Joint project of ACUS and Stanford Law School

USDCPATE0021 - Hearing Level - Procedures

Open All Tabs | Close All Tabs

Other Fields

Agency Scheme:

USDCPATE0021

ADJUDICATION STRUCTURE

Hearing Level: Basic Structure

Name of Hearing Office (local name):

Patent Trial and Appeal Board

Name of Hearing Office (global name):

Department of Commerce: Patent Trial and Appeal Board

Sub-Agency/Bureau/Division::

US Patent and Trademark Office

Hearing Officer #1 (Title):

Administrative Patent Judge

Are administrative appeals permitted from final decisions at the hearing-level stage?:

No

Comments/Notes on Adjudication Structure:

Ex Parte Appeals:
After a patent examiner twice rejects at least one claim in a patent application (or ex parte reexamination), a patent applicant (or patent owner) can take an ex parte appeal to the Board. At the Board, a panel of 3 hearing officers ("administrative patent judges") decided whether to affirm, affirm-in-part, or reverse the examiner's rejections.

AIA trials (types IPR, CBM, PGR, DER):
After the USPTO grants a patent, a petitioner may challenge the patentability of any claims in the patent by filing a petition. If the petition is granted, a trial is instituted. Once the trial commences, it must be decided within 1 year from institution.

PROCESS & PROCEDURE - General Information

Are private parties permitted to have representation at hearings?:

Yes (All Types of Cases)

Who may serve as a private party representative?:

Either

Regulations/rules of practice for hearings (please include CFR citations):

37 CFR 41.47, 37 CFR 42.70

Other published guidance for hearings (if any):

http://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/hearings

PROCESS & PROCEDURE - Pre-Hearing Procedure

Is discovery permitted by either party at the hearing-level stage?:

Yes (Some Types of Cases)

Briefly describe the scope and type(s) of discovery available (e.g., depositions, interrogatories, etc.):

For AIA trials see, 37 CFR 42.51, 42.224 For ex parte appeals, discovery is not permitted.

Does the hearing officer have subpoena authority?:

Yes (Some Types of Cases)

Are ex parte contacts prohibited?:

Yes (Some Types of Cases)

Are parties provided notice of hearing?:

Yes (All Types of Cases)

PROCESS & PROCEDURE - Hearing Procedure

What types of hearings are permitted at the hearing-level stage?:

Written (Document-Only) Hearing

In-Person

Video

Phone

How is the type of hearing selected:

By Agency

By Private Party

How many hearing officers preside at each hearing?:

Three

Is witness testimony permitted at hearings?:

Adjudication Officer Discretion

If "Varies by Case," please describe:

Live Testimony at AIA trials (IPR, PGR, DER, CBM): The Board does not envision that live testimony is necessary at oral argument. However, parties may file a motion for live testimony in appropriate situations (Trial Practice Guide p.48768). Cross-examination may be ordered to take place in the presence of an administrative patent judge, which may occur at the deposition or oral argument. (Trial Practice Guide p.48762 http://www.uspto.gov/sites/default/files/ip/boards/bpai/trial_practice_guide_74_fr_48756_081412.pdf) Taking of testimony is not permitted in ex parte appeals. This question is not applicable to document-only hearings.

Can parties cross-examine witnesses?:

Yes

If "Varies by Case," please describe:

Witness cross-examination is allowed for in-person, phone, or video hearings. This question is not applicable to document-only hearings.

Can third-parties submit amicus briefs and/or evidence?:

No

Are hearings recorded and/or transcribed?:

Yes

N/A (Document-Only Hearings)

Are hearings open to the public?:

Varies by Case

If "Varies by Case," please describe:

Hearings are presumed open, but may be closed under certain conditions. For patent applications held in confidence under 35 USC 122, hearings are closed to the public. This question is not applicable to document-only hearings.

