PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Authority: 35 U.S.C. 2(b)(2), 3, 6, 21, 23, 41, 134, 135, 143, 153, 311, 312, 314, 316, 318, 321-326, 328; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat. 2456. Source: 77 FR 48669, Aug. 14, 2012, unless otherwise noted. Subpart A—Trial Practice and Procedure General § 42.1 Policy. (a) Scope. (b) Construction. (c) Decorum. (d) Evidentiary standard. § 42.2 Definitions. The following definitions apply to this part: Affidavit ex parte Board (1) For petition decisions and interlocutory decisions, a Board member or employee acting with the authority of the Board. (2) For final written decisions under 35 U.S.C. 135(d), 318(a), and 328(a), a panel of the Board. Business day Confidential information Final Hearing Involved Judgment Motion Office Panel Party Petition Petitioner Preliminary Proceeding Proceeding Rehearing Trial inter partes § 42.3 Jurisdiction. (a) The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order. (b) A petition to institute a trial must be filed with the Board consistent with any time period required by statute. § 42.4 Notice of trial. (a) Institution of trial. (b) Notice of a trial will be sent to every party to the proceeding. The entry of the notice institutes the trial. (c) The Board may authorize additional modes of notice, including: (1) Sending notice to another address associated with the party, or (2) Publishing the notice in the Official Gazette of the United States Patent and Trademark Office or the Federal Register. § 42.5 Conduct of the proceeding. (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) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension. (c) Times. Setting times. (2) Extension of time. (3) Late action. (d) Ex parte communications. § 42.6 Filing of documents, including exhibits; service. (a) General format requirements. 1/2 (2) In documents, including affidavits, created for the proceeding: (i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image; (ii) 14-point, Times New Roman proportional font, with normal spacing, must be used; (iii) Double spacing must be used except in claim charts, headings, tables of contents, tables of authorities, indices, signature blocks, and certificates of service. Block quotations may be 1.5 spaced, but must be indented from both the left and the right margins; and (iv) Margins must be at least 2.5 centimeters (1 inch) on all sides. (3) Incorporation by reference; combined documents. (4) Signature; identification. (b) Modes of filing. Electronic filing. (2)(i) Filing by means other than electronic filing. (A) Be accompanied by a motion requesting acceptance of the submission; and (B) Identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. (ii) Mailed correspondence shall be sent to: Mail Stop PATENT BOARD, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. (c) Exhibits. (d) Previously filed paper. (e) Service. Electronic or other mode. (2) Simultaneous with filing. (3) Counsel of record. (4) Certificate of service. (ii) For an exhibit filed separately, a transmittal letter incorporating the certificate of service must be filed. If more than one exhibit is filed at one time, a single letter should be used for all of the exhibits filed together. The letter must state the name and exhibit number for every exhibit filed with the letter. (iii) The certificate of service must state: (A) The date and manner of service; and (B) The name and address of every person served. [77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014; 80 FR 28565, May 19, 2015] § 42.7 Management of the record. (a) The Board may expunge any paper directed to a 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) The Board may vacate or hold in abeyance any non-Board action directed to a proceeding while an application or patent is under the jurisdiction of the Board unless the action was authorized by the Board. § 42.8 Mandatory notices. (a) Each notice listed in paragraph (b) of this section must be filed with the Board: (1) By the petitioner, as part of the petition; (2) By the patent owner, or applicant in the case of derivation, within 21 days of service of the petition; or (3) By either party, within 21 days of a change of the information listed in paragraph (b) of this section stated in an earlier paper. (b) Each of the following notices must be filed: (1) Real party-in-interest. (2) Related matters. (3) Lead and back-up counsel. (4) Service information. (i) An electronic mail address; (ii) A postal mailing address; (iii) A hand-delivery address, if different than the postal mailing address; (iv) A telephone number; and (v) A facsimile number. § 42.9 Action by patent owner. (a) Entire interest. see (b) Part interest. § 42.10 Counsel. (a) If a party is represented by counsel, the party must designate a lead counsel and at least one back-up counsel who can conduct business on behalf of the lead counsel. Lead counsel must be a registered practitioner. The Board may permit a party to proceed without back-up counsel upon a showing of good cause. A party may show good cause by demonstrating that it lacks the financial resources to retain both lead and back-up counsel. (b) A power of attorney must be filed with the designation of counsel, except the patent owner should not file an additional power of attorney if the designated counsel is already counsel of record in the subject patent or