37 C.F.R. 1.671, Evidence must comply with rules.

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1.671 Evidence must comply with rules.

(a)

Evidence consists of testimony and referenced exhibits, official records and publications filed under 1.682, testimony and referenced exhibits from another interference, proceeding, or action filed under 1.683, discovery relied upon under 1.688, and the specification (including claims) and drawings of any application or patent:

(1)

Involved in the interference.

(2)

To which a party has been accorded benefit in the notice declaring the interference or by a preliminary motion granted under 1.633.

(3)

For which a party has sought, but has been denied, benefit by a preliminary motion under 1.633.

(4)

For which benefit was rescinded by a preliminary motion granted under 1.633.

(b)

Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to interference proceedings. Those portions of the Federal Rules of Evidence relating to criminal actions, juries, and other matters not relevant to interferences shall not apply.

(c)

Unless the context is otherwise clear, the following terms of the Federal Rules of Evidence shall be construed as follows:

(1)

Courts of the United States, U.S. Magistrate, court, trial court, or trier of fact means administrative patent judge or Board as may be appropriate.

(2)

Judge means administrative patent judge.

(3)

Judicial notice means official notice.

(4)

Civil action, civil proceeding, action, or trial mean interference.

(5)

Appellate court means United States Court of Appeals for the Federal Circuit or a United States district court when judicial review is under 35 U.S.C. 146.

(6)

Before the hearing in Rule 703 of the Federal Rules of Evidence means before giving testimony by affidavit or oral deposition.

(7)

The trial or hearing in Rules 803(24) and 804(5) of the Federal Rules of Evidence means the taking of testimony by affidavit or oral deposition.

(d)

Certification is not necessary as a condition to admissibility when the record is a record of the Patent and Trademark Office to which all parties have access.

(e)

A party may not rely on an affidavit (including any exhibits), patent or printed publication previously submitted by the party under 1.639(b) unless a copy of the affidavit, patent or printed publication has been served and a written notice is filed prior to the close of the party's relevant testimony period stating that the party intends to rely on the affidavit, patent or printed publication. When proper notice is given under this paragraph, the affidavit, patent or printed publication shall be deemed as filed under 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a), as appropriate.

(f)

The significance of documentary and other exhibits identified by a witness in an affidavit or during oral deposition shall be discussed with particularity by a witness.

(g)

A party must file a motion (1.635) seeking permission from an administrative patent judge prior to compelling testimony or production of documents or things under 35 U.S.C. 24 or from an opposing party. The motion shall describe the general nature and the relevance of the testimony, document, or thing. If permission is granted, the party shall notice a deposition under 1.673 and may proceed to take testimony.

(h)

A party must file a motion (1.635) seeking permission from an administrative patent judge prior to compelling testimony or production of documents or things in a foreign country.

(1)

In the case of testimony, the motion shall:

(i)

Describe the general nature and relevance of the testimony;

(ii)

Identify the witness by name or title;

(iii)

Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the foreign country and an estimate of the time it is expected to take to obtain the testimony; and

(iv)

Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the expenses of the witness to travel to and testify in the United States.

(2)

In the case of production of a document or thing, the motion shall:

(i)

Describe the general nature and relevance of the document or thing;

(ii)

Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and

(iii)

Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.

(i)

Evidence which is not taken or sought and filed in accordance with this subpart shall not be admissible.

(j)

The weight to be given deposition testimony taken in a foreign country will be determined in view of all the circumstances, including the laws of the foreign country governing the testimony. Little, if any, weight may be given to deposition testimony taken in a foreign country unless the party taking the testimony proves by clear and convincing evidence, as a matter of fact, that knowingly giving false testimony in that country in connection with an interference proceeding in the United States Patent and Trademark Office is punishable under the laws of that country and that the punishment in that country for such false testimony is comparable to or greater than the punishment for perjury committed in the United States. The administrative patent judge and the Board, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a), (c)(1), (c)(2), (c)(6), (c)(7), (e)-(j) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

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