PART 41—PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135, and Public Law 112-29. Source: 69 FR 50003, Aug. 12, 2004, unless otherwise noted. Subpart A—General Provisions § 41.1 Policy. (a) Scope. (b) Construction. (c) Decorum. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012] § 41.2 Definitions. Unless otherwise clear from the context, the following definitions apply to proceedings under this part: Affidavit ex parte Board (1) For a final Board action: (i) In an appeal or contested case, a panel of the Board. (ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge. (2) For non-final actions, a Board member or employee acting with the authority of the Board. Board member Contested case inter partes Final (1) In a panel proceeding. (2) In other proceedings. Hearing Rehearing Office Panel Panel proceeding Party, (1) An appellant; (2) A participant in a contested case; (3) A petitioner; and (4) Counsel for any of the above, where context permits. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012] § 41.3 Petitions. (a) Deciding official. (b) Scope. (1) Issues committed by statute to a panel, and (2) In pending contested cases, procedural issues. See § 41.121(a)(3) and § 41.125(c). (c) Petition fee. (d) Effect on proceeding. (e) Time for action. (i) File the petition within 14 days from the date of the action from which the party is requesting relief, and (ii) File any request for reconsideration of a petition decision within 14 days of the decision on petition or such other time as the Board may set. (2) A party may not file an opposition or a reply to a petition without Board authorization. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004] § 41.4 Timeliness. (a) Extensions of time. (b) Late filings. (2) A late filing that does not result in either an application becoming abandoned or a reexamination prosecution becoming terminated under § 1.550(d) or § 1.957(b) of this title or limited under § 1.957(c) of this title will be excused upon a showing of excusable neglect or a Board determination that consideration on the merits would be in the interest of justice. (c) Scope. (1) Extensions during prosecution (see § 1.136 of this title), (2) Filing of a brief or request for oral hearing (see §§ 41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or (3) Seeking judicial review (see §§ 1.301 to 1.304 of this title). [69 FR 50003, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007] § 41.5 Counsel. While the Board has jurisdiction: (a) Appearance pro hac vice. (b) Disqualification. (2) A decision to disqualify is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge. (c) Withdrawal. See (d) Procedure. (e) Referral to the Director of Enrollment and Discipline. [69 FR 50003, Aug. 12, 2004, as amended at 73 FR 47704, Aug. 14, 2008; 78 FR 20211, Apr. 3, 2013] § 41.6 Public availability of Board records. (a) Publication Generally. (2) Determination of special circumstances. (b) Record of proceeding. (2) Notwithstanding paragraph (b)(1) of this section, after a final Board action 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 title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title. § 41.7 Management of the record. (a) The Board may expunge any paper directed to a Board proceeding, or filed while an application or patent is under the jurisdiction of the Board, that is not authorized under this part or in a Board order, or that is filed contrary to a Board order. (b) A party may not file a paper previously filed in the same Board proceeding, not even as an exhibit or appendix, without Board authorization or as required by rule. § 41.8 Mandatory notices. (a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify: (1) Its real party-in-interest, and (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding. (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title. § 41.9 Action by owner. (a) Entire interest. see (b) Part interest. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 48826, Aug. 14, 2012] § 41.10 Correspondence addresses. Except as the Board may otherwise direct, (a) Appeals. (b) Interferences. (c) Trial Proceedings. [77 FR 46630, Aug. 6, 2012] § 41.11 Ex Parte inter partes An ex parte inter partes § 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] § 41.20 Fees. (a) Petition fee. (b) Appeal fees. Table 1 to Paragraph ( b By a micro entity (§ 1.29) $181.00 By a small entity (§ 1.27(a)) 362.00 By other than a small or micro entity 905.00 (2)(i) For filing a brief in support of an appeal in an application or ex parte (ii) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal in an inter partes Table 2 to Paragraph ( b ii By a micro entity (§ 1.29) $452.00 By a small entity (§ 1.27(a)) 904.00 By other than a small or micro entity 2,260.00 (3) For filing a request for an oral hearing before the Board in an appeal under 35 U.S.C. 134: Table 3 to Paragraph ( b By a micro entity (§ 1.29) $292.00 By a small entity (§ 1.27(a)) 584.00 By other than a small or micro entity 1,460.00 (4) In addition to the fee for filing a notice of appeal, for forwarding an appeal in an application or ex parte Table 4 to Paragraph ( b By a micro entity (§ 1.29) $507.00 By a small entity (§ 1.27(a)) 1,014.00 By other than a small or micro entity 2,535.00 [78 FR 4290, Jan. 18, 2013, as amended at 82 FR 52817, Nov. 14, 2017; 85 FR 46993, Aug. 3, 2020; 88 FR 17158, Mar. 22, 2023; 89 FR 92011, Nov. 20, 2024] Subpart B— Ex Parte § 41.30 Definitions. In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context: Applicant Evidence Evidence Owner ex parte Proceeding ex parte inter partes Record Record Record [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011; 77 FR 46630, Aug. 6, 2012] § 41.31 Appeal to Board. (a) Who may appeal and how to file an appeal. (1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply. (2) Every owner of a patent under ex parte (3) Every owner of a patent under ex parte (b) The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section. (c) An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered. (d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011] § 41.33 Amendments and affidavits or other Evidence after appeal. (a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title. (b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted: (1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or (2) To rewrite dependent claims into independent form. (c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1). (d)(1) An affidavit or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other Evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other Evidence is necessary and was not earlier presented has been made. (2) All other affidavits or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1). [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011] § 41.35 Jurisdiction over appeal. (a) Beginning of jurisdiction. (b) End of jurisdiction. (1) The Director or the Board enters a remand order ( see (2) The Board enters a final decision ( see (3) An express abandonment which complies with § 1.138 of this title is recognized, (4) A request for continued examination is filed which complies with § 1.114 of this title, (5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or (6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board ( see (c) Remand ordered by the Director. see (d) Documents filed during Board's jurisdiction. (e) Administrative remands ordered by the Board. [76 FR 72297, Nov. 22, 2011] § 41.37 Appeal brief. (a) Timing. ex parte (b) Failure to file a brief. (c) Content of appeal brief. (i) Real party in interest. (ii) Related appeals, interferences, and trials. (iii) Summary of claimed subject matter. (iv) Argument. e.g., (v) Claims appendix. (2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See See (d) Notice of non-compliance. See (e) Extensions of time. ex parte [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72297, Nov. 22, 2011; 77 FR 46630, Aug. 6, 2012; 78 FR 4291, Jan. 18, 2013; 78 FR 17107, Mar. 20, 2013] § 41.39 Examiner's answer. (a) Content of examiner's answer. (1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn. (2) An examiner's answer may include a new ground of rejection. For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection. (b) Appellant's response to new ground of rejection. (1) Reopen prosecution. ex parte (2) Maintain appeal. (c) Extensions of time. ex parte [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72298, Nov. 22, 2011] § 41.40 Tolling of time period to file a reply brief. (a) Timing. (b) Petition granted and prosecution reopened. (c) Petition not granted and appeal maintained. (d) Withdrawal of petition and appeal maintained. (e) Extensions of time. ex parte [76 FR 72298, Nov. 22, 2011] § 41.41 Reply brief. (a) Timing. (b) Content. (2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. (c) Extensions of time. ex parte [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72298, Nov. 22, 2011] § 41.45 Appeal forwarding fee. (a) Timing. ex parte (b) Failure to pay appeal forwarding fee. (c) Extensions of time. See ex parte [78 FR 17107, Mar. 20, 2013] § 41.47 Oral hearing. (a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing. (b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner's answer or on the date of filing of a reply brief, whichever is earlier. (c) If no request and fee for oral hearing have been timely filed by appellant as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing. (d) If appellant has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered. (e)(1) Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant may only rely on Evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and Evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section. (2) Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court. (f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify appellant. (g) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72298, Nov. 22, 2011] § 41.50 Decisions and other actions by the Board. (a)(1) Affirmance and reversal. (2) If a substitute examiner's answer is written in response to a remand by the Board for further consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the substitute examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding: (i) Reopen prosecution. ex parte (ii) Maintain appeal. (b) New ground of rejection. (1) Reopen prosecution. (2) Request rehearing. (c) Review of undesignated new ground of rejection. (d) Request for briefing and information. (e) Remand not final action. (f) Extensions of time. ex parte [76 FR 72299, Nov. 22, 2011] § 41.52 Rehearing. (a)(1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. When a request for rehearing is made, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted. (4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted. (b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72299, Nov. 22, 2011] § 41.54 Action following decision. After decision by the Board, jurisdiction over an application or patent under ex parte ex parte [76 FR 72299, Nov. 22, 2011] Subpart C— Inter Partes § 41.60 Definitions. In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context: Appellant Filing Owner inter partes Proceeding inter partes ex parte inter partes Requester inter partes Respondent § 41.61 Notice of appeal and cross appeal to Board. (a)(1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1). (2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1). (b)(1) Within fourteen days of service of a requester's notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent. (2) Within fourteen days of service of an owner's notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent. (c) The notice of appeal or cross appeal in the proceeding must identify the appealed claim(s) and must be signed by the owner, the requester, or a duly authorized attorney or agent. (d) An appeal or cross appeal, when taken, must be taken from all the rejections of the claims in a Right of Appeal Notice which the patent owner proposes to contest or from all the determinations favorable to patentability, including any final determination not to make a proposed rejection, in a Right of Appeal Notice which a requester proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal is decided. (e) The time periods for filing a notice of appeal or cross appeal may not be extended. (f) If a notice of appeal or cross appeal is timely filed but does not comply with any requirement