703.01(h) Examination of Witnesses
37 CFR § 2.123 (e) Examination of witnesses.
- (1) Each witness before testifying shall be duly sworn according to law by the officer before whom his deposition is to be taken.
- (2) The deposition shall be taken in answer to questions, with the questions and answers recorded in their regular order by the officer, or by some other person (who shall be subject to the provisions of Rule 28 of the Federal Rules of Civil Procedure) in the presence of the officer except when the officer's presence is waived on the record by agreement of the parties. The testimony shall be taken stenographically and transcribed, unless the parties present agree otherwise. In the absence of all opposing parties and their attorneys or other authorized representatives, depositions may be taken in longhand, typewriting, or stenographically. Exhibits which are marked and identified at the deposition will be deemed to have been offered into evidence, without any formal offer thereof, unless the intention of the party marking the exhibits is clearly to the contrary.
- (3) Every adverse party shall have full opportunity to cross-examine each witness. If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 2.121(e). A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
- (4) All objections made at the time of the examination to the qualifications of the officer taking the deposition, or to the manner of taking it, or to the evidence presented, or to the conduct of any party, and any other objection to the proceedings, shall be noted by the officer upon the deposition. Evidence objected to shall be taken subject to the objections.
37 CFR § 2.123(g) Form of deposition.. (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. The deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer.
Fed. R. Civ. P. 30(b)(4) The parties may stipulate — or the court may on motion order — that a deposition be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and 37(b)(1), the deposition takes place where the deponent answers the questions.
Before testifying, a witness whose testimony deposition is being taken for use in a Board inter partes proceeding must be duly sworn, according to law, by the officer before whom the deposition is to be taken. [ Note 1.] See TBMP § 703.01(g).
The deposition is taken in answer to questions, and the questions and answers are recorded in order by the officer, or by some other person (who is subject to the provisions of Fed. R. Civ. P. 28) in the presence of the officer, except when the officer's presence is waived on the record by agreement of the parties. The testimony is taken stenographically and transcribed, unless the parties present agree otherwise. If no adverse party, or its attorney or other authorized representative, attends the deposition, the testimony may be taken in longhand, typewriting, or stenographically. [ Note 2.]
The Board does not accept videotape depositions. A deposition must be submitted to the Board in written form. [ Note 3.]
On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by telephone or other remote means. [ Note 4.] A deposition taken by telephone or other remote means is taken in the district and at the place where the witness is to answer the questions propounded to him or her. [ Note 5.]
Exhibits which are marked and identified at the deposition will be deemed to have been offered in evidence, even if no formal offer thereof is made, unless the intention of the party marking the exhibits is clearly to the contrary. [ Note 6.]
Every adverse party must be given a full opportunity to cross-examine the witness. If pretrial disclosures or the notice of deposition served by a party is improper or inadequate with respect to the witness, an adverse party may cross-examine the witness under protest while reserving the right to object to the receipt of the testimony in evidence. [ Note 7.] For information concerning the raising of an objection to a testimony deposition on the ground of improper or inadequate pretrial disclosures or notice, see 37 CFR § 2.123(e)(3), TBMP § 533.02, TBMP § 707.03(b)(2) and TBMP § 707.03(b)(3).
All objections made at the time of the taking of a testimony deposition as to the qualifications of the officer taking the deposition, the manner of taking the deposition, the evidence presented, the conduct of any party, or any other objection to the proceedings, are noted by the officer upon the deposition. Evidence objected to is taken subject to the objections. [ Note 8.] See TBMP § 707.03.
Questions to which an objection is made ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information that is, for example, privileged, trade secret or otherwise protected from disclosure by the protective order in place for the case. See TBMP § 404.09. For information concerning the propounding party's recourse if a witness not only objects to, but also refuses to answer, a particular question, see TBMP § 404.09 and TBMP § 707.03(d).
For further information concerning the raising of objections to testimony depositions, see TBMP § 533 and TBMP § 707.03.
If the parties so stipulate in writing, 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 9.]
NOTES:
1. 37 CFR § 2.123(e)(1). See Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) (objection to deposition taken in Honduras that officer designated in notice did not take deposition and that the transcript did not show due administration of the oath overruled where the person who conducted the deposition had authority to do so under Honduran law and the oath was administered in standard manner under Honduran law).
3. 37 CFR § 2.123(g) and 37 CFR § 2.126.
4. See Fed. R. Civ. P. 30(b)(4); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (noting parties may resolve conflict concerning the scheduling of deposition where travel for one party is involved, by conducting deposition by telephone or other electronic means); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552-53 (TTAB 1991) (Board granted request to attend deposition by telephone, noting that trademark rules do not specifically provide for or prohibit depositions by telephone and that federal court practice favors use of technological benefits).
5. Fed. R. Civ. P. 30(b)(4).
6. 37 CFR § 2.123(e)(2). Cf. Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1838 n.4 (TTAB 1989) (decided prior to the rule change which eliminated "formal" introduction of exhibits, but exhibits still not excluded).