Department of Commerce
Patent and Trademark Office
37 CFR Part 1
[Docket No. 950207044-5044-01]
RIN: 0651-AA71
Patent Appeal and Interference Practice
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule
Summary: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent cases relating to patent appeal and interference
proceedings. The changes include amendments to conform the interference
rules to new legislative requirements and a number of clarifying and
housekeeping amendments.
Effective Date: This document is effective April 21, 1995, except section
1.11(e), which is effective March 17, 1995.
For Further Information Contact: Fred E. McKelvey by telephone at (703)
603-3361 or by mail marked to the attention of Fred E. McKelvey at P. O.
Box 15647, Arlington, Virginia 22215.
Supplementary Information: A Notice of Proposed Rulemaking was published
in the Federal Register (59 FR 50181) on October 3, 1994, and in the
Official Gazette of the Patent and Trademark Office (1167 Off. Gaz. Pat.
Office 98) on October 25, 1994. In response to a request for written
comments, twenty-six written comments were received. A public hearing was
held on December 7, 1994, at which four witnesses testified. The written
comments and the suggestions made at the public hearing represent the
views of fifteen individuals and corporations and three patent law
associations, namely, the Committee on Interferences of the American Bar
Association, the Interference Committee of the American Intellectual
Property Law Association and the Japan Intellectual Property Association.
These comments and suggestions are addressed below in the discussion of
the rule changes to which they pertain. A number of suggested rule
changes, though meritorious, cannot be adopted at this time because they
are believed to be outside the scope of the present rulemaking.
Accordingly, those suggestions will be the subject of a future rulemaking.
The provisions of the rules, as amended, will be applied in pending
interferences to the extent reasonably possible. However, it is the desire
of PTO to avoid applying the rules, as adopted, to pending interferences
where substantial prejudice would result. For example, generally speaking,
in cases where the periods for filing preliminary motions and preliminary
statements have been set, the current preliminary motion and preliminary
statement rules will apply, although parties are free to voluntarily
comply with the rules as amended. Generally speaking, in cases where the
testimony periods have been set, the current testimony and record rules
will apply. The question of whether substantial prejudice will result in a
particular case is a matter within the discretion of the administrative
patent judge or the Board.
I. Amendments Responsive to Adoption of Public Laws 103-182 and 103-465.
As indicated in the Notice of Proposed Rulemaking, several of the
amendments to the interference rules (i.e., 37 CFR 1.601 et seq.) are
responsive to Public Law 103-182, 107 Stat. 2057 (1993) (North American
Free Trade Agreement Implementation Act, hereinafter NAFTA Implementation
Act), which amended 35 U.S.C. 104 to permit an applicant or patentee, with
respect to an application filed on or after December 8, 1993, to rely on
activities occurring in a "NAFTA country" to prove a date of invention no
earlier than December 8, 1993, except as provided in 35 U.S.C. 119 and
365. On December 8, 1994, which was subsequent to publication of the
Notice of Proposed Rulemaking, Public Law 103-465, 108 Stat. 4809 (1994)
(Uruguay Round Agreements Act) was signed into law, which further amended
35 U.S.C. 104 to permit an applicant or a patentee, with respect to an
application filed on or after January 1, 1996, to rely on activities
occurring in a WTO member country to prove a date of invention no earlier
than January 1, 1996, except as provided in 35 U.S.C. 119 and 365. Section
104, as amended by Public Law 103-465, reads as follows:
104. Invention made abroad
(a) IN GENERAL.--
(1) PROCEEDINGS.--In proceedings in the Patent and Trademark Office, in
the courts, and before any other competent authority, an applicant for a
patent, or a patentee, may not establish a date of invention by reference
to knowledge or use thereof, or other activity with respect thereto, in a
foreign country other than a NAFTA country or a WTO member country, except
as provided in sections 119 and 365 of this title.
(2) RIGHTS.-- If an invention was made by a person, civil or military--
(A) while domiciled in the United States, and serving in any other
country in connection with operations by or on behalf of the United States,
(B) while domiciled in a NAFTA country and serving in another country
in connection with operations by or on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country and serving in another
country in connection with operations by or on behalf of that WTO member
country,
that person shall be entitled to the same rights of priority in the United
States with respect to such invention as if such invention had been made
in the United States, that NAFTA country, or that WTO member country, as
the case may be.
(3) USE OF INFORMATION.-- To the extent that any information in a NAFTA
country or a WTO member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of invention has not
been made available for use in a proceeding in the Patent and Trademark
Office, a court, or any other competent authority to the same extent as
such information could be made available in the United States, the
Commissioner, court, or such other authority shall draw appropriate
inferences, or take other action permitted by statute, rule, or
regulation, in favor of the party that requested the information in the
proceeding.
(b) DEFINITIONS. -- As used in this section--
(1) the term `NAFTA country' has the meaning given that term in section
2(4) of the North American Free Trade Agreement Implementation Act; and
(2) the term `WTO member country' has the meaning given that term in
section 2(10) of the Uruguay Round Agreements Act.
Section 2(4) of the NAFTA Implementation Act is codified at 19 U.S.C.
3301; 2(10) of the Uruguay Round Agreements Act is codified at 19
U.S.C. 3501.
The Notice of Proposed Rulemaking proposed adding a new paragraph (r)
to 1.601 defining "NAFTA country" to mean "NAFTA country" as defined in
section 2(4) of the NAFTA Implementation Act and "non-NAFTA country" to
mean a country other than a NAFTA country. One comment questioned whether
"NAFTA country" should be defined in the rules to include the United
States. The answer is no. "NAFTA country" as used in 35 U.S.C. 104 has the
meaning given that term in section 2(4) of the NAFTA Implementation Act,
which refers to only Canada and Mexico. Another comment observed that the
proposed terms "NAFTA country" and "non-NAFTA country" do not appear to
contemplate that inventive acts may occur in a foreign place that is not
part of any "country" and suggested either using the phrase "outside the
United States or a NAFTA country" instead of "non-NAFTA country" or else
defining "non-NAFTA country" to mean "a place other than the United States
or a NAFTA country." The comment is well taken. In view of the comment and
the amendment of 35 U.S.C. 104 by the Uruguay Round Agreements Act to
permit reliance on activities in WTO member countries, the proposed term
"NAFTA country" is replaced in 1.622, 1.623, 1.624 and 1.628, which
set forth the requirements for preliminary statements and for correcting
preliminary statements, by the phrase "NAFTA country or WTO member
country" and the proposed term "non-NAFTA country" is replaced by the
phrase "place other than the United States, a NAFTA country or a WTO
member country." Furthermore, the references in 1.622(b) and 1.623(a)
to the "second sentence of 35 U.S.C. 104" have been changed to "35 U.S.C.
104(a)(2)" to reflect the fact that 35 U.S.C. 104 as amended by the
Uruguay Round Agreements Act includes paragraphs (a)(1), (2) and (3). For
example, 1.622(b) is revised to read:
(b) The preliminary statement shall state whether the invention was made
in the United States, a NAFTA country (and, if so, which NAFTA country), a
WTO member country (and if so, which WTO member country), or in a place
other than the United States, a NAFTA country, or a WTO member country. If
made in a place other than the United States, a NAFTAcountry, or a WTO
member country, the preliminary statement shall state whether the party is
entitled to the benefit of 35 U.S.C. 104(a)(2).
For the above-stated reasons, 1.601 is revised by adding new paragraph
(r), which, as proposed, defines "NAFTA country" to have the meaning given
that term in section 2(4) of the North American Free Trade Act
Implementation Act, Pub. L. 103-182, 107 Stat. 2060 (1993). However,
since, as noted above, the term "non-NAFTA country" is not being adopted,
the proposal to also define that term in 1.601(r) is hereby withdrawn.
Section 1.601 is also revised to include a new paragraph (s) that defines
"WTO member country" to have the meaning given that term in section 2(10)
of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4813
(1994).
