justicedao/patent-legal-corpus huggingface dataset:
37 CFR 41.127 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Judgment.

§ 41.127 Judgment. (a) Effect within Office —(1) Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment. (2) Final disposal of claim. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. (b) Request for adverse judgment. A party may at any time in the proceeding request judgment against itself. Actions construed to be a request for adverse judgment include: (1) Abandonment of an involved application such that the party no longer has an application or patent involved in the proceeding, (2) Cancellation or disclaiming of a claim such that the party no longer has a claim involved in the proceeding, (3) Concession of priority or unpatentability of the contested subject matter, and (4) Abandonment of the contest. (c) Recommendation. The judgment may include a recommendation for further action by the examiner or by the Director. If the Board recommends rejection of a claim of an involved application, the examiner must enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection. (d) Rehearing. A party dissatisfied with the judgment may file a request for rehearing within 30 days of the entry of the judgment. The request must specifically identify all matters the party believes to have been misapprehended or overlooked, and the place where the matter was previously addressed in a motion, opposition, or reply. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
37 CFR 41.128 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Sanctions.

§ 41.128 Sanctions. (a) The Board may impose a sanction against a party for misconduct, including: (1) Failure to comply with an applicable rule or order in the proceeding; (2) Advancing a misleading or frivolous request for relief or argument; or (3) Engaging in dilatory tactics. (b) Sanctions include entry of: (1) An order holding certain facts to have been established in the proceeding; (2) An order expunging, or precluding a party from filing, a paper; (3) An order precluding a party from presenting or contesting a particular issue; (4) An order precluding a party from requesting, obtaining, or opposing discovery; (5) An order excluding evidence; (6) An order awarding compensatory expenses, including attorney fees; (7) An order requiring terminal disclaimer of patent term; or (8) Judgment in the contested case.
37 CFR 41.12 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Citation of authority.

§ 41.12 Citation of authority. (a) For any United States Supreme Court decision, citation to the United States Reports is preferred. (b) For any decision other than a United States Supreme Court decision, citation to the West Reporter System is preferred. (c) Citations to authority must include pinpoint citations whenever a specific holding or portion of an authority is invoked. (d) Non-binding authority should be used sparingly. If the authority is not an authority of the Office and is not reproduced in the United States Reports or the West Reporter System, a copy of the authority should be provided. [76 FR 72296, Nov. 22, 2011]
37 CFR 41.150 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Discovery.

§ 41.150 Discovery. (a) Limited discovery. A party is not entitled to discovery except as authorized in this subpart. The parties may agree to discovery among themselves at any time. (b) Automatic discovery. (1) Within 21 days of a request by an opposing party, a party must: (i) Serve a legible copy of every requested patent, patent application, literature reference, and test standard mentioned in the specification of the party's involved patent or application, or application upon which the party will rely for benefit, and, if the requested material is in a language other than English, a translation, if available, and (ii) File with the Board a notice (without copies of the requested materials) of service of the requested materials. (2) Unless previously served, or the Board orders otherwise, any exhibit cited in a motion or in testimony must be served with the citing motion or testimony. (c) Additional discovery. (1) A party may request additional discovery. The requesting party must show that such additional discovery is in the interests of justice. The Board may specify conditions for such additional discovery. (2) When appropriate, a party may obtain production of documents and things during cross examination of an opponent's witness or during testimony authorized under § 41.156.
37 CFR 41.152 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Applicability of the Federal Rules of Evidence.

§ 41.152 Applicability of the Federal Rules of Evidence. (a) Generally. Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to contested cases. (b) Exclusions. Those portions of the Federal Rules of Evidence relating to criminal proceedings, juries, and other matters not relevant to proceedings under this subpart shall not apply. (c) Modifications in terminology. Unless otherwise clear from context, the following terms of the Federal Rules of Evidence shall be construed as indicated: Appellate court means United States Court of Appeals for the Federal Circuit or a United States district court when judicial review is under 35 U.S.C. 146. Civil action, civil proceeding, action, and trial mean contested case. Courts of the United States, U.S. Magistrate, court, trial court, and trier of fact mean Board. Hearing means: (i) In Federal Rule of Evidence 703, the time when the expert testifies. (ii) In Federal Rule of Evidence 804(a)(5), the time for taking testimony. Judge means the Board. Judicial notice means official notice. Trial or hearing means, in Federal Rule of Evidence 807, the time for taking testimony. (d) The Board, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.
37 CFR 41.154 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Form of evidence.

