United States: PTAB Publishes Revised Oral Hearing Guide

The Patent Trial and Appeal Board ("PTAB") recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings. The revised Guide includes changes to: 1. Remote participation in PTAB Proceedings; 2. Public requests to view PTAB Hearings; 3. Submitting demonstratives for ex parte and reexamination proceedings; and 4. Pro hac vice admission for reexaminations and ex parte proceedings. Broadly, the PTAB prepared the Oral Hearing Guide to "to aid appellants, petitioners, patent owners, and other interested parties with the administrative processes and procedures in place to facilitate oral hearings before the Board." See Oral Hearing Guide (August 2023) at 4. Below is a summary of the substantive changes made:

1. Remote Participation in PTAB Hearings for A.I.A. Trials

The PTAB now expressly allows for the participating parties to request remote oral arguments. Specifically, in a participating party's request for Oral Argument, the participating party should state 1) its preference for an in-person or video hearing and 2) if in-person, the preferred location. If the participating parties disagree on an in-person or video hearing, the parties should meet and confer. And, if the participating parties are at an impasse after such meet and confer, the PTAB will "notify the parties of their decision, in accordance with current office policy." See Oral Hearing Guide at 10.

2. Remote Participation in PTAB Hearings for Ex Parte and Reexamination Proceedings

Under the revised Oral Hearing Guide, a participating party in an ex parte or reexamination proceeding may choose to appear: 1) in-person at the designated hearing location; 2) in-person at any United States Patent and Trademark Office ("U.S.P.T.O.") location; 3) via videoconference; or 4) telephonically. If a participating party elects in-person at the designated PTAB hearing location, at least one of the Administrative Patent Judges ("APJ") will appear in person, while the remaining APJs may participate remotely. Id. at 7. If a participating party elects an alternative U.S.P.T.O. location, the PTAB must approve the alternative U.S.P.T.O. location and the use of such alternative U.S.P.T.O. location removes the guarantee that an APJ will appear in-person. Id.

If a participating party elects to appear by videoconference or telephonically, the PTAB will "issue an order providing instructions on how to connect to the hearing after receipt of a hearing request." Id.

3. Public Requests to View PTAB Hearings

The revised Oral Hearing Guide provides two avenues for the public to view a PTAB hearing: 1) In-person or 2) Remotely by video. Consistent with previous guidance, the public may view a PTAB hearing at the designated PTAB hearing location or at an alternative U.S.P.T.O. location (subject to room availability and advance coordination). See Oral Hearings Guide (August 2023) at 16.

Additionally, the public may request to remotely view any public hearing, and the PTAB generally grants such request if resources are available. See Oral Hearings Guide (August 2023) at 16. The request for remote viewing must be made at least five (5) days before the PTAB hearing via e-mail (PTABHearings@uspto.gov). Id.

4. Submitting Demonstratives for Ex Parte and Reexamination Proceedings

A participating party can submit ex parte or reexamination demonstratives through the U.S.P.T.O. Patent Center, instead of fax as previously required. Id. at 9. Demonstratives must be submitted ten (10) days before a hearing date. Id.

5. Pro Hac Vice Admission for Reexaminations and Ex Parte Proceedings

Upon request, the PTAB may authorize a person other than a registered patent practitioner to appear as counsel in a specific proceeding. See 37 CFR § 41.5(a) (addressing reexaminations and ex parte appeals); 37 C.F.R. § 42.10(c) (addressing trial practice and procedure for AIA trial proceedings). See Oral Hearings Guide (August 2023) at 11. A registered practitioner may request pro hac vice admission of a non-registered counsel in order for them to accompany the registered practitioner and present arguments. Id.

For ex parte appeals, the pro hac vice request must be filed in the form a petition as opposed to a motion as in an A.I.A. trial. Id. at 12. Under the revised Oral Hearing, pro hac vice petitions for reexaminations and ex parte appeals must be filed as a separate filing in accordance with 37 C.F.R. §§1.6 and 41.3, and preferably the petitioning party will provide a courtesy copy to the PTAB's hearing clerk via e-mail (PTABHearings@uspto.gov). Id. at 12. Previously, the pro hac vice petitions for reexaminations and ex parte appeals were submitted via fax. See, e.g., Oral Hearing Guide (August 2019) at 15.

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