The Board’s proposed rule to opt into Federal Rule of Civil Procedure’s mandatory initial disclosure rule generated the most controversy. Previously, the TTAB had opted out of this rule. The final rule, although adopting initial disclosure, clarifies and scales down the extent of such required disclosures in response to the comments received from the Section and others.
For all contested proceedings instituted on or after November 1, 2007, the Board in its instituting order will provide for commencement of the discovery period 30 days after the answer due date. Between the answer date and the commencement of the discovery periods, the parties must participate in a disclosure conference to which an Interlocutory Attorney from the Board may be requested to join. Mandatory initial disclosures are due 30 days after the discovery period commences. Although the Board anticipates liberal grant to requests to extend or suspend made prior to filing of the answer, it states that it is unlikely to entertain motions to suspend after the answer and prior to the disclosure conference. Thus, as a practice matter, where parties are actively engaged in settlement discussions at the outset of a proceeding, they may want to suspend immediately or to extend the answer deadline in order to facilitate settlement without deadlines looming.
Absent an approved stipulation to the contrary that is approved by the Board, the new rule requires parties under FRCP 26(a) (1) (A) & (B) to make initial disclosures. Parties cannot make a summary judgment motion (except on jurisdictional or claim preclusion grounds) and may not engage in traditional discovery until such disclosures are made. The disclosures that must be made, however, were scaled back from those set forth in the proposed rule. Initial disclosure now requires the identification of witnesses and documents and things that may be relied upon by the party in establishing its claims or defenses with a sanction of preclusion at trial in the event that such initial disclosures or subsequent supplements to such disclosures are inadequate. Subject to Board approval, however, parties can stipulate to engage in more extensive initial disclosures or can forgo such disclosures entirely. This topic, thus, should be explored by the parties.