2010-8626. Cancellation of Rule of Practice 41.200(b) Before the Board of Patent Appeals and Interferences in Interference Proceedings

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Court of Appeals for the Federal Circuit issued a decision in Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009). That decision impacted the continuing viability of portions of a patent interference rule. The United States Patent and Trademark Office (USPTO or Office) is therefore cancelling the affected portion of the interference rule.

DATES:

Effective date: This final rule is effective on April 15, 2010.

Applicability date: This final rule is applicable in interferences declared before, on, or after April 15, 2010.

FOR FURTHER INFORMATION CONTACT:

James T. Moore, Vice Chief Administrative Patent Judge, Board of Patent Appeals and Interferences (BPAI or Board), by telephone at [phone], or by mail addressed to: Mail Stop Interference, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of James T. Moore, at the BPAI.

SUPPLEMENTARY INFORMATION:

37 CFR 41.200(b) (2004) provides: “A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears.” On June 4, 2009, the Federal Circuit in Agilent determined that 37 CFR 41.200(b) does not apply in an interference proceeding in the instance where one party challenges another's written description. The Court held: “[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.” Agilent, 567 F.3d at 1375. The Court also noted that “[w]hen a party challenges a claim's validity under 35 U.S.C. 102 or 103, however, this court and the Board must interpret the claim in light of the specification in which it appears.” Id. Addressing the issue again in Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., 590 F.3d 1326, 1335 (Fed. Cir. 2010), the Court stated that “[A]ny conflict between [Agilent and Rule 200(b)] must be resolved as directed in Agilent.”). Accordingly, the Board in an interference will construe a claim in a manner consistent with Agilent.

Rulemaking Considerations

A. Administrative Procedure Act: The change in this final rule merely revises the USPTO's rules of practice to eliminate any inconsistency with the Federal Circuit's determination. Furthermore, this rule change involves an interpretive rule or rule of agency practice and procedure under 5 U.S.C. 553(b)(A). Accordingly, the change in this final rule may be adopted without prior notice and opportunity for public comment under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 5 U.S.C. 553(d). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment rule making for “`interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.'” (quoting 5 U.S.C. 553(b)(A))).

B. Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a regulatory flexibility analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C. 603.

C. Executive Order 12866 (Regulatory Planning and Review): This rule making has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13132 (Federalism): This rule making does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

E. Executive Order 13175 (Tribal Consultation): This rule making will not: (1) Have substantial direct effects on one or more Indian tribes; (2) impose substantial direct compliance costs on Indian tribal governments; or (3) preempt tribal law. Therefore, a tribal summary impact statement is not required under Executive Order 13175 (Nov. 6, 2000).

F. Executive Order 13211 (Energy Effects): This rule making is not a significant energy action under Executive Order 13211 because this rule making is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, a Statement of Energy Effects is not required under Executive Order 13211 (May 18, 2001).

G. Executive Order 12988 (Civil Justice Reform): This rule making meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

H. Executive Order 13045 (Protection of Children): This rule making does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (Apr. 21, 1997).

I. Executive Order 12630 (Taking of Private Property): This rule making will not effect a taking of private property or otherwise have taking implications under Executive Order 12630 (Mar. 15, 1988).

J. Congressional Review Act: Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule the USPTO will submit a report containing the final rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. However, this action is not a major rule as defined by 5 U.S.C. 804(2).

K. Unfunded Mandates Reform Act of 1995: This rule making does not involve a Federal intergovernmental mandate that will result in the expenditure by State, local, and tribal governments, in the aggregate, of 100 million dollars (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of 100 million dollars (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.

L. National Environmental Policy Act: This rule making will not have any effect on the quality of environment and is thus categorically excluded from review under the National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

M. National Technology Transfer and Advancement Act: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rule making does not contain provisions which involve the use of technical standards.

N. Paperwork Reduction Act: This rule making involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of information involved in this notice has been reviewed and approved by OMB under OMB control number 0651-0032. The USPTO is not resubmitting an information collection package to OMB for its review and approval because the changes in this rule making do not affect the information collection requirements associated with the information collection under OMB control number 0651-0032.

Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 41

• Administrative practice and procedure
• Inventions and patents
• Lawyers

For the reasons stated in the preamble, the Patent and Trademark Office amends 37 CFR part 41 as follows:

PART 41—PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

1. The authority citation for 37 CFR part 41 continues to read as follows:

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135.

Subpart E—Patent Interferences

§ 41.200

[Amended]

2. In § 41.200, paragraph (b) is removed and reserved.

Dated: April 10, 2010.

David J. Kappos,

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