PROCESS & PROCEDURE - Post-Hearing Procedure

Who typically drafts the decision at the hearing-level stage?:

Adjudication Officer

Who has authority to issue final decisions?:

Adjudication Officer

Do agency regulations or guidance provide time limits for issuance of final decisions?:

Yes (Some Types of Cases)

If "Yes," please specify these time limit(s):

AIA trials are subject to a 1-year statutory deadline. Limited exclusions apply. Reexamination ex parte appeals are handled with special dispatch.

Is judicial review available after issuance of a final decision?:

Yes (All Types of Cases)

PROCESS & PROCEDURE - Case Management

How are claims/cases processed at the hearing-level stage?:

First-In/First-Out Basis

Does the agency permit web-based electronic filing of hearing-related briefs or other documents?:

Yes

Are final decisions published and/or posted on the agency website?:

Yes (Some Decisions)

If "Yes (Some Decisions)," how does the agency determine which final decisions to publish/post? Please briefly describe:

All final agency decisions issued by the PTAB are publicly posted with the exception of those for patent applications held in confidence under 35 USC 122.

Do agency regulations/rules of practice specify the contents of the administrative record at the hearing-level stage?:

Yes (All Types of Cases)

If "Yes," please provide citation(s):

37 CFR Part 41, Subparts A-B for ex parte appeals 37 CFR Part 42, Subparts A-E for AIA trials (IPR, PGR, DER, CBM)

Do agency regulations/rules of practice provide for closure of the record at the hearing-level stage (subject to applicable exce:

Yes (Some Types of Cases)

If "Yes," please provide citation(s):

Sealing of documents is not available for ex parte appeals. For AIA trials see 37 CFR 42.14, 42.54, 42.55, 42.56

PROCESS & PROCEDURE - Comments

Comments/Notes on Hearing-Level Process & Procedures (Optional):

For contested case hearings where witness testimony is allowed, the parties are not examined in a traditional manner in a trial like proceeding. Instead, the parties can examine witnesses by deposition, where cross-examination is allowed. All evidence, including affidavits, depositions, documents, and other items are submitted as exhibits to be examined by the Patent Judges. See 37 CFR 41.154. Oral arguments before the Board are allowed at the Agency's discretion, but these arguments are appellate in nature, though they can involve demonstratives. See 37 CFR 41.124.

ADJUDICATORS

Total # of Hearing Officers:

236

Information About Officer:

Adjudication Officer Title	Job Series	Pay Plan	Pay Range	Are persons in this position subject to performance evaluation?	Are persons in this position employed full-time as adjudication officers?	Are persons in this position subject to quality control measures or production goals?	If "Yes," briefly describe:
Administrative Patent Judge	1200-Copright/Patent Group	AD	1222-00	Yes	Yes	Yes	Administrative patent judges must meet productivity goals as part of the overall performance requirements of the position. Quality measures are also in place.

ADR: General Information

Is ADR available at one or more points during the hearing process?:

Yes

If "Yes," when is ADR available?:

Before Claim/Case Filed

Pre-Hearing

Post-Hearing

Is ADR a mandatory or voluntary process?:

Voluntary

If "Varies by Case," please describe::

Under the Smith-Leahy American Invents Act, arbitration is available only in derivation proceedings.

What type(s) of ADR are available?:

Arbitration

Who conducts the ADR?:

Third-Party Neutral

Regulations/rules of practice governing ADR process (please include CFR citations):

31 CFR 42.410

Comments/Notes on ADR Process (Optional):

For derivation proceedings, the parties may arbitrate issues in the proceeding, but nothing precludes the USPTO from determining the patentability of the claimed inventions involved in the proceeding.

ADR – Summary Statistics

For Fiscal Year 2013, please provide the following annual ADR statistics:

Comments/Notes on ADR Statistics (Optional):

None.

CASELOAD STATISTICS - Supplementary Statistics

Does your agency maintain annual caseload statistics for this hearing office by case type (e.g., discrimination complaint, licen:

No

Supplementary Caseload Statistics by Case Type:

Case Type
Patent

Verified by Agency:

Verified

Search form

You are here

Reports

User login

USDCPATE0021 - Hearing Level - Procedures