of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended notice of appeal or cross appeal. If the appellant does not then file an amended notice of appeal or cross appeal within the set time period, or files a notice which does not overcome all the reasons for non-compliance stated in the notification of the reasons for non-compliance, that appellant's appeal or cross appeal will stand dismissed. § 41.63 Amendments and affidavits or other evidence after appeal. (a) Amendments filed after the date of filing an appeal pursuant to § 41.61 canceling claims may be admitted where such cancellation does not affect the scope of any other pending claim in the proceeding. (b) All other amendments filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by § 41.77(b)(1). (c) Affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by reopening prosecution under § 41.77(b)(1). § 41.64 Jurisdiction over appeal in inter partes (a) Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and examiner's answers, to the Board. (b) If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file. (c) Prior to the entry of a decision on the appeal by the Board, the Director may sua sponte order the proceeding remanded to the examiner. § 41.66 Time for filing briefs. (a) An appellant's brief must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the proceeding is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant's brief or an amended appellant's brief may not be extended. (b) Once an appellant's brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant's brief. The time for filing a respondent's brief or an amended respondent's brief may not be extended. (c) The examiner will consider both the appellant's and respondent's briefs and may prepare an examiner's answer under § 41.69. (d) Any appellant may file a rebuttal brief under § 41.71 within one month of the date of the examiner's answer. The time for filing a rebuttal brief or an amended rebuttal brief may not be extended. (e) No further submission will be considered and any such submission will be treated in accordance with § 1.939 of this title. § 41.67 Appellant's brief. (a)(1) Appellant(s) may once, within time limits for filing set forth in § 41.66, file a brief and serve the brief on all other parties to the proceeding in accordance with § 1.903 of this title. (2) The brief must be signed by the appellant, or the appellant's duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2). (b) An appellant's appeal shall stand dismissed upon failure of that appellant to file an appellant's brief, accompanied by the requisite fee, within the time allowed under § 41.66(a). (c)(1) The appellant's brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (c)(1)(xi) of this section. (i) Real party in interest. (ii) Related appeals, interferences, and trials. (iii) Status of claims. (iv) Status of amendments. (v) Summary of claimed subject matter. (vi) Issues to be reviewed on appeal. (vii) Argument. (viii) Claims appendix. (ix) Evidence appendix. (x) Related proceedings appendix. (xi) Certificate of service. (2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence after the date of filing the appeal. (d) If a brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant's appeal will stand dismissed. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012] § 41.68 Respondent's brief. (a)(1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66, file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title. (2) The brief must be signed by the party, or the party's duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 41.20(b)(2). (3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed. (4) A requester's respondent brief may not address any brief of any other requester. (b)(1) The respondent brief shall contain the following items under appropriate headings and in the order here indicated, and may include an appendix containing only those portions of the record on which reliance has been made. (i) Real Party in Interest. (ii) Related Appeals, Interferences, and trials. (iii) Status of claims. (iv) Status of amendments. (v) Summary of claimed subject matter. (vi) Issues to be reviewed on appeal. (vii) Argument. (viii) Evidence appendix. (ix) Related proceedings appendix. (x) Certificate of service. (2) A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal. (c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent will not be considered. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012] § 41.69 Examiner's answer. (a) The primary examiner may, within such time as directed by the Director, furnish a written answer to the owner's and/or requester's appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references relied upon, the grounds of rejection, and the reasons for patentability, including grounds for not adopting any proposed rejection. A copy of the answer shall be supplied to the owner and all requesters. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to an appealable action, the primary examiner shall make such determination of record. (b) An examiner's answer may not include a new ground of rejection. (c) An examiner's answer may not include a new determination not to make a proposed rejection of a claim. (d) Any new ground of rejection, or any new determination not to make a proposed rejection, must be made in an Office action reopening prosecution. § 41.71 Rebuttal brief. (a) Within one month of the examiner's answer, any appellant may once file a rebuttal brief. (b)(1) The rebuttal brief of the owner may be directed to the examiner's answer and/or any respondent brief. (2) The rebuttal brief of the owner shall not include any new or non-admitted amendment, or an affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal. (c)(1) The rebuttal brief of any requester may be directed to the examiner's answer and/or the respondent brief of the owner. (2) The rebuttal brief of a requester may not be directed to the respondent brief of any other requester. (3) No new ground of rejection can be proposed by a requester. (4) The rebuttal brief of a requester shall not include any new or non-admitted affidavit or other evidence. See § 1.116(d) of this title for affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63(c) for affidavits