justicedao/patent-legal-corpus huggingface dataset:
37 CFR 42.24 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Type-volume or page limits for petitions, motions, oppositions, replies, and sur-replies.

§ 42.24 Type-volume or page limits for petitions, motions, oppositions, replies, and sur-replies. (a) Petitions and motions. (1) The following word counts or page limits for petitions and motions apply and include any statement of material facts to be admitted or denied in support of the petition or motion. The word count or page limit does not include a table of contents, a table of authorities, mandatory notices under § 42.8, a certificate of service or word count, or appendix of exhibits or claim listing. (i) Petition requesting inter partes review: 14,000 words. (ii) Petition requesting post-grant review: 18,700 words. (iii) Petition requesting covered business method patent review: 18,700 words. (iv) Petition requesting derivation proceeding: 14,000 words. (v) Motions (excluding motions to amend): 15 pages. (vi) Motions to Amend: 25 pages. (2) Petitions to institute a trial must comply with the stated word counts but may be accompanied by a motion to waive the word counts. The petitioner must show in the motion how a waiver of the word counts is in the interests of justice and must append a copy of proposed petition exceeding the word count to the motion. If the motion is not granted, the proposed petition exceeding the word count may be expunged or returned. Any other motion to waive word counts or page limits must be granted in advance of filing a motion, opposition, or reply for which the waiver is necessary. (b) Patent owner responses and oppositions. The word counts or page limits set forth in this paragraph (b) do not include a listing of facts which are admitted, denied, or cannot be admitted or denied. (1) The word counts for a patent owner preliminary response to petition are the same as the word counts for the petition. (2) The word counts for a patent owner response to petition are the same as the word counts for the petition. (3) The page limits for oppositions are the same as those for corresponding motions. (c) Replies and sur-replies. The following word counts or page limits for replies and sur-replies apply and include any statement of facts in support of the reply. The word counts or page limits do not include a table of contents; a table of authorities; a listing of facts that are admitted, denied, or cannot be admitted or denied; a certificate of service or word count; or an appendix of exhibits. (1) Replies to patent owner responses to petitions: 5,600 words. (2) Replies to oppositions (excluding replies to oppositions to motions to amend): 5 pages. (3) Replies to oppositions to motions to amend: 12 pages. (4) Sur-replies to replies to patent owner responses to petitions: 5,600 words. (d) Certification. Any paper whose length is specified by type-volume limits must include a certification stating the number of words in the paper. A party may rely on the word count of the word-processing system used to prepare the paper. [81 FR 18765, Apr. 1, 2016, as amended at 81 FR 24703, Apr. 27, 2016; 85 FR 79128, Dec. 9, 2020]
37 CFR 42.25 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Default filing times.

§ 42.25 Default filing times. (a) A motion may only be filed according to a schedule set by the Board. The default times for acting are: (1) An opposition is due one month after service of the motion; and (2) A reply is due one month after service of the opposition. (b) A party should seek relief promptly after the need for relief is identified. Delay in seeking relief may justify a denial of relief sought.
37 CFR 42.2 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 42.2 Definitions. The following definitions apply to this part: Affidavit means affidavit or declaration under § 1.68 of this chapter. A transcript of an ex parte deposition or a declaration under 28 U.S.C. 1746 may be used as an affidavit. Board means the Patent Trial and Appeal Board. Board means a panel of the Board, or a member or employee acting with the authority of the Board, including: (1) For petition decisions and interlocutory decisions, a Board member or employee acting with the authority of the Board. (2) For final written decisions under 35 U.S.C. 135(d), 318(a), and 328(a), a panel of the Board. Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia. Confidential information means trade secret or other confidential research, development, or commercial information. Final means final for the purpose of judicial review to the extent available. A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required. Hearing means consideration of the trial. Involved means an application, patent, or claim that is the subject of the proceeding. Judgment means a final written decision by the Board, or a termination of a proceeding. Motion means a request for relief other than by petition. Office means the United States Patent and Trademark Office. Panel means at least three members of the Board. Party means at least the petitioner and the patent owner and, in a derivation proceeding, any applicant or assignee of the involved application. Petition is a request that a trial be instituted. Petitioner means the party filing a petition requesting that a trial be instituted. Preliminary Proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted. Proceeding means a trial or preliminary proceeding. Rehearing means reconsideration. Trial means a contested case instituted by the Board based upon a petition. A trial begins with a written decision notifying the petitioner and patent owner of the institution of the trial. The term trial specifically includes a derivation proceeding under 35 U.S.C. 135; an inter partes review under Chapter 31 of title 35, United States Code; a post-grant review under Chapter 32 of title 35, United States Code; and a transitional business-method review under section 18 of the Leahy-Smith America Invents Act. Patent interferences are administered under part 41 and not under part 42 of this title, and therefore are not trials.
37 CFR 42.300 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Procedure; pendency.

