PART 104—LEGAL PROCESSES Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101, except as otherwise indicated. Source: 66 FR 47389, Sept. 12, 2001, unless otherwise noted. Subpart A—General Provisions § 104.1 Definitions. Demand Director see Document Employee Legal proceeding Office Official business General Counsel Testimony United States [66 FR 47389, Sept. 12, 2001, as amended at 68 FR 14339, Mar. 25, 2003] § 104.2 Address for mail and service; telephone number. (a) Mail under this part should be addressed to the Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. (b) Service by hand should be made during business hours to the Office of the General Counsel, 10B20, Madison Building East, 600 Dulany Street, Alexandria, Virginia. (c) The Office of the General Counsel may be reached by telephone at 571-272-7000 during business hours. [66 FR 47389, Sept. 12, 2001, as amended at 70 FR 10490, Mar. 4, 2005; 75 FR 36295, June 25, 2010] § 104.3 Waiver of rules. In extraordinary situations, when the interest of justice requires, the General Counsel may waive or suspend the rules of this part, sua sponte [69 FR 56546, Sept. 21, 2004] § 104.4 Relationship of this Part to the Federal Rules of Civil or Criminal Procedure. Nothing in this part waives or limits any requirement under the Federal Rules of Civil or Criminal Procedure. Subpart B—Service of Process § 104.11 Scope and purpose. (a) This subpart sets forth the procedures to be followed when a summons and complaint is served on the Office or on the Director or an employee in his or her official capacity. (b) This subpart is intended, and should be construed, to ensure the efficient administration of the Office and not to impede any legal proceeding. (c) This subpart does not apply to subpoenas, the procedures for which are set out in subpart C. (d) This subpart does not apply to service of process made on an employee personally on matters not related to official business of the Office or to the official responsibilities of the employee. § 104.12 Acceptance of service of process. (a) Any summons and complaint to be served in person or by registered or certified mail or as otherwise authorized by law on the Office, on the Director, or on an employee in his or her official capacity, shall be served as indicated in § 104.2. (b) Any employee of the Office served with a summons and complaint shall immediately notify, and shall deliver the summons and complaint to, the Office of the General Counsel. (c) Any employee receiving a summons and complaint shall note on the summons and complaint the date, hour, and place of service and whether service was by hand or by mail. (d) When a legal proceeding is brought to hold an employee personally liable in connection with an action taken in the conduct of official business, rather than liable in an official capacity, the employee by law is to be served personally with process. See Fed. R. Civ. P. (e) An employee sued personally in connection with official business may be represented by the Department of Justice at its discretion (28 CFR 50.15 and 50.16). (f) The Office will only accept service of process for an employee in the employee's official capacity. Subpart C—Employee Testimony and Production of Documents in Legal Proceedings § 104.21 Scope and purpose. (a) This subpart sets forth the policies and procedures of the Office regarding the testimony of employees as witnesses in legal proceedings and the production or disclosure of information contained in Office documents for use in legal proceedings pursuant to a demand. (b) Exceptions. (1) An employee is to testify regarding facts or events that are unrelated to official business; or (2) A former employee is to testify as an expert in connection with a particular matter in which the former employee did not participate personally while at the Office. § 104.22 Demand for testimony or production of documents. (a) Whenever a demand for testimony or for the production of documents is made upon an employee, the employee shall immediately notify the Office of the General Counsel at the telephone number or addresses in § 104.2 and make arrangements to send the subpoena to the General Counsel promptly. (b) An employee may not give testimony, produce documents, or answer inquiries from a person not employed by the Office regarding testimony or documents subject to a demand or a potential demand under the provisions of this subpart without the approval of the General Counsel. The General Counsel may authorize the provision of certified copies not otherwise available under Part 1 of this title subject to payment of applicable fees under § 1.19. (c)(1) Demand for testimony or documents. (2) Subpoenas. (3) Affidavits. (d) Failure of the attorney to cooperate in good faith to enable the General Counsel to make an informed determination under this subpart may serve as a basis for a determination not to comply with the demand. (e) A determination under this subpart to comply or not to comply with a demand is not a waiver or an assertion of any other ground for noncompliance, including privilege, lack of relevance, or technical deficiency. (f) Noncompliance. United