1209 Oral Hearing [R-07.2022]
37 CFR 41.47 Oral hearing.
- (a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.
- (b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner’s answer or on the date of filing of a reply brief, whichever is earlier.
- (c) If no request and fee for oral hearing have been timely filed by appellant as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
- (d) If appellant has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered.
- (1) Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant may only rely on Evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and Evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section.
- (2) 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.
- (f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify appellant.
- (g) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
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 written request for an oral hearing is not filed in a separate paper captioned “REQUEST FOR ORAL HEARING,” the request is improper and the appeal will be assigned for consideration and decision on the briefs without an oral hearing. Likewise, if the request is not timely filed or accompanied by the appropriate fee, the request is improper and the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
A notice of hearing, stating the date, the time, 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.
The appellant may also file a request, in a separate paper addressed to the Clerk of the Board, to present their arguments via telephone or an audio-video connection. The appellant making the request will be required to bear the cost of the telephone call or the audio-video connection. Prior to the hearing date, the Board’s IT specialist may contact the appellant making an audio-video request to confirm software compatibility.
The appellant may file a request, in a separate paper addressed to the Clerk of the Board, to use a projector while presenting their arguments (e.g., for a PowerPoint® presentation). The Office may provide a projector for the appellant’s use subject to availability. The appellant making the request is responsible for providing their own laptop or mobile computer.
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.
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-application-process/ patent-trial-and-appeal-board/hearings. All parties, including USPTO employees, attending oral hearings should be particularly mindful of the published Hearing Room Protocol/Decorum. 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.
¶ 12.279.03 Request to Present Oral Arguments
The examiner requests the opportunity to present arguments at the oral hearing.
1. For use if the notice of appeal was filed on or after January 23, 2012.
2. Use this form paragraph only if an oral hearing has been requested by appellant and the primary examiner intends to present an oral argument.
3. This form paragraph must be included as a separate letter on a form PTOL-90.
4. After mailing to the applicant, the examiner must email a copy of the PTOL-90 to PTABHearings@uspto.gov.
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.