justicedao/patent-legal-corpus huggingface dataset:
37 CFR 404.3 — Licensing of Government Owned Inventions
Current through: 2024-07-01

Definitions.

§ 404.3 Definitions. (a) Government owned invention means an invention, whether or not covered by a patent or patent application, or discovery which is or may be patentable or otherwise protectable under Title 35, the Plant Variety Protection Act (7 U.S.C. 2321 et seq. ) or foreign patent law, owned in whole or in part by the United States Government. (b) Federal agency means an executive department, military department, Government corporation, or independent establishment, except the Tennessee Valley Authority, which has custody of a federally owned invention. (c) Small business firm means a small business concern as defined in section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration. (d) Practical application means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms. (e) United States means the United States of America, its territories and possessions, the District of Columbia, and the Commonwealth of Puerto Rico. [50 FR 9802, Mar. 12, 1985, as amended at 71 FR 11512, Mar. 8, 2006]
37 CFR 404.4 — Licensing of Government Owned Inventions
Current through: 2024-07-01

Authority to grant licenses.

§ 404.4 Authority to grant licenses. Federally owned inventions shall be made available for licensing as deemed appropriate in the public interest and each agency shall notify the public of these available inventions. The agencies having custody of these inventions may grant nonexclusive, co-exclusive, partially exclusive, or exclusive licenses thereto under this part. Licenses may be royalty-free or for royalties or other consideration. They may be for all or less than all fields of use or in specified geographic areas and may include a release for past infringement. Any license shall not confer on any person immunity from the antitrust laws or from a charge of patent misuse, and the exercise of such rights pursuant to this part shall not be immunized from the operation of state or federal law by reason of the source of the grant. [71 FR 11512, Mar. 8, 2006]
37 CFR 404.8 — Licensing of Government Owned Inventions
Current through: 2024-07-01

Application for a license.

§ 404.8 Application for a license. (a) An application for a license should be addressed to the Federal agency having custody of the invention and shall normally include: (1) Identification of the invention for which the license is desired including the patent application serial number or patent number, title, and date, if known; (2) Identification of the type of license for which the application is submitted; (3) Name and address of the person, company, or organization applying for the license and the citizenship or place of incorporation of the applicant; (4) Name, address, and telephone number of the representative of the applicant to whom correspondence should be sent; (5) Nature and type of applicant's business, identifying products or services which the applicant has successfully commercialized, and approximate number of applicant's employees; (6) Source of information concerning the availability of a license on the invention; (7) A statement indicating whether the applicant is a small business firm as defined in § 404.3(c); (8) A detailed description of applicant's plan for development or marketing of the invention, or both, which should include: (i) A statement of the time, nature and amount of anticipated investment of capital and other resources which applicant believes will be required to bring the invention to practical application; (ii) A statement as to applicant's capability and intention to fulfill the plan, including information regarding manufacturing, marketing, financial, and technical resources; (iii) A statement of the fields of use for which applicant intends to practice the invention; and (iv) A statement of the geographic areas in which applicant intends to manufacture any products embodying the invention and geographic areas where applicant intends to use or sell the invention, or both; (9) Identification of licenses previously granted to applicant under federally owned inventions; (10) A statement containing applicant's best knowledge of the extent to which the invention is being practiced by private industry or Government, or both, or is otherwise available commercially; and (11) Any other information which applicant believes will support a determination to grant the license to applicant. (b) An executed CRADA which provides for the use for research and development purposes by the CRADA collaborator under that CRADA of a Federally-owned invention in the Federal laboratory's custody (pursuant to 35 U.S.C. 209 and 15 U.S.C. 3710a(b)(1)), and which addresses the information in paragraph (a) of this section, may be treated by the Federal laboratory as an application for a license. [83 FR 15963, Apr. 13, 2018]
37 CFR 41.100 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 41.100 Definitions. In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart: Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia. Involved means the Board has declared the patent application, patent, or claim so described to be a subject of the contested case.
37 CFR 41.101 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Notice of proceeding.

