37 CFR 42.53: Taking testimony

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

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42.53    Taking testimony.

  • (a) Form. Uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 U.S.C. 24, must be in the form of a deposition transcript. Parties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board. In addition, the Board may authorize or require live or video-recorded testimony.
  • (b) Time and location.
    • (1) Uncompelled direct testimony may be taken at any time to support a petition, motion, opposition, or reply; otherwise, testimony may only be taken during a testimony period set by the Board.
    • (2) Except as the Board otherwise orders, during the testimony period, deposition testimony may be taken at any reasonable time and location within the United States before any disinterested official authorized to administer oaths at that location.
    • (3) Uncompelled deposition testimony outside the United States may only be taken upon agreement of the parties or as the Board specifically directs.
  • (c) Duration.
    • (1) Unless stipulated by the parties or ordered by the Board, direct examination, cross-examination, and redirect examination for compelled deposition testimony shall be subject to the following time limits: Seven hours for direct examination, four hours for cross-examination, and two hours for redirect examination.
    • (2) Unless stipulated by the parties or ordered by the Board, cross-examination, redirect examination, and re-cross examination for uncompelled direct testimony shall be subject to the follow time limits: Seven hours for cross-examination, four hours for redirect examination, and two hours for re-cross examination.
  • (d) Notice of deposition.
    • (1) Prior to the taking of deposition testimony, all parties to the proceeding must agree on the time and place for taking testimony. If the parties cannot agree, the party seeking the testimony must initiate a conference with the Board to set a time and place.
    • (2) Cross-examination should ordinarily take place after any supplemental evidence relating to the direct testimony has been filed and more than a week before the filing date for any paper in which the cross-examination testimony is expected to be used. A party requesting cross-examination testimony of more than one witness may choose the order in which the witnesses are to be cross-examined.
    • (3) In the case of direct deposition testimony, at least three business days prior to the conference in paragraph (d)(1) of this section, or if there is no conference, at least ten days prior to the deposition, the party seeking the direct testimony must serve:
      • (i) A list and copy of each document under the party's control and on which the party intends to rely; and
      • (ii) A list of, and proffer of reasonable access to, anything other than a document under the party's control and on which the party intends to rely.
    • (4) The party seeking the deposition must file a notice of the deposition at least ten business days before a deposition.
    • (5) Scope and content—
      • (i) For direct deposition testimony, the notice limits the scope of the testimony and must list:
        • (A) The time and place of the deposition;
        • (B) The name and address of the witness;
        • (C) A list of the exhibits to be relied upon during the deposition; and
        • (D) A general description of the scope and nature of the testimony to be elicited.
      • (ii) For cross-examination testimony, the scope of the examination is limited to the scope of the direct testimony.
      • (iii) The notice must list the time and place of the deposition.
      • (iv) Where an additional party seeks to take direct testimony of a third party witness at the time and place noticed in paragraph (d)(5) of this section, the additional party must provide a counter notice that lists the exhibits to be relied upon in the deposition and a general description of the scope and nature of the testimony to be elicited.
    • (6) Motion to quash—Objection to a defect in the notice is waived unless the objecting party promptly seeks authorization to file a motion to quash.
  • (e) Deposition in a foreign language. If an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.
  • (f) Manner of taking deposition testimony.
    • (1) Before giving deposition testimony, each witness shall be duly sworn according to law by the officer before whom the deposition is to be taken. The officer must be authorized to take testimony under 35 U.S.C. 23.
    • (2) The testimony shall be taken with any questions and answers recorded in their regular order by the officer, or by some other disinterested person in the presence of the officer, unless the presence of the officer is waived on the record by agreement of all parties.
    • (3) Any exhibits used during the deposition must be numbered as required by § 42.63(c), and must, if not previously served, be served at the deposition. Exhibits objected to shall be accepted pending a decision on the objection.
    • (4) All objections made at the time of the deposition to the qualifications of the officer taking the deposition, the manner of taking it, the evidence presented, the conduct of any party, and any other objection to the deposition shall be noted on the record by the officer.
    • (5) When the testimony has been transcribed, the witness shall read and sign (in the form of an affidavit) a transcript of the deposition unless:
      • (i) The parties otherwise agree in writing;
      • (ii) The parties waive reading and signature by the witness on the record at the deposition; or
      • (iii) The witness refuses to read or sign the transcript of the deposition.
    • (6) The officer shall prepare a certified transcript by attaching a certificate in the form of an affidavit signed and sealed by the officer to the transcript of the deposition. Unless the parties waive any of the following requirements, in which case the certificate shall so state, the certificate must state:
      • (i) The witness was duly sworn by the officer before commencement of testimony by the witness;
      • (ii) The transcript is a true record of the testimony given by the witness;
      • (iii) The name of the person who recorded the testimony, and if the officer did not record it, whether the testimony was recorded in the presence of the officer;
      • (iv) The presence or absence of any opponent;
      • (v) The place where the deposition was taken and the day and hour when the deposition began and ended;
      • (vi) The officer has no disqualifying interest, personal or financial, in a party; and
      • (vii) If a witness refuses to read or sign the transcript, the circumstances under which the witness refused.
    • (7) Except where the parties agree otherwise, the proponent of the testimony must arrange for providing a copy of the transcript to all other parties. The testimony must be filed as an exhibit.
    • (8) Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.
  • (g) Costs. Except as the Board may order or the parties may agree in writing, the proponent of the direct testimony shall bear all costs associated with the testimony, including the reasonable costs associated with making the witness available for the cross-examination.
[Added, 77 FR 48612, Aug. 14, 2012, effective Sept. 16, 2012; paras. (c)(2) and (f)(7) revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]