[Federal Register Volume 60, Number 52 (Friday, March 17, 1995)]
[Rules and Regulations]
[Pages 14488-14536]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-6377]
[[Page 14487]]
_______________________________________________________________________
Part II
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Part 1
Patent Appeal and Interference Practice; Final Rule
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules
and Regulations
[[Page 14488]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 950207044-5044-01]
RIN 0651-AA71
Patent Appeal and Interference Practice
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent cases relating to patent appeal and interference
proceedings. The changes include amendments to conform the interference
rules to new legislative requirements and a number of clarifying and
housekeeping amendments.
EFFECTIVE DATE: This document is effective April 21, 1995, except
Sec. 1.11(e) which is effective March 17, 1995.
FOR FURTHER INFORMATION CONTACT:
Fred E. McKelvey by telephone at (703) 603-3361 or by mail marked to
the attention of Fred E. McKelvey at P.O. Box 15647, Arlington,
Virginia 22215.
SUPPLEMENTARY INFORMATION: A Notice of Proposed Rulemaking was
published in the Federal Register (59 FR 50181) on October 3, 1994, and
in the Official Gazette of the Patent and Trademark Office (1167 Off.
Gaz. Pat. Office 98) on October 25, 1994. In response to a request for
written comments, twenty-six written comments were received. A public
hearing was held on December 7, 1994, at which four witnesses
testified. The written comments and the suggestions made at the public
hearing represent the views of fifteen individuals and corporations and
three patent law associations, namely, the Committee on Interferences
of the American Bar Association, the Interference Committee of the
American Intellectual Property Law Association and the Japan
Intellectual Property Association. These comments and suggestions are
addressed below in the discussion of the rule changes to which they
pertain. A number of suggested rule changes, though meritorious, cannot
be adopted at this time because they are believed to be outside the
scope of the present rulemaking. Accordingly, those suggestions will be
the subject of a future rulemaking.
The provisions of the rules, as amended, will be applied in pending
interferences to the extent reasonably possible. However, it is the
desire of PTO to avoid applying the rules, as adopted, to pending
interferences where substantial prejudice would result. For example,
generally speaking, in cases where the periods for filing preliminary
motions and preliminary statements have been set, the current
preliminary motion and preliminary statement rules will apply, although
parties are free to voluntarily comply with the rules as amended.
Generally speaking, in cases where the testimony periods have been set,
the current testimony and record rules will apply. The question of
whether substantial prejudice will result in a particular case is a
matter within the discretion of the administrative patent judge or the
Board.
I. Amendments Responsive to Adoption of Public Laws 103-182 and
103-465
As indicated in the Notice of Proposed Rulemaking, several of the
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, hereinafter NAFTA
Implementation Act), which amended 35 U.S.C. 104 to permit an applicant
or patentee, with respect to an application filed on or after December
8, 1993, to rely on activities occurring in a ``NAFTA country'' to
prove a date of invention no earlier than December 8, 1993, except as
provided in 35 U.S.C. 119 and 365. On December 8, 1994, which was
subsequent to publication of the Notice of Proposed Rulemaking, Public
Law 103-465, 108 Stat. 4809 (1994) (Uruguay Round Agreements Act) was
signed into law, which further amended 35 U.S.C. 104 to permit an
applicant or a patentee, with respect to an application filed on or
after January 1, 1996, to rely on activities occurring in a WTO member
country to prove a date of invention no earlier than January 1, 1996,
except as provided in 35 U.S.C. 119 and 365. Section 104, as amended by
Public Law 103-465, reads as follows:
Section 104. Invention made abroad.
(a) IN GENERAL.--
(1) PROCEEDINGS.--In proceedings in the Patent and Trademark
Office, in the courts, and before any other competent authority, an
applicant for a patent, or a patentee, may not establish a date of
invention by reference to knowledge or use thereof, or other
activity with respect thereto, in a foreign country other than a
NAFTA country or a WTO member country, except as provided in
sections 119 and 365 of this title.
(2) RIGHTS.--If an invention was made by a person, civil or
military--
(A) while domiciled in the United States, and serving in any
other country in connection with operations by or on behalf of the
United States,
(B) while domiciled in a NAFTA country and serving in another
country in connection with operations by or on behalf of that NAFTA
country, or
(C) while domiciled in a WTO member country and serving in
another country in connection with operations by or on behalf of
that WTO member country,
that person shall be entitled to the same rights of priority in the
United States with respect to such invention as if such invention
had been made in the United States, that NAFTA country, or that WTO
member country, as the case may be.
(3) USE OF INFORMATION.--To the extent that any information in a
NAFTA country or a WTO member country concerning knowledge, use, or
other activity relevant to proving or disproving a date of invention
has not been made available for use in a proceeding in the Patent
and Trademark Office, a court, or any other competent authority to
the same extent as such information could be made available in the
United States, the Commissioner, court, or such other authority
shall draw appropriate inferences, or take other action permitted by
statute, rule, or regulation, in favor of the party that requested
the information in the proceeding.
(b) DEFINITIONS.--As used in this section--
(1) the term `NAFTA country' has the meaning given that term in
section 2(4) of the North American Free Trade Agreement
Implementation Act; and
(2) the term `WTO member country' has the meaning given that
term in section 2(10) of the Uruguay Round Agreements Act.
Section 2(4) of the NAFTA Implementation Act is codified at 19 U.S.C.
3301; Sec. 2(10) of the Uruguay Round Agreements Act is codified at 19
U.S.C. 3501.
The Notice of Proposed Rulemaking proposed adding a new paragraph
(r) to Sec. 1.601 defining ``NAFTA country'' to mean ``NAFTA country''
as defined in section 2(4) of the NAFTA Implementation Act and ``non-
NAFTA country'' to mean a country other than a NAFTA country. One
comment questioned whether ``NAFTA country'' should be defined in the
rules to include the United States. The answer is no. ``NAFTA country''
as used in 35 U.S.C. 104 has the meaning given that term in section
2(4) of the NAFTA Implementation Act, which refers to only Canada and
Mexico. Another comment observed that the proposed terms ``NAFTA
country'' and ``non-NAFTA country'' do not appear to contemplate that
inventive acts may occur in a foreign place that is not part of any
``country'' and suggested either using the phrase ``outside the United
States or a NAFTA country'' instead of ``non-NAFTA country'' or else
defining ``non-NAFTA country'' to mean ``a place other than the United
States or a NAFTA country.'' The comment is well [[Page 14489]] taken.
In view of the comment and the amendment of 35 U.S.C. 104 by the
Uruguay Round Agreements Act to permit reliance on activities in WTO
member countries, the proposed term ``NAFTA country'' is replaced in
Secs. 1.622, 1.623, 1.624 and 1.628, which set forth the requirements
for preliminary statements and for correcting preliminary statements,
by the phrase ``NAFTA country or WTO member country'' and the proposed
term ``non-NAFTA country'' is replaced by the phrase ``place other than
the United States, a NAFTA country or a WTO member country.''
Furthermore, the references in Secs. 1.622(b) and 1.623(a) to the
``second sentence of 35 U.S.C. 104'' have been changed to ``35 U.S.C.
104(a)(2)'' to reflect the fact that 35 U.S.C. 104 as amended by the
Uruguay Round Agreements Act includes paragraphs (a) (1), (2) and (3).
For example, Sec. 1.622(b) is revised to read:
(b) The preliminary statement shall state whether the invention
was made in the United States, a NAFTA country (and, if so, which
NAFTA country), a WTO member country (and if so, which WTO member
country), or in a place other than the United States, a NAFTA
country, or a WTO member country. If made in a place other than the
United States, a NAFTA country, or a WTO member country, the
preliminary statement shall state whether the party is entitled to
the benefit of 35 U.S.C. 104(a)(2).
For the above-stated reasons, Sec. 1.601 is revised by adding new
paragraph (r), which, as proposed, defines ``NAFTA country'' to have
the meaning given that term in section 2(4) of the North American Free
Trade Act Implementation Act, Pub. L. 103-182, 107 Stat. 2057 (1993).
However, since, as noted above, the term ``non-NAFTA country'' is not
being adopted, the proposal to also define that term in Sec. 1.601(r)
is hereby withdrawn. Section 1.601 is also revised to include a new
paragraph (s) that defines ``WTO member country'' to have the meaning
given that term in section 2(10) of the Uruguay Round Agreements Act,
Pub. L. 103-465, 108 Stat. 4809 (1994).
Section 1.684, which relates to the taking of testimony in a
foreign country, is removed and reserved in view of the amendments to
Secs. 1.671-72. Section 1.672 is amended by revising paragraph (a),
revising current paragraph (b) and redesignating parts of it as new
paragraphs (b), (c) and (d), removing and reserving paragraph (c) and
redesignating it as new paragraph (e), revising paragraphs (d) and (e)
and redesignating them as new paragraphs (f) and (g), and redesignating
paragraph (f) as new paragraph (h).
Specifically, the Notice of Proposed Rulemaking proposed amending
Sec. 1.672(a) to require that ``testimony not compelled under 35 U.S.C.
24 or compelled from a party or in another country'' be taken only by
affidavit. Several comments questioned whether the term ``compelled''
also applies to the phrase ``in another country'' and suggested
inserting ``compelled'' before that phrase if that is the intent.
Inasmuch as the comment correctly states the intent, the suggestion in
the comment is being adopted.
One comment supported limiting non-compelled direct testimony to
affidavits on the ground that it will reduce the cost of submitting
testimony-in-chief and will eliminate economic harassment by a more
affluent party of a less affluent opponent, since the less affluent
opponent will no longer be required to pay the expense of counsel to
attend depositions called by the more affluent party for taking direct
testimony. Several comments were opposed, maintaining that affidavits
are inherently less credible than live testimony. One comment states:
Ours is the only country that supports interferences and we
should be proud of it, because it demonstrates our commitment to the
concept that it is more important to seek right and justice than to
settle for a single arbitrary rule of convenience, no matter how
convenient. Even if we don't always secure the right result, at
least we try. As we invite the rest of the world to become full
participants in this uncommon philosophy, we should endeavor to
present it in its best light.
How we conduct a trial is a centerpiece of our judicial system.
Our interference trial by deposition is a reasonable compromise from
a trial in a courtroom type setting. But a trial by affidavit is no
trial at all! Affidavits are inevitably contrived, artificial, and
often argumentative. They cannot substitute for the extemporaneous
words of a witness (even if well coached), and cross-examination is
not likely to reconstruct the real truth. Even if it is just in a
nuance of expression, it is gone.
The current approach of providing a choice between deposition
and affidavit testimony is difficult to accept, but at least it is
justifiable on the basis that so many patent attorneys simply don't
know how to conduct a deposition, while they do have some experience
with affidavits. But the proposal to make affidavits mandatory for
direct testimony is contrary to my understanding of American
jurisprudence.
Direct testimony on behalf of a party by oral deposition is said to
be advantageous to the opponent in that the testimony is the witness'
own, the demeanor of the witness can be observed by the opponent (but
demeanor is not observed by any member of the Board), and cross-
examination can be carried out without a period during which it is said
that the witness can be coached in preparation for cross-examination.
However, under current practice a party can elect to deprive its
opponent of these advantages by electing to use affidavits. Deposition
testimony is also said to be advantageous to the party offering the
testimony, who may find it more convenient to present the witness at a
single deposition for direct and cross-examination than to first
prepare an affidavit for direct testimony and later produce the witness
at a deposition for cross-examination by an opponent. These supposed
advantages are believed to be outweighed by the advantages of requiring
that direct non-compelled testimony be in affidavit form. As recognized
by those who favor direct testimony by affidavit, there are at least
two advantages to taking direct testimony by affidavit, i.e., (1)
Reducing the cost of presenting a party's own direct testimony and (2)
avoiding the expense of attending an opponent's depositions for direct
testimony. There are a number of other advantages when direct testimony
is taken by affidavit rather than deposition. First, because an
opponent will have seen all of the party's direct testimony prior to
beginning cross-examination, the opponent should be able to carry out a
more pointed and efficient cross-examination, thereby avoiding the need
to recall a witness for further examination during the opponent's
rebuttal case, which can be costly in time and expense to both the
party and the opponent. Second, a party presenting direct testimony by
affidavit is less likely to inadvertently, and perhaps fatally, omit an
essential part of its proofs than when presenting direct testimony by
oral deposition. Third, affidavit testimony will be advantageous to the
Board because affidavit testimony can be evaluated more expeditiously
than can deposition transcripts, which frequently present the facts in
an incoherent manner and too often include a considerable amount of
disruptive attorney colloquy. Fourth, in the case of direct testimony
by persons testifying in a foreign language, testimony by affidavit (in
the English language) should be considerably less cumbersome than
testimony by oral deposition through translators.
Two comments suggested that there may be cases in which both
parties find it mutually convenient to present their direct testimony
by oral deposition and that under these circumstances the
administrative patent judge should be allowed to authorize such
depositions. The suggestion is not being adopted,
[[Page 14490]] because it would eliminate the above-noted advantages of
reducing the likelihood of omitting an essential part of the proofs and
having the Board consider direct testimony presented in a more coherent
form.
Another comment suggested that there appears to be no need why all
testimony abroad must be by oral deposition, noting, for example, that
a third-party witness may be willing to give an affidavit comprising
the direct testimony, provided cross-examination will be conducted in
the witness's home country. Still another comment asked how the parties
should handle a situation where a party's witness residing in a foreign
country, due to health or other serious impediment, is unable to travel
to the United States for cross-examination, but is willing to testify
in the foreign country, which allows testimony, for example, only by
written interrogatories. The answer in both situations, as well as in
other unusual situations not provided for by the rules, is to file a
motion (Sec. 1.635) for permission to take the testimony in a manner
other than by deposition. The motion may or may not be granted
depending on the particular circumstances. In order to make it clear
that the administrative patent judge and the Board have discretion in
unusual circumstances to grant appropriate relief, Sec. 1.672 is
further revised by adding a new paragraph (i) reading as follows:
(i) In an unusual circumstance and upon a showing that testimony
cannot be taken in accordance with the provisions of this subpart,
an administrative patent judge upon motion (Sec. 1.635) may
authorize testimony to be taken in another manner.
Section 1.672(b), as it was proposed to be revised in the Notice of
Proposed Rulemaking, includes a requirement that a party presenting
testimony of a witness by affidavit, within the time set by the
administrative patent judge for serving affidavits, file a copy of the
affidavit. Since, for reasons discussed infra, Sec. 1.671(e) is being
retained in modified form rather than being removed and reserved, as
was proposed, Sec. 1.672(b) as adopted, like current Sec. 1.672(b),
permits a party to file a copy of the affidavit or, if appropriate, a
notice under 1.671(e). If the affidavit relates to a party's case-in-
chief, it shall be filed or noticed no later than the date set by an
administrative patent judge for the party to file affidavits for its
case-in-chief. If the affidavit relates to a party's case-in-rebuttal,
it shall be filed or noticed no later than the date set by an
administrative patent judge for the party to file affidavits for its
case-in-rebuttal. A party shall not be entitled to rely on any document
referred to in the affidavit unless a copy of the document is filed
with the affidavit. A party shall not be entitled to rely on anything
mentioned in the affidavit unless the opponent is given reasonable
access to the thing. A thing is something other than a document.
As proposed in the Notice of Proposed Rulemaking, a new paragraph
(c) is added to Sec. 1.672 stating 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
particularly the nature of the objection. Any objection should identify
the specific Federal Rule of Evidence that renders the evidence
inadmissible and shall explain why the Rule applies to the evidence
sought to be introduced. No oppositions to the objections are
authorized. Rather, the party may respond by filing supplemental
evidence in the form of affidavits, official records and printed
publications. Alternatively, the party may determine that the objection
is without merit and do nothing. One comment suggested that
``supplemental affidavits and supplemental official records and printed
publications'' in the third sentence of Sec. 1.672(c) as proposed be
changed to ``one or more supplemental affidavits, official records or
printed publications.'' The suggestion is being adopted. The same or
similar changes have been made in the third sentence of Sec. 1.682(c)
and in the third sentence of Sec. 1.683(b); in the third sentence of
Sec. 1.688(b) ``supplemental affidavits'' has been changed to ``one or
more supplemental affidavits.'' Section 1.672(c) further provides that
any objections to the admissibility of any evidence contained in or
submitted with a supplemental affidavit shall be made only by a motion
to suppress under Sec. 1.656(h).
As proposed in the Notice of Proposed Rulemaking, Sec. 1.672 is
revised by adding a new paragraph (d) requiring any cross-examination
of an affiant to be by deposition at a reasonable location within ``the
United States,'' which is defined in Sec. 1.601(p) and 35 U.S.C. 100(c)
to mean ``the United States of America, its territories and
possessions.'' For purposes of the interference rules, the term
``territories and possessions'' is broadly construed to refer to all
territories and possessions of the United States, including, for
example, the Commonwealth of Puerto Rico.
An opponent who believes that a party is producing an affiant for
cross-examination in an ``unreasonable'' location may move (Sec. 1.635)
for entry of an order by an administrative patent judge to set the
location of the deposition for cross-examination. Paragraph (d) also
requires that the party whose witness is to be cross-examined give
notice of the deposition under Sec. 1.673(e), obtain a court reporter
and provide a translator if the witness will not testify in English.
Although not expressly set forth in the rules as amended, it should be
understood that any party attending the deposition can bring its own
translator or the parties can agree to share the cost of a single
mutually agreeable translator.
Comments were received against the proposal that Sec. 1.672(d)
require cross-examination of affiants to be conducted by oral
deposition ``at a reasonable location within the United States.'' One
comment suggested that requiring a witness who resides in a foreign
country to travel to the United States for cross-examination will be
extremely inconvenient where the witness is a key person for a company.
The comment also suggested that the term ``United States'' be amended
to additionally include U.S. embassies and/or consulates in foreign
countries, at least for purposes of conducting cross-examination. The
suggestion is not being adopted. Given the time differences between the
United States and Europe or the United States and Asia, it is highly
likely that administrative patent judges would not be on duty to rule
on telephonic requests for admissibility of evidence. Furthermore, a
party whose witness is to testify on cross-examination at a ``trial''
(i.e., interference proceeding) in the United States should produce the
witness for cross-examination at a reasonable location within the
United States. Finally, in view of PTO's general lack of experience
regarding procedures for, and difficulties which may arise in, taking
deposition testimony in a foreign country, PTO has decided, at least
for the time being, to take a conservative approach regarding taking
testimony in a foreign country. The approach will be reevaluated after
PTO gains some experience with foreign deposition testimony taken
pursuant to Sec. 1.671(h).
One comment suggested inserting a comma after ``reporter'' in the
fifth sentence of proposed Sec. 1.672(d), as well as in the fifth
sentences of proposed Secs. 1.682(d), 1.683(c) and 1.688(c). The
suggestion is being adopted.
The Notice of Proposed Rulemaking proposed to redesignate current
Sec. 1.672(d) (``When a deposition is authorized under this subpart, if
the parties agree in writing, the deposition may be taken before any
person [[Page 14491]] authorized to administer oaths, at any place,
upon any notice, and in any manner, and when so taken may be used like
other depositions.'') as Sec. 1.672(f). One comment questioned whether
Sec. 1.672(f) (former Sec. 1.672(d)) applies to cross-examination
deposition testimony authorized by Secs. 1.672(d), 1.673(a), 1.682(d),
1.683(c) and 1.688(c). Implicit in the comment is a question of whether
proposed Sec. 1.672(f) would authorize the parties, with respect to
deposition testimony that has been authorized by the rules or by an
administrative patent judge to be taken in the United States, to agree
to take the deposition outside the United States. For the reasons
discussed above, the parties may not agree, absent the permission of an
administrative patent judge or the Board, to take a deposition outside
the United States. Accordingly, Sec. 1.672(f), as amended, provides
that depositions authorized to be taken within the United States are to
be taken within the United States: ``When a deposition is authorized to
be taken within the United States under this subpart and if the parties
agree in writing, the deposition may be taken in any place within the
United States, before any person authorized to administer oaths, upon
any notice, and in any manner, and when so taken may be used like other
depositions.''
Current Sec. 1.672(e), which is being redesignated as
Sec. 1.672(g), reads as follows: ``If the parties agree in writing, the
testimony of any witness may be submitted in the form of an affidavit
without opportunity for cross-examination. The affidavit shall be filed
in the Patent and Trademark Office.'' Although not proposed in the
Notice of Proposed Rulemaking, this section is revised to be consistent
with the other amendments to Secs. 1.671-73 so as to read as follows:
``If the parties agree in writing, the affidavit testimony of any
witness may be submitted without opportunity for cross-examination.''
As proposed in the Notice of Proposed Rulemaking, current
Sec. 1.672(f), which concerns the filing of agreed statements setting
forth how a particular witness would testify if called or the facts in
the case of one or more of the parties, is redesignated as
Sec. 1.672(h).
In addition to the proposed amendments discussed above, current
Sec. 1.672(b) is revised, as proposed in the ``Miscellaneous
Amendments'' part of the Notice of Proposed Rulemaking, by deleting the
third sentence, which specifies the type of paper to be used for
affidavits, as superfluous in view of Sec. 1.677(a); and in paragraph
(d), 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).'') is removed as superfluous in view of the second
sentence of new Sec. 1.672(d).
In Sec. 1.671, the Notice of Proposed Rulemaking proposed to amend
paragraph (a) to read as follows: ``Evidence consists of testimony and
exhibits, official records and publications filed under Sec. 1.682,
testimony from another interference, proceeding, or action filed under
Sec. 1.683, and discovery relied upon under Sec. 1.688, and the
specification (including claims) and drawings of any application or
patent: * * *.'' One comment suggested that ``and discovery'' be
changed to ``discovery'' in order to remove an unnecessary ``and.'' The
suggestion is being adopted. Another comment suggested inserting ``and
exhibits'' after ``testimony'' in the phrase ``testimony from another
interference, proceeding, or action under Sec. 1.683.'' The suggestion
is being adopted, but with the term ``exhibits'' prefaced by
``referenced'' to make it clear that it relates only to exhibits
referred to by a witness in an affidavit or during an oral deposition.
Clarification is necessary because, as noted in the discussion of
Sec. 1.653(c)(5), infra, the term ``exhibit'' also includes official
records and printed publications relied on under Sec. 1.682, which are
not referred to by a witness in an affidavit or during an oral
deposition. For the same reason, ``referenced'' is also inserted before
the first occurrence of ``exhibits'' in Sec. 1.671(a). A similar
clarifying amendment is also made to Sec. 1.683(a).
The Notice of Proposed Rulemaking proposed to revise Sec. 1.671(f)
to state that ``[t]he significance of documentary and other exhibits
identified by a witness in an affidavit or during oral deposition shall
be discussed with particularity by the witness'' (emphasis added) in
order 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. One comment
indicated that proposed Sec. 1.671(f) fails to recognize that a witness
may be called merely to authenticate a piece of evidence, e.g., a
photograph, which is to be discussed with particularity by another
witness. The comment is well taken. Accordingly, Sec. 1.671(f) is
revised to read as follows: ``The significance of documentary and other
exhibits identified by a witness in an affidavit or during oral
deposition shall be discussed with particularity by a witness.'' Thus,
Sec. 1.671(f) does not apply to official records and printed
publications submitted into evidence pursuant to Sec. 1.682(a).
The Notice of Proposed Rulemaking proposed that Sec. 1.671(g),
which currently requires a party to file a motion (Sec. 1.635) to
obtain permission prior to taking testimony or seeking documents or
things ``under 35 U.S.C. 24,'' be revised to require a motion ``prior
to compelling testimony or production of documents or things under 35
U.S.C. 24 or from a party.'' One comment suggested that the requirement
to obtain permission from an administrative patent judge before
noticing an employee of one's opponent as a hostile witness is
important. Another comment took issue with the requirement and the
statement in the Notice of Proposed Rulemaking that ``all depositions
for a case-in-chief would have to be approved by an administrative
patent judge'' (59 FR at 50191), stating:
I suppose that means by motion with an explanation of what the
deposition will cover. Such a procedure will destroy the ability to
obtain effective testimony from an adverse witness, because of the
need to reveal the strategy. Particularly in a derivation contest,
the ability to obtain unrehearsed testimony of the adverse party
will be lost, and he [sic; his testimony] may be the only
corroboration available. Heretofore, taking the deposition of one's
adverse party to obtain evidence for one's case-in-chief has been a
matter of right on serving proper notice. It is essential that this
right be preserved. Obviously, this procedure should not be used to
discover a senior party's case-in-chief, and that limitation is
easily protected by objection to any such questions that are not
also related to the junior party's case-in-chief, and then either
(a) calling the judge for an immediate ruling, or (b) refusing to
answer the question.
Assuming for the sake of argument that the current interference rules
permit a party to notice the deposition of an opponent's witness in
order to take direct testimony of the type described above without
first obtaining permission from an administrative patent judge, the
interference rules do not provide any sanction for the failure of the
witness to appear at a noticed deposition. Consequently, even under the
current rules the party seeking the testimony of an opponent's witness,
as a practical matter, must obtain an order from an administrative
patent judge or the Board requiring the witness to appear so that the
opponent can be sanctioned under Sec. 1.616 if the witness fails to
appear.
One comment suggested that the proposed new last sentence for
Sec. 1.671(g) (``The testimony of the witness shall be taken on oral
[[Page 14492]] deposition.'') be omitted as superfluous in view of
Sec. 1.672(a) as amended. The suggestion is being adopted.
A comment suggested that Sec. 1.671(g) be modified to expressly
apply to an entity or witness under the opponent's control. The
modification is not believed to be necessary. The term ``party'' is
defined in Sec. 1.601(1) to include an inventor's legal representative
or assignee. The term ``opponent,'' while not defined per se in the
rules, is a ``party'' who happens to be a ``second'' party opponent of
a ``first'' party. Section 1.671(g) applies where a witness is under
the control of a party opponent's assignee.
As proposed in the Notice of Proposed Rulemaking, a new paragraph
(h) is added to Sec. 1.671 providing that a party seeking to compel
testimony or production of documents or things in a foreign country
must file a motion (Sec. 1.635) to obtain permission from an
administrative patent judge. The motion must 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, or 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
requirements for an oral conference (Sec. 1.673(g)), and service of
documents and a proffer of access to things (Sec. 1.673(b)), must
notice the deposition under Sec. 1.673(a).
With respect to the requirements for a motion to compel testimony
or production of documents or things in a foreign country, one comment
suggested that the phrase ``possession, custody and control'' in
proposed Sec. 1.671(h)(2)(iii) appears to include a typographical error
and should be changed to read ``possession, custody or control.'' The
suggestion is being adopted.
Another comment suggested that the administrative patent judge
would benefit from being additionally advised of (1) the foreign
country where the witness, document or thing is located, (2) a summary
of the procedures proposed to be followed to compel the testimony or
production of documents or things in the foreign country, and (3) the
time likely to be required to complete the procedures. In support, the
comment notes that compelling testimony or production of documents in a
foreign country can be so time-consuming that it may outweigh the
benefit of allowing the testimony or documents to be obtained,
considering their likely probative value and other relevant
considerations. The comment continues that in order to allow the
administrative patent judge to supervise the progress of the
interference and to allow establishment of an appropriate schedule for
the interference, the rules should require the suggested procedural
information. These suggestions are being adopted. Adoption of these
suggestions, however, should not be construed as a policy determination
by PTO that it intends to approve of, or tolerate, unwarranted delays
in obtaining testimony in a foreign country. The spirit of 35 U.S.C.
104 requires that evidence be obtainable in a foreign country
essentially on the same basis that it is obtainable in the United
States. When the laws and procedures in a foreign country make it so
time-consuming to obtain evidence that the evidence is essentially not
available in a reasonable manner, then the ``adverse inferences''
provision of new Sec. 1.616(c) may be appropriately applied.
Another comment notes that proposed Sec. 1.671(h)(1)(iv) for
witnesses and Sec. 1.671(h)(2)(iii) for documents and things assume
that it will be possible to request the holder of the evidence to
voluntarily produce it and obtain a definitive response to the request,
whereas it is said that discovery experience in foreign countries shows
that those possessing evidence often evade contact or, when contacted,
evade giving a definitive response. Accordingly, the comment suggested
that these provisions be reworded as follows:
Sec. 1.671(h)(1)(iv). Demonstrate that the party has made
reasonable efforts to secure the agreement of the witness to testify
in the United States but has been unsuccessful in obtaining the
agreement, even though the party has offered to pay the expenses of
the witness to travel to and testify in the United States.
Sec. 1.671(h)(2)(iii). Demonstrate that the party has made
reasonable efforts to obtain the agreement of the individual or
entity having possession, custody, or control of the document to
produce the document or thing in the United States but has been
unsuccessful in obtaining that agreement, even though the party has
offered to pay the expenses of producing the document or thing in
the United States.
The suggestion is being adopted. The expenses of a witness traveling to
the United States means the round-trip travel expenses.
The Notice of Proposed Rulemaking proposed the addition to
Sec. 1.671 of a new paragraph (j), which is patterned on paragraph (e)
of Sec. 1.684 (removed and reserved). Section 1.671(j), as it was
proposed, reads as follows:
(j) The weight to be given testimony taken in a foreign country
will be determined on a class-by-case basis. Little, if any, weight
may 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.
A number of comments were received in response to the proposal. Two
comments questioned whether Sec. 1.671(j) is intended to apply to
affidavit testimony as well as deposition testimony. One comment
suggested that the rule be expressly limited to deposition testimony,
since testimony by affidavit (including declarations) can be taken in
foreign countries under the perjury provisions of 28 U.S.C. 1746(1),
and is additionally subject to the safeguard of cross-examination in
the United States under proposed Sec. 1.672(d). For these reasons, and
also because current Sec. 1.684(e), on which Sec. 1.671(j) is
patterned, applies only to deposition testimony in a foreign country in
the form of interrogatories answered under oath, the suggestion to
expressly limit Sec. 1.671(j) to deposition testimony is being adopted.
Two comments stated that the party taking testimony in a foreign
country should not have the burden of proving that the giving of false
testimony is punishable as perjury under the law of the foreign
country, as it may be difficult or impossible to prove or may not even
be in dispute, and that the burden is especially unfair where a party
is being forced to take testimony abroad by circumstances beyond its
control. Both comments suggested putting the burden instead on the
opponent to show that the requirements are not similar, such as by
moving under Sec. 1,635 to accord the testimony little weight or moving
under Sec. 1.656(h) to suppress the testimony altogether. Section
1.671(j), as proposed in the Notice of Proposed Rulemaking, does not
alter who has the burden of proof with respect to testimony in a
foreign country; the burden remains on the party offering the
testimony, just as under current Sec. 1.684(e).
Another comment questioned whether the first sentence of the rule
as it was proposed, because it states that the weight of testimony
``will be determined on a case-by-case basis,'' [[Page 14493]] might be
construed as allowing the effect to be given testimony in a particular
foreign country in a given interference to be decided without regard to
the effect given in prior interferences to testimony given in that
country. The comment stated that the rule as proposed might be contrary
to the goals of equal treatment of similarly situated parties and
predictability of outcome, which would best be served by a system in
which the Board publishes decisions making findings as to the adequacy
of testimonial procedures in particular foreign countries and then
follows those decisions in subsequent cases, and suggested changing
``on a case-by-case basis'' to read ``in view of all the circumstances,
including the laws of the foreign country governing the testimony.''
The suggestion is being adopted.
