37 CFR 10.152
Discovery.

Last updated in November 2005.
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§10.152 Discovery.

Discovery shall not be authorized except as follows:

(a)
After an answer is filed under § 10.136 and when a party establishes in a clear and convincing manner that discovery is necessary and relevant, the administrative law judge, 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 or cross-examination;
(2)
Is not available to the party under 35 U.S.C. 122;
(3)
Relates to any disciplinary proceeding commenced in the Patent and Trademark Office prior to March 8, 1985;
(4)
Relates to experts except as the administrative law judge 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 administrative law judge 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)
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 administrative law judge shall require the party seeking discovery to file a motion (§ 10.143) and explain in detail for each request made how the discovery sought is necessary and relevant to an issue actually raised in the complaint or the answer.
(e)
The administrative law judge may require parties to file and serve, prior to any hearing, a pre-hearing statement which 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)
The identity of government employees who have investigated the case, and
(5)
Copies of memoranda reflecting respondent's own statements to administrative representatives.
(f)
After a witness testifies for a party, if the opposing party requests, the party may be required to produce, prior to cross-examination, any written statement made by the witness.