application. (c)(1) Pro hac vice recognition of a person other than a registered practitioner. pro hac vice pro hac vice (2) Pro hac vice recognition of provisionally recognized PTAB attorneys. pro hac vice pro hac vice pro hac vice (ii) If a party seeks to be represented in a proceeding by a provisionally recognized PTAB attorney, that party may file a notice of intent to designate a provisionally recognized PTAB attorney as back-up counsel. No fee is required for such a notice. The notice shall: (A) Identify a registered practitioner who will serve as lead counsel, and (B) Be accompanied by a certification in the form of a declaration or affidavit in which the provisionally recognized PTAB attorney attests to satisfying all requirements set forth by the Board for pro hac vice et seq. (iii) Any objection shall be filed by a party within five business days after the filing of the notice. If an objection is not filed within five business days, the provisionally recognized PTAB attorney shall be deemed admitted pro hac vice pro hac vice (iv) If a provisionally recognized PTAB attorney is unable to satisfy any of the requirements set forth by the Board, or is unable to make any of the required attestations under oath, this procedure is not available, and pro hac vice (3) Continuing duty of persons recognized pro hac vice. pro hac vice (i) The counsel who is not a registered practitioner is sanctioned, cited for contempt, suspended, disbarred, or denied admission by any court or administrative agency; (ii) The counsel who is not a registered practitioner no longer qualifies as a member in good standing of the Bar of at least one State or the District of Columbia; or (iii) Any other event occurs that renders materially inaccurate or incomplete any representation that was made to the Board in connection with the request for pro hac vice pro hac vice (d) A panel of the Board may disqualify counsel for cause after notice and opportunity for hearing. A decision to disqualify is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge. (e) Counsel may not withdraw from a proceeding before the Board unless the Board authorizes such withdrawal. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015; 89 FR 82178, Oct. 10, 2024] § 42.11 Duty of candor; signing papers; representations to the Board; sanctions. (a) Duty of candor. (b) Signature. (c) Representations to the Board. (d) Sanctions In general. (2) Motion for sanctions. (3) On the Board's initiative. (4) Nature of a sanction. (5) Requirements for an order. [81 FR 18765, Apr. 1, 2016] § 42.12 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 argument or request for relief; (3) Misrepresentation of a fact; (4) Engaging in dilatory tactics; (5) Abuse of discovery; (6) Abuse of process; or (7) Any other improper use of the proceeding, including actions that harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding. (b) Sanctions include entry of one or more of the following: (1) An order holding 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 providing for compensatory expenses, including attorney fees; (7) An order requiring terminal disclaimer of patent term; or (8) Judgment in the trial or dismissal of the petition. § 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. § 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. Fees § 42.15 Fees. (a) On filing a petition for inter partes (1) Inter Partes (2) Inter Partes (3) In addition to the Inter Partes (4) In addition to the Inter Partes (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—up to 20 claims: $25,000.00. (2) Post-Grant or Covered Business Method Patent Review Post-Institution fee—up to 20 claims: $34,375.00. (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: $595.00. (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: $1,315.00. (c) On the filing of a petition for a derivation proceeding, payment of the following fee is due: (1) Derivation petition fee: $452.00. (2) [Reserved] (d) Any request requiring payment of a fee under this part, including a written request to make a settlement agreement available: $452.00. (e) Fee for counsel who are not registered practitioners, and who are not seeking automatic recognition pursuant to § 42.10(c)(2), to appear pro hac vice (f) Fee for requesting a review of a Patent Trial and Appeal Board decision by the Director: $452.00. [85 FR 46993, Aug. 3, 2020, as amended at 89 FR 82178, Oct. 10, 2024; 89 FR 92011, Nov. 20, 2024; 90 FR 3037, Jan. 14, 2025] Petition and Motion Practice § 42.20 Generally. (a) Relief. (b) Prior authorization. (c) Burden of proof. (d) Briefing. § 42.21 Notice of basis for relief. (a) Notice of request for relief. (b) Filing and service. (c) Effect. (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. § 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. (c) Statement of material facts. (d) The Board may order additional showings or explanations as a condition for authorizing a motion ( see § 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] § 42.24 Type-volume or page limits for petitions, motions, oppositions, replies, and sur-replies. (a) Petitions and motions. (i) Petition requesting inter partes (ii) Petition requesting post-grant review: 18,700 words. (iii) Petition requesting covered business method patent review: 18,700 words. (iv) Petition requesting derivation proceeding: 14,000 words. (v) Motions (excluding motions to