Another comment suggested that the ``clear and convincing
evidence'' standard in the second sentence of proposed Sec. 1.671(j)
inappropriately implies that the determination of content of the law of
a foreign country is a question of fact. PTO intends to treat the
determination of the content of the law of a foreign country as a
question of fact. Accordingly, the language ``as a matter of fact'' is
inserted in Sec. 1.671(j). The same comment further indicates that the
proposed second sentence is troublesome because it (1) Requires a
showing that giving false testimony is punishable as ``perjury'' under
the laws of the foreign country rather than under some other name, (2)
does not on its face allow the foreign offense to be applicable only
when false testimony is given with the appropriate intent, and (3)
requires that the foreign punishment be ``similar to'' United States
punishment, when comparable or greater punishment would seem to serve
the purpose of the proposed rule. The comment suggested that the
foregoing problems can be avoided by replacing the proposed second
sentence with the following sentence:
Little, if any, weight may be given to oral testimony given in a
foreign country unless it is demonstrated (1) that the giving of
false testimony in the interference proceeding would be punishable
under the laws of the foreign country where the testimony was taken
under circumstances similar to those defined as perjury under the
laws of the United States and (2) that the punishment in the foreign
country for giving such false testimony is comparable to or greater
than the punishment for perjury committed under the laws of the
United States.
The comment additionally suggested adding a third sentence patterned on
the second and third sentences of Fed. R. Civ. P. 44.1 and reading as
follows: ``Such a demonstration may be made by any relevant material or
source, including testimony, whether or not admissible under this
subpart.'' To address the comments, which are believed to be well
taken, the proposed second sentence is replaced with the following two
sentences:
Little, if any, weight may be given to deposition testimony
taken in a foreign country unless the party taking the testimony
proves by clear and convincing evidence, as a matter of fact, that
knowingly giving false testimony in that country in connection with
an interference proceeding in the United States Patent and Trademark
Office is punishable under the laws of that country and that the
punishment in that country for such false testimony is comparable to
or greater than the punishment for perjury committed in the United
States. The administrative patent judge and the Board, in
determining foreign law, may consider any relevant material or
source, including testimony, whether or not submitted by a party or
admissible under the Federal Rules of Evidence.
The finally adopted language is also responsive to another comment
requesting clarification of the term ``similar'' in order to assist
practitioners, and possibly foreign governments in promulgating laws in
harmony with 35 U.S.C. 104 and Sec. 1.671.
In addition to the above amendments, Sec. 1.671(a), which
identifies the various types of testimony, is revised as proposed in
the ``Miscellaneous Amendments'' part of the Notice of Proposed
Rulemaking, by changing ``evidence from another interference,
proceeding, or action filed under 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. Sections
1.671 (c)(6) and (c)(7) are revised by changing ``by oral deposition or
affidavit'' to ``by affidavit or oral deposition.''
Section 1.673 is also amended as proposed in the ``Miscellaneous
Amendments'' part of the Notice of Proposed Rulemaking. Specifically,
Sec. 1.673(b) is revised by (1) changing the time for service of
evidence to be relied on at an oral disposition 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, (2) changing the time for service by any other means
from 10 days to 14 days prior to the conference and (3) removing the
quotation marks around ``Express Mail.''
The second sentence of Sec. 1.673(d) is removed, as proposed in the
Notice of Proposed Rulemaking, as unnecessary, because all depositions
for a case-in-chief require approval by an administrative patent judge.
Section 1.673(e) is revised, as proposed, by changing ``party
electing to present testimony by affidavit'' to ``party who has
presented testimony by affidavit.''
One comment suggested amending Sec. 1.673(g) to state that a party,
prior to serving a notice of deposition and after complying with
paragraph (b) of Sec. 1.673, shall contact the administrative patent
judge, who shall then have an oral conference with the party and all
opponents. The suggestion, which is outside the scope of the present
rulemaking, is not being adopted. In any event, it is expected that in
most cases the parties will be able to agree on a time and place for
depositions without the need for participation by an administrative
patent judge.
Concerning the first sentence of Sec. 1.673(a), one comment
suggested deleting the term ``single'' from ``single notice of
deposition'' on the ground that the current language might be construed
to mean that a party must file only a single notice of deposition
listing all depositions. The same suggestion was offered with respect
to paragraph (e) of Sec. 1.673. The suggestion, which is outside the
scope of the present rulemaking, is not being adopted.
The Notice of Proposed Rulemaking proposed to amend Sec. 1.616 by
adding a new paragraph (c), patterned after 35 U.S.C. 104(b), stating
that to the extent that any information under the control of an
individual or entity located in a NAFTA country or a WTO member 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. Section
1.616(c) further provides that this ``other action'' may include the
imposition of appropriate sanctions under Sec. 1.616(a).
One comment questioned whether the failure of an individual or
entity located in a NAFTA country or a WTO member country to provide
the information requested by a party can result in the imposition of
sanctions against an opponent from that country even though the
opponent is not at fault. The answer [[Page 14494]] is yes. One purpose
of 35 U.S.C. 104 is to ensure that evidence for interferences is
available in foreign countries in essentially the same manner that it
is available in the United States. If the evidence is not available,
then the appropriate inference provisions of 35 U.S.C. 104 shall be
applied by PTO.
After the Notice of Proposed Rulemaking was published, it became
apparent that the term ``ordered'' in the phrase ``to the extent that
any information under the control of an individual or entity located in
a NAFTA country or a WTO member country * * * has been ordered to be
produced by an administrative patent judge or the Board'' may not be
appropriate. Neither an administrative patent judge nor the Board can
order testimony or production of documents and things in a foreign
country from a witness who, or an entity that, is neither a party nor
under the control of a party. Instead, an administrative patent judge
or the Board can only authorize a party to seek to compel testimony or
production in a foreign country from a witness or entity not under the
control of a party. Accordingly, Sec. 1.616(c) as adopted reads instead
as follows:
(c) To the extent that an administrative patent judge or the
Board has authorized a party to compel the taking of testimony or
the production of documents or things from an individual or entity
located in a NAFTA country or a WTO member country concerning
knowledge, use, or other activity relevant to to proving or
disproving a date of invention (Sec. 1.671(h)), but the testimony,
documents or things have 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.
As proposed in the Notice of Proposed Rulemaking, Sec. 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 revised to extend these requirements to
any non-English language documents that a party is required to produce
via discovery. One comment expressed the concern that the proposed
amendment might impose an unnecessary financial burden on a non-U.S.
party by requiring translations of compelled documents that are very
long and have little or no relevance. The concern is believed to be
misplaced. First, discovery in interferences, like discovery under the
Federal Rules of Civil Procedure, is limited to evidence that is
relevant. Second, as to relevant evidence, the scope of discovery under
the interference rules is considerably narrower than the discovery
available under the Federal Rules of Civil Procedure. Another comment
stated that the general practice is that a party proffering a document
is responsible for the cost of translation. The comment nevertheless
suggested that in the case of documents offered to be produced during
discovery, including cross-examination discovery pursuant to
Sec. 1.687(b), the documents be produced in the foreign language, with
the recipient then indicating which documents it wishes to have
translated and costs to be borne equally by the parties. The suggestion
is not being adopted. In implementing practice under 35 U.S.C. 104, as
amended, it is PTO's initial view that a correct policy is the one
which the commentator says is the ``general practice.'' Whether a
different policy might be appropriate at some future time is something
that will be tested with experience.
II. Compensatory Attorney Fees and Expenses
Section 1.616, in addition to the amendments discussed above, also
is revised 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).
Section 1.616(a)(5), as amended, authorizes the award of
compensatory (as opposed to punitive) expenses and/or compensatory
attorney fees as a sanction for failing to comply with the rules or an
order. This sanction shall apply only to conduct occurring in an
interference on or after the effective date of Sec. 1.616 as amended.
It is believed that there may be occasions when an award of
compensatory expenses and/or compensatory attorney fees would be more
commensurate in scope with the infraction than the sanctions that are
currently authorized.
There are administrative decisions which seemingly hold that the
tribunals of PTO do not have authority to award expenses and attorney
fees. See, e.g., Driscoll v. Cebalo, 5 USPQ2d 1477, 1481 (Bd. Pat. Int.
1982) (the rules do not provide us with the jurisdiction to award
expenses and we know of no authority which does), aff'd in part, rev'd
in part, 731 F.2d 878, 221 USPQ 745 (Fed. Cir. 1984); Clevenger v.
Martin, 1 USPQ2d 1793, 1797 (Bd. Pat. App. & Int. 1986) (we do not have
authority under the rules to award attorney's fees); MacMillan Bloedel,
Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (the TTAB is
without authority to award expenses and attorney's fees); Fisons, Ltd.
v. Capability Brown, Ltd., 209 USPQ 167, 171 (TTAB 1980) (request for
attorney's fees denied because good cause not shown and the TTAB has no
authority to grant such requests); Jonergin Co. v. Jonergin Vermont,
Inc., 222 USPQ 337, 340-41 (Comm'r Pat. 1983) (TTAB did not err in
refusing to award reasonable expenses and attorney's fees under 37 CFR
2.116(a), 2.120 and Fed. R. Civ. P. 37(a)(4)); Anheuser-Busch, Inc. v.
Major Mud & Chemical Co., 221 USPQ 1191, 1195 n.9 (TTAB 1984) (request
for costs and attorneys fees was denied, inter alia, on the ground that
the TTAB had no authority to award such fees and costs); Luehrmann v.
Kwik Kopy Corp., 2 USPQ2d 1303, 1305 n.4 (TTAB 1987) (the TTAB has no
authority to grant monetary relief); Fort Howard Paper Co. v. G.V.
Gambina, Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (the TTAB has no
authority to order costs or attorney's fees); Paolo's Associates Ltd.
Partnership v. Bodo, 21 USPQ2d 1899, 1904 n.3 (Comm'r Pat. 1990) (the
TTAB was correct in holding that 37 CFR 2.127(f) denies the TTAB
authority to either award attorney's fees or costs to any party in a
cancellation and opposition proceeding); Nabisco Brands, Inc. v.
Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993) (the TTAB held, inter
alia, that it did not have authority to award fees under 37 CFR
2.127(f)).
None of the decisions mentioned above provide any reasoned analysis
or rationale to explain why the Commissioner lacks authority to
promulgate a rule which would authorize imposition of monetary
sanctions in appropriate cases. In view of the existence of the
decisions, however, it is believed that a discussion of the
Commissioner's authority to promulgate a rule authorizing the Board to
award compensatory monetary sanctions is appropriate.
The Commissioner has been delegated the authority by the Congress
to ``establish regulations, not inconsistent with law, for the conduct
of proceedings in the Patent and Trademark Office.'' 35 U.S.C. 6(a).
The U.S. Court of Appeals for the Federal Circuit upheld the
authority of the Commissioner to issue regulations imposing sanctions
in interference cases. In Gerritsen v. Shirai, 979 F.2d 1524, 24 USPQ2d
1912 (Fed. Cir. 1992), the Federal Circuit noted that 37 CFR 1.616 was
a permissible exercise of the Commissioner's authority under 35 U.S.C.
6(a) and complied with the limitation on sanctions of the
[[Page 14495]] Administrative Procedure Act. The court stated (979 F.2d
at 1527 n.3, 24 USPQ2d at 1915 n.3):
35 U.S.C. Sec. 6(a) (1988) permits the Commissioner of Patents
and Trademarks to ``establish regulations, not inconsistent with
law, for the conduct of proceedings in the Patent and Trademark
Office.'' Congress thus delegated plenary authority over PTO
practice, including interference proceedings, to the Commissioner.
On its face, 37 CFR Sec. 1.616 represents a permissible exercise of
that authority. Since the decision to impose a sanction * * * was
authorized by law, it comports with the Administrative Procedure
Act, 5 U.S.C. Sec. 558(b) (1988).
In Gerritsen, the Federal Circuit held that the particular rule
violation was sanctionable, but that the specific sanction chosen by
the Board was too severe. Accordingly, the sanction was vacated and the
case was remanded to the Board for imposition of a more appropriate
sanction.
In Abrutyn v. Giovanniello, 15 F.3d 1048, 1050, 29 USPQ2d 1615,
1617 (Fed. Cir. 1994), the Federal Circuit again upheld the authority
of the Board or an administrative patent judge to impose sanctions,
including imposition of the most severe sanction, granting judgment
against one of the parties:
The Board or EIC [Examiner-in-Chief, now administrative patent
judge] may impose an appropriate sanction, including granting
judgment in an interference, against a party who fails to comply
with the rules governing interferences, including filing deadlines.
37 CFR Sec. 1.616 (1993).
Gerritsen and Abrutyn judicially establish that the Commissioner
has authority under 35 U.S.C. 6(a) to promulgate regulations which
impose a spectrum of sanctions, including imposition of the ultimate
sanction of judgment or dismissal.
As a general matter, agencies are given broad authority in the
selection of an appropriate sanction. The choice of sanction within
agency statutory limits will be upheld unless it constitutes an abuse
of discretion. Butz v. Glover Livestock Comm'n Co., 411 U.S. 182
(1973); Lawrence v. Commodity Futures Trading Comm'n, 759 F.2d 767, 774
(9th Cir. 1985). Current Sec. 1.616 authorizes an administrative patent
judge or the Board to impose a spectrum of sanctions. The sanctions
range from holding certain facts established for purposes of the
interference (37 CFR Sec. 1.616 (a)) to granting judgment against the
party who violated a regulation or an order (37 CFR Sec. 1.616(e)). As
indicated above, the Federal Circuit has upheld the Commissioner's
authority to promulgate Sec. 1.616 and impose the specified sanctions
(Gerritsen, 979 F.2d at 1527 n.3, 24 USPQ2d at 1915 n.3), including
granting judgment against a party (Abrutyn, 15 F.3d at 1050, 29 USPQ2d
at 1617). Judgment and dismissal are the most severe forms of sanction.
See National Hockey League v. Metropolitan Hockey Club, 427 U.S. 639,
643 (1976); Poulis v. State Farm Fire and Casualty Co., 747 F.2d 863,
867 (3d Cir. 1984); Cine Forty-Second St. Theatre Corp v. Allied
Artists Pictures Corp., 602 F.2d 1062, 1066 (2d Cir. 1979). Consistent
with these cases, the Federal Circuit has held that a holding by the
Board that a party is not entitled to a patent directed to certain
claims is an extreme sanction. Gerritsen, 979 F.2d at 1532 n.12, 24
USPQ2d at 1919 n.12.
The imposition of monetary sanctions is manifestly a lesser
sanction than judgment or dismissal. Indeed, reimbursement of expenses
incurred as a result of inappropriate action by the opposing party has
been held to be a mild form of sanction. Cine Forty-Second St., 602
F.2d at 1066. More stringent sanctions include orders striking out
portions of a pleading, orders prohibiting the introduction of evidence
on a particular point, and orders deeming a disputed issue determined
adversely to the position of a disobedient party. Id.
Since the imposition of a monetary sanction is a lesser sanction
than judgment against a party, the inclusion of an ``appropriate''
monetary sanction in Sec. 1.616, as adopted, is not outside the
Commissioner's rulemaking authority and would not be inconsistent with
the sanctions already present in Sec. 1.616.
Whether a monetary sanction is appropriate depends on the purpose
of the sanction. Civil sanctions may be categorized as penal and
remedial. One is not to be subjected by an agency to a penal sanction
unless the words of the statute plainly authorize imposition of a penal
sanction. Commissioner v. Acker, 361 U.S. 87, 91 (1959). Thus, a
statute must plainly authorize an agency's power to impose penalties.
Pender Peanut Corp. v. United States, 20 Civil Court 447, 453-55
(1990). Agencies have no inherent authority, based solely on their
enabling statute, to impose penal sanctions. That authority must be
expressly given in the statute. Pender Peanut Corp., 20 Cl. Ct. at 453-
55 (1990); Gold Kist, Inc. v. Department of Agriculture, 741 F. 2d 344,
348 (11th Cir. 1984); Koch, Administrative Law and Practice Sec. 6.81
(1985). A penal sanction has been defined as one which inflicts a
punishment. United States v. Frame, 885 F.2d 1119, 1142 (3d Cir. 1989).
On the other hand, an explicit grant of power from Congress need
not underpin each exercise of agency authority. See Zola v. Interstate
Commerce Commission, 889 F.2d 508, 516 (3d Cir. 1989), citing Amoskeag
Co. v. Interstate Commerce Commission, 590 F.2d 388, 392 (1st Cir.
1979). Where the enabling statute authorizes the agency to make such
rules and regulations as may be necessary to carry out the provisions
of an act--the regulation will be sustained so long as it is reasonably
related to the purpose of the act. Mourning v. Family Publications
Service, Inc., 411 U.S. 356, 369 (1973). Under its enabling
legislation, an agency has inherent power to impose administrative
sanctions that are not ``penalties'' as long as the sanctions are
reasonably related to the purpose of the enabling statute. Gold Kist,
741 F.2d at 348. Accordingly, in evaluating whether the imposition of a
sanction is within an agency's inherent powers, it is necessary to
determine whether the sanction is remedial or punitive. Frame, 885 F.2d
at 1142. Remedial sanctions may be within the agency's inherent powers
if reasonably related to the purpose of enabling legislation. A
remedial sanction is one whose purpose is not to stigmatize or punish
wrongdoers. Frame, 885 F.2d at 1143.
Thus, in the absence of express statutory authority, the
Commissioner's authority to impose monetary sanctions is limited to
sanctions which are remedial in nature rather than punitive. In
addition, the sanctions must be reasonably related to the purpose of
enabling statute under which PTO operates. Under these guidelines, the
Commissioner would appear to be without authority to issue a regulation
which permits a penal sanction to be imposed against a party or an
attorney for violation of a rule or order. Fines payable to Government,
including PTO, are manifestly intended to punish wrongdoing and are
thus punitive in nature. Assessment to redress an injury to the public
is in the nature of a penalty. Republic Steel Corp. v. National Labor
Relations Board, 311 U.S. 7, 12-13 (1940). On the other hand, the
imposition of costs or expenses, including attorneys' fees, incurred by
an opposing party due to the violation of a rule or order, may properly
be considered remedial. Imposing costs or attorneys' fees serves to
defray the expenses actually incurred by the opposing party for the
violation of a rule or order by an opponent. See Poulis, 747 F.2d at
869 (non-dilatory party will not have to bear the brunt of the
attorney's delay). Monetary sanctions would enhance the Board's ability
to protect the integrity of its proceedings. See Zola, 889 F.2d at 516
(ICC justified in [[Page 14496]] imposing monetary sanctions in acting
to protect the integrity of its jurisdiction). Monetary sanctions would
also allow the Board to maintain control of its docket to maximize the
use of limited resources. See Griffin & Dickson v. United States, 16
Cl. Ct. 347, 351 (1989) (case management responsibilities require broad
inherent authority to impose [non-penal] sanctions). Imposition of
monetary sanctions is the only sanction both mild enough and flexible
enough to use in day-to-day enforcement of orderly and expeditious
litigation. Eash v. Riggins Trucking, Inc., 757 F.2d 557, 567, (3d Cir.
1985) (in banc). Thus, monetary sanctions are reasonably related to the
Commissioner's plenary authority to promulgate regulations for the
conduct of proceedings, including interference proceedings in PTO.
Section 1.616(b), as proposed to be amended, would have authorized
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. A number of comments were received
opposing the authorization of sanctions for taking or maintaining
frivolous positions (Sec. 1.616(b)). Several comments suggested that
the question of what is ``frivolous'' is inherently highly subjective
and will therefore be frequently raised, substantially increasing costs
and delaying decisions on more substantive issues. PTO believes,
however, consistent with other comments received during the comment
period, that inasmuch as a groundless motion for sanctions would itself
be grounds for sanctioning the movant for taking or maintaining a
frivolous positions, it is expected that motions for sanctions will
only be filed in clear cases. One comment suggested that Sec. 1.616(b)
be reworded to parallel Rule 11 of the Federal Rules of Civil Procedure
so that sanctions would only be imposed upon motion by an opponent,
subject to a twenty-one day ``safe harbor'' withdrawal provision, and
would explicitly apply only to frivolous positions taken in writing.
Another comment, while supportive of the proposed amendment on the
ground that it should reduce the number of frivolous papers, cautioned
against treating as frivolous ``that which is simply born of
ignorance.'' The suggestion to have Sec. 1.616(b) authorize sanctions
imposed only on motion by a party is not being adopted. There may be
situations in which the Board believes it would be appropriate to award
compensatory fees or expenses even in the absence of a motion by a
party. The suggestion that Fed. R. Civ. P. 11 permits sanctions only
upon motion is believed to be incorrect; for example, Fed. R. Civ. P.
11(c)(1)(b) authorizes sanctions on the court's initiative. The
suggestion to use the ``safe harbor'' approach of Fed. R. Civ. P.
11(c)(1)(A), which provides that a motion for sanctions shall be served
but not filed unless, within 21 days after service of the motion, the
challenged position is not withdrawn or appropriately corrected, is not
being adopted. The administrative patent judge and the Board should
know the reason why a party has withdrawn or corrected a position.
Nevertheless, in order to make it clear that sanctions will not be
imposed for mistakenly taking an erroneous position that is withdrawn
or corrected as soon as the error becomes apparent, the proposed phrase
``for taking or maintaining a frivolous position'' in changed to ``for
taking and maintaining a frivolous position.''
The suggestion that Sec. 1.616(b) sanctions be limited to frivolous
positions taken in writing is based on the Advisory Committee Note on
the 1993 amendments to Fed. R. Civ. P. 11. The Note states in pertinent
part: ``The rule applies only to assertions contained in papers filed
with or submitted to the court. It does not cover matters arising for
the first time during oral presentations to the court, when counsel may
make statements that would not have been made if there had been made if
there had been more time for study and reflection.'' For the reason
given in the Advisory Committee Note, the suggestion is being adopted.
Accordingly, Sec. 1.616(b) as adopted is limited to a frivolous
position taken and maintained in papers filed in the interference and
shall apply only to frivolous positions taken and maintained after the
effective date of Sec. 1.616 as amended.
Other comments questioned how the Board intends to handle proof of
amounts of compensatory expenses and/or attorney fees and expressed the
hope that attorney fee awards will not be de facto discriminatory as
between highly paid outside counsel and in-house counsel without fees
or billing records. The matter of how to prove amounts of compensatory
expenses and/or attorney fees will be handled on a case-by-case basis.
Another comment suggested that an administrative patent judge or
the Board be required to issue an order to show cause prior to imposing
a sanction, since a party may be able to explain why a sanction should
not be imposed. The suggestion is presumably based on Fed. R. Civ. P.
11(c)(1)(B) and directed to cases in which an administrative patent
judge or the Board on its own initiative determines that a sanction is
appropriate. The suggestion is being adopted and implemented in a new
paragraph, Sec. 1.616(d). In addition, paragraph (d) expressly provides
that a party may file a motion (Sec. 1.635) requesting the imposition
of sanctions, the drawing of adverse inferences or other action under
paragraph (a), (b) or (c) of Sec. 1.616.
III. Certificates of Prior Consultation
Section 1.637(b) 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. In the Notice of Proposed
Rulemaking, it was proposed to amend paragraph (b) to extend the
requirement for such a certificate to preliminary motions filed under
Sec. 1.633 and other motions filed under Sec. 1.634. It also was
proposed 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 rationale offered in the Notice of Proposed Rulemaking for the
amendment was an expectation that consultation would result in a
reduction in the number of issues raised by motions under Secs. 1.633-
34, as well as a reduction in the number of motions filed under those
rules. All but one of many comments received in response to the
proposal urged that the proposed rule not be adopted. In support, it
was said that the proposed rule would unnecessarily increase the time
and costs required to file motions under Secs. 1.633-34, particularly
preliminary motions. PTO, upon reflection, agrees with the comments.
Accordingly, the proposal to extend the consultation requirement of
Sec. 1.637(b) to Secs. 1.633-34 motions is withdrawn. The withdrawal of
the proposed rule, however, should not be interpreted as precluding an
administrative patent judge from holding a conference call prior to the
date preliminary motions are due for the purpose of discussing which
preliminary motions the parties plan to file or from entering an order
requiring prior consultation as to a particular motion.
Several comments, citing experience with the consultation
requirement for Sec. 1.635 motions, suggested that
[[Page 14497]] Sec. 1.637(b) be dropped altogether, or be limited at
most to motions requesting extensions of time. The suggestion is not
being adopted. However, there are circumstances where it may be
appropriate to suspend the requirements of Sec. 1.637(b). An example is
a multi-party interference where one party may need to consult with a
large number of opponents. Another example is a motion filed after a
hearing before an administrative patent judge, where filing of the
motion was authorized at the hearing. Accordingly, while the suggestion
to delete the requirement for consultation altogether is not being
adopted, the language ``Unless otherwise ordered by an administrative
patent judge or the Board'' is added at the beginning of the first
sentence of Sec. 1.637(b).
Several comments were received which were also critical of the
proposal to amend Sec. 1.637(b), even if applied only to Sec. 1.635
motions, to require that the certificate ``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,
identify the issues and/or facts believed to be in dispute.'' One
comment suggested that the proposal is unworkably vague with respect
to: (1) the form of the information a party must provide to the
opponent (e.g., a draft motion, an outline of the motion, a verbal
statement of the motion, the evidence in support of the motion); (2)
what form the opponent must use to provide its reasons for opposing
(i.e., written or oral); and (3) whether the moving party can change
the arguments in the motion in response to the reasons given by the
opposing party without the need for another consultation. Other
comments noted that an opponent may not have sufficient time before the
due date for motions in which to take a reasoned position on the
motion. Another comment observed that it is very difficult for the
movant to identify the issues or facts believed to be in dispute,
unless it is a very cursory exercise. According to the comment, the
party cannot know what the opponent is really thinking, and suggested
instead that there be an in-person conference involving the parties and
the administrative patent judge in order to discuss all intended (or
filed) motions. The comments are believed to be well taken and the
proposal in the Notice of Proposed Rulemaking to amend Sec. 1.637(b) to
require that the motion, ``if an opponent has indicated that it will
oppose the motion, identify the issues and/or facts believed to be in
dispute'' is withdrawn.
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 Laws 103-182
and 103-465,'' Secs. 1.672, 1.682, 1.683 and 1.688 are amended, as
proposed (with a few minor modifications discussed infra), 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.
As noted above, the Notice of Proposed Rulemaking proposed to amend
paragraph (b) of Sec. 1.672 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 (and
serve) the affidavit, whether it is a new affidavit or an affidavit
previously filed by that party during ex parte prosecution of an
application or under Sec. 1.608 or 1.639(b). Furthermore, in view of
the proposed amendment to Sec. 1.672(b), it was also proposed to remove
and reserve, as superfluous, Sec. 1.671(e), 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). An oral comment suggested that Sec. 1.671(e)
notice practice be retained with respect to Sec. 1.639(b) affidavits,
so that a party does not have to refile (and re-serve) a previously
submitted Sec. 1.639(b) affidavit on which it intends to rely at final
hearing. The comment further suggested that for the same reason
Sec. 1.671(e) notice practice should be extended to patents and printed
publications filed and served pursuant to Sec. 1.639(b). The
suggestions are being adopted. Section 1.671(e) thus revised reads as
follows:
(e) A party may not rely on an affidavit (including any
exhibits), patent or printed publication previously submitted by the
party under Sec. 1.639(b) unless a copy of the affidavit, patent or
printed publication has been served and a written notice is filed
prior to the close of the party's relevant testimony period stating
that the party intends to rely on the affidavit, patent or printed
publication. When proper notice is given under this paragraph, the
affidavit, patent or printed publication shall be deemed as filed
under Sec. 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a), as
appropriate.
Furthermore, in order to ensure that the evidence submitted under
Sec. 1.639(b) includes sequential numbering of the type required of
other evidence filed under Sec. 1.672(b), Sec. 1.639(b) is revised to
require the use of sequential numbering, which, for the reasons
discussed infra, is required to be used only to the extent possible.
As explained supra, in view of the retention of Sec. 1.671(e) in
amended form, Sec. 1.672(b), as adopted, permits a party to file an
affidavit or, if appropriate, a notice under Sec. 1.671(e).
Sections 1.682, 1.683 and 1.688 are revised, substantially as
proposed, to parallel the amendments to Sec. 1.672. Section 1.682(a) as
proposed to be amended provides 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 on
oral deposition of a witness, by filing (and serving) a copy of the
official record or publication no later than the time set for filing
affidavits under Sec. 1.672(b), thereby eliminating the current
requirement for filing a notice of intent to rely on the official
record or printed publication. In view of the retention of
Sec. 1.671(e) in amended form to permit a party to file a notice of
intent to rely on patents and publications previously filed by the
party under Sec. 1.639(b), Sec. 1.682(a), as adopted, permits a party
to file a copy of an official record or printed publication or, if
appropriate, a notice under Sec. 1.671(e). Section 1.683(a) is amended,
as proposed, to 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 (and 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 eliminating the current requirement for a
party for filing a motion under Sec. 1.635 for leave to rely on such
testimony. Section 1.688(a) is amended, as proposed, to 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 (and
served) or noticed under Sec. 1.671(e) 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 (and
served) or noticed under Sec. 1.671(e) no later than the date set for
the party to serve [[Page 14498]] affidavits under Sec. 1.672(b) for
its case-in-rebuttal.
The Notice of Proposed Rulemaking proposed that the pages of all
affidavits and deposition transcripts that a party enters into evidence
pursuant to Secs. 1.672, 1.682, 1.683 and 1.688 shall include
sequential page numbers, which shall also serve as the record page
numbers for the affidavits and deposition transcripts in the party's
record when it is filed under Sec. 1.653. Likewise, the Notice of
Proposed Rulemaking proposed that exhibits identified in the affidavits
and deposition transcripts and any official records and printed
publications served under Sec. 1.682(a) shall be given sequential
numbers, which shall serve as the exhibit numbers when the exhibits are
filed under Sec. 1.653(i) with the party's record. The major benefit of
sequential page numbering is that a particular page of an affidavit or
exhibit will be referred to in a consistent manner throughout the
record. Thus, when an affiant is subject to cross-examination about the
affiant's affidavit or another person's affidavit, the record will be
clear as to the material which is the subject of the cross-examination.
Correlation of pages of affidavits and/or exhibits will no longer be
necessary.
Regarding the sequential numbering of affidavits, one comment noted
that:
While this might be of some minor convenience to the PTO, it is
inconvenient for the public, and may be difficult to be accomplished
in practice. Due to severe PTO time constraints in preparing
affidavits, it is usually essential to amend, add to, rewrite and
execute declarations and affidavits in parallel. Often, the
declarants are in different physical locations. Modern offices do
not have the old fashioned manual impact typewriters that would be
required to superpose new page numbers on executed documents.
Declarations are already clearly identifiable, by the name of the
declarant and the page of his or her declaration. * * *
The comment apparently assumes, incorrectly, that the required
sequential numbers are to be used in lieu of the usual page numbers
that appear in affidavits and deposition transcripts. The sequential
numbers are in addition to the usual page numbers and are typically
added to the pages by a sequential numbering device (e.g., a ``Bates''
stamp).
