703.01(g)    Persons Before Whom Depositions May be Taken

37 CFR §  2.123 (d)  Persons before whom depositions may be taken. Depositions may be taken before persons designated by Rule 28 of the Federal Rules of Civil Procedure.

Fed. R. Civ. P. 28. Persons Before Whom Depositions May Be Taken.

  • (a) Within the United States.
    • (1) In General. Within the United States or a territory or insular possession subject to United States jurisdiction, a deposition must be taken before:
      • (A) an officer authorized to administer oaths either by federal law or by the law in the place of examination; or
      • (B) a person appointed by the court where the action is pending to administer oaths and take testimony.
    • (2) Definition of "Officer." The term "officer" in Rules 30, 31 and 32 includes a person appointed by the court under this rule or designated by the parties under Rule 29(a).
  • (b) In a Foreign Country.
    • (1) In General. A deposition may be taken in a foreign country:
      • (A) under an applicable treaty or convention;
      • (B) under a letter of request, whether or not captioned a "letter rogatory";
      • (C) on notice, before a person authorized to administer oaths either by federal law or by the law in the place of examination; or
      • (D) before a person commissioned by the court to administer any necessary oath and take testimony.
    • (2) Issuing a Letter of Request or a Commission. A letter of request, a commission, or both may be issued:
      • (A) on appropriate terms after an application and notice of it; and
      • (B) without a showing that taking the deposition in another manner is impracticable or inconvenient.
    • (3) Form of a Request, Notice, or Commission. When a letter of request or any other device is used according to a treaty or convention, it must be captioned in the form prescribed by that treaty or convention. A letter of request may be addressed "To the Appropriate Authority in [name of country]." A deposition notice or a commission must designate by name or descriptive title the person before whom the deposition is to be taken.
    • (4) Letter of Request--Admitting Evidence. Evidence obtained in response to a letter of request need not be excluded merely because it is not a verbatim transcript, because the testimony was not taken under oath, or because of any similar departure from the requirements for depositions taken within the United States.
  • (c) Disqualification. A deposition must not be taken before a person who is any party's relative, employee, or attorney; who is related to or employed by any party's attorney; or who is financially interested in the action.

Depositions in Board inter partes proceedings may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.]

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of the United States) a testimony deposition in a Board proceeding "must be taken before an officer authorized to administer oaths either by federal law or by the law in the place of examination; or before a person appointed by the court where the action is pending to administer oaths and take testimony." [ Note 2.] As a practical matter, Board proceeding depositions taken in the United States are usually taken before a court reporter who is authorized to administer oaths in the jurisdiction where the deposition is taken.

In a foreign country, a testimony deposition in a Board proceeding may be taken pursuant to Fed. R. Civ. P. 28(b). This means, for example, that a testimony deposition in a Board proceeding taken of a willing witness in a foreign country usually may be taken on notice before a U.S. consular official, or before anyone authorized by the law of the foreign country to administer oaths therein. Some countries, however, may prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. [ Note 3.] A party which wishes to take a testimony deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of American Citizen Services, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed. The testimony of an unwilling adverse party or non-party witness may be taken in a foreign country, if at all, only by the letter rogatory procedure, or by the letter of request procedure provided under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, or by any other procedure provided for the purpose by any future treaty into which the United States may enter. [ Note 4.] Cf. TBMP § 404.03(c) (concerning discovery deposition of non-party residing in foreign country) and TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country). If the parties so stipulate in writing (and if permitted by the laws of the foreign country, in the case of a deposition to be taken in a foreign country), a deposition may be taken before any person authorized to administer oaths, at any place, on any notice, and in any manner, and when so taken may be used like any other deposition. [ Note 5.]

NOTES:

 1.   37 CFR § 2.123(d).

 2.   See Fed. R. Civ. P. 28(a).

 3.   See 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2083 (2014).

 4.   Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 n.5 (TTAB 2009).

 5.   37 CFR § 2.123(b).