amend): 15 pages. (vi) Motions to Amend: 25 pages. (2) Petitions to institute a trial must comply with the stated word counts but may be accompanied by a motion to waive the word counts. The petitioner must show in the motion how a waiver of the word counts is in the interests of justice and must append a copy of proposed petition exceeding the word count to the motion. If the motion is not granted, the proposed petition exceeding the word count may be expunged or returned. Any other motion to waive word counts or page limits must be granted in advance of filing a motion, opposition, or reply for which the waiver is necessary. (b) Patent owner responses and oppositions. (1) The word counts for a patent owner preliminary response to petition are the same as the word counts for the petition. (2) The word counts for a patent owner response to petition are the same as the word counts for the petition. (3) The page limits for oppositions are the same as those for corresponding motions. (c) Replies and sur-replies. (1) Replies to patent owner responses to petitions: (2) Replies to oppositions (excluding replies to oppositions to motions to amend): (3) Replies to oppositions to motions to amend: (4) Sur-replies to replies to patent owner responses to petitions: (d) Certification. [81 FR 18765, Apr. 1, 2016, as amended at 81 FR 24703, Apr. 27, 2016; 85 FR 79128, Dec. 9, 2020] § 42.25 Default filing times. (a) A motion may only be filed according to a schedule set by the Board. The default times for acting are: (1) An opposition is due one month after service of the motion; and (2) A reply is due one month after service of the opposition. (b) A party should seek relief promptly after the need for relief is identified. Delay in seeking relief may justify a denial of relief sought. Testimony and Production § 42.51 Discovery. (a) Mandatory initial disclosures. (1) With agreement. (i) The parties must submit any agreement reached on initial disclosures by no later than the filing of the patent owner preliminary response or the expiration of the time period for filing such a response. The initial disclosures of the parties shall be filed as exhibits. (ii) Upon the institution of a trial, parties may automatically take discovery of the information identified in the initial disclosures. (2) Without agreement. (b) Limited discovery. (1) Routine discovery. (i) Unless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony. (ii) Cross examination of affidavit testimony prepared for the proceeding is authorized within such time period as the Board may set. (iii) Unless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency. This requirement does not make discoverable anything otherwise protected by legally recognized privileges such as attorney-client or attorney work product. This requirement extends to inventors, corporate officers, and persons involved in the preparation or filing of the documents or things. (2) Additional discovery. see (ii) When appropriate, a party may obtain production of documents and things during cross examination of an opponent's witness or during authorized compelled testimony under § 42.52. (c) Production of documents. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015] § 42.52 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 travel expenses of the witness to 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 or thing 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. § 42.53 Taking testimony. (a) Form. (b) Time and location. (2) Except as the Board otherwise orders, during the testimony period, deposition testimony may be taken at any reasonable time and location within the United States before any disinterested official authorized to administer oaths at that location. (3) Uncompelled deposition testimony outside the United States may only be taken upon agreement of the parties or as the Board specifically directs. (c) Duration. (2) Unless stipulated by the parties or ordered by the Board, cross-examination, redirect examination, and re-cross examination for uncompelled direct testimony shall be subject to the follow time limits: Seven hours for cross-examination, four hours for redirect examination, and two hours for re-cross examination. (d) 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 deposition testimony, at least three business days prior to the conference in paragraph (d)(1) of this section, or if there is no conference, at least ten days prior to the deposition, 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, anything other than a document under the party's control and on which the party intends to rely. (4) The party seeking the deposition must file a notice of the deposition at least ten business days before a deposition. (5) Scope and content (A) The time and place of the deposition; (B) The name and address of the witness; (C) A list of the exhibits to be relied upon during the deposition; and (D) A general description of the scope and nature of the testimony to be elicited. (ii) For cross-examination testimony, the scope of the examination is limited to the scope of the direct testimony. (iii) The notice must list the time and place of the deposition. (iv) Where an additional party seeks to take direct testimony of a third party witness at the time and place noticed in paragraph (d)(5) of this section, the additional party must provide a counter notice that lists the exhibits to be relied upon in the deposition and a general description of the scope and nature of the testimony to be elicited. (6) Motion to quash (e) Deposition in a foreign language. (f) Manner of taking deposition testimony. (2) The testimony shall be taken 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 used during the deposition must be numbered as required by § 42.63(c), and must, if not previously served, be served at the deposition. Exhibits objected to shall be accepted pending a decision on the objection. (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 deposition shall be noted on the record by the officer. (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 a certificate in the form of an affidavit signed and sealed by the officer to the transcript of the deposition. 