Since a party may decide not to rely at final hearing on a
previously filed Sec. 1.639(b) affidavit (including any exhibits), or
on patents and printed publications that it previously filed under
Sec. 1.639(b) in connection with a motion, there may be gaps in the
sequential numbers of the affidavit pages and exhibits that are relied
on at final hearing. Compare, e.g., Federal Circuit Rule 30(c)(2) with
respect to pages omitted from an appendix. Furthermore, due to
circumstances beyond the party's control it may not be possible to
submit the Sec. 1.639(b) affidavits and accompanying exhibits into
evidence in the proper order. Finally, the exhibits referred to in
testimony under Sec. 1.683 from another proceeding will obviously
already have the exhibit numbers assigned to them in that proceeding.
When possible, those planning to use exhibits and testimony from a
previous interference may wish to avoid using an exhibit number used in
the previous interference, thereby minimizing the possibility of
confusion which can exist when two exhibits in the same record have the
same exhibit number. For these reasons, the proposal to amend
Sec. 1.672 to require that testimony pages and exhibits ``shall be
given sequential numbers'' is changed to a requirement that testimony
and exhibits ``shall be given sequential numbers to the extent
possible.'' This change also applies to evidence submitted under
Secs. 1.682, 1.683 and 1.688 as amended, which state that the pages of
affidavits and deposition transcripts served under those paragraphs and
any new exhibits served therewith shall be assigned sequential numbers
by the party in the manner set forth in Sec. 1.672(b). In order to take
into account that there may be gaps in page numbers in the record and
in the exhibit numbers, Sec. 1.653(d) is revised to state that the
pages of the record shall be consecutively numbered ``to the extent
possible.'' Sections 1.677 (a) and (b) are revised in a similar manner.
That is, paragraph (a) is revised to limit its requirement for
consecutive page numbering, which the rule currently applies to ``the
entire record of each party,'' to the pages of each transcript.
Paragraph (b) is revised to require that exhibits be numbered
consecutively ``to the extent possible.''
Section 1.672(a) affidavits and Sec. 1.683(a) testimony shall 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
shall 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) must 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 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) will 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 one or more 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 or printed publications. No objection to the
admissibility of supplemental evidence shall be made except as provided
by Sec. 1.656(h). A party submitting evidence in response to an
objection is aware of the objection and should take whatever steps are
necessary in presenting supplemental evidence to overcome the
objection. Whether the steps were sufficient is determined at final
hearing on the basis of a motion to suppress the evidence under
Sec. 1.656(h).
The pages of the supplemental affidavits shall 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), if
possible. Likewise, any additional exhibits identified in the
supplemental affidavits and any supplemental official records and
printed publications shall be given sequential numbers beginning with
the number following the last number of the previously identified
exhibits, if possible. After the time expires for filing objections and
supplemental affidavits, or earlier when appropriate, the
administrative patent judge shall 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.
Ordinarily, the parties should be able to agree on a ``reasonable''
place within the United States. Whether a place is a reasonable place
depends on the circumstances. Generally a reasonable place within the
United States would be the place where a witness resides or the office
of one of the counsel of record in the interference. In assessing the
reasonableness of a place, the convenience of both parties should be
considered. For example, in a two-party interference if an affiant
normally resides in Ohio and counsel [[Page 14499]] are located
respectively in Illinois and New York, noticing a deposition for
Arizona may not be reasonable. In the event agreement cannot be
reached, a place will be set by the administrative patent judge for
taking the deposition.
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 revised to change the time for filing
certified transcripts from 45 days to one month), the party shall 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 shall be
sequentially numbered in the manner discussed above. The deposition
transcripts shall 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).
In the first sentence of Sec. 1.688(a), the comma proposed to be
inserted after ``evidence'' is inserted instead after ``admissible.''
V. Miscellaneous Amendments
Although not proposed in the Notice of Proposed Rulemaking, the
authority citation for 37 CFR part 1 is revised by changing it from
``35 U.S.C. 6'' to ``35 U.S.C. 6 and 23.''
Throughout the rules, the term ``examiner-in-chief'' is replaced by
``administrative patent judge'' to reflect the change in the title of
the members of the Board. See Commissioner's Notice of October 15,
1993, ``New Title for Examiners-in-Chief,'' 1156 Off. Gaz. Pat. Office
332 (Nov. 9, 1993). One comment correctly noted that the Notice of
Proposed Rulemaking failed to apply the change to Sec. 1.610(b). The
omission has been corrected. Another comment, citing possible confusion
over the meaning of the term ``administrative patent judge,'' suggested
adding one of the following provisions to Sec. 1.601 to define
``administrative patent judge'' in either of the following ways:
An administrative patent judge is a member of the Board of
Patent Appeals and Interferences, or
An administrative patent judge is an examiner-in-chief (35
U.S.C. 7) or the Commissioner, the Deputy Commissioner or, an
Assistant Commissioner when acting as a member of the Board of
Patent Appeals and Interferences.
Neither suggestion is being adopted. The members of the Board of Patent
Appeals and Interferences are the Commissioner [Assistant Secretary and
Commissioner of Patents and Trademarks], the Deputy Commissioner
[Deputy Assistant Secretary and Deputy Commissioner of Patents and
Trademarks] and the Assistant Commissioners [the Assistant Commissioner
for Patents and the Assistant Commissioner for Trademarks], and the
examiners-in-chief, now administrative patent judges, including the
Chief Administrative Patent Judge and the Vice-Chief Administrative
Patent Judge, 35 U.S.C. 7(a). While the rules talk in terms of
administrative patent judge, it must be recognized that any member of
the Board, including a Commissioner-member, may take action in an
interference which can be taken by an administrative patent judge.
Section 1.11(e) is revised to allow access to the file of 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).
Section 1.192(a), which specifies the contents of the brief of an
appellant for final hearing in an ex parte appeal, is revised to state
that arguments or authorities not included in the brief will be refused
consideration by the Board unless good cause is shown. The rule
previously stated that such arguments and authorities may be refused
consideration by the Board, without specifying how the Board decides
whether or not it should be considered. One comment suggested that the
amendment, if adopted, would make PTO less ``user friendly'' and would
increase the burden of mere technicalities on applicants. It is
believed that the comment misapprehends the nature of the proposed
change, inasmuch as the change would merely codify the ``good cause''
standard that is currently applied by the Board in determining whether
a new argument or authority will be considered.
Section 1.192(c) is revised in several respects. A first amendment
simplifies the language used in the rule to refer to a brief filed by
an applicant who is not represented by a registered practitioner. A
second amendment removes from paragraph (c) the requirement that such a
brief be in substantial compliance with the requirements of paragraphs
(c) (1), (2), (6) and (7). Experience has shown that it is better to
evaluate pro se briefs on a case-by-case basis. Section 1.192(c) is
also revised 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). The added paragraphs (c)(1) and (c)(2) require an appellant who
has filed an appeal to the Board to identify the real party in interest
and any related appeals and interferences. It is necessary to know the
identity of the real party in interest so that members of the Board can
comply with applicable ethics regulations associated with working on
matters in which the member has an interest. The requirements to
identify related appeals and interferences is derived in part from
Federal Circuit Rule 47.5 and will minimize the chance that the Board
will enter inconsistent decisions in related cases.
One comment suggested that the term ``real party in interest'' be
replaced by ``owner'' in order to avoid confusion with the term ``party
in interest of record,'' which appears in PTO's Notice of Allowance and
Issue Fee Due (PTO-850). The suggestion is not being adopted, since it
appears unlikely that any confusion will occur.
A comment on behalf of a large U.S. corporation having extensive
overseas operations noted that the proposed requirement to identify the
real party in interest will impose a substantial burden in appeals to
the Board where the real party in interest is a corporation with
international operations and many diverse and frequently changing
affiliates. The comment was accompanied by a copy of a ``Certificate of
Interest'' previously filed by the corporation in an appeal to the
Federal Circuit, which named some three hundred subsidiaries and
affiliates in which the corporation had an ownership interest of five
percent or more. According to the comment, if ownership interests of
less than five percent had been included, the list would have been
about twice as long. The comment explained that because the
corporation's business interests worldwide are frequently changing, the
list would require updating for each and every appeal brief, and
questioned whether this burden is justified. Upon consideration of the
comment, it is [[Page 14500]] believed, at this particular time, that
the proposed rule would be burdensome on the public. Whether in the
future more information might be required to the nature of a real party
in interest is a matter which can await experience under a rule which
requires identification only of the real party in interest.
Accordingly, the suggestion is being adopted to the extent of requiring
appellants to the Board to identify only the real party in interest. In
this respect, Sec. 1.192(c)(1) will parallel an equivalent requirement
for briefs in inter partes cases. See Sec. 1.656(b)(1)(ii), as amended.
One comment suggested revising proposed Sec. 1.192(c)(9), which
calls for an appendix including the claims on appeal, to include a
statement that the rule sets forth the minimum requirements for a
brief. According to the comment, the statement would make it clear that
Sec. 1.192 does not prohibit inclusion of other materials which an
appellant may consider necessary or desirable, a point which the
comment noted is explained in the Manual of Patent Examining Procedure
Sec. 1206, at 1200-6. The suggestion is not being adopted, since it is
believed to be apparent from the rule that the requirements set forth
therein are the minimum requirements.
Section 1.192 as proposed to be amended in the Notice of Proposed
Rulemaking includes an amendment to current paragraph (a)(5)
(``Grouping of claims''), proposed to be redesignated as paragraph
(a)(7), that inadvertently was not discussed in the commentary in the
Notice of Proposed Rulemaking. Specifically, it was proposed to amend
that paragraph to state that for each ground of rejection which an
appellant contests and which applies to more than one claim, the
rejected claims shall stand or fall together with the broadest claim,
and that only the broadest claim would be considered by the Board of
Patent Appeals and Interferences unless a statement is included that
the rejected claims do not stand or fall together and, in the argument
under paragraph (c)(8), 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. One comment suggested that it is not always clear which is the
broadest claim, such as where there are two broad independent claims of
differing scope (e.g., claims to ABCDE and ABCDF). The comment
suggested that simply saying that the claims stand or fall together, as
the current rule does, is probably the best one can do on a generic
basis. The points raised by the comment are partly well taken.
Paragraph (c)(7), as adopted, therefore reads as follows:
Grouping of claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the
Board shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of that claim
alone unless a statement is included that the claims of the group do
not stand or fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the claims of the
group are believed to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as to why
the claims are separately patentable.
Where there is a ``broadest'' claim, that claim will normally be
selected. Where there are two broad claims, such as ABCDE and ABCDF, as
mentioned in the comment, the panel assigned to the case will select
which claim to consider. The same would be true in a case where there
are both broad method and apparatus claims. The rationale behind the
rule, as amended, is to make the appeal process as efficient as
possible. Thus, while the Board will consider each separately argued
claim, the work of the Board can be done in a more efficient manner by
selecting a single claim when the appellant does not meet the
conditions of paragraph (c)(7) of Sec. 1.192, as adopted. The choice of
whether each claim will be considered separately or whether all claims
will be considered on the basis of a single claim is a choice to be
made by the appellant.
The term ``subparagraph,'' which appeared in Secs. 1.192 (c)(7) and
(c)(8) in their originally proposed form, has been replaced by
``paragraph'' in those sections as amended.
Section 1.601 in general defines a number of terms used throughout
the interference rules. One comment noted that a consistent format is
not used throughout the definitions. For example, in Sec. 1.601(q) all
defined terms are italicized and in Sec. 1.601(n) the defined terms are
in quotation marks. The comment is well taken that there should be
uniformity. Accordingly, paragraphs (l), (m) and (n) are revised by
italicizing the first occurrence of each of the following defined
terms: ``junior party'', ``same patentable invention'' and ``separate
patentable invention.''
The Notice of Proposed Rulemaking proposed amending paragraph (f)
of Sec. 1.601 in a number of respects, including adding the following
sentence: ``A count should be broad enough to encompass the broadest
corresponding patentable claim of each of the parties.'' One comment
questioned whether the requirement is to be applied only at the time
the interference is declared or throughout the interference. The
comment notes that after an interference is declared, prior art may
come to light which renders unpatentable all of the parties' claims
that correspond to the count. The comment suggests that under these
circumstances, requiring a count to be patentable over the prior art
could mean that there might not be a proper count. According to the
comment, a result might be that the Board, whose authority to enter
judgments under the rules is limited to claims that correspond to a
count (Secs. 1.658 and 1.659), would be unable to enter judgment
against the claims on the ground of unpatentability. Furthermore, since
the Notice of Proposed Rulemaking was published, it has become apparent
that Sec. 1.601(f) could also be clarified in two other respects.
First, the count should be broad enough to encompass all of the
patentable claims that are designated as corresponding to the count, as
opposed to solely each party's broadest corresponding patentable claim,
i.e., where a party claims ABCDE in one claim and ABCDF in another
claim and both claims are designated to correspond to the count. The
current language of the rule can be argued to overlook the situation
where a party has specific claims but no generic claim. Second, it
should be made clear that the term ``patentable'' as used in
Sec. 1.601(f) in describing the scope of the count means patentable in
view of the prior art, as opposed to unpatentability based on non-prior
art grounds, e.g., the written description requirement of 35 U.S.C.
112, first paragraph. Accordingly, in lieu of the sentence proposed in
the Notice of Proposed Rulemaking, Sec. 1.601(f) is revised to include
the following sentence: ``At the time the interference is initially
declared, a count should be broad enough to encompass all of the claims
that are patentable over the prior art and designated to correspond to
the count.'' A similar change is made in Secs. 1.603 and 1.606. That
is, instead of revising these rules to require that each application
``must contain, or be amended to contain, at least one patentable claim
that corresponds to the count,'' as proposed in the Notice of Proposed
Rulemaking, these rules as amended require that each application ``must
contain, or be amended to contain, at least one claim that is
patentable over the prior art and corresponds to the count.''
The Notice of Proposed Rulemaking also proposed adding to
Sec. 1.601(f) a [[Page 14501]] sentence stating: ``A count may not be
so broad as to be unpatentable over the prior art.'' Several comments
questioned the meaning of the proposed sentence on the ground that a
count, unlike a claim, does not have an effective filing date for
purposes of establishing what is available against it as prior art. In
view of the comments, the proposal to add the sentence is hereby
withdrawn.
The Notice of Proposed Rulemaking proposed to amend the second
sentence of Sec. 1.601(f) by changing ``which corresponds'' to read
``that is designated to correspond.'' This proposal should have
referred instead to the third sentence, which is revised in the manner
proposed. It was also proposed to revise the fourth and fifth sentences
to read as follows, except that, for the reasons given above, the terms
``correspond exactly'' and ``correspond substantially'' are italicized
rather than set off by quotation marks:
A claim of a patent or application which is designated to
correspond to a count that 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 is not identical to a count
is said to correspond substantially to the count.
On oral comment suggested that these sentences could be made clearer by
revising them to read as follows:
A claim of a patent or application that is designated to
correspond to a count and is identical to the count is said to
correspond exactly to the count. A claim of a patent or application
that is designated to correspond to a count but is not identical to
the count is said to correspond substantially to the count.
This suggestion is being adopted.
As proposed in the Notice of Proposed Rulemaking, the fifth
sentence of Sec. 1.601(f) is revised by removing the phrase ``but which
defines the same patentable invention as the count,'' which is used to
describe a claim that corresponds to the count but is not identical to
the count. The phrase is superfluous because a claim that corresponds
to the count by definition is directed to the same patentable invention
as the count.
The Notice of Proposed Rulemaking proposed to revise the last
sentence of Sec. 1.601(f) to state that: ``A phantom count is
unpatentable to all parties under the written description requirement
of the first paragraph of 35 U.S.C. 112.'' One comment said that the
sentence as proposed to be revised is inaccurate supposedly because a
phantom count is not necessarily unpatentable to all parties for
lacking written description support. According to the comment, a party
may have written description support for a new claim identical to the
count, yet choose not to present such a claim during the interference
for tactical reasons, such as the desire to keep the count narrow
enough to prevent an opponent from presenting priority evidence it
might be able to produce with respect to a broader count. Another
comment suggested that a phantom count be defined as a count that is
``broader than the disclosure of any party to the interference.'' A
third comment suggested that patentability under the enablement and
best mode requirements be addressed along with patentability under the
written description requirement. Apart from the comments, since
patentability affects claims rather than counts, the proposal to amend
the last sentence of Sec. 1.601(f) is hereby withdrawn and the last
sentence in its current form is removed.
One comment suggested counts serve little, if any, purpose under
the new rules. The comment states that if PTO nevertheless feels
compelled by tradition to have counts, each count should be the
alternative union of all the parties' claims that are designated to
correspond to the same invention. The suggestion that counts be
abolished altogether, while superficially appearing to have
considerable merit, is believed to be outside the scope of the present
rulemaking and, for that reason, is not being adopted at this time. The
suggestion that a count be the alternative union of all of the parties'
claims that define the same patentable invention would not appear to
require any change in the rules. The formulation of the count, whether
by reference to particular claims in the parties' applications/patents
or by describing the subject matter of the interference, is a matter
within the discretion of PTO at this time.
The Notice of Proposed Rulemaking proposed amending Sec. 1.601(g).
Specifically, it was proposed to define the effective filing date of an
application as 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, and to
define the effective filing date of a patent 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 purpose of including the
reference to 35 U.S.C. 121 is to eliminate any doubt that a divisional
application may be entitled to an earlier filing date in accordance
with 35 U.S.C. 121.
One comment suggested that the definition of effective filing date
in Sec. 1.601(g) should be expressly keyed to the claims rather than to
the applications and patents, since different claims in the same
application or patent may have different effective filing dates. The
comment also suggested that the rules should be revised to make it
clear that a motion under Sec. 1.633(h) to add a reissue application
need not be accompanied by a motion under Sec. 1.633(f) for benefit of
the patent sought to be reissued. Another comment suggested that the
rule be revised to state that the effective filing date referred to in
Sec. 1.601(g) is the effective filing date of an application which
constitutes a constructive reduction to practice of the subject matter
of the count so as to make it clear that the rule is not referring to
the effective filing date of an involved claim. These comments
demonstrate that there is considerable uncertainty with respect to the
inter-relationship between benefit issues and priority proof issues,
including, among other issues, (a) benefit for a claim, (b) benefit for
a count, (c) constructive reductions to practice based on a species
disclosed in an earlier application (foreign or domestic) when claims
of the U.S. application are not supported under Sec. 119 in the
priority document (see In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614
(Fed. Cir. 1989) and In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA
1978), and compare to the so-called one species is sufficient for
priority ``rule''), and (d) the fact that under interference practice
since 1985, patentability is an issue which can be raised whereas prior
to 1985, priority was ``not ancillary'' and could not be raised. A
notice of proposed rulemaking will be issued in due course to address
the issue, as well as other issues raised in comments responding to the
current Notice of Proposed Rulemaking. A comment that the language of
the proposed amendment to Sec. 1.601(g) fails to take into account the
fact that a patent may be accorded benefit of the filing date of an
earlier foreign application during the interference is, however, well
taken. Accordingly, Sec. 1.601(g) is revised to make clear that a
patent may be entitled to benefit under 35 U.S.C. 119.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.601(j) is
revised by changing ``which'' to ``that.'' One comment suggested
changing ``that corresponds to a count'' to ``that is designated to
correspond to a count'' for clarity and consistency with the language
in Sec. 1.601(f). The suggestion is being adopted. [[Page 14502]]
In Sec. 1.601, paragraph (1) is revised, as proposed, by changing
``assignee'' to ``assignee of record in the Patent and Trademark
Office.''
Paragraph (q) of Sec. 1.601 is revised by deleting ``a panel of''
as superfluous.
Section 1.602 is revised by changing ``within 20 days of'' to
``within 20 days after.'' One comment suggested clarification of the
meaning of ``any right, title and interest,'' noting involvement in
several disputes over whether this includes a relationship such as a
non-exclusive license, and also questioned whether the rule requires a
party in a three-party interference to disclose that it is paying
another party's expenses or attorney fees. The suggestion, which is
outside the scope of the present rulemaking, is not being adopted at
this time. The suggestion will be made the subject of a future notice
of proposed rulemaking.
Sections 1.603 and 1.606 are revised, as proposed, 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) and by requiring that each application to be put into
interference contain, or be amended to contain, at least one claim
which is patentable over the prior art and which corresponds to each
count. The introductory language in each of these sections (``Before an
interference is declared * * *'') makes it clear that the patentability
requirement applies at the time that the interference is declared, as
opposed to at all times during the interference.
One comment suggested that Secs. 1.603 and 1.606 be further revised
to require the examiner to examine all of the prior art in all of the
potential parties' application and patent files in making a
patentability determination. The suggestion is not being adopted.
Ordinarily, the examiner determines that claims are patentable before
an interference is declared. While there may be no express statement,
consideration of whether claims are patentable in one application to be
placed in an interference normally would involve consideration of prior
art in a second application to be placed in the same interference.
In Sec. 1.604, paragraph (a)(1) is revised by changing ``his or
her'' to ``its.''
In Sec. 1.605, paragraph (a) is revised for clarification
essentially in the manner set forth in the Notice of Proposed
Rulemaking. Part of the last sentence of the rules, however, is revised
to require an applicant to ``explain why the other claims would be more
appropriate to be designated to correspond to a count in any
interference which may be declared.'' In responding to a request by an
examiner to copy a claim for purpose of a possible interference, an
applicant should present the exact claim requested by the examiner.
Often, however, an applicant may believe that the claim suggested by
the examiner is not appropriate. For example, an applicant may believe
it cannot support the exact claim requested by the examiner.
Accordingly, while the applicant must present the exact claim requested
by the examiner, the applicant is also free to suggest that the exact
claim is inappropriate, but that other claims proposed by the applicant
are more appropriate to be designated as corresponding to a count of
any possible interference. Obviously, the applicant is also free to
make a suggestion to the examiner as to what the count should be in any
interference. The examiner can then determine whether an applicant's
alternatively proposed claims are more appropriate than the exact claim
suggested.
One comment suggested that Sec. 1.605 further be revised ``to
include a reminder of the statutory prohibition against an interference
copying claims from a patent issued more than one year, (as Rule 607
already does for applicants), since some examiners have been doing it''
(original emphasis). The comment is understood to mean that examiners
have suggested that applicants copy patent claims in violation of 35
U.S.C. 135(b). The suggested reminder is not incorporated into the
rule, because it would not implement or interpret any requirement of
law, and, while plausibly legitimate, is better made in administrative
instructions, such as the Manual of Patent Examining Procedure.
Section 1.606 is also revised, as proposed, by adding a sentence
stating that the claim in the application need not be, and most often
will not be, identical to a claim in the patent.
One comment suggested that the last sentence of Sec. 1.606, which
the Notice of Proposed Rulemaking did not propose to revise, be revised
to apply to application claims as well as patent claims and that the
sentence be broken into two sentences for clarity, so as to read as
follows:
At the time an interference is initially declared (Sec. 1.611),
a count shall not be narrower in scope than (i) any application
claim designated to correspond to the count and indicated in the
form PTO-850 as allowable or (ii) any patent claim designated to
correspond to the count. Any single patent claim designated to
correspond to the count will be presumed, subject to a motion under
Sec. 1.633(c), not to contain separate patentable inventions.
The suggestion is being adopted; however, because it is inappropriate
to refer to a PTO form in a rule, the following language is used:
At the time an interference is initially declared (Sec. 1.611),
a count shall not be narrower in scope than any application claim
that is patentable over the prior art and designated to correspond
to the count. Any single patent claim designated to correspond to
the count or any patent claim designated to correspond to the count
will be presumed, subject to a motion under Sec. 1.633(c), not to
contain separate patentable inventions.
One comment questioned why the declaration of interferences under
Sec. 1.606 is limited to unexpired patents, suggesting that there are
rare cases where it would be very desirable to have an interference
between an application and either a patent that has expired or a patent
that has lapsed for failure to pay a maintenance fee. The enabling
statute, however, authorizes interferences involving patents which are
``unexpired.'' 35 U.S.C. 135(a).
In Sec. 1.607, paragraph (a)(4) is revised to change ``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 35 U.S.C. 135(b) before
an interference is declared should 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. One comment
suggested that requiring an applicant who has requested an interference
with a patent to demonstrate compliance with Sec. 135(b) is ultra
vires. The comment argues that In re Sasse, 629 F.2d 675, 207 USPQ 107
(CCPA 1980), precludes an examiner from relying on Sec. 135(b) to
refuse to declare an interference and that Sasse can only be overruled
by statute or decision of the Federal Circuit in banc, citing Chevron
U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837
(1984). The argument in the comment is not persuasive. Sasse held that
a claim added in violation of Sec. 135(b) cannot be rejected by PTO
under that statute; it did not hold that PTO cannot refuse to declare
an interference where all of an applicant's claims that are proposed to
correspond to the count fail to satisfy the statute. In fact, the court
specifically held that the effect of Sec. 135(b) is that ``a
[[Page 14503]] procedural statutory bar arises proscribing the
instigation of interferences after a specified time interval.'' 629
F.2d at 680, 207 USPQ at 110 (original emphasis).
In Sec. 1.608, paragraphs (a) and (b) are revised in several
respects, as proposed. First, both paragraphs are revised by removing
the information about effective filing dates, which appears instead in
Sec. 1.601(g), as amended. Second, the current requirement of paragraph
(a) for an affidavit filed by the applicant has been relaxed. Paragraph
(a), as amended, permits a statement to be filed by the applicant or a
practitioner of record. Third, ``sufficient cause'' in paragraph (b) of
Sec. 1.608 and in other interference rules is changed to ``good cause''
in order to make it clear that only one ``cause'' standard is intended.
Fourth, ``8\1/2\ x 11 inches (21.8 by 27.9 cm.)'' is changed to ``21.8
by 27.9 cm. (8\1/2\ x 11 inches)'' to put the emphasis on the metric
measurements. Fifth, the phrase ``(Sec. 1.653(g) and (h)'') is revised
to read ``(Sec. 1.653(g))'' in view of the removal and reservation of
Sec. 1.653(h).
One comment stated a belief that there may be some confusion
regarding the application of Sec. 1.608(b) when the basis upon which an
applicant is entitled to judgment is not priority of invention.
According to the comment, while Sec. 1.608(b) appears to include
derivation as a basis, it is uncertain whether it applies in a
situation where the applicant believes the patent claims are
unpatentable over prior art that does not also render unpatentable the
applicant's claims. The suggested change is not necessary. The
comment's statement that derivation (35 U.S.C. 102(f)) provides a basis
for a showing under Sec. 1.608(b) is correct. Section 1.608(b) requires
an applicant to explain why the applicant is entitled to judgment vis-
a-vis the patentee. As explained in the Notice of Final Rule, 49 FR
48416, 48421 (Dec. 12, 1984), ``[t]he evidence may relate to
patentability and need not be restricted to priority.'' Such evidence
could be, for example, evidence relating to derivation as noted by the
comment.
The Notice of Proposed Rulemaking proposed that Sec. 1.609(b)(2),
be revised to require the examiner's statement (i.e., currently 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. It was also proposed that
Sec. 1.609(b)(3) be revised to require the examiner's statement to
explain ``why each claim designated as not corresponding to a count is
not directed to the same patentable invention as the count.'' The
purpose of these amendments is to provide the Board and the parties
with the benefit of the examiner's reasoning and to provide a better
foundation for considering preliminary motions to designate claims as
corresponding or as not corresponding to a count.
Paragraph (b)(2) is revised essentially as proposed in the Notice
of Proposed Rulemaking. Upon further reflection, no need is seen for
the examiner to indicate whether a claim corresponds exactly or
substantially to a count.
One comment suggested that the proposed requirement of
Sec. 1.609(b)(3) may be unduly burdensome in multi-count interferences
if it requires an examiner to explain not only why an involved claim
corresponds to one count, but also why that claim does not correspond
to each other count. Another comment, apparently construing the
proposed language in the same way, suggested that the requirement could
be made clearer by modifying the proposed language to read, ``why each
claim designated as not corresponding to each (or the) count is not
directed to the same patentable invention as the count.'' To make it
clear that such a requirement is not intended, the proposed amendment
is withdrawn and paragraph (b)(3) is instead revised to read, ``why
each claim designated as not corresponding to any count is not directed
to the same patentable invention as any count.'' Under
Sec. 1.609(b)(3), as adopted, the examiner's statement need not explain
why a claim that is designated as corresponding to one count is not
directed to the same patentable invention as another count in the
interference.
One comment suggested that interferences involving patentees who
are incontestably junior could be shortened by amending the rules to
require a junior party patentee, prior to the preliminary motion
period, to make a prima facie case of priority of the type currently
required of junior party applicants by Sec. 1.608. The suggestion is
outside the scope of the present rulemaking and is not being adopted,
but may be considered in a future notice of proposed rulemaking.
One comment suggested that Secs. 1.609(b)(1) and 1.611(c)(6) also
be revised to require that the examiner and the declaration notice
explain, when there will be more than one count, why each count is
patentably distinct from the other counts. The suggestion is being
adopted.
Section 1.610(a) is revised by deleting the language ``a panel
consisting of at least three members of'' as superfluous and by
deleting the reference to Sec. 1.640(c), which is revised 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.
Section 1.610(b) is also revised by deleting ``Unless otherwise
provided in this section,'' as unnecessary in light of the amendment to
paragraph (a).
One comment suggested that Sec. 1.610(a) be revised to provide that
an interference is handled throughout, including final hearing, by a
single administrative patent judge, thereby avoiding the delays that
occur when an issue is deferred to final hearing for decision by a
three-member panel. The comment also suggested that Sec. 1.610(b) be
revised to provide that, at the discretion of the administrative patent
judge, a panel consisting of two or more administrative patent judges
may sit at final hearing (as well as deciding interlocutory orders).
The suggestions have not been adopted. First, the suggestions are
outside the scope of the present rulemaking. Second, the suggestions
could not be implemented without amendment of 35 U.S.C. 7(b), which
requires that an interference must be decided by at least three members
of the Board.
One comment suggested that the second sentence of Sec. 1.610(c)
(``Times for taking action shall be set, and the administrative patent
judge shall exercise control over the interference such that the
pendency of the interference before the Board does not normally exceed
two years.'') be removed as wishful thinking that only confuses
district court judges confronted with a motion to stay a civil action
pending the outcome of an interference. The suggestion is not being
adopted. The two-year period, while not always attainable, is
nevertheless believed to be realistic.
The Notice of Proposed Rulemaking proposed amending Sec. 1.611 by
redesignating paragraph (c)(8) as paragraph (c)(9) and adding a new
paragraph (c)(8) requiring that a notice of declaration of interference
state ``[w]hy 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.'' For the reasons given above
in the discussion of Sec. 1.609(b)(3), the proposed language is changed
to read, ``[t]he examiner's explanation as to why each claim designated
as corresponding to a count is directed to the same patentable
invention as the count and why each [[Page 14504]] claim designated as
not corresponding to any count is not directed to the same patentable
invention as any count.'' The examiner's explanation should assist the
parties in deciding whether to move to have claims designated as
corresponding or not corresponding to the count. Normally, parties can
expect that a copy of the examiner's explanation will accompany the
notice declaring the interference. It should be understood that in
declaring the interference, the administrative patent judge is neither
agreeing nor disagreeing with the examiner's explanation and that the
explanation is not binding on the administrative patent judge or the
Board in further proceedings in the interference. As proposed in the
Notice of Proposed Rulemaking, the first word in each of paragraphs
(d)(2) and (d)(3) is also capitalized.
One comment suggested deleting ``, oppositions to the motions, and
replies to the motions'' from Sec. 1.611(d)(3) as surplusage. The
suggestion is being adopted. In addition, paragraphs (d)(1), (d)(2) and
(d)(3) are revised to be separately indented under paragraph (d).
