37 CFR 42.410: Arbitration

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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42.410    Arbitration.

  • (a) Parties may resort to binding arbitration to determine any issue. The Office is not a party to the arbitration. The Board is not bound by, and may independently determine, any question of patentability.
  • (b) The Board will not set a time for, or otherwise modify the proceeding for, an arbitration unless:
    • (1) It is to be conducted according to Title 9 of the United States Code;
    • (2) The parties notify the Board in writing of their intention to arbitrate;
    • (3) The agreement to arbitrate:
      • (i) Is in writing;
      • (ii) Specifies the issues to be arbitrated;
      • (iii) Names the arbitrator, or provides a date not more than 30 days after the execution of the agreement for the selection of the arbitrator;
      • (iv) Provides that the arbitrator’s award shall be binding on the parties and that judgment thereon can be entered by the Board;
      • (v) Provides that a copy of the agreement is filed within 20 days after its execution; and
      • (vi) Provides that the arbitration is completed within the time the Board sets.
  • (c) The parties are solely responsible for the selection of the arbitrator and the conduct of the arbitration.
  • (d) The Board may determine issues the arbitration does not resolve.
  • (e) The Board will not consider the arbitration award unless it:
    • (1) Is binding on the parties;
    • (2) Is in writing;
    • (3) States in a clear and definite manner each issue arbitrated and the disposition of each issue; and
    • (4) Is filed within 20 days of the date of the award.
  • (f) Once the award is filed, the parties to the award may not take actions inconsistent with the award. If the award is dispositive of the contested subject matter for a party, the Board may enter judgment as to that party.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]