By Stephanie M. Brooker and Matthew Johnson

Less experienced patent practitioners may be granted additional oral argument time in front of the Patent Trial and Appeals Board (PTAB) with the Legal Experience and Advancement Program (LEAP).  LEAP helps foster development of next generation patent practitioners by granting up to an additional 15 minutes for PTAB oral arguments for participants who agree to allow junior attorneys to present at least a portion of the argument.  The additional time enables the junior practitioner to develop and perfect oral advocacy skills for his/her client in real time.  The PTAB is also conducting free webinars to raise awareness about LEAP and offer oral advocacy training.  In its most recent webinar held on June 25, 2020, the PTAB gave an overview of LEAP and provided some helpful oral advocacy tips.

Registered patent attorneys or agents having (1) three or fewer substantive oral arguments in any federal tribunal, including the PTAB and (2) seven or less years of experience as a licensed attorney or agent are eligible for LEAP.  During the June 25 webinar, the PTAB indicated that this criteria is required for a party to qualify for any additional oral argument time, with no exceptions.  Additional time must be requested at least five business days before a PTAB hearing by emailing PTABHearings@uspto.gov.  In the request, the LEAP eligible practitioner must submit a verification request form confirming that s/he meets the eligibility criteria.  If additional time is granted by the PTAB, it can be shared among the LEAP eligible practitioner and more experienced co-counsel should the LEAP eligible practitioner need additional assistance during the argument.

The PTAB also highlighted some oral advocacy tips during the June 25 webinar.  The tips included things to do leading up to and during the hearing.  Before the hearing, “practice makes perfect.”  The PTAB suggested practicing an oral argument in segments.  Doing this can help prepare for inevitable interruptions.  This approach can also help a practitioner memorize which slides containing relevant information to answering specific questions from the PTAB.  Right before the hearing commences, practitioners should introduce themselves to the PTAB staff who can provide invaluable assistance in becoming familiar with an in-person hearing room.  For example, the staff can help with identifying technical equipment such as audio/visual displays and camera locations.  The PTAB reminds practitioners to be mindful that remote judges and/or public members may be listening in before the hearing begins.  Practioners are encouraged to be courteous to anyone present in a hearing room at all times.

Keeping those remote listeners in mind, during the hearing the PTAB reminded practitioners to look into the camera (and not at their demonstratives) when answering direct questions from a remote PTAB judge.  Remote PTAB judges cannot see hearing room displayed demonstratives so verbally annotating page numbers can point the PTAB judges to relevant information.  The PTAB also reminded practitioners that it is important to answer the question as asked, rather than resorting to running through slides in order and getting to the answer at a later time.  This is where the segmented practice approach can pay off.  It is likely that practitioners may not get through all of their demonstratives, even with an additional fifteen minutes.  There are many more helpful tips that the PTAB provided during the June 25 webinar, which can be found in their slides.

The PTAB’s next training is an “Oral Argument Practicum” scheduled for August 7, 2020 from 1:00PM to 4:30 PM ET.  Additional information on this training and LEAP can be found here.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.