Paragraph (a) of Sec. 1.612 is revised 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. One
comment suggested amending Sec. 1.612(a) to provide for automatic
access to an application referred to in an opponent's involved case
rather than requiring a motion for access under Sec. 1.635, as under
the current rule. The suggestion, which is outside the scope of the
present rulemaking, is not being adopted.
Regarding Sec. 1.613, one comment suggested that paragraph (c) be
revised to give an administrative patent judge the authority to decide
disqualification questions rather than requiring such questions to be
referred to the Commissioner. Under current practice, the authority to
decide motions for disqualification of counsel in cases before the
Board of Patent Appeals and Interference has been delegated by the
Commissioner to the Chief Administrative Patent Judge.
Administratively, it is more appropriate that authority to decide
disqualification matters be capable of being delegated to specific
individuals rather than being assigned to administrative patent judges
generally through a rule. The comment also suggested that paragraph (d)
be revised to clarify whether ``attorney or agent of record'' includes
an attorney or agent who is merely ``of counsel.'' The term ``attorney
or agent of record'' in the interference rules should be construed in
the manner it is defined in 37 CFR 1.34(b). The rules do not recognize,
or use, the term ``of counsel.'' Accordingly, the suggestions are not
being adopted. Furthermore, each suggestion is outside the scope of the
present rulemaking.
Paragraph (a) of Sec. 1.614 is clarified, as proposed in the Notice
of Proposed Rulemaking, by changing ``the Board shall assume
jurisdiction'' to ``the Board acquires jurisdiction.'' One comment
suggested amending Sec. 1.614(c) (``An administrative patent judge,
where appropriate, may for a limited purpose restore jurisdiction to
the examiner over any application involved in the interference.'') by
deleting the current language ``, when appropriate,'' as surplusage in
view of ``may.'' The suggestion is being adopted.
In addition to amending Sec. 1.616 to authorize an award of
compensatory attorney fees and expenses in appropriate circumstances,
as discussed above, current paragraph (b), which is redesignated as
paragraph (a)(2), is revised 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 ``a paper.'' Current paragraph (b)
permits entry of an order precluding the filing only of a motion or a
preliminary statement. The term ``paper'' will be given a broad
construction, and includes a motion, a preliminary motion, a
preliminary statement, evidence in the form of documents, a brief, or
any other paper.
Section 1.617(b) is revised, as proposed, 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). The reason is that 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 declaring 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. 1.608(b) showing or accords the patentee 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.
One comment suggested that Sec. 1.617(b) be revised to state that a
change of counsel is not ``good cause'' for presenting additional
evidence in response to a Sec. 1.617(a) show cause order, noting the
similar amendment proposed in the Notice of Proposed Rulemaking for
Sec. 1.655(b). The suggestion is not being adopted. Moreover, the
statement that a change of attorney is not generally good cause is not
being added to Sec. 1.655(b) as proposed. Upon reflection, it is better
to leave the term ``good cause'' to be decided on a case-by-case basis.
The proposed amendments to the rules to state that a change of attorney
is generally not good cause for considering an issue belatedly raised
by a new attorney is generally correct. In fact, recent experience
shows that parties often retain new counsel after they find that ``they
are in trouble in the interference.'' Retaining new counsel midway
through the case is almost never a reason to subject the opponent to
starting over again. On the other hand, the rules use the term ``good
cause'' in various places and PTO does not want to incorrectly give the
impression that change of attorney is not good cause only when
specifically stated in a rule which uses the phrase ``good cause.'' Nor
does PTO want to have a per se rule which says that a change of
attorney cannot be good cause in any instance, although it would be
rare for a change of attorney to be good cause.
One comment suggested that the second sentence of Sec. 1.617(d) be
revised to indicate that any statement filed by an opponent may set
forth views as to why any (c), (f) or (g) motion filed by the applicant
should be denied. The suggestion is not being adopted. The first
sentence of Sec. 1.617(d) as revised authorizes an opponent to file an
opposition to any (c), (f) or (g) motion filed by the applicant, which
opposition should include views as to why any (c), (f) or (g) motion
filed by the applicant should be denied.
Another comment suggested that Sec. 1.617(d), which currently
prohibits an opponent from requesting a hearing, be revised to permit
such a request on the ground that a hearing is the opponent's best
chance to pretermit the whole interference process. The suggestion,
which is outside the scope of the present rulemaking, is not being
adopted.
The Notice of Proposed Rulemaking proposed amending the first
sentence of Sec. 1.618(a), which currently reads ``The Patent and
Trademark Office shall return to a party any paper presented by the
party when the filing of the paper is [[Page 14505]] unauthorized by,
or not in compliance with the requirements of, this subpart'' to read:
``An administrative patent judge or the Board shall enter an order
directing the 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 of, this subpart.'' The Notice of
Proposed Rulemaking also proposed amending the second sentence of
paragraph (a), which currently states that any paper returned ``will
not thereafter be considered by the Patent and Trademark Office in the
interference,'' by deleting ``by the Patent and Trademark Office.'' One
comment questioned why the phrase ``by the Patent and Trademark
Office'' is proposed to be removed. The reason is that the phrase is
superfluous. Another comment questioned who is being ordered to return
the paper and suggested that Sec. 1.618(a) be revised to simply provide
that the administrative patent judge shall return the unauthorized
papers, with the understanding that it is the administrative patent
judge's secretary who actually mails orders, opinions, etc. The
suggestion is being adopted, but with the rule stating that the paper
shall be returned by an administrative patent judge or the Board.
Although not proposed in the Notice of Proposed Rulemaking, the last
sentence of Sec. 1.618(a), which states that a party may be permitted
to file a corrected paper under such conditions as may be deemed
appropriate by an administrative patent judge, is revised to also allow
the Board to set such conditions.
One comment suggested an amendment to Sec. 1.622(a) to clarify that
the inventors named in the preliminary statement do not have to be all
of the inventors named in the party's case in interference, citing
Larson v. Johenning, 17 USPQ2d 1610 (Bd. Pat. App. & Int. 1990). The
comment alternatively suggested dropping preliminary statements
altogether on the grounds that they are (a) useless and (b) a snare and
a delusion. These suggestions are outside the scope of the present
rulemaking and are not being adopted.
Section 1.625(a) is revised, as proposed, by deleting ``the
invention was made in the United States or abroad and'' as surplusage.
Section 1.626 is revised, as proposed, by revising ``earlier
application filed in the United States or abroad'' to read ``earlier
filed application.'' The same change is made in 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).
Section 1.628(a) is revised, as proposed, to change ``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. The ``interest of justice'' requirement will be applied 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 normally will not be
prejudiced by the filing of a corrected statement. One comment raised
the following question:
What is the standard if the motion is filed before the time set
by the APJ for service of preliminary motions [sic, statements]? If,
as implied by the comments, amendments prior to that date can be
made freely, why not simply provide that the preliminary statements
(if they are to be retained at all) are to be filed and served on
the date set by the APJ pursuant to 37 CFR 1.628(a)? Particularly
where it is obvious that the count(s) is or are going to be changed
anyway, all of the parties' work preparing and the PTO's work in
processing the original preliminary statement is wasted effort
anyway.
(Original emphasis; footnote omitted.) The standard for a motion to
amend that is filed before service of preliminary statements is that it
be accompanied by an affidavit stating when the error occurred and be
filed ``as soon as practical after discovery of the error.'' The
suggestion that preliminary statements be filed and served on the date
set by the administrative patent judge pursuant to 37 CFR 1.628(a) is
not understood, since that rule does not provide for setting such a
date. Instead, the provisions relating to filing and serving
preliminary statements appear in Secs. 1.621(a) and 1.631,
respectively. To the extent the comment is suggesting that these
provisions be revised, the suggestion is outside the scope of the
present rulemaking and is not being adopted.
As proposed in the Notice of Proposed Rulemaking, paragraphs (a),
(c)(1) and (d) of Sec. 1.629 are revised to make each consistent with
the amendment of the definition of ``effective filing date'' in
Sec. 1.601(g). One comment suggested that in Sec. 1.629(a), second
sentence, the comma between ``statement'' and ``as,'' which was
proposed to be removed, be retained for clarity. As suggested, the
comma is retained.
The first sentence of Sec. 1.631(a) is revised by removing ``by the
examiner-in-chief'' (first occurrence) as superfluous. The Notice of
Proposed Rulemaking incorrectly proposed to remove the second
occurrence of this phrase. Thus revised and with the remaining
occurrences of ``examiner-in-chief'' changed to ``administrative patent
judge,'' the first sentence of Sec. 1.631(a), as it was proposed to be
revised, reads as follows: ``Unless otherwise ordered by an
administrative patent judge, concurrently with entry of a decision on
preliminary motions filed under Sec. 1.633, any preliminary statement
filed under Sec. 1.621(a) shall be opened to inspection by the senior
party and any junior party who filed a preliminary statement.'' (The
proposed language set forth in the Notice of Proposed Rulemaking
inadvertently omitted the phrase, ``concurrently with entry of a
decision on preliminary motions filed under Sec. 1.633,'' which appears
in the current rule and was not proposed to be removed.) In order to
make it clear that the phrase ``concurrently with entry of a decision
on preliminary motions filed under Sec. 1.633'' modifies the succeeding
phrase rather than the preceding phrase, the second comma is removed,
so that the first sentence of Sec. 1.631(a) as revised reads as
follows: ``Unless otherwise ordered by an administrative patent judge,
concurrently with entry of a decision on preliminary motions filed
under Sec. 1.633 any preliminary statement filed under Sec. 1.621(a)
shall be opened to inspection by the senior party and any junior party
who filed a preliminary statement.''
Section 1.632 is revised, as proposed, 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. One comment
suggested that Sec. 1.632 be further revised to (1) state what happens
next and (2) provide a period for shifting the burden of proof. The
suggestion is outside the scope of the present rulemaking, and is not
being adopted.
Several comments were received with respect to Sec. 1.633 in
general. Two of the comments noted that Sec. 1.642, which presumably
was intended to allow an administrative patent judge to add a new party
to an interference, has also been used to ``request'' addition of an
application or patent of an already involved party, citing Theeuwes v.
Bogentoft, 2 USPQ2d 1378 (Comm'r Pat. 1986). The two comments suggested
that Sec. 1.633 be revised to specifically provide for a motion to
request addition of an application or patent of a party in order to
make it clear that the standards for preliminary motions apply. Two
other comments suggested amending Secs. 1.633 and 1.637(h) to authorize
a [[Page 14506]] motion to add a claim to a party's application or an
opponent's application (including a reissue application) to be
designated as not corresponding to the count, thereby removing what is
alleged to be one of the major drawbacks of the current rules. Still
another comment suggested that in order to avoid the inefficiencies
that result when prior art surfaces for the first time in a motion
under Sec. 1.633(a), which may render moot other preliminary motions,
the parties should be required to file and serve all relevant prior art
of which they are aware prior to the preliminary motion period. While
some of the suggestions have merit, all are outside the scope of the
present rulemaking and are not being adopted.
As proposed in the Notice of Proposed Rulemaking, paragraph (a) of
Sec. 1.633 is revised in several respects. The first is to specify that
a claim shall be construed in light of the specification of the
application or patent in which it appears. The amendment clarifies an
ambiguity in PTO interference practice. Previously, the Federal Circuit
had interpreted Sec. 1.633 to require an ambiguous claim to be
interpreted in light of the patent from which it was copied. In re
Spina, 975 F.2d 854, 856, 24 USPQ2d 1142, 1144 (Fed. Cir. 1992). While
this interpretation was a possible interpretation of previous
Sec. 1.633, PTO had intended that a copied claim be interpreted in
light of the specification of the application or patent in which it
appears. The rule, as adopted, will make ex parte and inter partes
practice the same. A claim that has been added to a pending application
for any purpose, including to provoke an interference, will 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), ``by reference to the prior art of record'' is
removed as unnecessary. Paragraphs (a)(1) and (a)(2) of Sec. 1.633 are
revised by deleting some unnecessary language from each paragraph and
by changing ``derivation'' to ``Derivation'' in paragraph (a)(2). One
comment suggested changing ``corresponding to a count'' in
Sec. 1.633(a) to ``designated to correspond to a count'' for
consistency with Sec. 1.601(f), as amended. The suggestion is being
adopted.
Although not proposed in the Notice of Proposed Rulemaking,
Sec. 1.633(a) is also revised by adding a sentence requiring that the
motion separately address each claim alleged to be unpatentable. For
example, where a plurality of claims are alleged to be unpatentable
over prior art, the motion must compare each of those claims to the
prior art. As a result, a party would not be allowed to allege that all
of the opponent's claims that correspond to the count are unpatentable
simply because the opponent's claim that corresponds exactly to the
count is anticipated by, or would have been obvious in view of, the
prior art. At the time an interference is declared, it may appear (and
the parties may then believe) that all claims designated as
corresponding to a count are directed to the same patentable invention.
Once additional prior art is discovered in the preliminary motion
period, however, what was the case when the interference was declared
may no longer be the case. Hence, a preliminary motion under
Sec. 1.633(a) alleging unpatentability over the prior art should
address each claim believed to be unpatentable. In the case where a
party has two claims, e.g., a genus and a species, if a preliminary
motion under Sec. 1.633(a) is filed by an opponent which argues that
only the genus is unpatentable, the party will need only respond to the
argument relative to the genus. Thus, to the extent there ever was a
perception that all claims designated to correspond to a count stand or
fall with the ``patentability of the count,'' the rule as adopted
attempts to overcome that perception. There is no presumption in an
interference that because one claim designated to correspond to a count
is unpatentable over the prior art (35 U.S.C. 102 (a), (b) and (e)),
that all claims are unpatentable over the same prior art. On the other
hand, in deciding priority of invention, all claims designated to
correspond to a count at the time priority is decided will stand or
fall together on the issue of priority.
Section 1.633(b), which concerns motions for judgment on the ground
of no interference-in-fact, was proposed to be revised to state 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). The proposed change has
been adopted, but with the proposed term ``opponents'' being replaced
by ``different parties.'' One comment suggested that in addition to
Donaldson, support for the amendment can be found in Blackmore v. Hall,
1905 Dec. Comm'r Pat. 561 (Comm'r Pat. 1905), and the withdrawn opinion
in Rion v. Ault, 455 F.2d 570, 172 USPQ 588 (1972) (Rion I), modified,
482 F.2d 948 (CCPA 1973) (Rion II), which the comment says stand for a
proposition even broader than the one set forth in the proposed
amendment. Inasmuch as Blackmore predates the statutory language in
question and Rion I was withdrawn by the CCPA, the suggestion is not
being adopted.
Paragraph (i) of Sec. 1.633, which 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), is revised 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, paragraph (i) as revised gives 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. One comment suggested further amending
Sec. 1.633(i) to authorize a Sec. 1.633(c)(1) motion in response to an
[[Page 14507]] opponent's Sec. 1.633(c)(1) motion. The suggestion,
which is outside the scope of the present rulemaking, is not being
adopted.
One comment suggested that Sec. 1.636, as proposed to be revised,
which requires that a motion under Sec. 1.634 to correct inventorship
of a patent or application ``be diligently filed after an error is
discovered'' is ultra vires with respect to patents. The suggestion is
outside the scope of the present rulemaking and is not being adopted.
The suggestion will be considered in a future rulemaking.
The Notice is Proposed Rulemaking proposed amending paragraph (a)
of Sec. 1.637 to incorporate the essence of a notice of August 10,
1990, published as ``Interferences--Preliminary Motions for Judgment,''
1118 Off. Gaz. Pat. Office 19 (Sept. 11, 1990). Specifically, the
Notice of Proposed Rulemaking proposed adding the following language at
the end of the paragraph:
If a party files a motion for judgment under Sec. 1.633(a)
against an opponent based on the ground of unpatentability over
prior art, and the dates of the cited prior art are such that the
prior art appears to be applicable to be the party, it will be
presumed, without regard to the dates alleged in the preliminary
statement of the party, that the cited prior art is 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. 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.
Two comments suggested that the proposed last sentence is imprecise in
that although it is presumably intended to preclude a party whose
motion an administrative patent judge has held to include an
insufficient explanation or evidence from later supplementing the
explanation or evidence offered in the motion, the sentence is broad
enough to be construed as also precluding the party from relying on the
arguments and evidence that were offered in the motion. Accordingly,
one of the comments suggested that the proposed last sentence be
replaced by the following two sentences: ``If the administrative patent
judge holds that the motion fails to include a sufficient explanation
or evidence as to why the cited prior art is not applicable to the
party, the party will not be permitted to supplement any such
explanation or evidence in any subsequent action in the interference.
However, the party is not precluded from subsequently arguing that the
administrative patent judge's decision was incorrect.'' The substance
of the suggestions is believed to be correct, but the suggested
language will not be adopted. Instead, Sec. 1.637(a) is revised to
read:
A party filing a motion has the burden of proof to show that it
is entitled to the relief sought in the motion. Each motion shall
include a statement of the precise relief requested, a statement of
the material facts in support of the motion, in numbered paragraphs,
and a full statement of the reasons why the relief requested should
be granted. If a party files a motion for judgment under
Sec. 1.633(a) against an opponent based on the ground of
unpatentability over prior art, and the dates of the cited prior art
are such that the prior art appears to be applicable to the party,
it will be presumed, without regard to the dates alleged in the
preliminary statement of the party, that the cited prior art is
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.
Rather than specify a particular sanction for failure of a party to
comply with Sec. 1.637(a), as adopted, it is more appropriate to rely
on application of the provisions of Sec. 1.618. A party who fails to
timely include the explanation and/or evidence required by the rule
runs a considerable risk that an explanation and/or evidence presented
at a future time will be returned as untimely. See Sec. 1.618(a).
Papers which are returned are not considered part of the record.
Section 1.637(a) was proposed to be revised to state that the
statement of material facts be ``preferably in numbered paragraphs.''
One comment suggested that numbered paragraphs be a requirement,
because it would make matters easier for opponents as well as
administrative patent judges. The suggestion is being adopted.
Ordinarily, it will be expected that each numbered paragraph will
recite a single fact which can easily be ``admitted'' or ``denied.''
The use of numbered paragraphs should make the decision-making process
of the administrative patent judge easier.
Another comment suggested that Sec. 1.637(a) be revised to require
that motions, oppositions and replies be numbered sequentially, so that
party X's opposition No. 1 will be its opposition to party Y's motion
No. 1, etc. The suggestion, while having considerable merit, is outside
the scope of the present rulemaking, and is not being adopted. The
suggestion will be made the subject of a future rulemaking effort. In
papers filed in PTO in interference cases, there is an increasing
tendency for parties to use ``long'' titles, e.g., PARTY SMITH'S
PRELIMINARY MOTION FOR DECLARATION OF PARTY OPPONENT RAYMOND'S CLAIMS
TO BE UNPATENTABLE UNDER 37 CFR Sec. 1.633(a). The opponent then
responds with an opposition styled PARTY RAYMOND'S OPPOSITION TO PARTY
SMITH'S PRELIMINARY MOTION FOR DECLARATION OF PARTY OPPONENT RAYMOND'S
CLAIMS UNPATENTABLE UNDER 37 CFR Sec. 1.633(a). The reply then tends to
be PARTY SMITH'S REPLY TO PARTY RAYMOND'S OPPOSITION TO PARTY SMITH'S
PRELIMINARY MOTION FOR DECLARATION OF PARTY OPPONENT RAYMOND'S CLAIMS
UNPATENTABLE UNDER 37 CFR Sec. 1.633(a). It should be apparent that the
styling of the paper loses its significance. Accordingly, pending a
further rulemaking effort parties in interference can simplify matters
by voluntarily adopting the essence of the suggestion by replacing the
styling of the three papers identified above with the following: (1)
SMITH'S PRELIMINARY MOTION NO. 1; (2) RAYMOND'S OPPOSITION NO. 1; and
(3) SMITH'S REPLY NO. 1. If numerous motions are filed, then sequential
numbers can be used. In a two-party interference, if the parties can
agree, one can use numbers and the other letters. In any event, it
would be of considerable help to the Board if the style of a paper does
not exceed a single line.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.637(a) is
also revised by changing ``Every'' in the second sentence to ``Each.''
Section 1.637(c)(1) sets forth the requirements for a preliminary
motion to add or substitute a proposed count. The Notice of Proposed
Rulemaking proposed amending paragraph (c)(1)(v) in two respects: (1)
To require a moving party to show that the proposed count is patentable
over the prior art; and (2) 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.
Several comments opposed amending Sec. 1.637(c)(1)(v) to require a
party to show that a proposed new count is patentable over the prior
art, stating, inter alia, that the date of a count for purposes of
determining what is available as prior art is not clear. The statements
in the comment are well taken for the reasons given above in the
discussion of Sec. 1.601(f). Accordingly, the proposal to amend
paragraph (c)(1)(v) to require the moving party to show the
patentability of a proposed new count over the prior art is withdrawn.
Paragraph (c)(1)(v) is revised only to require that a proposed
substitute count must be shown to be [[Page 14508]] patentably distinct
from the other counts proposed to remain in the interference.
As proposed in the Notice of Proposed Rulemaking,
Sec. 1.637(c)(1)(vi) is revised 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.
In order to 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, the Notice of Proposed Rulemaking also
proposed amending Sec. 1.637 by adding a new paragraph (c)(1)(vii)
reading as follows:
If an opponent is accorded the benefit of the filing date of an
earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit
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.
One comment suggested clarifying the first sentence by inserting
``and if the movant desires a holding that its opponent is not entitled
to the benefit of the filing date of the earlier filed application for
the proposed count'' after ``interference.'' The same change was
suggested for proposed new Secs. 1.637(e)(1)(ix) and 1.637(e)(2)(viii),
which are identical to Sec. 1.637(c)(1)(vii). The suggestion is not
being adopted. The rule, as amended, states that a moving party must
take a positive action if it believes an opponent is not entitled to
benefit for a new count. Failure to take the positive action creates a
presumption. The rule, as amended, also states the consequences of not
taking a positive action. Taking the positive action is the manner to
procedurally attempt to overcome the presumption. Hence, the suggested
``clarification'' is not necessary.
As proposed, minor housekeeping amendments are made to
Secs. 1.637(c)(2) (ii) and (iii) for clarification, and
Secs. 1.637(c)(2)(iv) and 1.637(c)(3)(iii), which relate to
Sec. 1.633(f) motions for benefit, are removed and reserved as
unnecessary, since motions under Sec. 1.633(c) (2) and (3) do not
affect the count. Section 1.637(c)(3)(ii), which applies to motions
under Sec. 1.633(c)(3) to designate a claim as corresponding to a
count, is revised 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 amendment avoids the need to compare claims to counts.
Section 1.637(c)(4)(ii) was proposed to be revised 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. As revised, the rule
precludes 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. The supporting rationale is that 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. One comment argues that the proposed amendment
would unduly burden a party by requiring it to propose claims to be
added to an opponent's application, whereas under the current rule the
opponent, who has the option to propose such a count and such a claim
in a motion under Sec. 1.633(c)(1), runs the risk of interference
estoppel by not pursuing an interference on common patentable subject
matter. Thus, the comment notes that the effect of the proposed
requirement would be to require a party to prevent its opponent from
possibly getting itself into an estoppel situation. The point of the
comment is well taken. Accordingly, the proposal to amend
Sec. 1.637(c)(4) in the manner criticized by the comment hereby
withdrawn.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.637(d)(4),
which authorizes a party to file a motion for benefit together with a
motion under Sec. 1.633(d), is removed and reserved as unnecessary.
Motions filed under Sec. 1.633(d) do not affect the count. Sections
1.637(e)(1)(viii) and (e)(2)(vii) are revised to make it clear that a
preliminary motion under Secs. 1.633(e)(1) or (e)(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. As proposed, Secs. 1.637(e)(1)(ix) and (e)(2)(viii) are added
specifying that where a party is accorded the benefit of the filing
date of an earlier filed application in the notice of declaration of
the interference, that party is presumed to be entitled to the benefit
of the earlier filed application with respect to the proposed count.
Section 1.637(f)(2) is revised, as proposed, by changing ``abroad''
to ``in a foreign country'' and removing both occurrences of ``filed
abroad'' as superfluous.
The Notice of Proposed Rulemaking proposed to amend Sec. 1.637(h)
by adding a sentence stating that ``[a] patentee may not move under
Sec. 1.633(h) to add a reissue application that includes new or amended
claims to be designated as not corresponding to a count.'' The purpose
of the proposal was to make clear 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). Several comments were received in
opposition to this proposal, one of which stated:
As understood, this would prevent moving to add any reissue
application to an interference if even a single claim of that
reissue was independently patentable, i.e., properly not subject to
the interference, even if some or most of the other claims were the
same as, or patentably indistinct from, claims already subject to
the interference.
It is not seen why patent owners should be deprived of their
statutory and normal ex parte right to have and maintain reissue
applications with appropriate claims to inventions disclosed in
their specifications, simply to meet a new interference rule
requirement that appears to be solely for administrative convenience
for the interference proceeding.
The statement in the comment is justified. The rule as proposed to be
revised would unfairly preclude a patentee whose involved claims are
all held to be unpatentable during the interference (e.g., under 35
U.S.C. 112, first paragraph, for lack of written description support)
from adding a reissue application that contains new or amended claims
to be designated as corresponding to a count simply because the reissue
application also happens to include a new or amended claim to be
designated as not corresponding to a count. Accordingly, the proposed
amendment to paragraph (h) is hereby withdrawn.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.638(b) is
revised by changing ``a reply'' to ``any reply.''
One comment suggested amending Sec. 1.638(a) to take into account
that an opposition may be based on material facts that are not set
forth in the motion, by changing ``(2) include an argument
[[Page 14509]] why the relief requested in the motion should be
denied'' to ``(2) set forth in numbered paragraphs any material facts
in support of the opposition not set forth in the motion and include an
argument why the relief requested in the motion should be denied.'' A
similar amendment was suggested for paragraph (b) as to replies. The
suggestions, which are outside the scope of the present rulemaking, are
not being adopted. The suggestions would appear to have considerable
merit and will be made the subject of a future rulemaking effort.
Paragraph (a) of Sec. 1.639, which currently 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, is
revised as proposed in the Notice of Proposed Rulemaking 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.
In addition, paragraph (d)(1) is revised, as proposed, by changing
``call'' to ``use.''
One comment expressed concern about Sec. 1.639(a) to the extent it
is construed as requiring that all available evidence in support of a
motion, opposition or reply must be filed and served with the motion,
opposition or reply, which is presumed to be a reference to the
construction given Sec. 1.639 in Irikura v. Petersen, 18 USPQ2d 1362,
1368 (Bd. Pat. App. & Int. 1990):
A good faith effort must be made to submit evidence to support a
preliminary motion or opposition when the evidence is available.
Orikasa v. Oonishi, [10 USPQ2d 1996, 2000 n.12 (Comm'r Pat. 1989].
Note the commentary [Patent Interference Proceedings; Final Rule,]
49 F.R. [48416], at 48442 (Dec. 12, 1984), 1050 O.G. [385], at 411
(Jan. 29, 1985]), [corrections] 50 F.R. 23122 (May 31, 1985), 1059
O.G. 27 (Oct. 22, 1985).
See also Okada v. Hitotsumachi, 16 USPQ2d 1789, 1790 (Comm'r Pat.
1990). Specifically, the comment notes that:
[t]o permit testimony beyond the evidence filed with the motion, has
been likened to ``two bites of the apple''. I think there is a
misunderstanding here, it is not two bites.
For example, a motion for summary judgment that is denied, [sic]
does not preclude the party from proving his case at trial with
additional evidence. Two bites comes if, after decision on motion, a
party tries to bring a second motion with additional evidence or
argument, or [if] after trial and judgment, the loser wants to
introduce more evidence that was available all along. I see nothing
wrong with an interference party submitting the prior art and
arguing that ``any fool can plainly see'' the subject matter of the
count is obvious. That's a sort of motion for summary judgment on
the issue. If the APJ does not perceive the obviousness to be
apparent, he or she should invite the parties to present additional
testimony on obviousness during the testimony time, not block it.
Obviously, the same reasoning would apply to enablement,
operability, same patentable invention, etc.
(Original emphasis.) The suggestion that the rules be revised to permit
a party to later submit evidence that it could have submitted in
support of or in opposition to a preliminary motion is declined for the
reasons given in Hanagan v. Kimura, 16 USPQ2d 1791, 1793 (Comm'r Pat.
1990) (``the new interference rules were not intended to permit routine
requests to take testimony in lieu of presenting timely affidavits and
other available proof of material [facts] with the motion''). See also
Staehelin v. Secher, 24 USPQ2d 1513, 1515 n.3 (Bd. Pat. App. & Int.
1992).
Another comment suggested amending the rules to permit the filing
of a motion for ``summary judgment'' shortly (e.g., within two months)
after the interference is declared on a matter that may be dispositive
of the interference, such as the absence of an interference-in-fact,
unpatentability of all of the parties' claims that correspond to the
count or unpatentability of all of the opponent's claims that
correspond to the count, with testimony being restricted to affidavits
and counter-affidavits. Compare Fed. R. Civ. P. 56. The comment
continues that if the motion is denied by the administrative patent
judge, there would be no right of appeal; if the motion is granted, the
opponent could appeal to a three-member panel of the board and, if the
panel concurs with the decision of the administrative patent judge, the
opponent could seek judicial review. To the extent the suggestion is
seeking a rule authorizing motions for summary judgment like those
provided for in Fed. R. Civ. P. 56, the suggestion is outside the scope
of the present rulemaking and is therefore not being adopted. In a
future rulemaking effort, PTO will consider whether there is an
advantage to be gained by some form of ``summary judgment'' motion.
The Notice of Proposed Rulemaking proposed to amend Sec. 1.640(b)
in several respects. First, it was proposed to add a first sentence
providing that ``[u]nless an administrative patent judge or the Board
is of the opinion that a decision on a preliminary motion would
materially advance the resolution of the interference, decision on a
preliminary motion should be deferred to final hearing.'' One comment
indicated that requiring deferral of non-dispositive motions may
adversely affect settlement of interferences:
Under the current procedure, where most motions are initially
decided, if a party is faced with a particular decision on a non-
dispositive motion, that decision may affect the party's willingness
to settle with the opposing party, even knowing that the decision
may be changed at final hearing. For example, if a party has
proposed a new count that better fits its proofs and the motion
proposing the new count is denied, the party may be willing to
request adverse judgment (e.g., in exchange for a license) rather
than try to prove invention of the original count for which its
proofs are not as good, even knowing that there is a chance that the
proposed count may be adopted at final hearing. Similarly, a party
that has succeeded in having important claims designated as not
corresponding to the count may be willing to settle on that basis,
even though it may lose certain other claims. To the extent that
early decisions on preliminary motions motivate settlement in that
way, the proposed amendments will decrease the settlement rate of
interferences, adding to the workload of the Board and of
practitioners.
While the comment can be correct in some interferences, it may not be
true in other interferences. In those interferences where decision on a
preliminary motion is likely to lead to settlement, the parties should
approach the administrative patent judge and discuss the matter. Then
the administrative patent judge will then be in a position to make an
informed decision on an ``opinion that an earlier decision on a
preliminary motion would materially advance the resolution of the
interference.'' Amending the rule, as proposed, will advance resolution
of interferences where settlement is not likely, while at the same time
giving the parties a means by which to inform the administrative patent
judge that a decision on a particular motion would assist the
settlement process.
