United States Patent and Trademark Office OG Notices: 23 December 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, and 41
RIN 0651-AB32
Rules of Practice Before the
Board of Patent Appeals and Interferences
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Proposed rule.
SUMMARY: The Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office proposes
changes to the rules governing practice before the Board of Patent
Appeals and Interferences to consolidate and simplify such rules and to
reflect developments in case law, legislation, and administrative
practice.
DATES: Submit comments on or before January 26, 2004.
ADDRESSES: Submit comments:
1. By electronic mail to BPAI.Rules@uspto.gov
2. By mail to Mail Stop Interference, Director of the United States
Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450.
3. By facsimile to 703-308-7953.
See the SUPPLEMENTARY INFORMATION for further information about
submitting comments.
FOR FURTHER INFORMATION CONTACT:
Appeals: Jeffrey V. Nase or William F. Smith, 703-308-9797.
Otherwise: Richard Torczon, 703-308-9797.
SUPPLEMENTARY INFORMATION:
Relationship to Announced Rule Makings
This notice combines two rule makings previously announced in the
Unified Agenda as 0651-AB27 (Appeals) and 0651-AB32 (Interferences).
Filing Comments on This Proposed Rule
To the extent reasonably possible, the Office will make the
comments available at http://www.uspto.gov/web/offices/dcom/bpai/.
To facilitate this goal, the Office strongly encourages the submission of
comments electronically, in either ASCII format or ADOBE portable
document format (pdf). Regardless of which submission mode you select,
write only "Consolidated Board Rules" in the subject line to ensure
prompt consideration of your comments.
Since the comments will be made available to the public, the
comments should not include information that the submitter does not
wish to have published. Comments that include confidentiality notices
will not be entered into the record.
The Board of Patent Appeals and Interferences (Board) has
significantly overhauled its operations to address concerns about the
duration of proceedings before the Board. Improvements include an
increase in the number of administrative patent judges, outreach
programs to educate parties and examiners about Board operations, and
restructuring of Board procedures. This rule making proposes to revise
the rules governing Board proceedings to better reflect these new
procedures. Consistent with these improvements, the rules are also
consolidated and simplified to ease use. Finally, the rules address
case law and legislative changes that have occurred since the last
significant revision of the Board's rules.
Explanation of Proposed Changes
In keeping with long-standing patent practice, existing rules are
denominated "Rule x" in this supplementary information. The proposed
rules are denominated "proposed Sec. 41.x" to help readers
distinguish between existing and proposed rules.
Rules 1(a)(1)(iii), 5(e), 6(d)(9), 8(a)(2)(i)(B) and (a)(2)(i)(C),
and 11(e), and subpart E of part 1, would be removed to consolidate
interference information in proposed part 41, subparts D and E.
Rules 4(a)(2); 9(g); 36; 59(a)(1); 103(g); 112; 113(a); 114(d);
131(a)(1); 136(a)(1) and (a)(2); 181(a)(3); 248(c); 292(a) and (c);
295(b); 302(b); 303(c); 304(a)(1) and (a)(2); 322(a)(3); 323; 324;
565(e); 701(c)(2)(ii); 703(a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e);
704(c)(9); and 993 would be revised to change cross-references to Board
proceedings.
Rule 14(e) would be revised to eliminate references to Board
actions. An analogous rule for Board actions is proposed in Sec.
41.6(a). The Office previously proposed a similar change to Rule 14(e).
See "Changes to Implement Electronic Maintenance of Official Patent
Application Records", 68 FR 14365 (25 March 2003), in which the
paragraph in question was numbered Rule 14(f). The Office received two
comments that were specific to then-proposed Rule 14(f). See
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/efw/aipla.pdf
and http://uspto.gov/web/offices/pac/dapp/opla/comments/efw/neifeld.pdf.
To avoid confusion with this proposed rule making, no
change was adopted to the language of the rule beyond renumbering it as
Rule 14(e). 68 FR 38611, 38612, 38620 (30 June 2003). In the present
proposal, the language of the rule has been simplified to avoid some of
the criticisms in one comment, but the suggestion in the comments to
relax the standards for publishing decisions is not being proposed.
Proposed Rule 14(e)(1) would continue to state that publicly available
materials are publicly available. Such materials may be published
without notification to or permission from the applicant or patent
owner.
Rules 17(b)-(d) and (h) would be revised to remove the Board fees,
which will be relocated to proposed Sec. 41.20.
Rule 48(a)-(c) and (i) would be revised, and Rule 48(j) added, to
consolidate the cross-reference correction of inventorship for
applications in contested cases before the Board.
Rules 55(a)(3) and (a)(4), and 136(b) would be revised to eliminate
the cross-references to Board rules.
Rule 116 would be amended to limit amendments after a final
rejection or other final action (Rule 113) in an application or in an
ex parte reexamination filed under Rule 510, or after an action closing
prosecution (Rule 949) in an inter partes reexamination filed under
Rule 913, to such amendments filed before or with any appeal to the
Board under proposed Sec. 41.31 or Sec. 41.61. Amendments after
appeal currently treated under Rule 116 would be moved to proposed
Secs. 41.33 and 41.63. Rule 116(d) would be amended to permit only
an amendment canceling claims, where such cancellation does not affect
the scope of any other pending claim in the proceeding, to be made in
an inter partes reexamination proceeding after the right of appeal
notice has issued under Rule 953, except as provided in Rule 981 or as
permitted by proposed Sec. 41.77(b)(1). Rule 116(e) would be added to
set forth a standard for treatment of an affidavit or other evidence
submitted after a final rejection or other final action (Rule 113) in
an application or in an ex parte reexamination filed under Rule 510, or
in an action closing prosecution (Rule 949) in an inter partes
reexamination filed under Rule 913, but before or with any appeal
(proposed Sec. 41.31 or proposed Sec. 41.61). The proposed standard
would be that such an affidavit or other evidence could be admitted
upon a showing of good and sufficient reasons why the affidavit or
other evidence is necessary and was not earlier presented. This standard
is currently in effect under Rule 195 for an affidavit or other evidence
submitted after appeal. Rule 116(f) would be added to prohibit affidavits
and other evidence in an inter partes reexamination proceeding after the
right of appeal notice under Rule 953, except as provided in Rule 981
or as permitted by proposed Sec. 41.77(b)(1).
Rule 191 would be amended to direct appellants under 35 U.S.C.
134(a) or (b) to proposed part 41, subpart B. Rules 192-196 would be
removed and reserved.
Rule 197 would be amended by changing its title to "Return of
Jurisdiction from the Board of Patent Appeals and Interferences;
termination of proceedings" to reflect the two remaining paragraphs of
this section. The subject matter of current paragraph (b) would be
moved to proposed Sec. 41.52 and the subject matter of current
paragraph (c) would be moved to proposed paragraph (b) of this section.
In addition, paragraph (a) would be amended to return of jurisdiction
of the involved application or patent under ex parte reexamination
proceeding to the examiner.
Rule 198 would be amended by changing its title to "Reopening
after a final decision of the Board of Patent Appeals and
Interferences" to better reflect the substance of the section and to
clarify that it applies when a decision by the Board of Patent Appeals
and Interferences on appeal has become final for judicial review.
Rule 324(a) and (c) would be revised, and Rule 324(d) added, to
consolidate cross-references to correction of inventorship for patents
in contested cases before the Board.
Rule 959 would be revised to direct inter partes reexamination
participants to proposed part 41, subpart C, for information about
appeals in such proceedings.
Rules 961-977 would be removed to consolidate inter partes
reexamination appeal information in proposed part 41, subpart C.
Rule 979 would be amended by changing its title to "Return of
Jurisdiction from the Board of Patent Appeals and Interferences;
termination of proceedings" to reflect the two paragraphs of this
section. Most of the subject matter of current paragraphs (a)-(g) would
be moved to proposed Secs. 41.79, 41.81 and 41.83. Paragraph (a)
would be amended to recite that jurisdiction over an inter partes
reexamination proceeding passes to the examiner after a decision by the
Board of Patent Appeals and Interferences upon transmittal of the file
to the examiner, subject to each appellant's right of appeal or other
review, for such further action as the condition of the inter partes
reexamination proceeding may require, to carry into effect the decision
of the Board of Patent Appeals and Interferences. Paragraph (b) would
be amended to state that upon termination of the appeal before the
Board of Patent Appeals and Interferences (proposed Sec. 41.83), if no
further appeal has been taken (Rule 983), the inter partes
reexamination proceeding will be terminated and the Director will issue
a certificate under Rule 997. If an appeal to the U.S. Court of Appeals
for the Federal Circuit has been filed, that appeal is considered
terminated when the mandate is received by the Office.
Rule 981 would be amended by changing its title to "Reopening
after a final decision of the Board of Patent Appeals and
Interferences" to better reflect the substance of the section and to
clarify that it applies when a decision by the Board of Patent Appeals
and Interferences on appeal has become final for judicial review.
Section 3 of part 5 provides that no interference will be declared
with an application under a national secrecy order. In part, this is
because the application cannot issue while the secrecy order is in
place so the completion requirement of proposed Sec. 41.102 is not
met. Cf. Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200
(Fed. Cir. 1984) (the Director declares an interference to determine
whether the application may issue). The proposed revision to Rule 5.3
would remove the reference to a patent because an interference may be
provoked with an application as well (proposed Sec. 41.202(a)(1)). The
proposed revision would also remove the requirement to place a notice
in the file of the targeted patent. Since the Office will not act on
the suggestion for an interference, the notice only serves to cast
unexamined doubt on the claims of the patentee without providing any
route of relief. An applicant intent on having an interference should
take steps to have the secrecy order lifted.
Section 23(c)(7) of part 10 would be amended to change the cross-
reference to the interference rules.
A new part 41 would permit consolidation of rules relating to Board
practice and to simplify reference to such practices. The Board would
continue the practice used in part 1 of this title of citing sections
without the part number. In proceedings before the Board, a party could
cite "Sec. 41.x" as "Board Rule x".
Proposed part 41 would better state the existing practice and
should not be read to change the existing practice except as explicitly
provided.
Proposed subpart A would state policies, practices, and definitions
common to all proceedings before the Board.
Proposed Sec. 41.1 would set forth general principles for proposed
part 41. Proposed Sec. 41.1(a) would define the scope of rules.
Proposed Sec. 41.1(b) would mandate that the Board's rules be
construed to achieve just, speedy, and inexpensive resolutions of all
Board proceedings, following the model of Rule 601 and Federal Rule of
Civil Procedure 1. Proposed Sec. 41.1(c) would explicitly extend the
requirement for decorum under Rule 3 to Board proceedings, including
dealings with opposing parties. Board officials are similarly expected
to treat parties with courtesy and decorum.
Proposed Sec. 41.2 would set forth definitions for Board
proceedings under proposed part 41. The preamble to proposed Sec. 41.2
is based on the preamble of Rule 601, which cautions that context may
give a defined word a different meaning. For instance, although
"final" would be defined for the purposes of identifying final agency
actions of the Board, it would not change the meaning of "final
rejection" in proposed Sec. 41.37(c)(1)(iv), which refers to an
action by an examiner.
The proposed definition of "Board" would cover three distinct
situations. First, for the purposes of a final agency action committed
to a panel of Board members, the definition would be identical in scope
to 35 U.S.C. 6(b). Second, the definition would include action by the
Chief Administrative Patent Judge in matters delegated in these
proposed rules to the Chief Administrative Patent Judge. Third, the
definition would recognize that non-final actions are often performed
by officials other than a panel or the Chief Administrative Patent
Judge. See Rule 610(a); cf. 37 CFR 2.127(c). This definition should not
be read to authorize a final decision on patentability, priority, or
United States Government ownership by anything other than a Board
panel. Other than instances in which a panel is required by statute,
the selection and authorization of an official to act on behalf of the
Board would be entirely a matter of internal administration.
The definition of "Board member" would follow the definition in
35 U.S.C. 6(a), under which the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office, the Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent
and Trademark Office, the Commissioner for
Patents, and the Commissioner for Trademarks are ex officio members of
the Board.
The phrase "contested case" would include patent interferences
(35 U.S.C. 135(a)) and proceedings with interference-based procedures
(42 U.S.C. 2182 and 2457(d)). The existence of a contested case is a
predicate for authorizing a subpoena under 35 U.S.C. 24. Although both
appeals in inter partes reexaminations under 35 U.S.C. 134(c) and some
petitions to the Chief Administrative Patent Judge, such as a petition
for access under 35 U.S.C. 135(c), may involve more than one party,
they are not considered contested cases for the purposes of proposed
part 41.
Finality is required for judicial review. Barton v. Adang, 162 F.3d
1140, 1143, 49 USPQ2d 1128, 1131 (Fed. Cir. 1998). The term "final"
would be defined pursuant to 5 U.S.C. 704 to assist parties in
determining when a Board action is ripe for judicial review. In Barton,
162 F.3d at 1143, 49 USPQ2d at 1131, the Court of Appeals for the
Federal Circuit held that an adverse judgment against a single party in
a multi-party patent interference was a final agency action with
respect to that party for the purposes of review under 35 U.S.C. 141.
