The Revised Guide to Oral Hearings allows the public to attend a hearing in two ways: in person or remotely. The public may attend a hearing at the designated hearing location or at another Patent Office location.

In addition, the public may request remote viewing of any public hearing. The request for remote viewing must be made at least five (5) days before the hearing by email ([email protected]).

4. Submission of evidence for ex parte and review proceedings

A party may file ex parte or reexamination documents through the Patent Center, instead of by fax as was previously the case. Ex parte documents must be filed ten (10) days before the hearing date.

5. Admission pro hac vice for reviews and ex parte proceedings

The Commission may permit a person other than a licensed patent practitioner to appear as counsel in a given proceeding. A licensed practitioner may request pro hac vice admission of a non-licensed attorney to accompany him or her and appear at hearings.

For ex parte appeals, the pro hac vice request must be filed as a motion, as opposed to a motion in an AIA trial. Pro hac vice motions for ex parte reconsiderations and appeals must be filed as a separate brief, instead of by facsimile, in accordance with 37 CFR §§1.6 and 41.3, and preferably provide a courtesy copy to the Board Hearing Clerk by email ([email protected]).

Practical advice

The updated Oral Hearing Guide clarifies the procedures to follow to request an in-person or remote oral hearing before the Commission. Applicants/representatives are urged to follow the procedures to ensure that oral hearing requests and demonstrative filings are processed properly by the Commission to ensure the best possible outcome before the Commission.