One comment suggested that the proposed language could be clarified
by changing ``a decision'' (first occurrence) to ``an earlier
decision'' so that the sentence reads: ``Unless an administrative
patent judge or the Board is of the opinion that an earlier decision on
a preliminary motion would materially advance the resolution of the
interference, decision on a preliminary motion shall be deferred to
final hearing.'' The suggestion is being adopted.
Another comment stated that the second sentence of Sec. 1.640(b) as
proposed to be revised (``Motions otherwise will be decided by an
administrative patent judge.'') is somewhat confusing and asks whether
it is intended to mean that if the administrative patent judge decides
not to defer a motion to final hearing, the administrative patent judge
will then decide the motion. Any possible [[Page 14510]] ambiguity is
avoided by changing ``otherwise'' to ``not deferred to final hearing.''
Although not proposed in the Notice of Proposed Rulemaking, the
sentence in Sec. 1.640(b ) which currently reads ``[a]n administrative
patent judge may consult with an examiner in deciding motions involving
a question of patentability'' is changed to ``[a]n administrative
patent judge may consult with an examiner in deciding motions'' to
avoid any uncertainty that the administrative patent judge is free to
consult with an examiner on any preliminary motion.
Still another comment suggested that the fourth sentence of
Sec. 1.640(b) as proposed to be revised (``An administrative patent
judge may take up motions for decision in any order and may grant or
deny any motion or take such other action which will secure the just,
speedy, and inexpensive determination of the interference.'') be
changed to read as follows to make it clear that the goal of ensuring a
just, speedy, and inexpensive determination of the interference applies
to the choice of order of deciding motions: ``An administrative patent
judge may take up motions for decision in any order, may grant or deny
any motion, and may take such other action which will secure the just,
speedy, and inexpensive determination of the interference.'' The
suggestion is being adopted. The rule is also revised to make
absolutely clear that, among other things, an administrative patent
judge may dismiss a motion, e.g., when a motion does not comply with a
rule. The addition of the possibility of ``dismissing'' a motion
augments the sanction available under Sec. 1.618(a), i.e., return of a
paper.
One comment suggested adding a provision to Sec. 1.640(b)
specifically recognizing the authority of the administrative patent
judge, for the purpose of promoting the just, speedy and inexpensive
resolution of the interference, ``to schedule a final hearing on
deferred preliminary motions prior to the time of testimony on
priority, etc. See also Sec. 1.654(a).'' The suggestion, which is
outside the scope of the present rulemaking, is not being adopted. The
suggestion will be considered in a future rulemaking effort, although
it should be noted that nothing in the rules should be construed as
precluding an administrative patent judge or the Board from ordering a
``final'' hearing on a particular issue. Whether such a ``final
hearing'' is ordered is within the sound discretion of the
administrative patent judge or the Board.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.640(b) is
also revised 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.'' one comment
questioned whether it will be sufficient to simply incorporate the
deferred motion and reply into the brief. The answer is no. With the
exception of a motion to suppress, which may be filed as a separate
paper together with a party's brief (Sec. 1.656(h)), and papers
properly belatedly filed after the brief has been filed, the brief must
satisfy the requirements of Sec. 1.656(b) with respect to all issues to
be decided at final hearing, including the requirement for a statement
of the issue (Sec. 1.656(b)(4)), a statement of the relevant facts
(Sec. 1.6565(b)(5)), and an argument (Sec. 1.656(b)(6)). It will be
noted at this point, that the Board generally discourages the practice
of incorporating an argument in one paper into a second paper. The
reason is that the argument in the first paper can easily be overlooked
in considering the second paper, i.e., when an administrative patent
judge studies a motion, opposition, or reply at home only to find that
the ``incorporated paper'' is not available.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.640(b) is
revised to state that ``[i]f 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 on motions or on matters raised sua
sponte by the administrative patent judge that the party wishes to have
reviewed at final hearing as well as identifying any deferred motions
that the party wishes to have considered at final hearing.'' One
comment questioned why the statement of matters to be reviewed at final
hearing is limited to final hearings on ``priority or derivation.'' The
reason is that final hearings on priority and/or derivation are the
only types of final hearing that will be scheduled pursuant to
Sec. 1.640(b). Final hearings that are requested in response to show
cause orders under Sec. 1.640(d) are set pursuant to Sec. 1.640(e),
which, as amended likewise requires statements identifying the matters
to be reviewed at final hearing.
Section 1.640(b) was also proposed to be revised by adding as the
last sentence: ``Any evidence that a party wishes to have considered
with respect to the decisions and motions identified by the party or by
an opponent for consideration or review at final hearing, including any
affidavit filed by the party under Sec. 1.608 or 1.639(b), shall be
served on the opponent during the testimony-in-chief period of the
party.'' In order to consistent with the terminology in the preceding
sentence of Sec. 1.640(b), the phrase `'decisions and motions'' in the
proposed last sentence is replaced by ``decisions and deferred
motions.'' Furthermore, the last sentence, as adopted, has been worded
to take into account the retention and amendment of Sec. 1.671(e) to
permit a party to file a notice of intent to rely on affidavits,
patents and printed publications previously submitted under
Sec. 1.639(b). Accordingly, the last sentence, as adopted, reads: ``Any
evidence that a party wishes to have considered with respect to the
decisions and deferred motions identified by the party or by an
opponent for consideration or review at final hearing shall be filed
or, if appropriate, noticed under Sec. 1.671(e) during the testimony-
in-chief period of the party.''
As proposed in the Notice of Proposed Rulemaking, the last sentence
of Sec. 1.640(b)(1) (``After the time expires for filing any amendment
and supplemental preliminary statement, the examiner-in-chief will, if
necessary, redeclare the interference.'') is changed to read: ``At an
appropriate time in the interference, and when necessary, an order will
be entered redeclaring the interference.'' One comment requested
clarification of the meaning of ``when necessary'' and suggested that
redeclaration should be required when the order of parties is changed
but the count remains the same, in order to make it clear who is junior
and who is senior. The suggestion, which included no specific language
for its implementation and is outside the scope of the present
rulemaking, is not being adopted. It will be considered in future
rulemaking effort.
Section 1.640(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 revised 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).''
Section 1.645(b) relates to consideration of belatedly filed papers in
general.
The Notice of Proposed Rulemaking proposed to amend Sec. 1.640(c),
which currently requires an administrative patent judge or the Board to
specifically [[Page 14511]] authorize an opposition to a request for
reconsideration of a decision by an administrative patent judge, 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 to authorize an opposition. An opposition is
normally required before the Board will modify the decision of an
administrative patent judge. One comment suggested that because the
Board frequently dismisses or denies requests for reconsideration
without requesting an opposition, the proposed amendment will have the
effect of unnecessarily increasing costs by encouraging the filing of
oppositions that the Board may frequently find unnecessary to consider.
The point is well taken and the proposal to amend Sec. 1.640(c) to
authorize oppositions to be filed without leave of the administrative
patent judge is therefore withdrawn.
As proposed in the Notice of Proposed Rulemaking, the last sentence
of Sec. 1.640(c) is removed in order to authorize a single individual
administrative patent judge to decide a request for reconsideration and
is also revised to require that a request for reconsideration by filed
by hand or Express Mail. The amendment of the rule should not be
construed as limiting the authority of the Board, in the discretion of
an administrative patent judge or the Board, to decide a request for
reconsideration.
One comment suggested amending the second sentence of Sec. 1.640(c)
to permit service by next-business-day courier, arguing that hand
delivery is often impractical and Express Mail unduly difficult. The
comment also suggested that paragraph (c) be revised to allow
reconsideration of a decision on motions, which is currently limited to
identifying points that have been ``misapprehended or overlooked,'' on
the additional ground that the decision is simply wrong on the merits,
noting that decisions on reconsideration in several interferences
agreed that a decision is wrong on the merits, but refused to change it
on the grounds that nothing was overlooked or misapprehended. Both of
these suggestions are outside the scope of the present rulemaking and
are not being adopted. However, pending a future rulemaking effort, the
word ``served by hand'' in Sec. 1.640(c) and elsewhere in the rules
should be construed to include service by next-business-day courier. In
using a next-business-day courier, a party is serving the paper by
hand, the ``hand'' being the courier service. Hence, service by hand
will be construed to include service by any commercial courier which
performs a service essentially equivalent to the Express Mail service
provided by the U.S. Postal Service. Pending further rulemaking, the
date of service shall be the date of delivery to the courier.
Section 1.640(d)(1), which currently states that an order to show
cause under that section may be based on a decision on a motion which
is dispositive of the interference against a party as to any count, is
revised, as proposed in the Notice of Proposed Rulemaking, to also
include decisions on dispositive matters raised sua sponte by an
administrative patent judge.
Section 1.640(e) is revised, as proposed, to incorporate the
substance of the 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), 1086 Off. Gaz.
Pat. Office 282 (Jan. 5, 1988). Specifically, Sec. 1.640(e), as
amended, provides that where the order to show cause was issued under
Sec. 1.640(d)(1), the party may file 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
opponent is 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 opponent's response must identify every decision of the
administrative patent judge that the opponent 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 opponent's response may include a request for final
hearing which must identify every decision of the administrative patent
judge that the opponent wishes to have reviewed by the Board at a final
hearing. Where an opponent's response includes a request for a final
hearing, the party who filed the paper shall have 14 days from the date
of service of the opponent's 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 shall 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 will be construed as including a request for final
hearing. If 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 in the basis for the order shall be
reviewed based on the contents of the paper and the response. If the
paper fails to show good cause, the Board shall enter judgment against
the party against whom the order issued.
One comment suggested that in view of the proposed addition to
Sec. 1.640(b) to create a presumption of deferral of nondispositive
preliminary motions, a provision should be added allowing the parties
to request that the Board also consider deferred preliminary motions at
a Sec. 1.640(e) final hearing. The comment has merit and, while not
being adopted specially at this time, will be made the subject of
future rulemaking. In the interim, and consistent with the second
sentence of Sec. 1.601, the rules should be construed to give the
administrative patent judge the maximum discretion to determine what
issues might be considered at any final hearing set as a result of
entry of an order to show cause.
One comment suggested that Sec. 1.640(e)(1) be revised to
automatically authorize the party who filed a paper in response to a
Sec. 1.640(d) show cause order to file a reply to an opponent's
response in order to avoid the need for motions to file such replies.
The suggestion is outside the scope of the present rulemaking and is
not being adopted. Another comment suggested adding a provision to
Sec. 1.640(e) similar to the last sentence of proposed Sec. 1.640(b) so
that parties can include Sec. 1.639 preliminary motion proofs in the
record for consideration at a Sec. 1.640(e) final hearing. The
suggestion is being adopted. Accordingly, the penultimate sentence of
Sec. 1.640(e)(3), as adopted, reads: ``Any evidence that a party wishes
to have considered with respect to the decisions and deferred motions
identified by the party or by an opponent for consideration or review
at final hearing shall be filed or, if appropriate, noticed under
Sec. 1.671(e) during the testimony period of the party.''
One comment suggested modifying the first sentence of proposed
Sec. 1.640(e)(4) (``If 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 * * *.'') by changing ``order and''
to read ``order, and if.'' The suggestion is being
adopted. [[Page 14512]]
Two comments suggested that interferences can be expedited and the
costs reduced by amending the rules to formalize the procedure of
having an administrative patent judge conduct a hearing after the
filing of motions, oppositions and replies on issues that are
potentially dispositive of the interference, as has been done on an
experimental basis in several interferences. The comment indicates that
such a procedure should reduce time and costs, encourage settlements,
reduce issues, and help parties reach stipulations. The suggestion,
which is outside the scope of the present rulemaking, is not being
adopted. The suggestion will be the subject of future rulemaking. In
the interim, there is nothing in the rules to preclude a party from
requesting a hearing on a dispositive motion. Whether a hearing is
conducted is a matter within the discretion of the administrative
patent judge.
Section 1.641 currently provides that an administrative patent
judge who 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. After considering the views, the administrative patent judge
determines how the interference shall proceed. The Notice of Proposed
Rulemaking proposed to amend Sec. 1.641 to state that a party's views
``may include argument or appropriate preliminary motions under
Sec. 1.633 (c), (d) or (h), including any supporting evidence.'' After
the Notice of Proposed Rulemaking was published it became apparent that
the proposed language is ambiguous as to (1) whether evidence can be
submitted in support of argument as well as in support of appropriate
motions and (2) as to whether a party who agrees with the
administrative patent judge's determination of unpatentability is
entitled to file motions under Secs. 1.633 (c), (d) and (h). These
possible ambiguities are avoided by amending the rule to state that a
party's views may include argument, including any supporting evidence,
and in the case of the party whose claim may be unpatentable, may also
include one or more appropriate preliminary motions under Secs. 1.633
(c), (d) and (h), including any supporting evidence. The Notice of
Proposed Rulemaking also proposed amending Sec. 1.641 to state that
``[a]fter considering any timely filed views, including any timely
filed preliminary motions under Sec. 1.633, the administrative patent
judge shall decide how the interference shall proceed.'' Inasmuch as
the proposed language fails to take into account any oppositions and
replies for the motions, the rule is instead revised to read: ``After
considering any timely filed views, including any timely filed
preliminary motions under Sec. 1.633, oppositions and replies, the
administrative patent judge shall decide how the interference shall
proceed.''
One comment responded to the proposed amendments of Sec. 1.641 as
follows:
The action taken by an administrative patent judge under this
rule should be described as, in effect, a section 1.633(a) motion by
the administrative patent judge. The action should point out that
any party disagreeing with the administrative patent judge should
respond in the same fashion as it would in opposing a section
1.633(a) motion including the submission of all available evidence
under rule 1.639. By taking action under this rule, an
administrative patent judge* becomes the (or an) adversary to at
least one party in the interference and therefore any decision on
such a motion by an administrative patent judge should be deferred
to final hearing and the administrative patent judge who took the
action should not be a member of the panel at final hearing. Other
possibilities would be to remand the matter to the primary examiner
for his or her decision as to whether there is any merit to the
purported ground of unpatentability. If the purported ground of
unpatentability applies to the claims of a patent involved in the
interference, the primary examiner could determine whether the
purported ground of unpatentability is sufficient to institute a
reexamination proceeding with respect to the patent. If the primary
examiner's decision is adverse to one or more of the parties, that
party or those parties would have the burden of showing that the
primary examiner's decision was incorrect. Another possibility would
be for the administrative patent judge to merely notice the issue
and provide the parties with a period of time within which to submit
a motion under section 1.633(a). If none of the parties submits a
section 1.633(a) motion and the administrative patent judge
considers the matter to be of sufficient importance, he or she could
then remand to the attention of the primary examiner for his or her
decision as previously indicated.
*Cf. In re Van Geuns, 20 USPQ2d 1291, 1295 (Fed. Cir. 1991)[:]
``[a]s in all ex parte cases, the entity adverse to Van Geuns is the
PTO Commissioner.''
The suggestion that Sec. 1.641 be revised to characterize an
administrative patent judge's determination that a party's claim may be
unpatentable as, in effect, a Sec. 1.633(a) motion is not being
adopted. Section 1.641, as proposed to be revised by the comment, could
be construed as precluding an opponent who agrees with the
determination from submitting argument and appropriate motions,
including evidence, in support of the determination. The suggestion
that the administrative patent judge who initially made the
determination of unpatentability be precluded from serving as a member
of the reviewing panel at final hearing is not adopted. Judges in
various courts and judges in administrative proceedings routinely issue
orders to show cause and consider views presented in response to those
orders. In the case of a dispositive matter which results in the
issuance of an order to show cause, the party receiving the order to
show cause knows that in addition to the administrative patent judge
issuing the order, at least two other administrative patent judges will
consider the response. Moreover, it should be noted that resolving
patentability in an interference and in ex parte proceedings is not the
same. In ex parte examination of a patent application, the statute
specifically contemplates an administrative appeal to the Board. 35
U.S.C. 134. In the case of interferences, the statute authorizes the
Board, in the first instance, to make a patentability determination. 35
U.S.C. 135(a). Hence, the statute does not require that an
administrative patent judge issuing an order to show cause not
participate in ruling on the sufficiency of any response to the order.
Efficient administration of interferences in PTO dictates that the
administrative patent judge most likely to be familiar with the record
---------------------------------------------------------------------------
participate in evaluating responses to orders to show cause.
Another comment suggested that a Sec. 1.641 order authorizing views
be identified in the rule as an order to show cause. The suggestion is
not being adopted. If, after considering the parties' arguments,
motions, oppositions and replies, the administrative patent judge
concludes that all of the involved claims or one or both parties are
unpatentable, the administrative patent judge may issue an order to
show cause pursuant to Sec. 1.640(d)(1) as amended, which expressly
provides for a show cause order based on a decision on a matter raised
sua sponte by an administrative patent judge.
Section 1.643(b) is revised, as proposed in the Notice of Proposed
Rulemaking, 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).
As proposed in the Notice of Proposed rulemaking, Sec. 1.644(a) is
revised by changing ``a panel consisting of more than one examiner-in-
chief'' to ``the Board'' and paragraphs (a)(1), (b) [[Page 14513]] and
(c) are revised by changing both occurrences of ``panel'' to ``Board.''
Section 1.644(a)(2) is revised by removing the statement concerning
when parties are authorized to file a petition seeking to invoke the
supervisory authority of the Commissioner. The times for filing
petitions are set out in Sec. 1.644(b).
Section 1.644(b) is revised 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. Sections 1.644(a)(2) and
(b) currently provide that such a petition shall not be filed ``prior
to the decision of the Board awarding judgment.'' Since promulgation of
the ``new'' rules, 49 FR 48416 (Dec. 12, 1984), reprinted in 1050 Off.
Gaz. Pat. Office 385 (Jan. 29, 1985), there have been relatively few
petitions filed in interference cases, particularly petitions seeking
to invoke supervisory authority. Thus, a result sought to be achieved
under the ``new'' rules has been, in fact, achieved, i.e., fewer
petitions. Under the rules, there should be few, if any, petitions to
invoke supervisory authority. Section 1.644(a)(1), which authorizes
important questions to be certified to the Commissioner, should be
sufficient in most cases to resolve questions of interpretation of the
rules. Section 1.644(a)(2) provides a vehicle for rule interpretation
in those cases where certification is declined by the administrative
patent judge and there remains, at the time briefs are filed for final
hearing, a need to resolve the interpretation. The time for filing a
petition to invoke supervisory authority is believed to be more
appropriate before the Board enters a final decision, as opposed to
after entry of a final-decision--as required by current practice.
Parties should not file petitions seeking to invoke supervisory
authority in cases involving routine interlocutory orders which do not
involve an interpretation of a rule. As noted in the notice of final
rule:
[a] final decision of the Board is reviewable in the U.S. Court
of Appeals for the Federal Circuit or an appropriate U.S. district
court. Any reviewing court can review all aspects of the decision
including patentability, priority, and all relevant interlocutory
orders, such as denials of discovery.
49 FR 48416, 48418 (Dec. 12, 1984), reprinted in 1050 Off. Gaz. Pat.
Office 385, 387 (Jan. 29, 1985).
Section 1.644(b) is also revised, as proposed, by revising it to
state that a petition under Sec. 1.644(a) shall be considered timely it
is filed simultaneously with a proper motion under Secs. 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)(3) should seek waiver of a
rule prospectively rather than retroactively. Parties should recognize
that waiver of a rule is reserved for unusual circumstances. Myers v.
Feigelman, 455 F.2d 596, 601, 172 USPQ 580, 584 (CCPA 1972) (waiver of
rules on routine basis would defeat the purpose of the rules and
substantially confuse interference practice). Nevertheless, since PTO
cannot possibly contemplate all circumstances which can arise in
interferences at the time a rule is promulgated, waiver of a rule may
be entirely appropriate in unusual circumstances. By encouraging
parties to file a petition when they know a rule must be waived, the
opponent is put ion the best position to address the matter and take
whatever action might be in the opponent's interest in the event a
petition is granted. One the other hand, parties should not expect many
petitions to be granted which seek to waive the rules.
The time for responding to a petition under Sec. 1.644(a)(1) or
(a)(2) is changed from (a) 15 to days (b) to 20 days. The time for
responding to a petition under Sec. 1.544(a)(3) is changed from (a) 15
days to (b) 20 days or the date an opposition is due to the
accompanying motion, whichever is earlier. The change will permit an
opponent to file an opposition to the motion and the petition on the
same day and should eliminate different, but related, time periods from
running concurrently.
Section 1.644(b), as proposed, would have authorized the petition
to be made part of the motion, as does Sec. 1.644(b) in its current
form. Upon reflection, since the petition is decided by one PTO
official and the motion by another, it will be more efficient for PTO
if the petition and motion are filed as separate papers. Additionally,
the fact that a petition has been filed is less likely to be
inadvertently overlooked if the petition and motion appear in separate
papers.
In Sec. 1.644(d), the second sentence, as proposed, is removed as
unnecessary. The Notice of Proposed Rulemaking also proposed amending
this paragraph to provide that the statement of facts in a petition
preferably should be in numbered paragraphs. One comment suggested that
numbered paragraphs be required, rather than just preferred. The
suggestion is being adopted. Another comment suggested inserting a
comma after ``Board'' in the second sentence of Sec. 1.644(d), as
proposed to be revised. The suggestion is being adopted.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.644(f) is
revised to change the ``15 days'' in which to request reconsideration
of a decision by the Commissioner to ``14 days.''
In Sec. 1.644(g), the quotation marks around ``Express Mail'' are
removed, as proposed.
Section 1.645(b), which in its current form permits consideration
of a belatedly filed paper only if accompanied by a motion under
Sec. 1.635 showing sufficient cause (Sec. 1.645(b)) for the
belatedness, is revised in several respects, as proposed in the Notice
of Proposed Rulemaking. First, ``sufficient cause'' is changed to
``good cause'' in order to provide a single ``clause'' standard
throughout the interference rules. Second, paragraph (b) is revised 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 or where all parties and the Board act as though a paper
is timely only to discover later that it was not. For purposes of
sections other than Sec. 1.645, a belatedly filed paper is considered
``timely filed'' if accompanied by a motion under Sec. 1.635 to excuse
the belatedness, which is granted.
Section 1.645(d) is revised, as proposed, 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.
Section 1.646 is revised in the manner proposed in the Notice of
Proposed Rulemaking. Specifically, Sec. 1.646(a)(2) is revised by
deleting the reference to Sec. 1.684, which is removed. Section
1.646(c)(1) is revised 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 is used,
it should be understood that the party normally will deliver the paper
to the courier on one day and the paper will be delivered to the office
of counsel for the opponent on the next day. A certificate of service
that states that the paper is being served ``via the following
commercial courier`` [insert name]'' is deemed to be a proper service
within the meaning of Sec. 1.646(c)(1), as amended. Pending further
rulemaking, the date of service will be considered [[Page 14514]] the
date the paper is delivered to the courier.
In Sec. 1.646(c)(4), ``mail'' ``(second occurrence)'' is changed to
``first class mail'' to make it clear that the service date specified
in that paragraph applies only to first class mail.
Section 1.646(c)(5) is redesignated as Sec. 1.646(c)(6) and a new
Sec. 1.646(c)(5) is added which explains 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.
Section 1.646(d) is revised by removing the quotation marks around
``Express Mail.''
Section 1.646(e) is revised 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.
One comment suggested amending Sec. 1.646 to authorize service by
next-business-day courier, with the date of service being the day the
paper is given to the courier. The suggestion is not being adopted at
this time, but will be considered in future rulemaking. In the interim,
for the reasons given above, service by a next-business-day courier may
be regarded as service by hand.
Section 1.651(a)(2) is revised, as proposed, by removing
``(testimony includes testimony to be taken abroad under Sec. 1.684)''
in order to be consistent with the proposal to remove and reserve
Sec. 1.684 and by amending Secs. 1.651 (c)(2) and (c)(3) to be
consistent with the amendment to the definition of ``effective filing
date'' in Sec. 1.601(g).
The Notice of Proposed Rulemaking proposed further amending
Sec. 1.651(d) by changing ``abroad under Sec. 1.684'' to ``in a foreign
country.'' One comment noted that the term ``foreign country'' is
unduly restrictive in that it does not include a foreign place that is
not part of a ``country'' and suggested that the phrase ``in a place
outside the United States'' be used instead. The suggestion is being
adopted.
Section 1.653(a) is revised as proposed in the Notice of Proposed
Rulemaking. First, the references to certain paragraphs of Sec. 1.672
are revised to reflect the redesignation of those paragraphs. Second,
``of fact'' in the clause ``agreed statements of fact under
Sec. 1.672(f)'' is removed, because agreed statements under
Sec. 1.672(f), redesignated as Sec. 1.672(h), 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. Third, ``under Sec. 1.684(c)''
is removed in view of the removal of Sec. 1.684. Fourth, Sec. 1.653(a)
is revised to indicate that in addition to the types of testimony
already set forth therein, 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.
One comment suggested deleting ``transcripts of interrogatories,
cross interrogatories, and recorded answers'' on the ground that this
language is from Sec. 1.684, which is removed. The suggestion is not
being adopted, since there may be occasions when such testimony would
be appropriate and authorized by an administrative patent judge or the
Board.
Another comment suggested amending Sec. 1.653 to provide that a
party's record can include copies of videotapes of depositions and
inter partes tests (in addition to the transcripts of the depositions),
citing disparate treatment of this matter said to be occurring with
different administrative patent judges. The suggestion, which is
outside the scope of the present rulemaking, is not being adopted. The
matter of videotapes and other forms of proof will be considered in a
future rulemaking effort.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.653(b) is
revised to be consistent with the redesignation of certain paragraphs
of Sec. 1.672 and to remove the reference to Sec. 1.684(c), which is
removed. Section 1.653(b) is also revised for clarity, while
Secs. 1.653(c) (1) and (4) are revised 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.
One comment suggested that either Sec. 1.653(b) or Sec. 1.672(h) be
revised to specify when an ``an original agreed statement under
Sec. 1.672(h)'' is to be filed, since the due date for filing such a
statement is not provided in the current rules. The suggestion is
outside the scope of the current rulemaking and is not being adopted.
In the interim, parties should plan on filing an agreed statement as
soon as practical after it is agreed to, but an administrative patent
judge shall have discretion to accept the agreed statement at any
reasonable time.
Section 1.653(c)(5), which 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), is
removed and reserved, as proposed. The requirement is unnecessary
because 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.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.653(g) is
revised, and Secs. 1.653 (f) and (h) removed and reserved, to eliminate
the current distinction between typewritten and printed records.
Specifically, Sec. 1.653(g) is revised by changing ``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
order to emphasize the metric dimension, by removing the requirement
for justified margins, by requiring 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 by requiring 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. Section 1.653(i)
is revised, as proposed, 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).
Section 1.654(a) is revised, as proposed, 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. Most
hearings require no more than 30 minutes per side. A panel hearing oral
argument retains discretion to grant more time at a hearing.
The Notice of Proposed Rulemaking proposed amending Sec. 1.655(a)
to state that the standard of review for interlocutory orders is ``an
abuse of discretion'' rather than ``erroneous or an abuse of
discretion.'' As explained in the Notice of Proposed Rulemaking, the
recitation of a separatee ``error'' standard is believed to be
superfluous, because legal error is one of the alternative bases for
finding an abuse of discretion. Specifically, 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 [[Page 14515]] decision. Compare, e.g.,
Heat and Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1022,
228 USPQ 926, 930 (Fed. Cir. 1986); Western Electric Co. v. Piezo
Technology, Inc. v. Quigg, 860 F.2d 428, 430-31, 8 USPQ2d 1853, 1855
(Fed. Cir. 1988); Abrutyn v. Giovanniello, 15 F.3d 1048, 1050-51, 29
USPQ2d 1615, 1617 (Fed. Cir. 1994), all of which define the phrase
``abuse of discretion.'' One comment stated that the rule, as proposed
to be amended, in effect raises the standard of review because ``abuse
of discretion'' includes ``clear error'' but not mere ``error.'' In
view of the above-cited Federal Circuit decisions, it is believed that
the statement in the comment is not correct.
One comment suggested inserting a comma after ``correct'' in
penultimate sentence of Sec. 1.655(a).'' The suggestion is being
adopted.
Section 1.655(b) is revised to clarify the language concerning
matters that a party is not entitled to raise for consideration at
final hearing. Specifically, Sec. 1.655(b), as amended, provides that a
party shall not be entitled to raise for consideration at final hearing
any 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 was proposed in the Notice of Proposed Rulemaking to
amend Sec. 1.655(b) to state that ``[a] change of attorneys during the
interference generally does not constitute good cause.'' For the
reasons already given, it has been decided not to adopt the proposed
amendment to Sec. 1.655(b).
The Notice of Proposed Rulemaking also proposed to amend
Sec. 1.655(b) to create a rebuttable presumption that all claims of a
party that are designated as corresponding to a count are directed to
the same patentable invention for the purpose of determining
unpatentability in view of prior art. The Federal Circuit had
interpreted the former rule to suggest that the presumption applied
only where a party's claim corresponded exactly to a count and was
anticipated by prior art. In re Van Geuns, 988 F.2d 1181, 1185, 26
USPQ2d 1057, 1060 (Fed. Cir. 1993). The proposed revised rule would
have made it clear that the rebuttable presumption applies to all
claims that are designated as corresponding to the count, regardless of
whether the count is anticipated by (Sec. 102) or would have been
obvious view of (Sec. 103) the prior art. Specifically, the Notice of
Proposed Rulemaking proposed adding the following sentence: ``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 to an administrative patent judge or the
Board the separate patentability or lack of separate patentability of
claims designated to correspond to the count.'' Comments were filed in
opposition to the proposed amendment. One comment, for example, stated
that the proposed amendment, as well as the accompanying commentary in
the Notice of Proposed Rulemaking,
falsely assumes that claims cannot be separately patentable merely
because they have been designated as corresponding to the count,
i.e., merely because the claims are patentably indistinct from each
other. The falsity of this proposition is apparent from the practice
of the Patent and Trademark Office of designating as corresponding
to the count both the patentable and unpatentable claims of a party.
Two different comparisons are relevant: A party's claims with
other claims of the party and the claims of a party with the prior
art. The claims may be patentably indistinct from each other and,
thus, provide no basis for a motion under Sec. 1.633(c)(4), yet be
separately patentable over the prior art.
Accordingly, for example, a party should be able to respond to a
motion for judgment on grounds of unpatentability over the prior art
by arguing that some, but not necessarily all, of the designated
claims are patentable over the prior art, even though the party had
not previously moved to designate the separately patentable claims
as not corresponding to the count. Indeed, it is entirely possible
that no basis existed for making such a previous motion. The
proposed amended rule, however, forecloses a party from responding
to an attack on patentability of its claims by arguing that some,
but not all, of the claims are patentable over the prior art.
(Emphasis in original.) The comment included several illustrative
examples, including the following example said to be from actual
interference:
The count is directed to a broad generic class of compounds.
While the compounds are useful herbicides, the count and
corresponding claims are directed to compounds per se. The
applications of both parties contain designated claims substantially
corresponding to the count as well as claims directed to species
falling within the count.
The application of party A contains a designated claim directed
specifically to a species with [sic; within] the genus that
possesses ordinary activity for compounds of the claimed class;
i.e., the species compound is not separately patentable over the
genus. Thus, the claim to the species is not patentable over the
count if the count were prior art and is properly designated as
corresponding to the count.
