37 CFR § 41.121 — Motions. (MPEP Coverage Index) – BlueIron IP
37 CFR § 41.121 Motions.
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 41.121, including 21 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
37 CFR 41.121 provides guidance for obtaining authorization to file motions with the Patent Trial and Appeal Board that are not related to trial institution.
What this section covers
- Outline the authorization process for filing motions with the Patent Trial and Appeal Board.
- Define the scope of motions that require special authorization outside standard trial petition processes.
Key obligations
- Demonstrate a clear procedural need for filing a motion beyond standard petition mechanisms.
- Comply with specific PTAB guidelines for motion authorization in contested case proceedings.
Practice notes
- Carefully document the rationale and legal basis for requesting motion authorization.
- Anticipate potential challenges to motion authorization by providing comprehensive supporting documentation.
Official MPEP § 41.121 — Motions.
Source: USPTOLast Modified: 10/30/2024 08:50:22
41.121 Motions.
- (a)
Types of motions—
- (1)
Substantive motions. Consistent with the
notice of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
- (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. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of requested relief or in a substantive motion.
- (3) Miscellaneous motions. Any request for relief other than a substantive or responsive motion must be filed as a miscellaneous motion.
- (1)
Substantive motions. Consistent with the
notice of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
- (b) Burden of proof. The party filing the motion has the burden of proof to establish that it is entitled to the requested relief.
- (c)
Content of motions; oppositions and replies.
- (1) Each motion must be filed as a
separate paper and must include:
- (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. Where a rule in part 1 of this title ordinarily governs the relief sought, the motion must make any showings required under that rule in addition to any showings required in this part.
- (3) The Board may order additional showings or explanations as a condition for filing a motion.
- (1) Each motion must be filed as a
separate paper and must include:
- (d)
Statement of material facts. (1) Each material fact
shall be set forth as a separate numbered sentence with specific
citations to the portions of the record that support the fact.
- (2) The Board may require that the statement of material facts be submitted as a separate paper.
- (e) Claim charts. Claim charts must be used in support of any paper requiring the comparison of a claim to something else, such as another claim, prior art, or a specification. Claim charts must accompany the paper as an appendix. Claim charts are not a substitute for appropriate argument and explanation in the paper.
- (f) The Board may order briefing on any issue that could be raised by motion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
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- Reissue
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| MPEP Section | Rules |
|---|---|
| MPEP § 1002.02(j) | |
| MPEP § 1481.02 | |
| MPEP § 1485 | |
| MPEP § 2274 | |
| MPEP § 2284 |