Patent and Trademark Office
Board of Patent Appeals and Interferences
Complete Text of Interference Rules as Amended
The rules that govern interference proceedings in the Patent and
Trademark Office ( 1.601 et seq.), have been extensively amended,
effective April 21, 1995, by the Notice of Final Rule published at 60
Federal Register 14488 through 14536 (March 17, 1995). For the convenience
of practitioners, the complete text of all of the interference rules,
including these amendments, is provided below.
March 22, 1995 FRED E. McKELVEY
Chief Administrative Patent Judge
Board of Patent Appeals and Interferences
1.601 Scope of rules, definitions.
This subpart governs the procedure in patent interferences in the
Patent and Trademark Office. This subpart shall be construed to secure the
just, speedy, and inexpensive determination of every interference. For the
meaning of terms in the Federal Rules of Evidence as applied to
interferences, see 1.671(c). Unless otherwise clear from the context,
the following definitions apply to this subpart:
(a) Additional discovery is discovery to which a party may be entitled
under 1.687 in addition to discovery to which the party is entitled as
a matter of right under 1.673(a) and (b).
(b) Affidavit means affidavit, declaration under 1.68, or statutory
declaration under 28 U.S.C. 1746. A transcript of an ex parte
deposition may be used as an affidavit.
(c) Board means the Board of Patent Appeals and Interferences.
(d) Case-in-chief means that portion of a party's case where the party
has the burden of going forward with evidence.
(e) Case-in-rebuttal means that portion of a party's case where the
party presents evidence in rebuttal to the case-in-chief of another party.
(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.
(h) In the case of an application, filing date means the filing date
assigned to the application. In the case of a patent, "filing date" means
the filing date assigned to the application which issued as the patent.
(i) An interference is a proceeding instituted in the Patent and
Trademark Office before the Board to determine any question of
patentability and priority of invention between two or more parties
claiming the same patentable invention. An interference may be declared
between two or more pending applications naming different inventors when,
in the opinion of an examiner, the applications contain claims for the
same patentable invention. An interference may be declared between one or
more pending applications and one or more unexpired patents naming
different inventors when, in the opinion of an examiner, any application
and any unexpired patent contain claims for the same patentable invention.
(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 a party are normally performed by an attorney or agent,
"party" may be construed to mean the attorney or agent. An inventor is the
individual named as inventor in an application involved in an interference
or the individual named as inventor in a patent involved in an
interference.
(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".
(o) Sworn means sworn or affirmed.
(p) United States means the United States of America, its territories
and possessions.
(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).
1.602 Interest in applications and patents involved in an interference.
(a) Unless good cause is shown, an interference shall not be declared
or continued between (1) applications owned by a single party or (2)
applications and an unexpired patent owned by a single party.
(b) The parties, within 20 days after an interference is declared,
shall notify the Board of any and all right, title, and interest in any
application or patent involved or relied upon in the interference unless
the right, title, and interest is set forth in the notice declaring the
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.
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.
1.604 Request for interference between applications by an applicant.
(a) An applicant may seek to have an interference declared with an
application of another by,
(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,
(2) Identifying the other application and, if known, a claim in the
other application which corresponds to the proposed count, and
(3) Explaining why an interference should be declared.
(b) When an applicant presents a claim known to the applicant to define
the same patentable invention claimed in a pending application of another,
the applicant shall identify that pending application, unless the claim is
presented in response to a suggestion by the examiner. The examiner shall
notify the Commissioner of any instance where it appears an applicant may
have failed to comply with the provisions of this paragraph.
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 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.
(b) The suggestion of a claim by the examiner for the purpose of an
interference will not stay the period for response to any outstanding
Office action. When a suggested claim is timely presented, ex parte
proceedings in the application will be stayed pending a determination of
whether an interference will be declared.
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. At the time an interference is
initially declared ( 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 1.633(c), not to contain
separate patentable inventions.
1.607 Request by applicant for interference with patent.
(a) An applicant may seek to have an interference declared between an
application and an unexpired patent by,
(1) Identifying the patent,
(2) Presenting a proposed count,
(3) Identifying at least one claim in the patent corresponding to the
proposed count,
(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
(5) Applying the terms of any application claim
(i) Identified as corresponding to the count and
(ii) Not previously in the application to the disclosure of the
application.
(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.
(b) When an applicant seeks an interference with a patent, examination
of the application, including any appeal to the Board, shall be conducted
with special dispatch within the Patent and Trademark Office. The examiner
shall determine whether there is interfering subject matter claimed in the
application and the patent which is patentable to the applicant subject to
a judgment in an interference. If the examiner determines that there is
any interfering subject matter, an interference will be declared. If the
examiner determines that there is no interfering subject matter, the
examiner shall state the reasons why an interference is not being declared
and otherwise act on the application.
(c) When an applicant presents a claim which corresponds exactly or
substantially to a claim of a patent, the applicant shall identify the
patent and the number of the patent claim, unless the claim is presented
in response to a suggestion by the examiner. The examiner shall notify the
Commissioner of any instance where an applicant fails to identify the
patent.
