Recently, some Applicants have been declining oral hearings during ex parte appeals to the Patent Trial and Appeal Board (PTAB). Modal PLLC believes oral hearings remain important for addressing a judge’s concern during an appeal. Why?
First, written briefs cannot communicate tone. In one application, the claims on appeal had been instructed by a Japanese Applicant. Although the claim language was reasonable, the claims were not written as an English-native drafter would have written them. Thus, the Examiner raised an indefiniteness rejection that was appealed.
During the oral hearing, one of the judges questioned the language. By simply reading the claim words—with the appropriate tone—Appellant’s representative (Brian Epstein) obtained a reversal of the indefiniteness rejection. Even if a more comprehensive brief could have been drafted, the additional written explanation in that brief necessarily would have created more estoppel.
An additional reason to conduct an oral hearing is that the PTAB does not consider uncontested matters de novo, as we have discussed. Thus, the PTAB’s written decision primarily focuses on the Examiner’s rejection, not necessarily the thoughts of the members of the PTAB panel.
However, the members of the PTAB panel often express their thoughts during oral hearings. Thus, an oral hearing provides the Appellant an opportunity to directly address the thoughts of the judges.
These thoughts might guide the panel’s decision, but the written decision might not include these thoughts. For example, maybe Judge A holds a particular view, but Judge B writes the decision.
Finally, an oral hearing provides an opportunity to discuss patent practice with a decision-maker in the Appellant’s case. Even if the oral hearing has little value in one application, the information received from the decision-maker might lead to a successful appeal (or, even better, a patent) in a different application.
Incidentally, although the PTAB currently is not granting in-person hearings in view of the Covid-19 situation, video and telephone hearings are available.
If you are wondering whether an oral hearing can assist in your application, please contact us.