Appellants wishing to present arguments at an oral hearing are expected to make best efforts to attend the hearing on the scheduled date and time. Rescheduling and postponement requests are discouraged due to the potential delays in deciding the appeals, the disruption to the judges' workflow, and the additional administrative burden. Before requesting that a hearing be rescheduled, appellants should first consider whether video or telephonic attendance would be a feasible alternative or whether another practitioner of record could present oral argument. Should an appellant find it absolutely necessary to request the hearing be rescheduled, the following procedure should be followed:
An appellant seeking to have a hearing rescheduled must respond to the Notice of Hearing by
- confirming attendance for the originally scheduled hearing and
- submitting a Rescheduling Request.
Rescheduling Requests that accompany a hearing attendance waiver response may be overlooked and treated as a simple waiver of attendance. The Rescheduling Request may be submitted either simultaneously with the Notice of Hearing attendance confirmation response or subsequent thereto.
The Rescheduling Request should be directed to the Patent Trial and Appeal Board Hearings Clerk and may be submitted by any of the response methods set forth in the Notice of Hearing. For example, the appellant can fax the request to the attention of the Patent Trial and Appeal Board Hearings Clerk at both:
- the USPTO Central Fax number, (571) 273-8300, and
- the PTAB Hearing Fax number, (571) 273-9797.
Due to the unique circumstances that give rise to rescheduling requests, no preprinted forms exist for making such requests. When drafting a rescheduling request, the appellant should set forth all of the reasons for the request with sufficient specificity for the Board to reach a decision on whether to grant the request. The Hearings Clerk will consider the request and recommendations of the assigned panel. An Order will then be issued granting or denying the request based upon at least the following non-dispositive factors:
- How soon the appellant filed the request after receiving the Notice of Hearing.
- The reason for the rescheduling request. For example, prescheduled hearings at a court of higher jurisdiction, a death or serious illness of an immediate family member, and required observance of a religious holiday are reasons more likely to result in the grant of a rescheduling request than is the convenience of counsel, the press of other business, or a daycare problem.
- Why substitute counsel is not available on the scheduled hearing date.
- How much work the panel has spent preparing for the hearing.
- Whether the appellant is requesting the hearing date be accelerated or delayed, and how long of a delay is being requested. This is especially relevant in reexamination appeals, as they are statutorily required to be conducted with special dispatch.
- How flexible the appellant is with alternative dates.
- Whether and how soon alternative hearing dates are available.
- For inter partes reexamination hearings where both parties confirm attendance, whether opposing counsel is agreeable to the postponement.
- NOTE: Second requests for hearing postponement or rescheduling are usually treated as a waiver of the oral hearing
If the rescheduling request is granted, the Board will issue a new Notice of Hearing setting forth the rescheduled hearing's new date, time, and scheduling information. In such cases, the appellant is required to respond to the new Notice of Hearing. The prior submission of the rescheduling request, or inclusion of a calendaring request, does not constitute a confirmation of attendance at the rescheduled hearing.
If a party decides, after submitting a request for oral hearing in an appeal, that it no longer desires an oral hearing, the party should submit a waiver of the oral hearing request. The matter will then be taken off of the Board's oral hearing docket, and scheduled to be decided "on-brief." The party can request that the Board Hearings Clerk waive the appeal's oral hearing in the following manner:
- If the hearing has not yet been scheduled (e.g., in the case of an appeal, the appellant has not yet received a Notice of Hearing), the party can file a REQUEST TO WAIVE ORAL HEARING;
- If the appellant has already received a Notice of Hearing, the appellant can indicate that attendance is being waived by completing the Notice's response section, and submitting the response in any of the manners indicated on the Notice;
- If waiver is desired after the appellant has already responded to the Notice of Hearing by confirming attendance, the appellant can later submit a revised or corrected response to the Notice of Hearing. In such cases, Appellant should also call the Board's Hearings Clerk at 571-272-9797, informing the Hearings Clerk of the Appellant's intent to waive the hearing. This allows the Hearings Clerk to more timely remove the appeal from the oral hearing schedule, and it allows the judges to decide the appeal without having to wait for the assigned hearing date.
With regard to hearings in AIA Trials and Interferences, the party seeking to have the hearing rescheduled must contact the Board to schedule a conference call with the judge(s) handling the matter and opposing counsel to discuss the request.
If a party in a trial decides, after submitting a request for oral hearing, that it no longer desires an oral hearing, the party should contact the Board to arrange a telephone conference with the judge(s) handling the matter and opposing counsel, to discuss the party's request to cancel the oral hearing.