One of the most common mistakes parties make in the new Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings is failing to seek Board authorization to file a motion. Many practitioners incorrectly assume that the way to request relief of any sort is to simply file a motion. But what these practitioners fail to realize is that they must first obtain the Board’s permission (authorization) to even file the motion. Moreover, obtaining the Board’s permission to file a motion doesn’t mean that you are automatically entitled to the relief requested; it simply means that the Board will consider your motion (which the Board may ultimately deny on the merits).General Rule: Prior Authorization Required
The general rule governing prior Board authorization to file a motion states:
Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.
37 C.F.R. § 42.20(b).Exceptions to the Rule
Exceptions to the “prior authorization” rule are scattered throughout the Board Rules and Trial Practice Guide. Unfortunately, the Board has not listed in one place all of the exceptions to § 42.20(b).
Here I present my best attempt at listing all motions and other actions that do *not* require prior Board authorization, based on current written policy. There may be others, but these are the ones expressly mentioned somewhere in the Board Rules or Trial Guide.
Please post a comment or email me in case I missed anything.
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