Ex parte appeals (or “appeals”) provide a rare opportunity for applicants to involve new decision-makers to independently assess the quality of pending rejections. However, a substantial disadvantage of appeals is that they introduce a sizable prosecution delay. The average delay between a time at which an appeal is received at the Patent and Trademark Appeal Board (PTAB) and issuance of a Decision is 26 months. One strategy to address these legitimate issues is to request an Oral Hearing. Any request for an Oral Hearing must be filed within two months from the date of the Examiner’s Answer to the Appeal Brief or on the date of filing a Reply Brief, whichever is earlier. 37 CFR 41.47(b). The request must be accompanied by a government fee, which is currently set to $1,300 for large entities. 37 CFR 41.20(b)(3). The PTAB will inform the appellant of a date for the Oral Hearing (unless the PTAB determines that a Hearing is not necessary, in which case, the appellant will be so informed).
Ex Parte Appeal Oral Hearings are Rarely Conducted
To investigate the use and effect of the Hearings, we submitted a Freedom of Information Action (FOIA) request to the USPTO that requested data identifying appeals for which PTAB decision had been rendered since January 1, 2006. We further requested an indication as to whether an Oral Hearing had been conducted. This data set shows that Oral Hearings are rarely conducted. Across the 72,443 appeals, only 459 (0.63%) appeals had an Oral Hearing.
Oral decisions shortly after decision
The timing of when a Hearing is conducted may affect its usefulness. If Hearings were conducted shortly after an Examiner’s Answer was issued, Judges may forget about the issues raised when crafting a decision years later. The applicable regulation indicates that the PTAB will set a date for the Oral Hearing, but it does not specify when– within the multi-year appeal pendency – an Oral Hearing is to occur. While 37 CFR 41.47(d) indicates that a compliant request for an oral hearing will be assigned a hearing date, the MPEP does not indicate a timeframe for that for the hearing. Therefore, in our FOIA request, we further requested, for each Appeal, identification of the date of Appeal Brief filing, the date of Oral Hearing (if applicable), and the date of Decision issuance.
Oral Hearings Provide an Opportunity to Address Recent Court and PTAB Decisions
At an Oral Hearing, an Appellant is “ordinarily” provided twenty minutes to present arguments. The examiner is also allowed to participate in an Oral Hearing, though anecdotal accounts indicate that examiners frequently decline this opportunity. These arguments are to correspond with points presented in an Appeal Brief or Reply Brief. However, an exception states that “upon a showing of good cause, appellant, may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.” See 37 CFR 41.47(e) (2).
Oral Hearings are Associated with More Reversals of Rejections
Finally, to investigate the empirical efficacy of Oral Hearings, we requested identification of the decision type for each appeal in our FOIA request. A decision type could be a full reversal of all rejections (e.g., a full win for the appellant), a full affirmance of all rejections (e.g., a full loss for the appellant), or a partial affirmance.