Section 1.684, which relates to the taking of testimony in a foreign
country, is removed and reserved in view of the amendments to
1.671-72. Section 1.672 is amended by revising paragraph (a), revising
current paragraph (b) and redesignating parts of it as new paragraphs (b),
(c) and (d), removing and reserving paragraph (c) and redesignating it as
new paragraph (e), revising paragraphs (d) and (e) and redesignating them
as new paragraphs (f) and (g), and redesignating paragraph (f) as new
paragraph (h).
Specifically, the Notice of Proposed Rulemaking proposed amending
1.672(a) to require that "testimony not compelled under 35 U.S.C. 24 or
compelled from a party or in another country" be taken only by affidavit.
Several comments questioned whether the term "compelled" also applies to
the phrase "in another country" and suggested inserting "compelled" before
that phrase if that is the intent. Inasmuch as the comment correctly
states the intent, the suggestion in the comment is being adopted.
One comment supported limiting non-compelled direct testimony to
affidavits on the ground that it will reduce the cost of submitting
testimony-in-chief and will eliminate economic harassment by a more
affluent party of a less affluent opponent, since the less affluent
opponent will no longer be required to pay the expense of counsel to
attend depositions called by the more affluent party for taking direct
testimony. Several comments were opposed, maintaining that affidavits are
inherently less credible than live testimony. One comment states:
Ours is the only country that supports interferences and we should be
proud of it, because it demonstrates our commitment to the concept that it
is more important to seek right and justice than to settle for a single
arbitrary rule of convenience, no matter how convenient. Even if we don't
always secure the right result, at least we try. As we invite the rest of
the world to become full participants in this uncommon philosophy, we
should endeavor to present it in its best light.
How we conduct a trial is a centerpiece of our judicial system. Our
interference trial by deposition is a reasonable compromise from a trial
in a courtroom type setting. But a trial by affidavit is no trial at all!
Affidavits are inevitably contrived, artificial, and often argumentative.
They cannot substitute for the extemporaneous words of a witness (even if
well coached), and cross-examination is not likely to reconstruct the real
truth. Even if it is just in a nuance of expression, it is gone.
The current approach of providing a choice between deposition and
affidavit testimony is difficult to accept, but at least it is justifiable
on the basis that so many patent attorneys simply don't know how to
conduct a deposition, while they do have some experience with affidavits.
But the proposal to make affidavits mandatory for direct testimony is
contrary to my understanding of American jurisprudence.
Direct testimony on behalf of a party by oral deposition is said to be
advantageous to the opponent in that the testimony is the witness' own,
the demeanor of the witness can be observed by the opponent (but demeanor
is not observed by any member of the Board), and cross-examination can be
carried out without a period during which it is said that the witness can
be coached in preparation for cross-examination. However, under current
practice a party can elect to deprive its opponent of these advantages by
electing to use affidavits. Deposition testimony is also said to be
advantageous to the party offering the testimony, who may find it more
convenient to present the witness at a single deposition for direct and
cross-examination than to first prepare an affidavit for direct testimony
and later produce the witness at a deposition for cross-examination by an
opponent. These supposed advantages are believed to be outweighed by the
advantages of requiring that direct non-compelled testimony be in
affidavit form. As recognized by those who favor direct testimony by
affidavit, there are at least two advantages to taking direct testimony by
affidavit, i.e., (1) reducing the cost of presenting a party's own direct
testimony and (2) avoiding the expense of attending an opponent's
depositions for direct testimony. There are a number of other advantages
when direct testimony is taken by affidavit rather than deposition. First,
because an opponent will have seen all of the party's direct testimony
prior to beginning cross-examination, the opponent should be able to carry
out a more pointed and efficient cross-examination, thereby avoiding the
need to recall a witness for further examination during the opponent's
rebuttal case, which can be costly in time and expense to both the party
and the opponent. Second, a party presenting direct testimony by affidavit
is less likely to inadvertently, and perhaps fatally, omit an essential
part of its proofs than when presenting direct testimony by oral
deposition. Third, affidavit testimony will be advantageous to the Board
because affidavit testimony can be evaluated more expeditiously than can
deposition transcripts, which frequently present the facts in an
incoherent manner and too often include a considerable amount of
disruptive attorney colloquy. Fourth, in the case of direct testimony by
persons testifying in a foreign language, testimony by affidavit (in the
English language) should be considerably less cumbersome than testimony by
oral deposition through translators.
Two comments suggested that there may be cases in which both parties
find it mutually convenient to present their direct testimony by oral
deposition and that under these circumstances the administrative patent
judge should be allowed to authorize such depositions. The suggestion is
not being adopted, because it would eliminate the above-noted advantages
of reducing the likelihood of omitting an essential part of the proofs and
having the Board consider direct testimony presented in a more coherent
form.
Another comment suggested that there appears to be no need why all
testimony abroad must be by oral deposition, noting, for example, that a
third-party witness may be willing to give an affidavit comprising the
direct testimony, provided cross- examination will be conducted in the
witness's home country. Still another comment asked how the parties should
handle a situation where a party's witness residing in a foreign country,
due to health or other serious impediment, is unable to travel to the
United States for cross-examination, but is willing to testify in the
foreign country, which allows testimony, for example, only by written
interrogatories. The answer in both situations, as well as in other
unusual situations not provided for by the rules, is to file a motion (
1.635) for permission to take the testimony in a manner other than by
deposition. The motion may or may not be granted depending on the
particular circumstances. In order to make it clear that the
administrative patent judge and the Board have discretion in unusual
circumstances to grant appropriate relief, 1.672 is further revised by
adding a new paragraph (i) reading as follows:
(i) In an unusual circumstance and upon a showing that testimony cannot be
taken in accordance with the provisions of this subpart, an administrative
patent judge upon motion ( 1.635) may authorize testimony to be taken in
another manner.
Section 1.672(b), as it was proposed to be revised in the Notice of
Proposed Rulemaking, includes a requirement that a party presenting
testimony of a witness by affidavit, within the time set by the
administrative patent judge for serving affidavits, file a copy of the
affidavit. Since, for reasons discussed infra, 1.671(e) is being
retained in modified form rather than being removed and reserved, as was
proposed, 1.672(b) as adopted, like current 1.672(b), permits a
party to file a copy of the affidavit or, if appropriate, a notice under
1.671(e). If the affidavit relates to a party's case-in-chief, it shall be
filed or noticed no later than the date set by an administrative patent
judge for the party to file affidavits for its case-in-chief. If the
affidavit relates to a party's case-in-rebuttal, it shall be filed or
noticed no later than the date set by an administrative patent judge for
the party to file affidavits for its case-in-rebuttal. A party shall not
be entitled to rely on any document referred to in the affidavit unless a
copy of the document is filed with the affidavit. A party shall not be
entitled to rely on any thing mentioned in the affidavit unless the
opponent is given reasonable access to the thing. A thing is something
other than a document.
As proposed in the Notice of Proposed Rulemaking, a new paragraph (c)
is added to 1.672 stating that where an opponent objects to the
admissibility of any evidence contained in or submitted with an affidavit,
the opponent must file and serve objections stating with particularity the
nature of the objection. Any objection should identify the specific
Federal Rule of Evidence that renders the evidence inadmissible and shall
explain why the Rule applies to the evidence sought to be introduced. No
oppositions to the objections are authorized. Rather, the party may
respond by filing supplemental evidence in the form of affidavits,
official records and printed publications. Alternatively, the party may
determine that the objection is without merit and do nothing. One comment
suggested that "supplemental affidavits and supplemental official records
and printed publications" in the third sentence of 1.672(c) as proposed
be changed to "one or more supplemental affidavits, official records or
printed publications." The suggestion is being adopted. The same or
similar changes have been made in the third sentence of 1.682(c) and in
the third sentence of 1.683(b); in the third sentence of 1.688(b)
"supplemental affidavits" has been changed to "one or more supplemental
affidavits." Section 1.672(c) further provides that any objections to the
admissibility of any evidence contained in or submitted with a
supplemental affidavit shall be made only by a motion to suppress under
1.656(h).
