37 CFR 11.52 - Discovery.

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There is 1 rule appearing in the Federal Register for 37 CFR 11. View below or at eCFR (GPOAccess)
§ 11.52 Discovery.
Discovery shall not be authorized except as follows:
(a) After an answer is filed under § 11.36 and when a party establishes that discovery is reasonable and relevant, the hearing officer, under such conditions as he or she deems appropriate, may order an opposing party to:
(1) Answer a reasonable number of written requests for admission or interrogatories;
(2) Produce for inspection and copying a reasonable number of documents; and
(3) Produce for inspection a reasonable number of things other than documents.
(b) Discovery shall not be authorized under paragraph (a) of this section of any matter which:
(1) Will be used by another party solely for impeachment;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any other disciplinary proceeding;
(4) Relates to experts except as the hearing officer may require under paragraph (e) of this section;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or other representative of a party.
(c) The hearing officer may deny discovery requested under paragraph (a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party required to produce the discovery sought; or
(3) Consists of information that is available:
(i) Generally to the public;
(ii) Equally to the parties; or
(iii) To the party seeking the discovery through another source.
(d) Prior to authorizing discovery under paragraph (a) of this section, the hearing officer shall require the party seeking discovery to file a motion (§ 11.43) and explain in detail, for each request made, how the discovery sought is reasonable and relevant to an issue actually raised in the complaint or the answer.
(e) The hearing officer may require parties to file and serve, prior to any hearing, a pre-hearing statement that contains:
(1) A list (together with a copy) of all proposed exhibits to be used in connection with a party's case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the individual will be qualified as an expert;
(ii) A statement as to the subject matter on which the expert is expected to testify; and
(iii) A statement of the substance of the facts and opinions to which the expert is expected to testify;
(4) Copies of memoranda reflecting respondent's own statements to administrative representatives.

Title 37 published on 2013-07-01

The following are only the Rules published in the Federal Register after the published date of Title 37.

For a complete list of all Rules, Proposed Rules, and Notices view the Rulemaking tab.

  • 2013-10-21; vol. 78 # 203 - Monday, October 21, 2013
    1. 78 FR 62368 - Changes To Implement the Patent Law Treaty
      GPO FDSys XML | Text
      DEPARTMENT OF COMMERCE, Patent and Trademark Office
      Final rule.
      Effective date: December 18, 2013. Applicability date: The changes to 37 CFR 1.1, 1.4, 1.5, 1.6, 1.7, 1.17, 1.20, 1.23, 1.25, 1.29, 1.33, 1.51, 1.52, 1.54, 1.55(b) through (e) and (h), 1.57(b) through (i), 1.58, 1.72, 1.76(d)(2), (f) and (g), 1.78, 1.83, 1.85, 1.131, 1.136, 1.137, 1.138, 1.197, 1.290, 1.311, 1.366, 1.378, 1.452, 1.550, 1.809, 1.958, 3.11, 3.31, and 11.18, and the removal of 37 CFR 1.317, apply to any patent application filed before, on, or after December 18, 2013, to any patent resulting from an application filed before, on, or after December 18, 2013, and to any reexamination proceeding and any request for supplemental examination filed before, on, or after December 18, 2013. The changes to 37 CFR 1.16, 1.53(b) and (c), 1.57(a), 1.76(b)(3), and 1.81 apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. The changes to 37 CFR 1.53(f) and 1.495 apply only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012. The changes to 37 CFR 1.55(f) and 37 CFR 1.704 apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013.
      37 CFR Parts 1, 3 and 11

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United States Code

Title 37 published on 2013-07-01

The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR 11 after this date.

  • 2014-01-17; vol. 79 # 12 - Friday, January 17, 2014
    1. 79 FR 3146 - Extension of the Comment Period for Notice of Proposed Rulemaking on Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs
      GPO FDSys XML | Text
      DEPARTMENT OF COMMERCE, Patent and Trademark Office
      Notice of extension of public comment period.
      The comment deadline announced in the proposed rule published on November 29, 2013 (78 FR 71870) has been extended. To be ensured of consideration, written comments must be received on or before Tuesday, February 4, 2014.
      37 CFR Parts 1, 3, 5 and 11