(a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding.
(b) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.
(c) Times. (1) Setting times. The Board may set times by order. Times set by rule are default and may be modified by order. Any modification of times will take any applicable statutory pendency goal into account.
(2) Extension of time. A request for an extension of time must be supported by a showing of good cause.
(3) Late action. A late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.
(d) Ex parte communications. Communication regarding a specific proceeding with a Board member defined in 35 U.S.C. 6(a) is not permitted unless both parties have an opportunity to be involved in the communication.
Notes of Decisions
Click-To-Call Tech., Lp v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018).
· cites it 2× “The Board then issued an order pursuant to 37 C.F.R. § 42.5 in which it requested additional briefing addressing the terms of the dismissal of the Inforocket Action.”
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015).
“” 37 C.F.R. § 42.5 (b). Finally, although no rule provides patent owners the right to file surreplies to a petitioner’s Reply, the Board has allowed such surreplies in inter partes reviews.”
Dell Inc. v. Acceleron, LLC, 884 F.3d 1364 (Fed. Cir. 2018).
· cites it 2× “37 C.F.R. § 42.5 (a). Those statutes, regulations, and practices embody expedition-and efficiency-based policies that the Board must consider in determining the scope of the remand proceedings.”
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015).
“37 C.F.R. § 42.5 (a). Those statutes, regulations, and practices embody expedition-and efficiency-based policies that the Board must consider in determining the scope of the remand proceedings.”
Mayne Pharma Int'l Pty v. Merck Sharp & Dohme Corp., 927 F.3d 1232 (Fed. Cir. 2019).
· cites it 2× “Alternatively, the PTO argues that, if this court can review this issue, the Board did not err in permitting Mayne's amendment because the purposes of the time bar-application of the estoppel and identification of Board conflicts-were served here and the Board's action was…”
Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311 (Fed. Cir. 2018).
“In contrast, the parties' challenges to the Board's sanctions order implicate the Board's power to issue sanctions and to accept late filings, 37 C.F.R. §§ 42.5 , 42.12, and ask us to examine whether the Board erred by identifying Atlanta Gas's parent company as a real party in…”
Josh Malone v. United States Pat. & Trademark Off. (4th Cir. 2026).
· cites it 4× “He argued that the ex parte communications violated the Administrative Procedure Act (APA), the Fifth Amendment’s Due Process Clause, and the PTO’s regulation against ex parte communications, 37 C.F.R. § 42.5 (d). On cross-motions for summary judgment, the district court granted…”
Igt v. Zynga Inc. (Fed. Cir. 2025).
· cites it 3× “, citing 37 C.F.R. § 42.5 (b), which states: “The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.”
Dell Inc. v. Acceleron, LLC (Fed. Cir. 2018).
· cites it 2× “ACCELERON, LLC, Appellee ______________________ Decided: March 19, 2018 Precedential Opinion ______________________ Please make the following change: On page 10, line 1 insert “Unless it chose to exercise its waiver authority under 37 C.F.R.§ 42.5(b),” before “The” to read as…”
Collabo Innovations, Inc. v. Sony Corp. (Fed. Cir. 2020).
“The Board’s authority to con- sider timely arguments, and to find untimely arguments waived, is a matter of compliance with 37 C.F.R. § 42.5 and the Office Patent Trial Practice Guide, 77 Fed.”
— 37 C.F.R. § 42.5(b) — 1 case
Dell Inc. v. Acceleron, LLC (Fed. Cir. 2018).
“ACCELERON, LLC, Appellee ______________________ Decided: March 19, 2018 Precedential Opinion ______________________ Please make the following change: On page 10, line 1 insert “Unless it chose to exercise its waiver authority under 37 C.F.R.§ 42.5(b),” before “The” to read as…”
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