37 CFR 41.121 — Motions
Ninth Edition, Revision 01.2024
- (a)
Types of motions—
- (1)
Substantive motions. Consistent with the
notice of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
- (i) To redefine the scope of the contested case,
- (ii) To change benefit accorded for the contested subject matter, or
- (iii) For judgment in the contested case.
- (2) Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of requested relief or in a substantive motion.
- (3) Miscellaneous motions. Any request for relief other than a substantive or responsive motion must be filed as a miscellaneous motion.
- (1)
Substantive motions. Consistent with the
notice of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
- (b) Burden of proof. The party filing the motion has the burden of proof to establish that it is entitled to the requested relief.
- (c)
Content of motions; oppositions and replies.
- (1) Each motion must be filed as a
separate paper and must include:
- (i) A statement of the precise relief requested,
- (ii) A statement of material facts (see paragraph (d) of this section), and
- (iii) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence and the governing law, rules, and precedent.
- (2) Compliance with rules. Where a rule in part 1 of this title ordinarily governs the relief sought, the motion must make any showings required under that rule in addition to any showings required in this part.
- (3) The Board may order additional showings or explanations as a condition for filing a motion.
- (1) Each motion must be filed as a
separate paper and must include:
- (d)
Statement of material facts. (1) Each material fact
shall be set forth as a separate numbered sentence with specific
citations to the portions of the record that support the fact.
- (2) The Board may require that the statement of material facts be submitted as a separate paper.
- (e) Claim charts. Claim charts must be used in support of any paper requiring the comparison of a claim to something else, such as another claim, prior art, or a specification. Claim charts must accompany the paper as an appendix. Claim charts are not a substitute for appropriate argument and explanation in the paper.
- (f) The Board may order briefing on any issue that could be raised by motion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
Cited by
- 1002.02(j) Petitions Decided by the Patent Trial and Appeal Board
- 1480 Certificates of Correction — Office Mistake
- 1481 Certificates of Correction - Applicant’s Mistake
- 1481.02 Correction of Named Inventor
- 1485 Handling of Request for Certificates of Correction
- 2274 Appeal Brief
- 2284 Copending Ex Parte Reexamination and Interference Proceedings
- 710.02 Shortened Statutory Period and Time Limit Actions Computed
- 710.02(e) Extension of Time
- 37 CFR 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application
- 37 CFR 1.136 Extensions of time
- 37 CFR 1.322 Certificate of correction of Office mistake
- 37 CFR 1.323 Certificate of correction of applicant’s mistake
- 37 CFR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256
- 37 CFR 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding
- 37 CFR 1.993 Suspension of concurrent interference and inter partes reexamination proceeding
- 37 CFR 41.3 Petitions
- 37 CFR 41.208 Content of substantive and responsive motions