(d) A notice that an applicant is seeking to provoke an interference
with a patent will be placed in the file of the patent and a copy of the
notice will be sent to the patentee. The identity of the applicant will
not be disclosed unless an interference is declared. If a final decision
is made not to declare an interference, a notice to that effect will be
placed in the patent file and will be sent to the patentee.
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 ( 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 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.
1.609 Preparation of interference papers by examiner.
When the examiner determines that an interference should be declared,
the examiner shall forward to the Board:
(a) All relevant application and patent files and
(b) A statement identifying:
(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
(4) Whether an applicant or patentee is entitled to the benefit of the
filing date of an earlier application and, if so, sufficient information
to identify the earlier application.
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 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 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 ( 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.
1.611 Declaration of interference.
(a) Notice of declaration of an interference will be sent to each party.
(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) The notice of declaration shall specify:
(1) The name and residence of each party involved in the interference;
(2) The name and address of record of any attorney or agent of record
any application or patent involved in the interference;
(3) The name of any assignee of record in the Patent and Trademark
Office;
(4) The identity of any application or patent involved in the
interference;
(5) Where a party is accorded the benefit of the filing date of an
earlier application, the identity of the earlier application;
(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
(9) The order of the parties.
(d) The notice of declaration may also specify the time for:
(1) Filing a preliminary statement as provided in 1.621(a);
(2) Serving notice that a preliminary statement has been filed as
provided in 1.621(b); and
(3) Filing preliminary motions authorized by 1.633.
(e) Notice may be given in the Official Gazette that an interference
has been declared involving a patent.
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
1.131 and any evidence and explanation under 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 1.635. See 1.11(e) concerning public access to
interference files.
(b) After preliminary motions under 1.633 are decided ( 1.640(b)),
each party shall have access to and may obtain copies of any affidavit
filed under 1.131 and any evidence and explanation filed under 1.608
in any application set out in the notice declaring the interference.
(c) Any evidence and explanation filed under 1.608 in the file of
any application identified in the notice declaring the interference shall
be served when required by 1.617(b).
(d) The parties at any time may agree to exchange copies of papers in the
files of any application identified in the notice declaring the
interference.
1.613 Lead attorney, same attorney representing different parties in an
interference, withdrawal of attorney or agent.
(a) Each party may be required to designate one attorney or agent of
record as the lead attorney or agent.
(b) The same attorney or agent or members of the same firm of attorneys
or agents may not represent two or more parties in an interference except
as may be permitted in this Chapter.
(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 ( 1.635).
1.614 Jurisdiction over interference.
(a) The Board acquires jurisdiction over an interference when the
interference is declared under 1.611.
(b) When the interference is declared the interference is a contested
case within the meaning of 35 U.S.C. 24.
(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.
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.
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 (
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.
(d) A party may file a motion ( 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.
1.617 Summary judgment against applicant.
(a) An administrative patent judge shall review any evidence filed by
an applicant under 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 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
1.608(b). At the time an applicant files a response, the applicant shall
serve a copy of any evidence filed under 1.608(b) and this paragraph.
(c) If a response is not timely filed by the applicant, the Board shall
enter a final decision granting summary judgment against the applicant.
(d) If a response is timely filed by the applicant, all opponents may
file a statement and may oppose any preliminary motion filed under
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 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.
(f) When more than two parties are involved in an interference, all
parties may participate in summary judgment proceedings under this section.
(g) If a response by the applicant is timely filed, the administrative
patent judge or the Board shall decide whether the evidence submitted
under 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 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.
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.
(b) When presenting a paper in an interference, a party shall not
submit with the paper a copy of a paper previously filed in the
interference.
1.621 Preliminary statement, time for filing, notice of filing.
(a) Within the time set for filing preliminary motions under 1.633,
each party may file a preliminary statement. The preliminary statement may
be signed by any individual having knowledge of the facts recited therein
or by an attorney or agent of record.
(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.
1.622 Preliminary statement, who made invention, where invention made.
(a) A party's preliminary statement must identify the inventor who made
the invention defined by each count and must state on behalf of the
inventor the facts required by paragraph (a) of 1.623, 1.624, and
1.625 as may be appropriate. When an inventor identified in the
preliminary statement is not an inventor named in the party's application
or patent, the party shall file a motion under 1.634 to correct
inventorship.
(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).
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 must state the following facts
as to the invention defined by each count:
(1) The date on which the first drawing of the invention was made.
(2) The date on which the first written description of the invention
was made.
(3) The date on which the invention was first disclosed by the inventor
to another person.
(4) The date on which the invention was first conceived by the inventor.
(5) The date on which the invention was first actually reduced to
practice. If the invention was not actually reduced to practice by or on
behalf of the inventor prior to the party's filing date, the preliminary
statement shall so state.
(6) The date after the inventor's conception of the invention when
active exercise of reasonable diligence toward reducing the invention to
practice began.
(b) If a party intends to prove derivation, the preliminary statement
must also comply with 1.625.
(c) When a party alleges under paragraph (a)(1) of this section that a
drawing was made, a copy of the first 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 made, a copy of the first written description shall be filed
with and identified in the preliminary statement. See 1.628(b) when a
copy of the first drawing or written description cannot be filed with the
preliminary statement.
