justicedao/patent-legal-corpus huggingface dataset:
37 CFR 42.13 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Citation of authority.

§ 42.13 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.
37 CFR 42.14 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Public availability.

§ 42.14 Public availability. The record of a proceeding, including documents and things, shall be made available to the public, except as otherwise ordered. A party intending a document or thing to be sealed shall file a motion to seal concurrent with the filing of the document or thing to be sealed. The document or thing shall be provisionally sealed on receipt of the motion and remain so pending the outcome of the decision on the motion.
37 CFR 42.15 — [Reserved] Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Fees.

§ 42.15 Fees. (a) On filing a petition for inter partes review of a patent, payment of the following fees are due: (1) Inter Partes Review request fee: $19,000.00 (2) Inter Partes Review Post-Institution fee: $22,500.00 (3) In addition to the Inter Partes Review request fee, for requesting a review of each claim in excess of 20: $375.00 (4) In addition to the Inter Partes Post-Institution request fee, for requesting a review of each claim in excess of 20: $750.00 (b) On filing a petition for post-grant review or covered business method patent review of a patent, payment of the following fees are due: (1) Post-Grant or Covered Business Method Patent Review request fee: $20,000.00 (2) Post-Grant or Covered Business Method Patent Review Post-Institution fee: $27,500.00 (3) In addition to the Post-Grant or Covered Business Method Patent Review request fee, for requesting a review of each claim in excess of 20: $475.00 (4) In addition to the Post-Grant or Covered Business Method Patent Review Post-Institution fee, for requesting a review of each claim in excess of 20: $1,050.00 (c) On the filing of a petition for a derivation proceeding, payment of the following fee is due: (1) Derivation petition fee: $420.00 (2) [Reserved] (d) Any request requiring payment of a fee under this part, including a written request to make a settlement agreement available: $420.00 (e) Fee for non-registered practitioners to appear pro hac vice before the Patent Trial and Appeal Board: $250.00 [85 FR 46993, Aug. 3, 2020]
37 CFR 42.1 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Policy.

§ 42.1 Policy. (a) Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26, 1.32, 1.34, and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part. (b) Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding. (c) Decorum. Every party must act with courtesy and decorum in all proceedings before the Board, including in interactions with other parties. (d) Evidentiary standard. The default evidentiary standard is a preponderance of the evidence.
37 CFR 42.200 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Procedure; pendency.

§ 42.200 Procedure; pendency. (a) A post-grant review is a trial subject to the procedures set forth in subpart A of this part. (b) In a post-grant 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 post-grant review proceeding will be considered. (c) A post-grant 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) Interferences commenced before September 16, 2012, shall proceed under part 41 of this chapter except as the Chief Administrative Patent Judge, acting on behalf of the Director, may otherwise order in the interests-of-justice. [77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 83 FR 51358, Oct. 11, 2018]
37 CFR 42.201 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Who may petition for a post-grant review.

§ 42.201 Who may petition for a post-grant review. A person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent unless: (a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent; or (b) 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.
37 CFR 42.202 — [Reserved] Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Time for filing.

§ 42.202 Time for filing. (a) A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent. A petition, however, may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent. (b) [Reserved] [77 FR 48729, Aug. 14, 2012, as amended at 84 FR 51982, Oct. 1, 2019]
37 CFR 42.204 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Content of petition.

§ 42.204 Content of petition. 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 certify that the patent for which review is sought is available for post-grant review and that the petitioner is not barred or estopped from requesting a post-grant review challenging the patent claims on the grounds identified in the petition. (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 35 U.S.C. 282(b)(2) or (3) 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 the 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 42.205 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Service of petition.

§ 42.205 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 patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner 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 42.206 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Filing date.

§ 42.206 Filing date. (a) Complete petition. A petition to institute a post-grant review will not be accorded a filing date until the petition satisfies all of the following requirements: (1) Complies with § 42.204 or § 42.304, as the case may be, (2) Effects service of the petition on the correspondence address of record as provided in § 42.205(a); and (3) Is accompanied by the filing fee in § 42.15(b). (b) Incomplete petition. Where a party files an incomplete petition, no filing date will be accorded and the Office will dismiss the request if the deficiency in the petition is not corrected within the earlier of either one month from the notice of an incomplete petition, or the expiration of the statutory deadline in which to file a petition for post-grant review.
37 CFR 42.207 — [Reserved] Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Preliminary response to petition.

§ 42.207 Preliminary response to petition. (a) The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no post-grant review should be instituted under 35 U.S.C. 324 and can include supporting evidence. The preliminary response is subject to the word count under § 42.24. (b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute a post-grant review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response. (c) [Reserved] (d) No amendment. The preliminary response shall not include any amendment. (e) Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims. [77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016]
37 CFR 42.208 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Institution of post-grant review.

§ 42.208 Institution of post-grant review. (a) When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. (b) At any time prior to institution of post-grant review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute post-grant review. (c) Post-grant review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause. (d) Additional grounds. Sufficient grounds under § 42.208(c) may be a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. [77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 85 FR 79129, Dec. 9, 2020]
37 CFR 42.20 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Generally.