The proposed definition of "final" would follow Barton in linking the
question of finality to whether an agency action on the merits is
operative against the party seeking judicial review. Under 35 U.S.C.
6(b), a decision on the merits in an appeal or a contested case by any
entity other than three Board members cannot be a final agency action.
Affirming or reversing disposes of an issue on appeal on the merits;
vacating or remanding does not. Entry of a new ground of rejection, by
definition, does not dispose of an issue on the merits. A petition
decision might not be final if, for instance, the decision is rendered
without prejudice to take some further action. An issue in a non-final
decision may usually be preserved for review in a final decision. See,
e.g., proposed Sec. 41.125(c)(5) under which a party may request
reconsideration by a panel.
The definition of "hearing" would reflect the holding of In re
Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985) that a
party is entitled to judicial consideration of properly raised issues,
but is not entitled to an oral argument or consideration of improperly
raised issues.
The definitions of "panel" and "panel proceeding" would reflect
the minimum quorum established in 35 U.S.C. 6(b), which reserves action
on patentability and priority to panels. 35 U.S.C. 6(b).
The term "party" would set forth a generic term for entities
acting in a Board proceeding.
The delegation of petition authority to the Chief Administrative
Patent Judge in proposed Sec. 41.3(a) would be new as a rule, but
follows a delegation already published in the Manual of Patent
Examining Procedure (MPEP) at Sec. 1002.02(f). This delegation by rule
would not prejudice the Director's prerogative to decide a petition or
to delegate authority to decide a petition to another subordinate. The
Chief Administrative Patent Judge could also delegate petition-deciding
authority to an official, provided the delegation is stated in writing.
Note that under proposed Sec. 41.3(b)(1) decisions committed by
statute to the Board would not be subject to petitions for supervisory
review. Such decisions would include merits decisions in appeals and
contested cases, and decisions on requests for rehearing. 35 U.S.C.
6(b). Review of such decisions would come through a request for
rehearing or through judicial review. Proposed Sec. 41.3(b)(2), which
would provide for petitions in contested cases to be decided by other
officials, would reflect the MPEP's designation of other actions
typical in the ordinary course of Board proceedings as "petitions".
See MPEP Sec. 1002.02(g) (various procedural decisions in
interferences). These actions would be considered routine motions or
requests.
Proposed Sec. 41.3(c) would reflect current practice in requiring
payment of a standard petition fee. Matters that would be excluded from
the scope of petitions in Sec. 41.3(a)(2) would not be petitions and
so would not require payment of a fee. Petitions seeking supervisory
review of a discretionary matter would also not require payment of a
petition fee. Compare Rule 181(a)(3) with Rules 182 and 183.
Proposed Sec. 41.3(d) would reflect the current practice of not
staying any action for a petition for supervisory review in Rule
181(f). Note that the Court of Appeals for the Federal Circuit has held
that a request for rehearing may toll the time for seeking judicial
review. In re Graves, 69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed.
Cir. 1995).
Proposed Sec. 41.3(e) would set times for filing petitions. As
with Rule 181(f), failure to file a timely petition would be sufficient
basis for dismissing or denying a motion.
Proposed Sec. 41.4(a) and (b) would follow the requirements of
Rules 136(b) and 645 in providing rules for extensions of time and for
acceptance of untimely papers. Congress has authorized patent term
adjustments for time spent in proceedings before the Board. 35 U.S.C.
154(b)(1)(C). Consequently, the Board must be mindful to avoid delays
in its administration of its proceedings, including delays requested or
caused by a party. The Board might set conditions on extensions to
minimize the effects of any delay, including restriction under 35
U.S.C. 121 of claims directed to subject matter not involved in the
Board proceeding. Proposed Sec. 41.4(c) would point parties to
timeliness rules that are related to Board proceedings, but not within
the scope of the Board rules.
Proposed Sec. 41.5 would set forth a limited delegation to the
Board under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel
in Board proceedings. It would generally be more efficient to have a
Board official familiar with the specific proceeding decide questions
of representation limited to the specific proceeding. Disqualification
would be a case-specific suspension or exclusion from practice within
the meaning of 35 U.S.C. 32. Under the terms of section 32, the
official conducting the disqualification hearing would have to be an
attorney.
Proposed Sec. 41.5(b) would delegate to the Board the authority to
conduct counsel disqualification proceedings while the Board has
jurisdiction over a proceeding. It also would clarify counsel
disqualification practice under Rule 613(c) by making explicit the fact
that a final decision to disqualify is an exercise of the powers of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office under Sec. 32, not the
Board. The rule would delegate to the Chief Administrative Patent Judge
the authority to make final a decision to disqualify counsel in a
proceeding before the Board for the purposes of judicial review. This
delegation would not derogate from the Director the prerogative to make
such decisions, nor would it prevent the Chief Administrative Patent
Judge from further delegating authority to an administrative patent
judge, provided the delegation was stated in writing.
Proposed Sec. 41.6(a) would relocate into part 41 the portions of
Rule 14(e) that apply to the Board. Proposed Sec. 41.6(a)(1) would
continue to state that publicly available materials are publicly
available. Such materials may be published without notification to or
permission from the applicant. Proposed Sec. 41.6(a)(2) would set
forth the basis for making a determination under 35 U.S.C. 122(a) that
the publication of a Board action constitutes a special
circumstance. Parties should note that disagreement with a holding is
not an appropriate basis for challenging a special circumstance
determination. Moreover, a party not entitled to confidentiality under
section 122(a) would not have the standing to challenge publication
under this paragraph. For instance, an involved patentee could not
assert an opposing applicant's confidences as the basis for blocking a
publication.
Proposed Sec. 41.6(b) would generalize to all Board proceedings
the practice under Rule 11(e) of making the record of most interference
proceedings publicly available eventually, although that availability
might not occur until an involved patent application becomes available.
It also recognizes pre-grant publication as a basis for making a file
publicly available.
Proposed Sec. 41.7 would adopt the current practice of Rule 618
regarding duplicate papers and the expunging of papers, but would
generalize it to all Board proceedings. In recent decades, the typical
size of files has increased significantly. The increase imposes burdens
on the Office in managing the records and on users of the record. This
rule would provide a tool for managing the size and complexity of the
record and for preventing abuses that can occur in filing.
Proposed Sec. 41.8(a) would reflect the current practice under
Rules 192(c)(1) and 602 regarding disclosure of the real parties-in-
interest. Federal officials must meet high ethical standards. A
principal ethical concern is the avoidance of conflicts of interest for
the officials, including even the appearance of a conflict. See e.g.,
Stanek v. Dep't of Transp., 805 F.2d 1572, 1577 (Fed. Cir. 1986)
(affirming dismissal of employee for appearance of a conflict of
interest). In the case of the Board, a conflict would typically arise
when an official has an investment in a company with a direct interest
in a Board proceeding. Such conflicts could only be avoided if the
parties promptly provide the information necessary to identify
potential conflicts. The identity of a real party-in-interest might
also affect the credibility of evidence presented in a proceeding. For
instance, testimony from a source related to a real party-in-interest
may be seen as misleading or self-serving compared to evidence from a
completely independent source (e.g., Refac Int'l, Ltd. v. Lotus Dev.
Corp., 81 F.3d 1576, 1581-82, 38 USPQ2d 1665, 1669 (Fed. Cir. 1996)
(failure to identify declarants as former co-workers was inequitable
conduct)). Finally, in a contested case, the presence of a common real
party-in-interest might reflect a lack of genuine adversity between the
parties. Common ownership would ordinarily result in prompt termination
of any proceeding between the commonly owned parties. Barton, 162 F.3d
at 1143, 49 USPQ2d at 1131 (recognizing the practice while noting an
exception). See proposed Sec. 41.206.
The notice of judicial proceedings required in proposed Sec.
41.8(b) would be important because a judicial decision in another case
might be binding on the Board or a party. The Board might also use such
information to determine the best pacing for a Board proceeding. Notice
of other administrative proceedings might also be relevant. In the case
of other Office proceedings, particularly other Board proceedings,
notice might allow the Board to more efficiently allocate its limited
resources and to avoid inconsistent outcomes. In re Berg, 140 F.3d
1428, 1435 nn.7&8, 46 USPQ2d 1226, 1231 nn.7&8 (Fed. Cir. 1998)
(calling failure to identify a related application relevant to a
double-patenting analysis "misleading"). The "affect or be affected
by" standard in proposed Sec. 41.8(b) is derived from Federal Circuit
Rule 47.5(b). The proposed rule would also follow Rule 660(d) in
requiring notice to the Board of judicial review of the proceeding
itself. In the absence of such timely notice, the Board would usually
distribute records associated in the proceeding to other parts of the
Office for further action. Failure to provide a timely mandatory notice
under proposed Sec. 41.8 might result in sanctions including
disqualification of counsel and adverse judgment.
Proposed Sec. 41.9 would follow Rule 643 regarding action by an
assignee to the exclusion of an inventor, but would generalize it to
all Board proceedings. Orders permitting an assignee of a partial
interest to act to the exclusion of an inventor or co-assignee would
rarely be granted outside of contested cases. Even in contested cases,
such orders would typically issue only when the partial assignee was in
a proceeding against its co-assignee. Ex parte Hinkson, 1904 Comm'r.
Dec. 342.
Proposed Sec. 41.20 would consolidate the rules on fees associated
with Board practice. Rules 22, 23, and 25-28, which govern fee practice
before the Office generally, would continue to apply in Board
proceedings. Proposed paragraph (a) would set forth the petition fee,
while proposed paragraph (b) would set forth appeals-related fees.
Proposed subpart B would set forth rules for the ex parte appeal
under 35 U.S.C. 134 of a rejection in either a national application for
a patent, an application for reissue of a patent, or an ex parte
reexamination proceeding to the Board.
The preamble to proposed Sec. 41.30 would be based on a similar
provision in the preamble of Rule 601. The term "proceeding" would
set forth a generic term for a national application for a patent, an
application for reissue of a patent, and an ex parte reexamination
proceeding. The term "applicant" would set forth a generic term for
either the applicant in a national application for a patent or the
applicant in an application for reissue of a patent. The term "owner"
would set forth a shorthand reference to the owner of the patent
undergoing ex parte reexamination under Rule 510.
Proposed Sec. 41.31 would generally incorporate the requirements
of current Rule 191(a)-(d). Paragraph (a) would be subdivided into
three parts to improve readability. Paragraph (d) would be amended to
refer only to the time periods referred to in paragraphs (a)(1)-(a)(3)
of this section, while the current extension of time requirements for
Rules 192, 193, 194, 196 and 197, now provided in Rule 191(e), would be
relocated to proposed Secs. 41.37, 41.41, 41.47, 41.50 and 41.52.
Proposed Sec. 41.33(a) and (b) would replace the requirements of
current Rule 116 with a prohibition of amendments submitted after the
date the proceeding has been appealed pursuant to proposed Sec.
41.31(a)(1)-(a)(3), except amendments canceling claims or rewriting
dependent claims into independent form and as permitted by Secs.
41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). A dependent claim is
rewritten into independent form by including all of the limitations of
the base claim and any intervening claims. Thus, no limitation of a
dependent claim can be excluded in rewriting that claim into
independent form. Proposed Sec. 41.33(c) would replace the
requirements of Rule 195 with a prohibition on the admission of
affidavits and other evidence submitted after the case has been
appealed pursuant to proposed Sec. 41.31(a)(1)-(a)(3), except as
permitted by proposed Secs. 41.39(b)(1), 41.50(a)(2)(i) and
41.50(b)(1). This would replace the current practice of permitting such
evidence based on a showing of good and sufficient reasons why such
evidence was not earlier presented. The Office believes that
prosecution of an application should occur before the examiner prior to
an appeal being filed, not after the case has been appealed pursuant to
proposed Sec. 41.31(a)(1)-(a)(3).
Proposed Sec. 41.35 would generally incorporate the requirements of
current Rule 191(e). In addition, the section is proposed to be amended to
make clear that jurisdiction over an application may be relinquished by the
Board and the application returned to the examining operation to permit
processing to be completed by the examining operation before the Board
takes up the appeal for decision. This is consistent with the present
practice of returning an appealed application to the examining
operation where some matter requiring attention has been identified
prior to assignment of the appeal number and docketing of the appeal.
In addition, it is proposed to permit the Board to take other
appropriate action to complete the proceeding. For example, if the
proceeding was not complete because one copy of the brief was missing,
the Board may contact the appellant to obtain the missing copy.
Proposed Sec. 41.37 would generally incorporate the requirements
of Rule 192. In addition, it is proposed to:
(1) Change the title of the section from "Appellant's brief" to
"Appeal brief".
(2) In paragraph (a), require one copy of the brief rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(3) In paragraph (a), require the brief to be filed within two
months from the date of the notice of appeal under proposed Sec. 41.31
even if the time allowed for reply to the action from which the appeal
was taken is later, which overall simplifies docketing of the due date.
(4) In paragraph (c)(1)(i), require a statement in the brief
identifying by name the real party in interest even if the party named
in the caption of the brief is the real party in interest. This
amendment would provide appellant the necessary mechanism for complying
with proposed Sec. 41.8(a) in an appeal to the Board.