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.
(b) If a party intends to prove derivation, the preliminary statement
must also comply with 1.625.
(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 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.
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:
(1) The name of the opponent.
(2) The date on which the first drawing of the invention was made.
(3) The date on which the first written description of the invention
was made.
(4) The date on which the invention was first disclosed by the inventor
to another person.
(5) The date on which the invention was first conceived by the
inventor.
(6) The date on which the invention was first communicated to the
opponent.
(b) If a party intends to prove priority, the preliminary statement
must also comply with 1.623 or 1.624.
(c) When a party alleges under paragraph (a)(2) of this section that a
drawing was made, a copy of the first drawing shall be filed with and
identified in the preliminary statement. When a party alleges under
paragraph (a)(3) of this section that a written description of the
invention was made, a copy of the first written description shall be filed
with and identified in the preliminary statement. See 1.628(b) when a
first drawing or first written description cannot be filed with the
preliminary statement.
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.
1.627 Preliminary statement; sealing before filing, opening of
statement.
(a) The preliminary statement and copies of any drawing or written
description shall be filed in a sealed envelope bearing only the name of
the party filing the statement and the style (e.g., Jones v. Smith) and
number of the interference. The sealed envelope should contain only the
preliminary statement and copies of any drawing or written description. If
the preliminary statement is filed through the mail, the sealed envelope
should be enclosed in an outer envelope addressed to the Commissioner of
Patents and Trademarks in accordance with 1.1(e).
(b) A preliminary statement may be opened only at the direction of an
administrative patent judge.
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 ( 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 a written
description to the party's preliminary statement as required by
1.623(c), 1.624(c), or 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
( 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 ( 1.635) for additional
discovery under 1.687 or during a testimony period.
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
1.628.
(b) Evidence which shows that an act alleged in the preliminary
statement occurred prior to the date alleged in the statement shall
establish only that the act occurred as early as the date alleged in the
statement.
(c) If a party does not file a preliminary statement, the party:
(1) Shall be restricted to the party's effective filing date and
(2) Will not be permitted to prove that:
(i) The party made the invention prior to the party's filing date
or
(ii) Any opponent derived the invention from the party.
(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 1.623(c), 1.624(c), or
1.625(c), the party will be restricted to the party's effective filing
date as to that allegation unless the party complies with 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.
(e) A preliminary statement shall not be used as evidence on behalf of
the party filing the statement.
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 (
1.611(c)(5)) in the notice declaring the interference or the party files a
preliminary motion under 1.633 seeking the benefit of the filing date
of the earlier application.
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
1.633 any preliminary statement filed under 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 1.621(b).
(b) A junior party who does not file a preliminary statement shall not
have access to the preliminary statement of any other party.
(c) If an interference is terminated before the preliminary statements
have been opened, the preliminary statements will remain sealed and will
be returned to the respective parties who submitted the statements.
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.
1.633 Preliminary motions.
A party may file the following 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 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 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.
(c) A motion to redefine the interfering subject matter by
(1) adding or substituting a count,
(2) amending an application claim corresponding to a count or adding a
claim in the moving party's application to be designated to correspond to
a count,
(3) designating an application or patent claim to correspond to a
count,
(4) designating an application or patent claim as not corresponding
to a count, or
(5) requiring an opponent who is an applicant to add a claim and to
designate the claim to correspond to a count. See 1.637(a) and (c).
(d) A motion to substitute a different application owned by a party for an
application involved in the interference. See 1.637(a) and (d).
(e) A motion to declare an additional interference
(1) between an additional application not involved in the interference
and owned by a party and an opponent's application or patent involved in the
interference or
(2) when an interference involves three or more parties, between less
than all applications and patents involved in the interference. See 1.637
(a) and (e).
(f) A motion to be accorded the benefit of the filing date of an
earlier filed application. See 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 1.637 (a) and (g).
(h) When a patent is involved in an interference and the patentee has
on file or files an application for reissue under 1.171, a motion to
add the application for reissue to the interference. See 1.637(a) and
(h).
(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.
(j) When a motion is filed under paragraph (c)(1) of this section an
opponent, in addition to opposing the motion, may file a motion for
benefit under paragraph (f) of this section as to the count to be added or
substituted.
1.634 Motion to correct inventorship.
A party may file a motion to (a) amend its application involved in an
interference to correct inventorship as provided by 1.48 or (b) correct
inventorship of its patent involved in an interference as provided in
1.324. See 1.637(a).
1.635 Miscellaneous motions.
A party seeking entry of an order relating to any matter other than a
matter which may be raised under 1.633 or 1.634 may file a motion
requesting entry of the order. See 1.637 (a) and (b).
1.636 Motions, time for filing.
(a) A preliminary motion under 1.633 (a) through (h) shall be filed
within a time period set by an administrative patent judge.
(b) A preliminary motion under 1.633 (i) or (j) shall be filed
within 20 days of the service of the preliminary motion under 1.633
(a), (b), (c)(1), or (g) unless otherwise ordered by an administrative
patent judge.
(c) A motion under 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 1.635 shall be filed as specified in this subpart
or when appropriate unless otherwise ordered by an administrative patent
judge.