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) Except where the parties agree otherwise, the proponent of the testimony must arrange for providing a copy of the transcript to all other parties. The testimony must be filed 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 motion to exclude. (g) Costs. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015] § 42.54 Protective order. (a) A party may file a motion to seal where the motion to seal contains a proposed protective order, such as the default protective order set forth in the Office Patent Trial Practice Guide. The motion must include a certification that the moving party has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute. The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information, including, but not limited to, one or more of the following: (1) Forbidding the disclosure or discovery; (2) Specifying terms, including time and place, for the disclosure or discovery; (3) Prescribing a discovery method other than the one selected by the party seeking discovery; (4) Forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain matters; (5) Designating the persons who may be present while the discovery is conducted; (6) Requiring that a deposition be sealed and opened only by order of the Board; (7) Requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way; and (8) Requiring that the parties simultaneously file specified documents or information in sealed envelopes, to be opened as the Board directs. (b) [Reserved] § 42.55 Confidential information in a petition. A petitioner filing confidential information with a petition may, concurrent with the filing of the petition, file a motion to seal with a proposed protective order as to the confidential information. The institution of the requested trial will constitute a grant of the motion to seal unless otherwise ordered by the Board. (a) Default protective order. (b) Protective orders other than default protective order. (1) agreeing to the terms of the protective order requested by the petitioner; (2) agreeing to the terms of a protective order that the parties file jointly; or (3) obtaining entry of a protective order ( e.g., § 42.56 Expungement of confidential information. After denial of a petition to institute a trial or after final judgment in a trial, a party may file a motion to expunge confidential information from the record. § 42.57 Privilege for patent practitioners. (a) Privileged communications. (b) Definitions. (c) Scope of coverage. [82 FR 51575, Nov. 7, 2017] § 42.61 Admissibility. (a) Evidence that is not taken, sought, or filed in accordance with this subpart is not admissible. (b) Records of the Office. (c) Specification and drawings. § 42.62 Applicability of the Federal rules of evidence. (a) Generally. (b) Exclusions. (c) Modifications in terminology. Appellate court Civil action, civil proceeding, action Courts of the United States, U.S. Magistrate, court, trial court, trier of fact, judge Hearing Judicial notice Trial hearing (d) In determining foreign law, the Board may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence. § 42.63 Form of evidence. (a) Exhibits required. (b) Translation required. (c) Exhibit numbering. (d) Exhibit format. (1) Each exhibit must have an exhibit label. (i) An exhibit filed with the petition must include the petitioner's name followed by a unique exhibit number. (ii) For exhibits not filed with the petition, the exhibit label must include the party's name followed by a unique exhibit number, the names of the parties, and the trial number. (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. (e) Exhibit list. § 42.64 Objection; motion to exclude. (a) Deposition evidence. (b) Other evidence. (1) Objection. (2) Supplemental evidence. (c) Motion to exclude. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015] § 42.65 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 or patent examination practice 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. Oral Argument, Decision, and Settlement § 42.70 Oral argument. (a) Request for oral argument. (b) Demonstrative exhibits must be served at least seven business days before the oral argument and filed no later than the time of the oral argument. [77 FR 48669, Aug. 14, 2012, as amended at 81 FR 18765, Apr. 1, 2016] § 42.71 Decision on petitions or motions. (a) Order of consideration. (b) Interlocutory decisions. (c) Petition decisions. (d) Rehearing. (1) Within 14 days of the entry of a non-final decision or a decision to institute a trial as to at least one ground of unpatentability asserted in the petition; or (2) Within 30 days of the entry of a final decision or a decision not to institute a trial. [77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015; 85 FR 79129, Dec. 9, 2020] § 42.72 Termination of trial. The Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. 