§ 42.20 Generally. (a) Relief. Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion. (b) Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding. (c) Burden of proof. The moving party has the burden of proof to establish that it is entitled to the requested relief. (d) Briefing. The Board may order briefing on any issue involved in the trial.
37 CFR 42.21 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Notice of basis for relief.

§ 42.21 Notice of basis for relief. (a) Notice of request for relief. The Board may require a party to file a notice stating the relief it requests and the basis for its entitlement to relief. A notice must include sufficient detail to place the Board and each opponent on notice of the precise relief requested. A notice is not evidence except as an admission by a party-opponent. (b) Filing and service. The Board may set the times and conditions for filing and serving notices required under this section. The Board may provide for the notice filed with the Board to be maintained in confidence for a limited time. (c) Effect. If a notice under paragraph (a) of this section is required: (1) A failure to state a sufficient basis for relief may result in a denial of the relief requested; (2) A party will be limited to filing motions consistent with the notice; and (3) Ambiguities in the notice will be construed against the party. (d) 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 42.220 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Patent owner response.

§ 42.220 Patent owner response. (a) Scope. A patent owner may file a single response to the petition and/or decision on institution. A patent owner response is filed as an opposition and is subject to the page limits provided in § 42.24. (b) Due date for response. If no date for filing a patent owner response to a petition is provided in a Board order, the default date for filing a patent owner response is three months from the date the post-grant review is instituted. [77 FR 48729, Aug. 14, 2012, as amended at 85 FR 79129, Dec. 9, 2020]
37 CFR 42.221 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Amendment of the patent.

§ 42.221 Amendment of the patent. (a) Motion to amend. A patent owner may file one motion to amend a patent, but only after conferring with the Board. (1) Due date. Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response. (2) Scope. A motion to amend may be denied where: (i) The amendment does not respond to a ground of unpatentability involved in the trial; or (ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter. (3) A reasonable number of substitute claims. A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need. (b) Content. A motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and set forth: (1) The support in the original disclosure of the patent for each claim that is added or amended; and (2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought. (c) Additional motion to amend. In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1) of this section. (d) Burden of Persuasion. On a motion to amend: (1) A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 326(d), as well as paragraphs (a)(2), (a)(3), (b)(1), and (b)(2) of this section; (2) A petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable; and (3) Irrespective of paragraphs (d)(1) and (2) of this section, the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend only for reasons supported by readily identifiable and persuasive evidence of record. In doing so, the Board may make of record only readily identifiable and persuasive evidence in a related proceeding before the Office or evidence that a district court can judicially notice. Where the Board exercises its discretion under this paragraph, the parties will have an opportunity to respond. [77 FR 48729, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 85 FR 82935, Dec. 21, 2020]
37 CFR 42.222 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Multiple proceedings and Joinder.

§ 42.222 Multiple proceedings and Joinder. (a) Multiple proceedings. Where another matter involving the patent is before the Office, the Board may during the pendency of the post-grant review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter. (b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.
37 CFR 42.223 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Filing of supplemental information.

§ 42.223 Filing of supplemental information. (a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements: (1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted. (2) The supplemental information must be relevant to a claim for which the trial has been instituted. (b) Late submission of supplemental information. A party seeking to submit supplemental information more than one month after the date the trial is instituted, must request authorization to file a motion to submit the information. The motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice. (c) Other supplemental information. A party seeking to submit supplemental information not relevant to a claim for which the trial has been instituted must request authorization to file a motion to submit the information. The motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
37 CFR 42.224 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Discovery.

§ 42.224 Discovery. Notwithstanding the discovery provisions of subpart A: (a) Requests for additional discovery may be granted upon a showing of good cause as to why the discovery is needed; and (b) Discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding.
37 CFR 42.22 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Content of petitions and motions.

§ 42.22 Content of petitions and motions. (a) Each petition or motion must be filed as a separate paper and must include: (1) A statement of the precise relief requested; and (2) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent. (b) Relief requested. Where a rule in part 1 of this title ordinarily governs the relief sought, the petition or motion must make any showings required under that rule in addition to any showings required in this part. (c) Statement of material facts. Each petition or motion may include a statement of material fact. Each material fact preferably shall be set forth as a separately numbered sentence with specific citations to the portions of the record that support the fact. (d) The Board may order additional showings or explanations as a condition for authorizing a motion ( see § 42.20(b)).
37 CFR 42.23 — Trial Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Oppositions, replies, and sur-replies.

§ 42.23 Oppositions, replies, and sur-replies. (a) Oppositions, replies, and sur-replies must comply with the content requirements for motions and, if the paper to which the opposition, reply, or sur-reply is responding contains a statement of material fact, must include a listing of facts that are admitted, denied, or cannot be admitted or denied. Any material fact not specifically denied may 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, patent owner preliminary response, patent owner response, or decision on institution. A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness. [85 FR 79128, Dec. 9, 2020]