Party B, during the motion period, moves for judgment under
Sec. 1.633(a) on the basis of a reference that is not prior art
against party B, only against party A. That reference discloses a
single compound falling squarely within the genus of the count * *
*, but that is significantly different structurally from the species
claimed in A's application. Furthermore, the reference does not
indicate that the disclosed compound has herbicidal properties and
it is shown in opposition to the motion for judgment that the
compound, in fact, possesses virtually no herbicidal activity.
Under this set of facts, the compound of the reference
anticipates party A's claim that corresponds * * * [exactly] to the
count. Nevertheless, the reference has no significance with regard
to the patentability of the species claim in party A's application.
In this particular case, the EIC [Examiner-in-Chief] had no
difficulty in partially granting the motion for judgment against
party A as to the generic claim, but denying the motion as to the
species claim. The interference was continued with the count
unchanged (because the reference was not prior art as to party B),
with party A ultimately prevailing on the issue of priority. Thus,
neither party received a generic claim, but party A ultimately
obtained a species claim that was patentably indistinct from the
genus of the count. Presumably under the new rules, party B would
have retained all its claims while all of party A's claims would be
found unpatentable.
This case clearly illustrates that a claim that is patentably
indistinct from the count and from a claim corresponding * * *
[exactly] to the count (i.e., a claim that cannot be designated as
not corresponding to the count), nevertheless can be patentable over
prior art that renders unpatentable a claim corresponding precisely
to the count. This case also illustrates that failure to file a
motion to designate certain claims as not corresponding to the count
cannot be taken as a concession that all of the designated claims
are unpatentable merely because the count (or a claim corresponding
precisely to the count) is unpatentable over the prior art.
Moreover, this situation is not an unusual one. It happens often in
chemical cases, particularly chemical cases dealing with
biologically active compounds.
Another comment questioned when a party that has failed to contest
the designation of a claim as corresponding to a count would ever have
occasion to later argue a lack of separate patentability.
The above comments are well taken. Accordingly, the proposal to
amend Sec. 1.655(b) to preclude a party from arguing separate
patentability or a lack of separate patentability of claims over prior
art in the absence of a Sec. 1.633(c) motion is hereby withdrawn.
Instead, [[Page 14516]] the rule is revised to read as follows: ``A
party that 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, or fails to timely argue the separate patentability of a
particular claim when the ground for unpatentability is first raised,
will not be permitted to later argue the separate patentability of that
claim with respect to that ground.'' Thus, a party that fails to timely
argue the separate patentability of a particular claim when the ground
for unpatentability is first raised will not be permitted to later
argue the separate patentability of that claim with respect to that
ground. As noted in the comment, often the first opportunity to address
patentability is in an opposition to a preliminary motion for judgment
under Sec. 1.633(a). In addition, inasmuch as a party filing a motion
under Sec. 1.633(a) must separately address each claim alleged to be
unpatentable, the opponent will be in a position to know how to prepare
an opposition, whereas under the current rules preparation of an
opposition separately addressing each claim is not clearly required by
the rules. The basic idea is that an opponent should have a fair
opportunity to address the patentability of any of the opponent's
claims when a patentability issue is first raised. Patentability can be
raised, for example, by a preliminary motion under Sec. 1.633(a) or sua
sponte by an administrative patent judge. However, a party is not
entitled to wait until the 11th hour in an interference to belatedly
raise for the first time an issue of separate patentability of claims
corresponding to a count.
As proposed in the Notice of Proposed Rulemaking, Sec. 1.655(c) is
revised by changing ``To prevent manifest injustice'' to ``In the
interest of justice'' to be consistent with the language used in other
interference rules.
Section 1.656 is revised, as proposed, by redesignating paragraphs
(b)(1) through (b)(6) as paragraphs (b)(3) through (b)(8),
respectively, and adding 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 of 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 there have been numerous
situations where related issues have been present before the Board
simultaneously or sequentially in an ex parte appeal and an
interference and vice versa. It was also proposed to amend current
paragraph (b)(3), redesignated as paragraph (b)(5), to specify that
statements of fact preferably should be presented in numbered
paragraphs. One comment suggested that numbered paragraphs be required.
The suggestion is being adopted.
As explained in the Notice of Proposed Rulemaking,
Sec. 1.656(b)(4), which is redesignated as Sec. 1.656(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 in
Suh 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''
interferences 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,
Sec. 1.656(b)(6), as adopted, is revised to require only 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 junior party is believed to include a new
argument in response to 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. The motion must be accompanied by a copy of the senior
party's reply.
Section Sec. 1.656(d) is revised, as proposed, 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 distinctions
between printed and typewritten briefs are eliminated. Recent briefs
filed in interference cases have been fairly long, e.g., 150 pages. The
parties should make every effort to file briefs which, to borrow the
words in one section of the patent statute, 35 U.S.C. 112, are ``full,
clear, concise, and exact.'' Consideration will be given in a future
rulemaking effort as to whether it might be appropriate to require a
party to submit both (1) Findings of fact and conclusions of law and
(2) a brief, wherein it might be presumed that the reader of the brief
is familiar with the proposed findings/conclusions. So that members of
the bar practicing before the Board in interference cases can be
apprised of how briefs are used at the Board, the following comments
are made. Briefs serve two purposes. First, briefs enable all three
panel members to prepare for oral argument. During the time a member
prepares for oral argument, often there is not time to become fully
familiar with the record, particularly where the brief is being read at
a location outside PTO, e.g., home. Second, when an opinion is authored
by one panel member and reviewed by the other two panel members, the
brief serves as a road map during the necessarily more thorough and
more complete review of the record. Whereas there may not be time to
``check'' the record during the preparation phase before oral argument,
there is time to ``check'' the record during the opinion writing and
review period. An effective brief, with or without proposed findings/
conclusions, is one which permits the members of the Board to
accomplish both purposes mentioned above.
In Sec. 1.656, paragraphs (e), (g) and (h) are revised, as
proposed, 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. [[Page 14517]]
The Notice of Proposed Rulemaking proposed amending the third
sentence of Sec. 1.656(g) to read as follows: ``Any proposed findings
of fact shall be in numbered paragraphs and supported by specific
references to the record.'' One comment suggested that ``and
supported'' be changed to ``and shall be supported.'' The suggestion is
being adopted.
Section 1.656(h) is revised, as proposed, 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.
Section 1.656(i) 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 nullify Sec. 1.656(i).
As proposed in the Notice of Proposed Rulemaking, ``respond'' is
changed to ``show good cause'' 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 revised, as proposed, to be consistent with the
changes to the definition of ``effective filing date'' in
Sec. 1.601(g). As revised, Sec. 1.657 will also 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. In other interferences the junior party has the
burden of establishing priority by a preponderance of the evidence. The
amendment codifies the holding of Price v. Symsek, 988 F.2d 1187, 1190-
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).
Section 1.658(a) is revised, as proposed, 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. 141-44, 146) unless a request for
reconsideration under paragraph (b) of this section is timely filed.
Section 1.658(b) is revised, as proposed, by removing the phrases
``[w]here reasonably possible'' and ``such that delivery is
accomplished'' as unnecessary, so that the sentence as revised reads as
follows: ``Service of the request for reconsideration shall be by hand
or Express Mail.'' As proposed, a sentence is also added specifying
that a decision on reconsideration is a final decision for the purpose
of judicial review (35 U.S.C. 141-44, 146). Section 1.658(b) is further
revised, as proposed, by changing ``reply to a request for
reconsideration'' to ``opposition to a request for reconsideration'' in
order to be consistent with the terminology employed in Sec. 1.640(c),
which concerns requests for reconsideration of decisions on preliminary
motions.
One comment suggested amending Sec. 1.658(b) to permit service of
requests for reconsideration by next-business-day commercial courier.
The suggestion is not being adopted at this time, but will be the
subject of a future rulemaking effort. In the interim, see the
discussion above concerning the interpretation to be given the phrase
``service * * * by hand.''
As proposed in the Notice of Proposed Rulemaking, Sec. 1.660 has
been revised 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 and 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. It was also proposed to provide
that the notice contemplated by this section is notice addressed
specifically to an administrative patent judge or the Board. One
comment suggested that rather than requiring the notice to be
``addressed specifically to an administrative patent judge or the
Board,'' the rule requires that it be ``addressed to the administrative
patent judge in charge of the interference in which the application or
patent is involved.'' The suggestion is being adopted.
Section 1.662(a) is revised, as proposed, by changing ``filing by
an applicant or patentee'' in the second sentence to ``filing by a
party'' to make it clear that a request for adverse judgment, including
a written disclaimer of the invention defined by a count, a concession
of priority or unpatentability of the subject matter of a count,
abandonment of the invention defined by a count and abandonment of the
contest as to a count, can be signed by the party's attorney or agent
of record. For the same reason, in the third sentence of paragraph (a),
which concerns abandonment of an involved application ``by an
applicant'' is removed and ``applicant'' is revised to read
``application.''
In Sec. 1.662(b), the first sentence is revised, as proposed, by
changing ``omits all claims of the patent corresponding to the counts
of the interference for the purpose of avoiding the interference'' to
read ``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 any claim that corresponds to a count, including a
new or amended claim that should be designated as corresponding to the
count. Similarly, ``reissue other than for the purpose of avoiding the
interference'' is changed to ``reissue which includes a claim that
corresponds to a count,'' which means corresponds to the count or
should be designated to correspond to the count.
Section 1.674(a), which specifies before whom depositions may be
taken, the reference to ``United States or a territory or insular
possession of the United States'' is removed, as proposed, in order to
make the paragraph applicable to depositions for testimony compelled in
foreign countries.
Section 1.675(d), which concerns reading and signing of a
transcript by the witness, is revised, as proposed, 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)). One
comment suggested that Sec. 1.675 be revised to recognize the witness's
right to make corrections to the transcript prior to signing, as in
Fed. R. Civ. P. 30(e), second sentence. The suggestion, which is
outside the scope of the present rulemaking, is not being adopted. The
substance of the suggestion will be considered in a future rulemaking
effort.
Section 1.676(a)(4) is revised, as proposed, by changing ``opposing
party'' to ``opponent.'' [[Page 14518]]
Section 1.677(a), which in its current form specifies the required
form for transcripts of depositions, is revised, as proposed, to also
apply to affidavits, by removing the reference to ``typewritten''
matter, changing ``pica-type'' to ``11 point type,'' and changing
``8\1/2\x11 inches (21.8 by 27.9 cm.)'' to ``21.8 by 27.9 cm. (8\1/
2\x11 inches).'' For the reasons given above in the discussion of a
``developing record,'' Sec. 1.677(b), which concerns numbering of
exhibits submitted with affidavits and deposition transcripts, is
revised to change ``consecutively'' to ``consecutively to the extent
possible.''
In Sec. 1.678, the section heading is changed, as proposed, from
``Transcript of deposition must be filed'' to ``Time for filing
transcript of deposition'' for clarity. The text is revised by changing
the time for filing the certified transcript from 45 days to one month
after the deposition.
Section 1.679 is revised as proposed by changing ``transcript'' to
``transcript of a deposition'' for clarity and ``for printing
(Sec. 1.653(g))'' is removed as unnecessary.
In Sec. 1.682, paragraph (a) is revised, as proposed, in the
``Miscellaneous Amendments'' part of the Notice of Proposed Rulemaking
in the following respects. First, ``identified during the taking of
testimony of a witness'' is changed to ``identified in an affidavit or
on the record during an oral deposition of a witness'' for clarity.
Second, Sec. 1.682(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))'') is removed and reserved 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. Third, the
first word in each of paragraphs (a)(2), (a)(3) and (a)(4) is
capitalized.
Section 1.685(d) is revised, as proposed, for clarification.
Section 1.687(c) is revised, as proposed, to refer to Sec. 1.647
concerning translations of documents in a foreign language.
One comment stated that the lack of discovery available under
Sec. 1.687(c) has prevented some interferences from reaching the
``correct'' result. According to the comment, a different result might
have been reached if the discovery available under the Federal Rules of
Civil Procedure had been allowed. The comment suggests that PTO
consider authorizing discovery similar to the Fed. R. Civ. P. in
interferences. The suggestion, which is outside the scope of the
present rulemaking, is not being adopted.
In Sec. 1.690(a), ``37 CFR, Subpart E of Part 1'' is revised to
read ``this subpart.''
Other Considerations
These 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 rule changes 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 these 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.
PTO 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, part 1 of title 37 of the
Code of Federal Regulations is amended as set forth below:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citations for 37 CFR Part 1 is revised to read as
follows:
Authority: 35 U.S.C. 6 and 23, unless otherwise noted.
2. Section 1.11(e) is revised 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, paragraphs (c)(1) through (c)(7) are redesignated
as paragraphs (c)(3) through (c)(9); paragraphs (a), (c) introductory
text, newly designated paragraphs (c)(7), (c)(8) introductory text, and
(c)(8)(v), and (d) are revised; and paragraphs (c)(1) and (c)(2) are
added to read follows:
Sec. 1.192 Appellant's brief.
(a) Appellant shall, within 2 months from the date of the notice of
appeal under Sec. 1.191 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 appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will 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 indicated below unless the brief is filed by
an applicant who is not represented by a registered practitioner:
(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.
(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.
* * * * *
(7) Grouping of claims. For each ground of rejection which
appellant contests and which applies to a group of two or more claims,
the Board shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of that claim
alone unless a statement is included that the claims of the group do
not stand or fall together and, in the argument under paragraph (c)(8)
of this section, appellant explains why the claims of the group are
believed to be separately patentable. Merely pointing out differences
in what the claims cover is [[Page 14519]] not an argument as to why
the claims are separately patentable.
(8) Argument. The contentions of appellant with respect to each of
the issues presented for review in paragraph (c)(6) 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) 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.
* * * * *
(d) If a brief is filed which does not comply with all the
requirements of paragraph (c) of this section, 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 appellant does
not file an amended brief during the one-month period, or files an
amended brief which does not overcome all the reasons for non-
compliance stated in the notification, the appeal will stand dismissed.
4. Section 1.601 is amended by revising paragraphs (f), (g), (j),
(k), (l), (m), (n), and (q) and adding new paragraphs (r) and (s) to
read as follows:
Sec. 1.601 Scope of rules, definitions.
* * * * *
(f) A count defines the interfering subject matter between two or
more applications or between one or more applications and one or more
patents. At the time the interference is initially declared, a count
should be broad enough to encompass all of the claims that are
patentable over the prior art and designated to correspond to the
count. When there is more than one count, each count shall define a
separate patentable invention. Any claim of an application or patent
that is designated to correspond 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 that is designated to correspond to a count and
is identical to the count is said to correspond exactly to the count. A
claim of a patent or application that is designated to correspond to a
count but is not identical to 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.
(g) The effective filing date of an application is the filing date
of an earlier application, benefit of which is 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 is the filing date of an earlier application, benefit of
which is accorded to the patent under 35 U.S.C. 119, 120, 121, or 365
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 that is designated to correspond to a count and at least one
claim of an opponent that is designated to correspond 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 may contact to set times and take other action in the
interference.
(l) A party is an applicant or patentee involved in the
interference or 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 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.
(m) A senior party is the party with the earliest effective filing
date as to all counts or, if there is no party with the earliest
effective filing date as to all counts, the party with the earliest
filing date. A junior party is any other party.
(n) Invention ``A'' is the same patentable invention as an
invention ``B'' when invention ``A'' is the same as (35 U.S.C. 102) or
is obvious (35 U.S.C. 103) in view of invention ``B'' assuming
invention ``B'' is prior art with respect to invention ``A''. Invention
``A'' is a separate patentable invention with respect to invention
``B'' when invention ``A'' is new (35 U.S.C. 102) and non-obvious (35
U.S.C. 103) in view of invention ``B'' assuming invention ``B'' is
prior art with respect to invention ``A''.
* * * * *
(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 or 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, Pub. L.
103-182, 107 Stat. 2060 (19 U.S.C. 3301).
(s) WTO member country means WTO member country as defined in
section 2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108
Stat. 4813 (19 U.S.C. 3501).
5. Section 1.602 is 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 the change.
6. Section 1.603 is 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 application must contain, or be amended to contain, at least one
claim that is patentable over the prior art and 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(a)(1) is revised 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 its application that corresponds to the proposed count,
* * * * *
8. Section 1.605(a) is revised 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 examiner may
suggest that an applicant present a claim drawn to an invention claimed
in another [[Page 14520]] 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 call the examiner's attention to other claims already in the
application or presented with the suggested claim and explain why the
other claims would be more appropriate to be designated to correspond
to a count in any interference which may be declared.
* * * * *
9. Section 1.606 is 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.
The applications must contain, or be amended to contain, at least one
claim that is patentable over the prior art and 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 application claim that is patentable over
the prior art and designated to correspond to the count or any patent
claim designated to correspond to the count. Any single patent claim
designated to correspond to the count will be presumed, subject to a
motion under Sec. 1.633(c), not to contain separate patentable
inventions.
10. Section 1.607 is 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 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
* * * * *
(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 revised to read as follows:
Sec. 1.608 Interference between an application and a patent; prima
facie showing by applicant.
(a) When the effective filing date of an application is three
months or less after the effective filing date of a patent, before an
interference will be declared, either the applicant or the applicant's
attorney or agent of record shall file a statement alleging that there
is a basis upon which the applicant is entitled to a judgment relative
to the patentee.
(b) When the effective filing date of an application is more than
three months after the effective filing date of a patent, the
applicant, before an interference will be declared, shall file 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 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 effective filing date of
the patent. To facilitate preparation of a record (Sec. 1.653(g)) for
final hearing, an applicant should file affidavits on paper which is
21.8 by 27.9 cm. (8\1/2\ x 11 inches). 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 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 amended by revising paragraphs (b)(1), (b)(2)
and (b)(3) to read as follows:
Sec. 1.609 Preparation of interference papers by examiner.
* * * * *
(b) * * *
(1) The proposed count or counts and, if there is more than one
count proposed, explaining why the counts define different patentable
inventions;
(2) The claims of any application or patent which correspond to
each count, explaining 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 do not correspond
to each count and explaining why each claim designated as not
corresponding to any count is not directed to the same patentable
invention as any count; and
* * * * *
13. Section 1.610 is revised to read as follows:
Sec. 1.610 Assignment of interference to administrative patent judge,
time period for completing interference.
(a) Each interference will be declared by an administrative patent
judge who may enter all interlocutory orders in the interference,
except that only the Board shall hear oral argument at final hearing,
enter a decision under Secs. 1.617, 1.640(e), 1.652, 1.656(i) or 1.658,
or enter any other order which terminates the interference.
(b) As necessary, another administrative patent judge may act in
place of the one who declared the interference. At the discretion of
the administrative patent judge 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 assigned to the interference.
Times for taking action shall be set and the administrative
[[Page 14521]] patent judge 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 may hold a conference with the
parties to consider simplification of any issues, the necessity or
desirability of amendments to counts, the possibility of obtaining
admissions of fact and genuineness of documents which will avoid
unnecessary proof, any limitations on the number of expert witnesses,
the time and place for conducting a deposition (Sec. 1.673(g)), and any
other matter as may aid in the disposition of the interference. After a
conference, the administrative patent judge may enter any order which
may be appropriate.
(e) The administrative patent judge may determine a proper course
of conduct in an interference for any situation not specifically
covered by this part.
14. Section 1.611 is amended by redesignating paragraph (c)(8) as
paragraph (c)(9); adding a new paragraph (c)(8); and revising
paragraphs (b), (c)(6), (c)(7), 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 may 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
order publication of an appropriate notice in the Official Gazette.
(c) * * *
(6) The count or counts and, if there is more than one count, the
examiner's explanation why the counts define different patentable
inventions;
(7) The claim or claims of any application or any patent which
correspond to each count;
(8) The examiner's explanation as to 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 any
count is not directed to the same patentable invention as any count;
and
* * * * *
(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 notice that a preliminary statement has been filed as
provided in Sec. 1.621(b); and
(3) Filing preliminary motions authorized by Sec. 1.633.
* * * * *
15. Section 1.612 is 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 opponent's involved application
or access to any pending application referred to in the 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 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 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 is of the opinion that an attorney or agent should be
disqualified, the administrative patent judge 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 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 amended by revising paragraphs (a) and (c) to
read as follows:
Sec. 1.614 Jurisdiction over interference.
(a) The Board acquires 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 may for a limited purpose restore jurisdiction to the
examiner over any application involved in the interference.
18. Section 1.615 is revised 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.
(b) Ex parte prosecution as to specified matters may be continued
concurrently with the interference with the consent of the
administrative patent judge.
19. Section 1.616 is revised to read as follows:
Sec. 1.616 Sanctions for failure to comply with rules or order or for
taking and maintaining a frivolous position.
(a) An administrative patent judge 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 or the Board. An appropriate sanction may include among
others entry of an order:
(1) Holding certain facts to have been established in the
interference;
(2) Precluding a party from filing a paper;
(3) Precluding a party from presenting or contesting a particular
issue;
(4) Precluding a party from requesting, obtaining, or opposing
discovery;
(5) 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 and
maintaining a frivolous position in papers filed in the interference.
(c) To the extent that an administrative patent judge or the Board
has authorized a party to compel the taking of testimony or the
production of documents or things from an individual or entity located
in a NAFTA country or a WTO member country concerning knowledge, use,
or other activity relevant to proving or disproving a date of invention
(Sec. 1.671(h)), but the testimony, documents or things have
[[Page 14522]] 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.
(d) A party may file a motion (Sec. 1.635) for entry of an order
imposing sanctions, the drawing of adverse inferences or other action
under paragraph (a), (b) or (c) of this section. Where an
administrative patent judge or the Board on its own initiative
determines that a sanction, adverse inference or other action against a
party may be appropriate under paragraph (a), (b) or (c) of this
section, the administrative patent judge or the Board shall enter an
order for the party to show cause why the sanction, adverse inference
or other action is not appropriate. The Board shall take action in
accordance with the order unless, within 20 days after the date of the
order, the party files a paper which shows good cause why the sanction,
adverse inference or other action would not be appropriate.
20. Section 1.617 is 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 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 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 the evidence fails to show that the applicant is prima
facie entitled to a judgment relative to the patentee, the
administrative patent judge 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
administrative patent judge. 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 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 shall not be filed by any opponent. An opponent may
not request a hearing.
(e) Within a time authorized by the administrative patent judge, 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 or the Board shall decide whether the
evidence submitted under Sec. 1.608(b) and any additional evidence
properly submitted under paragraphs (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
request 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 shall set a date and time for
the hearing. Unless otherwise ordered by the administrative patent
judge 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 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 return to a
party any paper presented by the party when the filing of the paper is
not authorized by, or is not in compliance with the requirements of,
this subpart. Any paper returned will not thereafter be considered 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 or the Board.
* * * * *
22. Section 1.621 is 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.
23. Section 1.622 is 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), a WTO member country (and, if so, which WTO member country),
or in a place other than the United States, a NAFTA country, or a WTO
member country. If made in a place other than the United States, a
NAFTA country, or a WTO member country, the preliminary statement shall
state whether the party is entitled to the benefit of 35 U.S.C.
104(a)(2).
24. Section 1.623 is amended by revising the section heading and
paragraph (a) introductory text to read as follows:
Sec. 1.623 Preliminary statement; invention made in United States, a
NAFTA country, or a WTO member country.
(a) When the invention was made in the United States, a NAFTA
country, or a WTO member country, or a party is entitled to the benefit
of 35 U.S.C. 104(a)(2), the preliminary statement [[Page 14523]] must
state the following facts as to the invention defined by each count:
* * * * *
25. Section 1.624 is amended by revising the section heading and
paragraphs (a) and (c) to read as follows:
Sec. 1.624 Preliminary statement; invention made in a place other than
the United States, a NAFTA country, or a WTO member country.
(a) When the invention was made in a place other than the United
States, a NAFTA country, or a WTO member country and a party intends to
rely on introduction of the invention into the United States, a NAFTA
country, or a WTO member 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, a NAFTA country, or a WTO member
country.
(2) The date on which a written description of the invention was
first introduced into the United States, a NAFTA country, or a WTO
member country.
(3) The date on which the invention was first disclosed to another
person in the United States, a NAFTA country, or a WTO member country.
(4) The date on which the inventor's conception of the invention
was first introduced into the United States, a NAFTA country, or a WTO
member country.
(5) The date on which an actual reduction to practice of the
invention was first introduced into the United States, a NAFTA country,
or a WTO member country. If an actual reduction to practice of the
invention was not introduced into the United States, a NAFTA country,
or a WTO member country, the preliminary amendment shall so state.
(6) The date after introduction of the inventor's conception into
the United States, a NAFTA country, or a WTO member country when active
exercise of reasonable diligence in the United States, a NAFTA country,
or a WTO member country toward reducing the invention to practice
began.
* * * * *
(c) When a party alleges under paragraph (a)(1) of this section
that a drawing was introduced into the United States, a NAFTA country,
or a WTO member country, a copy of that drawing shall be filed with and
identified in the preliminary statement. When a party alleges under
paragraph (a)(2) of this section that a written description of the
invention was introduced into the United States, a NAFTA country, or a
WTO member country, a copy of that written description shall be filed
with and identified in the preliminary statement. See Sec. 1.628(b)
when a copy of the first drawing or first written description
introduced in the United States, a NAFTA country, or a WTO member
country cannot be filed with the preliminary statement.
26. Section 1.625 is amended by revising paragraph (a) introductory
text to read as follows:
Sec. 1.625 Preliminary statement; derivation by an opponent.
(a) When a party intends to prove derivation by an opponent from
the party, the preliminary statement must state the following as to the
invention defined by each count:
* * * * *
27. Section 1.626 is revised to read as follows:
Sec. 1.626 Preliminary statement; earlier application.
When a party does not intend to present evidence to prove a
conception or an actual reduction to practice and the party intends to
rely solely on the filing date of an earlier filed application to prove
a constructive reduction to practice, the preliminary statement may so
state and identify the earlier filed application with particularity.
28. Section 1.627(b) is revised to read as follows:
Sec. 1.627 Preliminary statement; sealing before filing, opening of
statement.
* * * * *
(b) A preliminary statement may be opened only at the direction of
an administrative patent judge.
29. Section 1.628 is revised to read as follows:
Sec. 1.628 Preliminary statement; correction of error.
(a) A material error arising through inadvertence or mistake in
connection with a preliminary statement or drawings or a written
description submitted therewith or omitted therefrom may be corrected
by a motion (Sec. 1.635) for leave to file a corrected statement. The
motion shall be supported by an affidavit stating the date the error
was first discovered, shall be accompanied by the corrected statement
and shall be filed as soon as practical after discovery of the error.
If filed on or after the date set by the administrative patent judge
for service of preliminary statements, the motion shall also show that
correction of the error is essential to the interest of justice.
(b) When a party cannot attach a copy of a drawing or written
description to the party's preliminary statement as required by
Sec. 1.623(c), Sec. 1.624(c) or Sec. 1.625(c), the party shall show
good cause and explain in the preliminary statement why a copy of the
drawing or written description cannot be attached to the preliminary
statement and shall attach to the preliminary statement the earliest
drawing or written description made in or introduced into the United
States, a NAFTA country, or a WTO member country which is available.
The party shall file a motion (Sec. 1.635) to amend its preliminary
statement promptly after the first drawing, first written description,
or drawing or written description first introduced into the United
States, a NAFTA country, or a WTO member country becomes available. A
copy of the drawing or written description may be obtained, where
appropriate, by a motion (Sec. 1.635) for additional discovery under
Sec. 1.687 or during a testimony period.
30. Section 1.629 is amended by revising paragraphs (a), (c) (1)
and (d) to read as follows:
Sec. 1.629 Effect of preliminary statement.
(a) A party shall be strictly held to any date alleged in the
preliminary statement. Doubts as to definiteness or sufficiency of any
allegation in a preliminary statement or compliance with formal
requirements will be resolved against the party filing the statement by
restricting the party to its effective filing date or to the latest
date of a period alleged in the preliminary statement, as may be
appropriate. A party may not correct a preliminary statement except as
provided by Sec. 1.628.
* * * * *
(c) * * *
(1) Shall be restricted to the party's effective filing date and
* * * * *
(d) If a party files a preliminary statement which contains an
allegation of a date of first drawing or first written description and
the party does not file a copy of the first drawing or written
description with the preliminary statement as required by
Sec. 1.623(c), Sec. 1.624(c), or Sec. 1.625(c), the party will be
restricted to the party's effective filing date as to that allegation
unless the party complies with Sec. 1.628(b). The content of any
drawing or written description submitted with a preliminary statement
will not normally be evaluated or considered by the Board.
* * * * *
31. Section 1.630 is revised to read as follows: [[Page 14524]]
Sec. 1.630 Reliance on earlier application.
A party shall not be entitled to rely on the filing date of an
earlier filed application unless the earlier application is identified
(Sec. 1.611(c)(5)) in the notice declaring the interference or the
party files a preliminary motion under Sec. 1.633 seeking the benefit
of the filing date of the earlier application.
32. Section 1.631(a) is revised to read as follows:
Sec. 1.631 Access to preliminary statement, service of preliminary
statement.
(a) Unless otherwise ordered by an administrative patent judge,
concurrently with entry of a decision on preliminary motions filed
under Sec. 1.633 any preliminary statement filed under Sec. 1.621(a)
shall be opened to inspection by the senior party and any junior party
who filed a preliminary statement. Within a time set by the
administrative patent judge, a party shall serve a copy of its
preliminary statement on each opponent who served a notice under
Sec. 1.621(b.
* * * * *
33. Section 1.632 is revised to read as follows:
Sec. 1.632 Notice of intent to argue abandonment, suppression or
concealment by opponent.
A notice shall be filed by a party who intends to argue that an
opponent has abandoned, suppressed, or concealed an actual reduction to
practice (35 U.S.C. 102(g)). A party will not be permitted to argue
abandonment, suppression, or concealment by an opponent unless the
notice is timely filed. Unless authorized otherwise by an
administrative patent judge, a notice is timely when filed within ten
(10) days after the close of the testimony-in-chief of the opponent.
34. Section 1.633 is amended by revising paragraphs (a), (b), (f),
(g) and (i) to read as follows:
Sec. 1.633 Preliminary motions.
* * * * *
(a) A motion for judgment against an opponent's claim designated to
correspond to a count on the ground that the claim is not patentable to
the opponent. The motion shall separately address each claim alleged to
be unpatentable. In deciding an issue raised in a motion filed under
this paragraph (a), a claim will be construed in light of the
specification of the application or patent in which it appears. A
motion under this paragraph shall not be based on:
(1) Priority of invention by the moving party as against any
opponent or
(2) Derivation of the invention by an opponent from the moving
party. See Sec. 1.637(a).
(b) A motion for judgment on the ground that there is no
interference-in-fact. A motion under this paragraph is proper only if
the interference involves a design application or patent or a plant
application or patent or no claim of a party which corresponds to a
count is identical to any claim of an opponent which corresponds to
that count. See Sec. 1.637(a). When claims of different parties are
presented in ``means plus function'' format, it may be possible for the
claims of the different parties not to define the same patentable
invention even though the claims contain the same literal wording.
* * * * *
(f) A motion to be accorded the benefit of the filing date of an
earlier filed application. See Sec. 1.637(a) and (f).