(5) In paragraph (c)(1)(ii), require identification of all other
prior and pending appeals, interferences or judicial proceedings known
to appellant, the appellant's legal representative, or assignee which
may be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal, as well as to
set forth a mechanism for complying with proposed Sec. 41.8(b) in an
appeal to the Board.
(6) In paragraph (c)(1)(iii), require both a statement of the
status of all the claims in the proceeding (e.g., rejected, allowed or
confirmed, withdrawn, objected to, canceled) and an identification of
those claims that are being appealed.
(7) In paragraph (c)(1)(v), require a concise explanation of the
invention defined in each of the independent claims involved in the
appeal, which explanation shall refer to the specification by page and
line number, and to the drawings, if any, by reference characters. For
each claim involved in the appeal, it is proposed that every means plus
function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, be identified and that the structure, material, or acts
described in the specification as corresponding to each claimed
function be set forth with reference to the specification by page and
line number, and to the drawing, if any, by reference characters. The
current requirement of Rule 192(c)(5) to set forth a concise
explanation of the invention defined in the claims involved in the
appeal by reference to the specification by page and line number, and
to the drawings, if any, by reference characters is not being followed
in a great number of briefs before the Board. It is expected that the
proposed requirements will be enforced by the examiner. Accordingly,
any brief filed by an appellant who is represented by a registered
practitioner that fails to set forth a summary which references the
specification by page and line number, and to the drawing, if any, by
reference characters or which fails to identify every means plus
function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, would be in non-compliance with this section and would be
handled as set forth in proposed paragraph (d) of this section.
(8) In paragraph (c)(1)(vi), require a concise statement listing
each ground of rejection presented for review rather than issues for
review. An example of a concise statement is "Claims 1 to 10 stand
rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No.
X."
(9) Delete the current grouping of claims requirement set forth in
Rule 192(c)(7). The general purpose served by Rule 192(c)(7) is
addressed in proposed Sec. 41.37(c)(1)(viii). The existing grouping of
claims requirement has led to many problems such as (i) Grouping of
claims across multiple rejections (e.g., claims 1-9 rejected under 35
U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103
over A and the appellant states that claims 1-15 are grouped together);
(ii) Claims being grouped together but argued separately (e.g., claims
1-9 rejected under Sec. 102 over A, the appellant groups claims 1-9
together but then argues the patentability of claims 1 and 5
separately); and (iii) examiners disagreeing with the appellant's
grouping of claims.
(10) In paragraph (c)(1)(vii), require that any arguments or
authorities not included in the brief or a reply brief filed pursuant
to proposed Sec. 41.41 will be refused consideration by the Board,
unless good cause is shown (requirement currently found in Rule
192(a)), and to require a separate heading for each ground of rejection
in place of the previous Grouping of claims section of the brief. For
each ground of rejection applying to two or more claims, the claims may
be argued separately or as a group. It is proposed that, when an
appellant argues as a group multiple claims subject to the same ground
of rejection, the Board may select a single claim from that group of
claims and treat its disposition of a ground of rejection of that claim
as applying to the disposition of that ground of rejection of all
claims in the group of claims. Notwithstanding any other provision of
this paragraph, it is proposed to make explicit by rule that an
appellant's failure to argue separately claims that the appellant has
grouped together constitutes a waiver of any argument that the Board
must consider the patentability of any grouped claim separately. See In
re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir.
2002) (interpreting Rule 192(c)(7) to require separate treatment of
separately rejected claims). It is further proposed that any claim
argued separately should be placed under a subheading identifying the
claim by number and that claims argued as a group should be placed
under a subheading identifying the claims by number. For example, if
Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as being
anticipated by U.S. Patent No. Y and appellant is only going to argue
the limitations of independent claim 1, and thereby group dependent
claims 2 to 5 to stand or fall with independent claim 1, then one
possible heading as required by this subsection could be Rejection
under 35 U.S.C. 102(b) over U.S. Patent No. Y and the optional
subheading would be Claims 1 to 5. As another example, where claims 1
to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S.
Patent No. Z and the appellant wishes to argue separately the
patentability of each claim, a possible heading as required by this
subsection could be Rejection under 35 U.S.C. 102(b) over U.S. Patent
No. Z, and the optional subheadings would be Claim 1, Claim 2 and Claim
3. Under each subheading the appellant would present the argument for
patentability of that claim.
(11) In paragraph (c)(1)(vii), state that "Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable", a statement that in slightly different
form appears in Rule 192(c)(7).
(12) In paragraph (c)(1)(vii), eliminate subparagraphs (i) through
(v) of Rule 192(c)(8) which relate to the manner in which arguments are
to be made. Although they provide useful advice as to what an effective
argument ought to include, these provisions have often been ignored by
appellants and, for the most part, have not been enforced as set forth
in paragraph (d) of that rule.
(13) Add paragraph (c)(1)(ix) to require appellant to include an
evidence appendix of any evidence relied upon by appellant in the
appeal with a statement setting forth where that evidence was entered
in the record by the examiner so that the Board will be able to easily
reference such evidence during consideration of the appeal.
(14) Add paragraph (c)(1)(x) to require appellant to include a
related proceedings appendix containing copies of decisions rendered by
a court or the Board in any proceeding identified pursuant to paragraph
(c)(1)(ii) of this section so that the Board can take into
consideration such decisions.
(15) Add paragraph (c)(2) to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in the
brief.
(16) Add paragraph (e) to provide notice that the periods set forth
in this section are extendable under the provisions of Rule 136 for
patent applications and Rule 550(c) for ex parte reexamination
proceedings. This provision currently appears in Rule 191(d), but would
be more useful if provided in this section.
Proposed Sec. 41.39 would generally incorporate requirements found
in Rule 193(a).
Proposed Sec. 41.39(a)(2) would permit a new ground of rejection
to be included in an examiner's answer eliminating the current
prohibition of new grounds of rejection in examiner's answers. Many
appellants are making new arguments for the first time in their appeal
brief (apparently stimulated by a former change to the appeal process
that inserted the prohibition on new grounds of rejection in the
examiner's answer). Because the current appeal rules only allow the
examiner to make a new ground by reopening prosecution, some examiners
have allowed cases to go forward to the Board without addressing the
new arguments. Thus, the proposed revision would improve the quality of
examiner's answers and reduce pendency by providing for the inclusion
of the new ground of rejection in an examiner's answer without having
to reopen prosecution. By permitting examiners to include a new ground
of rejection in an examiner's answer, newly presented arguments can now
be addressed by a new ground of rejection in the examiner's answer when
appropriate. Furthermore, if new arguments can now be addressed by the
examiner by incorporating a new ground of rejection in the examiner's
answer, the new arguments may be able to be addressed without reopening
prosecution and thereby decreasing pendency. Proposed paragraph (b) of
this rule would specify the options available to an appellant who has
received a new ground of rejection, including the option to request and
have prosecution reopened before the examiner.
The proposed change to permit new grounds of rejection in
examiner's answers would not be open-ended but is envisioned to be
rare, rather than a routine occurrence. The Office plans to issue
instructions that will be incorporated into the MPEP requiring that any
new ground of rejection made by an examiner in an answer must be
approved by a management official such as a Technology Center Director
and that any new ground of rejection made in an answer be prominently
identified as such. It is the further intent of the Office to provide
guidance to examiners that will also be incorporated into the MPEP as
to what circumstances, e.g., responding to a new argument or new
evidence submitted prior to appeal, would be appropriate for entry of a
new ground of rejection in an examiner's answer rather than the
reopening of prosecution. Where, for example, a new argument(s) or new
evidence cannot be addressed by the examiner based on the information
then of record, the examiner may need to reopen prosecution rather than
apply a new ground of rejection in an examiner's answer to address the
new argument(s) or new evidence. Paragraph (b) of Sec. 41.39 would
provide the appellant two options when a new ground of rejection in an
examiner's answer is made, including the option of having prosecution
reopened.
The following examples are set forth to provide guidance as to when
the Office may or may not consider a factual scenario suitable for
introducing new grounds of rejection in the examiner's answer. These
examples are not considered an exhaustive list of situations that meet
or do not meet the criteria for making a new ground of rejection in an
examiner's answer:
Example 1: A new ground of rejection based upon prior art may be
allowed if the examiner obviously failed to include a dependent
claim in a rejection. For example, in the final rejection, claims 1,
13 and 27 were rejected under 35 U.S.C. 102(b) as being anticipated
by U.S. Patent No. Y. Claim 27 depended from claim 22 which depended
from claim 13 which depended from independent claim 1. No rejection
of claim 22 was set forth in the final rejection; however, the
summary sheet of the final rejection indicated that claims 1, 13 and
27 were rejected. In this situation, the examiner would reject claim
22 under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y
as a new ground of rejection in the answer.
Example 2: A new ground of rejection would not be allowed to
reject a previously allowed or objected to claim even if the new
ground of rejection would rely upon prior art already of record. In
this instance, rather than making a new ground of rejection in an
examiner's answer, if the basis for the new ground of rejection was
approved by a supervisory patent examiner as currently set forth in
MPEP 1208.02, the examiner would reopen prosecution.
Example 3: The proposed amendment is intended to continue to
permit the examiner to include new grounds of rejection where
appellant was advised that an amendment under Rule 116 would be
entered for appeal purposes. The proposed rule would eliminate Rule
193(a)(2), which states that the filing of an amendment under Rule
116 represents applicant's consent when so advised that any appeal
on that claim will proceed subject to any rejections set forth in an
action from which appeal was taken. Proposed Sec. 41.39(a)(2)
broadens the situations in which an examiner can make a new ground
of rejection to include circumstances currently covered by Rule
193(a)(2).
Paragraph (b) of Sec. 41.39 would set forth the responses an
appellant may make when an examiner's answer sets forth a new ground of
rejection. Appellant would be required within two months from the date
of the examiner's answer containing a new ground of rejection either:
(1) To request that prosecution be reopened by filing a reply under
Rule 111 with or without amendment or submission of affidavits (Rules
130, 131 or 132) or other evidence, which would result in prosecution
being reopened before the examiner, or
(2) To file a reply brief under Sec. 41.41, which would act as a
request that the appeal be maintained. Such a reply brief could not be
accompanied by any amendment, affidavit (Rules 130, 131, or 132) or
other evidence. If such a reply brief were accompanied by any amendment
or evidence, it would be treated as a request that prosecution be
reopened before the examiner under paragraph (b)(1) of this section.
Any reply brief would have to specify the error in each new ground of
rejection as set forth in Sec. 41.37(c)(1)(viii) and should
generally follow the other requirements of a brief set forth in Sec.
41.37(c).
If in response to the examiner's answer containing a new ground of
rejection, appellant decides to reopen prosecution of the application
before the examiner, the Office will treat the decision to reopen
prosecution also as a request to withdraw the appeal. If appellant
fails to exercise one of the two options within two months from the
date of the examiner's answer, the appeal will be dismissed (i.e.,
terminated) sua sponte.
Paragraph (c) of Sec. 41.39 is proposed to be added to provide
notice that the period set forth in proposed paragraph (b) of this
section is extendable under the provisions of Rule 136(b) for patent
applications and Rule 550(c) for ex parte reexamination proceedings.
This provision currently appears in Rule 191(d), but it would be more
useful if provided in this section.
Proposed Sec. 41.41 would generally incorporate requirements found
in Rule 193(b). In addition:
(1) Paragraph (a) would make explicit that a reply brief could not
include any new or non-admitted amendment, affidavit or other evidence.
(2) Paragraph (b) would be added to make clear that a reply brief
not in compliance with paragraph (a) would not be considered. The
examiner would notify the appellant in this event.
(3) Paragraph (c) would be added to provide notice that the period
set forth in this section would be extendable under the provisions of
Rule 136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision currently appears in Rule
191(d), but would be more useful if provided in this section.
Proposed Sec. 41.43 is proposed to be added to permit the examiner
to furnish a supplemental examiner's answer to respond to any new issue
raised in the reply brief. This would dispense with the need for the
Board to remand the proceeding to the examiner to treat any new issue
raised in the reply brief. It is proposed that a supplemental
examiner's answer may not include a new ground of rejection. If a
supplemental examiner's answer is furnished by the examiner, it is
proposed to permit the appellant to file another reply brief under
proposed Sec. 41.41 within two months from the date of the
supplemental examiner's answer.
The current prohibition against a supplemental examiner's answer in
other than a remand situation would be removed to permit use of
supplemental examiner's answers where the examiner is responding only
to new issues raised in the reply brief. As a consequence, the
requirements pertaining to appellants when prosecution is reopened
under Rule 193(b)(2) would be removed.