As proposed in the Notice of Proposed Rulemaking, 1.672 is revised
by adding a new paragraph (d) requiring any cross-examination of an
affiant to be by deposition at a reasonable location within "the United
States," which is defined in 1.601(p) and 35 U.S.C. 100(c) to mean "the
United States of America, its territories and possessions." For purposes
of the interference rules, the term "territories and possessions" is
broadly construed to refer to all territories and possessions of the
United States, including, for example, the Commonwealth of Puerto Rico.
An opponent who believes that a party is producing an affiant for
cross-examination in an "unreasonable" location may move ( 1.635) for
entry of an order by an administrative patent judge to set the location of
the deposition for cross-examination. Paragraph (d) also requires that the
party whose witness is to be cross-examined give notice of the deposition
under 1.673(e), obtain a court reporter and provide a translator if the
witness will not testify in English. Although not expressly set forth in
the rules as amended, it should be understood that any party attending the
deposition can bring its own translator or the parties can agree to share
the cost of a single mutually agreeable translator.
Comments were received against the proposal that 1.672(d) require
cross-examination of affiants to be conducted by oral deposition "at a
reasonable location within the United States." One comment suggested that
requiring a witness who resides in a foreign country to travel to the
United States for cross-examination will be extremely inconvenient where
the witness is a key person for a company. The comment also suggested that
the term "United States" be amended to additionally include U.S. embassies
and/or consulates in foreign countries, at least for purposes of
conducting cross-examination. The suggestion is not being adopted. Given
the time differences between the United States and Europe or the United
States and Asia, it is highly likely that administrative patent judges
would not be on duty to rule on telephonic requests for admissibility of
evidence. Furthermore, a party whose witness is to testify on
cross-examination at a "trial" (i.e., interference proceeding) in the
United States should produce the witness for cross-examination at a
reasonable location within the United States. Finally, in view of PTO's
general lack of experience regarding procedures for, and difficulties
which may arise in, taking deposition testimony in a foreign country, PTO
has decided, at least for the time being, to take a conservative approach
regarding taking testimony in a foreign country. The approach will be
reevaluated after PTO gains some experience with foreign deposition
testimony taken pursuant to 1.671(h).
One comment suggested inserting a comma after "reporter" in the fifth
sentence of proposed 1.672(d), as well as in the fifth sentences of
proposed 1.682(d), 1.683(c) and 1.688(c). The suggestion is being
adopted.
The Notice of Proposed Rulemaking proposed to redesignate current
1.672(d) ("When a deposition is authorized under this subpart, if the
parties agree in writing, the deposition may be taken before any person
authorized to administer oaths, at any place, upon any notice, and in any
manner, and when so taken may be used like other depositions.") as
1.672(f). One comment questioned whether 1.672(f) (former 1.672(d))
applies to cross-examination deposition testimony authorized by
1.672(d), 1.673(a), 1.682(d), 1.683(c) and 1.688(c). Implicit in the
comment is a question of whether proposed 1.672(f) would authorize the
parties, with respect to deposition testimony that has been authorized by
the rules or by an administrative patent judge to be taken in the United
States, to agree to take the deposition outside the United States. For the
reasons discussed above, the parties may not agree, absent the permission
of an administrative patent judge or the Board, to take a deposition
outside the United States. Accordingly, 1.672(f), as amended, provides
that depositions authorized to be taken within the United States are to be
taken within the United States: "When a deposition is authorized to be
taken within the United States under this subpart and if the parties agree
in writing, the deposition may be taken in any place within the United
States, before any person authorized to administer oaths, upon any notice,
and in any manner, and when so taken may be used like other depositions."
Current 1.672(e), which is being redesignated as 1.672(g), reads
as follows: "If the parties agree in writing, the testimony of any witness
may be submitted in the form of an affidavit without opportunity for
cross-examination. The affidavit shall be filed in the Patent and
Trademark Office." Although not proposed in the Notice of Proposed
Rulemaking, this section is revised to be consistent with the other
amendments to 1.671-73 so as to read as follows: "If the parties
agree in writing, the affidavit testimony of any witness may be submitted
without opportunity for cross-examination."
As proposed in the Notice of Proposed Rulemaking, current 1.672(f),
which concerns the filing of agreed statements setting forth how a
particular witness would testify if called or the facts in the case of one
or more of the parties, is redesignated as 1.672(h).
In addition to the proposed amendments discussed above, current
1.672(b) is revised, as proposed in the "Miscellaneous Amendments" part of
the Notice of Proposed Rulemaking, by deleting the third sentence, which
specifies the type of paper to be used for affidavits, as superfluous in
view of 1.677(a); and in paragraph (d), the fifth sentence ("A party
electing to present testimony of a witness by deposition shall notice a
deposition of the witness under 1.673(a).") is removed as superfluous
in view of the second sentence of new 1.672(d).
In 1.671, the Notice of Proposed Rulemaking proposed to amend
paragraph (a) to read as follows: "Evidence consists of testimony and
exhibits, official records and publications filed under 1.682,
testimony from another interference, proceeding, or action filed under
1.683, and discovery relied upon under 1.688, and the specification
(including claims) and drawings of any application or patent: . . . ." One
comment suggested that "and discovery" be changed to "discovery" in order
to remove an unnecessary "and." The suggestion is being adopted. Another
comment suggested inserting "and exhibits" after "testimony" in the phrase
"testimony from another interference, proceeding, or action under
1.683." The suggestion is being adopted, but with the term "exhibits"
prefaced by "referenced" to make it clear that it relates only to exhibits
referred to by a witness in an affidavit or during an oral deposition.
Clarification is necessary because, as noted in the discussion of
1.653(c)(5), infra, the term "exhibit" also includes official records and
printed publications relied on under 1.682, which are not referred to
by a witness in an affidavit or during an oral deposition. For the same
reason, "referenced" is also inserted before the first occurrence of
"exhibits" in 1.671(a). A similar clarifying amendment is also made to
1.683(a).
The Notice of Proposed Rulemaking proposed to revise 1.671(f) to
state that "[t]he significance of documentary and other exhibits
identified by a witness in an affidavit or during oral deposition shall be
discussed with particularity by the witness" (emphasis added) in order to
clarify that the requirement for the significance of documentary and other
exhibits to be discussed with particularity by a witness applies only to
documentary and other exhibits identified by a witness in an affidavit or
during oral deposition. One comment indicated that proposed 1.671(f)
fails to recognize that a witness may be called merely to authenticate a
piece of evidence, e.g., a photograph, which is to be discussed with
particularity by another witness. The comment is well taken. Accordingly,
1.671(f) is revised to read as follows: "The significance of documentary
and other exhibits identified by a witness in an affidavit or during oral
deposition shall be discussed with particularity by a witness." Thus,
1.671(f) does not apply to official records and printed publications
submitted into evidence pursuant to 1.682(a).
The Notice of Proposed Rulemaking proposed that 1.671(g), which
currently requires a party to file a motion ( 1.635) to obtain
permission prior to taking testimony or seeking documents or things "under
35 U.S.C. 24," be revised to require a motion "prior to compelling
testimony or production of documents or things under 35 U.S.C. 24 or from
a party." One comment suggested that the requirement to obtain permission
from an administrative patent judge before noticing an employee of one's
opponent as a hostile witness is important. Another comment took issue
with the requirement and the statement in the Notice of Proposed
Rulemaking that "all depositions for a case-in-chief would have to be
approved by an administrative patent judge" (59 FR at 50191), stating:
I suppose that means by motion with an explanation of what the deposition
will cover. Such a procedure will destroy the ability to obtain effective
testimony from an adverse witness, because of the need to reveal the
strategy. Particularly in a derivation contest, the ability to obtain
unrehearsed testimony of the adverse party will be lost, and he [sic; his
testimony] may be the only corroboration available. Heretofore, taking the
deposition of one's adverse party to obtain evidence for one's
case-in-chief has been a matter of right on serving proper notice. It is
essential that this right be preserved. Obviously, this procedure should
not be used to discover a senior party's case-in-chief, and that
limitation is easily protected by objection to any such questions that are
not also related to the junior party's case-in-chief, and then either (a)
calling the judge for an immediate ruling, or (b) refusing to answer the
question.