(g) A motion to attack the benefit accorded an opponent in the
notice declaring the interference of the filing date of an earlier
filed application. See Sec. 1.637(a) and (g).
* * * * *
(i) When a motion is filed under paragraph (a), (b), or (g) of this
section, an opponent, in addition to opposing the motion, may file a
motion to redefine the interfering subject matter under paragraph (c)
of this section, a motion to substitute a different application under
paragraph (d) of this section, or a motion to add a reissue application
to the interference under paragraph (h) of this section.
* * * * *
35. Section 1.636 is revised to read as follows:
Sec. 1.636 Motions, time for filing.
(a) A preliminary motion under Sec. 1.633(a) through (h) shall be
filed within a time period set by an administrative patent judge.
(b) A preliminary motion under Sec. 1.633(i) or (j) shall be filed
within 20 days of the service of the preliminary motion under
Sec. 1.633(a), (b), (c)(1), or (g) unless otherwise ordered by an
administrative patent judge.
(c) A motion under Sec. 1.634 shall be diligently filed after an
error is discovered in the inventorship of an application or patent
involved in an interference unless otherwise ordered by an
administrative patent judge.
(d) A motion under Sec. 1.635 shall be filed as specified in this
subpart or when appropriate unless otherwise ordered by an
administrative patent judge.
36. Section 1.637 is amended by revising paragraphs (a), (b),
(c)(1)(v), (c)(1)(vi), (c)(2)(ii), (c)(2)(iii), (c)(3)(ii), (c)(4)(ii),
(d), introductory text, (e)(1)(viii), (e)(2)(vii), (f)(2), and (h),
(4); removing paragraphs (c)(2)(iv), (c)(3)(iii), and (d) (4); and
adding paragraphs (c)(1)(vii), (e)(1)(ix), and (e)(2)(viii) to read as
follows:
Sec. 1.637 Content of motions.
(a) A party filing a motion has the burden of proof to show that it
is entitled to the relief sought in the motion. Each motion shall
include a statement of the precise relief requested, a statement of the
material facts in support of the motion, in numbered paragraphs, and a
full statement of the reasons why the relief requested should be
granted. If a party files a motion for judgment under Sec. 1.633(a)
against an opponent based on the ground of unpatentability over prior
art, and the dates of the cited prior art are such that the prior art
appears to be applicable to the party, it will be presumed, without
regard to the dates alleged in the preliminary statement of the party,
that the cited prior art is 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.
(b) Unless otherwise ordered by an administrative patent judge or
the Board, a motion under Sec. 1.635 shall contain a certificate by the
moving party stating that the moving party has conferred with all
opponents in an effort in good faith to resolve by agreement the issues
raised by the motion. The certificate shall indicate whether any
opponent plans to oppose the motion. The provisions of this paragraph
do not apply to a motion to suppress evidence (Sec. 1.656(h)).
(c) * * *
(1) * * *
(v) Show that each proposed count defines a separate patentable
invention from every other count proposed to remain in the
interference.
(vi) Be accompanied by a motion under Sec. 1.633(f) requesting the
benefit of the filing date of any earlier filed application, if benefit
of the earlier filed application is desired with respect to a proposed
count.
(vii) If an opponent is accorded the benefit of the filing date of
an earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit 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.
(2) * * *
(ii) Show that the claim proposed to be amended or added defines
the same patentable invention as the count. [[Page 14525]]
(iii) Show the patentability to the applicant of each claim
proposed to be amended or added and apply the terms of the claim
proposed to be amended or added to the disclosure of the application;
when necessary a moving party applicant shall file with the motion a
proposed amendment to the application amending the claim corresponding
to the count or adding the proposed additional claim to the
application.
(3) * * *
(ii) Show the claim defines the same patentable invention as
another claim whose designation as corresponding to the count the
moving party does not dispute.
(4) * * *
(ii) Show that the claim does not defined the same patentable
invention as any other claim whose designation in the notice declaring
the interference as corresponding to the count the party does not
dispute.
* * * * *
(d) A preliminary motion under Sec. 1.633(d) to substitute a
different application of the moving party shall:
* * * * *
(e) * * *
(1) * * *
(viii) Be accompanied by a motion under Sec. 1.633(f) requesting
the benefit of the filing date of an earlier filed application, if
benefit is desired with respect to a proposed count.
(ix) If an opponent is accorded the benefit of the filing date of
an earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit 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.
(2) * * *
(vii) Be accompanied by a motion under Sec. 1.633(f) requesting the
benefit of the filing date of an earlier filed application, if benefit
is desired with respect to a proposed count.
(viii) If an opponent is accorded the benefit of the filing date of
an earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit 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.
(f) * * *
(2) When an earlier application is an application filed in the
United States, certify that a complete copy of the file of the earlier
application, except for documents filed under Sec. 1.131 or Sec. 1.608,
has been served on all opponents. When the earlier application is an
application filed in a foreign country, certify that a copy of the
application has been served on all opponents. If the earlier filed
application is not in English, the requirements of Sec. 1.647 must also
be met.
* * * * *
(h) * * *
(4) Be accompanied by a motion under Sec. 1.633(f) requesting the
benefit of the filing date of any earlier filed application, if benefit
is desired.
37. Section 1.638 is revised to read as follows:
Sec. 1.638 Opposition and reply; time for filing opposition and reply.
(a) Unless otherwise ordered by an administrative patent judge, any
opposition to any motion shall be filed within 20 days after service of
the motion. An opposition shall identify any material fact set forth in
the motion which is in dispute and include an argument why the relief
requested in the motion should be denied.
(b) Unless otherwise ordered by an administrative patent judge, any
reply shall be filed within 15 days after service of the opposition. A
reply shall be directed only to new points raised in the opposition.
38. Section 1.639 is amended by revising paragraphs (a), (b), (c)
and (d)(1) to read as follows:
Sec. 1.639 Evidence in support of motion, opposition, or reply.
(a) Except as provided in paragraphs (c) through (g) of this
section, proof of any material fact alleged in a motion, opposition, or
reply must be filed and served with the motion, opposition, or reply
unless the proof relied upon is part of the interference file or the
file of any patent or application involved in the interference or any
earlier application filed in the United States of which a party has
been accorded or seeks to be accorded benefit.
(b) Proof may be in the form of patents, printed publications, and
affidavits. The pages of any affidavits filed under this paragraph
shall, to the extent possible, be given sequential numbers, which shall
also serve as the record page numbers for the affidavits in the event
they are included in the party's record (Sec. 1.653). Any patents and
printed publications submitted under this paragraph and any exhibits
identified in affidavits submitted under this paragraph shall, to the
extent possible, be given sequential exhibit numbers, which shall also
serve as the exhibit numbers in the event the patents, printed
publications and exhibits are filed with the party's record
(Sec. 1.653).
(c) If a party believes that additional evidence in the form of
testimony that is unavailable to the party is necessary to support or
oppose a preliminary motion under Sec. 1.633 or a motion to correct
inventorship under Sec. 1,634, the party shall describe the nature of
any proposed testimony as specified in paragraphs (d) through (g) of
this section. If the administrative patent judge finds that testimony
is needed to decide the motion, the administrative patent judge may
grant appropriate interlocutory relief and enter an order authorizing
the taking of testimony and deferring a decision on the motion to final
hearing.
(d) * * *
(1) Identify the person whom it expects to use as an expert;
* * * * *
39. Section 1.640 is amended by revising paragraphs (a), (b), (c),
(d) introductory text, (d)(1), (d)(3) and (e) to read as follows:
Sec. 1.640 Motions, hearing and decision, redeclaration of
interference, order to show cause.
(a) A hearing on a motion may be held in the discretion of the
administrative patent judge. The administrative patent judge shall set
the date and time for any hearing. The length of oral argument at a
hearing on a motion is a matter within the discretion of the
administrative patent judge. An administrative patent judge may direct
that a hearing take place by telephone.
(b) Unless an administrative patent judge or the Board is of the
opinion that an earlier decision on a preliminary motion would
materially advance the resolution of the interference, decision on a
preliminary motion shall be deferred to final hearing. Motions not
deferred to final hearing will be decided by an administrative patent
judge. An administrative patent judge may consult with an examiner in
deciding motions. An administrative patent judge may take up motions
for decisions in any order, may grant, deny, or dismiss any motion, and
may take such other action which will secure the just, speedy, and
inexpensive determination of the interference. 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. If
the administrative patent judge determines [[Page 14526]] 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 on motions or on matters raised sua sponte by
the administrative patent judge that the party wishes to have reviewed
at final hearing as well as identifying any deferred motions that the
party wishes to have considered at final hearing. Any evidence that a
party wishes to have considered with respect to the decisions and
deferred motions identified by the party or by an opponent for
consideration or review at final hearing shall be filed or, if
appropriate, noticed under Sec. 1,671(e) during the testimony-in-chief
period of the party.
(1) When appropriate after the time expires for filing replies to
oppositions to preliminary motions, the administrative patent judge
will set a time for filing any amendment to an application involved in
the interference and for filing a supplemental preliminary statement as
to any new counts which may become involved in the interference if a
preliminary motion to amend or substitute a count has been filed.
Failure or refusal of a party to timely present an amendment required
by an administrative patent judge shall be taken without further action
as a disclaimer by that party of the invention involved. A supplemental
preliminary statement shall meet the requirements specified in
Secs. 1.623, 1.624, 1.625, or 1.626, but need not be filed if a party
states that it intends to rely on a preliminary statement previously
filed under Sec. 1.621(a). At an appropriate time in the interference,
and when necessary, an order will be entered redeclaring the
interference.
(2) After the time expires for filing preliminary motions, a
further preliminary motion under Sec. 1.633 will not be considered
except as provided by Sec. 1.645(b).
(c) When a decision on any motion under Secs. 1.633, 1.634, or
1.635 or on any matter raised sua sponte by an administrative patent
judge is entered which does not result in the issuance of an order to
show cause under paragraph (d) of this section, a party may file a
request for reconsideration within 14 days after the date of the
decision. The request for reconsideration shall be filed and served by
hand or Express Mail. The filing of a request for reconsideration will
not stay any time period set by the decision. The request for
reconsideration shall specify with particularity the points believed to
have been misapprehended or overlooked in rendering the decision. No
opposition to a request for reconsideration shall be filed unless
requested by an administrative patent judge or the Board. A decision
ordinarily will not be modified unless an opposition has been requested
by an administrative patent judge or the Board. The request for
reconsideration normally will be acted on by the administrative patent
judge or the panel of the Board which issued the decision.
(d) An administrative patent judge may issue an order to show cause
why judgment should not be entered against a party when:
(1) A decision on a motion or on a matter raised sua sponte by an
administrative patent judge is entered which is dispositive of the
interference against the party as to any count;
* * * * *
(3) The party is a junior party whose preliminary statement fails
to overcome the effective filing date of another party.
(e) When an order to show cause is issued under paragraph (d) of
this section, the Board shall enter judgment in accordance with the
order unless, within 20 days after the date of the order, the party
against whom the order issued files a paper which shows good cause why
judgment should not be entered in accordance with the order.
(1) If the order was issued under paragraph (d)(1) of this section,
the paper may:
(i) Request that final hearing be set to review any decision which
is the basis for the order as well as any other decision of the
administrative patent judge that the party wishes to have reviewed by
the Board at final hearing or
(ii) Fully explain why judgment should not be entered.
(2) Any opponent may file a response to the paper within 20 days of
the date of service of the paper. If the order was issued under
paragraph (d)(1) of this section and the party's paper includes a
request for final hearing, the opponent's response must identify every
decision of the administrative patent judge that the opponent wishes to
have reviewed by the Board at a final hearing. If the order was issued
under paragraph (d)(1) of this section and the paper does not include a
request for final hearing, the opponent's response may include a
request for final hearing, which must identify every decision of the
administrative patent judge that the opponent wishes to have reviewed
by the Board at a final hearing. Where only the opponent's response
includes a request for a final hearing, the party filing the paper
shall, within 14 days from the date of service of the opponent's
response, file a reply identifying any other decision of the
administrative patent judge that the party wishes to have reviewed by
the Board at a final hearing.
(3) The paper or the response should be accompanied by a motion
(Sec. 1.635) requesting a testimony period if either party wishes to
introduce any evidence to be considered at final hearing (Sec. 1.671).
Any evidence that a party wishes to have considered with respect to the
decisions and deferred motions identified for consideration or review
at final hearing shall be filed or, if appropriate, noticed under
Sec. 1.671(e) during the testimony period of the party. A request for a
testimony period shall be construed as including a request for final
hearing.
(4) If the paper contains an explanation of why judgment should not
be entered in accordance with the order, and if no party has requested
a final hearing, the decision that is the basis for the order shall be
reviewed based on the contents of the paper and the response. If the
paper fails to show good cause, the Board shall enter judgment against
the party against whom the order issued.
40. Section 1.641 is revised to read as follows:
Sec. 1.641 Unpatentability discovered by administrative patent judge.
(a) During the pendency of an interference, if the administrative
patent judge becomes aware of a reason why a claim designated to
correspond to a count may not be patentable, the administrative patent
judge may enter an order notifying the parties of the reason and set a
time within which each party may present its views, including any
argument and any supporting evidence, and, in the case of the party
whose claim may be unpatentable, any appropriate preliminary motions
under Secs. 1.633(c), (d) and (h).
(b) If a party timely files a preliminary motion in response to the
order of the administrative patent judge, any opponent may file an
opposition (Sec. 1.638(a)). If an opponent files an opposition, the
party may reply (Sec. 1.638(b)).
(c) After considering any timely filed views, including any timely
filed preliminary motions under Sec. 1.633, oppositions and replies,
the administrative patent judge shall decide how the interference shall
proceed.
41. Section 1.642 is revised to read as follows:
Sec. 1.642 Addition of application or patent to interference.
During the pendency of an interference, if the administrative
patent [[Page 14527]] judge becomes aware of an application or a patent
not involved in the interference which claims the same patentable
invention as a count in the interference, the administrative patent
judge may add the application or patent to the interference on such
terms as may be fair to all parties.
42. Section 1.643(b) is revised to read as follows:
Sec. 1.643 Prosecution of interference by assignee.
* * * * *
(b) An assignee of a part interest in an application or patent
involved in an interference may file a motion (Sec. 1.635) for entry of
an order authorizing it to prosecute the interference. The motion shall
show the inability or refusal of the inventor to prosecute the
interference or other cause why it is in the interest of justice to
permit the assignee of a part interest to prosecute the interference.
The administrative patent judge may allow the assignee of a part
interest to prosecute the interference upon such terms as may be
appropriate.
43. Section 1.644 is amended by revising paragraphs (a)
introductory text, (a)(1), (a)(2), (b), (c), (d), (f) and (g) to read
as follows:
Sec. 1.644 Petitions in interferences.
(a) There is no appeal to the Commissioner in an interference from
a decision of an administrative patent judge or the Board. The
Commissioner will not consider a petition in an interference unless:
(1) The petition is from a decision of an administrative patent
judge or the Board and the administrative patent judge or the Board
shall be of the opinion that the decision involves a controlling
question of procedure or an interpretation of a rule as to which there
is a substantial ground for a difference of opinion and that an
immediate decision on petition by the Commissioner may materially
advance the ultimate termination of the interference;
(2) The petition seeks to invoke the supervisory authority of the
Commissioner and does not relate to the merits of priority of invention
or patentability or the admissibility of evidence under the Federal
Rules of Evidence; or
* * * * *
(b) A petition under paragraph (a)(1) of this section filed more
than 15 days after the date of the decision of the administrative
patent judge or the Board may be dismissed as untimely. A petition
under paragraph (a)(2) of this section shall not be filed prior to the
party's brief for final hearing (see Sec. 1.656). Any petition under
paragraph (a)(3) of this section shall be timely if it is filed
simultaneously with a proper motion under Secs. 1.633, 1.634, or 1.635
when granting the motion would require waiver of a rule. Any opposition
to a petition under paragraphs (a)(1) or (a)(2) of this section shall
be filed within 20 days of the date of service of the petition. Any
opposition to a petition under paragraph (a)(3) of this section shall
be filed within 20 days of the date of service of the petition or the
date an opposition to the motion is due, whichever is earlier.
(c) The filing of a petition shall not stay the proceeding unless a
stay is granted in the discretion of the administrative patent judge,
the Board, or the Commissioner.
(d) Any petition must contain a statement of the facts involved, in
numbered paragraphs, and the point or points to be reviewed and the
action requested. The petition will be decided on the basis of the
record made before the administrative patent judge or the Board, and no
new evidence will be considered by the Commissioner in deciding the
petition. Copies of documents already of record in the interference
shall not be submitted with the petition or opposition.
* * * * *
(f) Any request for reconsideration of a decision by the
Commissioner shall be filed within 14 days of the decision of the
Commissioner and must be accompanied by the fee set forth in
Sec. 1.17(h). No opposition to a request for reconsideration shall be
filed unless requested by the Commissioner. The decision will not
ordinarily be modified unless such an opposition has been requested by
the Commissioner.
(g) Where reasonably possible, service of any petition, opposition,
or request for reconsideration shall be such that delivery is
accomplished within one working day. Service by hand or Express Mail
complies with this paragraph.
* * * * *
44. Section 1.645 is amended by revising paragraphs (a), (b) and
(d) to read as follows:
Sec. 1.645 Extension of time, late papers, stay of proceedings.
(a) Except to extend the time for filing a notice of appeal to the
U.S. Court of Appeals for the Federal Circuit or for commencing a civil
action, a party may file a motion (Sec. 1.635) seeking an extension of
time to take action in an interference. See Sec. 1.304(a) for
extensions of time for filing a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit or for commencing a civil action. The
motion shall be filed within sufficient time to actually reach the
administrative patent judge before expiration of the time for taking
action. A moving party should not assume that the motion will be
granted even if there is no objection by any other party. The motion
will be denied unless the moving party shows good cause why an
extension should be granted. The press of other business arising after
an administrative patent judge sets a time for taking action will not
normally constitute good cause. A motion seeking additional time to
take testimony because a party has not been able to procure the
testimony of a witness shall set forth the name of the witness, any
steps taken to procure the testimony of the witness, the dates on which
the steps were taken, and the facts expected to be proved through the
witness.
(b) Any paper belatedly filed will not be considered except upon
notion (Sec. 1.635) which shows good cause why the paper was not timely
filed, or where 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. See Sec. 1.304(a) for exclusive procedures
relating to belated filing of a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit or belated commencement of a civil
action.
* * * * *
(d) An administrative patent judge may stay proceedings in an
interference.
45. Section 1.646 is amended by revising paragraphs (a)(1), (a)(2),
(b), (c) introductory text, (c)(1), (c)(4), (d) and (e); redesignating
paragraph (c)(5) as paragraph (c)(6) and revising it; and adding a new
paragraph (c)(5) to read as follows:
Sec. 1.646 Service of papers, proof of service.
(a) * * *
(1) Preliminary statements when filed under Sec. 1.621; preliminary
statements shall be served when service is ordered by an administrative
patent judge.
(2) Certified transcripts and exhibits which accompany the
transcripts filed under Sec. 1.676; copies of transcripts shall be
served as part of a party's record under Sec. 1.653(c).
(b) Service shall be on an attorney or agent for a party. If there
is no attorney or agent for the party, service shall be on the party.
An administrative patent judge may order additional service or waive
service where appropriate.
(c) Unless otherwise ordered by an administrative patent judge, or
except as otherwise provided by this subpart, service of a paper shall
be made as follows: [[Page 14528]]
(1) By handing a copy of the paper or causing a copy of the paper
to be handed to the person served.
* * * * *
(4) By mailing a copy of the paper by first class mail; when
service is by first class mail the date of mailing is regarded as the
date of service.
(5) By mailing a copy of the paper by Express Mail; when service is
by Express Mail the date of deposit with the U.S. Postal Service is
regarded as the date of service.
(6) When it is shown to the satisfaction of an administrative
patent judge that none of the above methods of obtaining or serving the
copy of the paper was successful, the administrative patent judge may
order service by publication of an appropriate notice in the Official
Gazette.
(d) An administrative patent judge may order that a paper be served
by hand or Express Mail.
(e) The due date for serving a paper is the same as the due date
for filing the paper in the Patent and Trademark Office. Proof of
service must be made before a paper will be considered in an
interference. Proof of service may appear on or be affixed to the
paper. Proof of service shall include the date and manner of service.
In the case of personal service under paragraphs (c)(1) through (c)(3)
of this section, proof of service shall include the names of any person
served and the person who made the service. Proof of service may be
made by an acknowledgment of service by or on behalf of the person
served or a statement signed by the party or the party's attorney or
agent containing the information required by this section. A statement
of an attorney or agent attached to, or appearing in, the paper stating
the date and manner of service will be accepted as prima facie proof of
service.
46. Section 1.647 is revised to read as follows:
Sec. 1.647 Translation of document in foreign language.
When a party relies on a document or is required to produce a
document in a language other than English, a translation of the
document into English and an affidavit attesting to the accuracy of the
translation shall be filed with the document.
47. Section 1.651 is amended by revising paragraphs (a), (c)(1),
(c)(2), (c)(3) and (d) to read as follows:
Sec. 1.651 Setting times for discovery and taking testimony, parties
entitled to take testimony.
(a) At an appropriate stage in an interference, an administrative
patent judge shall set a time for filing motions (Sec. 1.635) for
additional discovery under Sec. 1.687(c) and testimony periods for
taking any necessary testimony.
* * * * *
(c) * * *
(1) The administrative patent judge orders the taking of testimony
under Sec. 1.639(c);
(2) The party alleges in its preliminary statement a date of
invention prior to the effective filing date of the senior party;
(3) A testimony period has been set to permit an opponent to prove
a date of invention prior to the effective filing date of the party and
the party has filed a preliminary statement alleging a date of
invention prior to that date; or
* * * * *
(d) Testimony, including any testimony to be taken in a place
outside the United States, shall be taken and completed during the
testimony periods set under paragraph (a) of this section. A party
seeking to extend the period for taking testimony must comply with
Secs. 1.635 and 1.645(a).
48. Section 1.652 is revised to read as follows:
Sec. 1.652 Judgment for failure to take testimony or file record.
If a junior party fails to timely take testimony authorized under
Sec. 1.651, or file a record under Sec. 1.653(c), an administrative
patent judge, with or without a motion (Sec. 1.635) by another party,
may issue an order to show cause why judgment should not be entered
against the junior party. When an order is issued under this section,
the Board shall enter judgment in accordance with the order unless,
within 15 days after the date of the order, the junior party files a
paper which shows good cause why judgment should not be entered in
accordance with the order. Any other party may file a response to the
paper within 15 days of the date of service of the paper. If the party
against whom the order was issued fails to show good cause, the Board
shall enter judgment against the party.
49. Section 1.653 is amended by removing and reserving paragraphs
(c)(5), (f) and (h) and by revising paragraphs (a), (b), (c)
introductory text, (c)(1), (c)(4), (d), (g) and (i) to read as follows:
Sec. 1.653 Record and exhibits.
(a) Testimony shall consist of affidavits under Secs. 1.672 (b),
(c) and (g), 1.682(c), 1.683(b) and 1.688(b), transcripts of
depositions under Secs. 1.671(g) and 1.672(a) when a deposition is
authorized by an administrative patent judge, transcripts of
depositions under Secs. 1.672(d), 1.682(d), 1.683(c) and 1.688(c),
agreed statements under Sec. 1.672(h), transcripts of interrogatories,
cross-interrogatories, and recorded answers and copies of written
interrogatories and answers and written requests for admissions and
answers under Sec. 1.688(a).
(b) An affidavit shall be filed as set forth in Sec. 1.677. A
certified transcript of a deposition, including a deposition cross-
examining an affiant, shall be filed as set forth in Secs. 1.676, 1.677
and 1.678. An original agreed statement shall be filed as set forth in
Sec. 1.672(h).
(c) In addition to the items specified in paragraph (b) of this
section and within a time set by an administrative patent judge, each
party shall file three copies and serve one copy of a record consisting
of:
(1) An index of the names of the witnesses for the party, giving
the pages of the record where the direct testimony and cross-
examination of each witness begins.
* * * * *
(4) Each affidavit by a witness for the party, transcript,
including transcripts of cross-examination of any affiant who testified
for the party and transcripts of compelled deposition testimony by a
witness for the party, agreed statement relied upon by the party, and
transcript of interrogatories, cross-interrogatories and recorded
answers.
* * * * *
(d) The pages of the record shall be consecutively numbered to the
extent possible.
* * * * *
(g) The record may be produced by standard typographical printing
or by any other process capable of producing a clear black permanent
image. All printed matter except on covers must appear in at least 11
point type on opaque, unglazed paper. Footnotes may not be printed in
type smaller than 9 point. The page size shall be 21.8 by 27.9 cm.
(8\1/2\ by 11 inches) (letter size) with printed matter 16.5 by 24.1
cm. (6\1/2\ by 9\1/2\ inches). The record shall 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). When there is more than one volume, the
numbers of the pages contained in each volume shall appear at the top
of the cover for each volume.
(i) Each party shall file its exhibits with the record specified in
paragraph (c) of this section. Exhibits include documents and things
identified in affidavits or on the record during the taking of oral
depositions as well as [[Page 14529]] official records and publications
filed by the party under Sec. 1.682(a). One copy of each documentary
exhibit shall be served. Documentary exhibits shall be filed in an
envelope or folder and shall not be bound as part of the record.
Physical exhibits, if not filed by an officer under Sec. 1.676(d),
shall be filed with the record. Each exhibit shall contain a label
which identifies the party submitting the exhibit and an exhibit
number, the style of the interference (e.g., Jones v. Smith), and the
interference number. Where possible, the label should appear at the
bottom right-hand corner of each documentary exhibit. Upon termination
of an interference, an administrative patent judge may return an
exhibit to the party filing the exhibit. When any exhibit is returned,
an order shall be entered indicating that the exhibit has been
returned.
* * * * *
50. Section 1.654 is amended by revising paragraphs (a) and (d) to
read as follows:
Sec. 1.654 Final hearing.
(a) At an appropriate stage of the interference, the parties will
be given an opportunity to appear before the Board to present oral
argument at a final hearing. An administrative patent judge may set a
date and time for final hearing. Unless otherwise ordered by an
administrative patent judge or the Board, each party will be entitled
to no more than 30 minutes of oral argument at final hearing. A party
who does not file a brief for final hearing (Sec. 1.656(a)) shall not
be entitled to appear at final hearing.
* * * * *
(d) After final hearing, the interference shall be taken under
advisement by the Board. No further paper shall be filed except under
Sec. 1.658(b) or as authorized by an administrative patent judge or the
Board. No additional oral argument shall be had unless ordered by the
Board.
51. Section 1.655 is revised to read as follows:
Sec. 1.655 Matters considered in rendering a final decision.
(a) In rendering a final decision, the Board may consider any
properly raised issue, including priority of invention, derivation by
an opponent from a party who filed a preliminary statement under
Sec. 1.625, patentability of the invention, admissibility of evidence,
any interlocutory matter deferred to final hearing, and any other
matter necessary to resolve the interference. The Board may also
consider whether entry of any interlocutory order was an abuse of
discretion. All interlocutory orders shall be presumed to have been
correct, and the burden of showing an abuse of discretion shall be on
the party attacking the order. When two or more interlocutory orders
involve the same issue, the last entered order shall be presumed to
have been correct.
(b) A party shall not be entitled to raise for consideration at
final hearing any matter which properly could have been raised by a
motion under Secs. 1.633 or 1.634 unless the matter was properly raised
in a motion that was timely filed by the party under Secs. 1.633 or
1.634 and the motion was denied or deferred to final hearing, the
matter was properly raised by the party in a timely filed opposition to
a motion under Secs. 1.633 or 1.634 and the motion was granted over the
opposition or deferred to final hearing, or the party shows good cause
why the issue was not properly raised by a timely filed motion or
opposition. A party that 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, or fails to timely argue the separate
patentability of a particular claim when the ground for unpatentability
is first raised, may not subsequently argue to an administrative patent
judge or the Board the separate patentability of claims designated to
correspond to the count with respect to that ground.
(c) In the interest of justice, the Board may exercise its
discretion to consider an issue even though it would not otherwise be
entitled to consideration under this section.
52. In Sec. 1.656, paragraphs (a), (d), (e), (g), (h), and (i) are
revised; paragraphs (b)(1) through (b)(6) are redesignated as (b)(3)
through (b)(8); newly designated paragraphs (b)(5) and (b)(6) are
revised; and new paragraphs (b)(1) and (b)(2) are added to read as
follows:
Sec. 1.656 Briefs for final hearing.
(a) Each party shall be entitled to file briefs for final hearing.
The administrative patent judge shall determine the briefs needed and
shall set the time and order for filing briefs.
(b)* * *
(1) A statement of interest indicating the full name of every party
represented by the attorney in the interference and the name of the
real party in interest if the party named in the caption is not the
real party in interest.
(2) A statement of related cases indicating whether the
interference was previously before the Board for final hearing and the
name and number of 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 U.S. 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.
* * * * *
(5) A statement of the facts, in numbered paragraphs, relevant to
the issues presented for decision with appropriate references to the
record.
(6) An argument, which may be preceded by a summary, which shall
contain the contentions of the party with respect to the issues it is
raising for consideration at final hearing, and the reasons therefor,
with citations to the cases, statutes, other authorities, and parts of
the record relied on.
* * * * *
(d) 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.
(e) An original and four copies of each brief must be filed.
* * * * *
(g) Any party, separate from its opening brief, but filed
concurrently therewith, may file an original and four copies of concise
proposed findings of fact and conclusions of law. Any proposed findings
of fact shall be in numbered paragraphs and shall be supported by
specific references to the record. Any proposed conclusions of law
shall be in numbered paragraphs and shall be supported by citation of
cases, statutes, or other authority. Any opponent, separate from its
opening or reply brief, but filed concurrently therewith, may file a
paper accepting or objecting to any proposed findings of fact or
conclusions of law; when objecting, a reason must be given. The Board
may adopt the proposed findings of fact and conclusions of law in whole
or in part.
(h) If a party wants the Board in rendering its final decision to
rule on the admissibility of any evidence, the party shall file with
its opening brief an original and four copies of a motion (Sec. 1.635)
to suppress the evidence. The provisions of Sec. 1.637(b) do not apply
to a motion to suppress under this paragraph. Any objection previously
made to the admissibility of the evidence of an opponent is waived
unless the motion required by this paragraph is filed. A party that
failed to [[Page 14530]] challenge the admissibility of the evidence of
an opponent on a ground that could have been raised in a timely
objection under Sec. 1.672(c), 1.682(c), 1.683(b) or 1.688(b) may not
move under this paragraph to suppress the evidence on that ground at
final hearing. An original and four copies of an opposition to the
motion may be filed with an opponent's opening brief or reply brief as
may be appropriate.
(i) When a junior party fails to timely file an opening brief, an
order may issue requiring the junior party to show cause why the Board
should not treat failure to file the brief as a concession of priority.
If the junior party fails to show good cause within a time period set
in the order, judgment may be entered against the junior party.
53. Section 1.657 is revised to read as follows:
Sec. 1.657 Burden of proof as to date of invention.
(a) A rebuttable presumption shall exist that, as to each count,
the inventors made their invention in the chronological order of their
effective filing dates. The burden of proof shall be upon a party who
contends otherwise.
