[Federal Register: March 16, 1999 (Volume 64, Number 50)]
[Rules and Regulations]
[Page 12900-12902]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr16mr99-8]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket #: 990204043-9043-01]
RIN 0651-AB03
Consideration of Interlocutory Rulings at Final Hearing in
Interference Proceedings
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Interim rule with request for comments.
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SUMMARY: The Patent and Trademark Office (Office) is amending its
interference regulations to clarify the standard under which the Board
of Patent Appeals and Interferences (Board) considers interlocutory
decisions entered by a single administrative patent judge (APJ) at the
time of the final hearing.
DATES: Effective Date: March 16, 1999.
Comment Deadline Date: Written comments must be received on or
before
[[Page 12901]]
May 17, 1999. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail over the Internet
to ``Interference.Rules@uspto.gov'' and should include ``Rule 655(a)''
in the subject line. Comments may also be submitted by mail addressed
to BOX INTERFERENCE, Commissioner of Patents and Trademarks,
Washington, DC 20231, or by facsimile to (703) 305-0942, marked to the
attention of Fred McKelvey or Richard Torczon. The Office prefers to
receive comments by electronic mail via the Internet. Where comments
are submitted by mail, please include an electronic copy of the
comments on a DOS-formatted 3\1/2\ inch diskette in addition to a paper
copy.
The comments will be available for public inspection in Room 10C10
of Crystal Gateway, 1225 Jefferson Davis Highway, Arlington, Virginia,
and will be available through anonymous file transfer protocol (ftp)
via the Internet (address: ftp.uspto.gov). Since comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Fred McKelvey or Richard Torczon by
telephone at (703) 308-9797, or by mail addressed to: BOX INTERFERENCE,
Commissioner of Patents and Trademarks, Washington, DC 20231, or by
facsimile to (703) 305-0942, marked to the attention of Mr. McKelvey or
Mr. Torczon.
SUPPLEMENTARY INFORMATION: The Patent and Trademark Office has for some
time received inquiries from members of the bar with respect to the
meaning of Rule 655(a). In particular, the Patent and Trademark Office
has received inquiries concerning the application of the abuse of
discretion standard by a merits panel of the Board when considering an
interlocutory order entered by a single administrative patent judge
during the interlocutory phase of an interference. The purpose of this
notice of interim rule is to clarify Rule 655(a). This clarification
should eliminate unnecessary issues from arising in interference cases
and should provide the public with more certainty as to how matters
will be considered. The notice will also make practice within the Board
more uniform.
Any final decision in an interference is entered by a panel of at
least three members of the Board. Rule 655(a), as currently worded,
gives the impression that the abuse of discretion standard is to be
applied by a merits panel for all interlocutory orders, including those
involving the merits of the interference, e.g., patentability or
attempts to obtain benefit of an earlier filed application. The rule is
amended to emphasize that a panel of the Board will resolve the merits
of an interference as a panel without deference to any interlocutory
order. Panels will, however, continue to apply the abuse of discretion
standard, but only with respect to procedural orders. No list could
completely detail which issues are procedural, but examples would
include granting or denying an extension of time, granting or denying
additional discovery under 37 CFR 1.687(c), dismissing a motion for
failure to comply with the rules and setting of times to take action in
an interference, and determining the dates for conference calls.
For the convenience of the reader, the precise changes being made
to Sec. 1.655(a) are reproduced in the following paragraph, with
deleted text in brackets and added text underlined:
(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 of this title, 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] an
interlocutory order [was an abuse of discretion] should be modified.
[All interlocutory orders shall be presumed to have been correct,
and the] The burden of showing [an abuse of discretion] that an
interlocutory order should be modified 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.] The abuse of discretion standard shall apply only to
procedural matters.
Interested members of the public are invited to present written
comments on the change to Sec. 1.655(a) contained in this Interim Rule.
Other Considerations
An interim final rule is appropriate under the present
circumstances for at least two reasons. First, the rulemaking is
procedural within the meaning of 5 U.S.C. 553(b)(A). Second, the
Commissioner of Patents and Trademarks for good cause finds that notice
and public procedure would be contrary to the public interest within
the meaning of 5 U.S.C. 553(b)(B) because delay in the promulgation of
this rule would perpetuate the burdens on parties seeking full
consideration of interlocutory decisions at the time of the final
hearing.
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553, or any other law, the analytical
requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq.,
are inapplicable.
This rule involves no collection of information subject to the
Paperwork Reduction Act, 44 U.S.C. ch. 35. Notwithstanding any other
provision of law, no person is required to respond 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.
This rule does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 12612 (October 26, 1987).
This rule has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.655 is amended by revising paragraph (a) 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 an interlocutory order should be modified. The burden
of showing that an interlocutory order should be modified shall be on
the party attacking the order. The abuse of discretion standard shall
apply only to procedural matters.
* * * * *
[[Page 12902]]
Dated: March 10, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-6346 Filed 3-15-99; 8:45 am]
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