§ 41.101 Notice of proceeding. (a) Notice of a contested case will be sent to every party to the proceeding. The entry of the notice initiates the proceeding. (b) When the Board is unable to provide actual notice of a contested case on a party through the correspondence address of record for the party, the Board may authorize other modes of notice, including: (1) Sending notice to another address associated with the party, or (2) Publishing the notice in the Official Gazette of the United States Patent and Trademark Office.
37 CFR 41.102 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Completion of examination.

§ 41.102 Completion of examination. Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent: (a) Examination or reexamination must be completed, and (b) There must be at least one claim that: (1) Is patentable but for a judgment in the contested case, and (2) Would be involved in the contested case.
37 CFR 41.104 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Conduct of contested case.

§ 41.104 Conduct of contested case. (a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding. (b) An administrative patent judge may waive or suspend in a proceeding the application of any rule in this subpart, subject to such conditions as the administrative patent judge may impose. (c) Times set in this subpart are defaults. In the event of a conflict between a time set by rule and a time set by order, the time set by order is controlling. Action due on a day other than a business day may be completed on the next business day unless the Board expressly states otherwise.
37 CFR 41.108 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Lead counsel.

§ 41.108 Lead counsel. (a) A party may be represented by counsel. The Board may require a party to appoint a lead counsel. If counsel is not of record in a party's involved application or patent, then a power of attorney for that counsel for the party's involved application or patent must be filed with the notice required in paragraph (b) of this section. (b) Within 14 days of the initiation of each contested case, each party must file a separate notice identifying its counsel, if any, and providing contact information for each counsel identified or, if the party has no counsel, then for the party. Contact information must, at a minimum, include: (1) A mailing address; (2) An address for courier delivery when the mailing address is not available for such delivery (for example, when the mailing address is a Post Office box); (3) A telephone number; (4) A facsimile number; and (5) An electronic mail address. (c) A party must promptly notify the Board of any change in the contact information required in paragraph (b) of this section.
37 CFR 41.109 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Access to and copies of Office records.

§ 41.109 Access to and copies of Office records. (a) Request for access or copies. Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title. (b) Authorization of access and copies. Access and copies will ordinarily only be authorized for the following records: (1) The application file for an involved patent; (2) An involved application; and (3) An application for which a party has been accorded benefit under subpart E of this part. (c) Missing or incomplete copies. If a party does not receive a complete copy of a record within 21 days of the authorization, the party must promptly notify the Board.
37 CFR 41.10 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Correspondence addresses.

§ 41.10 Correspondence addresses. Except as the Board may otherwise direct, (a) Appeals. Correspondence in an application or a patent involved in an appeal (subparts B and C of this part) during the period beginning when an appeal docketing notice is issued and ending when a decision has been rendered by the Board, as well as any request for rehearing of a decision by the Board, shall be mailed to: Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in § 1.1(a)(1)(i) of this title. (b) Interferences. Mailed correspondence in interference (subpart D of this part) shall be sent to Mail Stop INTERFERENCE, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. (c) Trial Proceedings. Correspondence in trial proceedings (part 42 of this title) are governed by § 42.6(b) of this title. [77 FR 46630, Aug. 6, 2012]
37 CFR 41.110 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Filing claim information.

§ 41.110 Filing claim information. (a) Clean copy of claims. Within 14 days of the initiation of the proceeding, each party must file a clean copy of its involved claims and, if a biotechnology material sequence is a limitation, a clean copy of the sequence. (b) Annotated copy of claims. Within 28 days of the initiation of the proceeding, each party must: (1) For each involved claim having a limitation that is illustrated in a drawing or biotechnology material sequence, file an annotated copy of the claim indicating in bold face between braces ({ }) where each limitation is shown in the drawing or sequence. (2) For each involved claim that contains a means-plus-function or step-plus-function limitation in the form permitted under 35 U.S.C. 112(f), file an annotated copy of the claim indicating in bold face between braces ({ }) the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. (c) Any motion to add or amend a claim must include: (1) A clean copy of the claim, (2) A claim chart showing where the disclosure of the patent or application provides written description of the subject matter of the claim, and (3) Where applicable, a copy of the claims annotated according to paragraph (b) of this section. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012]
37 CFR 41.11 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Ex Parte communications in inter partes proceedings.