States ex rel. Touhy Ragen, § 104.23 Expert or opinion testimony. (a)(1) If the General Counsel authorizes an employee to give testimony in a legal proceeding not involving the United States, the testimony, if otherwise proper, shall be limited to facts within the personal knowledge of the employee. Employees, with or without compensation, shall not provide expert testimony in any legal proceedings regarding Office information, subjects, or activities except on behalf of the United States or a party represented by the United States Department of Justice. (2) The General Counsel may authorize an employee to appear and give the expert or opinion testimony upon the requester showing, pursuant to § 104.3 of this part, that exceptional circumstances warrant such testimony and that the anticipated testimony will not be adverse to the interest of the Office or the United States. (b)(1) If, while testifying in any legal proceeding, an employee is asked for expert or opinion testimony regarding Office information, subjects, or activities, which testimony has not been approved in advance in writing in accordance with the regulations in this subpart, the witness shall: (i) Respectfully decline to answer on the grounds that such expert or opinion testimony is forbidden by this subpart; (ii) Request an opportunity to consult with the General Counsel before giving such testimony; and (iii) Explain that upon such consultation, approval for such testimony may be provided. (2) If the tribunal conducting the proceeding then orders the employee to provide expert or opinion testimony regarding Office information, subjects, or activities without the opportunity to consult with the General Counsel, the employee shall respectfully refuse to provide such testimony, citing United States ex rel. Touhy v. Ragen, (c) If an employee is unaware of the regulations in this subpart and provides expert or opinion testimony regarding Office information, subjects, or activities in a legal proceeding without the aforementioned consultation, the employee shall, as soon after testifying as possible, inform the General Counsel that such testimony was given and provide a written summary of the expert or opinion testimony provided. (d) Proceeding where the United States is a party. § 104.24 Demands or requests in legal proceedings for records protected by confidentiality statutes. Demands in legal proceedings for the production of records, or for the testimony of employees regarding information protected by the confidentiality provisions of the Patent Act (35 U.S.C. 122), the Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or any other confidentiality statute, must satisfy the requirements for disclosure set forth in those statutes and associated rules before the records may be provided or testimony given. Subpart D—Employee Indemnification § 104.31 Scope. The procedure in this subpart shall be followed if a civil action or proceeding is brought, in any court, against an employee (including the employee's estate) for personal injury, loss of property, or death, resulting from the employee's activities while acting within the scope of the employee's office or employment. When the employee is incapacitated or deceased, actions required of an employee should be performed by the employee's executor, administrator, or comparable legal representative. § 104.32 Procedure for requesting indemnification. (a) After being served with process or pleadings in such an action or proceeding, the employee shall within five (5) calendar days of receipt, deliver to the General Counsel all such process and pleadings or an attested true copy thereof, together with a fully detailed report of the circumstances of the incident giving rise to the court action or proceeding. (b)(1) An employee may request indemnification to satisfy a verdict, judgment, or award entered against that employee only if the employee has timely satisfied the requirements of paragraph (a) of this section. (2) No request for indemnification will be considered unless the employee has submitted a written request through the employee's supervisory chain to the General Counsel with: (i) Appropriate documentation, including copies of the verdict, judgment, appeal bond, award, or settlement proposal; (ii) The employee's explanation of how the employee was acting within the scope of the employee's employment; and (iii) The employee's statement of whether the employee has insurance or any other source of indemnification. Subpart E—Tort Claims Authority: 28 U.S.C. 2672; 35 U.S.C. 2(b)(2); 44 U.S.C. 3101; 28 CFR Part 14. § 104.41 Procedure for filing claims. Administrative claims against the Office filed pursuant to the administrative claims provision of the Federal Tort Claims Act (28 U.S.C. 2672) and the corresponding Department of Justice regulations (28 CFR Part 14) shall be filed with the General Counsel as indicated in § 104.2. § 104.42 Finality of settlement or denial of claims. Only a decision of the Director or the General Counsel regarding settlement or denial of any claim under this subpart may be considered final for the purpose of judicial review.