(b) In an interference involving copending applications or
involving a patent and an application having an effective filing date
on or before the date the patent issued, a junior party shall have the
burden of establishing priority by a preponderance of the evidence.
(c) In an interference involving an application and a patent and
where the effective filing date of the application is after the date
the patent issued, a junior party shall have the burden of establishing
priority by clear and convincing evidence.
54. Section 1.658 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.658 Final decision.
(a) After final hearing, the Board shall enter a decision resolving
the issues raised at final hearing. The decision may enter judgment, in
whole or in part, remand the interference to an administrative patent
judge for further proceedings, or take further action not inconsistent
with law. A judgment as to a count shall state whether or not each
party is entitled to a patent containing the claims in the party's
patent or application which correspond to the count. 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.
(b) Any request for reconsideration of a decision under paragraph
(a) of this section shall be filed within one month after the date of
the decision. The request for reconsideration shall specify with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision. Any opposition to a request for
reconsideration shall be filed within 14 days of the date of service of
the request for reconsideration. Service of the request for
reconsideration shall be by hand or Express Mail. The Board shall enter
a decision on the request for reconsideration. If the Board shall be of
the opinion that the decision on the request for reconsideration
significantly modifies its original decision under paragraph (a) of
this section, the Board may designate the decision on the request for
reconsideration as a new decision. A decision on reconsideration is a
final decision for the purpose of judicial review (35 U.S.C. 141-144,
146).
* * * * *
55. Section 1.660 is amended by adding paragraph (e) to read as
follows:
Sec. 1.660 Notice of reexamination, reissue, protest, or litigation.
* * * * *
(e) The notice required by this section is designed to assist the
administrative patent judge and the Board in efficiently handling
interference cases. Failure of a party to comply with the provisions of
this section may result in sanctions under Sec. 1.616. 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. The notice contemplated
by this section is notice addressed to the administrative patent judge
in charge of the interference in which the application or patent is
involved.
56. Section 1.662 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.662 Request for entry of adverse judgment; reissue filed by
patentee.
(a) A party may, at any time during an interference, request and
agree to entry of an adverse judgment. The filing by a party of a
written disclaimer of the invention defined by a count, concession of
priority or unpatentability of the subject matter of a count,
abandonment of the invention defined by a count, or abandonment of the
contest as to a count will be treated as a request for entry of an
adverse judgment against the applicant or patentee as to all claims
which correspond to the count. Abandonment of an application, other
than an application for reissue having a claim of the patent sought to
be reissued involved in the interference, will be treated as a request
for entry of an adverse judgment against the applicant as to all claims
corresponding to all counts. Upon the filing by a party of a request
for entry of an adverse judgment, the Board may enter judgment against
the party.
(b) If a patentee involved in an interference files an application
for reissue during the interference and the reissue application does
not include a claim that corresponds to a count, judgment may be
entered against the patentee. A patentee who files an application for
reissue which includes a claim that corresponds to a count shall, in
addition to complying with the provisions of Sec. 1.660(b), timely file
a preliminary motion under Sec. 1.633(h) or show good cause why the
motion could not have been timely filed or would not be appropriate.
* * * * *
57. Section 1.664 is revised to read as follows:
Sec. 1.664 Action after interference.
(a) After termination of an interference, the examiner will
promptly take such action in any application previously involved in the
interference as may be necessary. Unless entered by order of an
administrative patent judge, amendments presented during the
interference shall not be entered, but may be subsequently presented by
the applicant subject to the provisions of this subpart provided
prosecution of the application is not otherwise closed.
(b) After judgment, the application of any party may be held
subject to further examination, including an interference with another
application.
58. Section 1.671 is amended by revising paragraphs (a)
introductory text, (c)(1), (c)(2), (c)(6), (c)(7), (e), (f) and (g);
redesignating paragraph (h) as paragraph (i) and revising it, and
adding new paragraphs (h) and (j) to read as follows:
Sec. 1.671 Evidence must comply with rules.
(a) Evidence consists of testimony and referenced exhibits,
official records and publications filed under Sec. 1.682, testimony and
referenced exhibits from another interference, proceeding, or action
filed under Sec. 1.683, discovery relied upon under Sec. 1.688, and the
[[Page 14531]] specification (including claims) and drawings of any
application or patent:
* * * * *
(c) * * *
(1) Courts of the United States, U.S. Magistrate, court, trial
court, or trier of fact means administrative patent judge or Board as
may be appropriate.
(2) Judge means administrative patent judge.
* * * * *
(6) Before the hearing in Rule 703 of the Federal Rules of Evidence
means before giving testimony by affidavit or oral deposition.
(7) The trial or hearing in Rules 803(24) and 804(5) of the Federal
Rules of Evidence means the taking of testimony by affidavit or oral
deposition.
* * * * *
(e) A party may not rely on an affidavit (including any exhibits),
patent or printed publication previously submitted by the party under
Sec. 1.639(b) unless a copy of the affidavit, patent or printed
publication has been served and a written notice is filed prior to the
close of the party's relevant testimony period stating that the party
intends to rely on the affidavit, patent or printed publication. When
proper notice is given under this paragraph, the affidavit, patent or
printed publication shall be deemed as filed under Secs. 1.640(b),
1.640(e)(3), 1.672(b) or 1.682(a), as appropriate.
(f) The significance of documentary and other exhibits identified
by a witness in an affidavit or during oral deposition shall be
discussed with particularity by a witness.
(g) A party must file a motion (Sec. 1.635) seeking permission from
an administrative patent judge prior to compelling testimony or
production of documents or things under 35 U.S.C. 24 or from an
opposing party. The motion shall describe the general nature and the
relevance of the testimony, document, or thing. If permission is
granted, the party shall notice a deposition under Sec. 1.673 and may
proceed to take testimony.
(h) A party must file a motion (Sec. 1.635) seeking permission from
an administrative patent judge prior to compelling testimony or
production of documents or things in a foreign country.
(1) In the case of testimony, the motion shall:
(i) Describe the general nature and relevance of the testimony;
(ii) Identify the witness by name or title;
(iii) Identify the foreign country and explain why the party
believes the witness can be compelled to testify in the foreign
country, including a description of the procedures that will be used to
compel the testimony in the foreign country and an estimate of the time
it is expected to take to obtain the testimony; and
(iv) Demonstrate that the party has made reasonable efforts to
secure the agreement of the witness to testify in the United States but
has been unsuccessful in obtaining the agreement, even though the party
has offered to pay the expenses of the witness to travel to and testify
in the United States.
(2) In the case of production of a document or thing, the motion
shall:
(i) Describe the general nature and relevance of the document or
thing;
(ii) Identify the foreign country and explain why the party
believes production of the document or thing can be compelled in the
foreign country, including a description of the procedures that will be
used to compel production of the document or thing in the foreign
country and an estimate of the time it is expected to take to obtain
production of the document or thing; and
(iii) Demonstrate that the party has made reasonable efforts to
obtain the agreement of the individual or entity having possession,
custody, or control of the document to produce the document or thing in
the United States but has been unsuccessful in obtaining that
agreement, even though the party has offered to pay the expenses of
producing the document or thing in the United States.
(i) Evidence which is not taken or sought and filed in accordance
with this subpart shall not be admissible.
(j) The weight to be given deposition testimony taken in a foreign
country will be determined in view of all the circumstances, including
the laws of the foreign country governing the testimony. Little, if
any, weight may be given to deposition testimony taken in a foreign
country unless the party taking the testimony proves by clear and
convincing evidence, as a matter of fact, that knowingly giving false
testimony in that country in connection with an interference proceeding
in the United States Patent and Trademark Office is punishable under
the laws of that country and that the punishment in that country for
such false testimony is comparable to or greater than the punishment
for perjury committed in the United States. The administrative patent
judge and the Board, in determining foreign law, may consider any
relevant material or source, including testimony, whether or not
submitted by a party or admissible under the Federal Rules of Evidence.
59. Section 1.672 is revised to read as follows:
Sec. 1.672 Manner of taking testimony.
(a) Unless testimony must be compelled under 35 U.S.C. 24,
compelled from a party, or compelled in a foreign country, testimony of
a witness shall be taken by affidavit in accordance with this subpart.
Testimony which must be compelled under 35 U.S.C. 24, compelled from a
party, or compelled in a foreign country shall be taken by oral
deposition.
(b) A party presenting testimony of a witness by affidavit shall,
within the time set by the administrative patent judge for serving
affidavits, file a copy of the affidavit or, if appropriate, notice
under Sec. 1.671(e). If the affidavit relates to a party's case-in-
chief, it shall be filed or noticed no later than the date set by an
administrative patent judge for the party to file affidavits for its
case-in-chief. If the affidavit relates to a party's case-in-rebuttal,
it shall be filed or noticed no later than the date set by an
administrative patent judge for the party to file affidavits for its
case-in-rebuttal. A party shall not be entitled to rely on any document
referred to in the affidavit unless a copy of the document is filed
with the affidavit. A party shall not be entitled to rely on any thing
mentioned in the affidavit unless the opponent is given reasonable
access to the thing. A thing is something other than a document. The
pages of affidavits filed under this paragraph and of any other
testimony filed therewith under Secs. 1.683(a) and 1.688(a) shall, to
the extent possible, be given sequential numbers which shall also serve
as the record page numbers for the affidavits and other testimony in
the party's record to be filed under Sec. 1.653. Exhibits identified in
the affidavits or in any other testimony filed under Secs. 1.683(a) and
1.688(a) and any official records and printed publications filed under
Sec. 1.682(a) shall, to the extent possible, be given sequential
exhibit numbers, which shall also serve as the exhibit numbers when the
exhibits are filed with the party's record. The affidavits, testimony
filed under Secs. 1.683(a) and 1.688(a) and exhibits shall be
accompanied by an index of the names of the witnesses, giving the
number of the page where the testimony of each witness begins, and by
an index of the exhibits briefly describing the nature of each exhibit
and giving the number of the page where each exhibit is first
identified and offered into evidence.
(c) If an opponent objects to the admissibility of any evidence
contained [[Page 14532]] in or submitted with an affidavit filed under
paragraph (b) of this section, the opponent must, no later than the
date set by the administrative patent judge for filing objections under
this paragraph, file objections stating with particularity the nature
of each objection. An opponent that fails to object to the
admissibility of the evidence contained in or submitted with an
affidavit on a ground that could have been raised in a timely objection
under this paragraph will not be entitled to move under Sec. 1.656(h)
to suppress the evidence on that ground. If an opponent timely files
objections, the party may, within 20 days of the due date for filing
objections, file one or more supplemental affidavits, official records
or printed publications to overcome the objections. No objection to the
admissibility of the supplemental evidence shall be made, except as
provided by Sec. 1.656(h). The pages of supplemental affidavits filed
under this paragraph shall, to the extent possible, be sequentially
numbered beginning with the number following the last page number of
the party's testimony submitted under paragraph (b) of this section.
The page numbers assigned to the supplemental affidavits shall also
serve as the record page numbers for the supplemental affidavits in the
party's record filed under Sec. 1.653. Additional exhibits identified
in supplemental affidavits and any supplemental official records and
printed publications shall, to the extent possible, be given sequential
numbers beginning with the number following the last number of the
exhibits submitted under paragraph (b) of this section. The exhibit
numbers shall also serve as the exhibit numbers when the exhibits are
filed with the party's record. The supplemental affidavits shall be
accompanied by an index of the names of the witnesses and an index of
exhibits of the type specified in paragraph (b) of this section.
(d) After the time expires for filing objections and supplemental
affidavits, or earlier when appropriate, the administrative patent
judge shall set a time within which any opponent may file a request to
cross-examine an affiant on oral deposition. If any opponents 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 by any opponent. Any redirect and
recross shall take place at the deposition. At any deposition for the
purpose of cross-examination of a witness, the party shall not be
entitled to rely on any document or thing not mentioned in one or more
of the affidavits filed under paragraphs (b) and (c) of this section,
except to the extent necessary to conduct proper redirect. The party
who gives notice of a deposition shall be responsible for providing a
translator if the witness does not testify in English, for obtaining a
court reporter, and for filing a certified transcript of the deposition
as required by Sec. 1.676. Within 45 days of the close of the period
for taking cross-examination, the party shall serve (but not file) a
copy of each transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of the transcripts served under this paragraph
shall, to the extent possible, be sequentially numbered beginning with
the number following the last page number of the party's supplemental
affidavits submitted under paragraph (c) of this section. The numbers
assigned to the transcript pages shall also serve as the record page
numbers for the transcripts in the party's record filed under
Sec. 1.653. Additional exhibits identified in the transcripts, shall,
to the extent possible, be given sequential numbers beginning with the
number following the last number of the exhibits submitted under
paragraphs (b) and (c) of this section. The exhibit numbers assigned to
the additional exhibits shall also serve as the exhibit numbers when
those exhibits are filed with the party's record. The deposition
transcripts shall 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 paragraph (b) of this section.
(e) [Reserved]
(f) When a deposition is authorized to be taken within the United
States under this subpart and if the parties agree in writing, the
deposition may be taken in any place within the United States, before
any person authorized to administer oaths, upon any notice, and in any
manner, and when so taken may be used like other depositions.
(g) If the parties agree in writing, the affidavit testimony of any
witness may be submitted without opportunity for cross-examination.
(h) If the parties agree in writing, testimony may be submitted in
the form of an agreed statement setting forth how a particular witness
would testify, if called, or the facts in the case of one or more of
the parties. The agreed statement shall be filed in the Patent and
Trademark Office. See Sec. 1.653(a).
(i) In an unusual circumstance and upon a showing that testimony
cannot be taken in accordance with the provisions of this subpart, an
administrative patent judge upon motion (Sec. 1.635) may authorize
testimony to be taken in another manner.
60. Section 1.673 is amended by revising paragraphs (a), (b)
introductory text, (c) through (e) and (g) to read as follows:
Sec. 1.673 Notice of examination of witness.
(a) A party authorized to take testimony of a witness by deposition
shall, after complying with paragraphs (b) and (g) of this section,
file and serve a single notice of deposition stating the time and place
of each deposition to be taken. Depositions to be taken in the United
States may be noticed for a reasonable time and place in the United
States. A deposition may not be noticed for any other place without
approval of an administrative patent judge. The notice shall specify
the name and address of each witness and the general nature of the
testimony to be given by the witness. If the name of a witness is not
known, a general description sufficient to identify the witness or a
particular class or group to which the witness belongs may be given
instead.
(b) Unless the parties agree or an administrative patent judge or
the Board determine otherwise, a party shall serve, but not file, at
least three working days prior to the conference required by paragraph
(g) of this section, if service is made by hand or Express Mail, or at
least 14 days prior to the conference if service is made by any other
means, the following:
* * * * *
(c) A party shall not be permitted to rely on any witness not
listed in the notice, or any document not served or any thing not
listed as required by paragraph (b) of this section:
(1) Unless all opponents agree in writing or on the record to
permit the party to rely on the witness, document or thing, or
(2) Except upon a motion (Sec. 1.635) promptly filed which is
accompanied by any proposed notice, additional documents, or lists and
which shows good cause why the notice, documents, or lists were not
served in accordance with this section.
(d) Each opponent shall have a full opportunity to attend a
deposition and cross-examine.
(e) A party who has presented testimony by affidavit and is
required to notice depositions for the purpose of cross-examination
under Sec. 1.672(b), shall, after complying with paragraph
[[Page 14533]] (g) of this section, file and serve a single notice of
deposition stating the time and place of each cross-examination
deposition to be taken.
* * * * *
(g) Before serving a notice of deposition and after complying with
paragraph (b) of this section, a party shall have an oral conference
with all opponents to attempt to agree on a mutually acceptable time
and place for conducting the deposition. A certificate shall appear in
the notice stating that the oral conference took place or explaining
why the conference could not be had. If the parties cannot agree to a
mutually acceptable place and time for conducting the deposition at the
conference, the parties shall contact an administrative patent judge
who shall then designate the time and place for conducting the
deposition.
* * * * *
61. Section 1.674 is amended by revising paragraph (a) to read as
follows:
Sec. 1.674 Persons before whom depositions may be taken.
(a) A deposition shall be taken before an officer authorized to
administer oaths by the laws of the United States or of the place where
the examination is held.
* * * * *
62. Section 1.675 is amended by revising paragraph (d) to read as
follows:
Sec. 1.675 Examination of witness, reading and signing transcript of
deposition.
* * * * *
(d) Unless the parties agree in writing or waive reading and
signature by the witness on the record at the deposition, when the
testimony has been transcribed a transcript of the deposition shall,
unless the witness refuses to read and/or sign the transcript of the
deposition, be read by the witness and then signed by the witness in
the form of:
(1) An affidavit in the presence of any notary or
(2) A declaration.
63. Section 1.676 is amended by revising paragraph (a)(4) to read
as follows:
Sec. 1.676 Certification and filing by officer, marking exhibits.
(a) * * *
(4) The presence or absence of any opponent.
* * * * *
64. Section 1.677 is revised to read as follows:
Sec. 1.677 Form of an affidavit or a transcript of deposition.
(a) An affidavit or a transcript of a deposition must be on opaque,
unglazed, durable paper approximately 21.8 by 27.9 cm. (8\1/2\ by 11
inches) in size (letter size). The printed matter shall be double-
spaced on one side of the paper in not smaller than 11 point type with
a margin of 3.8 cm. (1\1/2\ inches) on the left-hand side of the page.
The pages of each transcript must be consecutively numbered and the
name of the witness shall appear at the top of each page
(Sec. 1.653(e)). In transcripts of depositions, the questions
propounded to each witness must be consecutively numbered unless paper
with numbered lines is used and each question must be followed by its
answer.
(b) Exhibits must be numbered consecutively to the extent possible
and each must be marked as required by Sec. 1.653(i).
65. Section 1.678 is revised to read as follows:
Sec. 1.678 Time for filing transcript of deposition.
Unless otherwise ordered by an administrative patent judge, a
certified transcript of a deposition must be filed in the Patent and
Trademark Office within one month after the date of deposition. If a
party refuses to file a certified transcript, the administrative patent
judge or the Board may take appropriate action under Sec. 1.616. If a
party refuses to file a certified transcript, any opponent may move for
leave to file the certified transcript and include a copy of the
transcript as part of the opponent's record.
66. Section 1.679 is revised to read as follows:
Sec. 1.679 Inspection of transcript.
A certified transcript of a deposition filed in the Patent and
Trademark Office may be inspected by any party. The certified
transcript may not be removed from the Patent and Trademark Office
unless authorized by an administrative patent judge upon such terms as
may be appropriate.
67. Section 1.682 is revised to read as follows:
Sec. 1.682 Official records and printed publications.
(a) 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 a copy of the official record or printed publication or, if
appropriate, a notice under Sec. 1.671(e). If the official record or
printed publication relates to the party's case-in-chief, it shall be
filed or noticed together with any affidavits filed by the party under
Sec. 1.672(b) for its case-in-chief or, if the party does not serve any
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the
date set by an administrative patent judge for the party to file
affidavits under Sec. 1.672(b) for its case-in-chief. If the official
record or printed publication relates to rebuttal, it shall be filed or
noticed together with any affidavits filed by the party under
Sec. 1.672(b) for its case-in-rebuttal or, if the party does not file
any affidavits under Sec. 1.672(b) for its case-in-rebuttal, no later
than the date set by an administrative patent judge for the party to
file affidavits under Sec. 1.672(b) for its case-in-rebuttal. Official
records and printed publications filed under this paragraph shall be
assigned sequential exhibit numbers by the party in the manner set
forth in Sec. 1.672(b). The official record and printed publications
shall be accompanied by a paper which shall:
(1) Identify the official record or printed publication;
(2) Identify the portion thereof to be introduced in evidence; and
(3) Indicate generally the relevance of the portion sought to be
introduced in evidence.
(b) [Reserved]
(c) Unless otherwise ordered by an administrative patent judge, any
written objection by an opponent to the paper or to the admissibility
of the official record or printed publication shall be filed no later
than the date set by the administrative patent judge for the opponent
to file objections under Sec. 1.672(c) to affidavits submitted by the
party under Sec. 1.672(b). An opponent who fails to object to the
admissibility of the official record or printed publication on a ground
that could have been raised in a timely objection under this paragraph
will not be entitled to move under Sec. 1.656(h) to suppress the
evidence on that ground. If an opponent timely files an objection, the
party may respond by filing one or more supplemental affidavits,
official records or printed publications, which must be filed together
with any supplemental evidence filed by the party under Sec. 1.672(c)
or, if the party does not file any supplemental evidence under
Sec. 1.672(c), no later than the date set by an administrative patent
judge for the party to file supplemental affidavits under
Sec. 1.672(c). No objection to the admissibility of the supplemental
evidence shall be made, except as provided by Sec. 1.656(h). The pages
of supplemental affidavits and the exhibits filed under this section
shall be sequentially numbered by the party in the manner set forth in
Sec. 1.672(c). The supplemental affidavits and exhibits shall be
accompanied by an index of [[Page 14534]] witnesses and an index of
exhibits of the type required by Sec. 1.672(b).
(d) Any request by an opponent to cross-examine on oral deposition
the affiant of a supplemental affidavit submitted under paragraph (c)
of this section shall be filed no later than the date set by the
administrative patent judge for the opponent to file a request to
cross-examine an affiant with respect to an affidavit served by the
party under Sec. 1.672 (b) or (c). If any opponent requests cross-
examination of an affiant, the party shall file notice of a deposition
for a reasonable location within the United States under Sec. 1.673(e)
for the purpose of cross-examination by any opponent. Any redirect and
recross shall take place at the deposition. At any deposition for the
purpose of cross-examination of a witness, the party shall not be
entitled to rely on any document or thing not mentioned in one or more
of the affidavits filed under this paragraph, except to the extent
necessary to conduct proper redirect. The party who gives notice of a
deposition shall be responsible for providing a translator if the
witness does not testify in English, for obtaining a court reporter,
and for filing a certified transcript of the deposition as required by
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in Sec. 1.672(d). The deposition transcripts shall 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).
68. Section 1.683 is revised to read as follows:
Sec. 1.683 Testimony in another interference, proceeding, or action.
(a) A party may introduce into evidence, if otherwise admissible,
testimony by affidavit or oral deposition and referenced exhibits from
another interference, proceeding, or action involving the same parties
by filing a copy of the affidavit or a copy of the transcript of the
oral deposition and the referenced exhibits. If the testimony and
referenced exhibits relate to the party's case-in-chief, they shall be
filed together with any affidavits served by the party under
Sec. 1.672(b) for its case-in-chief or, if the party does not file any
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the
date set by an administrative patent judge for the party to file
affidavits under Sec. 1.672(b) for its case-in-chief. If the testimony
and referenced exhibits relate to rebuttal, they shall be filed
together with any affidavits served by the party under Sec. 1.672(b)
for its case-in-rebuttal or, if the party does not file any affidavits
under Sec. 1.672(b) for its case-in-rebuttal, no later than the date
set by an administrative patent judge for the party to file affidavits
under Sec. 1.672(b) for its case-in-rebuttal. Pages of affidavits and
deposition transcripts served under this paragraph and any new exhibits
served therewith shall be assigned sequential numbers by the party in
the manner set forth in Sec. 1.672(b). The testimony shall be
accompanied by a paper which specifies with particularity the exact
testimony to be used and demonstrates its relevance.
(b) Unless otherwise ordered by an administrative patent judge, any
written objection by an opponent to the paper or the admissibility of
the testimony and referenced exhibits filed under this section shall be
filed no later than the date set by the administrative patent judge for
the opponent to file any objections under Sec. 1.672(c) to affidavits
submitted by the party under Sec. 1.672(b). An opponent who fails to
challenge the admissibility of the testimony or referenced exhibits on
a ground that could have been raised in a timely objection under this
paragraph will not be entitled to move under Sec. 1.656(h) to suppress
the evidence on that ground. If an opponent timely files an objection,
the party may respond with one or more supplemental affidavits,
official records or printed publications, which must be filed together
with any supplemental evidence filed by the party under Sec. 1.672(c)
or, if the party does not file any supplemental evidence under
Sec. 1.672(c), no later than the date set by an administrative patent
judge for the party to file supplemental evidence under Sec. 1.672(c).
No objection to the admissibility of the evidence contained in or
submitted with a supplemental affidavit shall be made, except as
provided by Sec. 1.656(h). The pages of supplemental affidavits and the
exhibits filed under this section shall be sequentially numbered by the
party in the manner set forth in Sec. 1.672(c). The supplemental
affidavits and exhibits shall be accompanied by an index of witnesses
and an index of exhibits of the type required by Sec. 1.672(b).
(c) Any request by an opponent to cross-examine on oral deposition
the affiant of an affidavit or supplemental affidavit submitted under
paragraph (a) or (b) of this section shall be filed no later than the
date set by the administrative patent judge for the opponent to file a
request to cross-examine an affiant with respect to an affidavit filed
by the party under Sec. 1.672 (b) or (c). If any opponent requests
cross-examination of an affiant, the party shall file a notice of
deposition for a reasonable location within the United States under
Sec. 1.673(e) for the purpose of cross-examination by any opponent. Any
redirect and recross shall take place at the deposition. At any
deposition for the purpose of cross-examination of a witness, the party
shall not be entitled to rely on any document or thing not mentioned in
one or more of the affidavits filed under this paragraph, except to the
extent necessary to conduct proper redirect. The party who gives notice
of a deposition shall be responsible for providing a translator if the
witness does not testify in English, for obtaining a court reporter,
and for filing a certified transcript of the deposition as required by
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in Sec. 1.672(d). The deposition transcripts shall 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).
69. Section 1.684 is removed and reserved.
70. Section 1.685 is amended by revising paragraphs (d) and (e) to
read as follows:
Sec. 1.685 Errors and irregularities in depositions.
* * * * *
(d) An objection to the deposition on any grounds, such as the
competency of a witness, admissibility of evidence, manner of taking
the deposition, the form of questions and answers, any oath or
affirmation, or conduct of any party at the deposition, is waived
unless an objection is made on the record at the deposition stating the
specific ground of objection. Any objection which a party wishes
considered by the Board at final [[Page 14535]] hearing shall be
included in a motion to suppress under Sec. 1.656(h).
(e) Nothing in this section precludes taking notice of plain errors
affecting substantial rights although they were not brought to the
attention of an administrative patent judge or the Board.
71. Section 1.687 is amended by revising paragraph (c) to read as
follows:
Sec. 1.687 Additional discovery.
* * * * *
(c) Upon a motion (Sec. 1.635) brought by a party within the time
set by an administrative patent judge under Sec. 1.651 or thereafter as
authorized by Sec. 1.645 and upon a showing that the interest of
justice so requires, an administrative patent judge may order
additional discovery, as to matters under the control of a party within
the scope of the Federal Rules of Civil Procedure, specifying the terms
and conditions of such additional discovery. See Sec. 1.647 concerning
translations of documents in a foreign language.
* * * * *
72. Section 1.688 is revised to read as follows:
Sec. 1.688 Use of discovery.
(a) 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. If the answer relates to a party's case-in-chief, the answer
shall be served together with any affidavits served by the party under
Sec. 1.672(b) for its case-in-chief or, if the party does not serve any
affidavits under Sec. 1.672(b) for its case-in-chief, 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. If the answer
relates to the party's rebuttal, the answer shall be served together
with any affidavits served by the party under Sec. 1.672(b) for its
case-in-rebuttal or, if the party does not serve any affidavits under
Sec. 1.672(b) for its case-in-rebuttal, 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-rebuttal.
(b) Unless otherwise ordered by an administrative patent judge, any
written objection to the admissibility of an answer shall be filed no
later than the date set by the administrative patent judge for the
opponent to file any objections under Sec. 1.672(c) to affidavits
submitted by the party under Sec. 1.672(b). An opponent who fails to
challenge the admissibility of an answer on a ground that could have
been raised in a timely objection under this paragraph will not be
entitled to move under Sec. 1.656(h) to suppress the evidence on that
ground. If an opponent timely files an objection, the party may respond
with one or more supplemental affidavits, which must be filed together
with any supplemental evidence filed by the party under Sec. 1.672(c)
or, if the party does not file any supplemental evidence under
Sec. 1.672(c), no later than the date set by an administrative patent
judge for the party to file supplemental affidavits under
Sec. 1.672(c). No objection to the admissibility of the evidence
contained in or submitted with a supplemental affidavit shall be made,
except as provided by Sec. 1.656(h). The pages of supplemental
affidavits and the exhibits filed under this section shall be
sequentially numbered by the party in the manner set forth in
Sec. 1.672(c). The supplemental affidavits and exhibits shall be
accompanied by an index of witnesses and an index of exhibits of the
type required by Sec. 1.672(b).
(c) Any request by an opponent to cross-examine on oral deposition
the affiant of a supplemental affidavit submitted under paragraph (b)
of this section shall be filed no later than the date set by the
administrative patent judge for the opponent to file a request to
cross-examine an affiant with respect to an affidavit filed by the
party under Sec. 1.672(b) or (c). If any opponent requests cross-
examination of an affiant, the party shall file a notice of deposition
for a reasonable location within the United States under Sec. 1.673(e)
for the purpose of cross-examination by any opponent. Any redirect and
recross shall take place at the deposition. At any deposition for the
purpose of cross-examination of a witness, the party shall not be
entitled to rely on any document or thing not mentioned in one or more
of the affidavits filed under this paragraph, except to the extent
necessary to conduct proper redirect. The party who gives notice of a
deposition shall be responsible for providing a translator if the
witness does not testify in English, for obtaining a court reporter,
and for filing a certified transcript of the deposition as required by
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in Sec. 1.672(d). The deposition transcripts shall 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).
(d) A party may not rely upon any other matter obtained by
discovery unless it is introduced into evidence under this subpart.
73. Section 1.690 is amended by revising paragraphs (a), (b) and
(c) to read as follows:
Sec. 1.690 Arbitration of interferences.
(a) Parties to a patent interference may determine the interference
or any aspect thereof by arbitration. Such arbitration shall be
governed by the provisions of Title 9, United States Code. The parties
must notify the Board in writing of their intention to arbitrate. An
agreement to arbitrate must be in writing, specify the issues to be
arbitrated, the name of the arbitrator or a date not more than thirty
(30) days after the execution of the agreement for the selection of the
arbitrator, and provide that the arbitrator's award shall be binding on
the parties and that judgment thereon can be entered by the Board. A
copy of the agreement must be filed within twenty (20) days after its
execution. The parties shall be solely responsible for the selection of
the arbitrator and the rules for conducting proceedings before the
arbitrator. Issues not disposed of by the arbitration will be resolved
in accordance with the procedures established in this subpart, as
determined by the administrative patent judge.
(b) An arbitration proceeding under this section shall be conducted
within such time as may be authorized on a case-by-case basis by an
administrative patent judge.
(c) An arbitration award will be given no consideration unless it
is binding on the parties, is in writing and states in a clear and
definite manner the issue or issues arbitrated and the disposition of
each issue. The award may include a statement of the grounds and
reasoning in support thereof. Unless otherwise ordered by an
administrative patent judge, the parties shall give notice to the Board
of an arbitration award by filing within twenty (20) days from the date
of the award a copy of the award signed by the arbitrator or
arbitrators. When an award is timely filed, the award shall, as to the
parties to the arbitration, be dispositive of the issue or issues to
which it relates.
* * * * * [[Page 14536]]
Dated: March 3, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 95-6377 Filed 3-16-95; 8:45 am]
BILLING CODE 3510-16-M