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 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 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 ( 1.656(h)).
(c) A preliminary motion under 1.633(c) shall explain why the
interfering subject matter should be redefined.
(1) A preliminary motion seeking to add or substitute a count shall:
(i) Propose each count to be added or substituted.
(ii) When the moving party is an applicant, show the patentability
to the applicant of all claims in, or proposed to be added to, the party's
application which correspond to each proposed count and apply the terms of
the claims to the disclosure of the party's application; when necessary a
moving party applicant shall file with the motion an amendment adding any
proposed claim to the application.
(iii) Identify all claims in an opponent's application which should
be designated to correspond to each proposed count; if an opponent's
application does not contain such a claim, the moving party shall propose
a claim to be added to the opponent's application. The moving party shall
show the patentability of any proposed claims to the opponent and apply
the terms of the claims to the disclosure of the opponent's application.
(iv) Designate the claims of any patent involved in the interference
which define the same patentable invention as each proposed count.
(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 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 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) A preliminary motion seeking to amend an application claim
corresponding to a count or adding a claim to be designated to correspond
to a count shall:
(i) Propose an amended or added claim.
(ii) Show that the claim proposed to be amended or added defines the
same patentable invention as the count.
(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) A preliminary motion seeking to designate an application or patent
claim to correspond to a count shall:
(i) Identify the claim and the count.
(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) A preliminary motion seeking to designate an application or patent
claim as not corresponding to a count shall:
(i) Identify the claim and the count.
(ii) Show that the claim does not define 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.
(5) A preliminary motion seeking to require an opponent who is an
applicant to add a claim and designate the claim as corresponding to a
count shall:
(i) Propose a claim to be added by the opponent.
(ii) Show the patentability to the opponent of the claim and apply
the terms of the claim to the disclosure of the opponent's application.
(iii) Identify the count to which the claim shall be designated to
correspond.
(iv) Show the claim defines the same patentable invention as the
count to which it will be designated to correspond.
(d) A preliminary motion under 1.633(d) to substitute a different
application of the moving party shall:
(1) Identify the different application.
(2) Certify that a complete copy of the file of the different appli-
cation, except for documents filed under 1.131 or 1.608, has been served
on all opponents.
(3) Show the patentability to the applicant of all claims in, or
proposed to be added to, the different application which correspond to each
count and apply the terms of the claims to the disclosure of the different
application; when necessary the applicant shall file with the motion an
amendment adding a claim to the different application.
(e) A preliminary motion to declare an additional interference under
1.633(e) shall explain why an additional interference is necessary.
(1) When the preliminary motion seeks an additional interference under
1.633(e)(1), the motion shall:
(i) Identify the additional application.
(ii) Certify that a complete copy of the file of the additional
application, except for documents filed under 1.131 or 1.608, has
been served on all opponents.
(iii) Propose a count for the additional interference.
(iv) Show the patentability to the applicant of all claims in, or
proposed to be added to, the additional application which correspond to each
proposed count for the additional interference and apply the terms of the
claims to the disclosure of the additional application; when necessary the
applicant shall file with the motion an amendment adding any claim to the
additional application.
(v) When the opponent is an applicant, show the patentability to the
opponent of any claims in, or proposed to be added to, the opponent's
application which correspond to the proposed count and apply the terms of
the claims to the disclosure of the opponent's application.
(vi) Identify all claims in the opponent's application or patent
which should be designated to correspond to each proposed count; if the
opponent's application does not contain any such claim, the motion shall
propose a claim to be added to the opponent's application.
(vii) Show that each proposed count for the additional interference
defines a separate patentable invention from all counts of the
interference in which the motion is filed.
(viii) Be accompanied by a motion under 1.633(f) requesting the
benefit of the filing date ofan 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) When the preliminary motion seeks an additional interference under
1.633(e)(2), the motion shall:
(i) Identify any application or patent to be involved in the
additional interference.
(ii) Propose a count for the additional interference.
(iii) When the moving party is an applicant, show the patentability
to the applicant of all claims in, or proposed to be added to, the party's
application which correspond to each proposed count and apply the terms of
the claims to the disclosure of the party's application; when necessary a
moving party applicant shall file with the motion an amendment adding any
proposed claim to the application.
(iv) Identify all claims in any opponent's application which should
be designated to correspond to each proposed count; if an opponent's
application does not contain such a claim, the moving party shall propose
a claim to be added to the opponent's application. The moving party shall
show the patentability of any proposed claim to the opponent and apply the
terms of the claim to the disclosure of the opponent's application.
(v) Designate the claims of any patent involved in the interference
which define the same patentable invention as each proposed count.
(vi) Show that each proposed count for the additional interference
defines a separate patentable invention from all counts in the interference
in which the motion is filed.
(vii) Be accompanied by a motion under 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) A preliminary motion for benefit under 1.633(f) shall:
(1) Identify the earlier application.
(2) When the 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 1.131 or 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 1.647 must also be
met.
(3) Show that the earlier application constitutes a constructive
reduction to practice of each count.
(g) A preliminary motion to attack benefit under 1.633(g) shall
explain, as to each count, why the opponent should not be accorded the
benefit of the filing date of the earlier application.
