Appearing before the Patent Trial and Appeal Board (PTAB) looks different as a result of COVID-19. The PTAB recently held a “Boardside Chat” to talk about how PTAB practice has changed. Here are some important changes practitioners should know regarding case management, CARES Act extensions and remote hearings at the PTAB.
The PTAB strongly encourages parties to use electronic filings for all PTAB proceedings. Although paper filing is still allowed in some situations, processing may be affected. To that end, the PTAB accepts electronic signatures, both from practitioners and from expert declarants.
Electronic filing is not new for most practitioners, but COVID-19 does raise some challenges. For example, petitioners often serve IPR petitions via mail to comply with the service requirements. The PTAB now encourages petitioners and patent owners to agree to electronic service.
Likewise, the increased reliance on electronic filing raises the question about what parties are supposed to do if the PTAB’s electronic filing systems go offline. In some instances before, mail might have been a good option. Now, the PTAB recommends serving opposing counsel, emailing the PTAB with all the critical information and moving for acceptance once the systems are back online.
One of the aspects of PTAB practice most impacted by the current situation is depositions. As with litigation in the courts, the PTAB is moving to remote depositions. The PTAB prefers that the parties use video for depositions, though telephone deposition may be acceptable if the parties cannot agree otherwise.
As with any issue regarding service and filing, if the parties can’t agree on a means for hosting the deposition, the parties should contact the PTAB. But practitioners should try to find agreement where possible.
CARES ACT EXTENSIONS
The Coronavirus Aid, Relief, and Economic Security Act, or “CARES Act,” gives the PTO authority to adjust its deadlines, and the PTAB is doing so for all proceedings before it.
For deadlines in patent applications, reexamination proceedings and proceedings before the PTAB other than trial proceedings, if an eligible document or fee was or is due between (and inclusive of both) March 27, 2020 and March 31, 2020, the filing will be considered timely if filed on or before June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. If practitioners have a delay due to COVID-19, they should review the PTAB’s guidance on whether an extension is available.
The PTAB is also willing to extend certain deadlines related to IPRs and other AIA trials. For example, the patent owner preliminary response in a trial proceeding and certain responsive filings are eligible for a 30-day extension. However, an extension may not be available for statutory deadlines, including the bar to filing an IPR petition more than a year after being served with a complaint under § 315(b) and the bar to filing a PGR petition more than nine months after the patent is granted or reissued under § 321(c).
Although the PTAB is willing to grant some extensions in IPRs and other AIA trials, a request for an extension that would require a change in the deadline for the final written decision of IPRs under § 316(a)(11) and PGRs under § 326(a)(11) still requires the requesting party to show good cause.
For all other situations where COVID-19 impacted a filing before the PTAB, a request for extension of time can be made by contacting the PTAB. The PTAB is often willing to make accommodations to address practitioners’ challenges, but the PTAB is limited by statute regarding what it can do, and so practitioners should know what deadlines are and are not eligible for an extension.
The PTAB has moved to all remote hearings. Hearings for appeals will be telephonic. And hearings in IPRs and other AIA trials may be by telephone or video. The PTAB cautions that the move to remote hearings is not an excuse for practitioners to show up after the start of the hearing, even if their case is not the first one in the session.
The PTAB recognizes the possibility of technical challenges. The PTAB’s technical staff is available to help practitioners check that their system will work properly, and the PTAB recommends that practitioners reach out to the staff at least five days before a video hearing. If practitioners encounter problems that fundamentally undermine their ability to adequately represent their clients, they should contact the PTAB immediate so that adjustments can be made.
Video hearings will require some practitioners to adjust their plan. Although demonstratives can be used, they must be sent to the PTAB ahead of time, and the PTAB will flip to the relevant slide. Thus, practitioners generally will not have the option of pointing to or annotating specific information on the slides during the presentation.
That said, the PTAB will consider letting a practitioner use graphics beyond static slides. If a practitioner has a video or animation that may be helpful, the practitioner can ask the PTAB’s staff to make it available. But given the increased risk of technical issues, practitioners should think twice before doing so.
The PTAB offers several tips for participating in a hearing effectively:
- Keep yourself on mute unless you are speaking.
- Identify yourself when you speak.
- Pause before speaking to ensure you don’t speak over others.
- Use a headset for optimal audio quality.
- Dress as you would for an in-person hearing.
The PTAB allows public access to PTAB hearings, but it is presently audio-only. To get access, a member of the public must send a resent to the PTAB at least three days before the hearing date. Clients of parties can get access to hearings in this manner as well.
Although COVID-19 has required the PTAB to change its practices, the PTAB still expects that practitioners will represent their clients effectively. Practitioners must adapt, and if issues arise, the responsibility is on the practitioner to ask the PTAB for reasonable accommodation.