[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR104.23]

[Page 456]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 104_LEGAL PROCESSES--Table of Contents
 
   Subpart C_Employee Testimony and Production of Documents in Legal 
                               Proceedings
 
Sec. 104.23  Expert or opinion testimony.

    (a)(1) If the General Counsel authorizes an employee to give 
testimony in a legal proceeding not involving the United States, the 
testimony, if otherwise proper, shall be limited to facts within the 
personal knowledge of the employee. Employees, with or without 
compensation, shall not provide expert testimony in any legal 
proceedings regarding Office information, subjects, or activities except 
on behalf of the United States or a party represented by the United 
States Department of Justice.
    (2) The General Counsel may authorize an employee to appear and give 
the expert or opinion testimony upon the requester showing, pursuant to 
Sec. 104.3 of this part, that exceptional circumstances warrant such 
testimony and that the anticipated testimony will not be adverse to the 
interest of the Office or the United States.
    (b)(1) If, while testifying in any legal proceeding, an employee is 
asked for expert or opinion testimony regarding Office information, 
subjects, or activities, which testimony has not been approved in 
advance in writing in accordance with the regulations in this subpart, 
the witness shall:
    (i) Respectfully decline to answer on the grounds that such expert 
or opinion testimony is forbidden by this subpart;
    (ii) Request an opportunity to consult with the General Counsel 
before giving such testimony; and
    (iii) Explain that upon such consultation, approval for such 
testimony may be provided.
    (2) If the tribunal conducting the proceeding then orders the 
employee to provide expert or opinion testimony regarding Office 
information, subjects, or activities without the opportunity to consult 
with the General Counsel, the employee shall respectfully refuse to 
provide such testimony, citing United States ex rel. Touhy v. Ragen, 340 
U.S. 462 (1951).
    (c) If an employee is unaware of the regulations in this subpart and 
provides expert or opinion testimony regarding Office information, 
subjects, or activities in a legal proceeding without the aforementioned 
consultation, the employee shall, as soon after testifying as possible, 
inform the General Counsel that such testimony was given and provide a 
written summary of the expert or opinion testimony provided.
    (d) Proceeding where the United States is a party. In a proceeding 
in which the United States is a party or is representing a party, an 
employee may not testify as an expert or opinion witness for any party 
other than the United States.