(h) A preliminary motion to add an application for reissue under
1.633(h) shall:
(1) Identify the application for reissue.
(2) Certify that a complete copy of the file of the application for
reissue has been served on all opponents.
(3) Show the patentability of all claims in, or proposed to be added
to, the application for reissue which correspond to each count and apply the
terms of the claims to the disclosure of the application for reissue; when
necessary a moving applicant for reissue shall file with the motion an
amendment adding any proposed claim to the application for reissue.
(4) Be accompanied by a motion under 1.633 (f) requesting the
benefit of the filing date of any earlier filed application, if benefit is
desired.
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.
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 ( 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 ( 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 1.633 or a motion to correct
inventorship under 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) When additional evidence in the form of expert-witness testimony is
needed in support of or opposition to a preliminary motion, the moving
party or opponent should:
(1) Identify the person whom it expects to use as an expert;
(2) State the field in which the person is alleged to be an expert;
and
(3) State:
(i) the subject matter on which the person is expected to testify;
(ii) the facts and opinions to which the person is expected to
testify; and
(iii) a summary of the grounds and basis for each opinion.
(e) When additional evidence in the form of fact-witness testimony is
necessary, state the facts to which the witness is expected to testify.
(f) If the opponent is to be called, or if evidence in the possession
of the opponent is necessary, explain the evidence sought, what it will
show, and why it is needed.
(g) When inter partes tests are expected to be performed, describe the
tests stating what they will be expected to show.
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 decision 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 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
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 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 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 1.633 will not be considered except as
provided by 1.645(b).
(c) When a decision on any motion under 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;
(2) The party is a junior party who fails to file a preliminary
statement; or
(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 administra-
tive 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
( 1.635) requesting a testimony period if either party wishes to introduce
any evidence to be considered at final hearing ( 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 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.
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 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 ( 1.638(a)). If an opponent files an opposition, the party
may reply ( 1.638(b)).
(c) After considering any timely filed views, including any timely
filed preliminary motions under 1.633, oppositions and replies, the
administrative patent judge shall decide how the interference shall
proceed.
1.642 Addition of application or patent to interference.
During the pendency of an interference, if the administrative patent
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.
1.643 Prosecution of interference by assignee.
(a) An assignee of record in the Patent and Trademark Office of the
entire interest in an application or patent involved in an interference is
entitled to conduct prosecution of the interference to the exclusion of
the inventor.
(b) An assignee of a part interest in an application or patent involved
in an interference may file a motion ( 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.
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
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;
(3) The petition seeks relief under 1.183.
(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 1.656). Any petition under paragraph (a)(3) of this
section shall be timely if it is filed simultaneously with a proper motion
under 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.
(e) Any petition under paragraph (a) of this section shall be
accompanied by the petition fee set forth in 1.17(h).
(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 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.
(h) An oral hearing on the petition will not be granted except when
considered necessary by the Commissioner.
(i) The Commissioner may delegate to appropriate Patent and Trademark
Office employees the determination of petitions under this section.
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 ( 1.635) seeking an extension of time to take
action in an interference. See 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 motion
( 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 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.
(c) The provisions of 1.136 do not apply to time periods in
interferences.
(d) An administrative patent judge may stay proceedings in an
interference.
1.646 Service of papers, proof of service.
(a) A copy of every paper filed in the Patent and Trademark Office in
an interference or an application or patent involved in the interference
shall be served upon all other parties except:
(1) Preliminary statements when filed under 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 1.676; copies of transcripts shall be served as part of a
party's record under 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:
(1) By handing a copy of the paper or causing a copy of the paper to
be handed to the person served.
(2) By leaving a copy of the paper with someone employed by the person
at the person's usual place of business.
(3) When the person served has no usual place of business, by leaving a
copy of the paper at the person's residence with someone of suitable age
and discretion then residing therein.
(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.
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.
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 ( 1.635) for additional
discovery under 1.687(c) and testimony periods for taking any necessary
testimony.
(b) Where appropriate, testimony periods will be set to permit a party
to:
(1) Present its case-in-chief and/or case-in-rebuttal and/or
(2) Cross-examine an opponent's case-in-chief and/or a case-in-rebuttal.
(c) A party is not entitled to take testimony to present a
case-in-chief unless:
(1) The administrative patent judge orders the taking of testimony under
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
(4) A motion ( 1.635) is filed showing good cause why a testimony
period should be set.
(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 1.635 and 1.645(a).
1.652 Judgment for failure to take testimony or file record.
If a junior party fails to timely take testimony authorized under
1.651, or file a record under 1.653(c), an administrative patent judge,
with or without a motion ( 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.
1.653 Record and exhibits.
(a) Testimony shall consist of affidavits under 1.672(b), (c) and
(g), 1.682(c), 1.683(b) and 1.688(b), transcripts of depositions under
1.671(g) and 1.672(a) when a deposition is authorized by an
administrative patent judge, transcripts of depositions under
1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed statements under
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 1.688(a).
(b) An affidavit shall be filed as set forth in 1.677. A certified
transcript of a deposition, including a deposition cross-examining an
affiant, shall be filed as set forth in 1.676, 1.677 and 1.678. An
original agreed statement shall be filed as set forth in 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.