§ 41.11 Ex Parte communications in inter partes proceedings. An ex parte communication about an inter partes reexamination (subpart C of this part) or about a contested case (subparts D and E of this part) with a Board member, or with a Board employee assigned to the proceeding, is not permitted.
37 CFR 41.120 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Notice of basis for relief.

§ 41.120 Notice of basis for relief. (a) The Board may require a party to provide a notice stating the relief it requests and the basis for its entitlement to relief. The Board may provide for the notice to be maintained in confidence for a limited time. (b) Effect. If a notice under paragraph (a) of this section is required, a party will be limited to filing substantive motions consistent with the notice. Ambiguities in the notice will be construed against the party. A notice is not evidence except as an admission by a party-opponent. (c) Correction. A party may move to correct its notice. The motion should be filed promptly after the party becomes aware of the basis for the correction. A correction filed after the time set for filing notices will only be entered if entry would serve the interests of justice.
37 CFR 41.121 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Motions.

§ 41.121 Motions. (a) Types of motions —(1) Substantive motions. Consistent with the notice of requested relief, if any, and to the extent the Board authorizes, a party may file a motion: (i) To redefine the scope of the contested case, (ii) To change benefit accorded for the contested subject matter, or (iii) For judgment in the contested case. (2) Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of requested relief or in a substantive motion. (3) Miscellaneous motions. Any request for relief other than a substantive or responsive motion must be filed as a miscellaneous motion. (b) Burden of proof. The party filing the motion has the burden of proof to establish that it is entitled to the requested relief. (c) Content of motions; oppositions and replies. (1) Each motion must be filed as a separate paper and must include: (i) A statement of the precise relief requested, (ii) A statement of material facts (see paragraph (d) of this section), and (iii) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence and the governing law, rules, and precedent. (2) Compliance with rules. Where a rule in part 1 of this title ordinarily governs the relief sought, the motion must make any showings required under that rule in addition to any showings required in this part. (3) The Board may order additional showings or explanations as a condition for filing a motion. (d) Statement of material facts. (1) Each material fact shall be set forth as a separate numbered sentence with specific citations to the portions of the record that support the fact. (2) The Board may require that the statement of material facts be submitted as a separate paper. (e) Claim charts. Claim charts must be used in support of any paper requiring the comparison of a claim to something else, such as another claim, prior art, or a specification. Claim charts must accompany the paper as an appendix. Claim charts are not a substitute for appropriate argument and explanation in the paper. (f) The Board may order briefing on any issue that could be raised by motion.
37 CFR 41.122 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Oppositions and replies.

§ 41.122 Oppositions and replies. (a) Oppositions and replies must comply with the content requirements for motions and must include a statement identifying material facts in dispute. Any material fact not specifically denied shall be considered admitted. (b) All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition.
37 CFR 41.123 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Default filing times.

§ 41.123 Default filing times. (a) A motion, other than a miscellaneous motion, may only be filed according to a schedule the Board sets. The default times for acting are: (1) An opposition is due 30 days after service of the motion. (2) A reply is due 30 days after service of the opposition. (3) A responsive motion is due 30 days after the service of the motion. (b) Miscellaneous motions. (1) If no time for filing a specific miscellaneous motion is provided in this part or in a Board order: (i) The opposing party must be consulted prior to filing the miscellaneous motion, and (ii) If an opposing party plans to oppose the miscellaneous motion, the movant may not file the motion without Board authorization. Such authorization should ordinarily be obtained through a telephone conference including the Board and every other party to the proceeding. Delay in seeking relief may justify a denial of the motion. (2) An opposition may not be filed without authorization. The default times for acting are: (i) An opposition to a miscellaneous motion is due five business days after service of the motion. (ii) A reply to a miscellaneous motion opposition is due three business days after service of the opposition. (c) Exhibits. Each exhibit must be filed and served with the first paper in which it is cited except as the Board may otherwise order.
37 CFR 41.124 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Oral argument.

