Friday, January 20, 2006

Proposed TTAB Rules Require Initial Disclosure, Discovery Conference

On January 17, 2006, the USPTO issued a Notice of Proposed Rulemaking that would effect major changes in TTAB procedure, and particularly in TTAB discovery practice. The PTO expects the proposed rules to increase "the efficiency of the processes for commencing inter partes cases" and "the efficiency by which discovery and pre-trial information is exchanged."

The PTO's Notice provides the following summary:

The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter partes proceedings to serve on defendants their complaints or claims; to utilize in Board inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and to delete the option of making submissions to the Board in CD-ROM form. In addition, certain amendments clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology.

The new rules make sweeping changes in TTAB discovery practice. For example, they require the parties to engage in a discovery conference prior to the opening of the discovery period, and to provide "initial disclosure." The Board's standard protective order will apply in all cases. Disclosure of expert witnesses will take place in the middle of the 180-day discovery period. And certain pre-trial disclosure will occur 30-days before the opening of the testimony periods.

Comments on the proposed rule changes are due by March 20, 2006.

TTABlog note: With regard to the "initial disclosure," the proposed rules themselves do not set out exactly what must be disclosed. Instead, Rule 2.120(a)(1) refers to the provisions of the Federal Rules of Civil Procedure relating to automatic disclosure, and states that those provisions are applicable "in modified form, as noted in these rules and further explained in documents posted on the Web site of the Office." In the "Background" portion of the the Notice (page 2501), the PTO states that "parties will generally be found to have met their initial obligations if the provide information" about various listed items, which information the Board apparently feels comprises the "core information" that should be provided without the need for "traditional discovery."


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