(2) An index of exhibits briefly describing the nature of each exhibit
and giving the page of the record where each exhibit is first identified and
offered into evidence.
(3) The count or counts.
(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.
(5) [Reserved]
(6) Any evidence from another interference, proceeding, or action
relied upon by the party under 1.683.
(7) Each request for an admission and the admission and each written
interrogatory and the answer upon which a party intends to rely under
1.688.
(d) The pages of the record shall be consecutively numbered to the
extent possible.
(e) The name of each witness shall appear at the top of each page of
each affidavit or transcript.
(f) [Reserved]
(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.
(h) [Reserved]
(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 official records and publications filed by the
party under 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 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.
(j) Any testimony, record, or exhibit which does not comply with this
section may be returned under 1.618(a).
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 ( 1.656(a)) shall not be entitled to appear at final
hearing.
(b) The opening argument of a junior party shall include a fair
statement of the junior party's case and the junior party's position with
respect to the case presented on behalf of any other party. A junior party
may reserve a portion of its time for rebuttal.
(c) A party shall not be entitled to argue that an opponent abandoned,
suppressed, or concealed an actual reduction to practice unless a notice
under 1.632 was timely filed.
(d) After final hearing, the interference shall be taken under
advisement by the Board. No further paper shall be filed except under
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.
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 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
1.633 or 1.634 unless the matter was properly raised in a motion that
was timely filed by the party under 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 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 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.
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) The opening brief of a junior party shall contain under appropriate
headings and in the order indicated:
(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.
(3) A table of contents, with page references, and a table of cases
(alphabetically arranged), statutes, and other authorities cited, with
references to the pages of the brief where they are cited.
(4) A statement of the issues presented for decision in the inter-
ference.
(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.
(7) A short conclusion stating the precise relief requested.
(8) An appendix containing a copy of the counts.
(c) The opening brief of the senior party shall conform to the
requirements of paragraph (b) of this section except:
(1) A statement of the issues and of the facts need not be made unless
the party is dissatisfied with the statement in the opening brief of the
junior party and
(2) An appendix containing a copy of the counts need not be included
if the copy of the counts in the opening brief of the junior party is correct.
(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 1.653(g) for records except
the requirement for binding.
(e) An original and four copies of each brief must be filed.
(f) Any brief which does not comply with the requirements of this
section may be returned under 1.618(a).
(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 ( 1.635) to
suppress the evidence. The provisions of 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
challenge the admissibility of the evidence of an opponent on a ground
that could have been raised in a timely objection under 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.
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.
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).
(c) A judgment in an interference settles all issues which (1) were
raised and decided in the interference,(2) could have been properly raised
and decided in the interference by a motion under 1.633 (a) through (d)
and (f) through (j) or 1.634 and (3) could have been properly raised
and decided in an additional interference with a motion under 1.633(e).
A losing party who could have properly moved, but failed to move, under
1.633 or 1.634, shall be estopped to take ex parte or inter partes
action in the Patent and Trademark Office after the interference which is
inconsistent with that party's failure to properly move, except that a
losing party shall not be estopped with respect to any claims which
correspond, or properly could have corresponded, to a count as to which
that party was awarded a favorable judgment.
1.659 Recommendation.
(a) Should the Board have knowledge of any ground for rejecting any
application claim not involved in the judgment of the interference, it may
include in its decision a recommended rejection of the claim. Upon
resumption of ex parte prosecution of the application, the examiner shall
be bound by the recommendation and shall enter and maintain the
recommended rejection unless an amendment or showing of facts not
previously of record is filed which, in the opinion of the examiner,
overcomes the recommended rejection.
(b) Should the Board have knowledge of any ground for reexamination of
a patent involved in the interference as to a patent claim not involved in
the judgment of the interference, it may include in its decision a
recommendation to the Commissioner that the patent be reexamined. The
Commissioner will determine whether reexamination will be ordered.
(c) The Board may make any other recommendation to the examiner or the
Commissioner as may be appropriate.
1.660 Notice of reexamination, reissue, protest, or litigation.
(a) When a request for reexamination of a patent involved in an
interference is filed, the patent owner shall notify the Board within 10
days of receiving notice that the request was filed.
(b) When an application for reissue is filed by a patentee involved in
an interference, the patentee shall notify the Board within 10 days of the
day the application for reissue is filed.
(c) When a protest under 1.291 is filed against an application
involved in an interference, the applicant shall notify the Board within
10 days of receiving notice that the protest was filed.
(d) A party in an interference shall notify the Board promptly of any
litigation related to any patent or application involved in an
interference, including any civil action commenced under 35 U.S.C. 146.
(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 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.
1.661 Termination of interference after judgment.
After a final decision is entered by the Board, an interference is
considered terminated when no appeal (35 U.S.C. 141) or other review (35
U.S.C. 146) has been or can be taken or had.
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 1.660(b), timely file a preliminary
motion under 1.633(h) or show good cause why the motion could not have
been timely filed or would not be appropriate.
