00-24120. Simplification of Certain Requirements in Patent Interference Practice

September 15, 2000.

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Interim rule with request for comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO) amends its rules of practice in patent interferences to simplify certain requirements relating to the declaration of interferences and the presentation of evidence. USPTO is also revising its CFR chapter heading to reflect its new name.

DATES:

Effective Date: October 20, 2000.

Comment Date: Submit comments on or before October 20, 2000.

ADDRESSES:

Send all comments:

1. Electronically to “[e-mail],” Subject: “Interference Simplification”; or

2. By mail to Director of the United States Patent and Trademark Office, BOX INTERFERENCE, Washington, D.C. 20231, ATTN: “Interference Simplification”; or

3. By facsimile to 703-305-9373, ATTN: “Interference Simplification.”

FOR FURTHER INFORMATION CONTACT:

Fred McKelvey or Richard Torczon at 703-308-9797.

SUPPLEMENTARY INFORMATION:

Comment Format

The USPTO prefers to receive comments in electronic form, either via the Internet or on a 31/4-inch diskette. Comments submitted in electronic form should be submitted as ASCII text. Special characters and encryption should not be used.

Background

The USPTO is amending 37 CFR §§ 1.601(f) and 1.606 and is deleting 37 CFR § 1.609 because the requirements being eliminated presented obstacles to the efficient declaration of interferences without corresponding benefits. In particular, Rules 601(f) and 606 create a presumption about the scope of the interfering subject matter that often is not supported by the record. The change eliminates that presumption. The changes in sections 1.601(f) and 1.606, as well as changes in the process of proposing an interference in the examining corps, have made section 1.609 unnecessary. Now an administrative patent judge meets with a representative from the technology center to ensure that the record contains adequate bases for declaring an interference.

The USPTO is amending 37 CFR § 1.671 to provide that all evidence is presented in the form of an exhibit. This simplifying amendment to § 1.671 makes the more complex requirements of 37 CFR §§ 1.682, 1.683, and 1.688 unnecessary, so they are being deleted. An interim rule is appropriate because the rulemaking is not substantive and the elimination of these requirements provides relief from unnecessary requirements. The USPTO appreciates that other changes to the rules of practice in patent interferences may be appropriate, but this interim rule is not an appropriate vehicle for such changes, which will have to be addressed in future rulemaking. These rule changes will apply to any interference declared after the effective date of this rulemaking and to any interference in which these changes are adopted by order.

Regulatory Flexibility Act

This rulemaking is procedural and is not subject to the requirements of 5 U.S.C. 553 so no initial regulatory flexibility analysis is required under 5 U.S.C. 603.

Executive Order 13132: Federalism Assessment

This rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (August 4, 1999).

Executive Order 12866

This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

This interim rule creates no information collection requirements subject to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.).

List of Subjects in 37 CFR Part 1

• Administrative practice and procedure
• Inventions and patents

For the reasons stated in the preamble, the United States Patent and Trademark Office amends 37 CFR Chapter I as follows:

1. The heading of Chapter I is revised to read as follows:

CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

PART 1—RULES OF PRACTICE IN PATENT CASES

1a. The authority citation for 37 CFR part 1 continues to read as follows:

Authority: 35 U.S.C. 6, unless otherwise noted.

2. Amend § 1.601 by revising paragraph (f) to read as follows:

§ 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. 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.

* * * * *

3. Revise § 1.606 to read as follows:

§ 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 application 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.

§ 1.609

[Removed and Reserved]

4. Remove and reserve § 1.609.

5. Amend § 1.671 by revising paragraph (a) to read as follows:

§ 1.671

Evidence must comply with rules.

(a) Evidence consists of affidavits, transcripts of depositions, documents and things.

* * * * *

§§ 1.682, 1.683, and 1.688

[Removed and Reserved]

6. Remove and reserve § 1.682, 1.683, and 1.688.

Dated: September 13, 2000.

Q. Todd Dickinson,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.