[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: 37CFR104.22]

[Page 407]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
                         DEPARTMENT OF COMMERCE
 
PART 104--LEGAL PROCESSES--Table of Contents
 
   Subpart C--Employee Testimony and Production of Documents in Legal 
                               Proceedings
 
Sec. 104.22  Demand for testimony or production of documents.

    (a) Whenever a demand for testimony or for the production of 
documents is made upon an employee, the employee shall immediately 
notify the Office of the General Counsel at the telephone number or 
addresses in Sec. 104.2 and make arrangements to send the subpoena to 
the General Counsel promptly.
    (b) An employee may not give testimony, produce documents, or answer 
inquiries from a person not employed by the Office regarding testimony 
or documents subject to a demand or a potential demand under the 
provisions of this subpart without the approval of the General Counsel. 
The General Counsel may authorize the provision of certified copies not 
otherwise available under Part 1 of this title subject to payment of 
applicable fees under Sec. 1.19.
    (c)(1) Demand for testimony or documents. A demand for the testimony 
of an employee under this subpart shall be addressed to the General 
Counsel as indicated in Sec. 104.2.
    (2) Subpoenas. A subpoena for employee testimony or for a document 
shall be served in accordance with the Federal Rules of Civil or 
Criminal Procedure or applicable state procedure, and a copy of the 
subpoena shall be sent to the General Counsel as indicated in 
Sec. 104.2.
    (3) Affidavits. Except when the United States is a party, every 
demand shall be accompanied by an affidavit or declaration under 28 
U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal 
proceeding, the forum, the requesting party's interest in the legal 
proceeding, the reason for the demand, a showing that the desired 
testimony or document is not reasonably available from any other source, 
and, if testimony is requested, the intended use of the testimony, a 
general summary of the desired testimony, and a showing that no document 
could be provided and used in lieu of testimony.
    (d) Failure of the attorney to cooperate in good faith to enable the 
General Counsel to make an informed determination under this subpart may 
serve as a basis for a determination not to comply with the demand.
    (e) A determination under this subpart to comply or not to comply 
with a demand is not a waiver or an assertion of any other ground for 
noncompliance, including privilege, lack of relevance, or technical 
deficiency.
    (f) Noncompliance. If the General Counsel makes a determination not 
to comply, he or she will seek Department of Justice representation for 
the employee and will attempt to have the subpoena modified or quashed. 
If Department of Justice representation cannot be arranged, the employee 
should appear at the time and place set forth in the subpoena. In such a 
case, the employee should produce a copy of these rules and state that 
the General Counsel has advised the employee not to provide the 
requested testimony nor to produce the requested document. If a legal 
tribunal rules that the demand in the subpoena must be complied with, 
the employee shall respectfully decline to comply with the demand, 
citing United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951).