Content of substantive and responsive motions.

37 Patents, Trademarks, and Copyrights 1 2007-07-01 2007-07-01 false Content of substantive and responsive motions. 41.208 Section 41.208 Patents, Trademarks, and Copyrights UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Patent Interferences

§ 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.

(2) A party moving to add or amend a count must show the count is patentable over prior art.

37 CFR Ch. I (7-1-07 Edition) Index III INDEX III—RULES RELATING TO PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE Editorial Note:

This listing is provided for informational purposes only. It is compiled and kept current by the Department of Commerce. This index is updated as of July 1, 2007.

Section A Address change 10.11, 11.11 Advertising 10.31, 10.32 Agreements restricting practice 10.38 Aliens 11.6, 11.9 Applicant for patent, representation of 1.31, 11.10 Applicant for trademark, representation of 2.11 Attorneys, recognition of to practice in trademark cases 10.14 Attorneys, registration of to practice in patent cases 11.6, 11.9 B Breach of trust 10.23 Business transactions or relations with client 10.65 C Candidate for judicial office 10.103 Canons and Disciplinary Rules 10.20-10.112 Certificate of mailing 1.8, 10.23. 10.141 Circumventing a disciplinary rule, amendment 10.23 Code of Professional Responsibility 10.20-10.112 Coercion, use of 10.23 Committee on Discipline 10.4 Communicating with person having adverse interest 10.67 Communications concerning practitioner's service 10.31 Compensation for legal services 10.68 Competence 10.76, 10.77 Complaint instituting disciplinary proceedings 10.134 Concealment of material information 10.23 Conduct in proceeding before Office 10.89 Conduct prejudicial to the administration of justice 10.23 Conflict of interest 10.66 Conviction of criminal offense 10.23 D Deceit 10.23 Decisions of the Commissioner 10.156, 10.157 Definitions: Affidavit 10.1 Agent 11.6 Application 10.1 Canon 10.20 Confidence 10.57 Differing interests 10.1 Director of Enrollment and Discipline 10.1, 11.1 Disciplinary rule 10.20 Employee of a tribunal 10.1 Excessive legal fees 10.36 Excluded practitioner 10.1 Giving information 10.1 Invention development services 10.23 Law firm 10.1 Lawyer 10.1 Legal counsel 10.1 Legal profession 10.1 Legal service 10.1 Legal system 10.1 Non-practitioner 10.1 Office 10.1, 11.1 Person 10.1 Practitioner 10.1, 11.1 Proceeding before the Office 10.1, 11.1 Professional legal corporation 10.1 Registration 10.1, 11.1 Respondent 10.134 Secret 10.33, 10.57 Service of Process 15.2 State 10.1, 11.1 Suspended practitioner 10.1 Testimony by employees 15a.2 Tribunal 10.1 United States 10.1 Designation as registered attorney or agent 10.34 Direct contact with prospective clients 10.33 Director of Enrollment and Discipline 11.2 Review of decisions of the Director 10.2 Disbarment from practice on ethical grounds 10.130 Discharge of attorney or agent by client 10.40 Disciplinary Proceedings and Investigations: Administrative Law Judge 10.139 Administrative Procedures Act 10.132, 10.144 Review of interlocutory orders by Administrative Law Judge 10.139 Amendment of complaint 10.145 Amendment of pleadings 10.145 Answer to complaint 10.136 Appeal of initial decision of Administrative Law Judge 10.155 Burden of proof 10.149 Certificate of mailing 1.8, 10.141 Complaint 10.134 Contested case 10.138 Deliberations of Committee on Discipline 10.4 Discovery (see also Discovery in Disciplinary Proceedings) 10.152 Exception to ruling 10.150 Filing papers after complaint filed 10.141 Hearings before Administrative Law Judge 10.144 Initial decision of Administrative Law Judge 10.139, 10.154 Initiating disciplinary proceeding 10.132 Investigations of violations of disciplinary rules 10.131 Notice of suspension or exclusion of practitioner 10.159 Objections to evidence 10.150 Post hearing memorandum 10.153 Pre-hearing statement 10.153 Reinstatement of suspended or excluded practitioner 10.160 Reprimand of registered attorney or agent 10.130, 10.132 Resignation of practitioner 10.133 Review of Commissioner's final decision 10.157 Review of decision denying reinstatement of practitioner 11.2 Savings clause 10.161 Service of complaint 10.135 Settlement of complaint 10.133 Stay pending review of interlocutory order 10.139 Supplemental complaint 10.137 Disciplinary rule violation, disclosure of 10.23, 10.24, 10.84, 10.85, 10.131 Discourteous conduct 10.89 Discovery in Disciplinary Proceedings: Copying of documents 10.152 Cross-examination 10.152 Deliberations of Committee on Enrollment 10.4 Depositions 10.151 Evidence 10.150, 10.152 Impeachment 10.152 Inspection of documents 10.152 Interrogatories 10.152 Motions filed with Administrative Law Judge 10.143, 10.152 Privileged information 10.152 Undue delay in proceedings 10.152 Division of legal fees 10.37 Duress, use of 10.23 Duty to make counsel available 10.30 E Employee testimony. (See Testimony by Office employee) Employment: Acceptance 10.39 Failure to carry out contract 10.84 Refusing employment 10.62, 10.63 Withdrawal from employment 10.40, 10.63 Exception to ruling 10.151 Excessive legal fees 10.36 Exclusion of practitioner 10.130, 10.132, 10.158 F Failure to disclose material fact with regard to registration 10.22 Failure to notify client 10.23 