MPEP § 1002.02(j) — Petitions Decided by the Patent Trial and Appeal Board

Ninth Edition, Revision 01.2024 · last revised R-07.2015

1. Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner. 37 CFR 41.41(b)(2).

2. Requests in an oral hearing to rely on a new argument based upon a recent relevant decision of the Patent Trial and Appeal Board or a Federal Court. 37 CFR 41.47(e)(2).

3. Requests made in a request for rehearing to review a panel’s failure to designate a new ground of rejection in its decision. 37 CFR 41.50(c).

4. Petitions to institute a trial. 37 CFR 42.4(a), 42.108, 42.208, 42.300, and 42.408.

5. Determination of the proper course of conduct in an interference or trial proceeding. 37 CFR 41.104, 42.5.

6. Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.

7. Motions including, but not limited to:

• a. Requests for oral argument on an issue raised in a paper. 37 CFR 41.124(a) and 42.70.
• b. Requests to authorize binding arbitration to determine any issue. 37 CFR 41.126(a).
• c. Imposition of a sanction against a party for misconduct. 37 CFR 41.128(a) and 42.12(a).
• d. Requests for additional discovery. 37 CFR 41.150(c) and 42.51(b)(2).
• e. Motions to exclude evidence. 37 CFR 41.155(c) and 42.64(c).
• f. Motions in limine for a ruling on the admissibility of evidence. 37 CFR 41.155(d) and 42.64.
• g. Motions to compel testimony or production of documents or things. 37 CFR 41.156 and 42.52(a).
• h. Motions related to the taking of testimony, including motions to quash. 37 CFR 41.157 and 42.53.
• i. Admissibility of expert testimony. 37 CFR 41.158 and 42.65.
• j. Requests for recognition of counsel pro hac vice in an interference or trial proceeding. 37 CFR 41.5(a) and 42.10(c).
• k. Disqualification of counsel for cause, subject to certification by the Chief Administrative Patent Judge, in an interference or trial proceeding. 37 CFR 41.5(b) and 42.10(d).
• l. Requests for withdrawal of counsel in an interference or trial proceeding. 37 CFR 41.5(c) and 42.10(e).
• m. Motions to seal a document or thing in a trial proceeding. 37 CFR 42.14, 42.54, and 42.55.
• n. Motions to expunge confidential information. 37 CFR 42.56.
• o. Requests to treat a settlement agreement as business confidential information. 37 CFR 42.74(c).
• p. Motions by patent owners to amend a patent in an inter partes review or post-grant review proceeding. 37 CFR 42.121(a), 42.221(a).
• q. Motions to submit supplemental information. 37 CFR 42.123(a), 42.223(a).
• r. Motions to correct a clerical or typographical errors in a petition for inter partes or post-grant review. 37 CFR 42.104(c), 42.204(c), 42.304(c).
• s. Requests for joinder. 37 CFR 42.122(b), 42.222(b).
• t. Requests to make a settlement agreement available to a Government agency or other person. 37 CFR 42.74(c).