(c) The filing of a statutory disclaimer under 35 U.S.C. 253 by a
patentee will delete any statutorily disclaimed claims from being involved
in the interference. A statutory disclaimer will not be treated as a
request for entry of an adverse judgment against the patentee unless it
results in the deletion of all patent claims corresponding to a count.
1.663 Status of claim of defeated applicant after interference.
Whenever an adverse judgment is entered as to a count against an
applicant from which no appeal (35 U.S.C. 141) or other review (35 U.S.C.
146) has been or can be taken or had, the claims of the application
corresponding to the count stand finally disposed of without further
action by the examiner. Such claims are not open to further ex parte
prosecution.
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.
1.665 Second interference.
A second interference between the same parties will not be declared
upon an application not involved in an earlier interference for an
invention defined by a count of the earlier interference. See 1.658(c).
1.666 Filing of interference settlement agreements.
(a) Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in
connection with or in contemplation of the termination of the
interference, must be in writing and a true copy thereof must be filed
before the termination of the interference ( 1.661) as between the
parties to the agreement or understanding.
(b) If any party filing the agreement or understanding under paragraph
(a) of this section so requests, the copy will be kept separate from the
file of the interference, and made available only to Government agencies
on written request, or to any person upon petition accompanied by the fee
set forth in 1.17(i)(1) and on a showing of good cause.
(c) Failure to file the copy of the agreement or understanding under
paragraph (a) of this section will render permanently unenforceable such
agreement or understanding and any patent of the parties involved in the
interference or any patent subsequently issued on any application of the
parties so involved. The Commissioner may, however, upon petition
accompanied by the fee set forth in 1.17(h) and on a showing of good
cause for failure to file within the time prescribed, permit the filing of
the agreement or understanding during the six month period subsequent to
the termination of the interference as between the parties to the
agreement or understanding.
1.671 Evidence must comply with rules.
(a) Evidence consists of testimony and referenced exhibits, official
records and publications filed under 1.682, testimony and referenced
exhibits from another interference, proceeding, or action filed under
1.683, discovery relied upon under 1.688, and the specification
(including claims) and drawings of any application or patent:
(1) Involved in the interference.
(2) To which a party has been accorded benefit in the notice declaring
the interference or by a preliminary motion granted under 1.633.
(3) For which a party has sought, but has been denied, benefit by a
preliminary motion under 1.633.
(4) For which benefit was rescinded by a preliminary motion granted
under 1.633.
(b) Except as otherwise provided in this subpart, the Federal Rules of
Evidence shall apply to interference proceedings. Those portions of the
Federal Rules of Evidence relating to criminal actions, juries, and other
matters not relevant to interferences shall not apply.
(c) Unless the context is otherwise clear, the following terms of the
Federal Rules of Evidence shall be construed as follows:
(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.
(3) Judicial notice means official notice.
(4) Civil action, civil proceeding, action, or trial mean interference.
(5) Appellate court means United States Court of Appeals for the
Federal Circuit or a United States district court when judicial review is
under 35 U.S.C. 146.
(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.
(d) Certification is not necessary as a condition to admissibility when
the record is a record of the Patent and Trademark Office to which all
parties have access.
(e) A party may not rely on an affidavit (including any exhibits),
patent or printed publication previously submitted by the party under
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 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 ( 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 1.673 and may proceed to take testimony.
(h) A party must file a motion ( 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.
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
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 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 1.653. Exhibits
identified in the affidavits or in any other testimony filed under
1.683(a) and 1.688(a) and any official records and printed publications
filed under 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 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 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 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 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 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 opponent requests
cross-examination of an affiant, the party shall notice a deposition at a
reasonable location within the United States under 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 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 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 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 ( 1.635) may authorize testimony
to be taken in another manner.
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:
(1) A list and copy of each document in the party's possession,
custody, or control and upon which the party intends to rely at any
deposition and
(2) A list of and a proffer of reasonable access to things in the
party's possession, custody, or control and upon which the party intends
to rely at any deposition.
(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 ( 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 1.672(b),
shall, after complying with paragraph (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.
(f) The parties shall not take depositions in more than one place at
the same time or so nearly at the same time that reasonable opportunity to
travel from one place of deposition to another cannot be had.
(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.
(h) A copy of the notice of deposition shall be attached to the
certified transcript of the deposition filed under 1.676(a).
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.
(b) Unless the parties agree in writing, the following persons shall
not be competent to serve as an officer:
(1) A relative or employee of a party,
(2) a relative or employee of an attorney or agent of a party, or
(3) a person interested, directly or indirectly, in the interference
either as counsel, attorney, agent, or otherwise.
1.675 Examination of witness, reading and signing transcript of
deposition.
(a) Each witness before giving an oral deposition shall be duly sworn
according to law by the officer before whom the deposition is to be taken.
(b) The testimony shall be taken in answer to interrogatories with any
questions and answers recorded in their regular order by the officer or by
some other person, who shall be subject to the provisions of 1.674(b),
in the presence of the officer unless the presence of the officer is
waived on the record by agreement of all parties.
(c) All objections made at the time of the deposition to the
qualifications of the officer taking the deposition, the manner of taking
it, the evidence presented, the conduct of any party, and any other
objection to the proceeding shall be noted on the record by the officer.