§ 42.300 Procedure; pendency. (a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201, 42.202, and 42.204. (b) In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the covered business method patent review proceeding will be considered. (c) A covered business method patent review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder. (d) The rules in this subpart are applicable until September 15, 2020, except that the rules shall continue to apply to any petition for a covered business method patent review filed before the date of repeal. [77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 81 FR 18766, Apr. 1, 2016; 83 FR 51359, Oct. 11, 2018]
37 CFR 42.301 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 42.301 Definitions. In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart D: (a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. (b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. [77 FR 48753, Aug. 14, 2012]
37 CFR 42.302 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Who may petition for a covered business method patent review.

§ 42.302 Who may petition for a covered business method patent review. (a) A petitioner may not file with the Office a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. (b) A petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. (c) A petitioner may not file a petition to institute a covered business method patent review of the patent where, before the date on which the petition is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent. [77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015]
37 CFR 42.304 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Content of petition.

§ 42.304 Content of petition. In addition to any other notices required by subparts A and C of this part, a petition must request judgment against one or more claims of a patent identified by patent number. In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24 the petition must set forth: (a) Grounds for standing. The petitioner must demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302. (b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following: (1) The claim; (2) The specific statutory grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), except as modified by section 18(a)(1)(C) of the Leahy-Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011)), on which the challenge to the claim is based; (3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function; (4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. Where the grounds for unpatentability are based on prior art, the petition must specify where each element of the claim is found in the prior art. For all other grounds of unpatentability, the petition must identify the specific part of the claim that fails to comply with the statutory grounds raised and state how the identified subject matter fails to comply with the statute; and (5) The exhibit number of supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge. (c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
37 CFR 42.400 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Procedure; pendency.

§ 42.400 Procedure; pendency. (a) A derivation proceeding is a trial subject to the procedures set forth in subpart A of this part. (b) The Board may for good cause authorize or direct the parties to address patentability issues that arise in the course of the derivation proceeding.
37 CFR 42.401 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 42.401 Definitions. In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart: Agreement or understanding under 35 U.S.C. 135(e) means settlement for the purposes of § 42.74. Applicant includes a reissue applicant. Application includes both an application for an original patent and an application for a reissued patent. First publication means either a patent or an application publication under 35 U.S.C. 122(b), including a publication of an international application designating the United States as provided by 35 U.S.C. 374. Petitioner means a patent applicant who petitions for a determination that another party named in an earlier-filed patent application allegedly derived a claimed invention from an inventor named in the petitioner's application and filed the earlier application without authorization. Respondent means a party other than the petitioner. Same or substantially the same means patentably indistinct.
37 CFR 42.405 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Content of petition.

