37 CFR 41.157: Taking testimony

Taken from the Ninth Edition of the MPEP, Revision 07.2022, Published February 2023

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41.157    Taking testimony.

  • (a) Form. Direct testimony must be submitted in the form of an affidavit except when the testimony is compelled under 35 U.S.C. 24, in which case it may be in the form of a deposition transcript.
  • (b) Time and location. (1) Uncompelled direct testimony may be taken at any time; otherwise, testimony may only be taken during such time period as the Board may authorize.
    • (2) Other testimony. (i) Except as the Board otherwise orders, authorized 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.
      • (ii) Testimony outside the United States may only be taken as the Board specifically directs.
  • (c) Notice of deposition. (1) Prior to the taking of 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 testimony, at least three business days prior to the conference in paragraph (c)(1) of this section, 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, any thing other than a document under the party’s control and on which the party intends to rely.
    • (4) Notice of the deposition must be filed at least two business days before a deposition. The notice limits the scope of the testimony and must list:
      • (i) The time and place of the deposition,
      • (ii) The name and address of the witness,
      • (iii) A list of the exhibits to be relied upon during the deposition, and
      • (iv) A general description of the scope and nature of the testimony to be elicited.
    • (5) Motion to quash. Objection to a defect in the notice is waived unless a miscellaneous motion to quash is promptly filed.
  • (d) 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.
  • (e) Manner of taking testimony. (1) Each witness before giving a deposition 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 in answer to interrogatories 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 relied upon must be numbered according to the numbering scheme assigned for the contested case and must, if not previously served, be served at the deposition.
    • (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 proceeding shall be noted on the record by the officer. Evidence objected to shall be taken subject to a ruling on the objection.
    • (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 to the transcript of the deposition a certificate in the form of an affidavit signed and sealed by the officer. 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) The officer must promptly provide a copy of the transcript to all parties. The proponent of the testimony must file the original 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 miscellaneous motion to exclude.
  • (f) Costs. Except as the Board may order or the parties may agree in writing, the proponent of the testimony shall bear all costs associated with the testimony, including the reasonable costs associated with making the witness available for the cross-examination.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]