1) To ensure that deposition testimony taken outside the United States is reliable, new rule 37 CFR 1.671(j) provides:
2) In addition to the requirements, discussed in our Special Information Letter, that must be included in a motion to compel testimony or production of documents or things in a foreign country (that the witness has been asked to testify in the United States and has refused to do so or that the individual or entity having possession, custody, and control of the document or thing has refused to produce the document or thing in the United States, and that the moving party has offered to pay the expenses involved in bringing the witness or the document or thing to the United States), the motion must also include a description of the procedures that will be used to compel the testimony or production of documents or things and an estimate of the time it is expected to take to obtain the testimony or produce the documents or things.
3) In addition to the sanctions available previously, the administrative patent judge may now impose a compensatory monetary sanction for expenses and/or attorney fees against a party for taking and maintaining a frivolous position in papers filed in the interference or against a party who fails to comply with the interference rules or an order issued in the interference.
The new interference rules also contain many new procedural and substantive changes. Any clients desiring additional information concerning these new rules should contact us.
The weight to be given deposition testimony taken in a foreign country will be determined in view of all the circumstances, including the laws of the foreign country governing the testimony. Little, if any, weight may be given to deposition testimony taken in a foreign country unless the party taking the testimony proves by clear and convincing evidence, as a matter of fact, that knowingly giving false testimony in that country in connection with an interference proceeding in the United States Patent and Trademark Office is punishable under the laws of that country and that the punishment in that country for such false testimony is comparable to or greater than the punishment for perjury committed in the United States.
This provision has been limited to deposition testimony because the perjury provisions of U.S. law apply to affidavits and declarations executed in foreign countries.2) In addition to the requirements, discussed in our Special Information Letter, that must be included in a motion to compel testimony or production of documents or things in a foreign country (that the witness has been asked to testify in the United States and has refused to do so or that the individual or entity having possession, custody, and control of the document or thing has refused to produce the document or thing in the United States, and that the moving party has offered to pay the expenses involved in bringing the witness or the document or thing to the United States), the motion must also include a description of the procedures that will be used to compel the testimony or production of documents or things and an estimate of the time it is expected to take to obtain the testimony or produce the documents or things.
3) In addition to the sanctions available previously, the administrative patent judge may now impose a compensatory monetary sanction for expenses and/or attorney fees against a party for taking and maintaining a frivolous position in papers filed in the interference or against a party who fails to comply with the interference rules or an order issued in the interference.
April 1995 Index