False accusations 10.23 False statements concerning officials 10.102 Favors, improperly bestowing 10.23 Fees: In general 1.21 Petition to review decision of Director of Enrollment and Discipline 11.2 Registration 11.8 Registration examination 11.7 Reinstatement 10.11 Request regard of examination 11.6 Fees for legal services 10.36 Firm name, use of 10.35 Fitness to practice before the Office 10.23 Foreigners 10.14, 11.6, 11.9 Former Patent and Trademark Office employees 10.6, 10.23 Fraud or inequitable conduct 10.23, 10.85 Frivolous complaint 10.23 Funds of client, preserving identity of 10.112 G Gift, improperly bestowing 10.23 Government employees, registration of to practice in patent cases 10.10 I Illegal conduct involving moral turpitude 10.23 Illegal fees for services 10.36 Improper alteration of patent application 10.23 Improper execution of oath or declaration 10.23 Improper influence 10.23 Improper signature 10.18, 10.23 Improperly bestowing thing of value 10.23 Incompetence 10.77, 10.78 Indecent statement, making of 10.23 Independent professional judgment, exercise of 10.61, 10.62, 10.66, 10.68 Individual unqualified in respect to character, education, etc 10.7, 10.22 Influence by others than client 10.68 Information precluding registration, failure to disclose 10.23 Initial decision of Administrative Law Judge 10.139, 10.154 Integrity and competence of the legal profession, maintaining of 10.22 Interest in litigation or proceeding before Office, acquiring of 10.64 Investigations of violations of disciplinary rules 10.131 J Joint venture 10.23 Judicial office, candidate for 10.103 L Legal Fees: Division of 10.37 Failure to pay 10.40 Sharing of 10.48 Legal system, assistance in improving the 10.100 Letterheads, use of 10.35 Limited recognition to practice in patent cases 11.9 M Malpractice, limiting client's liability 10.78 Materially false statements in application for registration 10.22 Misappropriation of funds 10.23 Misconduct 10.23 Misrepresentations 10.22, 10.23 Multiple employment 10.66 N Neglecting legal matters 10.77 Non-practitioner, formation of partnership with 10.49 Notice of suspension or exclusion 10.159 O Oath requirement 11.8 Officials, contact with 10.93 P Petitions: Fees in general 1.21 Reinstatement 10.160 Review decision of Commissioner 10.157 Review decision of Director of Enrollment and Discipline 11.2 Suspension of rules 10.170 Preserve secrets and confidence of client 10.56, 10.57 Pro-se applicant 1.31, 2.11 Professional impropriety, avoiding appearance of 1.110, 10.111 Promise of advantage, offer of 10.23 Property of client 10.112 Proprietary interest in subject matter 10.64 Publication in Official Gazette 10.11, 10.159, 10.160 R Recognition to Practice Before the Patent and Trademark Office: Agents 10.14, 11.6, 11.7 Aliens 10.14, 11.6, 11.9 Attorneys 10.14, 11.6, 11.7 Change of address, requirement to notify Director 10.11, 11.11 Person not suspended or excluded 11.2 Suspended or excluded practitioner 10.160 Examination of registration in patent cases 11.7 Examination fee 11.7 Foreigners 10.14, 11.6, 11.7 Former Patent and Trademark Office employees 10.10, 10.23 Government employees 10.23, 11.10 Limited recognition in patent cases 11.9 Non-lawyers, recognition in trademark cases 11.10 Patent cases 10.6-11.10 Recognition for representation 1.34, 2.17, 10.14 Recognition to practice 10.6-10.18 Refusal to recognize practitioner 10.15 Register of attorneys and agents in patent cases 11.5 Registration fee 11.8 Registration number 1.34 Removal of attorneys and agents from the register 10.11, 11.11 Representation by registered attorney or agent in patent cases 1.31 Requirements for registration 11.7 Review of Director's decision refusing registration 11.2 Trademark cases 10.14 Unauthorized representation by an agent 10.31, 11.10 Records, property and funds of client, maintaining of 10.112 Reinstatement after removal from the register 10.11, 11.2 Reinstatement of suspended or excluded non-practitioner 10.160 Representing client within bounds of the law 10.85 Reprimand of registered attorney or agent 10.130, 10.132 Resignation 10.133 Revocation of power of attorney in trademark case 2.19 S Scandalous statements, making of 10.23 Secrets and confidence, preservation of clients 10.56, 10.57 Service of process: Acceptance of service of process 15.3 Definition Scope and purpose 15.2 Settlement of claims of clients 10.67 Sharing legal fees 10.48 Signature and certificate of practitioner 10.18 Solicitation 10.32, 10.33 Statement concerning officials, making false 10.102 Suspension of practitioner 10.23, 10.130, 10.132, 10.158 Suspension of rules 10.170 T Testimony of Office employees: Definition 15a.2 General rule 15a.4 Office policy 15a.3 Private litigation 15a.6 Proceedings involving the United States 15a.5 Production of documents 15a.4 Scope 15a.1 Subpoena of Office employees 15a.7 Threats of criminal prosecution 10.88 Threats, use of 10.23 U Unauthorized practice 10.14, 10.23, 10.31, 10.46, 10.47 Undignified conduct 10.89 V Violating duty of candor and good faith 10.23 Violation of disciplinary rule, misconduct 10.23 W Withdrawal from employment 10.40 Withdrawal material information 10.22, 10.23 Witnesses 10.63, 10.92 Z Zealously representing the client 10.83, 10.84 37 CFR Ch. I (7-1-07 Edition) U.S. Patent and Trademark Office, Commerce