MPEP § 1209 — MPEP § 1209
Current through: 2022-07-01

1209-Oral Hearing 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1209 
 

 
 
 
 
 
 1209 Oral Hearing [R-01.2024]

 
 37 CFR 41.47 Oral hearing. 

 
 (a) An oral hearing should be requested only in those
 circumstances in which appellant considers such a hearing necessary or desirable
 for a proper presentation of the appeal. An appeal decided on the briefs without
 an oral hearing will receive the same consideration by the Board as appeals
 decided after an oral hearing.
 

 (b) If appellant desires an oral hearing, appellant must
 file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request
 for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two
 months from the date of the examiner's answer or on the date of filing of a reply
 brief, whichever is earlier.
 

 (c) If no request and fee for oral hearing have been timely
 filed by appellant as required by paragraph (b) of this section, the appeal will
 be assigned for consideration and decision on the briefs without an oral
 hearing.
 

 (d) If appellant has complied with all the requirements of
 paragraph (b) of this section, a date for the oral hearing will be set, and due
 notice thereof given to appellant. If an oral hearing is held, an oral argument
 may be presented by, or on behalf of, the primary examiner if considered desirable
 by either the primary examiner or the Board. A hearing will be held as stated in
 the notice, and oral argument will ordinarily be limited to twenty minutes for
 appellant and fifteen minutes for the primary examiner unless otherwise
 ordered.
 

 (e)
 
 (1) Appellant will argue first and may reserve time for
 rebuttal. At the oral hearing, appellant may only rely on Evidence that has
 been previously entered and considered by the primary examiner and present
 argument that has been relied upon in the brief or reply brief except as
 permitted by paragraph (e)(2) of this section. The primary examiner may only
 rely on argument and Evidence relied upon in an answer except as permitted
 by paragraph (e)(2) of this section.
 

 (2) Upon a showing of good cause, appellant and/or the
 primary examiner may rely on a new argument based upon a recent relevant
 decision of either the Board or a Federal Court.
 

 
 

 (f) Notwithstanding the submission of a request for oral
 hearing complying with this rule, if the Board decides that a hearing is not
 necessary, the Board will so notify appellant.
 

 (g) Extensions of time under § 1.136(a) of
 this title for patent applications are not applicable to the time periods set
 forth in this section. See § 1.136(b) of this title for
 extensions of time to reply for patent applications and § 1.550(c) of
 this title for extensions of time to reply for ex parte 
 reexamination proceedings.
 

 
 

 For additional information on oral hearings, appellants may
 consult the Board’s Oral Hearing Guide, available at www.uspto.gov/patents/ptab/hearings . 
 

 37 CFR
 41.47(b) provides that an appellant who desires an oral hearing
 before the Board must request the hearing by filing, in a separate paper captioned “REQUEST
 FOR ORAL HEARING,” a written request therefor, accompanied by the appropriate fee set forth
 in 37 CFR
 41.20(b)(3) , within 2 months after the date of the examiner’s answer
 or the date of filing of a reply brief, whichever is earlier. This time period ensures that
 any request for oral hearing is received not later than when jurisdiction over the
 proceeding passes to the Board ( 37 CFR 41.35(a) ). Form PTO/SB/32 may be
 used to request an oral hearing. This time period may only be extended by filing a request
 under either 37 CFR
 1.136(b) or, if the appeal involves an ex parte
 reexamination proceeding, under 37 CFR 1.550(c) .
 

 If the request for an oral hearing is non-compliant, the
 Board will issue an Order for a Non-Compliant Request for Oral Hearing. In response to the
 Order, appellant will need to file a petition under 37 CFR 41.3 and the requisite fee under
 37 CFR
 41.20(a) requesting that the hearing request be accepted. The
 petition is due within 14 days from the Order. See 37 CFR 41.3(e) . The Chief Judge or
 their designee will decide the petition. If the petition is denied, a refund of the filing
 fee for a request for oral hearing will not be granted. If the request and fee are not
 filed as set forth above, the case will be assigned for consideration and the decision will
 be based on the briefs without an oral hearing. Appeals decided on the briefs are given the
 same consideration by the Board as appeals decided after an oral hearing. See
 37 CFR
 41.47(a) and 41.73(c) . A request for an oral hearing
 neither accelerates nor delays a decision for that appeal.
 

