Office Personnel Not To Testify

It is the policy of the United States Patent and Trademark Office

(USPTO) that its employees, including patent examiners, will not appear as witnesses or

give testimony in legal proceedings, except under the conditions specified in

37 CFR Part 104,

Subpart C

. The definitions set forth in

37 CFR 104.1

and

the exceptions in

37

CFR 104.21

are applicable to this section. Any employee who

testifies contrary to this policy will be

dismissed or removed.

Whenever an employee of the USPTO, including a patent examiner, is

asked to testify or receives a subpoena, the employee shall immediately notify the

Office of the USPTO General Counsel. Inquiries requesting testimony shall be also

referred immediately to the Office of the USPTO General Counsel.

Any individual desiring the testimony of an employee of the USPTO,

including the testimony of a patent examiner or other quasi-judicial employee, must

comply with the provisions of

37 CFR Part 104, Subpart C

.

A request by a third party to take deposition testimony of a patent

examiner in a pending

ex parte

reexamination proceeding will

generally be denied in view of the

ex parte

nature of the

reexamination proceeding.

A request for testimony of an employee of the USPTO should be made to

the Office of the USPTO General Counsel at least

ten (10) working days

prior to the date of the expected testimony.

Patent examiners and other USPTO employees performing or assisting in

the performance of quasi-judicial functions, are forbidden to testify as experts or to

express opinions as to the validity of any patent.

If an employee is authorized to testify, the employee will be limited

to testifying about facts within the employee’s personal knowledge. Employees are

prohibited from giving expert or opinion testimony. Likewise, employees are prohibited

from answering hypothetical or speculative questions.

Fischer & Porter Co.

v.

Corning Glass Works,

61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). See

also

In re Mayewsky,

162 USPQ 86, 89 (E.D. Va

testify, the employee will be limited

to testifying about facts within the employee’s personal knowledge. Employees are

prohibited from giving expert or opinion testimony. Likewise, employees are prohibited

from answering hypothetical or speculative questions.

Fischer & Porter Co.

v.

Corning Glass Works,

61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). See

also

In re Mayewsky,

162 USPQ 86, 89 (E.D. Va. 1969) (deposition of

an examiner must be restricted to relevant matters of fact and must avoid any

hypothetical or speculative questions or conclusions based thereon);

ShafferTool Works v. Joy Mfg. Co.,

167 USPQ 170 (S.D. Tex. 1970)

(deposition of examiner should be limited to matters of fact and must not go into

hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or

conclusions of the examiner in acting upon a patent application). Employees will not be

permitted to give testimony with respect to subject matter which is privileged. Several

court decisions limit testimony with respect to quasi-judicial functions performed by

employees. Those decisions include

United States v. Morgan,

313 U.S.

409, 422 (1941) (improper to inquire into mental processes of quasi-judicial officer or

to examine the manner and extent to which the officer considered an administrative

record);

Western Electric Co. v. Piezo Technology, Inc.,

860 F.2d

428, 8 USPQ2d 1853 (Fed. Cir. 1988) (patent examiner may not be compelled to answer

questions which probe the examiner’s technical knowledge of the subject matter of a

patent);

McCulloch Gas Processing Co. v. Department of Energy,

650

F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of

individuals performing governmental functions not permitted);

In re

Nilssen,

851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or

scientific qualifications of examiners-in-chief are not legally relevant in appeal under

35  U.S.C.

134

since board members need not be skilled in the art to render

obviousness decision);

Lange v. Commissioner,

352 F

pp. 1981) (discovery of degree of expertise of

individuals performing governmental functions not permitted);

In re

Nilssen,

851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or

scientific qualifications of examiners-in-chief are not legally relevant in appeal under

35  U.S.C.

134

since board members need not be skilled in the art to render

obviousness decision);

Lange v. Commissioner,

352 F. Supp. 116, 176

USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief not relevant in

35 U.S.C.

145

action).

In view of the discussion above, if an employee is authorized to

testify in connection with the employee’s involvement or assistance in a quasi-judicial

proceeding which took place before the USPTO, the employee will not be permitted to give

testimony in response to questions that the Office determines are impermissible.

Impermissible questions include, but are not limited to, questions directed to

discovering the mental processes or expertise of a quasi-judicial official, such as:

(A) Information about that employee’s:

(1) Background;

(2) Expertise;

(3) Qualifications to examine or otherwise consider a

particular patent or trademark application;

(4) Usual practice or whether the employee followed a procedure

set out in any Office manual of practice (including the MPEP or TMEP) in a

particular case;

(5) Consultation with another Office employee;

(6) Understanding of:

(a) A patented invention, an invention sought to be

patented, or patent application, patent, reexamination or interference

file;

(b) Prior art;

(c) Registered subject matter, subject matter sought to

be registered, or a trademark application, registration, opposition,

cancellation, interference, or concurrent use file;

(d) Any Office manual of practice;

(e) Office regulations;

(f) Patent, trademark, or other law; or

ntion, an invention sought to be

patented, or patent application, patent, reexamination or interference

file;

(b) Prior art;

(c) Registered subject matter, subject matter sought to

be registered, or a trademark application, registration, opposition,

cancellation, interference, or concurrent use file;

(d) Any Office manual of practice;

(e) Office regulations;

(f) Patent, trademark, or other law; or

(g) The responsibilities of another Office employee;

(7) Reliance on particular facts or arguments;

(B) To inquire into the manner in and extent to which the employee

considered or studied material in performing a quasi-judicial function; or

(C) To inquire into the bases, reasons, mental processes, analyses,

or conclusions of that Office employee in performing the quasi-judicial

function.

Any request for testimony addressed or delivered to the Office of the

USPTO General Counsel shall comply with

37 CFR 104.22(c)

. All requests must

be in

writing.

The need for a subpoena may be obviated where the

request complies with

37 CFR 104.22(c)

if the party requesting the testimony further

meets the following conditions:

(A) The party requesting the testimony identifies the civil action or

other legal proceeding for which the testimony is being taken. The identification

shall include the:

(1) Style of the case;

(2) Civil action number;

(3) District in which the civil action is pending;

(4) Judge assigned to the case; and

(5) Name, address, and telephone number of counsel for all

parties in the civil action.

(B) The party agrees not to ask questions seeking information which

is precluded by

37 CFR 104.23

;

(C) The party shall comply with applicable provisions of the Federal

Rules of Civil Procedure, including Rule 30, and give ten (10) working days notice

to the Office of the USPTO General Counsel prior to the date a deposition is

desired

elephone number of counsel for all

parties in the civil action.

(B) The party agrees not to ask questions seeking information which

is precluded by

37 CFR 104.23

;

(C) The party shall comply with applicable provisions of the Federal

Rules of Civil Procedure, including Rule 30, and give ten (10) working days notice

to the Office of the USPTO General Counsel prior to the date a deposition is

desired. Fifteen (15) working days notice is required for any deposition which is

desired to be taken between November 15 and January 15;

(D) The party agrees to notice the deposition at a place convenient

to the USPTO. The Conference Room in the Office of the USPTO General Counsel is

deemed to be a place convenient to the Office; and

(E) The party agrees to supply a copy of the transcript of the

deposition to the USPTO for its records.

Absent a written agreement meeting the conditions specified in

paragraphs (A) through (E), a party must comply with the precise terms of

37 CFR

104.22(c)

and the USPTO will not permit a deposition without

issuance of a subpoena.

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