37 C.F.R. 1.639, Evidence in support of motion, opposition, or reply.

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1.639 Evidence in support of motion, opposition, or reply.

(a)

Except as provided in paragraphs (c) through (g) of this section, proof of any material fact alleged in a motion, opposition, or reply must be filed and served with the motion, opposition, or reply unless the proof relied upon is part of the interference file or the file of any patent or application involved in the interference or any earlier application filed in the United States of which a party has been accorded or seeks to be accorded benefit.

(b)

Proof may be in the form of patents, printed publications, and affidavits. The pages of any affidavits filed under this paragraph shall, to the extent possible, be given sequential numbers, which shall also serve as the record page numbers for the affidavits in the event they are included in the party's record (1.653). Any patents and printed publications submitted under this paragraph and any exhibits identified in affidavits submitted under this paragraph shall, to the extent possible, be given sequential exhibit numbers, which shall also serve as the exhibit numbers in the event the patents, printed publications and exhibits are filed with the party's record (1.653).

(c)

If a party believes that additional evidence in the form of testimony that is unavailable to the party is necessary to support or oppose a preliminary motion under 1.633 or a motion to correct inventorship under 1.634, the party shall describe the nature of any proposed testimony as specified in paragraphs (d) through (g) of this section. If the administrative patent judge finds that testimony is needed to decide the motion, the administrative patent judge may grant appropriate interlocutory relief and enter an order authorizing the taking of testimony and deferring a decision on the motion to final hearing.

(d)

When additional evidence in the form of expert-witness testimony is needed in support of or opposition to a preliminary motion, the moving party or opponent should:

(1)

Identify the person whom it expects to use as an expert;

(2)

State the field in which the person is alleged to be an expert; and

(3)

State:

(i)

The subject matter on which the person is expected to testify;

(ii)

The facts and opinions to which the person is expected to testify; and

(iii)

A summary of the grounds and basis for each opinion.

(e)

When additional evidence in the form of fact-witness testimony is necessary, state the facts to which the witness is expected to testify.

(f)

If the opponent is to be called, or if evidence in the possession of the opponent is necessary, explain the evidence sought, what it will show, and why it is needed.

(g)

When inter partes tests are to be performed, describe the tests stating what they will be expected to show.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (c) revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (d)-(g) added, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (a)-(d)(1) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

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