 A notice of hearing, stating the date, the time, location of the hearing,
 appearance options and the docket, is forwarded to the appellant in due course. If
 appellant fails to confirm the hearing within the time required in the notice of hearing or
 the appellant waives the hearing, the appeal will be removed from the hearing docket and
 assigned on brief in due course. No refund of the fee for requesting an oral hearing will
 be made. Similarly, after confirmation, if no appearance is made at the scheduled hearing,
 the appeal will be decided on brief. Since failure to notify the Board of waiver of hearing
 in advance of the assigned date results in a waste of the Board’s resources, appellant
 should inform the Board of a change in plans at the earliest possible opportunity. If the
 Director or the Board determines that a hearing is not necessary (e.g., a Director-ordered
 remand to the examiner is necessary or it is clear that the rejection(s) cannot be
 sustained), appellant will be notified.
 

 If appellant has any special request, such as for a particular date, day
 of the week, or afternoon vs. morning hearing session, this will be taken into
 consideration in setting the hearing, if made known to the Board in advance, as long as
 such request does not unduly delay a decision in the case and does not place an undue
 administrative burden on the Board.
 

 If the time set in the notice of hearing conflicts with prior
 commitments or if subsequent events make appearance impossible, the hearing may be
 rescheduled on written request, in a separate paper addressed to the Clerk of the Board.
 However, in view of the administrative burden involved in rescheduling hearings and the
 potential delay which may result in the issuance of any patent based on the application on
 appeal, postponements are discouraged and will not be granted in the absence of convincing
 reasons in support of the requested change.
 

 Normally, 20 minutes are allowed for appellant to explain their position.
 If appellant believes that additional time will be necessary, the appellant should file a
 request in a separate paper addressed to the Clerk of the Board well in advance of the
 hearing. The request for such time will be taken into consideration in assigning the
 hearing date. The final decision on whether additional time is to be granted rests within
 the discretion of the senior member of the panel hearing the case.
 

 At the oral hearing, appellant may only rely on evidence that has been
 previously entered and considered by the primary examiner and present arguments that have
 been relied upon in the brief or reply brief. Upon a showing of good cause, appellant
 and/or the primary examiner may rely on a new argument based upon a recent relevant
 decision of either the Board or a Federal Court.
 

 Demonstrative exhibits are neither required nor expected,
 but appellant may use them to assist in the presentation of their case. If appellant has
 any PowerPoint® slides or other demonstratives, they must be submitted for inclusion into
 the record at least ten (10) days before the hearing date by submitting them through the
 USPTO Patent Center available at www.uspto.gov/PatentCenter . If provided to the Board, demonstrative
 exhibits must not include any information not previously made of record in the proceeding,
 and the Board will refuse to allow the use of demonstrative exhibits that do not comply
 with this requirement. See, e.g., 37 CFR 41.47(e)(1), 2 . For PowerPoint®
 or other computer-based presentation, the party must provide their own laptop. In addition,
 a party must clearly mark all demonstratives with the words “DEMONSTRATIVE EXHIBIT – NOT
 EVIDENCE” in the footer.
 

 The Board's current procedure permits members of the public to attend oral
 hearings in appeals of reexamination proceedings, reissues, and published applications.
 Members of the public are not permitted to attend appeals of non-published applications.
 More information is available at www.uspto.gov/patents/ptab/hearings. . All parties, including USPTO
 employees, attending oral hearings should be particularly mindful of the hearing room
 decorum and guidelines as listed in the Board's Oral Hearing Guide. Appropriate attire is
 clothing that would be worn for an important business meeting. 
 

 37 CFR
 41.47(f) provides that notwithstanding the submission of a request
 for oral hearing, if the Board decides that a hearing is not necessary, the Board will so
 notify appellant. Examples as to when it would be appropriate for the Board to decide that
 an oral hearing is not necessary include those where the Board has become convinced, prior
 to hearing, that the examiner’s position cannot be sustained or where the Director
 determines that the proceeding must be remanded to the examiner under 37 CFR 41.35(c) .
 

 PARTICIPATION BY EXAMINER If the appellant has requested an oral hearing and the primary examiner
 wishes to appear and present an oral argument before the Board, a request to present
 oral argument must be set forth in a separate letter on a form PTOL-90 using form
 paragraph 12.279.03 .
 

 ¶ 12.279.03 Request to Present Oral Arguments

 The examiner requests the opportunity
 to present arguments at the oral hearing.
 

 Examiner Note:

 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. Use this form paragraph only if
 an oral hearing has been requested by appellant and the primary
 examiner intends to present an oral argument.
 

