524.03    Time for Filing Motion

37 CFR § 2.120(h)  Request for admissions.

  • (1) Any motion by a party to determine the sufficiency of an answer or objection to a request made by that party for an admission must be filed prior to the commencement of the first testimony period, as originally set or as reset. ...
  • (2) When a party files a motion to determine the sufficiency of an answer or objection to a request for an admission, the case will be suspended by the Board with respect to all matters not germane to the motion. After filing and service of the motion, no party should file any paper which is not germane to the motion, except as otherwise specified in the Board’s suspension order. … The filing of a motion to determine the sufficiency of an answer or objection to a request for admission shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition.

A motion to test the sufficiency of a response to a request for admission does not necessarily have to be filed during the discovery period, but it should be filed within a reasonable time after service of the response believed to be inadequate and, in any event, must be filed prior to the commencement of the first testimony period, as originally set or as reset. [ Note 1.] As with a motion to compel, once the first testimony period opens, a motion to test the sufficieny filed thereafter is untimely, even if testimony periods are subsequently reset. If testimony periods are reset prior to the opening of the plaintiff’s testimony period-in-chief as originally set, a motion to test sufficiency will be timely if it is filed before the rescheduled opening of plaintiff’s testimony period. 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. 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 testimony period opens, a motion to test sufficiency 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 2.] 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 test sufficiency 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 test the sufficiency of a response to a request for admission. 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. Cf. TBMP § 523.03.

NOTES:

 1.   37 CFR § 2.120(h)(1); Cf. Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 617 (TTAB 1974) (motion to compel timely even if filed after close of discovery).

 2.   37 CFR § 2.120(h)(1); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 697-98 n.7 (TTAB 1971) (opposer’s motion at final hearing seeking ruling on propriety of applicant’s responses to requests for admission was manifestly untimely; discovery is a pre-trial procedure and all matters pertinent thereto should be resolved prior to trial);Cf. La Maur, Inc. v. Bagwells Enterprises Inc., 193 USPQ 234, 235 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely).