[Federal Register Volume 59, Number 190 (Monday, October 3, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-24203]
[[Page Unknown]]
[Federal Register: October 3, 1994]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 940968-4268]
RIN 0651-AA71
Patent Appeal and Interference Practice
AGENCY: Patent and Trademark Office, Commerce..
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office proposes to amend the rules of
practice in patent cases, part 1 of title 37, Code of Federal
Regulations, relating to patent appeal and interference proceedings.
The proposed changes include amendments to conform the interference
rules to 35 U.S.C. 104 as amended by Public Law 103-182, 107 Stat. 2057
(1993) (North American Free Trade Agreement Implementation Act) and a
number of clarifying and housekeeping amendments.
DATES: Written comments must be submitted no later than November 30,
1994. A public hearing will be held on December 7, 1994. Requests to
present oral testimony must be received no later than December 2, 1994.
ADDRESSES: Address written comments to Board of Patent Appeals and
Interference, P.O. Box 15647, Arlington, Virginia 22215, marked to the
attention of Fred E. McKelvey. Written comments will be available for
public inspection in the interference copy room, which is located on
the 10th floor of Crystal Gateway 2, 1225 Jefferson Davis Highway,
Arlington, Virginia.
FOR FURTHER INFORMATION CONTACT:Fred E. McKelvey by telephone at (703)
603-3320 or by mail marked to the attention of Fred E. McKelvey at P.O.
Box 15647, Arlington, Virginia 22215.
SUPPLEMENTARY INFORMATION:
I. Amendments Responsive to Adoption of Public Law 103-182
Several of the proposed amendments to the interference rules (i.e.,
37 CFR 1.601 et seq.) are responsive to Public Law 103-182, 107 Stat.
2057 (1993) (North American Free Trade Agreement Implementation Act),
which amended 35 U.S.C. 104 to permit reliance on activities occurring
in a ``NAFTA country'' to prove a date of invention. Paragraph (b) of
Sec. 104 as amended states that ``the term `NAFTA country' has the
meaning given that term in section 2(4) of the North American Free
Trade Agreement Implementation Act.'' That section of Public Law 103-
182 has been codified at 19 U.S.C. 3301(4), which reads:
(4) NAFTA Country
Except as provided in section 3332 of this title, the term
``NAFTA country'' means--
(A) Canada for such time as the [North American Free Trade]
Agreement is in force with respect to, and the United States applies
the Agreement to, Canada; and
(B) Mexico for such time as the Agreement is in force with
respect to, and the United States applies the Agreement to, Mexico.
Accordingly, it is proposed to amend 37 CFR 1.601 by adding a new
paragraph (r) defining the term ``NAFTA country'' and ``non-NAFTA
country'' and to amend the following interference rules, which set
forth the requirements for preliminary statements, so as to permit
reliance on activities occurring in a NAFTA country: Secs. 1.622(b),
1.623(a), 1.624(a) and 1.628(b)(2).
37 CFR 1.684, which relates to the taking of testimony in a foreign
country, is proposed to be deleted and reserved in view of proposed
amendments to Secs. 1.671 and 1.672. Section 1.671 is proposed to be
amended by redesignating paragraph (h) as paragraph (i) and adding new
paragraphs (h) and (j). New paragraph (h) would set forth the
requirements for a motion Sec. 1.635 to compel testimony or the
production of documents or things in a foreign country. New paragraph
(j) would provide that the weight to be given testimony taken in a
foreign country will be determined on a case-by-case basis. Little, if
any, weight would be given to testimony taken in a foreign country
unless the party taking the testimony proves by clear and convincing
evidence (1) that giving false testimony in an interference proceeding
is punishable as perjury under the laws of the foreign country where
the testimony is taken and (2) that the punishment in a foreign country
for giving such false testimony is similar to the punishment for
perjury committed in the United States. The proposed amendments to
Sec. 1.672 include amending paragraphs (a) and (b), redesignating
current paragraphs (c) through (f) as paragraphs (e) through (h) and
adding new provisions identified as paragraphs (c) and (d). Paragraph
(a) as proposed to be amended would limit a party's case-in-chief
testimony to affidavits, except where testimony is to be compelled
under 35 U.S.C. 24 or compelled from a party or in a foreign country.
New paragraph (c) would provide that where an opponent objects to the
admissibility of any evidence contained in or submitted with an
affidavit, the opponent must file and serve objections stating with
particularity the nature of the objection, to which the party may
respond by filing supplemental affidavits and supplemental official
records and printed publications. New paragraph (c) further would
provide that any objections to the admissibility of any evidence
contained in or submitted with a supplemental affidavit shall be by a
motion to suppress under Sec. 1.656(h). New paragraph (d) of Sec. 1.672
would require any cross-examination of affiants to be by deposition
within the United States, which is defined in current Sec. 1.601(p) as
the United States of America, its territories and possessions. New
paragraph (d) of Sec. 1.672 would require that the party whose witness
is to be cross-examined notice the deposition under Sec. 1.673(e),
obtain a court reporter and provide a translator of the witness will
not testify in English. Although not set forth in the proposed rules,
any party attending the deposition can bring its own translator or the
parties can agree to share the cost of single mutually agreeable
translator. Paragraphs (g) and (h) of Sec. 1.671 as proposed to be
amended would provide that a party seeking to compel testimony or
production of documents or things pursuant to 35 U.S.C. 24 or to compel
testimony or production from a party or in a foreign country would have
to first file a Sec. 1.635 motion to obtain permission from an
administrative patent judge. A motion to compel testimony or the
production of documents or things in a foreign country would have to
show that the witness has been asked to testify in the United States
and has refused to do so or that the individual or entity having
possession, custody, and control of the document or thing has refused
to produce the document or thing in the United States, even though the
moving party has offered to pay the expenses involved in bringing the
witness or the document or thing to the United States. When permission
has been obtained from the administrative patent judge, the party,
after also complying with the current requirements for an oral
conference (Sec. 1.673(g)) and service of documents and a proffer of
access to things (Sec. 1.673(b)), would be required to notice the
deposition under Sec. 1.673(a).
Section 1.616 is proposed to be amended by adding a paragraph (c)
stating that to the extent that any information under the control of an
individual or entity located in a NAFTA country concerning knowledge,
use, or other activity relevant to proving or disproving a date of
invention has been ordered to be produced by an administrative patent
judge or the Board (Sec. 1.671(h)), but is not produced for use in the
interference to the same extent as such information could be made
available in the United States, the administrative patent judge or the
Board shall draw such adverse inferences as may be appropriate under
the circumstances, or take such other action permitted by statute,
rule, or regulation, in favor of the party that requested the
information in the interference, including imposition of appropriate
sanctions under Sec. 1.616(a).
Section 1.647, which currently requires a party who relies on a
non-English language document to provide an English-language
translation and an affidavit attesting to its accuracy, is proposed to
be amended to extend these requirements to non-English language
documents that a party is required to produce via discovery (see
Sec. 1.671(h)).
II. Attorney Fees and Expenses
Section 1.616 is proposed to be amended by redesignating current
paragraphs (a) through (e) as paragraphs (a)(1) through (a)(4) and
(a)(6) and adding new paragraphs (a)(5) and (b). New paragraph (a)(5)
would authorize the award of compensatory (as opposed to punitive)
expenses and/or attorney fees as a sanction for failing to comply with
the rules or an order, since there are occasions when such a sanction
would be more commensurate in scope with the infraction than the
sanctions that are currently authorized. New paragraph (b) would
authorize the imposition of a sanction, including a sanction in the
form of compensatory expenses and/or attorney fees, against a party for
taking or maintaining a frivolous position.
III. Certificates of Prior Consultation
Paragraph (b) of Sec. 1.637 currently requires that a miscellaneous
motion under Sec. 1.635 contain a certificate stating that the moving
party has conferred with all opponents in a good faith effort to
resolve by agreement the issues raised by the motion and indicating
whether any other party plans to oppose the motion. It is proposed to
amend paragraph (b) to extend the requirement for such a certificate to
motions filed under Secs. 1.633 and 1.634 and also to require the
certificate to indicate that the reasons and facts in support of the
motion were discussed with each opponent and, if an opponent has
indicated that it will oppose the motion, to identify the issues and/or
facts believed to be in dispute. The proposed requirement for
consultation should result in a reduction in the number of issues
raised by motions under Sec. 1.633 and 1.634 as well as a reduction in
the number of motions filed under those rules.
IV. Service of a ``Developing Record''
In addition to the amendments to Sec. 1.672 discussed above under
the heading ``Amendments responsive to adoption of Public Law 103-
182,'' it is proposed to amend Secs. 1.672, 1.682, 1.683 and 1.688 to
require each party to serve on each opponent a ``developing record''
that will evolve into the record required to be filed under Sec. 1.653.
Specifically, in Sec. 1.672, it is proposed to amend paragraph (b) to
provide that a party presenting testimony of a witness by affidavit
shall, no later than the time set by the administrative patent judge
for serving affidavits, file (which includes serve) the affidavit,
whether it is a new affidavit or an affidavit that was previously filed
by that party during ex parte prosecution of an application or under
Sec. 1.608 or 1.639(b).
Sections 1.682, 1.683 and 1.688 are proposed to be amended to
parallel the proposed amendments to Sec. 1.672. Specifically, paragraph
(a) of Sec. 1.682 as proposed to be amended would provide that a party
may introduce into evidence, if otherwise admissible, an official
record or printed publication not identified in an affidavit or on the
record during an oral deposition of a witness, by filing (which
includes serving) a copy of the official record or publication no later
than the time set for filing affidavits under Sec. 1.672(b), thereby
dispensing with the current requirement to file a notice of intent to
rely on the official record or printed publication. In Sec. 1.683,
paragraph (a) as proposed to be amended would provide that a party may
introduce into evidence, if otherwise admissible, testimony by
affidavit or oral deposition from another interference, proceeding, or
action involving the same parties by filing (which includes serving) a
copy of the affidavit or a copy of the deposition transcript no later
than the time set for filing affidavits under Sec. 1.672(b), thereby
dispensing with the current requirement for a party to file a motion
under Sec. 1.635 for leave to rely on such testimony. Section 1.688 as
proposed to be amended would provide that, if otherwise admissible, a
party may introduce into evidence an answer to a written request for an
admission or an answer to a written interrogatory obtained by discovery
under Sec. 1.687 by filing a copy of the request for admission or the
written interrogatory and the answer no later than the time set for
filing affidavits under Sec. 1.672(b). Thus, all evidence filed under
Secs. 1.672, 1.682, 1.683 and 1.688 that relates to a party's case-in-
chief should be filed together no later than the date set by an
administrative patent judge for the party to serve affidavits under
Sec. 1.672(b) for its case-in-chief and all evidence under those
sections that relates to the party's rebuttal should be filed no later
than the date set for the party to serve affidavits under Sec. 1.672(b)
for its case-in-rebuttal.
The pages of all affidavits and deposition transcripts would be
required to have sequential numbers that would also serve as the record
page numbers for the affidavits and transcripts in the party's record
when it is filed under Sec. 1.653. Likewise, the exhibits identified in
the affidavits and deposition transcripts and any official records and
printed publications served under Sec. 1.682(a) would be required to
have sequential numbers which would serve as the exhibit numbers when
the exhibits are filed with the party's record. Affidavits and
Sec. 1.683(a) testimony would have to be accompanied by an index giving
the name of each witness and the number of the page where the testimony
of each witness begins. The exhibits would have to be accompanied by an
index briefly describing the nature of each exhibit and giving the
number of the page of affidavit or Sec. 1.683(a) testimony where each
exhibit identified in an affidavit or during an oral deposition is
first identified and offered into evidence.
An opponent who objects to the admissibility of any evidence filed
under Secs. 1.672(b), 1.682(b), 1.683(a) and 1.688(a) would have to
file objections under Secs. 1.672(c), 1.682(c), 1.683(b) and 1.688(b)
no later than the date set by the administrative patent judge for
filing objections to affidavits under paragraph Sec. 1.672(c). An
opponent who fails to challenge the admissibility of the evidence on a
ground that could have been raised in a timely objection under
Secs. 1.672(c), 1.682(c), 1.683(b) or 1.688(b) would not be permitted
to move under Sec. 1.656(h) to suppress the evidence on that ground. If
an opponent timely files an objection to evidence filed under
Secs. 1.672(b), 1.682(b), 1.683(a) or 1.688(a), the party may respond
by filing supplemental affidavits and, in the case of objections to
evidence filed under Secs. 1.672(b), 1.682(b) and 1.683(a), may also
file supplemental official records and printed publications. No
objection to the admissibility of supplemental evidence shall be made,
except as provided by Sec. 1.656(h). The page numbers of the
supplemental affidavits would be sequentially numbered beginning with
the number following the last page number of the testimony served under
Secs. 1.672(b), 1.683(a) and 1.688(a). Likewise, any additional
exhibits identified in the supplemental affidavits and any supplemental
official records and printed publications would be given sequential
numbers beginning with the number following the last number of the
previously identified exhibits. After the time expires for filing
objections and supplemental affidavits, or earlier when appropriate,
the administrative patent judge would set a time within which any
opponent may file a request to cross-examine an affiant on oral
deposition.
If any opponent requests cross-examination of an affiant, the party
shall notice a deposition at a reasonable location within the United
States under Sec. 1.673(e) for the purpose of cross-examination. Any
redirect and recross shall take place at the deposition. Within 45 days
of the close of the period for taking cross-examination (Sec. 1.678 is
proposed to be amended to change the time for filing certified
transcripts from 45 days to 30 days), the party would serve (but not
file) a copy of each deposition transcript on each opponent together
with copies of any additional documentary exhibits identified by a
witness during a deposition. The pages of the transcripts served under
this paragraph and the accompanying exhibits would be sequentially
numbered in the manner discussed above. The deposition transcripts
would be accompanied by an index of the names of the witnesses, giving
the number of the page where cross-examination, redirect and recross of
each witness begins, and an index of exhibits of the type specified in
Sec. 1.672(b). At this point in time, the opponent will have been
served with all of the testimony that will appear in the party's record
(with the same page numbers) as well as all of the documentary exhibits
that will accompany the record (with the same exhibit numbers).
Since the proposed amendments to Sec. 1.672 would require a party,
during its testimony period, to file all affidavits on which it intends
to rely at final hearing, it is proposed to delete as unnecessary
paragraph (e) of Sec. 1.671, which requires a party to give notice of
intent to rely on an affidavit filed by that party during ex parte
prosecution of an application or an affidavit under Sec. 1.608 or
1.639(b).
V. Withdrawal of Previous Notices
Some of the clarifying and housekeeping amendments proposed in part
VI below originally appeared in the same or similar form in two
previous notices of proposed rulemaking, which are hereby withdrawn:
(a) RIN: 0651-AA53--``Patent Interference Practice--Notice of
Proposed Rulemaking,'' 57 Fed. Reg. 2698 (Jan. 23, 1992), reprinted in
1135 Off. Gaz. Pat. Office 37 (Feb. 11, 1992); and
(b) RIN:0651-AA66--``Patent Interference Practice--Separate
Patentability of Claims,'' 58 FR 39704 (July 26, 1993), reprinted in
1153 Off. Gaz. Pat. Office 59 (Aug. 17, 1993).
VI. Miscellaneous Amendments
Throughout the rules, the term ``examiner-in-chief'' has been
replaced by ``administrative patent judge'' to reflect the change in
the title of the members of the Board. See Commissioner's Notice of
October 13, 1993, published as ``New Title for Examiners-in-Chief,''
1156 Off. Gaz. Pat. Office 332 (Nov. 9, 1993).
In Sec. 1.11, it is proposed to amend paragraph (e) to allow access
to the file on an interference involving a reissue application once the
interference has terminated or an award of priority or judgment has
been entered as to all counts. Although it was intended that the public
have access to any interference that involves a case which is open to
the public and Sec. 1.11(b) provides that a reissue application is open
to the public, interferences involving reissue applications were
inadvertently not included in current Sec. 1.11(e).
In Sec. 1.192, which specifies the contents of the brief of an
appellant for final hearing in an ex parte appeal, it is proposed to
amend paragraph (a) in three respects. The first proposal is to
simplify the language used to refer to a brief filed by an applicant
who is not represented by a registered practitioner. The second is to
delete the requirement that such a brief be in substantial compliance
with the requirements of paragraphs (c) (1), (2), (6) and (7), because
experience has shown that it is better to evaluate such briefs on a
case-by-case basis. The third is to codify the ``good cause'' standard
that is currently used to determine whether the Board will consider any
arguments or authorities not included in the brief. It is proposed to
make clarifying amendments to paragraphs (c), (c)(5) and (c)(5)(ii), to
redesignate current paragraphs (c)(1) through (c)(7) as paragraphs
(c)(3) through (c)(9), and to add new paragraphs (c)(1) and (c)(2) that
would require an appellant who has filed an appeal to the Board to
identify the real party in interest and any related appeals and
interferences. The proposed requirement to identify the real party in
interest is derived from Federal Circuit Rule 47.4 and Federal Circuit
Form 7. For some time, it has been necessary to know the identity of
the real party in interest. This information would permit members of
the Board to comply with ethics regulations associated with working on
matters in which the member has an interest. The proposed requirement
to identify related appeals and interferences is derived in part from
Federal Circuit Rule 47.5 and, if adopted, would prevent the Board from
entering inconsistent decisions in related cases.
Section 1.601 is proposed to be amended in several ways. Paragraph
(f) as proposed to be amended would specify that a count should be
sufficiently broad as to encompass the broadest corresponding
patentable claim of each of the parties without being so broad as to be
unpatentable over the prior art and also to indicate that a phantom
count is unpatentable to all parties under the written description
requirement of the first paragraph of 35 U.S.C. 112. Paragraph (g) as
proposed to be amended would broaden the definition of ``effective
filing date'' to mean the actual filing date when the involved
application or patent is not entitled to the benefit of the filing date
of an earlier application. Specifically, paragraph (g) would provide
that the effective filing date of an application is the filing date of
an earlier application accorded to the application under 35 U.S.C. 119,
120, 121 or 365, or, if no benefit is accorded, the filing date of the
application. The effective filing date of a patent would be defined as
the filing date of an earlier application accorded to the patent under
35 U.S.C. 120, 121, or 365(c) or, if no benefit is accorded, the filing
date of the application which matured into the patent. The reference to
35 U.S.C. 121 is included to eliminate any doubt that a divisional
application may be entitled to an earlier filing date in accordance
with 35 U.S.C. 121.
Paragraph (j) is proposed to be amended by changing ``which'' to
``that.'' Paragraph (1) is proposed to be amended by changing
``assignee'' to ``assignee of record in the Patent and Trademark
Office.'' Paragraph (q) is proposed to be amended by deleting ``a panel
of'' as superfluous.
Section 1.602 is proposed to be clarified by changing ``within 20
days of'' to ``within 20 days after.''
Sections 1.603 and 1.606 are proposed to be amended by deleting the
third sentence (``Each count shall define a separate patentable
invention.'') as redundant in view of the identical sentence in
Sec. 1.601(f). In addition, it is proposed to clarify Secs. 1.603 and
1.606 by amending them to require each application to contain, or be
amended to contain, at least one patentable claim which corresponds to
each count.
In section 1.604, it is proposed to amend paragraph (a)(1) by
changing ``his or her'' to ``its.''
In Sec. 1.605, it is proposed to amend paragraph (a) for
clarification.
Section 1.606 is also proposed to be amended to note that the claim
in the application need not be, and most often will not be, identical
to a claim in the patent.
In Sec. 1.607, it is proposed to amend paragraph (a)(4) by changing
``his or her'' to ``its'' and to add a new paragraph (a)(6) requiring
an applicant seeking an interference with a patent to demonstrate
compliance with 35 U.S.C. 135(b) which provides:
A claim which is the same as, or for the same or substantially
the same subject matter as, a claim of an issued patent may not be
made in any application unless such a claim is made prior to one
year from the date on which the patent was granted.
Requiring an applicant to show compliance with Sec. 135(b) before an
interference is declared will prevent an interference from being
declared where the applicant cannot satisfy Sec. 135(b) with respect to
any claim alleged to correspond to the proposed count.
In Sec. 1.608, it is proposed to amend paragraphs (a) and (b) in
several respects. First, both paragraphs are proposed to be amended to
delete the information about effective filing dates, which would appear
instead in Sec. 1.601(g) as proposed to be amended. Second, it is
proposed to relax the current requirement of paragraph (a) for an
affidavit filed by the applicant. Paragraph (a) as proposed to be
amended would permit a statement to be filed by the applicant or a
practitioner of record. Third, it is proposed to change ``sufficient
cause'' in paragraph (b) and in other interference rules to ``good
cause'' in order to make it clear that only one ``cause'' standard is
intended. Fourth, it is proposed to change ``8\1/2\ x 11 inches (21.8
by 27.9 cm.)'' to ``21.8 by 27.9 cm. (8\1/2\ x 11 inches).''
In Sec. 1.609, it is proposed to amend paragraphs (b)(2) and (b)(3)
to require the examiner's statement (i.e., the form PTO-850, also known
as the initial interference memorandum) to explain why each claim
designated as corresponding to a count is directed to the same
patentable invention as the count and why each claim designated as not
corresponding to a count is not directed to the same patentable
invention as the count. The proposed amendment, if adopted, would
provide the Board and the parties with the benefit of the examiner's
reasoning and would provide a better foundation for considering
preliminary motions to designate claims as corresponding or as not
corresponding to a count.
In Sec. 1.610, it is proposed to amend paragraph (a) by deleting
the language ``a panel consisting of at least three members of'' as
superfluous and by deleting the reference to Sec. 1.640(e), which is
proposed to be amended to allow a request for reconsideration under
Sec. 1.640(c) to be decided by an individual administrative patent
judge rather than by the Board. It is further proposed to amend
paragraph (b) by deleting ``Unless otherwise provided in this
section,'' as unnecessary in light of the proposed amendment to
paragraph (a).
Section 1.611 is proposed to be amended by redesignating paragraph
(a)(8) as paragraph (a)(9) and adding a new paragraph (a)(8) requiring
that a notice of declaration of interference indicate why each claim
designated as corresponding to a count is directed to the same
patentable invention as the count and why each claim designated as not
corresponding to a count is not directed to the same patentable
invention as the count. This information should assist the parties in
deciding whether to move to have claims designated as corresponding or
not corresponding to the count. An administrative patent judge can
satisfy this requirement by enclosing a copy of the examiner's
statement with the parties' copies of the declaration notice. It is
also proposed to capitalize the first word in each of paragraphs (d)(2)
and (d)(3).
In Sec. 1.612, it is proposed to amend paragraph (a) to change
``opposing party's'' to ``opponent's'' and to add a sentence referring
to Sec. 1.11(e) concerning public access to interference files.
In Sec. 1.614, it is proposed to clarify the meaning of paragraph
(a) by changing ``the Board shall assume jurisdiction'' to ``the Board
acquires jurisdiction.''
In Sec. 1.616, in addition to authorizing an award of compensatory
attorney fees and expenses in appropriate circumstances, as discussed
above, it is proposed to amend current paragraph (b) (which is proposed
to be redesignated as paragraph (a)(2)) to permit a party to be
sanctioned for failing to comply with the rules or an order by entering
an order precluding the party from filing any type of paper. Paragraph
(b) currently permits entry of an order precluding the filing of a
motion or a preliminary statement.
Section 1.617 is proposed to be amended to authorize a party
against whom a Sec. 1.617(a) order to show cause has been issued to
respond with an appropriate preliminary motion under Sec. 1.633(c), (f)
or (g). A preliminary motion under Sec. 1.633(c) to redefine the
interference, under Sec. 1.633(f) for benefit of the filing date of an
earlier application or under Sec. 1.633(g) attacking the benefit
accorded a patentee may be appropriate where the count set forth in the
notice declaring the interference is not the same as the count proposed
in the applicant's showing under Sec. 1.608(b). A preliminary motion
under Sec. 1.633(f) or (g) may also be appropriate where the count set
forth in the notice delcaring the interference is the same as the count
proposed in the applicant's showing under Sec. 1.608(b), but the notice
either fails to accord the applicant the benefit of the filing date of
an earlier application whose benefit was requested in the Sec. 1608(b)
showing or accords the parentee the benefit of the filing date of an
earlier application whose benefit the Sec. 1.608(b) showing argued
should not be accorded the patentee.
In Sec. 1.618, it is proposed to amend paragraph (a) for
clarification and to state that a paper that has been returned as
unauthorized will not thereafter be considered in the interference.
Paragraph (a) currently states that a paper that has been returned as
unauthorized will not thereafter be considered by the Patent and
Trademark Office.
In Sec. 1.625, it is proposed to simplify paragraph (a) by deleting
``the invention was made in the United States or abroad and'' as
surplusage.
Section 1.626 is proposed to be simplified by changing ``earlier
application filed in the United States or aboard'' to ``earlier filed
application.'' The same change is proposed for Secs. 1.630, 1.633(f),
1.633(g), 1.637(c)(1)(vi), 1.637(e)(1)(viii), 1.637(e)(2)(vii) and
1.637(h)(4).
In Sec. 1.628, it is proposed to amend paragraph (a) by changing
``ends of justice'' to ``interest of justice'' to be consistent with
the language used in Secs. 1.628(a) and 1.687(c), since a single
standard is intended. Paragraph (a) of Sec. 1.628 is also proposed to
be amended to apply the ``interest of justice'' requirement only to
corrected preliminary statements that are filed on or after the due
date for serving preliminary statements. Where the moving party has not
yet seen the opponent's statement, an opponent will not normally be
prejudiced by the filing of a corrected statement.
In Sec. 1.629, it is proposed to amend paragraphs (a), (c)(1) and
(d) to make them consistent with the proposed amendment of the
definition of ``effective filing date'' in Sec. 1.601(g).
In Sec. 1.631, it is proposed to amend paragraph (a) to delete ``by
the examiner-in-chief'' (second occurrence) as superfluous.
Section 1.632 is proposed to be amended to more precisely state
that a notice of intent to argue abandonment, suppression or
concealment must be filed ``within ten days after,'' rather than
``within ten days of,'' the close of the testimony-in-chief of the
opponent.
In Sec. 1.633, it is proposed to amend paragraph (a) to specify
that a claim shall be construed in light of the specification of the
application or patent in which it appears. This amendment would
administratively set aside the judicially created rule of In re Spina,
975 F.2d 854, 856, 24 USPQ2d 1142, 1144 (Fed. Cir. 1992), to the extent
it held that the interference rules require that an ambiguous claim
copied from a patent for interference purposes be construed in light of
the disclosure of the patent. A claim that has been added to a pending
application for any purpose, including to provoke an interference,
would be given the broadest reasonable interpretation consistent with
the disclosure of the application to which it is added, as are claims
which are added during ex parte prosecution. As explained In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
[D]uring patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. When the
applicant states the meaning that the claim terms are intended to
have, the claims are examined with that meaning, in order to achieve
a complete exploration of the applicant's invention and its relation
to the prior art. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ
541, 550-51 (CCPA 1969) (before the application is granted, there is
no reason to read into the claim the limitations of the
specification). The reason is simply that during patent prosecution
when claims can be amended, ambiguities should be recognized, scope
and breadth of language explored, and clarification imposed.
Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d
1436, 1438 (Fed. Cir. 1987); In re Yamamoto, 740 F.2d 1569, 1571,
222 USPQ 934, 936 (Fed. Cir. 1984).
If a party believes an opponent's claim corresponding to the count is
ambiguous when construed in light of the opponent's disclosure, the
party should move under Sec. 1.633(a) for judgment against the claim on
the ground of unpatentability under the second paragraph of 35 U.S.C.
112. In paragraph (a), it is also proposed to delete ``by reference to
the prior art of record'' as unnecessary.
Paragraphs (a)(1) and (a)(2) of Sec. 1.633 are proposed to be
amended by deleting some unnecessary language from each paragraph and
by changing ``derivation'' to ``Derivation'' in paragraph (a)(2).
Paragraph (b), which concerns motions for judgment on the ground of no
interference-in-fact, is proposed to be amended by stating that it is
possible for claims of opponents presented in ``means plus function''
format to define separate patentable inventions even though the claims
of the opponents contain the same literal wording. The reason is that
the sixth paragraph of 35 U.S.C. 112, which is applicable to ``means
plus function'' limitations in application claims and patent claims,
provides that such limitations are to be construed as covering the
corresponding structure disclosed in the associated application or
patent and equivalents thereof. In re Donaldson Co., 16 F.3d 1189, 29
USPQ2d 1845 (Fed. Cir. 1994).
Paragraph (i) of Sec. 1.633 in its current form authorizes a party
who opposes a preliminary motion under Sec. 1.633 (a), (b) or (g) to
file a preliminary motion under Sec. 1.633 (c) or (d). It is proposed
to amend paragraph (i) to additionally authorize a party-patentee to
file a preliminary motion under Sec. 1.633(h) to add to the
interference an application for reissue of the party's involved patent.
Because a reissue application can include an amended or new claim to be
designated as corresponding to a count, the proposed amendment would
give a patentee an option similar to that afforded in the same
situation to a party-applicant, who can file a preliminary motion under
Sec. 1.633(c)(2) to amend a claim in, or add a claim to, its involved
application to be designated as corresponding to a count.
In Sec. 1.637, it is proposed to amend paragraph (a) to incorporate
the substance of the Notice of the Chairman of the Board of Patent
Appeals and Interferences of August 10, 1990, published as
``Interferences--Preliminary Motions for Judgment,'' 1118 Off. Gaz.
Pat. Office 19 (Sept. 11, 1990). Paragraph (a) as proposed to be
amended would state that where a party files a preliminary motion for
judgment against an opponent under Sec. 1.633(a) based on
unpatentability over prior art having a date that appears to make the
prior art equally applicable to the moving party, it will be presumed,
without regard to the dates alleged in the preliminary statement of the
party, that the cited prior art is also applicable to the party unless
there is included with the motion an explanation, and evidence if
appropriate, as to why the prior art does not apply to the party. The
proposed amendment differs from the notice by providing that if the
motion fails to include a sufficient explanation or evidence, the party
will not be permitted to rely on any such explanation or evidence in
response to or in any subsequent action in the interference. The notice
had directed the administrative party, a procedure which results in
delaying a decision on the preliminary motion. Paragraph (a) is further
proposed to be clarified by changing ``Every'' in the second sentence
to ``Each.''
Paragraph (c)(1) of Sec. 1.637 sets forth the requirements for a
preliminary motion to add or substitute a proposed count. It is
proposed to amend paragraph (c)(1)(v) in two respects. The first is to
require a moving party to show that the proposed count is patentable
over the prior art. The second is to specify that a proposed substitute
count need only be shown to be patentably distinct from the other
counts proposed to remain in the interference, since a proposed
substitute count need not be patentably distinct from the count it is
to replace. Paragraph (c)(1)(vi) is proposed to be amended to clarify
that a preliminary motion under Sec. 1.633(c)(1) need not be
accompanied by a preliminary motion for benefit under Sec. 1.633(f)
unless the moving party seeks benefit with respect to the proposed
count. It is also proposed to add a new paragraph (c)(1)(vii)
specifying that where an opponent is accorded the benefit of the filing
date of an earlier filed application in the notice of declaration of
the interference, the moving party must show why the opponent is not
also entitled to benefit of the filing date of the earlier filed
application with respect to the proposed count. Otherwise, the opponent
will be presumed to be entitled to the benefit of the earlier filed
application with respect to the proposed count. The amendment would
eliminate the need for an opponent to respond to a Sec. 1.633(c)(1)
motion with a preliminary motion under Sec. 1.633(f) claiming benefit,
which has the effect of delaying a decision on the Sec. 1.633(c)(1)
motion.
Paragraphs (c)(2) (ii) and (iii) of Sec. 1.637 are proposed to be
amended for clarification. Paragraphs (c)(2)(iv) and
Sec. 1.637(c)(3)(iii), which relate to Sec. 1.633(f) motions for
benefit, are proposed to be deleted and reserved as unnecessary, since
motions under Sec. 1.633(c) (2) and (3) do not efect the count.
Paragraph (c)(3)(ii), which applies to motions under Sec. 1.633(c)(3)
to designate a claim as corresponding to a count, is proposed to be
amended to have claims compared to claims, as is the case in
Sec. 1.633(c)(4)(ii), which applies to motions filed under
Sec. 1.633(c)(4) to designate a claim as not corresponding to a count.
The proposed amendment avoids the need to compare claims to counts,
which are subject to different rules of construction than are claims.
Paragraph (c)(4)(ii) of Sec. 1.637 is proposed to be amended to
require that a party moving to designate a claim as not corresponding
to a count must show that the claim could not serve as the basis for a
preliminary motion under Sec. 1.633(c)(1) to add a new count. The
proposed amendment, if adopted, would preclude a party from moving to
designate one of its claims as not corresponding to the count where an
opponent's disclosure would support a similar claim, in which case the
party could file a Sec. 1.633(c)(1) preliminary motion proposing a
claim to be added to the opponent's application and suggesting that the
proposed claim and the party's claim in question be designated as
corresponding to a proposed new count.
Paragraph (d)(4) of Sec. 1.637, which authorizes a party to file a
motion for benefit together with a motion under Sec. 1.633(d), is
proposed to be deleted and reserved as unnecessary, because motions
filed under Sec. 1.633(d) do not affect the count. Paragraphs
(e)(1)(viii) and (e)(2)(vii) are proposed to be amended to make it
clear that a preliminary motion under Sec. 1.633(e) (1) or (2) need not
be accompanied by a preliminary motion for benefit under Sec. 1.633(f)
unless the moving party seeks benefit with respect to the proposed
count. Paragraphs (e)(1)(ix) and (e)(2)(viii) are proposed to be added
to specify that where an opponent is accorded the benefit of the filing
date of an earlier filed application in the notice of declaration of
the interference, the moving party must show why the opponent is not
entitled to benefit of the earlier filed application with respect to
the proposed count; otherwise, the opponent will be presumed to be
entitled to benefit of the earlier filed application with respect to
the proposed count. Paragraph (f)(2) of Sec. 1.637 is proposed to be
amended to change ``abroad'' to ``in a foreign country'' and to delete
both occurrences of ``filed abroad'' as superfluous.
Paragraph (h) of Sec. 1.637 is proposed to be amended to explain
that a preliminary motion to add a reissue application that includes a
new or amended claim to be designated as not corresponding to a count
will be given the same treatment as a preliminary motion proposing to
amend a claim in, or add a new claim to, an involved application to be
designated as not corresponding to the count, i.e., the preliminary
motion will be dismissed. See L'Esperance v. Nishimoto, 18 USPQ2d 1534,
1537 (Bd. Pat. App. & Int. 1991) (interference rules do not authorize a
motion by party-applicant to amend or add a claim to be designated as
not corresponding to the count).
In Sec. 1.638, it is proposed to amend paragraph (b) for
clarification by changing ``a reply'' to ``any reply.''
in Sec. 1.639, it is proposed to amend paragraph (a), which
requires that a motion, opposition or reply be accompanied by the
evidence on which a party intends to rely in support of or in
opposition to a motion, to be consistent with paragraphs (c) through
(g), which permit some types of evidence to be filed after filing of
the motion, opposition or reply. It is also proposed to amend paragraph
(d)(1) by changing ``call'' to ``use.''
In Sec. 1.640, it is proposed to amend paragraph (b) in several
respects. The first is to provide that a decision on a preliminary
motion shall be deferred to final hearing unless an administrative
patent judge or the Board is of the opinion that a decision on a
preliminary motion will materially advance the resolution of the
interference. The second is to state that a matter raised by a party in
support of or in opposition to a motion that is deferred to final
hearing will not be entitled to consideration at final hearing unless
the matter is raised in the party's brief at final hearing. It is also
proposed to amend paragraph (b) to state that where the administrative
patent judge determines that the interference shall proceed to final
hearing on the issue of priority or derivation, a time shall be set for
each party to file a paper identifying any decisions of the
administrative patent judge that the party wishes to have reviewed at
final hearing as well as identifying any deferred or belatedly filed
motions that the party wishes to have considered at final hearing.
Paragraph (b) as proposed to be amended would also require that any
evidence a party wishes to have considered with respect to the
decisions and motions to be considered or reviewed at final hearing,
including any affidavits filed by the party under Sec. 1.608(b) or
1.639(b), would have to be served on the opponent during the testimony-
in-chief period of the party.
Paragraph (b)(1) of Sec. 1.640 is proposed to be amended for
clarification. Paragraph (b)(2), which currently states that a
preliminary motion filed after a decision is entered on preliminary
motions under Sec. 1.633 will not be considered except as provided by
Sec. 1.655(b), is proposed to be amended to state that a preliminary
motion filed after the time expires for filing preliminary motions will
not be considered except as provided by Sec. 1.645(b) by changing
``1.655(b)'' to ``1.645(b),'' which relates to consideration of
belatedly filed papers in general.
Paragraph (c) of Sec. 1.640, which currently requires an
administrative patent judge or the Board to specifically authorize an
opposition to a request for reconsideration of a decision by an
administrative patent judge, is proposed to be amended to authorize an
opponent to file an opposition, thereby saving the administrative
patent judge or the Board the time it would otherwise take to determine
whether an opposition should be authorized. If adopted, the
administrative patent judge would continue to have the authority to
deny a request for reconsideration without waiting for an opposition.
In order to conserve the resources of the Board, it is also proposed to
delete the last sentence of Sec. 1.640(c) so as to authorize a single
individual administrative patent judge to decide a request for
reconsideration. Paragraph (c) is also proposed to be amended to
require that a request for reconsideration be filed by hand or Express
Mail. Paragraph (d)(1), which currently states that an order to show
cause under that section can be based on a decision on a motion which
is dispositive of the interference against a party as to any count, is
proposed to be amended to include decisions on dispositive matters
raised sua sponte by an administrative patent judge.
Paragraph (e) of Sec. 1.640 is proposed to be amended to
incorporate the substance of the Deputy Commissioner's Notice of
December 8, 1986, published as Interference Practice: Response to Order
to Show Cause Under 37 CFR 1.640,'' 1074 Off. Gaz. Pat. Office 4 (Jan.
6, 1987), reprinted in 1086 Off. Gaz. Pat. Office 282 (Jan. 5, 1988).
Specifically, paragraph (e) as proposed to be amended would provide
that where the order to show cause was issued under Sec. 1.640(d)(1),
the party may respond with a paper (i) requesting that final hearing be
set to review the decision which is the basis for the order and
identifying every other decision of the administrative patent judge
that the party wishes to have reviewed by the Board at a final hearing,
or (ii) fully explaining why judgment should not be entered. Any other
party would be permitted to file a response to the paper within 20 days
of the date of service of the paper. Where the order was issued under
Sec. 1.640(d)(1) and the paper includes a request for final hearing,
the response must identify every decision of the administrative patent
judge that the responding party wishes to have reviewed by the Board at
a final hearing. Where the order was issued under Sec. 1.640(d)(1) and
the paper does not include a request for final hearing, the response
may include a request for final hearing, which must identify every
decision of the administrative patent judge that the responding party
wishes to have reviewed by the Board at a final hearing. Where only the
response includes a request for a final hearing, the party who filed
the paper would have 14 days from the date of service of the response
in which to file a supplemental paper identifying any other decision of
the administrative patent judge that the party wishes to have reviewed
by the Board at a final hearing. The paper or the response thereto
would have to be accompanied by a motion (Sec. 1.635) requesting a
testimony period if a party wishes to introduce any evidence to be
considered at final hearing (Sec. 1.671), such as affidavits previously
filed under Sec. 1.639(b). A request for a testimony period would be
construed as including a request for final hearing. Where the paper
contains an explanation of why judgment should not be entered in
accordance with the order and no party has requested a final hearing,
the decision that is the basis for the order would be reviewed based on
the contents of the paper and the response. If the paper fails to show
good cause, the Board would enter judgment against the party against
whom the order issued.
Section 1.641 currently indicates that an administrative patent
judge who, during the pendency of an interference, becomes aware of a
reason why a claim designated to correspond to a count may not be
patentable should notify the parties of the reason and set a time
within which each party may present its views, which the administrative
patent judge will consider in determining how the interference shall
proceed. It is proposed to amend Sec. 1.641 to indicate that a party's
views may include argument or appropriate preliminary motions under
Sec. 1.633(c), (d) and (h), including any supporting evidence.
In Sec. 1.643, it is proposed to amend paragraph (b) for
clarification and also to change ``ends of justice'' to ``interest of
justice'' to be consistent with the language used in other interference
rules, including Secs. 1.628(a) and 1.687(c).
In Sec. 1.644, it is proposed to simplify paragraph (a) by changing
``a panel consisting of more than one examiner-in-chief'' to ``the
Board.'' Paragraphs (a)(1), (b) and (c) are proposed to be amended by
changing both occurrences of ``panel'' to ``Board.'' Paragraphs (a)(2)
and (b) are proposed to be changed to provide that a petition seeking
to invoke the supervisory authority of the Commissioner shall not be
filed prior to the party's brief for final hearing; these paragraphs
currently provide that such a petition shall not be filed prior to a
decision of the Board awarding judgment.
Paragraph (b) of Sec. 1.644 is proposed to be clarified by
amending it to state that a petition under Sec. 1.644(a) shall be
considered timely if it is made as part of, or simultaneously with, a
proper motion under Sec. 1.633, 1.634, or 1.635 when granting the
motion would require waiver of a rule. In other words, a petition under
Sec. 1.644(a)(2) must seek waiver of a rule prospectively rather than
retroactively.
Paragragh (d) of Sec. 1.644 is proposed to be amended to provide
that the statement of facts in a petition preferably should be in
numbered paragraphs and also to delete the second sentence as
unnecessary. Paragraph (f) is proposed to be amended to change the ``15
days'' in which to request reconsideration of a decision by the
Commissioner to ``14 days.'' In paragraph (g), it is proposed to delete
the quotation marks around ``Express Mail.''
Section 1.645, which in its current form permits consideration of a
belatedly filed paper only if accompanied by a motion under Sec. 1.635
which shows sufficient cause (Sec. 1.645(b)) why the paper was not
timely filed, is proposed to be amended in several respects. First, it
is proposed to change ``sufficient cause'' to ``good cause'' in order
to use a single ``cause'' standard throughout the interference rules.
Second, it is proposed to amend paragraph (b) to permit consideration
of a belatedly filed paper if an administrative patent judge or the
Board, sua sponte, is of the opinion that it would be in the interest
of justice to consider the paper. An example would be where the delay
is short (e.g., one day) and there is no prejudice to an opponent. For
purposes of the sections other than Sec. 1.645, a belatedly filed paper
is considered ``timely filed'' if accompanied by a motion under
Sec. 1.635 which is granted.
Paragraph (d) of Sec. 1.645 is proposed to be amended by deleting
``In an appropriate circumstance'' as superfluous in view of the
language ``may stay proceedings,'' which indicates that the
administrative patent judge has the discretion to stay an interference.
In Sec. 1.646, it is proposed to amend paragraph (a)(2) by deleting
the reference to Sec. 1.684, which is proposed to be deleted. It is
proposed to amend paragraph (c)(1) by inserting ``or causing a copy of
the paper to be handed'' after ``By handing a copy of the paper'' to
make it clear that the paper need not be personally delivered by the
party, i.e., that delivery by hand can be effected by a commercial
courier, for example. In paragraph (c)(4), it is proposed to change
``mail'' (second occurrence) to ``first class mail'' to make it clear
that the service date specified in that paragraph applies only to first
class mail. It is also proposed to redesignate paragraph (c)(5) as
paragraph (c)(6) and to add a new paragraph (c)(5) which clarifies that
a party may serve by Express Mail and that when service is effected by
Express Mail, the date of service is considered to be the date of
deposit with the U.S. Postal Service. Paragraph (d) is proposed to be
amended to delete the quotation marks around ``Express Mail.''
Paragraph (e) is proposed to be amended to state that the due date for
serving a paper is the same as the due date for filing the paper in the
Patent and Trademark Office.
In Sec. 1.651, it is proposed to amend paragraph (a)(2) by deleting
``(testimony includes testimony to be taken abroad under Sec. 1.684)''
in order to be consistent with the proposal to delete Sec. 1.684.
Paragraphs (c)(2) and (c)(3) are proposed to be amended to be
consistent with the proposed amendment to the definition of ``effective
filing date'' in Sec. 1.601(g). In paragraph (d), it is proposed to
change ``abroad under Sec. 1.684'' to ``in a foreign country.''
In Sec. 1.653, it is proposed to amend paragraph (a) in several
ways. The first is to change the references to paragraphs of Sec. 1.672
to be consistent with the proposed redesignation of certain paragraphs
of Sec. 1.672, discussed below. The second is to delete ``of fact'' in
the clause ``agreed statements of fact under Sec. 1.672(f)'' (proposed
to be redesignated as Sec. 1.672(h)), because agreed statements under
Sec. 1.672(f) can set forth either (1) how a particular witness would
testify if called or (2) the facts in the case of one or more of the
parties. The third is to delete ``under Sec. 1.684(c),'' since
Sec. 1.684 is proposed to be deleted. A fourth proposed amendment to
Sec. 1.653(a) is to indicate that in addition to the types of testimony
already set forth in paragraph (a), testimony includes copies of
written interrogatories and answers and written requests for admissions
and answers, which might be obtained where a motion for additional
discovery under Sec. 1.687(c) is granted.
Paragraph (b) of Sec. 1.653 is proposed to be amended to be
consistent with the proposed redesignation of certain paragraphs of
Sec. 1.672, to delete the reference to Sec. 1.684(c), which is proposed
to be cancelled, and for clarity. Paragraphs (c)(1) and (c)(4) of
Sec. 1.653 are proposed to be amended to make it clear that the only
testimony to be included in a party's record is testimony submitted on
behalf of the party. Having copies of the same testimony appear in both
parties' records unnecessarily encumbers the records and is confusing
in that a given page of testimony will have different page numbers in
the different records, with the result that the briefs of the parties
will refer to different record pages for the same testimony.
It is proposed that paragraph (c)(5) of Sec. 1.653 be deleted and
reserved. Paragraph (c)(5) currently requires that the record filed by
each party include each notice, official record and printed publication
relied upon by the party and filed under Sec. 1.682(a). This
requirement is considered unnecessary because such notices, official
records and printed publications are in the nature of exhibits under
Sec. 1.653(i), which are submitted with but not included in the record.
The inclusion of exhibits in the record merely increases the size of
the record without serving any useful purpose.
Paragraph (g) of Sec. 1.653 is proposed to be amended and
paragraphs (f) and (h) deleted and reserved to eliminate the current
distinction between typewritten and printed records. Paragraph (g) is
also proposed to be amended to change ``8\1/2\ x 11 inches (21.8 by
27.9 cm.)'' to ``21.8 by 27.9 cm. (8\1/2\ x 11 inches)'' and to delete
the requirement for justified margins and to require that the records
be bound with covers at their left edges in such manner as to lie flat
when open to any page and in one or more volumes of convenient size
(approximately 100 pages per volume is suggested) and that when there
is more than one volume, the numbers of the pages contained in each
volume must appear at the top of the cover for each volume. Paragraph
(i) is proposed to be amended to state that exhibits include documents
and things identified in affidavits or on the record during the taking
of oral depositions as well as official records and publications
submitted pursuant to Sec. 1.682(a).
In Sec. 1.654, it is proposed to amend paragraph (a) by changing
``shall'' in the second sentence to ``may'' for clarity and also to
reduce the time for oral argument by a party from 60 minutes to 30
minutes, because most hearings have required no more than 30 minutes
per side and a panel has the discretion to grant more time at the
hearing, where necessary.
In Sec. 1.655, it is proposed to amend paragraph (a) by changing
the standard of review from ``erroneous or an abuse of discretion'' to
``an abuse of discretion.'' The recitation of a separate ``error''
standard is unnecessary, because an abuse of discretion may be found
when (1) the decision of an administrative patent judge is clearly
unreasonable, arbitrary or fanciful, (2) the decision is based on an
erroneous conclusion of law, (3) the findings of the administrative
patent judge are clearly erroneous, or (4) the record contains no
evidence upon which the administrative patent judge rationally could
have based the decision. See, e.g., Heat and Control Inc. v. Hester
Industries, Inc., 785 F.2d 1017, 228 USPQ 926 (Fed. Cir. 1986); Western
Electric Co. v. Piezo Technology, Inc. v. Quigg, 860 F.2d 428, 8 USPQ2d
1853 (Fed. Cir. 1988).
It is proposed to amend paragraph (b) of Sec. 1.655 to clarify
which matters a party is not entitled to raise for consideration at
final hearing. As proposed to be amended, paragraph (b) would provide
that a party shall not be entitled to raise for consideration at final
hearing a matter which properly could have been raised by a motion
under Sec. 1.633 or 1.634 unless (1) the matter was properly raised in
a motion that was timely filed by the party under Sec. 1.633 or 1.634
and the motion was denied or deferred to final hearing, (2) the matter
was properly raised by the party in a timely filed opposition to a
motion under Sec. 1.633 or 1.634 and the motion was granted over the
opposition or deferred to final hearing, or (3) the party shows good
cause why the issue was not properly raised by a timely filed motion or
opposition. It is also proposed to amend paragraph (b) of Sec. 1.655 to
state that a change of attorneys during the interference generally does
not constitute good cause for failing to file a timely motion or
opposition.
It is further proposed, in response to In re Van Geuns, 988 F.2d
1181, 26 USPQ2d 1057 (Fed. Cir. 1993), to amend paragraph (b) of
Sec. 1.655 by adding a sentence explaining that a party who fails to
contest, by way of a timely filed preliminary motion under
Sec. 1.633(c), the designation of a claim as corresponding to a count
may not subsequently argue the separate patentability or the lack of
separate patentability of claims designated as corresponding to the
count. The Patent and Trademark Office conducts interference
proceedings to determine who, as between two or more applicants for
patent or one or more applicants for patent and one or more patentees,
is the first inventor of a patentable invention. A primary examiner
determines in the first instance whether the claims in a pending
application interfere with the claims in another pending application or
unexpired patent. When the examiner is of the view that an interference
exists, the Board is notified (Sec. 1.609). The interference is
assigned to an administrative patent judge (Sec. 1.610), who issues a
notice declaring the interference (Sec. 1.611). Each separately
patentable invention involved in the interference is defined by a
count, which is merely a vehicle for contesting priority of invention
(i.e, who made the invention defined by the count first) and
determining the evidence relevant to the issue of priority. A
preliminary determination is made by the Patent and Trademark Office as
to which claims should be designated to correspond to the count. The
claims that are initially determined to define the same patentable
invention are designated as corresponding to the count. All other
claims are designated as not corresponding to the count. The
designation of claims provides a starting point in an interference.
There is a presumption that the designation of a claim as corresponding
or as not corresponding to a count is correct.
The interference rules authorize a party to file a preliminary
motion to redefine an interference by designating a claim as
corresponding (Sec. 1.633(c)(3)) or not corresponding
(Sec. 1.633(c)(4)) to a count. Prior to Van Geuns, the Patent and
Trademark Office interpreted the interference rules as requiring a
party to file a preliminary motion under Sec. 1.633(c)(4) to designate
a claim as not corresponding to the count as a condition for arguing at
final hearing that a claim designated as corresponding to the count is
patentably distinct from another claim designated as corresponding to
the count. See Brooks v. Street, 16 USPQ2d 1374, 1377 (Bd. Pat. App. &
Int. 1990); Flehmig v. Geisa, 13 USPQ2d 1052, 1054 (Bd. Pat. App. &
Int. 1989); Kwon v. Perkins, 6 USPQ2d 1747, 1750 (Bd. Pat. App. & Int.
1988), aff'd on other grounds, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir.
1989); see also Lamont v. Berguer, 7 USPQ2d 1580, 1582 (Bd. Pat. App. &
Int. 1988). However, in Van Geuns the Federal Circuit interpreted the
rules differently, stating:
[T]he position of the Commissioner that claims designated as
corresponding to a court stand or fall with the patentability of the
subject matter of the count is overboard.
988 F.2d at 1185, 26 USPQ2d at 1060. The Court further stated:
[W]e conclude that a party to an interference, who has failed to
timely contest the designation of claims as corresponding to a
count, has not conceded that claims corresponding to a count are
anticipated or made obvious [i.e., are unpatentable] by the prior
art when the subject matter of account is determined to be
unpatentable for obviousness. The PTO must determine, based on the
actual prior art reference or references, whether claims not
[designated as] corresponding exactly to the count are unpatentable.
* * * The interference rules do not specify whether a party may
argue the patentability of claims separately to the EIC [examiner-
in-chief, now administrative patent judge] and the board.
Id. at 1186, 26 USPQ2d at 1060 (bracketed material added by the
Commissioner). The proposed amendment to Sec. 655(b) is designed to
overcome the Federal Circuit's interpretation of the rules and to
create a presumption that all claims designated as corresponding to a
count are directed to the same patentable invention.
It is proposed to amend paragraph (c) of Sec. 1.655 by changing
``To prevent manifest injustice'' to ``In the interest of justice'' to
be consistent with the language used in other interference rules.
In Sec. 1.656, it is proposed to redesignate paragraphs (b)(1)
through (b)(6) as paragraphs (b)(3) through (b)(8), respectively, and
to add new paragraphs (b)(1) and (b)(2) requiring the brief to include
(1) a statement of interest identifying every party represented by the
attorney in the interference and the real party in interest if the
party named in the caption is not the real party in interest and (2) a
statement or related cases indicating whether the interference was
previously before the Board for final hearing and identifying any
related appeal or interference which is pending before, or which has
been decided by, the Board, or which is pending before, or which has
been decided by, the Court of Appeals for the Federal Circuit or a
district court in a proceeding under 35 U.S.C. 146. A related appeal or
interference is one which will directly affect or be directly affected
by or have a bearing on the Board's decision in the pending
interference. Appeals are mentioned because related issues may be
present before the board simultaneously in an ex parte appeal and an
interference. It is also proposed to amend current paragraph (b)(3)
(proposed to be redesignated as paragraph (b)(5)) to specify that
statements of fact preferably should be presented in numbered
paragraphs.
Current paragraph (b)(4) of Sec. 1.656 (proposed to be redesignated
as paragraph (b)(6)) requires that the opening brief of the junior
party contain the contentions of the party with respect to the ``issues
to be decided,'' which has been construed to include the matter of
whether some of the senior party's evidence of conception was
inadmissible hearsay. Suh v. Hoefle, 23 USPQ2d 1321, 1323 (Bd. Pat.
App. & Int. 1991). As support, the Board relied on Fisher v. Bouzard, 3
USPQ2d 1677 (Bd. Pat. App. & Int. 1987), and Moller v. Harding, 214
USPQ 730 (Bd. Pat. Int. 1982). Both of these cases concern
interferences declared under the ``old'' interference rules (i.e.,
Sec. 1.201 et seq.) of which Sec. 1.254 specified that the opening
brief of the junior party shall ``present a full, fair statement of the
questions involved, including his position with respect to the priority
evidence on behalf of other parties.'' Current Sec. 1.656(b)(4) does
not expressly require, and was not intended to imply, that the opening
brief of the junior party must address the evidence of any other party
with respect to the issue of priority or any other issue. In order to
clarify that the opening brief of a junior party need not address the
evidence of the other parties, it is proposed to amend current
paragraph (b)(4) to require that the junior party's opening brief
contain the contentions of the party ``with respect to the issues it is
raising for consideration at final hearing.'' These issues would
include the junior party's case-in-chief for priority with respect to
an opponent or derivation by an opponent as well as matters raised in
any denied or deferred motions of the junior party that are to be
reviewed or considered at final hearing. Where the reply brief of the
union party includes a new argument in response the case-in-chief of
the senior party as presented in the senior party's opening brief, the
senior party may move under Sec. 1.635 for leave to file a reply to the
junior party's reply brief, which motion must be accompanied by a copy
of the senior party's reply.
Paragraph (d) of Sec. 1.656 is proposed to be amended to state that
unless ordered otherwise by an administrative patent judge, briefs
shall be double-spaced (except for footnotes, which may be single-
spaced) and shall comply with the requirements of Sec. 1.653(g) for
records except the requirement for binding. As a result, the current
distinction between printed and typewritten briefs would be eliminated.
Paragraphs (e), (g) and (h) of Sec. 1.656 are proposed to be
amended to require an original and four copies (currently an original
and three copies are required) of each brief, any proposed findings of
fact and conclusions of law, any motion under 37 CFR 1.635 to suppress
evidence and any opposition to a motion to suppress evidence.
Paragraph (g) of Sec. 1.656, which permits a party to file proposed
findings of fact and conclusions of law, is further proposed to be
amended to require paragraph numbers for the findings of fact and
conclusions of law.
Paragraph (h) is further proposed to be amended to state that a
party's failure to challenge the admissibility of the evidence of an
opponent on a ground that could have been raised in a timely objection
under Secs. 1.672(c), 1.682(c), 1.683(b) or 1.688(b) constitutes a
waiver of the right to move under Sec. 1.656(h) to suppress the
evidence on that ground at final hearing.
Paragraph (i) of Sec. 1.656 currently provides that if a junior
party fails to file an opening brief for final hearing, an order may be
issued by the administrative patent judge requiring the junior party to
show cause why the failure to file a brief should not be treated as a
concession of priority and further provides that judgment may be
rendered against the junior party if the junior party ``fails to
respond'' within a time period set in the order. The expression ``fails
to respond'' has been misinterpreted by some junior parties as meaning
that the mere filing of a response of any kind to the order to show
cause should be sufficient to avoid the entry of judgment. Such an
interpretation was not intended and if adopted would effectively negate
Sec. 1.656(i). The term ``respond'' is proposed to be changed to ``show
good cause'' in order to make it clear that a junior party's failure to
file a timely opening brief will not be excused unless good cause is
shown to explain or justify the failure to file a brief. The language
of the rule will then be consistent with the other interference rules
concerning orders to show cause, e.g., Secs. 1.640(c) and 1.652.
Section 1.657 is proposed to be amended to be consistent with the
proposed changes to the definition of ``effective filing date'' in
Sec. 1.601(g) to state that in an interference involving an application
and a patent where the effective filing date of the application is
after the date the patent issued, a junior party has the burden of
establishing priority by clear and convincing evidence, and that in
other interferences the junior party has the burden of establishing
priority by a preponderance of the evidence. The proposed amendment
would codify the holding of Price v. Symsek, 988 F.2d 1187, 19990-91,
26 USPQ2d 1031, 1033 (Fed. Cir. 1993), as clarified by Bosies v.
Benedict, 27 F.3d 539, 541-42, 30 USPQ2d 1862, 1864 (Fed. Cir. 1994).
In Sec. 1.658, it is proposed to amend paragraph (a) to state that
when the Board enters a decision awarding judgment as to all counts,
the decision shall be regarded as a final decision for the purpose of
judicial review (35 U.S.C. 141-144, 146) unless a request for
reconsideration under paragraph (b) of this section is timely filed. In
paragraph (b), third sentence, it is proposed to delete the phrases
``[w]here reasonably possible'' and ``such that delivery is
accomplished'' as unnecessary and to add a sentence specifying that a
decision on reconsideration is a final decision for the purpose of
judicial review (35 U.S.C. 141-144, 146). It is also proposed to amend
paragraph (b) by changing ``reply to a request for reconsideration'' to
be consistent with the terminology employed in Sec. 1.640(c) regarding
requests for reconsideration of decisions on preliminary motions.
Section 1.660 is proposed to be amended by adding a new paragraph
(e) explaining that the failure of a party to comply with the notice
provisions of Sec. 1.660 may result in sanctions under Sec. 1.616, that
knowledge by, or notice to, an employee of the Office other than an
employee of the Board, of the existence of the reexamination,
application for reissue, protest, or litigation shall not be
sufficient, and that the notice contemplated by this section is notice
addressed specifically to an administrative patent judge or the Board.
In Sec. 1.662, it is proposed to amend paragraph (a) by changing
``filing by an applicant or patentee'' in the second sentence to
``filing by a party'' to make it clear that the terminal disclaimer can
be signed by the party's attorney or agent of record. For the same
reason, it is proposed to change ``by an applicant'' to ``by a party''
in the third sentence of paragraph (a), which concerns abandonment of
an involved application.
In paragraph (b) of Sec. 1.662, the first sentence is proposed to
be amended to change ``omits all claims of the patent corresponding to
the counts of the interference for the purpose of avoiding the
interference'' to ``does not include a claim that corresponds to a
count'' in order to make it clear that judgment may not be entered
where the reissue application includes a new or amended claim that
should be designated as corresponding to a count, even if the patentee
argues that it should be designated as not corresponding to a count.
Similarly, it is proposed to change ``reissue other than for the
purpose of avoiding the interference'' to ``reissue which includes a
claim that corresponds to a count.''
In Sec. 1.671, it is proposed to amend paragraph (a) by changing
``evidence from another interference, proceeding, or action filed
Sec. 1.683'' to ``testimony from another interference, proceeding, or
action filed under Sec. 1.683'' in order to be consistent with the
terminology of Sec. 1.683. It is proposed to amend paragraphs (c)(6)
and (c)(7) of Sec. 1.671 to change ``by oral deposition or affidavit''
to ``by affidavit or oral deposition.'' Paragraph (f) is proposed to be
amended to clarify that the requirement for the significance of
documentary and other exhibits to be discussed with particularity by a
witness applies only to documentary and other exhibits identified by a
witness in an affidavit or during oral deposition. Paragraph (f) does
not apply to official records and printed publications submitted into
evidence pursuant to Sec. 1.682(a).
In Sec. 1.672, in addition to the proposed amendments discussed
above under the heading ``Amendments responsive to adoption of Public
Law 103-182,'' it is proposed to amend paragraph (b) by deleting the
third sentence, which specifies the type of paper to be used for
affidavits, as being superfluous in view of Sec. 1.677(a). In paragraph
(d), it is proposed to delete the fifth sentence (``A party electing to
present testimony of a witness by deposition shall notice a deposition
of the witness under Sec. 1.673(a).'') as superfluous in view of the
second sentence of Sec. 1.672(d).
In Sec. 1.673, it is proposed to amend paragraph (b) by changing
the time for service of evidence to be relied on at an oral deposition
from ``at least three days'' prior to the conference required by
Sec. 1.673(g) when service is by hand or by Express Mail to ``at least
three working days'' prior to the conference. It is also proposed to
amend paragraph (b) to change the time for service by any other means
from 10 days to 14 days prior to the conference.
It is proposed to amend paragraph (d) of Sec. 1.673 by deleting the
second sentence as unnecessary, since all depositions for a case-in-
chief would have to be approved by an administrative patent judge. It
is also proposed to delete the quotation marks around ``Express Mail''
in paragraph (b).
Also in Sec. 1.673, it is proposed to clarify paragraph (e) by
changing ``party electing to present testimony by affidavit'' to
``party who has presented testimony by affidavit.''
In paragraph (a) of Sec. 1.674, which specifies before whom
depositions may be taken, it is proposed to delete the reference to
``United States or a territory or insular possession of the United
States'' in order to make this paragraph applicable to depositions for
testimony compelled in foreign countries.
In Sec. 1.675, it is proposed to amend paragraph (d), which
concerns reading and signing of a transcript by the witness, to take
into account that the witness might refuse to read and/or sign the
transcript of the deposition, in which case the circumstances under
which the witness refused to sign must be noted on the certificate by
the officer who prepared the certified transcript (Sec. 1.676(c)).
In Sec. 1.676, it is proposed to amend paragraph (a)(4) by changing
``opposing party'' to ``opponent.''
Section 1.677, which in its current form specifies the required
form for transcripts of depositions, is proposed to be amended to also
apply to affidavits. Furthermore, it is proposed to delete the
reference to ``typewritten'' matter, to change ``pica-type'' to ``11
point type'' and to change ``8\1/2\ x 11 inches (21.8 by 27.9 cm.)''
to ``21.8 by 27.9 cm. (8\1/2\ x 11 inches).''
In Sec. 1.678, it is proposed to change the section heading from
``Transcript of deposition must be filed'' to ``Time for filing
transcript of deposition'' for clarity and to amend the text by
changing the time for filing the certified transcript from 45 days to
30 days.
In Sec. 1.679, it is proposed to change ``transcript'' to
``transcript of a deposition'' for clarity and also to delete ``for
printing (Sec. 1.653(g))'' as unnecessary.
In Sec. 1.682, in addition to the proposed amendments discussed
above under the heading ``service of a `developing record,''' it is
proposed to amend paragraph (a) by changing ``identified during the
taking of testimony of a witness'' to ``identified in an affidavit or
on the record during an oral deposition of a witness'' for clarity. It
is also proposed to delete and reserve paragraph (a)(4) (``where
appropriate, be accompanied by a certified copy of the official record
or a copy of the printed publication (Sec. 1.671(d))'') as superfluous
in view of Rules 901 and 902 of the Federal Rules of Evidence, which
apply to interference proceedings (Sec. 1.671(b)) and require
authentication of evidence that is not self-authenticating. Finally, it
is proposed to capitalize the first word in each of paragraphs (a)(2),
(a)(3) and (a)(4).
In Sec. 1.685, it is proposed to amend paragraph (d) for
clarification.
In Sec. 1.687, it is proposed to amend paragraph (c) to refer to
Sec. 1.647 concerning translations of documents in a foreign language.
Other Considerations
These proposed rules conform with the requirements of the
Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order
12866, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
The Office of Management and Budget has determined that these proposed
rules are not significant for the purposes of Executive Order 12866.
The Assistant Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the proposed rule changes will not
have a significant economic impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)), because the
changes clarify existing rules setting forth the procedures used in
patent appeals and interferences.
The Patent and Trademark Office has determined that this notice has
no Federalism implications affecting the relationship between the
National Government and the States as outlined in Executive Order
12612.
These rule changes will not impose any additional burden under the
Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et.seq., since no
record keeping or reporting requirements within the coverage of the Act
are placed upon the public.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Inventions and
patents.
For the reasons set out in the preamble, it is proposed to amend 37
CFR Part 1 wherein removals are indicated by brackets ([]) and
additions by arrows () as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue to read
as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.11 is proposed to be amended by revising paragraph (e)
to read as follows:
Sec. 1.11 Files open to the public.
* * * * *
(e) The file of any interference involving a patent, a statutory
invention registration, a reissue application,
or an application on which a patent has been issued or which has been
published as a statutory invention registration, is open to inspection
by the public, and copies may be obtained upon paying the fee therefor,
if: (1) The interference has terminated, or (2) an award of priority or
judgment has been entered as to all parties and all counts.
3. In Sec. 1.192, it is proposed to revise paragraphs (a), (c),
(c)(5) and (c)(5)(ii), redesignate current paragraphs (c)(1) through
(c)(7) as paragraphs (c)(3) through (c)(9) and add new paragraphs
(c)(1) and (c)(2) to read as follows:
Sec. 1.192 Appellant's brief.
(a) [The appellant] Appellant shall, within 2
months from the date of the notice of appeal under Sec. 1.191 [in an
application, reissue application, or patent under reexamination,] or
within the time allowed for response to the action appealed from, if
such time is later, file a brief in triplicate. The brief must be
accompanied by the requisite fee set forth in Sec. 1.17(f) and must set
forth the authorities and arguments on which [the] appellant will rely
to maintain the appeal. Any arguments or authorities not included in
the brief will [may] be refused consideration by
the Board of Patent Appeals and Interferences , unless good
cause is shown.
* * * * *
(c) The brief shall contain the following items under appropriate
headings and in the order [here] indicated below
unless the brief is filed by an applicant who is not
represented by a registered practitioner [there is no
attorney or agent of record in the application or reexamination
proceeding, the brief was not prepared by a registered practitioner,
and the brief was not signed by a registered practitioner, wherein the
brief will be accepted as complying with this paragraph provided it is
at least in substantial compliance with the requirements of paragraphs
(c)(1), (2), (6) and (7)]:
(1) Real Party in Interest. A statement identifying the
real party in interest, if the party named in the caption of the brief
is not the real party in interest, and the parent companies,
subsidiaries (except wholly owned subsidiaries) and affiliates that
have issued shares to the public of the real party in interest.
(2) Related Appeals and Interferences. A statement identifying by
number and filing date all other appeals or interferences known to
appellant, the appellant's legal representative, or assignee which will
directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal.
[(1)] (3) Status of Claims. A statment of the
status of all the claims, pending or cancelled, and identifying the
claims appealed.
[(2)] (4) Status of Amendments. A statment of
the status of any amendment filed subsequent to final rejection.
[(3)] (5) Summary of Invention. A concise
explanation of the invention defined in the claims involved in the
appeal, which shall refer to the specification by page and line number,
and to the drawing, if any, by reference characters.
[(4)] (6) Issues. A concise statement of the
issues presented for review.
[(5)] (7) Grouping of Claims. For each ground
of rejection which appellant contests and which applies to more than
one claim, [it will be presumed that] the rejected claims
shall stand or fall together with the
broadest claim, and only the broadest claim will be considered by the
Board of Patent Appeals and Interferences unless:
(i) a statement is included that the rejected
claims do not stand or fall together, and
(ii) in [the appropriate part or parts of]
the argument under subparagraph (c) (8) [(c) (6)]
of this section appellant presents reasons as to why appellant
considers the rejected claims to be separately patentable
from the broadest claim. Merely pointing out what a claim
covers is not an argument as to why the claim is separately patentable
from the broadest claim.
[(6)] (8) Argument. The contentions of [the]
appellant with respect to each of the issues presented for review in
subparagraph (c) (6) [(c) (4)] of this section,
and the basis therefor, with citations of the authorities, statutes,
and parts of the record relied on. Each issue should be treated under a
separate heading.
* * * * *
(v) For any rejection other than those referred to in paragraphs
(c) (8) (i) [(6) (6) (i)] to (iv) of this
section, the argument shall specify the errors in the rejection and the
specific limitations in the rejected claims, if appropriate, or other
reasons, which cause the rejection to be in error.
[(7)] (9) Appendix. An appendix containing a
copy of the claims involved in the appeal.
(d) If a brief is filed which does not comply with all the
requirements of paragraph (c) of this section, [the] appellant will be
notified of the reasons for non-compliance and provided with a period
of one month within which to file an amended brief. If [the] appellant
does not file an amended brief during the one-month period, or files an
amended brief which does not overcome all the reasons from non-
compliance stated in the notification, the appeal will
stand [be] dismissed.
4. Section 1.601 is proposed to be amended by revising paragraphs
(f), (g), (j), (k), (l), and (q) and adding a new paragraph (r) to read
as follows:
Sec. 1.601 Scope of rules, definitions.
* * * * *
(f) A count defines the interfering subject matter between (1) two
or more applications or (2) one or more applications and one or more
patents. A count should be broad enough to encompass the
broadest corresponding patentable claim of each of the parties. A count
may not be so broad as to be unpatentable over the prior
art. When there is more than one count, each count shall
define a separate patentable invention. Any claim of an application or
patent [which] that is designated to
correspond[s] to a count is a claim involved in the interference within
the meaning of 35 U.S.C. 135(a). A claim of a patent or application
designated to correspond to a count that [which]
is identical to a count is said to ``correspond exactly'' to the count.
A claim of a patent or application designated to correspond
to a count that [which] is not identical to a count [, but
which defines the same patentable invention as the count,] is said to
``correspond substantially'' to the count. When a count is broader in
scope than all claims which correspond to the count, the count is a
``phantom count.'' A phantom count is [not patentable to any party]
unpatentable to all parties under the written description
requirement of the first paragraph of 35 U.S.C. 112.
(g) The effective filing date of an application [or a patent] is
the filing date of an earlier application accorded to the application
[or patent] under 35 U.S.C. 119, 120, 121, or 365
or, if no benefit is accorded, the filing date of the
application. The effective filing date of a patent is the filing date
of an earlier application accorded to the patent under 35 U.S.C. 120,
121, or 365(c) or, if no benefit is accorded, the filing date of the
application which issued as the patent.
* * * * *
(j) An interference-in-fact exists when at least one claim of a
party [which] that corresponds to a count and at
least one claim of an opponent [which] that
corresponds to the count define the same patentable invention.
(k) A lead attorney or agent is a registered attorney or agent of
record who is primarily responsible for prosecuting an interference on
behalf of a party and is the attorney or agent whom an
administrative patent judge [examiner-in-chief]
may contact to set times and take other action in the interference.
(1) A party is (1) an applicant or patentee involved in the
interference or (2) a legal representative or an assignee of
record in the Patent and Trademark Office of an applicant or
patentee involved in an interference. Where acts of a party are
normally performed by an attorney or agent, ``party'' may be construed
to mean the attorney or agent. An ``inventor'' is the individual named
as inventor in an application involved in an interference or the
individual named as inventor in a patent involved in an interference.
* * * * *
(q) A final decision is a decision awarding judgment as to all
counts. An interlocutory order is any other action taken by an
administrative patent judge [examiner-in-chief]
or [a panel of] the Board in an interference, including the notice
declaring an interference.
(r) NAFTA country means NAFTA country as defined in
section 2(4) of the North American Free Trade Agreement Implementation
Act. A ``non-NAFTA country'' is a country other than the United States
or a NAFTA country.
5. Section 1.602 is proposed to be amended by revising paragraph
(c) to read as follows:
Sec. 1.602 Interest in applications and patents involved in an
interference.
* * * * *
(c) If a change of any right, title, and interest in any
application or patent involved or relied upon in the interference
occurs after notice is given declaring the interference and before the
time expires for seeking judicial review of a final decision of the
Board, the parties shall notify the Board of the change within 20 days
after [of] the change.
6. Section 1.603 is proposed to be revised to read as follows:
Sec. 1.603 Interference between applications; subject matter of the
interference.
Before an interference is declared between two or more
applications, the examiner must be of the opinion that there is
interfering subject matter claimed in the applications which is
patentable to each applicant subject to a judgment in the interference.
The interfering subject matter shall be defined by one or more counts.
[Each count shall define a separate patentable invention.] Each
application must contain, or be amended to contain, at least one
patentable claim which corresponds to each count.
All claims in the applications which define the same patentable
invention as a count shall be designated to correspond to the count.
7. Section 1.604 is proposed to be amended by revising paragraph
(a)(1) to read as follows:
Sec. 1.604 Request for interference between applications by an
applicant.
(a) * * *
(1) Suggesting a proposed count and presenting at least one claim
corresponding to the proposed count or identifying at least one claim
in [his or her] its application that corresponds
to the proposed count,
* * * * *
8. Section 1.605 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.605 Suggestion of claim to applicant by examiner.
(a) If no claim in an application is drawn to the same
patentable invention claimed in another application or patent, the
[The] examiner may suggest that an applicant present a
claim [in an application] drawn to an invention claimed in
another application or patent for the purpose of an
interference with another application or a patent. The applicant to
whom the claim is suggested shall amend the application by presenting
the suggested claim within a time specified by the examiner, not less
than one month. Failure or refusal of an applicant to timely present
the suggested claim shall be taken without further action as a
disclaimer by the applicant of the invention defined by the suggested
claim. At the time the suggested claim is presented, the applicant may
also (1) call the examiner's attention to other claims already in the
application or which are presented with the suggested claim and (2)
explain why the other claims [would be more appropriate to]
should be included in any interference which may
be declared.
* * * * *
9. Section 1.606 is proposed to be revised to read as follows:
Sec. 1.606 Interference between an application and a patent; subject
matter of the interference.
Before an interference is declared between an application and an
unexpired patent, an examiner must determine that there is interfering
subject matter claimed in the application and the patent which is
patentable to the applicant subject to a judgment in the interference.
The interfering subject matter will be defined by one or more counts.
[Each count shall define a separate patentable invention.]
The [Any] application must contain, or be amended
to contain, at least one patentable claim which
corresponds to each count. The claim in the application need
not be, and most often will not be, identical to a claim in the
patent. All claims in the application and patent which
define the same patentable invention as a count shall be designated to
correspond to the count. At the time an interference is initially
declared (Sec. 1.611), a count shall not be narrower in scope than any
patent claim which corresponds to the count and any single patent claim
will be presumed. subject to a motion under Sec. 1.633(c), not to
contain separate patentable inventions.
10. Section 1.607 is proposed to be amended by revising paragraph
(a)(4) and adding a new paragraph (a)(6) to read as follows:
Sec. 1.607 Request by applicant for interference with patent.
(a) * * *
(4) Presenting at least one claim corresponding to the proposed
count or identifying at least one claim already pending in [his or her]
its application that corresponds to the proposed
count, and, if any claim of the patent or application identified as
corresponding to the proposed count does not correspond exactly to the
proposed count, explaining why each such claim corresponds to the
proposed count, and
(5) * * *
(6) Explaining how the requirements of 35 U.S.C. 135(b)
are met, if the claim presented or identified under paragraph (a)(4) of
this section was not present in the application until more than one
year after the issue date of the patent.
* * * * *
11. Section 1.608 is proposed to be amended by revising paragraphs
(a) and (b) thereof to read as follows:
Sec. 1.608 Interference between an application and a patent; prima
facie showing by applicant.
(a) When the [earlier of the filing date or] effective filing date
of an application is three months or less after the [earlier of the
filing date or] effective filing date of a patent, [the applicant,]
before an interference will be declared, either the
applicant or the applicant's attorney or agent of record
shall file [an affidavit] a statement alleging
that there is a basis upon which the applicant is
entitled to a judgment relative to the patentee.
(b) When the [earlier of the filing date or the] effective filing
date of an application is more than three months after the [earlier of
the filing date or the] effective filing date [under 35 U.S.C. 120] of
a patent, the applicant, before an interference will be declared, shall
file (1) evidence which may consist of patents or printed publications,
other documents, and one or more affidavits which demonstrate that
applicant is prima facie entitled to a judgment relative to the
patentee and (2) an explanation stating with particularity the basis
upon which the applicant is prima facie entitled to the judgment. Where
the basis upon which an applicant is entitled to judgment relative to a
patentee is priority of invention, the evidence shall include
affidavits by the applicant, if possible, and one or more corroborating
witnesses, supported by documentary evidence, if available, each
setting out a factual description of acts and circumstances performed
or observed by the affiant, which collectively would prima facie
entitle the applicant to judgment on priority with respect to the
[earlier of the filing date or] effective filing date of the patent. To
facilitate preparation of a record (Sec. 1.653 (g) and (h)) for final
hearing, an applicant should file affidavits on paper which is
21.8 by 27.9 cm. (8\1/2\ x 11 inches) [8\1/2\ x
11 inches (21.8 by 27.9 cm.)]. The significance of any printed
publication or other document which is self-authenticating within the
meaning of Rule 902 of the Federal Rules of Evidence or Sec. 1.671(d)
and any patent shall be discussed in an affidavit or the explanation.
Any printed publication or other document which is not self-
authenticating shall be authenticated and discussed with particularity
in an affidavit. Upon a showing of good
[sufficient] cause, an affidavit may be based on information and
belief. If an examiner finds an application to be in condition for
declaration of an interference, the examiner will consider the evidence
and explanation only to the extent of determining whether a basis upon
which the application would be entitled to a judgment relative to the
patentee is alleged and, if a basis is alleged, an interference may be
declared.
12. Section 1.609 is proposed to be amended by revising paragraph
(b)(2) and (b)(3) to read as follows:
Sec. 1.609 Preparation of interference papers by examiner.
* * * * *
(b) * * *
(2) The claims of any application or patent which correspond to
each count, stating whether the claims correspond exactly or
substantially to each count and an explanation why each
claim designated as corresponding to a count is directed to the same
patentable invention as the count ;
(3) The claims in any application or patent
which [are deemed by the examiner to be patentable over any]
do not correspond to each count and an
explanation why each claim designated as not corresponding to a count
is not directed to the same patentable invention as the
count ; and
* * * * *
13. Section 1.610 is proposed to be amended by revising the section
heading and paragraphs (a) through (e) to read as follows:
Sec. 1.610 Assignment of interference to administrative
patent judge [examiner-in-chief], time period for completing
interference.
(a) Each interference will be declared by an
administrative patent judge [examiner-in-chief]
who may enter all interlocutory orders in the interference, except that
only [a panel consisting of at least three members of] the Board shall
(1) hear oral argument at final hearing, (2) enter a decision under
Secs. 1.617, 1.640(e) [1.640(c) or (e)], 1.652,
1.656(i) or 1.658 or (3) enter any other order which terminates the
interference.
(b) As necessary, another administrative patent
judge [examiner-in-chief] may act in place of the one who
declared the interference. [Unless otherwise provided in this section,
at] At the discretion of the examiner-in-chief
assigned to the interference, a panel consisting of two or more members
of the Board may enter interlocutory orders.
(c) Unless otherwise provided in this subpart, times for taking
action by a party in the interference will be set on a case-by-case
basis by the administrative patent judge
[examiner-in-chief] assigned to the interference. Times for taking
action shall be set and the administrative patent
judge [examiner-in-chief] shall exercise control over the
interference such that the pendency of the interference before the
Board does not normally exceed two years.
(d) An administrative patent judge [examiner-
in-chief] may hold a conference with the parties to consider: (1)
Simplification of any issues, (2) the necessity or desirability of
amendments to counts, (3) the possibility of obtaining admissions of
fact and genuineness of documents which will avoid unnecessary proof,
(4) any limitations on the number of expert witnesses, (5) the time and
place for conducting a deposition (Sec. 1.673(g)), and (6) any other
matter as may aid in the disposition of the interference. After a
conference, the administrative patent judge
[examiner-in-chief] may enter any order which may be appropriate.
(e) The administrative patent judge
[examiner-in-chief] may determine a proper course of conduct in an
interference for any situation not specifically covered by this part.
14. Section 1.611 is proposed to be amended by redesignating
paragraph (c)(8) as paragraph (c)(9), adding a new paragraph (c)(8) and
revising paragraphs (b), (c)(8) and (d) to read as follows:
Sec. 1.611 Declaration of interference.
* * * * *
(b) When a notice of declaration is returned to the Patent and
Trademark Office undelivered, or in any other circumstance where
appropriate, an
administrative patent judge [examiner-in-chief]
may (1) send a copy of the notice to a patentee named in a patent
involved in an interference or the patentee's assignee of record in the
Patent and Trademark Office or (2) order publication of an appropriate
notice in the Official Gazette.
(c) * * *
(7) The claim or claims of any application or any patent which
correspond to each count; [and]
(8) Why each claim designated as corresponding to a
count is directed to the same patentable invention as the count and why
each claim designated as not corresponding to a count is not directed
to the same patentable invention as the count; and
(9) The order of the parties.
(d) The notice of declaration may also specify the time for: (1)
Filing a preliminary statement as provided in Sec. 1.621(a); (2)
Serving [serving] notice that a preliminary
statement has been filed as provided in Sec. 1.621(b); and (3)
Filing [filing] preliminary motions authorized by
Sec. 1.633, oppositions to the motions, and replies to the oppositions.
* * * * *
15. Section 1.612 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.612 Access to applications.
(a) After an interference is declared, each party shall have access
to and may obtain copies of the files of any application set out in the
notice declaring the interference, except for affidavits filed under
Sec. 1.131 and any evidence and explanation under Sec. 1.608 filed
separate from an amendment. A party seeking access to any abandoned or
pending application referred to in the [opposing party's]
opponent's involved application or access to any
pending application referred to in the [opposing party's]
opponent's patent must file a motion under
Sec. 1.635. See Sec. 1.11(e) concerning public access to
interference files.
* * * * *
16. Section 1.613 is proposed to be amended by revising paragraphs
(c) and (d) to read as follows:
Sec. 1.613 Lead attorney, same attorney representing different parties
in an interference, withdrawal of attorney or agent.
* * * * *
(c) An administrative patent judge [examiner-
in-chief] may make necessary inquiry to determine whether an attorney
or agent should be disqualified from representing a party in an
interference. If an administrative patent judge
[examiner-in-chief] is of the opinion that an attorney or agent should
be disqualified, the administrative patent judge
[examiner-in-chief] shall refer the matter to the Commissioner. The
Commissioner will make a final decision as to whether any attorney or
agent should be disqualified.
(d) No attorney or agent of record in an interference may withdraw
as attorney or agent of record except with the approval of an
administrative patent judge [examiner-in-chief]
and after reasonable notice to the party on whose behalf the attorney
or agent has appeared. A request to withdraw as attorney or agent of
record in an interference shall be made by motion (Sec. 1.635).
17. Section 1.614 is proposed to be amended by revising paragraphs
(a) and (c) to read as follows:
Sec. 1.614 Jurisdiction over interference.
(a) The Board acquires [shall assume]
jurisdiction over an interference when the interference is declared
under Sec. 1.611.
* * * * *
(c) The examiner shall have jurisdiction over any pending
application until the interference is declared. An
administrative patent judge [examiner-in-chief],
where appropriate, may for a limited purpose restore jurisdiction to
the examiner over any application involved in the interference.
18. Section 1.615 is proposed to be amended by revising paragraphs
(a) and (b) to read as follows:
Sec. 1.615 Suspension of ex parte prosecution
(a) When an interference is declared, ex parte prosecution of an
application involved in the interference is suspended. Amendments and
other papers related to the application received during pendency of the
interference will not be entered or considered in the interference
without the consent of an administrative patent
judge [examiner-in-chief].
(b) Ex parte prosecution as to specified matters may be continued
concurrently with the interference with consent of the
administrative patent judge [examiner-in-chief].
19. Section 1.616 is proposed to be amended by revising the section
heading, introductory text and paragraphs (a) through (e) to read as
follows and by adding new paragraphs (b) and (c) to read as follows:
Sec. 1.616 Sanctions for failure to comply with rules or order
or for taking or maintaining a frivolous
position.
(a) An administrative patent
judge [examiner-in-chief] or the Board may impose an
appropriate sanction against a party who fails to comply with the
regulations of this part or any order entered by an
administrative patent judge [examiner-in-chief]
or the Board. An appropriate sanction may include among others entry of
an order:
(1) [(a)] Holding certain facts to have been
established in the interference;
(2) [(b)] Precluding a party from filing a
paper [motion or a preliminary statement];
(3) [(c)] Precluding a party from presenting
or contesting a particular issue;
(4) [(d)] Precluding a party from requesting,
obtaining, or opposing discovery; [or]
(5) [(e)] Awarding compensatory
expenses and/or compensatory attorney fees; or
(6) Granting judgment in the interference.
(b) An administrative patent judge or the Board may
impose a sanction, including a sanction in the form of compensatory
expenses and/or compensatory attorney fees, against a party for taking
or maintaining a frivolous position.
(c) To the extent that any information under the control of an
individual or entity located in a NAFTA country concerning knowledge,
use, or other activity relevant to proving or disproving a date of
invention has been ordered to be produced by an administrative patent
judge or the Board (Sec. 1.671(h)), but has not been produced for use
in the interference to the same extent as such information could be
made available in the United States, the administrative patent judge or
the Board shall draw such adverse inferences as may be appropriate
under the circumstances, or take such other action permitted by
statute, rule, or regulation, in favor of the party that requested the
information in the interference, including imposition of appropriate
sanctions under paragraph (a) of this section.
20. Section 1.617 is proposed to be amended by revising paragraphs
(a), (b), (d), (e), (g) and (h) to read as follows:
Sec. 1.617 Summary judgment against applicant.
(a) An administrative patent judge [examiner-
in-chief] shall review any evidence filed by an applicant under
Sec. 1.608(b) to determine if the applicant is prima facie entitled to
a judgment relative to the patentee. If the administrative
patent judge [examiner-in-chief] determines that the
evidence shows the applicant is prima facie entitled to a judgment
relative to the patentee, the interference shall proceed in the normal
manner under the regulations of this part. If in the opinion of the
administrative patent judge [examiner-in-chief]
the evidence fails to show that the applicant is prima facie entitled
to a judgment relative to the patentee, the administrative
patent judge [examiner-in-chief] shall, concurrently with
the notice declaring the interference, enter an order stating the
reasons for the opinion and directing the applicant, within a time set
in the order, to show cause why summary judgment should not be entered
against the applicant.
(b) The applicant may file a response to the order ,
which may include an appropriate preliminary motion under
Sec. 1.633(c), (f) or (g), and state any reasons why summary
judgment should not be entered. Any request by the applicant for a
hearing before the Board shall be made in the response. Additional
evidence shall not be presented by the applicant or considered by the
Board unless the applicant shows good cause why any additional evidence
was not initially presented with the evidence filed under
Sec. 1.608(b). At the time an applicant files a response, the applicant
shall serve a copy of any evidence filed under Sec. 1.608(b) and this
paragraph.
* * * * *
(d) If a response is timely filed by the applicant, all opponents
may file a statement and may oppose any preliminary motion
filed under Sec. 1.633(c), (f) or (g) by the applicant
within a time set by the adminsitrative patent
judge [examiner-in-chief]. The statement may set forth views
as to why summary judgment should be granted against the applicant, but
the statement shall be limited to discussing why all the evidence
presented by the applicant does not overcome the reasons given by the
administrative patent judge [examiner-in-chief]
for issuing the order to show cause. Except as required to
oppose a motion under Sec. 1.633(c), (f) or (g) by the applicant,
evidence [Evidence] shall not be filed by any opponent. An
opponent may not request a hearing.
(e) Within a time authorized by the administrative
patent judge [examiner-in-chief], an applicant may file a
reply to any statement or opposition filed by any
opponent.
* * * * *
(g) If a response by the applicant is timely filed, the
administrative patent judge [examiner-in-chief]
or the Board shall decide whether the evidence submitted under
Sec. 1.608(b) and any additional evidence properly submitted under
paragraphs [paragraph] (b) and
(e) of this section shows that the applicant is prima facie
entitled to a judgment relative to the patentee. If the applicant is
not prima facie entitled to a judgment relative to the patentee, the
Board shall enter a final decision granting summary judgment against
the applicant. Otherwise, an interlocutory order shall be entered
authorizing the interference to proceed in the normal manner under the
regulations of this subpart.
(h) Only an applicant who filed evidence under Sec. 1.608(b) may
requests a hearing. If that applicant requests a hearing, the Board may
hold a hearing prior to entry of a decision under paragraph (g) of this
section. The administrative patent judge
[examiner-in-chief] shall set a date and time for the hearing. Unless
otherwise ordered by the administrative patent
judge [examiner-in-chief] or the Board, the applicant and
any opponent will each be entitled to no more than 30 minutes of oral
argument at the hearing.
21. Section 1.618 is proposed to be amended by revising paragraph
(a) to read as follows:
Sec. 1.618 Return of unauthorized papers.
(a) An administrative patent judge or the Board shall
enter an order directing the [The Patent and Trademark
Office shall] return to a party of any paper
presented by the party when the filing of the paper is not authorized
by, or is not in compliance with the requirements, this subpart. Any
paper returned will not thereafter be considered [by the Patent and
Trademark Office] in the interference. A party may be permitted to file
a corrected paper under such conditions as may be deemed appropriate by
an administrative patent judge [examiner-in-
chief].
* * * * *
22. Section 1.621 is proposed to be amended by revising paragraph
(b) to read as follows:
Sec. 1.621 Preliminary statement, time for filing, notice of filing.
* * * * *
(b) When a party files a preliminary statement, the party shall
also simultaneously file and serve on all opponents in the interference
a notice stating that a preliminary statement has been filed. A copy of
the preliminary statement need not be served until ordered by the
administrative patent judge [examiner-in-chief].
23. Section 1.622 is proposed to be amended by revising paragraph
(b) to read as follows:
Sec. 1.622 Preliminary statement, who made invention, where invention
made.
* * * * *
(b) The preliminary statement shall state whether the invention was
made in the United States , a NAFTA country (and, if so,
which NAFTA country), or [abroad] in a non-NAFTA
country. If made in a non-NAFTA
country [abroad], the preliminary statement shall state
whether the party is entitled to the benefit of the second sentence of
35 U.S.C. 104.
24. Section 1.623 is proposed to be amended by revising the section
heading and paragraph (a) to read as follows:
Sec. 1.623 Preliminary statement; invention made in United States
or a NAFTA country.
(a) When the invention was made in the United States or
a NAFTA country, or a party is entitled to the benefit of
the second sentence of 35 U.S.C. 104, the preliminary statement must
state the following facts as to the invention defined by each count:
* * * * *
25. Section 1.624 is proposed to be amended by revising the section
heading and paragraphs (a), (a)(1) through (a)(6) and (c) to read as
follows:
Sec. 1.624 Preliminary statement; invention made [abroad]
in a non-NAFTA country.
(a) When the invention was made in a non-NAFTA
county [abroad] and a party intends to rely on introduction
of the invention into the United States or a NAFTA
country, the preliminary statement must state the following
facts as to the invention defined by each count:
(1) The date on which a drawing of the invention was first
introduced into the United States or a NAFTA
country.
(2) The date on which a written description of the invention was
first introduced into the United States