§ 41.154 Form of evidence. (a) Evidence consists of affidavits, transcripts of depositions, documents, and things. All evidence must be submitted in the form of an exhibit. (b) Translation required. When a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document. (c) An exhibit must conform with the requirements for papers in § 41.106 of this subpart and the requirements of this paragraph. (1) Each exhibit must have an exhibit label with a unique number in a range assigned by the Board, the names of the parties, and the proceeding number in the following format: JONES EXHIBIT 2001 Jones v. Smith Contested Case 104,999 (2) When the exhibit is a paper: (i) Each page must be uniquely numbered in sequence, and (ii) The exhibit label must be affixed to the lower right corner of the first page of the exhibit without obscuring information on the first page or, if obscuring is unavoidable, affixed to a duplicate first page. (d) Exhibit list. Each party must maintain an exhibit list with the exhibit number and a brief description of each exhibit. If the exhibit is not filed, the exhibit list should note that fact. The Board may require the filing of a current exhibit list prior to acting on a motion. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
37 CFR 41.155 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Objection; motion to exclude; motion in limine.

§ 41.155 Objection; motion to exclude; motion in limine. (a) Deposition. Objections to deposition evidence must be made during the deposition. Evidence to cure the objection must be provided during the deposition unless the parties to the deposition stipulate otherwise on the deposition record. (b) Other than deposition. For evidence other than deposition evidence: (1) Objection. Any objection must be served within five business days of service of evidence, other than deposition evidence, to which the objection is directed. (2) Supplemental evidence. The party relying on evidence for which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection. (c) Motion to exclude. A miscellaneous motion to exclude evidence must be filed to preserve any objection. The motion must identify the objections in the record in order and must explain the objections. (d) Motion in limine. A party may file a miscellaneous motion in limine for a ruling on the admissibility of evidence. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
37 CFR 41.156 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Compelling testimony and production.

§ 41.156 Compelling testimony and production. (a) Authorization required. A party seeking to compel testimony or production of documents or things must file a miscellaneous motion for authorization. The miscellaneous motion must describe the general relevance of the testimony, document, or thing and must: (1) In the case of testimony, identify the witness by name or title, and (2) In the case of a document or thing, the general nature of the document or thing. (b) Outside the United States. For testimony or production sought outside the United States, the motion must also: (1) In the case of testimony. (i) Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the foreign country and an estimate of the time it is expected to take to obtain the testimony; and (ii) Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the expenses of the witness to travel to and testify in the United States. (2) In the case of production of a document or thing. (i) Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and (ii) Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.
37 CFR 41.158 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Expert testimony; tests and data.

§ 41.158 Expert testimony; tests and data. (a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Testimony on United States patent law will not be admitted. (b) If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining: (1) Why the test or data is being used, (2) How the test was performed and the data was generated, (3) How the data is used to determine a value, (4) How the test is regarded in the relevant art, and (5) Any other information necessary for the Board to evaluate the test and data.
37 CFR 41.1 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Policy.

§ 41.1 Policy. (a) Scope. Part 41 governs appeals and interferences before the Patent Trial and Appeal Board. Sections 1.1 to 1.36 and 1.181 to 1.183 of this title also apply to practice before the Board, as do other sections of part 1 of this title that are incorporated by reference into part 41. (b) Construction. The provisions of Part 41 shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding before the Board. (c) Decorum. Each party must act with courtesy and decorum in all proceedings before the Board, including interactions with other parties. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]
37 CFR 41.200 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Procedure; pendency.

§ 41.200 Procedure; pendency. (a) A patent interference is a contested case subject to the procedures set forth in subpart D of this part. (b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers to the statute in effect on March 15, 2013, unless otherwise expressly indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers to the statute applicable to the involved application or patent. (c) Patent interferences shall be administered such that pendency before the Board is normally no more than two years. [69 FR 50003, Aug. 12, 2004, as amended at 75 FR 19559, Apr. 15, 2010; 80 FR 17971, Apr. 2, 2015]
37 CFR 41.201 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 41.201 Definitions. In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart: Accord benefit means Board recognition that a patent application provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1). Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in a patent application of the subject matter of a count. Earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must comply with the requirements of 35 U.S.C. 119-121, 365, or 386. Count means the Board's description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention. Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim that has been designated as corresponding to the count. Senior party means the party entitled to the presumption under § 41.207(a)(1) that it is the prior inventor. Any other party is a junior party. Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include: (1) No interference-in-fact, and (2) In the case of an involved application claim first made after the publication of the movant's application or issuance of the movant's patent: (i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or published application, or (ii) Unpatentability for lack of written description under 35 U.S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a). [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012; 80 FR 17971, Apr. 2, 2015]
37 CFR 41.203 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Declaration.

