A 5-Point Strategy for Arguing to Defend Your Invention
Some of the best advice for a lawyer when presenting a case during oral arguments is to keep it simple: Make it easy for the judges to rule in your favor.
Judges of the USPTO’s Patent Trial and Appellate Board (PTAB) sit in three-judge panels and decide each case based on the applicable law and specific facts in the record. They must explain their reasoning in a written decision, stating why the prevailing party won the case.
Help the judges decide in your favor by giving them all the information they need to fully support and prepare their written decision. The hearing is your opportunity to address important issues and effectively explain your position to the PTAB judges on the panel.
By following these tips for making effective arguments before the PTAB, you’ll have the best chance of winning your case.
Know your audience. PTAB judges are experienced patent attorneys with a minimum of a bachelor’s degree in science or engineering. They know the law, understand the technology and are prepared.
In addition, the panel knows the arguments from reading the submissions. Instead of spending time on a long summary of the invention to start your hearing, focus right away on your arguments, including the specific reasons why your client should prevail.
Use a road map. You should begin your oral argument with a road map that outlines the dispositive issues and highlights the strongest arguments you will address. A road map helps to orient the group and structure how you will use your oral argument time.
Focus on the facts. Focus on applying the law to the facts of the record during your oral argument rather than repeating legal standards or reviewing procedural history.
Almost all patentability issues are resolved based on the facts of your case; very few require an extension or reinterpretation of the law. However, you are limited to the facts on the record, and judges will not consider arguments or evidence presented for the first time during the hearing.
Use demos. Consider using demonstrations, which are often slide presentations, to help you make your oral argument. These are useful tools for highlighting evidence and clarifying misunderstandings. Be careful not to make the demonstrations too complicated, which can prevent more than help during a hearing.
Answer the judges’ questions. You should anticipate the questions from the panel. The hearing is an opportunity for the judges to clarify issues they consider crucial to their decision.
Accordingly, you should be familiar with the entire record and directly address the issues raised by the group. After answering a question directly, explain why the issue benefits or at least does not hurt your client’s position.
For additional information, please see the PTAB Hearings Guide at uspto.gov/sites/default/files/documents/PTAB_hearings_guide_101520.pdf for more detailed information about the hearings – including courtroom decor, use of exhibits, hearing facilities and the current hearing schedule.