Section 41.43(a)(1) as proposed would permit the examiner to
furnish a supplemental examiner's answer to respond to any new issue
raised in a reply brief. It should be noted that an indication of a
change in status of claims (e.g., that certain rejections have been
withdrawn as a result of a reply brief) is not a supplemental
examiner's answer and therefore would not give appellant the right to
file a reply brief. Such an indication of a change in status may be
made on form PTOL-90. The Office will develop examples to help the
examiner determine what would or would not be considered a new issue
warranting a supplemental examiner's answer. An appellant who disagrees
with an examiner's decision that a supplemental examiner's answer is
permitted under this proposed rule may petition for review of the
decision under Rule 181. Possible examples of new issues raised in a
reply brief include the following:
Example 1: The rejection is under 35 U.S.C. 103 over A in view
of B. The brief argues that element 4 of reference B cannot be
combined with reference A as it would destroy the function performed
by reference A. The reply brief argues that B is nonanalogous art
and therefore the two references cannot be combined.
Example 2: Same rejection as in Example 1. The brief argues only
that the pump means of claim 1 is not taught in the applied prior
art. The reply brief argues that the particular retaining means of
claim 1 is not taught in the applied prior art.
Paragraph (a)(1) of proposed Sec. 41.43 would also set forth the
ability of the examiner to withdraw the final rejection and reopen
prosecution as an alternative to the use of a supplemental examiner's
answer. The primary examiner's decision to withdraw the final rejection
and reopen prosecution to enter a new ground of rejection will require
approval from the supervisory patent examiner as currently set forth in
MPEP 1208.02.
Paragraph (b) of proposed Sec. 41.43 would permit appellant to
file a supplemental reply brief in response to a supplemental
examiner's answer within two months from the date of the supplemental
examiner's answer. That two-month time period may be extended under the
provisions of Rule 136(b) for patent applications and Rule 550(c) for
ex parte reexamination proceedings as set forth in proposed Sec.
41.43(c).
Proposed Sec. 41.47 would generally incorporate the requirements
of Rule 194. In addition:
(1) Paragraph (b) is proposed to be amended to require the separate
paper requesting the oral hearing to be captioned "REQUEST FOR ORAL
HEARING" and that such a request can be filed within two months from
the date of the examiner's answer or supplemental examiner's answer.
(2) Paragraph (d) is proposed to be added to set forth the
procedure for handling the request for oral hearing when an appellant
has complied with all the requirements of paragraph (b) of this
section. Since notice to the primary examiner is a matter internal to
the Office, it is proposed that the requirement for notice to the
primary examiner be removed from the rule. It is anticipated that the
primary examiner will be sent notice of the hearing time and date by
e-mail.
(3) Paragraph (e) is proposed to be added to specifically provide
that at the oral hearing (i) appellant may only rely on evidence that
has been previously considered by the primary examiner and present
argument that has been relied upon in the brief or reply brief; (ii)
the primary examiner may only rely on argument and evidence raised in
the answer or a supplemental answer; and (iii) that appellant opens and
concludes the argument (i.e., the order of the argument at the hearing
is: Appellant opens, then the primary examiner argues, then the
appellant concludes presuming that appellant has reserved some time for
a concluding argument).
(4) The substance of proposed paragraph (f) is found in Rule 194.
Exemplary situations where the Board may decide no hearing is necessary
include those where the Board has become convinced, prior to hearing,
that an application must be remanded for further consideration prior to
evaluating the merits of the appeal or that the examiner's position
cannot be sustained in any event.
(5) Paragraph (g) is proposed to be added to provide notice that
the periods set forth in this section are extendable under the
provisions of Rule 136(b) for patent applications and Rule 550(c) for
ex parte reexamination proceedings. This provision currently appears in
Rule 191(d), but would be more useful if provided in this section.
Proposed Sec. 41.50 would generally incorporate the requirements
of Rule 196. In addition:
(1) Paragraph (a)(1) would explicitly provide that the Board, in
its principal role under 35 U.S.C. 6(b) of reviewing adverse decisions
of examiners, may in its decision affirm or reverse the decision of the
examiner in whole or in part on the grounds and on the claims specified
by the examiner. The Board may also remand an application to the examiner.
(2) Paragraph (a)(2) would be added to require appellant to respond
to any supplemental examiner's answer issued in response to a remand
from the Board to the examiner for further consideration of a rejection
to avoid sua sponte dismissal of the appeal as to all claims under
appeal. It is proposed that appellant must exercise one of the
following two options to avoid such sua sponte dismissal of the appeal
as to all claims under appeal: (i) Request that prosecution be reopened
before the examiner by filing a reply under Rule 111 with or without
amendment or submission of affidavits (Rules 130, 131 or 132) or other
evidence, and (ii) request that the appeal be maintained by filing a
reply brief as provided in proposed Sec. 41.41. If such a reply brief
is accompanied by any amendment, affidavit or other evidence, it shall
be treated as a request that prosecution be reopened before the
examiner under proposed Sec. 41.50(a)(2)(i). Any request that
prosecution be reopened under this paragraph would be treated as a
request to withdraw the appeal.
A first example of a remand from the Board to the examiner for
further consideration of a rejection is a remand for the examiner to
provide additional explanation as to how a reference anticipates a
claim (i.e., asking the examiner to set forth a prima facie case of
anticipation). A second example of a remand from the Board to the
examiner for further consideration of a rejection is a remand for the
examiner to ascertain (i.e., set forth) the differences between the
claimed subject matter of the primary reference in an obviousness
rejection and then to state why the claimed subject matter as a whole
would have been obvious at the time the invention was made to a person
of ordinary skill in the art (i.e., asking the examiner to set forth a
prima facie case of obviousness).
A first example of a remand from the Board to the examiner that is
not for further consideration of a rejection is a remand for the
examiner to consider an Information Disclosure Statement. A second
example of a remand from the Board to the examiner that is not for
further consideration of a rejection is a remand for the examiner to
consider a reply brief.
(3) Paragraph (b)(2) would eliminate the provision relating to
requests that the application or patent under ex parte reexamination be
reheard, since that provision would be included in proposed Sec.
41.52(a).
(4) Paragraph (c) would provide that the opinion of the Board may
include an explicit statement how a claim on appeal could be amended to
overcome a specific rejection and that when the opinion of the Board
included such a statement, appellant would have the right to amend in
conformity therewith. Such an amendment in conformity with such
statement would overcome the specific rejection, but an examiner could
still reject a claim so-amended, provided that the rejection
constituted a new ground of rejection.
(5) Paragraph (d) would provide that appellant's failure to timely
respond to an order of the Board of Patent Appeals and Interferences
could result in the dismissal of the appeal.
(6) Paragraph (f) would be added to provide notice that the periods
set forth in this section are extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision currently appears in Rule
191(d), but it would appear to be more useful if provided in this
section.
Proposed Sec. 41.52 would generally incorporate the requirements
of Rule 197(b). In addition, paragraph (a) is proposed to be amended to
incorporate the matter being deleted from Rule 196(b)(2) relating to
the request that the application or patent under ex parte reexamination
be reheard. In addition, the rule as proposed would permit the Board to
simply deny a request for rehearing in appropriate cases rather than
rendering a new opinion and decision on the request for rehearing.
Paragraph (b) is proposed to be added to provide notice that the period
set forth in this section is extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision currently appears in Rule
191(d), but would be more useful if provided in this section.
Proposed Sec. 41.54 would generally incorporate the requirements
of Rule 197(a).
Proposed Sec. 41.56 provides that an appeal under this proposed
subpart is terminated by the dismissal of the appeal or when, after a
final Board action a notice of appeal under 35 U.S.C. 141 is filed, a
civil action under 35 U.S.C. 146 is commenced, or the time for seeking
judicial review (Rule 304) has expired. Termination of an appeal under
this proposed subpart is the cessation of the appeal proceeding before
the Board and is distinct and separate from the termination of
proceedings on an application (proposed Rule 197(b)) or the termination
of proceedings on an ex parte reexamination proceeding which is
concluded by the issuance of a certificate pursuant to Rule 570. A
dismissal of an appeal results in a termination of the appeal
proceeding before the Board. After dismissal of an appeal, an
application is returned to the examiner to determine the proper course
of action (e.g., possible allowance and issuance if there are allowed
claims; possible abandonment if there are no allowed claims) as set
forth in sections 1214 to 1215.04 of the MPEP. After dismissal of an
appeal, an ex parte reexamination proceeding is returned to the
examiner to issue the appropriate certificate pursuant to Rule 570.
Proposed subpart C provides rules for the inter partes appeal under
35 U.S.C. 315 of a rejection in an inter partes reexamination
proceeding to the Board. This proposed subpart does not apply to any
other Board proceeding and is strictly limited to appeals in inter
partes reexamination proceedings filed under 35 U.S.C. 311.
The preamble to proposed Sec. 41.60 is based on a similar
provision in the preamble of Rule 601. The term "proceeding" provides
a shorthand reference to an inter partes reexamination proceeding. The
term "owner" provides a shorthand reference to the owner of the
patent undergoing inter partes reexamination under Rule 915. The term
"requester" provides a generic term to describe each party other than
the owner who requested that the patent undergo inter partes
reexamination under Rule 915. The term "appellant" provides a generic
term for any party, whether the owner or a requester, filing a notice
of appeal or cross appeal under proposed Sec. 41.61. If more than one
party appeals or cross appeals, each appealing or cross appealing party
is an appellant with respect to the claims to which his or her appeal
or cross appeal is directed. The term "respondent" provides a generic
term for any requester responding under proposed Sec. 41.68 to the
appellant's brief of the owner, or the owner responding under proposed
Sec. 41.68 to the appellant's brief of any requester. No requester may
be a respondent to the appellant brief of any other requester. The
terms "appellant" and "respondent" are currently defined in Rule
962. The proposed definition of the term "filing" provides a generic
requirement that any document filed in the proceeding by any party must
include a certificate indicating service of the document to all other
parties to the proceeding as required by Rule 903.
Proposed Sec. 41.61 would generally incorporate the requirements
of current Rule 959 and the changes thereto proposed in "Changes To
Implement the 2002 Inter Partes Reexamination and Other Technical
Amendments to the Patent Statute", 68 FR 22343 (28 April 2003)
(RIN 0651-AB57).
Proposed Sec. 41.63(a) and (b) would replace the requirements of
current Rule 116 with a prohibition of amendments submitted after the
date the proceeding has been appealed pursuant to proposed Sec. 41.61,
except for amendments permitted by proposed Sec. 41.77(b)(1) and
amendments canceling claims where such cancellation does not affect the
scope of any other pending claim in the proceeding. Proposed Sec.
41.63(c) would replace the requirements of Rule 975 with a prohibition
on the admission of affidavits and other evidence submitted after the
case has been appealed pursuant to proposed Sec. 41.61 except as
permitted by proposed Sec. 41.77(b)(1). This would replace the current
practice of permitting such evidence based on a showing of good and
sufficient reasons why such evidence was not earlier presented. The
Office believes that prosecution of an application should occur before
the examiner prior to an appeal being filed, not after the case has
been appealed pursuant to proposed Sec. 41.61.
Proposed Sec. 41.64 would generally incorporate the requirements
of Rule 961, but would make clear that jurisdiction over a proceeding
may be relinquished and the proceeding returned to the examining
operation to permit processing to be completed before the Board takes
up the appeal for decision.
Proposed Sec. 41.66 would generally incorporate the requirements
of Rule 963.
Proposed Sec. 41.67 would generally incorporate the requirements
of Rule 965 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (28 April 2003) (RIN 0651-AB57). In
addition, it is proposed:
(1) In paragraph (a), to require one copy of the brief rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(2) In paragraph (c)(1)(i), to require a statement in the brief
identifying by name the real party in interest even if the party named
in the caption of the brief is the real party in interest. This
provides appellant the necessary mechanism of complying with proposed
Sec. 41.8(a) in an appeal to the Board;
(3) In paragraph (c)(1)(ii), to require clear identification of all
other prior and pending appeals, interferences or judicial proceedings
known to appellant, the appellant's legal representative, or assignee
which may be related to, directly affect or be directly affected by or
have a bearing on the Board's decision in the pending appeal, as well
as to provide a mechanism of complying with proposed Sec. 41.8(b) in
an appeal to the Board.
(4) In paragraph (c)(1)(iii), to require both a statement of the
status of all the claims in the proceeding (e.g., rejected, allowed or
confirmed, withdrawn, objected to, canceled) and an identification of
those claims that are being appealed.
(5) In paragraph (c)(1)(v), to require a concise explanation of the
subject matter defined in each of the independent claims involved in
the appeal and which concise explanation shall refer to the
specification by page and line number, and to the drawings, if any, by
reference characters. For each claim involved in the appeal, it is
proposed that every means plus function and step plus function as
permitted by 35 U.S.C. 112, sixth paragraph, be identified and that the
structure, material, or acts described in the specification as
corresponding to each claimed function be set forth with reference to
the specification by page and line number, and to the drawing, if any,
by reference characters. Any brief filed by an appellant who is
represented by a registered practitioner that fails to provide a
summary of the claimed subject matter which references the
specification by page and line number, and to the drawing, if any, by
reference characters or which fails to identify every means plus
function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, would be in non-compliance with this section and would be
handled as provided in proposed paragraph (d) of this section.
(6) In paragraph (c)(1)(vi), to require a concise statement listing
each issue presented for review. An example of a concise statement is
claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being
anticipated by U.S. Patent No. X.
(7) To delete the current grouping of claims requirement set forth
in Rule 965(c)(7). The general purpose served by Rule 965(c)(7) is
addressed in proposed Sec. 41.67(c)(1)(viii). The existing grouping of
claims requirement has led to many problems such as (i) Grouping of
claims across multiple rejections (e.g., claims 1-9 rejected under 35
U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103
over A and the appellant states that claims 1-15 are grouped together);
(ii) claims being grouped together but argued separately (e.g., claims
1-9 rejected under Sec. 102 over A, the appellant groups claims 1-9
together but then argues the patentability of claims 1 and 5
separately); and (iii) examiners disagreeing with the appellant's
grouping of claims.
(8) In paragraph (c)(1)(vii), to set forth that any arguments or
authorities not included in a brief permitted in this section or filed
pursuant to proposed Secs. 41.68 and 41.71 will be refused
consideration by the Board, unless good cause is shown, and to require
a separate heading for each ground of rejection in place of the
previous grouping of claims section of the brief. For each ground of
rejection applying to two or more claims, the claims may be argued
separately or as a group. When an appellant argues as a group multiple
claims subject to the same ground of rejection, the Board may select a
single claim from that group of claims and treat its disposition of a
ground of rejection of that claim as applying to the disposition of
that ground of rejection of all claims in the group of claims.
Notwithstanding any other provision of this paragraph, it is proposed
to make explicit by rule that an appellant's failure to argue
separately claims that appellant has grouped together would constitute
a waiver of any argument that the Board must consider the patentability
of any grouped claim separately. See In re McDaniel, 293 F.3d 1379,
1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002) (interpreting analogous
Rule 192(c)(7) to require separate treatment of separately rejected
claims). It is further proposed that any claim argued separately should
be placed under a subheading identifying the claim by number and that
claims argued as a group should be placed under a subheading
identifying the claims by number.
(9) In paragraph (c)(1)(vii), to state that "Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable." This statement in slightly
different form is in Rule 965(c)(7).
(10) In paragraph (c)(1)(vii), to eliminate subparagraphs (i)
through (v) of Rule 965(c)(8), which relate to the manner in which
arguments are to be made. Although providing useful advice as to what
an effective argument ought to include, these provisions have often
been ignored by appellants and, for the most part, have not been
enforced as provided in Rule 965(d).
(11) To add paragraph (c)(1)(ix) to require appellant to include an
evidence appendix of any evidence relied upon by appellant in the
appeal with a statement setting forth where that evidence was entered
in the record by the examiner so that the Board would be
able to reference such evidence easily during their consideration of
the appeal.
(12) To add paragraph (c)(1)(x) to require appellant to include a
related proceedings appendix containing copies of decisions rendered by
a court or the Board in any proceeding identified pursuant to proposed
Sec. 41.67(c)(1)(ii) so that the Board can take into consideration
such decisions.
(13) Add paragraph (c)(2) to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in an
appellant's brief.
Proposed Sec. 41.68 would generally incorporate requirements found
in Rule 967 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (28 April 2003) (RIN 0651-AB57), and
changes similar to those proposed in Sec. 41.67. In addition, it is
proposed to add paragraph (b)(2) to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in a
respondent's brief.
Proposed Sec. 41.69 would generally incorporate requirements found
in Rule 969.
Proposed Sec. 41.71 would generally incorporate requirements found
in Rule 971 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (April 28, 2003) (RIN 0651-AB57).
Proposed Sec. 41.73 would generally incorporate the requirements
of Rule 973. In addition:
(1) Paragraph (b) would require the separate paper requesting the
oral hearing to be captioned "REQUEST FOR ORAL HEARING" and that such
a request can be filed within two months from the date of the
examiner's answer.
(2) Paragraph (d) would be added to provide the procedure for
handling the request for oral hearing in which a party has complied
with all the requirements of paragraph (b) of this section. Since
notice to the primary examiner is a matter internal to the Office, it
is proposed that the requirement for notice to the primary examiner be
removed from the rule. It is anticipated that the primary examiner will
be sent notice of the hearing time and date by e-mail.
(3) Paragraph (e) would be added to specifically provide that at
the oral hearing (i) parties may only rely on evidence that has been
previously considered by the primary examiner and present argument that
has been relied upon in the briefs; (ii) the primary examiner may only
rely on argument and evidence relied upon in the answer; and (iii) that
the Board will determine the order of the arguments presented at the
oral hearing.
(4) The substance of proposed paragraph (f) is found in Rule 194.
Exemplary situations where the Board might decide no hearing is
necessary include those where the Board has become convinced, prior to
hearing, that the proceeding must be remanded for further consideration
prior to evaluating the merits of the appeal.
Proposed Sec. 41.77 would generally incorporate the requirements
of Rule 977 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (April 28, 2003) (RIN 0651-AB57).
Proposed Sec. 41.79 would generally incorporate the requirements
of current Rule 979 concerning rehearing before the Board. Paragraph
(b) is proposed to be amended to generally incorporate the requirements
of current Rule 979(d). Paragraph (c) is proposed to be amended to
generally incorporate the requirements of current Rule 979(b).
Paragraph (d) is proposed to be amended to generally incorporate the
requirements of current Rule 979(c). Paragraph (e) is proposed to be
amended to generally incorporate the requirements of current Rule
979(g).
Proposed Sec. 41.81 would generally incorporate the requirements
of current Rule 979(e) and the changes thereto proposed in "Changes To
Implement the 2002 Inter Partes Reexamination and Other Technical
Amendments to the Patent Statute", 68 FR 22343 (April 28 2003) (RIN
0651-AB57).
Proposed Sec. 41.83 would incorporate some of the requirements
found in current Rule 979(f) and would provide that an appeal by a
party under this proposed subpart is terminated by the dismissal of
that party's appeal, or when, after a final Board action, a notice of
appeal under 35 U.S.C. 141 is filed or the time for seeking judicial
review (Rule 983) has expired. Termination of an appeal by a party
under this proposed subpart is the cessation of that appeal proceeding
before the Board and is distinct and separate from the termination of
proceedings on an inter partes reexamination proceeding which is
concluded by the issuance of a certificate pursuant to Rule 997.
Proposed subpart D would provide rules for contested cases.
Contested cases are predominantly patent interferences under 35 U.S.C.
135(a), but also include United States Government ownership contests
under 42 U.S.C. 2182[3] and 2457(d). The proposed rules in this
proposed subpart would be more general than the existing rules for
three reasons. First, while three different statutory proceedings are
currently conducted under "interference rules", the rules are only
tailored to patent interferences. Second, the considerable detail of
the current rules has fostered a tendency toward technical compliance
with the rules rather than actually proving a case (e.g., Hillman v.
Shyamala, 55 USPQ2d 1220, 1221 (BPAI 2000)). Third, experience with the
current rules suggests that attempts to codify the procedures for
contested cases too precisely frustrates the policy of administering
interferences in a fast, inexpensive, and fair manner. Consequently,
the rules would be simplified to give parties adequate guidance about
the procedures while permitting the Board to design an approach
appropriate to each case. The proposed rules would also better describe
the practice for most interferences declared since October 1998. A more
complete understanding of existing practice as it relates to the
current rules can be obtained from reading the Interference Trial
Section's Standing Order, which can be found at
http://www.uspto.gov/web/offices/dcom/bpai/standing 2003May.pdf.
Proposed Sec. 41.100 would define two terms. The term "business
day" would be defined in a manner consistent with 35 U.S.C. 21(b) to
exclude Saturday, Sunday, and Federal holidays, when the closure of the
Board may affect the Board's, or a party's, ability to perform an
action.
The term "involved" appears in 35 U.S.C. 135(a) with respect to
claims and is implicitly defined in Rule 601(f) (for claims) and in
Rule 601(l) (for applications), but is not explicitly defined in the
current rules. The proposed rule would expressly define "involved" as
designating any patent application, patent, or claim that is the
subject of the contested case.
Proposed Sec. 41.101 would follow the practice in Rule 611(a) and
(b) for notifying parties of a contested case. As a courtesy, the Board
would make reasonable efforts to provide notice to all parties. Note
that failure to maintain a current correspondence address may result in
adverse consequences. Cf. Ray v. Lehman, 55 F.3d 606, 610, 34 USPQ2d
1786, 1788-89 (Fed. Cir. 1995) (finding notice of maintenance fee
provided to obsolete, but not updated, address of record to have been
adequate).
Proposed Sec. 41.102 would require completion of examination for
most applications (and of reexamination for most patents) before the
Board will institute a contested case. Contested
cases are generally much more expensive than ex parte proceedings.
Consequently, it makes little sense to initiate a contested case before
all patentability issues (other than those that are the subject of the
contested case) have been resolved. Brenner v. Manson, 383 U.S. 519,
528 n.12 (1966) (rejecting the proposition that an interference must be
declared when the applicant's interfering claims are unpatentable). The
main exceptions would be title contests under 42 U.S.C. 2182 and
2457(d), where control of the examination may itself be a
consideration.
Proposed Sec. 41.103 would follow the file jurisdiction practice
in Rules 614 and 615 except to generalize the temporary transfer of
jurisdiction to include parts of the Office other than the examining
corps, including, for example, the Office of Public Records. Such
transfers of jurisdiction will generally be for short periods and for
limited purposes.
Proposed Sec. 41.104(a) would follow the practice of Rule 610(e),
which permits an administrative patent judge wide latitude in
administering interferences. The waiver provision of proposed Sec.
41.104(b) would be modeled on Rule 183 and would balance the ideal of
precise rules for most proceedings against the need for flexibility to
achieve reasonably fast, inexpensive, and fair proceedings. The
decision to waive a procedural requirement would be committed to the
discretion of the administrative patent judge. This provision would
eliminate the need for repeatedly stating exceptions throughout
proposed subpart D. For instance, the current rules have many instances
where a time is set in a rule, but the rule also permits an
administrative patent judge to adjust the time. Proposed Sec.
41.104(c) would make clear that any default times set by rule may be
changed by order. "Times" in paragraph (c) would include both dates
and durations.
Proposed Sec. 41.105 would codify existing practice prohibiting ex
parte communications about a contested case with an official actually
conducting the proceeding. Initiation of an ex parte communication
might result in sanctions against the initiating party. The prohibition
would include communicating with any member of a panel acting in the
proceeding or seeking supervisory review in a proceeding without
including the opposing party in the communication. In general, it is
wisest to avoid substantive discussions of a pending contested case
with a Board official. The prohibition on ex parte communications would
not extend to (1) ministerial communications with support staff (for
instance, to arrange a conference call), (2) hearings in which opposing
counsel declines to participate, (3) informing the Board in one
proceeding of the existence or status of a related Board proceeding, or
(4) reference to a pending case in support of a general proposition
(for instance, citing a published opinion from a pending case or
referring to a pending case to illustrate a systemic problem).
Proposed Sec. 41.106 would provide guidance for the filing and
service of papers. Under proposed Sec. 41.106(a), papers to be filed
would be required to meet standards very similar to those required in
patent prosecution, Rule 52(a), and in filings in the Court of Appeals
for the Federal Circuit, Fed. R. App. P. 32. Proposed Sec.
41.106(a)(1) would permit a party to file papers in either A4 format or
8 1/2-inch x 11-inch format, but not to alternate between formats. See
Standing Order para. 3.3. At present, the Board prefers papers to be filed
in 8 1/2-inch x 11-inch format because the present filing system is
best adapted to this paper format. Electronic filing might eventually
render this preference moot.
Proposed Sec. 41.106(b) would provide guidance specific to papers
other than exhibits. Proposed Sec. 41.106(b)(1) would codify current
practices for the cover sheet of a paper. Standing Order para. 3.1, 3.5
and 3.6; cf. Fed. R. App. P. 32(a)(2). The caption aids in the prompt
matching of the paper to its file. The header expedites communications
between the Board staff and the party in the event that some prompt
action, such as the correction of a filing defect, is necessary. The
current practice of requiring a pink cover sheet aids in the processing
and filing of papers at the Board and facilitates use of the
administrative record by clearly indicating the beginning of each
paper.
Proposed Sec. 41.106(b)(2), which would require holes at the top
of the paper, would codify the practice under Standing Order para. 3.4,
which is based on Local Civil Rule 5.1(f) (1999) of the United States
District Court for the District of Columbia. The proposed rule would
facilitate entry of the paper in the administrative record.
The bar in proposed Sec. 41.106(b)(3) against incorporation by
reference and combination of papers would minimize the chance that an
argument will be overlooked and would eliminate abuses that arise from
incorporation and combination. In DeSilva v. DiLeonardi, 181 F.3d 865,
866-67 (7th Cir 1999), the court rejected "adoption by reference" as
"a self-help increase in the length of the * * * brief" and noted
that "incorporation is a pointless imposition on the court's time. A
brief must make all arguments accessible to the judges, rather than ask
them to play archaeologist with the record." The same rationale
applies to Board proceedings.
Proposed Sec. 41.106(b)(4) would provide rules for the citation of
authority. Parallel citation to a West Company reporter and to the
United States Patents Quarterly, particularly for patent decisions of
Federal courts, is the norm in patent law. See Federal Circuit Rule
28(e). Pinpoint citations, also called "jump citations", are the norm
in legal practice. See The Bluebook: A Uniform System of Citation Sec.
3.3(a) (Columbia L. Rev. Ass'n et al. 17th ed. 2000). The citation of
secondary authority would be discouraged whenever primary authority
exists. For instance, a citation to the MPEP is unhelpful if the MPEP
itself is merely summarizing binding case law.
Proposed Sec. 41.106(d) would provide additional guidance for
special modes of filing. Proposed Sec. 41.106(d)(1) would provide a
mailing address. Note that the proposed rule would encourage the use of
the EXPRESS MAIL service of the United States Postal Service. Mail
sent by other means would not be considered to have been filed until it
is actually received. Cf. proposed Sec. 41.106(e)(3), which would
permit service by methods at least as fast and reliable as EXPRESS
MAIL. Proposed Sec. 41.106(d)(2) would permit other modes of
filing. For instance, the Board is currently working on a pilot program
for electronic filing in contested cases. The diversity of possible
filing forms and the varying ability of parties to cope with electronic
filing requires a case-by-case determination of whether to place a
proceeding in the pilot program. Practitioners permitted to file
electronically are encouraged to agree to do so.
Proposed Sec. 41.106(e)(1) would require papers to be served when
they are filed if they have not already been served. Under current
practice, the usual instance in which filing before service is
authorized is the case of preliminary statements where prior filing is
a mechanism for ensuring that a party states its priority case based on
what it knows about its own proofs rather than on what it knows about
what the other party intends to prove. Proposed Sec. 41.106(e)(3)
would provide for expedited service, which would place the parties on
an equal footing by reducing the disparities that can arise from the
use of different forms of delivery.
Proposed Sec. 41.106(f) would provide rules for certificates of
service. Proposed Sec. 41.106(f)(1) would require the certificate to
be incorporated into each paper other than exhibits. The filing of
additional papers like certificates of service and transmittal letters
as separate papers places a file maintenance burden on the Board. The
filing of transmittal letters is strongly discouraged. Exhibits
constitute the exception to the rule since the current practice permits
the filing of most or all exhibits at one time. When the exhibits are
filed at the same time, the certificate may be incorporated into the
exhibit list. See proposed Sec. 41.154(d).
Section 41.107 of proposed subpart D would be reserved. It is
likely that rules for electronic filing and service will evolve in the
next few years. When they are ready for codification, Sec. 41.107
would be the natural place for them to appear.
Proposed Sec. 41.108 would require each party to identify its
counsel, if any. The proposed rule would also follow Rule 613(a), which
permits the Board to require the appointment of a lead counsel.
Proposed Sec. 41.109 would follow Rule 612 in permitting parties
to obtain copies of certain Office files directly related to the
contested case. Current practice is to make the necessary files
available for copying immediately after the Board initiates the
proceeding. Standing Order para. 6. After that initial opportunity passes,
files typically become less available because they are often required
in other parts of the Office. Proposed Sec. 41.109(c) would require a
party that has not received copies of a requested file to notify the
Board of the problem promptly. A delay in receiving a file resulting
from a failure to order a file promptly, or to notify the Board
promptly that a file has not been received, would not justify a delay
in the proceeding.
The proposed rule would depart from Rule 612 by eliminating the
requirement for withholding declarations under Rule 131 and statements
under Rule 608. One reason for withholding such papers is that they
give the opponent an advanced view of the applicant's priority case,
which is said to be unfair (and can enable fraud by the other party in
stating its priority case). This practice, however, is asymmetric
because the withholding only applies to applicants while a patentee's
Rule 131 declaration is publicly available. Moreover, to the extent the
applicant has relied on the declaration to obtain allowable claims, it
is an important element in the prosecution history. On balance, the
goals of examination are better served by permitting early access to
such statements. Nothing in the proposed rule would prevent the Board
from authorizing the withholding of such declarations on a showing of
good cause.
Proposed Sec. 41.110(a) would require a single clean set of the
claims, analogous to the requirement for amendments "in clean form"
in Rule 121. The annotated copy required in proposed Sec. 41.110(b)
would provide the opposing party and the Board with a clear
understanding of how the party construes its own claim. The clean and
annotated copies would provide everyone in the proceeding with a
convenient reference and help to identify mistakes, such as amendments
that were not entered or portions of the disclosure that were not
printed, before the proceeding begins in earnest. Cf. Southwest
Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1296, 56 USPQ2d 1161,
1173 (Fed. Cir. 2000) (critical portion of disclosure missing).
Moreover, identically worded claims in separate applications claims
can, when properly construed in view of the specification, have
patentably distinct scopes. This possibility is particularly important
for claims written in the form permitted under 35 U.S.C. 112[6], where
identically worded means or steps might not correspond to equivalent
structures, materials, or acts in the respective disclosures. For
instance, a limitation requiring "means for fastening" might refer to
rivets in one specification and glue in another, which on the facts of
the case might not prove to be equivalent. Here is an example of the
annotation that would be required (except the bracketed portion should
also be shown in bold face): " . . . means for fastening {Fig. 6, item
3; also page 17, lines 9-22{time} . . . ."
Proposed Sec. 41.120 would provide for notice of requested relief
and the basis for that relief in contested cases. Similar notices are
already common in patent interferences, e.g., a preliminary statement,
a statement under Rule 608, and a motions list currently required at
the first status conference. These notices can be effective mechanisms
for administering cases efficiently and for placing opponents on
notice. Interferences suggested under proposed Sec. 41.202(a) would
already include a notice from at least one party, although the Board
could require more detail.
Proposed Sec. 41.120(b) would apply present Rule 629(e) regarding
the effect of preliminary statements to notices generally. Preliminary
statements are binding on the submitting party. The proposed rule would
make other such notices presumptively binding because compliance with
current notice practices is highly variable and can have the effect of
prejudicing the party that complies most completely with a notice
requirement. The filing party should not be allowed to hide behind an
ambiguous notice. For instance, a notice that alleges a date of
conception "no later than 20 June 2000" would be construed as
limiting the submitting party to proving a date no earlier than 20 June
2000. Note that a notice is not evidence except to the extent it
qualifies as a party-opponent admission. See Federal Rule of Evidence
801(d)(2). Proposed Sec. 41.120(c) would permit correction of a notice
after the time set for filing the notice, but would set a high
threshold for entry of the correction.
Proposed Sec. 41.121(a)(1) would redefine motions practice under
Rule 633(a), (b), (c)(2), (c)(3), (c)(4), (f) and (g) to focus more
specifically on the central issue in the contested case. Current
practice often permits motions that have little to do with the point of
the contest. For instance, a motion for unpatentability in an
interference is not helpful if it does not result in a loss of
standing, a change in the scope of the count, or a change in the
accorded benefit.
Proposed Sec. 41.121(a)(1)(iii) would permit a motion for judgment
in the contest, which can include an attack on standing as well as a
motion for relief on the central issue of the contest. For instance,
priority in interferences would be raised through motions. This
departure from current practice would address a potential disadvantage
to the senior party, which currently may have to make decisions about
the junior party's priority case after the junior party has provided
its evidence but before it explains the evidence. The prohibition on
motions directed to priority and derivation in Rule 633(a) would be
removed, although a decision on such motions would likely be contingent
on decisions regarding the scope of the interference. Consequently, the
Board might not authorize the filing of a priority or derivation motion
until after scope issues have been resolved.
Proposed Sec. 41.121(a)(2) and (a)(3) would modify the responsive
motion and miscellaneous motion practice under Rules 633(i) and (j),
634, and 635 to ensure that the proceeding remains focused. For
instance, current practice allows a motion to correct inventorship at
any time (Rule 634). Under the proposed rules, a motion to correct
inventorship could be an appropriate responsive motion in the face of a
patentability attack or in view of a priority statement, but would not
be permitted without some connection to an issue that must be resolved
in the contested case. The authorization requirement in proposed Sec.
41.121(a)(2) would also provide a mechanism for limiting abusive
practices, such as moving to add many more claims than are necessary to
cure a problem. Proposed Sec. 41.121(a)(3) would provide for
miscellaneous motions, which would offer a mechanism for requesting
relief on procedural issues and other issues tangential to
patentability and priority. See proposed Sec. 41.104. A miscellaneous
motion would not be considered a petition; hence, no petition fee is
required. See proposed Sec. 41.3(b). Panel review of a decision on a
miscellaneous motion would apply an abuse of discretion standard. See
proposed Sec. 41.125(c)(5); Rule 655(a).
Proposed Sec. 41.121(b) would place the burden of proof on the
moving party, following Rule 637(a). Since priority would be presented
as a motion, this paragraph would change the allocation of burden of
proof established in Rule 657(a). Cf. Brown v. Barbacid, 276 F.3d 1327,
1332, 61 USPQ2d 1236, 1239 (Fed. Cir. 2002) (construing Rule 657(a) to
require the ultimate burden of proof on priority to remain on the
junior party). A motion that fails to justify relief on its face could
be dismissed or denied without regard to subsequent briefing.
Proposed Sec. 41.121(c)(1) would follow Rule 637(a) regarding the
general contents of motions, but would also codify the current practice
of requiring a separate paper for each motion. The separate paper
requirement would reduce the chances that an argument will be
overlooked and would generally reduce the complexity of any given
paper. The numbered paragraphs stating material facts in proposed Sec.
41.121(c)(1)(ii) should be short, ideally just a sentence or two, to
permit the opposing party to admit or deny each fact readily. Under
proposed Sec. 41.121(c)(1)(iii), sloppy motion drafting would be held
against the moving party. A vague argument or citation to the record
creates inefficiencies for the Board and is fundamentally unfair to the
opposing party. Cf. Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,
1351, 53 USPQ2d 1580, 1589 (Fed. Cir. 2000) (declining to scour the
record to make out an argument for a party).
Proposed Sec. 41.121(c)(2) would require the movant to make
showings ordinarily required for the requested relief in other parts of
the Office. Many actions, particularly corrective actions like changes
in inventorship, filing reissue applications, and seeking a retroactive
foreign filing license, are governed by other rules of the Office. By
requiring the same showings, the proposed rule would keep practice
uniform throughout the Office. The Board could temporarily release the
affected file to the part of the Office usually responsible for
administering the rule to ensure consistency or otherwise take
advantage of that entity's expertise. See proposed Sec. 41.103.
Proposed Sec. 41.121(d) would provide authority comparable to Rule
641, which allows an administrative patent judge to raise questions of
patentability. The proposed rule would be broader because it would
permit the Board to inquire into other issues that may arise, such as
whether there continues to be an interference-in-fact in view of a
claim construction reached in deciding a motion. In this regard, it
would be akin to an order to show cause under Rule 640(d)(1).
Proposed Sec. 41.122 would address the perennial problem of new
arguments or requests for relief creeping in at inappropriate times.
The proposed rule would largely adopt the present practice in Standing
Order para. 13.7, but would extend the practice to oppositions as well.
Note that a movant need not anticipate all possible bases for
opposition, but may be held accountable for positions apparently
inconsistent with those taken by the movant during prosecution of an
application. For instance, a motion to add a broad claim to an
application in which the claims have been narrowed to avoid prior art
should explain why the new claim is patentable, not only in terms of
written description in the specification but also in terms of the
previously applied prior art. The Board could expunge improper papers.
See proposed Sec. 41.7(a); Winter v. Fujita, 53 USPQ2d 1234, 1250
(BPAI 1999).
Proposed Sec. 41.123(a) would maintain the practice of having the
Board set the times for filing motions found in Rule 636, but would
eliminate the default times provided in that rule. Proposed Sec.
41.123(a)(1)-(3) would provide default times for filing an opposition,
a reply, and a responsive motion, but would not themselves authorize
the filing of an opposition, a reply, or a responsive motion.
Proposed Sec. 41.123(b) would provide requirements for
miscellaneous motions. A conference call would be required before the
motion is filed because most relief requested in such motions can be
granted (or denied) in a conference call. In other cases, the call
would permit the setting of a schedule to accommodate full briefing of
the issue. This telephone practice has greatly increased speed and
reduced costs associated with miscellaneous motion practice.
A party is not entitled to an oral argument. In re Bose Corp., 772
F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985). Hence, a party could
request an oral argument under proposed Sec. 41.124(a), but requests
would not be automatically granted. Factors considered in setting an
oral argument might include the usefulness of an oral argument to the
administrative patent judge or panel and the burden on an opponent of
attending an oral argument. A corollary is that not all requested
issues would necessarily be heard. Under proposed Sec. 41.124(b), the
parties would be required to file three working copies of the papers to
be considered for the panel if the hearing is set for a panel. This
requirement would be comparable to Rule 656(e) and Federal Circuit Rule
31(b).
Proposed Sec. 41.124(c) would provide a default time of 20 minutes
per party for oral arguments at the Board because they are not
evidentiary hearings. This default time would be comparable to the 15
minutes typically provided for oral argument at the Court of Appeals
for the Federal Circuit. Fed. Cir. R. 34, practice note (2001).
Proposed Sec. 41.124(d) would permit the use of demonstrative
exhibits. Visual aids requiring special equipment would be discouraged
since the argument time would be short and cumbersome exhibits would
tend to detract from the user's argument. The use of a compilation with
each demonstrative exhibit separately tabbed would be encouraged,
particularly when a court reporter is transcribing the oral argument
because the tabs provide a convenient way to record which exhibit is
being discussed. It is helpful to provide a copy of the compilation to
each member of the panel hearing the argument.
Proposed Sec. 41.124(e) would permit the transcription of the
argument. The transcription would become part of the record and could
be helpful to the panel in reaching its decision. See Okajima v.
Bourdeau, 261 F.3d 1350, 1356, 59 USPQ2d 1795, 1798 (Fed. Cir. 2001)
(noting the role of the transcript in the Board's decision). To be
helpful, however, the transcript would have to be filed promptly.
Proposed Sec. 41.125(a) would maintain the practice under Rule
640(b) of addressing issues in a manner that is both fair and
efficient. Noted with approval in Berman v. Housey, 291 F.3d 1345,
1352, 63 USPQ2d 1023, 1028 (Fed. Cir. 2002). A decision on a motion
might be logically contingent on the outcome of another motion even
though the motion is not expressly identified as a contingent motion.
Moreover, efficient allocation of Office resources might require
deferral of a motion or referral of a matter to another part of the
Office. Given the great cost of contested cases for both parties and
the Office, the Board will continue to focus on efficient
administration consistent with the requirements of due process.
Proposed Sec. 41.125(b) would clarify the current practice that a
decision short of judgment is not final. It would also codify the
current practice of having panel decisions bind further action during
the proceeding. The practice of having panel decisions bind further
proceedings has eliminated much of the uncertainty and added cost that
results from deferring any final decision until the end of the
proceeding. A party dissatisfied with an interlocutory decision on
motions should promptly seek rehearing rather than waiting for a final
judgment. A panel could, when the interests of justice require it,
reconsider its decision at any time in the proceeding prior to final
judgment. A belated request for rehearing would rarely be granted,
however, because its untimeliness would detract from the efficiencies
that have resulted from making interlocutory decisions binding.
Proposed Sec. 41.125(c) would adopt the time for requesting
rehearing from Rule 640(c) and the procedural requirements of the last
two sentences of Rule 655(a). Since 35 U.S.C. 6(b) requires a panel
decision for finality, a party should request rehearing by a panel to
preserve an issue for judicial review. A panel will apply the
deferential abuse-of-discretion standard to procedural decisions on
rehearing.
Proposed Sec. 41.126 would adopt the arbitration practice of Rule
690. Although parties may submit any issue to binding arbitration, the
Board might independently decide any questions of patentability. The
proposed rule would also clarify that the Board could independently
determine questions like whether an interference-in-fact exists or what
an Office rule means.
Proposed Sec. 41.127(a)(1) would adopt the estoppel provision of
Rule 658(c). Note that while the second sentence of the proposed
paragraph would continue to focus on the losing party, a decision of no
interference-in-fact could also estop a party from provoking an
interference with the same opponent for the same subject matter under
the first sentence. Cf. Rule 665, which cites Rule 658(c).
Proposed Sec. 41.127(a)(2) restates the final disposal provision
of Rule 663. Proposed Sec. 41.127(b) would restate the conditions in
Rule 662 under which the Board would infer a concession of the contest.
Proposed Sec. 41.127(c) would restate the recommendation provision of
Rule 659.
The Director has authority to prescribe a time for seeking judicial
review. 35 U.S.C. 142 and 146[1]. The prescribed time (2 months) is set
in Rule 304(a)(1), but can be extended on petition under Rule
304(a)(3). Proposed Sec. 41.127(d) would provide a time for requesting
a rehearing and would delegate to the Board limited discretion to toll
the time for seeking judicial review for the pendency of the request.
Tolling the time for seeking judicial review would codify the result of
In re Graves, 69 F.3d 1147, 1149-51, 36 USPQ2d 1697, 1698-1700 (Fed.
Cir. 1995), but such tolling would not be automatic. The Board would
not toll the time for seeking review where the request for rehearing
appears to be a delaying tactic, for example if a party files requests
serially.
Proposed Sec. 41.128 would define the term "termination", which
appears several times in 35 U.S.C. 135(c). Section 135(c) renders
settlement agreements and patents involved in or resulting from the
interference unenforceable if the parties fail to file the agreements
prior to termination. The Office is required to provide notice of the
requirement within a reasonable time before termination or else the
agreement may be filed up to sixty days after notice is provided. The
Office has generally tried to minimize the potential traps for the
unwary by construing the requirements liberally. Over time, this has
led to divergent constructions of "termination". In Hunter v.
Beissbarth, 15 USPQ2d 1343, 1344 n.1 (Comm'r Pat. 1990), the question
of when such agreements must be filed was liberally construed to extend
the time until after judicial review was complete. In contrast, the
question of what agreements are covered was limited to agreements
reached during proceedings before the Board in Johnston v. Beachy, 60
USPQ2d 1584, 1588 (BPAI 2001). A third construction is possible in
which the interference proceeding is tolled during the judicial
proceeding such that both Hunter and Johnston are correct. In the
proposed rule, the Director would construe section 135(c) to mean the
interference terminates when the time for seeking judicial review under
35 U.S.C. 142 and 146[1] expires, whether such review is sought or not.
This construction offers several practical benefits. First, by limiting
the number of agreements covered, the risk of inadvertent failure to
file is correspondingly limited. Second, although parties will have
less time to file than they would under the Hunter construction, the
outer bound for timely filing will be much closer to the date of all
affected agreements, thus reducing the likelihood of an accidental
failure to file. Finally, since the Director has authority to extend
the time for seeking judicial review, sections 142 and 146[1], the
proposed definition permits an additional route of relief when such
relief, though otherwise unavailable, would be in the interests of
justice.
Proposed Sec. 41.128(a) would codify the holding of In re Graves,
69 F.3d 1147, 1151, 36 USPQ2d 1697, 1699-1700 (Fed. Cir. 1995), that
whether the time for seeking judicial review has run or not, a timely
notice of appeal on an appealable decision terminates further Board
jurisdiction to act on the merits. Proposed Sec. 41.128(b) would
extend the same principal to the timely commencement of a district
court action under 35 U.S.C. 146 seeking review of an appealable
decision.
Proposed Sec. 41.129(a) would restate Rule 616 on sanctions, but
would expressly add the examples of misleading arguments and dilatory
tactics to the list of reasons for sanctions. A party always has a duty
of candor toward a tribunal. Hence, while the proposed rules no longer
expressly require a movant to show the patentability of a proposed
claim to the movant, the filing of a claim that the party knew or
should have known to be unpatentable would be inconsistent with that
duty of candor. The concern about dilatory tactics arises from the
potential for abuse inherent in patent term adjustments for time spent
in an interference provided in 35 U.S.C. 154(b)(1)(C).
Proposed Sec. 41.129(b) would restate the list of sanctions
provided in Rule 616, but would add terminal disclaimer as a sanction.
Terminal disclaimer would be an appropriate sanction in cases where a
party has caused needless delay. The sanction of expunging papers would
be consistent with proposed Sec. 41.7(a), under which unauthorized
papers may be expunged. Neither the list of sanctionable acts nor the
list of sanctions should be considered exhaustive.
Proposed Sec. 41.150(a) would restate the present policy of
limited discovery, consistent with the goal of providing contested
proceedings that are fast, inexpensive, and fair. Proposed Sec.
41.150(b) would provide for automatic discovery of materials cited in
the specification of an involved or benefit disclosure. The proposed
rule would place the parties on a level playing field since the party
that relied on the requested materials in its disclosure
would ordinarily have easier access to such materials than the
requester and would be in a better position to ensure that the
requested material is the material cited. It would also eliminate many
routine discovery requests and disputes. The requirement would not be a
requirement for a party to create materials or to provide materials not
cited. See Scott v. Gbur, 62 USPQ2d 1959 (BPAI 2002) (nonprecedential).
Any request under proposed Sec. 41.150(b) should come early in the
proceeding to ensure that the requesting party will have timely access
to such materials. Proposed Sec. 41.150(c) would restate existing
practice under Rule 687 regarding additional testimony.
Proposed Sec. 41.151 would continue the practice under Rule 671(i)
of making failure to comply with the rules a basis for challenging
admissibility.
Proposed Sec. 41.152 would continue the current practice of using
the Federal Rules of Evidence in contested cases. Experience since this
practice was implemented in 1984 has shown it to be beneficial without
being unduly restrictive for either the parties or the Board. Moreover,
the Federal Rules of Evidence embrace a well-developed body of case law
and are familiar to the courts charged with reviewing Board decisions
in contested cases. Minor changes to the rule have been made to conform
the rule with amendments to the Federal Rules of Evidence since 1984.
No special provisions for electronic records are proposed beyond
the provisions already in the Federal Rules of Evidence. See Fed. R.
Evid. 1001(3). While electronic records appear to be of special concern
because they often may be easily altered, the requirements already
present in the Federal Rules of Evidence adequately addressed this
concern. The Board's limited experience with electronic records in
interferences has not suggested any unique admissibility problems
requiring special provisions. Electronic records have been admissible
in interferences on the same basis as other records.
Proposed Sec. 41.153 would restate the practice under Rule 671(d)
of admitting Office records that are available to all parties without
certification. Cf. 28 U.S.C. 1744, which provides for the admissibility
of certified Office records. Note that under proposed Sec. 41.154(a),
each Office record cited as evidence would have to be submitted as an
exhibit, following the practice of Standing Order para. 14.5. In the case
of application files and similar files, only the specific record cited
should be submitted as an exhibit. Submitting the entire file when only
discrete portions are cited would create a record-management problem
for the Board and confusion about what the fact-finders must consider
in reaching a decision. The Board might expunge such filings sua
sponte.
Proposed Sec. 41.154(a) would restate Rule 671(a), which sets the
form of evidence, and would codify the existing practice that all
evidence must be submitted as an exhibit. Proposed Sec. 41.154(b)
would restate Rule 647 regarding translation of foreign language
evidence. Proposed Sec. 41.154(c) would set forth additional formal
requirements for exhibits consistent with current practice under
Standing Order para. 14.8.1. An exhibit list would be required under
proposed Sec. 41.154(d), following the current practice under Standing
Order para. 14.8.5.
Proposed Sec. 41.155 would set forth rules for objecting to
evidence and responding to objections. The current practice is to
provide a time for filing motions to exclude. Under proposed Sec.
41.155(b)(1), the default time for serving an objection to evidence
other than testimony would be five business days. Since evidence would
have to be served by EXPRESS MAIL or comparably fast means, see
proposed Sec. 41.106(e)(3), five business days would ordinarily be
adequate time to object.
Proposed Sec. 41.155(b)(2) would permit a party that submitted
evidence ten business days after service of the objection to cure any
defect in the evidence. (Standing Order para. 14.2 provides two weeks.
The Board would not ordinarily address an objection unless the objecting
party filed a motion to exclude under Sec. 41.155(c) because the
objection either might have been cured or might prove unimportant in
light of subsequent developments. Proposed Sec. 41.155(d) would
provide for a motion in limine for a ruling on admissibility, following
the practice of Standing Order para. 13.10.3.2.
Under 35 U.S.C. 23, the Director may establish rules for affidavit
and deposition testimony. Under 35 U.S.C. 24[1], a party in a contested
case may apply for a subpoena to compel testimony in the United States,
but only for testimony to be used in the contested case. Proposed Sec.
41.156(a) would require the party seeking a subpoena to first obtain
authorization from the Board; otherwise the compelled evidence would
not be used in the contested case. Proposed Sec. 41.156(b) would
impose additional requirements on a party seeking testimony or
production outside the United States because the use of foreign
testimony generally increases the cost and complexity of the proceeding
for both the parties and the Board. The Board would give weight to
foreign deposition testimony to the extent warranted in view of all the
circumstances, including the laws of the foreign country governing the
testimony. Little, if any, weight might be given to deposition
testimony taken in a foreign country unless the party taking the
testimony proved, as a matter of fact, that knowingly giving false
testimony in that country in connection with a Board proceeding 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. Proposed
Sec. 41.156(c) would advise that the Board may rely on official notice
and hearsay to determine the scope and effect of foreign law.
Proposed Sec. 41.157 would restate existing practice regarding the
taking of testimony. The time period for cross-examination set in
proposed Sec. 41.157(c)(2) would follow the current practice under
Standing Order para. 14.3 and would set a norm for the conference held
under proposed Sec. 41.157(c)(1). A party seeking to push the
deposition outside this period would have to be prepared to show good
cause. Proposed Sec. 41.157(c)(3) would clarify the practice of
providing documents in advance by limiting the practice to direct
testimony. Since direct testimony is generally in the form of a
declaration, the circumstance in which proposed Sec. 41.157(c)(3)
would apply should rarely occur apart from compelled testimony.
Proposed Sec. 41.157(d) would codify the existing requirement for
a conference before a deposition with an interpreter. Board experience
suggests that the complexity of foreign language depositions can be so
great that in many cases the resulting testimony is not very useful to
the fact-finder. To avoid a waste of resources in the production of an
unhelpful record, the Board must approve of the deposition format in
advance and may require that the testimony occur before the Board.
Occasionally other testimony that particularly touches on the
credibility of the witness, such as testimony about best mode,
derivation, or inequitable conduct, will also be required to be taken
before the Board so the Board may directly observe the demeanor of the
witness.
Proposed Sec. 41.157(e) would depart from the current rules in
adopting "officer", the term used in 35 U.S.C. 23, to refer to the
person qualified to administer testimony.
The certification of proposed Sec. 41.157(e)(6)(vi) would
substantially adopt the standard of Rule 674 for
disqualifying an officer from administering a deposition. The use of
financial interest as a disqualification, however, would be broader
than the employment interest currently barred. Payment for ordinary
services rendered in the ordinary course of administering the
deposition and preparing the transcript would not be a disqualifying
financial interest. An interest acknowledged by the parties on the
record without objection would not be a disqualifying interest.
Proposed Sec. 41.157(e)(7) would require the proponent of the
testimony to file the transcript of the testimony. If the original
proponent of the testimony declined to file the transcript (for
instance, because that party no longer intended to rely on the
testimony), but another party wished to rely on the testimony, that
party becomes the proponent and could file the transcript as its own
exhibit.
Proposed Sec. 41.157(f) would codify the existing practice of
requiring the proponent of testimony to pay the reasonable costs
associated with making the witness available for cross examination,
including the costs of the reporter and transcript.
Proposed Sec. 41.158 would codify the practice under Standing
Order para. 14.9 and 14.10 regarding expert testimony and scientific tests
and data. Opinions expressed without disclosing the underlying facts or
data may be given little, if any, weight. Rohm & Haas Co. v. Brotech
Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997).
United States patent law is not an appropriate topic for expert
testimony before the Board.
Proposed subpart E would provide rules specific to patent
interferences. Proposed Sec. 41.200(a) would specifically identify
patent interferences as contested cases subject to the rules in
proposed subpart D.
Proposed Sec. 41.200(b) would continue the practice under Rule
633(a) of looking at the applicant's specification to determine the
meaning of a copied claim, not the specification from which the claim
was copied. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1554
(Fed. Cir. 1997) (explaining the change in practice). Claims in
interferences are not to be treated any differently than any other
claim before the Office. In this regard, the proposed rule would also
clarify that claims are given their broadest reasonable interpretation
in light of the associated specification. In re Van Geuns, 988 F.2d
1181, 1185, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (application claim in
interference); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) (application claim after interference); In re Etter,
756 F.2d 852, 858-59, 225 USPQ 1, 5-6 (Fed. Cir. 1985) (en banc)
(patent claim in reexamination). The court in Etter noted that a
patentee in reexamination can amend its claim, while a patentee in
litigation ordinarily may not. A patentee in an interference can
contingently narrow its claim by filing a reissue application. 35
U.S.C. 251; Rule 633(h) and (i); proposed Sec. 41.121(a)(2). Indeed, a
patentee may face an estoppel if it does not seek to amend its claim
when necessary. Rule 658(c); proposed Sec. 41.127(a)(1).
Proposed Sec. 41.200(c) would set forth the policy now found in
Rule 610(c) setting two years as the maximum normal pendency for patent
interferences. New procedures adopted since October 1998 have permitted
the Board to meet or exceed this goal in most interferences declared
since that time. The cooperation of the parties has been a critical
factor in this success. The proposed rules would build on this success
by codifying procedures that have facilitated efficiency, removing
procedures that delayed proceedings, and creating new opportunities for
improvement.
Proposed Sec. 41.201 would set forth definitions specific to
patent interferences. The phrase "accorded benefit" would be defined
as an act by the Board with regard to priority. Specifically, it would
be the Board's recognition of an application as providing a proper
constructive reduction to practice for a party. This recognition would
create a presumption that is important for setting the burdens for
proving priority. "Accorded benefit" in this proposed subpart would
be a term of art limited to priority determinations under 35 U.S.C.
102(g). In this regard accorded benefit should be understood to be
distinct from benefit under 35 U.S.C. 119, 120, 121, or 365(a), which
impose additional requirements not directly relevant to a priority
determination under section 102(g).
A definition would be set forth for the phrase "constructive
reduction to practice" because this phrase would be used in the
proposed rules instead of "earliest effective filing date" to explain
more precisely how benefit would be accorded for the purpose of
determining priority. "Earliest effective filing date" has proved
confusing because the same term is used to discuss compliance with the
disclosure requirements of 35 U.S.C. 119, 120, 121, and 365. Compliance
with these statutes is important when considering most questions of
patentability, but the question of benefit for priority under 35 U.S.C.
102(g) is narrower than full compliance with the disclosure statutes.
Sections 119, 120, 121, and 365 focus on whether the full scope of a
claim is adequately disclosed, while an interference is focused on
whether at least one embodiment anticipates the interfering subject
matter as defined in a count.
The phrase "constructive reduction to practice" would focus
consideration on the value of a disclosure as a potentially
anticipating reference under section 102(g). Only a single enabled
embodiment is necessary for anticipation of the count. Note that
abandonment of an application without a co-pending (section 120 and
121) or timely filed (sections 119 and 365) successor application can
render an otherwise anticipating disclosure under section 102(g)
"inoperative for any purpose, save as evidence of conception." In re
Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 391 (Fed. Cir. 1983). The
phrase "earliest constructive reduction to practice" would reflect
this requirement for continuity in the disclosure of the anticipating
embodiment under section 102(g).
The term "count" would be redefined to emphasize the relationship
of the count to admissible proofs of priority under section 102(g).
Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir.
2000) (priority cannot be established with a reduction to practice
outside the count). There has been a theoretical debate in the
interference bar about whether a count is necessary. Opponents hold
that a count is an artificial construct that imposes significant
administrative costs. It is true that the use of a count is the
principal reason why interferences almost always proceed in two phases:
a first phase to examine issues related to the scope of the count and a
second phase to determine priority for the count. Moreover, use of a
count might in some cases obscure the relationship between the priority
proofs and the patentability of claims said to correspond to the count.
Proponents, however, note that addressing the separate unpatentability
of claims without the benefit of a count to focus the analysis also
imposes extensive costs and uncertainties.
While a count may be theoretically unnecessary, experience with the
current rules suggests that a count is desirable. The costs associated
with the count are outweighed by the advantages flowing from having a
single description of the interfering subject matter both for the
purpose of determining priority and, perhaps more importantly, for the
purpose of claim correspondence. The Federal Circuit recently reached a
similar conclusion regarding the use of a count in the context of
interfering patents in 35 U.S.C. 291 proceedings. Slip-Track Sys. v.
Metal-Lite, Inc., 304 F.3d 1256, 1264, 64 USPQ2d 1423, 1428 (Fed. Cir.
2002) (requiring the use of a count). Note that the requirement that
counts be separately patentable preserves the current practice of
having genus and species counts in appropriate cases, e.g., Hester v.
Allgeier, 687 F.2d 464, 215 USPQ 481 (CCPA 1982) because a generic
invention and a specific invention are often patentably distinct.
The definition of "involved claim" would be based on a similar
definition in Rule 601(f). This definition would be consistent with the
definition of "involved" for contested cases in proposed Sec. 41.100
because only claims that correspond to the count are at risk in an
interference, except to the extent a question is raised as to whether a
claim that does not correspond should.
The definition of "senior party" would depart from the current
definition in Rule 601(m) by focusing on the earliest constructive
reduction to practice to determine which party, if any, is senior.
Identification of the senior party is important because a presumption
of priority attaches to the senior party under proposed Sec.
41.207(a)(1).
The phrase "threshold issue" would be defined to include three
specific issues that affect the standing of a party to participate in
an interference. All three are of particular interest to the Board
because they have been subject to abuse by parties using interferences
as a type of opposition proceeding. An adverse decision on these issues
with respect to all of a party's claims would ordinarily end the
interference. The list would be open-ended and thus admit the
possibility that another issue might qualify as a threshold issue on
the particular facts of a specific case. Note that these threshold
issues would exist in addition to the possibility that a junior party
has failed to allege a prima facie sufficient case of priority. See
proposed Secs. 41.202(d) and 41.204(a).
The first identified threshold issue would be no interference-in-
fact. Without an interference-in-fact, there would be no reason to
place either party's claim in jeopardy in the context of an
interference proceeding.
The other two specifically identified issues, the bar under 35
U.S.C. 135(b) and lack of written description under 35 U.S.C. 112[1],
would be directed to the prevention of spuriously provoked
interferences and would consequently be limited to motions from a party
with a patent or published application against a party with an involved
application. Note that the section 135(b) bar and lack of written
description address complementary problems: Under section 135(b) a
claim may be supported but untimely, while a claim lacking written
description may be timely but is unsupported. For the purposes of the
proposed rule, provocation of an interference would be inferred from
the circumstances, such as entry of a claim after publication of the
movant's application or issuance of the movant's patent. It would not
require any determination that the opponent had an intent to provoke
the interference.
Proposed Sec. 41.202(a) would restate the requirements of Rules
604, 607, and 608 for applicants provoking an interference. A showing
of priority need not anticipate all possible bases for opposing the
showing. For instance, when the applicant's earliest constructive
reduction to practice of the interfering subject matter occurred before
the apparent earliest constructive reduction to practice of a targeted
patent, it would typically suffice for the applicant to show precisely
where its earliest constructive reduction to practice was disclosed.
Proposed Sec. 41.202(a)(5) would continue the practice under Rule
633(a) of looking at the applicant's specification to determine the
meaning of a copied claim, not the specification from which the claim
was copied. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1554
(Fed. Cir. 1997) (explaining the change in practice). It would also set
forth a mechanism for weeding out frivolous attempts to provoke an
interference. A protester under Rule 291 hoping to prompt an examiner
to propose an interference could improve its chances of success by
satisfying the requirements of proposed Sec. 41.202(a)(1)-(a)(4) in
its protest.
Proposed Sec. 41.202(c) would restate the practice under Rule 605
of requiring an applicant to add a claim to provoke an interference.
This requirement is an effective and sometimes necessary method for
determining whether an interference actually exists between two
parties. In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA
1975). The requirement may be used to obtain a clearer definition of
the interfering subject matter or to establish whether the applicant
will pursue claims to the interfering subject matter. While an
applicant must add the claim or forfeit the subject matter of the
claim, the applicant may contest the requirement and the examiner may
withdraw the requirement. Where the requirement is based on a patent or
a published application, the examiner should note the patent or
application in making the requirement. In challenging the requirement,
the applicant may point to another claim in the application that
already claims the subject matter of the required claim. The applicant
may also propose an alternative claim with an explanation of why the
alternative claim would be better for the purpose of determining the
interference. A common reason for proposing an alternative claim is
that the applicant believes the required claim to be unpatentable at
least to the applicant.
Proposed Sec. 41.202(d) would set forth the basis for a summary
proceeding when an applicant does not appear to be able to show it
would prevail on priority. Proposed Sec. 41.202(d)(1) would restate
Rule 608, but would eliminate the distinction between Rule 608(a) and
Rule 608(b). The requirement could be made under 35 U.S.C. 132 even
when a rejection is not available. Failure to comply with the
requirement would result in abandonment of the application under 35
U.S.C. 133. Proposed Sec. 41.202(d)(2) would restate Rule 617 by
providing a basis for a summary proceeding on priority when the
applicant fails to make a sufficient showing of priority. To be
sufficient, under proposed Sec. 41.202(e), the showing would by
itself, if unrebutted, have to warrant a determination of priority.
Proposed Sec. 41.203(a) would state the standard for declaring a
patent interference. The Director uses a two-way unpatentability test
to determine whether claimed inventions interfere because, while a one-
way test is only sufficient for rejecting a claim under 35 U.S.C.
102(g), a two-way test is necessary to ensure that the claims of both
parties are directed to the same invention.
The case law provides that there is no interference-in-fact when
there is patentable distinctness between the claims of the parties
(e.g., Case v. CPC Int'l, Inc., 730 F.2d 745, 221 USPQ 196 (Fed.
Cir.1984); Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977); Nitz
v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976)). Consequently,
to declare an interference, the Director requires patentable
indistinctness between the claimed subject matter of the parties. Eli
Lilly & Co. v. Bd. of Regents of Univ. of Washington, 334 F.3d 1264, 67
USPQ2d 1161 (Fed. Cir. 2003). In practice this means that a claim of A
and a claim of B interfere if the subject matter of A's claim would, if
treated as prior art, have anticipated or rendered obvious (alone or in
combination with prior art) the subject matter of B's claim, and vice
versa. This standard has recently come to be known as the "two-way"
test because it concisely summarizes the analysis. If this test is not
effectively satisfied there is no interference-in-fact, i.e., no
priority question to be resolved, although there may be other
applicable rejections.
Proposed Sec. 41.203(b) would specifically delegate this
discretion to an administrative patent judge. Proposed Sec. 41.203(c)
would similarly authorize an administrative patent judge to redeclare
the interference sua sponte or in response to a decision on motions. An
administrative patent judge could redeclare an interference sua sponte,
for instance, when another interfering patent or application came to
light. An interference is