37 CFR 41.208: Content of substantive and responsive motions

Taken from the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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41.208    Content of substantive and responsive motions.

The general requirements for motions in contested cases are stated at § 41.121(c).

  • (a) In an interference, substantive motions must:
    • (1) Raise a threshold issue,
    • (2) Seek to change the scope of the definition of the interfering subject matter or the correspondence of claims to the count,
    • (3) Seek to change the benefit accorded for the count, or
    • (4) Seek judgment on derivation or on priority.
  • (b) To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if unrebutted, it would justify the relief sought. The burden of proof is on the movant.
  • (c) Showing patentability. (1) A party moving to add or amend a claim must show the claim is patentable.
    • (2) A party moving to add or amend a count must show the count is patentable over prior art.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]