317(a) or 327(a). § 42.73 Judgment. (a) A judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided. (b) Request for adverse judgment. (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. (c) Recommendation. (d) Estoppel. Petitioner other than in derivation proceeding. inter partes (2) In a derivation, (3) Patent applicant or owner. (i) A claim that is not patentably distinct from a finally refused or canceled claim; or (ii) An amendment of a specification or of a drawing that was denied during the trial proceeding, but this provision does not apply to an application or patent that has a different written description. § 42.74 Settlement. (a) Board role. (b) Agreements in writing. (c) Request to keep separate. (1) To a Government agency on written request to the Board; or (2) To any other person upon written request to the Board to make the settlement agreement available, along with the fee specified in § 42.15(d) and on a showing of good cause. § 42.75 Director review. (a) Director Review generally. (b) Sua sponte Director review. (c) Requests for Director review. (1) Timing. (2) Format and length. (3) Content. (d) Final agency decision. (1) A party requests rehearing or Director Review within the time provided by § 42.71(d) or an extension of time for a request for Director Review is granted pursuant to paragraph (c)(1) of this section; or (2) The Director initiates sua sponte review as provided by § 42.75(b). Upon denial of a request for Director Review of a final decision, of a decision granting rehearing of a final decision, or of any other decision concluding a proceeding brought under 35 U.S.C. 135, 311, or 321, the Board's decision becomes the final agency decision. (e) Process Effect on underlying proceeding. (2) Grant and scope. (3) Appeal. (f) Delegation. (g) Ex parte communications. [89 FR 79751, Oct. 1, 2024] Certificate § 42.80 Certificate. After the Board issues a final written decision in an inter partes Subpart B— Inter Partes Source: 77 FR 48727, Aug. 14, 2012, unless otherwise noted. General § 42.100 Procedure; pendency. (a) An inter partes (b) In an inter partes inter partes (c) An inter partes [77 FR 48727, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 83 FR 51358, Oct. 11, 2018] § 42.101 Who may petition for inter partes A person who is not the owner of a patent may file with the Office a petition to institute an inter partes (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; (b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent; or (c) 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. § 42.102 Time for filing. (a) A petition for inter partes (1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent; (2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or (3) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review. (b) [Reserved] [77 FR 48727, Aug. 14, 2012, as amended at 78 FR 17874, Mar. 25, 2013; 84 FR 51982, Oct. 1, 2019] § 42.103 Inter partes (a) An inter partes § 42.104 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. inter partes inter partes (b) Identification of challenge. (1) The claim; (2) The specific statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground; (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. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; 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. § 42.105 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] § 42.106 Filing date. (a) Complete petition. inter partes (1) Complies with § 42.104; (2) Effects service of the petition on the correspondence address of record as provided in § 42.105(a); and (3) Is accompanied by the fee to institute required in § 42.15(a). (b) Incomplete petition. § 42.107 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 inter partes (b) Due date. inter partes (c) [Reserved] (d) No amendment. (e) Disclaim Patent Claims. inter partes [77 FR 48727, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016] Instituting Inter Partes § 42.108 Institution of inter partes (a) When instituting inter partes (b) At any time prior to a decision on institution of inter partes inter partes (c) Inter partes [85 FR 79129, Dec. 9, 2020] After Institution of Inter Partes § 42.120 Patent owner response. (a) Scope. (b) Due date for response. inter partes [77 FR 48727, Aug. 14, 2012, as amended at 85 FR 79129, Dec. 9, 2020] § 42.121 Amendment of the patent. (a) Motion to amend Original motion to amend. (i) Due date. (ii) Request for preliminary guidance. (2) Scope. (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. (b) Content. (1) The support in the original disclosure of the patent for each proposed substitute claim; and (2) The support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier-filed disclosure is sought. (c) Additional motion to amend. (d) Burden of persuasion. (1) Patent owner's burden. (2) Petitioner's burden. (3) Exercise of Board discretion. (i) Any evidence in a related proceeding before the Office and evidence that a district court can judicially notice; and (ii) Information identified in response to a Board-initiated examination assistance. The Board may request the