1209 Oral Hearing [R-01.2024]

For additional information on oral hearings, appellants may consult the Board’s Oral Hearing Guide, available at www.uspto.gov/patents/ptab/hearings.

37 CFR 41.47(b) provides that an appellant who desires an oral hearing before the Board must request the hearing by filing, in a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request therefor, accompanied by the appropriate fee set forth in 37 CFR 41.20(b)(3), within 2 months after the date of the examiner’s answer or the date of filing of a reply brief, whichever is earlier. This time period ensures that any request for oral hearing is received not later than when jurisdiction over the proceeding passes to the Board (37 CFR 41.35(a)). Form PTO/SB/32 may be used to request an oral hearing. This time period may only be extended by filing a request under either 37 CFR 1.136(b) or, if the appeal involves an ex parte reexamination proceeding, under 37 CFR 1.550(c).

If the request for an oral hearing is non-compliant, the Board will issue an Order for a Non-Compliant Request for Oral Hearing. In response to the Order, 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. The petition is due within 14 days from the Order. See 37 CFR 41.3(e). The Chief Judge or their designee will decide the petition. If the petition is denied, a refund of the filing fee for 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 Board as appeals decided after an oral hearing. See 37 CFR 41.47(a) and 41.73(c). A request for an oral hearing neither accelerates nor delays a decision for that appeal.

A notice of hearing, stating the date, the time, location of the hearing, appearance options and the docket, is forwarded to the appellant in due course. If appellant fails to confirm the hearing within the time required in the notice of hearing or the appellant waives the hearing, the appeal will be removed from the hearing docket and assigned on brief in due course. No refund of the fee for requesting an oral hearing will be made. Similarly, after confirmation, if no appearance is made at the scheduled hearing, the appeal will be decided on brief. Since failure to notify the Board of waiver of hearing in advance of the assigned date results in a waste of the Board’s resources, appellant should inform the Board of a change in plans at the earliest possible opportunity. If the Director or the Board determines that a hearing is not necessary (e.g., a Director-ordered remand to the examiner is necessary or it is clear that the rejection(s) cannot be sustained), appellant will be notified.

If appellant has any special request, such as for a particular date, day of the week, or afternoon vs. morning hearing session, this will be taken into consideration in setting the hearing, if made known to the Board in advance, as long as such request does not unduly delay a decision in the case and does not place an undue administrative burden on the Board.

If the time set in the notice of hearing conflicts with prior commitments or if subsequent events make appearance impossible, the hearing may be rescheduled on written request, in a separate paper addressed to the Clerk of the Board. However, in view of the administrative burden involved in rescheduling hearings and the potential delay which may result in the issuance of any patent based on the application on appeal, postponements are discouraged and will not be granted in the absence of convincing reasons in support of the requested change.

Normally, 20 minutes are allowed for appellant to explain their position. If appellant believes that additional time will be necessary, the appellant should file a request in a separate paper addressed to the Clerk of the Board well in advance of the hearing. The request for such time will be taken into consideration in assigning the hearing date. The final decision on whether additional time is to be granted rests within the discretion of the senior member of the panel hearing the case.

At the oral hearing, appellant may only rely on evidence that has been previously entered and considered by the primary examiner and present arguments that have been relied upon in the brief or reply brief. Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.

Demonstrative exhibits are neither required nor expected, but appellant may use them to assist in the presentation of their case. If appellant has any PowerPoint® slides or other demonstratives, they must be submitted for inclusion into the record at least ten (10) days before the hearing date by submitting them through the USPTO Patent Center available at www.uspto.gov/PatentCenter. If provided to the Board, demonstrative exhibits must not include any information not previously made of record in the proceeding, and the Board will refuse to allow the use of demonstrative exhibits that do not comply with this requirement. See, e.g., 37 CFR 41.47(e)(1), 2. For PowerPoint® or other computer-based presentation, the party must provide their own laptop. In addition, a party must clearly mark all demonstratives with the words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.

The Board's current procedure permits members of the public to attend oral hearings in appeals of reexamination proceedings, reissues, and published applications. Members of the public are not permitted to attend appeals of non-published applications. More information is available at www.uspto.gov/patents/ptab/hearings.. All parties, including USPTO employees, attending oral hearings should be particularly mindful of the hearing room decorum and guidelines as listed in the Board's Oral Hearing Guide. Appropriate attire is clothing that would be worn for an important business meeting.

37 CFR 41.47(f) provides that notwithstanding the submission of a request for oral hearing, if the Board decides that a hearing is not necessary, the Board will so notify appellant. Examples as to when it would be appropriate for the Board to decide that an oral hearing is not necessary include those where the Board has become convinced, prior to hearing, that the examiner’s position cannot be sustained or where the Director determines that the proceeding must be remanded to the examiner under 37 CFR 41.35(c).

PARTICIPATION BY EXAMINER

If the appellant has requested an oral hearing and the primary examiner wishes to appear and present an oral argument before the Board, a request to present oral argument must be set forth in a separate letter on a form PTOL-90 using form paragraph 12.279.03.

In those appeals in which an oral hearing has been confirmed by the appellant and the primary examiner has indicated a desire to participate in the oral argument, oral argument will generally only be held if the appellant actually appears for oral argument. If the appellant fails to make an appearance for oral argument, the hearing typically will be waived, and the primary examiner will not be given an opportunity to participate unless the panel hearing the case deems that a presentation by the primary examiner would be useful.

After the oral hearing has been confirmed and the date set as provided in 37 CFR 41.47(d), the primary examiner and the examiner’s supervisor should be notified of the date and time of the hearing. In those cases where the Board requests the presentation of an oral argument by or on behalf of the primary examiner, the Board’s request may, where appropriate, indicate specific points or questions to which the argument should be particularly directed.

On the day of the hearing, examiners associated with the appeal should notify the usher at the Board that they are associated with the appeal and that they are attending the hearing. In addition, the primary examiner associated with the appeal should indicate whether they plan to participate in the oral hearing. At the hearing, after the appellant has made their presentation, the examiner will be allowed 15 minutes to reply as well as to present a statement which clearly sets forth their position with respect to the issues and rejections of record. Generally, the primary examiner may rely on only argument and evidence relied upon in the examiner’s answer. The primary examiner may, however, rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court. Appellant may utilize any allotted time not used in the initial presentation for rebuttal.

[top]