Assuming for the sake of argument that the current interference rules
permit a party to notice the deposition of an opponent's witness in order
to take direct testimony of the type described above without first
obtaining permission from an administrative patent judge, the interference
rules do not provide any sanction for the failure of the witness to appear
at a noticed deposition. Consequently, even under the current rules the
party seeking the testimony of an opponent's witness, as a practical
matter, must obtain an order from an administrative patent judge or the
Board requiring the witness to appear so that the opponent can be
sanctioned under 1.616 if the witness fails to appear.
One comment suggested that the proposed new last sentence for
1.671(g) ("The testimony of the witness shall be taken on oral
deposition.") be omitted as superfluous in view of 1.672(a) as amended.
The suggestion is being adopted.
A comment suggested that 1.671(g) be modified to expressly apply to
an entity or witness under the opponent's control. The modification is not
believed to be necessary. The term "party" is defined in 1.601(l) to
include an inventor's legal representative or assignee. The term
"opponent," while not defined per se in the rules, is a "party" who
happens to be a "second" party opponent of a "first" party. Section
1.671(g) applies where a witness is under the control of a party
opponent's assignee.
As proposed in the Notice of Proposed Rulemaking, a new paragraph (h)
is added to 1.671 providing that a party seeking to compel testimony or
production of documents or things in a foreign country must file a motion
( 1.635) to obtain permission from an administrative patent judge. The
motion must show that the witness has been asked to testify in the United
States and has refused to do so or that the individual or entity having
possession, custody, or control of the document or thing has refused to
produce the document or thing in the United States, even though the moving
party has offered to pay the expenses involved in bringing the witness or
the document or thing to the United States. When permission has been
obtained from the administrative patent judge, the party, after also
complying with the requirements for an oral conference ( 1.673(g)), and
service of documents and a proffer of access to things ( 1.673(b)), must
notice the deposition under 1.673(a).
With respect to the requirements for a motion to compel testimony or
production of documents or things in a foreign country, one comment
suggested that the phrase "possession, custody and control" in proposed
1.671(h)(2)(iii) appears to include a typographical error and should be
changed to read "possession, custody or control." The suggestion is being
adopted.
Another comment suggested that the administrative patent judge would
benefit from being additionally advised of (1) the foreign country where
the witness, document or thing is located, (2) a summary of the procedures
proposed to be followed to compel the testimony or production of documents
or things in the foreign country, and (3) the time likely to be required
to complete the procedures. In support, the comment notes that compelling
testimony or production of documents in a foreign country can be so
time-consuming that it may outweigh the benefit of allowing the testimony
or documents to be obtained, considering their likely probative value and
other relevant considerations. The comment continues that in order to
allow the administrative patent judge to supervise the progress of the
interference and to allow establishment of an appropriate schedule for the
interference, the rules should require the suggested procedural
information. These suggestions are being adopted. Adoption of these
suggestions, however, should not be construed as a policy determination by
PTO that it intends to approve of, or tolerate, unwarranted delays in
obtaining testimony in a foreign country. The spirit of 35 U.S.C. 104
requires that evidence be obtainable in a foreign country essentially on
the same basis that it is obtainable in the United States. When the laws
and procedures in a foreign country make it so time-consuming to obtain
evidence that the evidence is essentially not available in a reasonable
manner, then the "adverse inferences" provision of new 1.616(c) may be
appropriately applied.
Another comment notes that proposed 1.671(h)(1)(iv) for witnesses
and 1.671(h)(2)(iii) for documents and things assume that it will be
possible to request the holder of the evidence to voluntarily produce it
and obtain a definitive response to the request, whereas it is said that
discovery experience in foreign countries shows that those possessing
evidence often evade contact or, when contacted, evade giving a definitive
response. Accordingly, the comment suggested that these provisions be
reworded as follows:
1.671(h)(1)(iv). Demonstrate that the party has made reasonable
efforts to secure the agreement of the witness to testify in the United
States but has been unsuccessful in obtaining the agreement, even though
the party has offered to pay the expenses of the witness to travel to and
testify in the United States.
1.671(h)(2)(iii). Demonstrate that the party has made reasonable
efforts to obtain the agreement of the individual or entity having
possession, custody, or control of the document to produce the document or
thing in the United States but has been unsuccessful in obtaining that
agreement, even though the party has offered to pay the expenses of
producing the document or thing in the United States.
The suggestion is being adopted. The expenses of a witness traveling to
the United States means the round-trip travel expenses.
The Notice of Proposed Rulemaking proposed the addition to 1.671 of a
new paragraph (j), which is patterned on paragraph (e) of 1.684
(removed and reserved). Section 1.671(j), as it was proposed, reads as
follows:
(j) The weight to be given testimony taken in a foreign country will be
determined on a case-by-case basis. Little, if any, weight may be given to
testimony taken in a foreign country unless the party taking the testimony
proves by clear and convincing evidence (1) that giving false testimony in
an interference proceeding is punishable as perjury under the laws of the
foreign country where the testimony is taken and (2) that the punishment
in a foreign country for giving such false testimony is similar to the
punishment for perjury committed in the United States.
A number of comments were received in response to the proposal. Two
comments questioned whether 1.671(j) is intended to apply to affidavit
testimony as well as deposition testimony. One comment suggested that the
rule be expressly limited to deposition testimony, since testimony by
affidavit (including declarations) can be taken in foreign countries under
the perjury provisions of 28 U.S.C. 1746(1), and is additionally subject
to the safeguard of cross-examination in the United States under proposed
1.672(d). For these reasons, and also because current 1.684(e), on
which 1.671(j) is patterned, applies only to deposition testimony in a
foreign country in the form of interrogatories answered under oath, the
suggestion to expressly limit 1.671(j) to deposition testimony is being
adopted.
Two comments stated that the party taking testimony in a foreign
country should not have the burden of proving that the giving of false
testimony is punishable as perjury under the law of the foreign country,
as it may be difficult or impossible to prove or may not even be in
dispute, and that the burden is especially unfair where a party is being
forced to take testimony abroad by circumstances beyond its control. Both
comments suggested putting the burden instead on the opponent to show that
the requirements are not similar, such as by moving under 1.635 to
accord the testimony little weight or moving under 1.656(h) to suppress
the testimony altogether. Section 1.671(j), as proposed in the Notice of
Proposed Rulemaking, does not alter who has the burden of proof with
respect to testimony in a foreign country; the burden remains on the party
offering the testimony, just as under current 1.684(e).
Another comment questioned whether the first sentence of the rule as it
was proposed, because it states that the weight of testimony "will be
determined on a case-by-case basis," might be construed as allowing the
effect to be given testimony in a particular foreign country in a given
interference to be decided without regard to the effect given in prior
interferences to testimony given in that country. The comment stated that
the rule as proposed might be contrary to the goals of equal treatment of
similarly situated parties and predictability of outcome, which would best
be served by a system in which the Board publishes decisions making
findings as to the adequacy of the testimonial procedures in particular
foreign countries and then follows those decisions in subsequent cases,
and suggested changing "on a case-by-case basis" to read "in view of all
the circumstances, including the laws of the foreign country governing the
testimony." The suggestion is being adopted.
Another comment suggested that the "clear and convincing evidence"
standard in the second sentence of proposed 1.671(j) inappropriately
implies that the determination of content of the law of a foreign country
is a question of fact. PTO intends to treat the determination of the
content of the law of a foreign country as a question of fact.
Accordingly, the language "as a matter of fact" is inserted in
1.671(j). The same comment further indicates that the proposed second
sentence is troublesome because it (1) requires a showing that giving
false testimony is punishable as "perjury" under the laws of the foreign
country rather than under some other name, (2) does not on its face allow
the foreign offense to be applicable only when false testimony is given
with the appropriate intent, and (3) requires that the foreign punishment
be "similar to" United States punishment, when comparable or greater
punishment would seem to serve the purpose of the proposed rule. The
comment suggested that the foregoing problems can be avoided by replacing
the proposed second sentence with the following sentence:
Little, if any, weight may be given to oral testimony given in a foreign
country unless it is demonstrated (1) that the giving of false testimony
in the interference proceeding would be punishable under the laws of the
foreign country where the testimony was taken under circumstances similar
to those defined as perjury under the laws of the United States and (2)
that the punishment in the foreign country for giving such false testimony
is comparable to or greater than the punishment for perjury committed
under the laws of the United States.
