37 CFR § 11.52 — Written discovery. (MPEP Coverage Index) – BlueIron IP
37 CFR § 11.52 Written discovery.
This page consolidates MPEP guidance interpreting 37 CFR § 11.52, including 4 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The Written discovery section allows the patent owner to file a single request for rehearing under 37 CFR 11.52, addressing both SNQ issues and merits decisions.
What this section covers
- Defines the process for filing a single request for rehearing by the patent owner on both SNQ issues and merits decisions.
Key obligations
- Requires filing a single request for rehearing under 37 CFR 11.52.
- Ensures the request covers both SNQ issues and merits decisions.
- Adheres to specific requirements of 37 CFR 11.52.
Practice notes
- Ensure the request is comprehensive and covers all relevant issues.
- Timely filing and thorough review before submission are crucial.
Official MPEP § 11.52 — Written discovery.
Source: USPTOLast Modified: 10/30/2024 08:50:22
11.52 Written discovery.
- (a) After an answer is filed under §
11.36
, a party may file a motion under §
11.43
seeking authorization to propound written
discovery of relevant evidence, including:
- (1) A reasonable number of requests for admission, including requests for admission as to the genuineness of documents;
- (2) A reasonable number of interrogatories;
- (3) A reasonable number of documents to be produced for inspection and copying; and
- (4) A reasonable number of things other than documents to be produced for inspection.
- (b) The motion shall include a copy of the proposed written discovery requests 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. Any response shall include specific objections to each request, if any. Any objection not raised in the response will be deemed to have been waived.
- (c) The hearing officer may authorize any discovery requests the hearing officer deems to be reasonable and relevant. Unless the hearing officer orders otherwise, within 5 days of the hearing officer authorizing any discovery requests, the moving party shall serve a copy of the authorized discovery requests to the opposing party and, within 30 days of such service, the opposing party shall serve responses to the authorized discovery requests.
- (d) Discovery shall not be authorized under paragraph (c)
of this section of any matter that:
- (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 before the Office;
- (4) Relates to experts;
- (5) Is privileged; or
- (6) Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or other representative of a party.
- (e) 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.
- (f) A request for admission will be deemed admitted if the party to whom the request is directed fails to respond or object to the request within the time allowed.
- (g) 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,
- (iii) A complete statement of all opinions to which the expert is expected to testify and the basis and reasons for them, and
- (4) Copies of memoranda reflecting respondent’s own statements to administrative representatives.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; revised, 86 FR 28442, May 26, 2021, effective June 25, 2021; paras. (a) and (b) revised, paras. (c) through (f) redesignated as paras. (d) through (g), para. (c) added, newly redesignated para. (d) revised, 88 FR 45078, July 14, 2023, effective Aug. 14, 2023]