examination assistance at any time after any motion to amend has been filed if no petitioner opposes or all petitioners cease to oppose the motion to amend, or if the Board determines that a deficient prior art challenge in an opposition to the motion to amend warrants a search for additional prior art. The Board's request for examination assistance and the results of such assistance will be made of record. (4) Determination of unpatentability. (e) Preliminary guidance. (2) Any preliminary guidance provided by the Board on an original motion to amend will not be binding on the Board in any subsequent decision in the proceeding, is not a “decision” under § 42.71(d) that may be the subject of a request for rehearing or Director Review, and is not a final agency action. (3) In response to the Board's preliminary guidance, a patent owner may file a reply that responds to the petitioner's opposition to the motion to amend and/or the preliminary guidance, or a revised motion to amend as discussed in paragraph (f) of this section. The reply or revised motion to amend may be accompanied by new evidence. The petitioner may file a sur-reply that is limited to responding to the preliminary guidance and/or arguments made in the patent owner's reply brief. The sur-reply may not be accompanied by new evidence, but may comment on any new evidence filed with the reply and/or point to cross-examination testimony of a reply witness, if relevant to the arguments made in the reply brief. (4) If a patent owner does not file either a reply or a revised motion to amend after receiving preliminary guidance from the Board, the petitioner may file a reply to the preliminary guidance, but such a reply may only respond to the preliminary guidance and may not be accompanied by new evidence. If the petitioner files a reply in this context, a patent owner may file a sur-reply, but that sur-reply may only respond to the petitioner's reply and may not be accompanied by new evidence. (f) Revised motion to amend. (2) A revised motion to amend must be responsive to issues raised in the preliminary guidance or in the petitioner's opposition to the motion to amend and must include one or more new proposed substitute claims in place of the previously presented substitute claims, where each new proposed substitute claim presents a new claim amendment. (3) If a patent owner files a revised motion to amend, that revised motion to amend replaces the original motion to amend in the proceeding. [89 FR 76429, Sept. 18, 2024] § 42.122 Multiple proceedings and Joinder. (a) Multiple proceedings. inter partes (b) Request for joinder. inter partes § 42.123 Filing of supplemental information. (a) Motion to submit supplemental information. (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. (c) Other supplemental information. Subpart C—Post-Grant Review Source: 77 FR 48729, Aug. 14, 2012, unless otherwise noted. General § 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] § 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. § 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] § 42.203 Post-grant review fee. (a) A post-grant review fee set forth in § 42.15(b) must accompany the petition. (b) No filing date will be accorded to the petition until full payment is received. § 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. (b) Identification of challenge. (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. § 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] § 42.206 Filing date. (a) Complete petition. (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. § 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. (c) [Reserved] (d) No amendment. (e) Disclaim Patent Claims. [77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016] Instituting 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. [77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 85 FR 79129, Dec. 9, 2020] After Institution of Post-Grant Review § 42.220 Patent owner response. (a) Scope. (b) Due date for response. [77 FR 48729, Aug. 14, 2012, as amended at 85 FR 79129, Dec. 9, 2020] § 42.221 Amendment of the patent. (a) Motion to amend Original motion to amend. (i) Due date. (ii) Request for preliminary guidance. (2) Scope. (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. (b) Content. (1) The support in the original disclosure of the patent for each proposed substitute claim; and (2) The support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier-filed disclosure is sought. (c) Additional motion to amend. (d) Burden of persuasion. (1) Patent owner's burden. (2) Petitioner's burden. (3) Exercise of Board discretion. (i) Any evidence in a related proceeding before the Office and evidence that a district court can judicially notice; and (ii) Information identified in response to a Board-initiated examination assistance. The Board may request the examination assistance at any time after any motion to amend has been filed if no petitioner opposes or all petitioners cease to oppose the motion to amend, or if the Board determines that a deficient prior art challenge in an opposition to the motion to amend warrants a search for additional prior art. The Board's request for examination assistance and the results of such assistance will be made of record. (4) Determination of unpatentability. (e) Preliminary guidance. (2) Any preliminary guidance provided by the Board on an