The comment additionally suggested adding a third sentence patterned on
the second and third sentences of Fed. R. Civ. P. 44.1 and reading as
follows: "Such a demonstration may be made by any relevant material or
source, including testimony, whether or not admissible under this
subpart." To address the comments, which are believed to be well taken,
the proposed second sentence is replaced with the following two sentences:
Little, if any, weight may be given to deposition testimony taken in a
foreign country unless the party taking the testimony proves by clear and
convincing evidence, as a matter of fact, that knowingly giving false
testimony in that country in connection with an interference proceeding in
the United States Patent and Trademark Office is punishable under the laws
of that country and that the punishment in that country for such false
testimony is comparable to or greater than the punishment for perjury
committed in the United States. The administrative patent judge and the
Board, in determining foreign law, may consider any relevant material or
source, including testimony, whether or not submitted by a party or
admissible under the Federal Rules of Evidence.
The finally adopted language is also responsive to another comment
requesting clarification of the term "similar" in order to assist
practitioners, and possibly foreign governments in promulgating laws in
harmony with 35 U.S.C. 104 and 1.671.
In addition to the above amendments, 1.671(a), which identifies the
various types of testimony, is revised as proposed in the "Miscellaneous
Amendments" part of the Notice of Proposed Rulemaking, by changing
"evidence from another interference, proceeding, or action filed under
1.683" to "testimony from another interference, proceeding, or action
filed under 1.683" in order to be consistent with the terminology of
1.683. Sections 1.671(c)(6) and (c)(7) are revised by changing "by oral
deposition or affidavit" to "by affidavit or oral deposition."
Section 1.673 is also amended as proposed in the "Miscellaneous
Amendments" part of the Notice of Proposed Rulemaking. Specifically,
1.673(b) is revised by (1) changing the time for service of evidence to be
relied on at an oral deposition from "at least three days" prior to the
conference required by 1.673(g) when service is by hand or by Express
Mail to "at least three working days" prior to the conference, (2)
changing the time for service by any other means from 10 days to 14 days
prior to the conference and (3) removing the quotation marks around
"Express Mail."
The second sentence of 1.673(d) is removed, as proposed in the
Notice of Proposed Rulemaking, as unnecessary, because all depositions for
a case-in-chief require approval by an administrative patent judge.
Section 1.673(e) is revised, as proposed, by changing "party electing
to present testimony by affidavit" to "party who has presented testimony
by affidavit."
One comment suggested amending 1.673(g) to state that a party, prior
to serving a notice of deposition and after complying with paragraph (b)
of 1.673, shall contact the administrative patent judge, who shall then
have an oral conference with the party and all opponents. The suggestion,
which is outside the scope of the present rulemaking, is not being
adopted. In any event, it is expected that in most cases the parties will
be able to agree on a time and place for depositions without the need for
participation by an administrative patent judge.
Concerning the first sentence of 1.673(a), one comment suggested
deleting the term "single" from "single notice of deposition" on the
ground that the current language might be construed to mean that a party
must file only a single notice of deposition listing all depositions. The
same suggestion was offered with respect to paragraph (e) of 1.673. The
suggestion, which is outside the scope of the present rulemaking, is not
being adopted.
The Notice of Proposed Rulemaking proposed to amend 1.616 by adding
a new paragraph (c), patterned after 35 U.S.C. 104(b), stating that to the
extent that any information under the control of an individual or entity
located in a NAFTA country or a WTO member country concerning knowledge,
use, or other activity relevant to proving or disproving a date of
invention has been ordered to be produced by an administrative patent
judge or the Board ( 1.671(h)), but is not produced for use in the
interference to the same extent as such information could be made
available in the United States, the administrative patent judge or the
Board shall draw such adverse inferences as may be appropriate under the
circumstances, or take such other action permitted by statute, rule, or
regulation, in favor of the party that requested the information in the
interference. Section 1.616(c) further provides that this "other action"
may include the imposition of appropriate sanctions under 1.616(a).
One comment questioned whether the failure of an individual or entity
located in a NAFTA country or a WTO member country to provide the
information requested by a party can result in the imposition of sanctions
against an opponent from that country even though the opponent is not at
fault. The answer is yes. One purpose of 35 U.S.C. 104 is to ensure that
evidence for interferences is available in foreign countries in
essentially the same manner that it is available in the United States. If
the evidence is not available, then the appropriate inference provisions
of 35 U.S.C. 104 shall be applied by PTO.
After the Notice of Proposed Rulemaking was published, it became
apparent that the term "ordered" in the phrase "to the extent that any
information under the control of an individual or entity located in a
NAFTA country or a WTO member country . . . has been ordered to be
produced by an administrative patent judge or the Board" may not be
appropriate. Neither an administrative patent judge nor the Board can
order testimony or production of documents and things in a foreign country
from a witness who, or an entity that, is neither a party nor under the
control of a party. Instead, an administrative patent judge or the Board
can only authorize a party to seek to compel testimony or production in a
foreign country from a witness or entity not under the control of a party.
Accordingly, 1.616(c) as adopted reads instead as follows:
(c) To the extent that an administrative patent judge or the Board has
authorized a party to compel the taking of testimony or the production of
documents or things from an individual or entity located in a NAFTA
country or a WTO member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of invention (
1.671(h)), but the testimony, documents or things have not been produced
for use in the interference to the same extent as such information could
be made available in the United States, the administrative patent judge or
the Board shall draw such adverse inferences as may be appropriate under
the circumstances, or take such other action permitted by statute, rule,
or regulation, in favor of the party that requested the information in the
interference, including imposition of appropriate sanctions under
paragraph (a) of this section.
As proposed in the Notice of Proposed Rulemaking, 1.647, which
currently requires a party who relies on a non-English language document
to provide an English-language translation and an affidavit attesting to
its accuracy, is revised to extend these requirements to any non-English
language documents that a party is required to produce via discovery. One
comment expressed the concern that the proposed amendment might impose an
unnecessary financial burden on a non-U.S. party by requiring translations
of compelled documents that are very long and have little or no relevance.
The concern is believed to be misplaced. First, discovery in
interferences, like discovery under the Federal Rules of Civil Procedure,
is limited to evidence that is relevant. Second, as to relevant evidence,
the scope of discovery under the interference rules is considerably
narrower than the discovery available under the Federal Rules of Civil
Procedure. Another comment stated that the general practice is that a
party proffering a document is responsible for the cost of translation.
The comment nevertheless suggested that in the case of documents offered
to be produced during discovery, including cross-examination discovery
pursuant to 1.687(b), the documents be produced in the foreign
language, with the recipient then indicating which documents it wishes to
have translated and costs to be borne equally by the parties. The
suggestion is not being adopted. In implementing practice under 35 U.S.C.
104, as amended, it is PTO's initial view that a correct policy is the one
which the commentator says is the "general practice." Whether a different
policy might be appropriate at some future time is something that will be
tested with experience.
II. Compensatory Attorney Fees and Expenses.
Section 1.616, in addition to the amendments discussed above, also is
revised by redesignating current paragraphs (a) through (e) as paragraphs
(a)(1) through (a)(4) and (a)(6) and adding new paragraphs (a)(5) and (b).
Section 1.616(a)(5), as amended, authorizes the award of compensatory
(as opposed to punitive) expenses and/or compensatory attorney fees as a
sanction for failing to comply with the rules or an order. This sanction
shall apply only to conduct occurring in an interference on or after the
effective date of 1.616 as amended. It is believed that there may be
occasions when an award of compensatory expenses and/or compensatory
attorney fees would be more commensurate in scope with the infraction than
the sanctions that are currently authorized.