§ 42.405 Content of petition. (a) Grounds for standing. The petition must: (1) Demonstrate compliance with §§ 42.402 and 42.403; and (2) Show that the petitioner has at least one claim that is: (i) The same or substantially the same as the respondent's claimed invention; and (ii) The same or substantially the same as the invention disclosed to the respondent. (b) In addition to the requirements of §§ 42.8 and 42.22, the petition must: (1) Provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding; (2) Demonstrate that a claimed invention was derived from an inventor named in the petitioner's application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention; and (3) For each of the respondent's claims to the derived invention, (i) Show why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, and (ii) Identify how the claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. (c) Sufficiency of showing. A derivation showing is not sufficient unless it is supported by substantial evidence, including at least one affidavit addressing communication of the derived invention and lack of authorization that, if unrebutted, would support a determination of derivation. The showing of communication must be corroborated.
37 CFR 42.406 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Service of petition.

§ 42.406 Service of petition. In addition to the requirements of § 42.6, the petitioner must serve the petition and exhibits relied upon in the petition as follows: (a) The petition and supporting evidence must be served on the respondent at the correspondence address of record for the earlier application or subject patent. The petitioner may additionally serve the petition and supporting evidence on the respondent at any other address known to the petitioner as likely to effect service. (b) Upon agreement of the parties, service may be made electronically. Service may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®. Personal service is not required. [77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014]
37 CFR 42.407 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Filing date.

§ 42.407 Filing date. (a) Complete petition. A petition to institute a derivation proceeding will not be accorded a filing date until the petition satisfies all of the following requirements: (1) Complies with §§ 42.404 and 42.405, and (2) Service of the petition on the correspondence address of record as provided in § 42.406. (b) Incomplete petition. Where the petitioner files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within the earlier of either one month from notice of the incomplete petition, or the expiration of the statutory deadline in which to file a petition for derivation.
37 CFR 42.408 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Institution of derivation proceeding.

§ 42.408 Institution of derivation proceeding. (a) An administrative patent judge institutes, and may as necessary reinstitute, the derivation proceeding on behalf of the Director. (b) Additional derivation proceeding. The petitioner may suggest the addition of a patent or application to the derivation proceeding. The suggestion should make the showings required under § 42.405 and explain why the suggestion could not have been made in the original petition.
37 CFR 42.410 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Arbitration.

§ 42.410 Arbitration. (a) Parties may resort to binding arbitration to determine any issue. The Office is not a party to the arbitration. The Board is not bound by, and may independently determine, any question of patentability. (b) The Board will not set a time for, or otherwise modify the proceeding for, an 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; (iv) Provides that the arbitrator's award shall be binding on the parties and that judgment thereon can be entered by the Board; (v) Provides that a copy of the agreement is filed within 20 days after its execution; and (vi) Provides that 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 the arbitration. (d) The Board may determine issues the arbitration does not resolve. (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.
37 CFR 42.412 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Public availability of Board records.

§ 42.412 Public availability of Board records. (a) Publication. (1) Generally. Any Board decision is available for public inspection without a party's permission if rendered in a file open to the public pursuant to § 1.11 of this chapter or in an application that has been published in accordance with §§ 1.211 to 1.221 of this chapter. The Office may independently publish any Board decision that is available for public inspection. (2) Determination of special circumstances. Any Board decision not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not petition within two months after being notified of the intention to make the decision public, objecting in writing on the ground that the decision discloses the objecting party's trade secret or other confidential information and stating with specificity that such information is not otherwise publicly available. (b) Record of proceeding. (1) The record of a Board proceeding is available to the public, unless a patent application not otherwise available to the public is involved. (2) Notwithstanding paragraph (b)(1) of this section, after a final Board decision in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this chapter or an involved application is or becomes published under §§ 1.211 to 1.221 of this chapter.
37 CFR 42.4 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Notice of trial.

§ 42.4 Notice of trial. (a) Institution of trial. The Board institutes the trial on behalf of the Director. (b) Notice of a trial will be sent to every party to the proceeding. The entry of the notice institutes the trial. (c) The Board may authorize additional 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 or the Federal Register.