MPEP Q & A 301: What does the prohibition on ex parte communications not extend to?

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Question:

All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. What does the prohibition on ex parte communications not extend to?

Answer:

All substantive communications with the Board regarding a proceeding must include all parties to the proceeding, except as otherwise authorized. The prohibition on ex parte communications does not extend to:

Ministerial communications with support staff (for instance, to arrange a conference call);
Conference calls or hearings in which opposing counsel declines to participate;
Informing the Board in one proceeding of the existence or status of a related Board proceeding; or
Reference to a pending case in support of a general proposition (for instance, citing a published opinion from a pending case or referring to a pending case to illustrate a systemic problem).

Chapter Details:

This question comes from the following supplement “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019”. The following is a brief summary of the appropriate section in the supplement.

A. Jurisdiction and Management of the Record
The Board has exclusive jurisdiction over every application and patent involved in a derivation, IPR, PGR, or CBM proceeding, with ex parte reexamination and inter partes reexamination proceedings treated separately unless ordered by the Board.
All substantive communications with the Board must include all parties, barring certain exceptions like arranging conference calls, to which the Board is receptive as a means of expediting issue resolution.