§ 41.124 Oral argument. (a) Request for oral argument. A party may request an oral argument on an issue raised in a paper within five business days of the filing of the paper. The request must be filed as a separate paper and must specify the issues to be considered. (b) Copies for panel. If an oral argument is set for a panel, the movant on any issue to be argued must provide three working copies of the motion, the opposition, and the reply. Each party is responsible for providing three working copies of its exhibits relating to the motion. (c) Length of argument. If a request for oral argument is granted, each party will have a total of 20 minutes to present its arguments, including any time for rebuttal. (d) Demonstrative exhibits must be served at least five business days before the oral argument and filed no later than the time of the oral argument. (e) Transcription. The Board encourages the use of a transcription service at oral arguments but, if such a service is to be used, the Board must be notified in advance to ensure adequate facilities are available and a transcript must be filed with the Board promptly after the oral argument.
37 CFR 41.125 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Decision on motions.

§ 41.125 Decision on motions. (a) Order of consideration. The Board may take up motions for decisions in any order, may grant, deny, or dismiss any motion, and may take such other action appropriate to secure the just, speedy, and inexpensive determination of the proceeding. A decision on a motion may include deferral of action on an issue until a later point in the proceeding. (b) Interlocutory decisions. A decision on motions without a judgment is not final for the purposes of judicial review. A panel decision on an issue will govern further proceedings in the contested case. (c) Rehearing —(1) Time for request. A request for rehearing of a decision on a motion must be filed within fourteen days of the decision. (2) No tolling. The filing of a request for rehearing does not toll times for taking action. (3) Burden on rehearing. The burden of showing a decision should be modified lies with the party attacking the decision. The request must specifically identify: (i) All matters the party believes to have been misapprehended or overlooked, and (ii) The place where the matter was previously addressed in a motion, opposition, or reply. (4) Opposition; reply. Neither an opposition nor a reply to a request for rehearing may be filed without Board authorization. (5) Panel rehearing. If a decision is not a panel decision, the party requesting rehearing may request that a panel rehear the decision. A panel rehearing a procedural decision will review the decision for an abuse of discretion.
37 CFR 41.126 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Arbitration.

§ 41.126 Arbitration. (a) Parties to a contested case may resort to binding arbitration to determine any issue in a contested case. The Office is not a party to the arbitration. The Board is not bound and may independently determine questions of patentability, jurisdiction, and Office practice. (b) The Board will not authorize arbitration unless: (1) It is to be conducted according to Title 9 of the United States Code. (2) The parties notify the Board in writing of their intention to arbitrate. (3) The agreement to arbitrate: (i) Is in writing, (ii) Specifies the issues to be arbitrated, (iii) Names the arbitrator, or provides a date not more than 30 days after the execution of the agreement for the selection of the arbitrator, and (iv) Provides that the arbitrator's award shall be binding on the parties and that judgment thereon can be entered by the Board. (4) A copy of the agreement is filed within 20 days after its execution. (5) The arbitration is completed within the time the Board sets. (c) The parties are solely responsible for the selection of the arbitrator and the conduct of proceedings before the arbitrator. (d) Issues not disposed of by the arbitration will be resolved in accordance with the procedures established in this subpart. (e) The Board will not consider the arbitration award unless it: (1) Is binding on the parties, (2) Is in writing, (3) States in a clear and definite manner each issue arbitrated and the disposition of each issue, and (4) Is filed within 20 days of the date of the award. (f) Once the award is filed, the parties to the award may not take actions inconsistent with the award. If the award is dispositive of the contested subject matter for a party, the Board may enter judgment as to that party.