There are administrative decisions which seemingly hold that the
tribunals of PTO do not have authority to award expenses and attorney
fees. See, e.g., Driscoll v. Cebalo, 5 USPQ2d 1477, 1481 (Bd. Pat. Int.
1982) (the rules do not provide us with the jurisdiction to award expenses
and we know of no authority which does), aff'd in part, rev'd in part, 731
F.2d 878, 221 USPQ 745 (Fed. Cir. 1984); Clevenger v. Martin, 1 USPQ2d
1793, 1797 (Bd. Pat. App. & Int. 1986) (we do not have authority under the
rules to award attorney's fees); MacMillan Bloedel, Ltd. v. Arrow-M Corp.,
203 USPQ 952, 953 (TTAB 1979) (the TTAB is without authority to award
expenses and attorney's fees); Fisons, Ltd. v. Capability Brown, Ltd., 209
USPQ 167, 171 (TTAB 1980) (request for attorney's fees denied because good
cause not shown and the TTAB has no authority to grant such requests);
Jonergin Co. v. Jonergin Vermont, Inc., 222 USPQ 337, 340-41 (Comm'r Pat.
1983) (TTAB did not err in refusing to award reasonable expenses and
attorney's fees under 37 CFR 2.116(a), 2.120 and Fed. R. Civ. P.
37(a)(4)); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ
1191, 1195 n.9 (TTAB 1984) (request for costs and attorneys fees was
denied, inter alia, on the ground that the TTAB had no authority to award
such fees and costs); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305
n.4 (TTAB 1987) (the TTAB has no authority to grant monetary relief); Fort
Howard Paper Co. v. G.V. Gambina, Inc., 4 USPQ2d 1552, 1554 (TTAB 1987)
(the TTAB has no authority to order costs or attorney's fees); Paolo's
Associates Ltd. Partnership v. Bodo, 21 USPQ2d 1899, 1904 n.3 (Comm'r Pat.
1990) (the TTAB was correct in holding that 37 CFR 2.127(f) denies the
TTAB authority to either award attorney's fees or costs to any party in a
cancellation and opposition proceeding); Nabisco Brands, Inc. v. Keebler
Co., 28 USPQ2d 1237, 1238 (TTAB 1993) (the TTAB held, inter alia, that it
did not have authority to award fees under 37 CFR 2.127(f)).
None of the decisions mentioned above provide any reasoned analysis or
rationale to explain why the Commissioner lacks authority to promulgate a
rule which would authorize imposition of monetary sanctions in appropriate
cases. In view of the existence of the decisions, however, it is believed
that a discussion of the Commissioner's authority to promulgate a rule
authorizing the Board to award compensatory monetary sanctions is
appropriate.
The Commissioner has been delegated the authority by the Congress to
"establish regulations, not inconsistent with law, for the conduct of
proceedings in the Patent and Trademark Office." 35 U.S.C. 6(a).
The U.S. Court of Appeals for the Federal Circuit upheld the authority
of the Commissioner to issue regulations imposing sanctions in
interference cases. In Gerritsen v. Shirai, 979 F.2d 1524, 24 USPQ2d 1912
(Fed. Cir. 1992), the Federal Circuit noted that 37 CFR 1.616 was a
permissible exercise of the Commissioner's authority under 35 U.S.C. 6(a)
and complied with the limitation on sanctions of the Administrative
Procedure Act. The court stated (979 F.2d at 1527 n.3, 24 USPQ2d at 1915
n.3):
35 U.S.C. 6(a) (1988) permits the Commissioner of Patents and
Trademarks to "establish regulations, not inconsistent with law, for the
conduct of proceedings in the Patent and Trademark Office." Congress thus
delegated plenary authority over PTO practice, including interference
proceedings, to the Commissioner. On its face, 37 CFR 1.616 represents
a permissible exercise of that authority. Since the decision to impose a
sanction . . . was authorized by law, it comports with the Administrative
Procedure Act, 5 U.S.C. 558(b) (1988).
In Gerritsen, the Federal Circuit held that the particular rule violation
was sanctionable, but that the specific sanction chosen by the Board was
too severe. Accordingly, the sanction was vacated and the case was
remanded to the Board for imposition of a more appropriate sanction.
In Abrutyn v. Giovanniello, 15 F.3d 1048, 1050, 29 USPQ2d 1615, 1617
(Fed. Cir. 1994), the Federal Circuit again upheld the authority of the
Board or an administrative patent judge to impose sanctions, including
imposition of the most severe sanction, granting judgment against one of
the parties:
The Board or EIC [Examiner-in-Chief, now administrative patent judge] may
impose an appropriate sanction, including granting judgment in an
interference, against a party who fails to comply with the rules governing
interferences, including filing deadlines. 37 CFR 1.616 (1993).
Gerritsen and Abrutyn judicially establish that the Commissioner has
authority under 35 U.S.C. 6(a) to promulgate regulations which impose a
spectrum of sanctions, including imposition of the ultimate sanction of
judgment or dismissal.
As a general matter, agencies are given broad authority in the
selection of an appropriate sanction. The choice of sanction within agency
statutory limits will be upheld unless it constitutes an abuse of
discretion. Butz v. Glover Livestock Comm'n Co., 411 U.S. 182 (1973);
Lawrence v. Commodity Futures Trading Comm'n, 759 F.2d 767, 774 (9th Cir.
1985). Current 1.616 authorizes an administrative patent judge or the
Board to impose a spectrum of sanctions. The sanctions range from holding
certain facts established for purposes of the interference (37 CFR
1.616(a)) to granting judgment against the party who violated a regulation
or an order (37 CFR 1.616(e)). As indicated above, the Federal Circuit
has upheld the Commissioner's authority to promulgate 1.616 and impose
the specified sanctions (Gerritsen, 979 F.2d at 1527 n.3, 24 USPQ2d at
1915 n.3), including granting judgment against a party (Abrutyn, 15 F.3d
at 1050, 29 USPQ2d at 1617). Judgment and dismissal are the most severe
forms of sanction. See National Hockey League v. Metropolitan Hockey Club,
427 U.S. 639, 643 (1976); Poulis v. State Farm Fire and Casualty Co., 747
F.2d 863, 867 (3d Cir. 1984); Cine Forty-Second St. Theatre Corp. v.
Allied Artists Pictures Corp., 602 F.2d 1062, 1066 (2d Cir. 1979).
Consistent with these cases, the Federal Circuit has held that a holding
by the Board that a party is not entitled to a patent directed to certain
claims is an extreme sanction. Gerritsen, 979 F.2d at 1532 n.12, 24 USPQ2d
at 1919 n.12.
The imposition of monetary sanctions is manifestly a lesser sanction
than judgment or dismissal. Indeed, reimbursement of expenses incurred as
a result of inappropriate action by the opposing party has been held to be
a mild form of sanction. Cine Forty-Second St., 602 F.2d at 1066. More
stringent sanctions include orders striking out portions of a pleading,
orders prohibiting the introduction of evidence on a particular point, and
orders deeming a disputed issue determined adversely to the position of a
disobedient party. Id.
Since the imposition of a monetary sanction is a lesser sanction than
judgment against a party, the inclusion of an "appropriate" monetary
sanction in 1.616, as adopted, is not outside the Commissioner's
rulemaking authority and would not be inconsistent with the sanctions
already present in 1.616.
Whether a monetary sanction is appropriate depends on the purpose of
the sanction. Civil sanctions may be categorized as penal and remedial.
One is not to be subjected by an agency to a penal sanction unless the
words of the statute plainly authorize imposition of a penal sanction.
Commissioner v. Acker, 361 U.S. 87, 91 (1959). Thus, a statute must
plainly authorize an agency's power to impose penalties. Pender Peanut
Corp. v. United States, 20 Cl. Ct. 447, 453-55 (1990). Agencies have no
inherent authority, based solely on their enabling statute, to impose
penal sanctions. That authority must be expressly given in the statute.
Pender Peanut Corp., 20 Cl. Ct. at 453-55 (1990); Gold Kist, Inc. v.