Evidence objected to shall be taken subject to any objection.
(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.
1.676 Certification and filing by officer, marking exhibits.
(a) The officer shall prepare a certified transcript of the deposition
by attaching to a transcript of the deposition a copy of the notice of
deposition, any exhibits to be annexed to the certified transcript, and a
certificate signed and sealed by the officer and showing:
(1) The witness was duly sworn by the officer before commencement of
testimony by the witness.
(2) The transcript is a true record of the testimony given by the
witness.
(3) The name of the person by whom the testimony was recorded and,
if not recorded by the officer, whether the testimony was recorded in the
presence of the officer.
(4) The presence or absence of any opponent.
(5) The place where the deposition was taken and the day and hour when
the deposition began and ended.
(6) The officer is not disqualified under 1.674.
(b) If the parties waived any of the requirements of paragraph (a) of
this section, the certificate shall so state.
(c) The officer shall note on the certificate the circumstances under
which a witness refuses to sign a transcript.
(d) Unless the parties agree otherwise in writing or on the record at
the deposition, the officer shall securely seal the certified transcript
in an envelope endorsed with the style of the interference (e.g., Smith v.
Jones), the interference number, the name of the witness, and the date of
sealing and shall promptly forward the envelope to BOX INTERFERENCE,
Commissioner of Patents and Trademarks, Washington, D.C. 20231. Documents
and things produced for inspection during the examination of a witness,
shall, upon request of a party, be marked for identification and annexed
to the certified transcript, and may be inspected and copied by any party,
except that if the person producing the documents and things desires to
retain them, the person may: (1) offer copies to be marked for
identification and annexed to the certified transcript and to serve
thereafter as originals if the person affords to all parties fair
opportunity to verify the copies by comparison with the originals or (2)
offer the originals to be marked for identification, after giving each
party an opportunity to inspect and copy them, in which event the
documents and things may be used in the same manner as if annexed to the
certified transcript. The exhibits shall then be filed as specified in
1.653(i). If the weight or bulk of a document or thing shall reasonably
prevent the document or thing from being annexed to the certified
transcript, it shall, unless waived on the record at the deposition of all
parties, be authenticated by the officer and forwarded to the Commissioner
in a separate package marked and addressed as provided in this paragraph.
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 ( 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 1.653(i).
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 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.
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.
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 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 1.672(b) for its case-in-chief
or, if the party does not serve any affidavits under 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 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 1.672(b) for the its case-in-rebuttal or, if the
party does not file any affidavits under 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 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 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 1.672(c) to affidavits submitted by the party under
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 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 1.672(c) or, if the party does not file any supplemental
evidence under 1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental affidavits
under 1.672(c). No objection to the admissibility of the supplemental
evidence shall be made, except as provided by 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 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 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 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 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 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 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 1.672(b).
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 1.672(b) for its
case-in-chief or, if the party does not file any affidavits under
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
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 1.672(b) for its case-in-rebuttal or, if the
party does not file any affidavits under 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 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
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 1.672(c) to affidavits submitted
by the party under 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 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 1.672(c) or, if the party does not file any
supplemental evidence under 1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental evidence
under 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 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 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 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 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 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 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 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 1.672(b).
1.684 [Reserved]
1.685 Errors and irregularities in depositions.
(a) An error in a notice for taking a deposition is waived unless a
motion ( 1.635) to quash the notice is filed as soon as the error is, or
could have been, discovered.
(b) An objection to a qualification of an officer taking a deposition
is waived unless:
(1) The objection is made on the record of the deposition before a
witness begins to testify.
(2) If discovered after the deposition, a motion ( 1.635) to suppress
the deposition is filed as soon as the objection is, or could have been,
discovered.
(c) An error or irregularity in the manner in which testimony is
transcribed, a certified transcript is signed by a witness, or a certified
transcript is prepared, signed, certified, sealed, endorsed, forwarded,
filed, or otherwise handled by the officer is waived unless a motion (
1.635) to suppress the deposition is filed as soon as the error of
irregularity is, or could have been, discovered.
(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 hearing shall be included in a motion to suppress under 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.
1.687 Additional discovery.
(a) A party is not entitled to discovery except as authorized in this
subpart.
(b) Where appropriate, a party may obtain production of documents and
things during cross-examination of an opponent's witness or during the
testimony period of the party's case-in-rebuttal.
(c) Upon a motion ( 1.635) brought by a party within the time set by
an administrative patent judge under 1.651 or thereafter as authorized
by 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 1.647 concerning translations of documents in a foreign
language.
(d) The parties may agree to discovery among themselves at any time. In
the absence of an agreement, a motion for additional discovery shall not
be filed except as authorized by this subpart.
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 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 1.672(b) for its
case-in-chief or, if the party does not serve any affidavits under
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
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 1.672(b) for the its case-in-rebuttal or, if the
party does not serve any affidavits under 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 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 1.672(c) to affidavits submitted
by the party under 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
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 1.672(c) or, if the party does not file any
supplemental evidence under 1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental affidavits
under 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 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 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 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 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 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 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 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 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.
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.
(d) An arbitration award shall not preclude the Office from determining
patentability of any invention involved in the interference.