523.03 Time for Filing Motion
37 CFR § 2.120(e) Motion for an order to compel disclosure or discovery.
- (1) ... A motion to compel initial disclosures or expert testimony disclosure must be filed prior to the close of the discovery period. A motion to compel discovery must be filed prior to the commencement of the first testimony period as originally set or as reset. …
A motion to compel initial or expert testimony disclosures must be filed prior to the close of the discovery period to allow time for the non-compliant party to conduct discovery after making its disclosures. [ Note 1.]
A motion to compel discovery does not necessarily have to be filed during the discovery period. [ Note 2.] However, the motion should be filed within a reasonable time after the failure to respond to a request for discovery or after service of the response believed to be inadequate and must, in any event, be filed before the first testimony period opens. [ Note 3.] A moving party should also wait a reasonable time after the responses are due to file a motion to compel, to allow time for receipt of responses. [ Note 4.] If testimony periods are reset prior to the opening of the plaintiff’s testimony period-in-chief, a motion to compel filed before a first trial period opens is timely. However, once the first trial period opens, a motion to compel filed thereafter is untimely, even if it is filed prior to the opening of a rescheduled or reset testimony period-in-chief for plaintiff. [ Note 5.] Please Note: 37 CFR § 2.196, which allows an action to be taken the succeeding day after a Saturday, Sunday or Federal holiday that is not a Saturday, Sunday or Federal holiday when the day, or last date, to take such action falls on a Saturday, Sunday or Federal holiday, is not applicable to the opening of a designated period. Thus, if the first testimony period opens on a Saturday, Sunday or Federal holiday, a motion to compel filed on the next business day is untimely and will not be considered. For more information, see TBMP § 112. There is no provision in the rule for Board discretion to consider an untimely motion to compel. Trial schedules include a sixty-day period between the close of discovery and the opening of the first testimony period to allow time for the filing of any necessary discovery motions.
NOTES:
2. See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1719 n.10 (TTAB 2008); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 617 (TTAB 1974).
4. 37 CFR § 2.120(e); MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1061 n.2 (TTAB 2009) (because timely-served discovery responses might not arrive until after deadline, receiving party should wait a reasonable time beyond service date before making a motion alleging failure to serve). See, e.g., Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001) (deficiencies in applicant’s discovery responses should have been addressed by filing of properly-supported motion to compel discovery prior to commencement of opposer’s testimony period).
5. Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 234-36 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely.