United States Patent and Trademark Office

                          37 CFR Chapter I and Part 1

                                 RIN 0651-AB15

Simplification of Certain Requirements in Patent Interference Practice

September 15, 2000.

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interim rule with request for comments.

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

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

ADDRESSES: Send all comments:
   1. Electronically to "," Subject:
"Interference Simplification"; or
   2. By mail to Director of the United States Patent and Trademark
Office, BOX INTERFERENCE, Washington, D.C. 20231, ATTN: "Interference
Simplification"; or
   3. By facsimile to 703-305-9373, ATTN: "Interference Simplification."

FOR FURTHER INFORMATION CONTACT: Fred McKelvey or Richard Torczon at


Comment Format

   The USPTO prefers to receive comments in electronic form, either via
the Internet or on a 3\1/4\-inch diskette. Comments submitted in
electronic form should be submitted as ASCII text. Special characters
and encryption should not be used.


   The USPTO is amending 37 CFR Secs. 1.601(f) and 1.606 and is deleting
37 CFR Sec. 1.609 because the requirements being eliminated presented
obstacles to the efficient declaration of interferences without
corresponding benefits. In particular, Rules 601(f) and 606 create a
presumption about the scope of the interfering subject matter that often
is not supported by the record. The change eliminates that presumption.
The changes in sections 1.601(f) and 1.606, as well as changes in the
process of proposing an interference in the examining corps, have made
section 1.609 unnecessary. Now an administrative patent judge meets with
a representative from the technology center to ensure that the record
contains adequate bases for declaring an interference.
   The USPTO is amending 37 CFR Sec. 1.671 to provide that all evidence
is presented in the form of an exhibit. This simplifying amendment to
Sec. 1.671 makes the more complex requirements of 37 CFR Secs. 1.682,
1.683, and 1.688 unnecessary, so they are being deleted. An interim rule
is appropriate because the rulemaking is not substantive and the
elimination of these requirements provides relief from unnecessary
requirements. The USPTO appreciates that other changes to the rules of
practice in patent interferences may be appropriate, but this interim
rule is not an appropriate vehicle for such changes, which will have to
be addressed in future rulemaking. These rule changes will apply to any
interference declared after the effective date of this rulemaking and to
any interference in which these changes are adopted by order.

Regulatory Flexibility Act

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

Executive Order 13132: Federalism Assessment

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

Executive Order 12866

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

Paperwork Reduction Act

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

List of Subjects in 37 CFR Part 1

   Administrative practice and procedure, Inventions and patents.

   For the reasons stated in the preamble, the United States Patent and
Trademark Office amends 37 CFR Chapter I as follows:
   1. The heading of Chapter I is revised to read as follows:



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

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

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

Sec. 1.601 Scope of rules, definitions.

* * * * *
   (f) A count defines the interfering subject matter between two or
more applications or between one or more applications and one or more
patents. When there is more than one count, each count shall define a
separate patentable invention. Any claim of an application or patent
that is designated to correspond to a count is a claim involved in the
interference within the meaning of 35 U.S.C. 135(a). A claim of a patent
or application that is designated to correspond to a count and is
identical to the count is said to correspond exactly to the count. A
claim of a patent or application that is designated to correspond to a
count but is not identical to the count is said to correspond
substantially to the count. When a count is broader in scope than all
claims which correspond to the count, the count is a phantom count.
* * * * *

   3. Revise Sec. 1.606 to read as follows:

Sec. 1.606 Interference between an application and a patent; subject
matter of the interference.

   Before an interference is declared between an application and an
unexpired patent, an examiner must determine that there is interfering
subject matter claimed in the application and the patent which is
patentable to the applicant subject to a judgment in the interference.
The interfering subject matter will be defined by one or more counts.
The 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.

Sec. 1.609 [Removed and Reserved]

   4. Remove and reserve Sec. 1.609.

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

Sec. 1.671 Evidence must comply with rules.

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

Secs. 1.682, 1.683, and 1.688 [Removed and Reserved]

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

September 13, 2000.                                      Q. TODD DICKINSON,
                                            Under Secretary of Commerce for
                                  Intellectual Property and Director of the
                                 United States Patent and Trademark Office.