707.03(d)    Refusal to Answer Deposition Question

When an objection is made to a question propounded during a testimony deposition, the question ordinarily should be answered subject to the objection. However, 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.

If a deposition is being taken pursuant to a subpoena, issued pursuant to 35 U.S.C. § 24  and Fed. R. Civ. P. 45, and a witness not only objects to, but also refuses to answer, a particular question, the propounding party may obtain an immediate ruling on the propriety of the objection only by the unwieldy process of adjourning the deposition and applying, under 35 U.S.C. § 24, to the federal district court, in the jurisdiction where the deposition is being taken, for an order compelling the witness to answer. See TBMP § 404.09.

There is no mechanism for obtaining from the Board, prior to final hearing, a ruling on the propriety of an objection to a question propounded during a testimony deposition. See TBMP § 404.08 and TBMP § 707.03(c). Accordingly, where the witness in a testimony deposition refuses to answer a particular question, no court action is sought, and the Board finds at final hearing that the objection was not well taken, the Board may presume that the answer would have been unfavorable to the position of the party whose witness refused to answer, or may find that the refusal to answer reduces the probative value of the witness's testimony. [ Note 1.]

For information concerning a refusal to answer a discovery deposition question, see TBMP § 404.03(a)(2) regarding deposition of non-party residing in the United States, TBMP § 404.08(c) (Objections During Deposition), TBMP § 404.09 (Discovery Depositions Compared to Testimony Depositions), TBMP § 411 (Remedy for Failure to Provide Disclosures or Discovery), and TBMP § 523 (Motion to Compel Disclosures or Discovery).

NOTES:

 1.   See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505, 510 (Fed. Cir. 1983) (no error in drawing adverse inference where witnesses inappropriately refused to answer relevant questions), aff’g, 213 USPQ 594 (TTAB 1982); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (where opposer’s objections were found to be not well taken, Board presumed that the answers would have been adverse to opposer's position); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984); Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983); Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116 (TTAB 1982); Data Packaging Corp. v. Morning Star, Inc., 212 USPQ 109, 114 n.5 (TTAB 1981); Donut Shops Management Corp. v. Mace, 209 USPQ 615, 622 n.7 (TTAB 1981); S. Rudofker's Sons, Inc. v. "42" Products, Ltd., 161 USPQ 499, 499 (TTAB 1969); Bordenkircher v. Solis Entrialgo y Cia., S. A., 100 USPQ 268, 276-278 (Comm'r 1953). Cf. Land v. Regan, 342 F.2d 92, 144 USPQ 661, 668-69 (CCPA 1965).