Department of Agriculture, 741 F.2d 344, 348 (11th Cir. 1984); Koch,
Administrative Law and Practice 6.81 (1985). A penal sanction has been
defined as one which inflicts a punishment. United States v. Frame, 885
F.2d 1119, 1142 (3d Cir. 1989).
On the other hand, an explicit grant of power from Congress need not
underpin each exercise of agency authority. See Zola v. Interstate
Commerce Commission, 889 F.2d 508, 516 (3d Cir. 1989), citing Amoskeag Co.
v. Interstate Commerce Commission, 590 F.2d 388, 392 (1st Cir. 1979).
Where the enabling statute authorizes the agency to make such rules and
regulations as may be necessary to carry out the provisions of an act --
the regulation will be sustained so long as it is reasonably related to
the purpose of the act. Mourning v. Family Publications Service, Inc., 411
U.S. 356, 369 (1973). Under its enabling legislation, an agency has
inherent power to impose administrative sanctions that are not "penalties"
as long as the sanctions are reasonably related to the purpose of the
enabling statute. Gold Kist, 741 F.2d at 348. Accordingly, in evaluating
whether the imposition of a sanction is within an agency's inherent
powers, it is necessary to determine whether the sanction is remedial or
punitive. Frame, 885 F.2d at 1142. Remedial sanctions may be within the
agency's inherent powers if reasonably related to the purpose of enabling
legislation. A remedial sanction is one whose purpose is not to stigmatize
or punish wrongdoers. Frame, 885 F.2d at 1143.
Thus, in the absence of express statutory authority, the Commissioner's
authority to impose monetary sanctions is limited to sanctions which are
remedial in nature rather than punitive. In addition, the sanctions must
be reasonably related to the purpose of enabling statute under which PTO
operates. Under these guidelines, the Commissioner would appear to be
without authority to issue a regulation which permits a penal sanction to
be imposed against a party or an attorney for violation of a rule or
order. Fines payable to Government, including PTO, are manifestly intended
to punish wrongdoing and are thus punitive in nature. Assessment to
redress an injury to the public is in the nature of a penalty. Republic
Steel Corp. v. National Labor Relations Board, 311 U.S. 7, 12-13 (1940).
On the other hand, the imposition of costs or expenses, including
attorneys' fees, incurred by an opposing party due to the violation of a
rule or order, may properly be considered remedial. Imposing costs or
attorneys' fees serves to defray the expenses actually incurred by the
opposing party for the violation of a rule or order by an opponent. See
Poulis, 747 F.2d at 869 (non-dilatory party will not have to bear the
brunt of the attorney's delay). Monetary sanctions would enhance the
Board's ability to protect the integrity of its proceedings. See Zola 889
F.2d at 516 (ICC justified in imposing monetary sanctions in acting to
protect the integrity of its jurisdiction). Monetary sanctions would also
allow the Board to maintain control of its docket to maximize the use of
limited resources. See Griffin & Dickson v. United States, 16 Cl. Ct. 347,
351 (1989) (case management responsibilities require broad inherent
authority to impose [non- penal] sanctions). Imposition of monetary
sanctions is the only sanction both mild enough and flexible enough to use
in day-to-day enforcement of orderly and expeditious litigation. Eash v.
Riggins Trucking, Inc., 757 F.2d 557, 567 (3d Cir. 1985) (in banc). Thus,
monetary sanctions are reasonably related to the Commissioner's plenary
authority to promulgate regulations for the conduct of proceedings,
including interference proceedings in PTO.
Section 1.616(b), as proposed to be amended, would have authorized the
imposition of a sanction, including a sanction in the form of compensatory
expenses and/or attorney fees, against a party for taking or maintaining a
frivolous position. A number of comments were received opposing the
authorization of sanctions for taking or maintaining frivolous positions (
1.616(b)). Several comments suggested that the question of what is
"frivolous" is inherently highly subjective and will therefore be
frequently raised, substantially increasing costs and delaying decisions
on more substantive issues. PTO believes, however, consistent with other
comments received during the comment period, that inasmuch as a groundless
motion for sanctions would itself be grounds for sanctioning the movant
for taking or maintaining a frivolous position, it is expected that
motions for sanctions will only be filed in clear cases. One comment
suggested that 1.616(b) be reworded to parallel Rule 11 of the Federal
Rules of Civil Procedure so that sanctions would only be imposed upon
motion by an opponent, subject to a twenty-one day "safe harbor"
withdrawal provision, and would explicitly apply only to frivolous
positions taken in writing. Another comment, while supportive of the
proposed amendment on the ground that it should reduce the number of
frivolous papers, cautioned against treating as frivolous "that which is
simply born of ignorance." The suggestion to have 1.616(b) authorize
sanctions imposed only on motion by a party is not being adopted. There
may be situations in which the Board believes it would be appropriate to
award compensatory fees or expenses even in the absence of a motion by a
party. The suggestion that Fed. R. Civ. P. 11 permits sanctions only upon
motion is believed to be incorrect; for example, Fed. R. Civ. P.
11(c)(1)(b) authorizes sanctions on the court's initiative. The suggestion
to use the "safe harbor" approach of Fed. R. Civ. P. 11(c)(1)(A), which
provides that a motion for sanctions shall be served but not filed unless,
within 21 days after service of the motion, the challenged position is not
withdrawn or appropriately corrected, is not being adopted. The
administrative patent judge and the Board should know the reason why a
party has withdrawn or corrected a position. Nevertheless, in order to
make it clear that sanctions will not be imposed for mistakenly taking an
erroneous position that is withdrawn or corrected as soon as the error
becomes apparent, the proposed phrase "for taking or maintaining a
frivolous position" is changed to "for taking and maintaining a frivolous
position."
The suggestion that 1.616(b) sanctions be limited to frivolous
positions taken in writing is based on the Advisory Committee Note on the
1993 amendments to Fed. R. Civ. P. 11. The Note states in pertinent part:
"The rule applies only to assertions contained in papers filed with or
submitted to the court. It does not cover matters arising for the first
time during oral presentations to the court, when counsel may make
statements that would not have been made if there had been more time for
study and reflection." For the reason given in the Advisory Committee
Note, the suggestion is being adopted. Accordingly, 1.616(b) as adopted
is limited to a frivolous position taken and maintained in papers filed in
the interference and shall apply only to frivolous positions taken and
maintained after the effective date of 1.616 as amended.
Other comments questioned how the Board intends to handle proof of
amounts of compensatory expenses and/or attorney fees and expressed the
hope that attorney fee awards will not be de facto discriminatory as
between highly paid outside counsel and in-house counsel without fees or
billing records. The matter of how to prove amounts of compensatory
expenses and/or attorney fees will be handled on a case-by-case basis.
Another comment suggested that an administrative patent judge or the Board
be required to issue an order to show cause prior to imposing a sanction,
since a party may be able to explain why a sanction should not be imposed.
The suggestion is presumably based on Fed. R. Civ. P. 11(c)(1)(B) and
directed to cases in which an administrative patent judge or the Board on
its own initiative determines that a sanction is appropriate. The
suggestion is being adopted and implemented in a new paragraph,
1.616(d). In addition, paragraph (d) expressly provides that a party may
file a motion ( 1.635) requesting the imposition of sanctions, the
drawing of adverse inferences or other action under paragraph (a), (b) or
(c) of 1.616.
III. Certificates of Prior Consultation.
Section 1.637(b) currently requires that a miscellaneous motion under
1.635 contain a certificate stating that the moving party has conferred
with all opponents in a good faith effort to resolve by agreement the
issues raised by the motion and indicating whether any other party plans
to oppose the motion. In the Notice of Proposed Rulemaking, it was
proposed to amend paragraph (b) to extend the requirement for such a
certificate to preliminary motions filed under 1.633 and other motions
filed under 1.634. It also was proposed to require the certificate to
indicate that the reasons and facts in support of the motion were
discussed with each opponent and, if an opponent has indicated that it
will oppose the motion, to identify the issues and/or facts believed to be
in dispute.
