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:
- Be sure you understand the question
- Consider its importance to your case
- 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)