[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR10.152]

[Page 369-370]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
                         DEPARTMENT OF COMMERCE
 
PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE--Table of Contents
 
Sec. 10.152  Discovery.

    Discovery shall not be authorized except as follows:
    (a) After an answer is filed under Sec. 10.136 and when a party 
establishes in a clear and convincing manner that discovery is necessary 
and relevant, the administrative law judge, under such conditions as he 
or she deems appropriate, may order an opposing party to:
    (1) Answer a reasonable number of written requests for admission or 
interrogatories;

[[Page 370]]

    (2) Produce for inspection and copying a reasonable number of 
documents; and
    (3) Produce for inspection a reasonable number of things other than 
documents.
    (b) Discovery shall not be authorized under paragraph (a) of this 
section of any matter which:
    (1) Will be used by another party solely for impeachment or cross-
examination;
    (2) Is not available to the party under 35 U.S.C. 122;
    (3) Relates to any disciplinary proceeding commenced in the Patent 
and Trademark Office prior to March 8, 1985;
    (4) Relates to experts except as the administrative law judge may 
require under paragraph (e) of this section.
    (5) Is privileged; or
    (6) Relates to mental impressions, conclusions, opinions, or legal 
theories of any attorney or other representative of a party.
    (c) The administrative law judge may deny discovery requested under 
paragraph (a) of this section if the discovery sought:
    (1) Will unduly delay the disciplinary proceeding;
    (2) Will place an undue burden on the party required to produce the 
discovery sought; or
    (3) Is available (i) generally to the public, (ii) equally to the 
parties; or (iii) to the party seeking the discovery through another 
source.
    (d) Prior to authorizing discovery under paragraph (a) of this 
section, the administrative law judge shall require the party seeking 
discovery to file a motion (Sec. 10.143) and explain in detail for each 
request made how the discovery sought is necessary and relevant to an 
issue actually raised in the complaint or the answer.
    (e) The administrative law judge may require parties to file and 
serve, prior to any hearing, a pre-hearing statement which contains:
    (1) A list (together with a copy) of all proposed exhibits to be 
used in connection with a party's case-in-chief,
    (2) A list of proposed witnesses,
    (3) As to each proposed expert witness:
    (i) An identification of the field in which the individual will be 
qualified as an expert;
    (ii) A statement as to the subject matter on which the expert is 
expected to testify; and
    (iii) A statement of the substance of the facts and opinions to 
which the expert is expected to testify,
    (4) The identity of government employees who have investigated the 
case, and
    (5) Copies of memoranda reflecting respondent's own statements to 
administrative representatives.
    (f) After a witness testifies for a party, if the opposing party 
requests, the party may be required to produce, prior to cross-
examination, any written statement made by the witness.