original motion to amend will not be binding on the Board in any subsequent decision in the proceeding, is not a “decision” under § 42.71(d) that may be the subject of a request for rehearing or Director Review, and is not a final agency action. (3) In response to the Board's preliminary guidance, a patent owner may file a reply that responds to the petitioner's opposition to the motion to amend and/or the preliminary guidance, or a revised motion to amend as discussed in paragraph (f) of this section. The reply or revised motion to amend may be accompanied by new evidence. The petitioner may file a sur-reply that is limited to responding to the preliminary guidance and/or arguments made in the patent owner's reply brief. The sur-reply may not be accompanied by new evidence, but may comment on any new evidence filed with the reply and/or point to cross-examination testimony of a reply witness, if relevant to the arguments made in the reply brief. (4) If a patent owner does not file either a reply or a revised motion to amend after receiving preliminary guidance from the Board, the petitioner may file a reply to the preliminary guidance, but such a reply may only respond to the preliminary guidance and may not be accompanied by new evidence. If the petitioner files a reply in this context, a patent owner may file a sur-reply, but that sur-reply may only respond to the petitioner's reply and may not be accompanied by new evidence. (f) Revised motion to amend. (2) A revised motion to amend must be responsive to issues raised in the preliminary guidance or in the petitioner's opposition to the motion to amend, and must include one or more new proposed substitute claims in place of the previously presented substitute claims, where each new proposed substitute claim presents a new claim amendment. (3) If a patent owner files a revised motion to amend, that revised motion to amend replaces the original motion to amend in the proceeding. [89 FR 76430, Sept. 18, 2024] § 42.222 Multiple proceedings and Joinder. (a) Multiple proceedings. (b) Request for joinder. § 42.223 Filing of supplemental information. (a) Motion to submit supplemental information. (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. (c) Other supplemental information. § 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. Subpart D—Transitional Program for Covered Business Method Patents Source: 77 FR 48731, Aug. 14, 2012, unless otherwise noted. § 42.300 Procedure; pendency. (a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201, 42.202, and 42.204. (b) In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the covered business method patent review proceeding will be considered. (c) A covered business method patent review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder. (d) The rules in this subpart are applicable until September 15, 2020, except that the rules shall continue to apply to any petition for a covered business method patent review filed before the date of repeal. [77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 81 FR 18766, Apr. 1, 2016; 83 FR 51359, Oct. 11, 2018] § 42.301 Definitions. In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart D: (a) Covered business method patent (b) Technological invention. [77 FR 48753, Aug. 14, 2012] § 42.302 Who may petition for a covered business method patent review. (a) A petitioner may not file with the Office a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. (b) A petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. (c) A petitioner may not file a petition to institute a covered business method patent review of the patent where, before the date on which the petition is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent. [77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015] § 42.303 Time for filing. A petition requesting a covered business method patent review may be filed any time except during the period in which a petition for a post-grant review of the patent would satisfy the requirements of 35 U.S.C. 321(c). § 42.304 Content of petition. In addition to any other notices required by subparts A and C of this part, a petition must request judgment against one or more claims of a patent identified by patent number. In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24 the petition must set forth: (a) Grounds for standing. (b) Identification of challenge. (1) The claim; (2) The specific statutory grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), except as modified by section 18(a)(1)(C) of the Leahy-Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011)), on which the challenge to the claim is based; (3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function; (4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. Where the grounds for unpatentability are based on prior art, the petition must specify where each element of the claim is found in the prior art. For all other grounds of unpatentability, the petition must identify the specific part of the claim that fails to comply with the statutory grounds raised and state how the identified subject matter fails to comply with the statute; and (5) The exhibit number of supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge. (c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition. Subpart E—Derivation Source: 77 FR 56090, Sep. 11, 2012, unless otherwise noted. § 42.400 Procedure; pendency. (a) A