523.03 Time for Filing Motion
37 CFR §2.120(f) Motion for an order to compel disclosure or discovery.
- (1) ... A motion to compel initial disclosures must be filed within thirty days after the deadline therefor and include a copy of the disclosure(s), if any, and a motion to compel an 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 deadline for pretrial disclosures for the first testimony period as originally set or as reset.. …
A motion to compel initial disclosures must be filed within thirty days after the deadline therefor to allow time for the non-compliant party to conduct discovery after making its disclosures. [ Note 1.] A motion to compel expert testimony disclosures must be filed prior to the close of the discovery period. [ Note 2.]
A motion to compel discovery does not necessarily have to be filed during the discovery period. [ Note 3.] 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 deadline for pretrial disclosures for the first testimony period. [ Note 4.] 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 5.] If the deadline for pretrial disclosures for the first testimony period is reset prior to the deadline for pretrial disclosures for the first testimony period, a motion to compel filed before the rescheduled or reset deadline for pretrial disclosures for the first testimony period is timely. However, as of the deadline for pretrial disclosures for the first testimony period, a motion to compel filed is untimely, even if it is filed prior to the opening of a rescheduled or reset deadline for pretrial disclosures for the first testimony period. [ Note 6.] There is no provision in the rule for Board discretion to consider an untimely motion to compel. Trial schedules include a forty-five day period between the close of discovery and the deadline for pretrial disclosures for the first testimony period to allow time for the filing of any necessary discovery motions.
NOTES:
3. 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).
5. See37 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 timely filing of properly-supported motion to compel discovery). Please Note: The deadlines for filing motions to compel were changed in the January 14, 2017 revisions to 37 CFR § 2.120(e) renumbered as § 2.120(f). Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings.
6. To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to compel would be untimely. 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.