or other evidence filed after the date of filing the appeal. (d) The rebuttal brief must include a certification that a copy of the rebuttal brief has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated. (e) If a rebuttal brief is timely filed under paragraph (a) of this section but does not comply with all the requirements of paragraphs (a) through (d) of this section, appellant will be notified of the reasons for non-compliance and provided with a non-extendable period of one month within which to file an amended rebuttal brief. If the appellant does not file an amended rebuttal brief during the one-month period, or files an amended rebuttal brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant's rebuttal brief and any amended rebuttal brief by that appellant will not be considered. § 41.73 Oral hearing. (a) An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing. (b) If an appellant or a respondent desires an oral hearing, he or she must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months after the date of the examiner's answer. The time for requesting an oral hearing may not be extended. The request must include a certification that a copy of the request has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated. (c) If no request and fee for oral hearing have been timely filed by appellant or respondent as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing. (d) If appellant or respondent has complied with all the requirements of paragraph (b) of this section, a hearing date will be set, and notice given to the owner and all requesters. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. The notice shall set a non-extendable period within which all requests for oral hearing shall be submitted by any other party to the appeal desiring to participate in the oral hearing. A hearing will be held as stated in the notice, and oral argument will be limited to thirty minutes for each appellant or respondent who has requested an oral hearing, and twenty minutes for the primary examiner unless otherwise ordered. No appellant or respondent will be permitted to participate in an oral hearing unless he or she has requested an oral hearing and submitted the fee set forth in § 41.20(b)(3). (e)(1) At the oral hearing, each appellant and respondent may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the briefs except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section. The Board will determine the order of the arguments presented at the oral hearing. (2) Upon a showing of good cause, appellant, respondent and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court. (f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify the owner and all requesters. § 41.77 Decisions and other actions by the Board. (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent Trial and Appeal Board as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. (b) Should the Board reverse the examiner's determination not to make a rejection proposed by a requester, the Board shall set forth in the opinion in support of its decision a new ground of rejection; or should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim. Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim: (1) Reopen prosecution. (2) Request rehearing. (c) Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within one month of the date of service of the owner's response, may once file comments on the response. Such written comments must be limited to the issues raised by the Board's opinion reflecting its decision and the owner's response. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply. (d) Following any response by the owner under paragraph (b)(1) of this section and any written comments from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any written comments by a requester under paragraph (c) of this section and issue a determination that the rejection is maintained or has been overcome. (e) Within one month of the examiner's determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner's determination. Within one month of the date of service of comments in response to the examiner's determination, the owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply. (f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn. (g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956 of this title when the owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the owner is responding under paragraph (b)(2) of this section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012] § 41.79 Rehearing. (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a), (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2), (3) The expiration of the time for the owner to take action under § 41.77(b)(2), or (4) The new decision of the Board under § 41.77(f). (b)(1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board's opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted. (c) Within one month of the date of service of any request for rehearing under paragraph (a) of this section, or any further request for rehearing under paragraph (d) of this section, the owner and all requesters may once file comments in opposition to the request for rehearing or the further request for rehearing. The comments in opposition must be limited to the issues raised in the request for rehearing or the further request for rehearing. (d) If a party to an appeal files a request for rehearing under paragraph (a) of this section, or a further request for rehearing under this section, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing becomes, in effect, a new decision, and the Board so indicates, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision under this subsection. Such further request for rehearing must comply with paragraph (b) of this section. (e) The times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. § 41.81 Action following decision. The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board. Subpart D—Contested Cases § 41.100 Definitions. In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart: Business day Involved § 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. § 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. § 41.103 Jurisdiction over involved files. The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order. § 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. § 41.106 Filing and service. (a) General format requirements. 1/2 (2) In papers, including affidavits, created for the proceeding: (i) Markings must be in black ink or must otherwise provide an equivalently permanent, dark, high-contrast image on the paper. The quality of printing must be equivalent to the quality produced by a laser printer. Either a proportional or monospaced font may be used, but the proportional font must be 12-point or larger and a monospaced font must not contain more than 4 characters per centimeter (10 characters per inch). Case names must be underlined or italicized. (ii) Double spacing must be used except in headings, tables of contents, tables of authorities, indices, signature blocks, and certificates of service. Block quotations may be single-spaced and must be indented. Margins must be at least 2.5 centimeters (1 inch) on all sides. (b) Papers other than exhibits Cover sheet. (ii) If the Board specifies a color other than white for the cover sheet, the cover sheet must be that color. (2) Papers must have two 0.5 cm ( 1/4 1/2 3/4 (3) Incorporation by reference; combined papers. (4) Exhibits. (c) Working copy. (d) Specific filing forms Filing by mail. (2) Other modes of filing. (e) Service. (2) If a party is represented by counsel, service must be on counsel. (3) Service must be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®. Electronic service is not permitted without Board authorization. (4) The date of service does not count in computing the time for responding. (f) Certificate of service. (2) Exhibits must be accompanied by a certificate of service, but a single certificate may accompany any group of exhibits submitted together. (3) A certificate of service must state: (i) The date and manner of service, (ii) The name and address of every person served, and (iii) For exhibits filed as a group, the name and number of each exhibit served. (4) A certificate made by a person other than a registered practitioner must be in the form of an affidavit. [69 FR 50003, Aug. 12, 2004, as amended at 79 FR 63043, Oct. 22, 2014; 88 FR 78650, Nov. 16, 2023] § 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. § 41.109 Access to and copies of Office records. (a) Request for access or copies. (b) Authorization of access and copies. (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. § 41.110 Filing claim information. (a) Clean copy of claims. (b) Annotated copy of claims. (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] § 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. (c) Correction. § 41.121 Motions. (a) Types of motions Substantive motions. (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. (3) Miscellaneous motions. (b) Burden of proof. (c) Content of motions; oppositions and replies. (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. (3) The Board may order additional showings or explanations as a condition for filing a motion. (d) Statement of material facts. (2) The Board may require that the statement of material facts be submitted as a separate paper. (e) Claim charts. (f) The Board may order briefing on any issue that could be raised by motion. § 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. § 41.123 Default filing times. (a) A motion, (1) An opposition (2) A reply (3) A responsive motion (b) Miscellaneous motions. (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 (ii) A reply (c) Exhibits. § 41.124 Oral argument. (a) Request for oral argument. (b) Copies for panel. (c) Length of argument. (d) Demonstrative exhibits (e) Transcription. § 41.125 Decision on motions. (a) Order of consideration. (b) Interlocutory decisions. (c) Rehearing Time for request. (2) No tolling. (3) Burden on rehearing. (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. (5) Panel rehearing. § 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. § 41.127 Judgment. (a) Effect within Office Estoppel. (2) Final disposal of claim. (b) Request for adverse judgment. (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. (d) Rehearing. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004] § 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. § 41.150 Discovery. (a) Limited discovery. (b) Automatic discovery. (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. (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. § 41.151 Admissibility. Evidence that is not taken, sought, or filed in accordance with this subpart shall not be admissible. § 41.152 Applicability of the Federal Rules of Evidence. (a) Generally. (b) Exclusions. (c) Modifications in terminology. Appellate court Civil action, civil proceeding, action, trial Courts of the United States, U.S. Magistrate, court, trial court, trier of fact Hearing (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 Judicial notice Trial or hearing (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. § 41.153 Records of the Office. Certification is not necessary as a condition to admissibility when the evidence to be submitted is a record of the Office to which all parties have access. § 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. (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. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004] § 41.155 Objection; motion to exclude; motion in limine. (a) Deposition. (b) Other than deposition. (1) Objection. (2) Supplemental evidence. (c) Motion to exclude. (d) Motion in limine. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004] § 41.156 Compelling testimony and production. (a) Authorization required. (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. (1) In the case of testimony. (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. (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. § 41.157 Taking testimony. (a) Form. (b) Time and location. Uncompelled direct testimony (2) Other testimony. (ii) Testimony outside the United States may only be taken as the Board specifically directs. (c) Notice of deposition. (2) Cross-examination should ordinarily take place after any supplemental evidence relating to the direct testimony has been filed and more than a week before the filing date for any paper in which the cross-examination testimony is expected to be used. A party requesting cross-examination testimony of more than one witness may choose the order in which the witnesses are to be cross-examined. (3) In the case of direct testimony, at least three business days prior to the conference in paragraph (c)(1) of this section, the party seeking the direct testimony must serve: (i) A list and copy of each document under the party's control and on which the party intends to rely, and (ii) A list of, and proffer of reasonable access to, any thing other than a document under the party's control and on which the party intends to rely. (4) Notice of the deposition must be filed at least two business days before a deposition. The notice limits the scope of the testimony and must list: (i) The time and place of the deposition, (ii) The name and address of the witness, (iii) A list of the exhibits to be relied upon during the deposition, and (iv) A general description of the scope and nature of the testimony to be elicited. (5) Motion to quash. (d) Deposition in a foreign language. (e) Manner of taking testimony. (2) The testimony shall be taken in answer to interrogatories with any questions and answers recorded in their regular order by the officer, or by some other disinterested person in the presence of the officer, unless the presence of the officer is waived on the record by agreement of all parties. (3) Any exhibits relied upon must be numbered according to the numbering scheme assigned for the contested case and must, if not previously served, be served at the deposition. (4) All objections made at the time of the deposition to the qualifications of the officer taking the deposition, the manner of taking it, the evidence presented, the conduct of any party, and any other objection to the proceeding shall be noted on the record by the officer. Evidence objected to shall be taken subject to a ruling on the objection. (5) When the testimony has been transcribed, the witness shall read and sign (in the form of an affidavit) a transcript of the deposition unless: (i) The parties otherwise agree in writing, (ii) The parties waive reading and signature by the witness on the record at the deposition, or (iii) The witness refuses to read or sign the transcript of the deposition. (6) The officer shall prepare a certified transcript by attaching to the transcript of the deposition a certificate in the form of an affidavit signed and sealed by the officer. Unless the parties waive any of the following requirements, in which case the certificate shall so state, the certificate must state: (i) The witness was duly sworn by the officer before commencement of testimony by the witness; (ii) The transcript is a true record of the testimony given by the witness; (iii) The name of the person who recorded the testimony and, if the officer did not record it, whether the testimony was recorded in the presence of the officer; (iv) The presence or absence of any opponent; (v) The place where the deposition was taken and the day and hour when the deposition began and ended; (vi) The officer has no disqualifying interest, personal or financial, in a party; and (vii) If a witness refuses to read or sign the transcript, the circumstances under which the witness refused. (7) The officer must promptly provide a copy of the transcript to all parties. The proponent of the testimony must file the original as an exhibit. (8) Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed miscellaneous motion to exclude. (f) Costs. § 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. Subpart E—Patent Interferences § 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] § 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 Constructive reduction to practice Count Involved claim Senior party junior party. Threshold issue (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] § 41.202 Suggesting an interference. (a) Applicant. (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference, (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts, (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a), (4) Explain in detail why the applicant will prevail on priority, (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant's specification, and (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter. (b) Patentee. (c) Examiner. (1) Be patentable to the applicant, and (2) Be drawn to patentable subject matter claimed by another applicant or patentee. (d) Requirement to show priority under 35 U.S.C. 102(g). (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties. (e) Sufficiency of showing. (2) When testimony or production necessary to show priority is not available without authorization under § 41.150(c) or § 41.156(a), the showing shall include: (i) Any necessary interrogatory, request for admission, request for production, or deposition request, and (ii) A detailed proffer of what the response to the interrogatory or request would be expected to be and an explanation of the relevance of the response to the question of priority. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 42174, July 17, 2012] § 41.203 Declaration. (a) Interfering subject matter. (b) Notice of declaration. (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. (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. § 41.204 Notice of basis for relief. (a) Priority statement. (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. (c) Filing and service. § 41.205 Settlement agreements. (a) Constructive notice; time for filing. (b) Untimely filing. (c) Request to keep separate. (d) Access to agreement. § 41.206 Common interests in the invention. An administrative patent judge may decline to declare, or if already declared the Board may issue judgment in, an interference between an application and another application or patent that are commonly owned. § 41.207 Presumptions. (a) Priority Order of invention. (2) Evidentiary standard. (b) Claim correspondence. (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. § 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. (2) A party moving to add or amend a count must show the count is patentable over prior art.