derivation proceeding is a trial subject to the procedures set forth in subpart A of this part. (b) The Board may for good cause authorize or direct the parties to address patentability issues that arise in the course of the derivation proceeding. § 42.401 Definitions. In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart: Agreement understanding under 35 U.S.C. 135(e) Applicant Application First publication Petitioner Respondent Same or substantially the same § 42.402 Who may file a petition for a derivation proceeding. An applicant for patent may file a petition to institute a derivation proceeding in the Office. § 42.403 Time for filing. A petition for a derivation proceeding must be filed within the one-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the allegedly derived invention. § 42.404 Derivation fee. (a) A derivation fee set forth in § 42.15(c) must accompany the petition. (b) No filing date will be accorded to the petition until payment is complete. § 42.405 Content of petition. (a) Grounds for standing. (1) Demonstrate compliance with §§ 42.402 and 42.403; and (2) Show that the petitioner has at least one claim that is: (i) The same or substantially the same as the respondent's claimed invention; and (ii) The same or substantially the same as the invention disclosed to the respondent. (b) In addition to the requirements of §§ 42.8 and 42.22, the petition must: (1) Provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding; (2) Demonstrate that a claimed invention was derived from an inventor named in the petitioner's application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention; and (3) For each of the respondent's claims to the derived invention, (i) Show why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, and (ii) Identify how the claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. (c) Sufficiency of showing. § 42.406 Service of petition. In addition to the requirements of § 42.6, the petitioner must serve the petition and exhibits relied upon in the petition as follows: (a) The petition and supporting evidence must be served on the respondent at the correspondence address of record for the earlier application or subject patent. The petitioner may additionally serve the petition and supporting evidence on the respondent at any other address known to the petitioner as likely to effect service. (b) Upon agreement of the parties, service may be made electronically. Service may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®. Personal service is not required. [77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014] § 42.407 Filing date. (a) Complete petition. (1) Complies with §§ 42.404 and 42.405, and (2) Service of the petition on the correspondence address of record as provided in § 42.406. (b) Incomplete petition. Instituting Derivation Proceeding § 42.408 Institution of derivation proceeding. (a) An administrative patent judge institutes, and may as necessary reinstitute, the derivation proceeding on behalf of the Director. (b) Additional derivation proceeding. After Institution of Derivation Proceeding § 42.409 Settlement agreements. An agreement or understanding under 35 U.S.C. 135(e) is a settlement for the purposes of § 42.74. § 42.410 Arbitration. (a) Parties may resort to binding arbitration to determine any issue. The Office is not a party to the arbitration. The Board is not bound by, and may independently determine, any question of patentability. (b) The Board will not set a time for, or otherwise modify the proceeding for, an arbitration unless: (1) It is to be conducted according to Title 9 of the United States Code; (2) The parties notify the Board in writing of their intention to arbitrate; (3) The agreement to arbitrate: (i) Is in writing; (ii) Specifies the issues to be arbitrated; (iii) Names the arbitrator, or provides a date not more than 30 days after the execution of the agreement for the selection of the arbitrator; (iv) Provides that the arbitrator's award shall be binding on the parties and that judgment thereon can be entered by the Board; (v) Provides that a copy of the agreement is filed within 20 days after its execution; and (vi) Provides that the arbitration is completed within the time the Board sets. (c) The parties are solely responsible for the selection of the arbitrator and the conduct of the arbitration. (d) The Board may determine issues the arbitration does not resolve. (e) The Board will not consider the arbitration award unless it: (1) Is binding on the parties; (2) Is in writing; (3) States in a clear and definite manner each issue arbitrated and the disposition of each issue; and (4) Is filed within 20 days of the date of the award. (f) Once the award is filed, the parties to the award may not take actions inconsistent with the award. If the award is dispositive of the contested subject matter for a party, the Board may enter judgment as to that party. § 42.411 Common interests in the invention. The Board may decline to institute, or if already instituted the Board may issue judgment in, a derivation proceeding between an application and a patent or another application that are commonly owned. § 42.412 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 decision in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this chapter or an involved application is or becomes published under §§ 1.211 to 1.221 of this chapter.