§ 41.203 Declaration. (a) Interfering subject matter. An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. (b) Notice of declaration. An administrative patent judge declares the patent interference on behalf of the Director. A notice declaring an interference identifies: (1) The interfering subject matter; (2) The involved applications, patents, and claims; (3) The accorded benefit for each count; and (4) The claims corresponding to each count. (c) Redeclaration. An administrative patent judge may redeclare a patent interference on behalf of the Director to change the declaration made under paragraph (b) of this section. (d) A party may suggest the addition of a patent or application to the interference or the declaration of an additional interference. The suggestion should make the showings required under § 41.202(a) of this part.
37 CFR 41.204 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Notice of basis for relief.

§ 41.204 Notice of basis for relief. (a) Priority statement. (1) A party may not submit evidence of its priority in addition to its accorded benefit unless it files a statement setting forth all bases on which the party intends to establish its entitlement to judgment on priority. (2) The priority statement must: (i) State the date and location of the party's earliest corroborated conception, (ii) State the date and location of the party's earliest corroborated actual reduction to practice, (iii) State the earliest corroborated date on which the party's diligence began, and (iv) Provide a copy of the earliest document upon which the party will rely to show conception. (3) If a junior party fails to file a priority statement overcoming a senior party's accorded benefit, judgment shall be entered against the junior party absent a showing of good cause. (b) Other substantive motions. The Board may require a party to list the motions it intends to file, including sufficient detail to place the Board and the opponent on notice of the precise relief sought. (c) Filing and service. The Board will set the times for filing and serving statements required under this section.
37 CFR 41.205 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Settlement agreements.

§ 41.205 Settlement agreements. (a) Constructive notice; time for filing. Pursuant to 35 U.S.C. 135(c), an agreement or understanding, including collateral agreements referred to therein, made in connection with or in contemplation of the termination of an interference must be filed prior to the termination of the interference between the parties to the agreement. After a final decision is entered by the Board, an interference is considered terminated when no appeal (35 U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or had. If an appeal to the U.S. Court of Appeals for the Federal Circuit (under 35 U.S.C. 141) or a civil action (under 35 U.S.C. 146) has been filed the interference is considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court. (b) Untimely filing. The Chief Administrative Patent Judge may permit the filing of an agreement under paragraph (a) of this section up to six months after termination upon petition and a showing of good cause for the failure to file prior to termination. (c) Request to keep separate. Any party to an agreement under paragraph (a) of this section may request that the agreement be kept separate from the interference file. The request must be filed with or promptly after the agreement is filed. (d) Access to agreement. Any person, other than a representative of a Government agency, may have access to an agreement kept separate under paragraph (c) of this section only upon petition and on a showing of good cause. The agreement will be available to Government agencies on written request.
37 CFR 41.207 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Presumptions.

§ 41.207 Presumptions. (a) Priority —(1) Order of invention. Parties are presumed to have invented interfering subject matter in the order of the dates of their accorded benefit for each count. If two parties are accorded the benefit of the same earliest date of constructive reduction to practice, then neither party is entitled to a presumption of priority with respect to the other such party. (2) Evidentiary standard. Priority may be proved by a preponderance of the evidence except a party must prove priority by clear and convincing evidence if the date of its earliest constructive reduction to practice is after the issue date of an involved patent or the publication date under 35 U.S.C. 122(b) of an involved application or patent. (b) Claim correspondence. (1) For the purposes of determining priority and derivation, all claims of a party corresponding to the count are presumed to stand or fall together. To challenge this presumption, a party must file a timely substantive motion to have a corresponding claim designated as not corresponding to the count. No presumption based on claim correspondence regarding the grouping of claims exists for other grounds of unpatentability. (2) A claim corresponds to a count if the subject matter of the count, treated as prior art to the claim, would have anticipated or rendered obvious the subject matter of the claim. (c) Cross-applicability of prior art. When a motion for judgment of unpatentability against an opponent's claim on the basis of prior art is granted, each of the movant's claims corresponding to the same count as the opponent's claim will be presumed to be unpatentable in view of the same prior art unless the movant in its motion rebuts this presumption.
37 CFR 41.208 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Content of substantive and responsive motions.

§ 41.208 Content of substantive and responsive motions. The general requirements for motions in contested cases are stated at § 41.121(c). (a) In an interference, substantive motions must: (1) Raise a threshold issue, (2) Seek to change the scope of the definition of the interfering subject matter or the correspondence of claims to the count, (3) Seek to change the benefit accorded for the count, or (4) Seek judgment on derivation or on priority. (b) To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if unrebutted, it would justify the relief sought. The burden of proof is on the movant. (c) Showing patentability. (1) A party moving to add or amend a claim must show the claim is patentable. (2) A party moving to add or amend a count must show the count is patentable over prior art.