C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 41—PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart D—Contested Cases

37 C.F.R. § 41.156

Compelling testimony and production

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(a) Authorization required. A party seeking to compel testimony or production of documents or things must file a miscellaneous motion for authorization. The miscellaneous motion must describe the general relevance of the testimony, document, or thing and must:

(1) In the case of testimony, identify the witness by name or title, and

(2) In the case of a document or thing, the general nature of the document or thing.

(b) Outside the United States. For testimony or production sought outside the United States, the motion must also:

(1) In the case of testimony. (i) Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the foreign country and an estimate of the time it is expected to take to obtain the testimony; and

(ii) Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the expenses of the witness to travel to and testify in the United States.

(2) In the case of production of a document or thing. (i) Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and

(ii) Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.

Notes of Decisions
Cited in 3 cases (1 in the last 5 years), 2013–2024 · leading case: Abbott Labs. v. Cordis Corp., 710 F.3d 1318 (Fed. Cir. 2013).
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Abbott Labs. v. Cordis Corp., 710 F.3d 1318 (Fed. Cir. 2013). · cites it 3× “See 37 C.F.R. § 41.156 (2005); 37 C.F.R. § 42.”
El Encanto, Inc. v. Hatch Chile Co., Inc., 825 F.3d 1161 (10th Cir. 2016). “37 C.F.R. § 41.156 (a); id. § 42.52. To be sure, its regulations anticipate that the parties will file a “motion” first with the PTO.”
Downing Wellhead Equip., LLC v. Intelligent Wellhead Sys., Inc. (D. Colo. 2024). “37 C.F.R. § 41.156 (a). The Tenth Circuit construes § 24 and this rule as permitting subpoenas for not only depositions (or depositions and documents) but also just documents, if Downing wishes.”
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