Purpose of a PTAB hearing

  • For PTAB hearings, all evidence and argument is already in the record
  • New evidence is not permitted
  • New argument is not permitted
  • The panel will have reviewed the case and may have preliminary conclusions
  • Questions will focus on issues critical to their decision
  • As a result, oral argument usually is like a Q & A
  • The hearing is an opportunity to persuade the panel that the existing record supports your position


PTAB judges

  • PTAB judges sit in 3-judge panels
  • PTAB judges
  • have legal and scientific training
  • come into the hearing with:
  • knowledge of the technology, background, and prior art
  • knowledge of the evidence and arguments of record
  • unresolved questions regarding dispositive issues
  • some preliminary conclusions on the merits


Use your time at PTAB effectively

  • Appeals arguments are typically 20 minutes
  • You may not exceed time unless authorized
  • Be organized and concise
  • Address weaknesses


Answering questions at PTAB

Three steps:

  1. Be sure you understand the question
  2. Consider its importance to your case
  3. Answer and address the opposing view
  • Do not evade
  • Answer, or
  • Ask to return to the question after you have considered it more, or
  • If not relevant, explain why (but be prepared to answer anyway)