 3. This form paragraph must be
 included as a separate letter on a form PTOL-90.
 

 4. After mailing to the applicant, the examiner must email a copy
 of the PTOL-90 to PTABHearings@uspto.gov.
 

 

 In those appeals in which an oral hearing has been confirmed by the
 appellant and the primary examiner has indicated a desire to participate in the oral
 argument, oral argument will generally only be held if the appellant actually appears
 for oral argument. If the appellant fails to make an appearance for oral argument, the
 hearing typically will be waived, and the primary examiner will not be given an
 opportunity to participate unless the panel hearing the case deems that a presentation
 by the primary examiner would be useful. 
 

 After the oral hearing has been confirmed and the date set as provided
 in 37 CFR
 41.47(d) , the primary examiner and the examiner’s supervisor
 should be notified of the date and time of the hearing. In those cases where the Board
 requests the presentation of an oral argument by or on behalf of the primary examiner,
 the Board’s request may, where appropriate, indicate specific points or questions to
 which the argument should be particularly directed. 
 

 On the day of the hearing, examiners associated with the appeal should
 notify the usher at the Board that they are associated with the appeal and that they are
 attending the hearing. In addition, the primary examiner associated with the appeal
 should indicate whether they plan to participate in the oral hearing. At the hearing,
 after the appellant has made their presentation, the examiner will be allowed 15 minutes
 to reply as well as to present a statement which clearly sets forth their position with
 respect to the issues and rejections of record. Generally, the primary examiner may rely
 on only argument and evidence relied upon in the examiner’s answer. The primary examiner
 may, however, rely on a new argument based upon a recent relevant decision of either the
 Board or a Federal Court. Appellant may utilize any allotted time not used in the
 initial presentation for rebuttal. 
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1201-Introduction 

 1202-Composition of Board 

 1203-Administrative Handling 

 1204-Notice of Appeal 
 1204.01-Reinstatement of Appeal 

 1204.02-Pre-Appeal Brief Review Request and Conference Pilot Program 

 1204.03-Interviews After Notice of Appeal 

 1204.04-Official Record on Appeal 

 
 

 1205-Appeal Brief 
 1205.01-Time for Filing Appeal Brief 

 1205.02-Appeal Brief Content 

 1205.03-Non-Compliant Appeal Brief and Amended Brief 

 
 

 1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 

 1207-Examiner’s Answer 
 1207.01-Appeal Conference 

 1207.02-Contents of Examiner’s Answer 

 1207.03-New Ground of Rejection in Examiner’s Answer 
 1207.03(a)-Determining Whether a Ground of Rejection is New 

 1207.03(b)-Petition to Designate a New Ground of Rejection and to Reopen Prosecution 

 1207.03(c)-Appellant's Reply to New Grounds of Rejection 

 
 

 1207.04-Reopening of Prosecution After Appeal 

 1207.05-Substitute Examiner’s Answer 

 
 

 1208-Reply Briefs and Fee for Forwarding Appeal 
 1208.01-Fee for Forwarding an Appeal to the Board 

 
 

 1209-Oral Hearing 

 1210-Actions Subsequent to Examiner’s Answer but Before Board’s Decision 

 1211-Remand by Director or Board 
 1211.01-Remand by Board for Further Consideration of Rejection 

 1211.02-Remand To Consider Amendment 

 1211.03-Remand To Consider Affidavits or Declarations 

 1211.04-Remand by Board for Further Search 

 
 

 1212-Board Requires Appellant to Address Matter 

 1213-Decision by Board 
 1213.01-[Reserved] 

 1213.02-New Grounds of Rejection by Board 

 1213.03-Publication of and Public Access to Board Decision 

 
 

 1214-Procedure Following Decision by Board 
 1214.01-Procedure Following New Ground of Rejection by Board 

 1214.02-[Reserved] 

 1214.03-Rehearing 

 1214.04-Examiner Reversed in Whole 

 1214.05-Cancellation of Claims Not Appealed 

 1214.06-Examiner Sustained in Whole or in Part; Claims Require Action 

 1214.07-Reopening of Prosecution 

 
 

 1215-Withdrawal or Dismissal of Appeal 
 1215.01-Withdrawal of Appeal 

 1215.02-Claims Standing Allowed 

 1215.03-Partial Withdrawal 

 1215.04-Dismissal of Appeal 

 
 

 1216-Judicial Review 
 1216.01-Appeals to the U.S. Court of Appeals for the Federal Circuit 

 1216.02-Civil Suits Under 35 U.S.C. 145 and 146 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:33