The rationale offered in the Notice of Proposed Rulemaking for the
amendment was an expectation that consultation would result in a reduction
in the number of issues raised by motions under 1.633-34, as well as
a reduction in the number of motions filed under those rules. All but one
of many comments received in response to the proposal urged that the
proposed rule not be adopted. In support, it was said that the proposed
rule would unnecessarily increase the time and costs required to file
motions under 1.633-34, particularly preliminary motions. PTO, upon
reflection, agrees with the comments. Accordingly, the proposal to extend
the consultation requirement of 1.637(b) to 1.633-34 motions is
withdrawn. The withdrawal of the proposed rule, however, should not be
interpreted as precluding an administrative patent judge from holding a
conference call prior to the date preliminary motions are due for the
purpose of discussing which preliminary motions the parties plan to file
or from entering an order requiring prior consultation as to a particular
motion.
Several comments, citing experience with the consultation requirement
for 1.635 motions, suggested that 1.637(b) be dropped altogether, or
be limited at most to motions requesting extensions of time. The
suggestion is not being adopted. However, there are circumstances where it
may be appropriate to suspend the requirements of 1.637(b). An example
is a multi-party interference where one party may need to consult with a
large number of opponents. Another example is a motion filed after a
hearing before an administrative patent judge, where filing of the motion
was authorized at the hearing. Accordingly, while the suggestion to delete
the requirement for consultation altogether is not being adopted, the
language "Unless otherwise ordered by an administrative patent judge or
the Board" is added at the beginning of the first sentence of 1.637(b).
Several comments were received which were also critical of the proposal
to amend 1.637(b), even if applied only to 1.635 motions, to require
that the certificate "indicate that the reasons and facts in support of
the motion were discussed with each opponent and, if an opponent has
indicated that it will oppose the motion, identify the issues and/or facts
believed to be in dispute." One comment suggested that the proposal is
unworkably vague with respect to: (1) the form of the information a party
must provide to the opponent (e.g., a draft motion, an outline of the
motion, a verbal statement of the motion, the evidence in support of the
motion); (2) what form the opponent must use to provide its reasons for
opposing (i.e., written or oral); and (3) whether the moving party can
change the arguments in the motion in response to the reasons given by the
opposing party without the need for another consultation. Other comments
noted that an opponent may not have sufficient time before the due date
for motions in which to take a reasoned position on the motion. Another
comment observed that it is very difficult for the movant to identify the
issues or facts believed to be in dispute, unless it is a very cursory
exercise. According to the comment, the party cannot know what the
opponent is really thinking, and suggested instead that there be an
in-person conference involving the parties and the administrative patent
judge in order to discuss all intended (or filed) motions. The comments
are believed to be well taken and the proposal in the Notice of Proposed
Rulemaking to amend 1.637(b) to require that the motion, "if an
opponent has indicated that it will oppose the motion, identify the issues
and/or facts believed to be in dispute" is withdrawn.
IV. Service of a "Developing Record."
In addition to the amendments to 1.672 discussed above under the
heading "Amendments responsive to adoption of Public Laws 103-182 and
103-465," 1.672, 1.682, 1.683 and 1.688 are amended, as proposed
(with a few minor modifications discussed infra), to require each party to
serve on each opponent a "developing record" that will evolve into the
record required to be filed under 1.653.
As noted above, the Notice of Proposed Rulemaking proposed to amend
paragraph (b) of 1.672 to provide that a party presenting testimony of
a witness by affidavit shall, no later than the time set by the
administrative patent judge for serving affidavits, file (and serve) the
affidavit, whether it is a new affidavit or an affidavit previously filed
by that party during ex parte prosecution of an application or under
1.608 or 1.639(b). Furthermore, in view of the proposed amendment to
1.672(b), it was also proposed to remove and reserve, as superfluous,
1.671(e), which requires a party to give notice of intent to rely on an
affidavit filed by that party during ex parte prosecution of an
application or an affidavit under 1.608 or 1.639(b). An oral comment
suggested that 1.671(e) notice practice be retained with respect to
1.639(b) affidavits, so that a party does not have to refile (and
re-serve) a previously submitted 1.639(b) affidavit on which it intends
to rely at final hearing. The comment further suggested that for the same
reason 1.671(e) notice practice should be extended to patents and
printed publications filed and served pursuant to 1.639(b). The
suggestions are being adopted. Section 1.671(e) thus revised reads as
follows:
(e) A party may not rely on an affidavit (including any exhibits), patent
or printed publication previously submitted by the party under 1.639(b)
unless a copy of the affidavit, patent or printed publication has been
served and a written notice is filed prior to the close of the party's
relevant testimony period stating that the party intends to rely on the
affidavit, patent or printed publication. When proper notice is given
under this paragraph, the affidavit, patent or printed publication shall
be deemed as filed under 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a),
as appropriate.
Furthermore, in order to ensure that the evidence submitted under
1.639(b) includes sequential numbering of the type required of other
evidence filed under 1.672(b), 1.639(b) is revised to require the
use of sequential numbering, which, for the reasons discussed infra, is
required to be used only to the extent possible.
As explained supra, in view of the retention of 1.671(e) in amended
form, 1.672(b), as adopted, permits a party to file an affidavit or, if
appropriate, a notice under 1.671(e).
Sections 1.682, 1.683 and 1.688 are revised, substantially as proposed,
to parallel the amendments to 1.672. Section 1.682(a) as proposed to be
amended provides that a party may introduce into evidence, if otherwise
admissible, an official record or printed publication not identified in an
affidavit or on the record during an oral deposition of a witness, by
filing (and serving) a copy of the official record or publication no later
than the time set for filing affidavits under 1.672(b), thereby
eliminating the current requirement for filing a notice of intent to rely
on the official record or printed publication. In view of the retention of
1.671(e) in amended form to permit a party to file a notice of intent
to rely on patents and publications previously filed by the party under
1.639(b), 1.682(a), as adopted, permits a party to file a copy of an
official record or printed publication or, if appropriate, a notice under
1.671(e). Section 1.683(a) is amended, as proposed, to provide that a
party may introduce into evidence, if otherwise admissible, testimony by
affidavit or oral deposition from another interference, proceeding, or
action involving the same parties by filing (and serving) a copy of the
affidavit or a copy of the deposition transcript no later than the time
set for filing affidavits under 1.672(b), thereby eliminating the
current requirement for a party for filing a motion under 1.635 for
leave to rely on such testimony. Section 1.688(a) is amended, as proposed,
to provide that, if otherwise admissible, a party may introduce into
evidence an answer to a written request for an admission or an answer to a
written interrogatory obtained by discovery under 1.687 by filing a
copy of the request for admission or the written interrogatory and the
answer no later than the time set for filing affidavits under 1.672(b).
Thus, all evidence filed under 1.672, 1.682, 1.683 and 1.688 that
relates to a party's case-in-chief should be filed (and served) or noticed
under 1.671(e) no later than the date set by an administrative patent
judge for the party to serve affidavits under 1.672(b) for its
case-in-chief and all evidence under those sections that relates to the
party's rebuttal should be filed (and served) or noticed under 1.671(e)
no later than the date set for the party to serve affidavits under
1.672(b) for its case-in-rebuttal.
The Notice of Proposed Rulemaking proposed that the pages of all
affidavits and deposition transcripts that a party enters into evidence
pursuant to 1.672, 1.682, 1.683 and 1.688 shall include sequential
page numbers, which shall also serve as the record page numbers for the
affidavits and deposition transcripts in the party's record when it is
filed under 1.653. Likewise, the Notice of Proposed Rulemaking proposed
that exhibits identified in the affidavits and deposition transcripts and
any official records and printed publications served under 1.682(a)
shall be given sequential numbers, which shall serve as the exhibit
numbers when the exhibits are filed under 1.653(i) with the party's
record. The major benefit of sequential page numbering is that a
particular page of an affidavit or exhibit will be referred to in a
consistent manner throughout the record. Thus, when an affiant is subject
to cross-examination about the affiant's affidavit or another person's
affidavit, the record will be clear as to the material which is the
subject of the cross-examination. Correlation of pages of affidavits
and/or exhibits will no longer be necessary.
Regarding the sequential numbering of affidavits, one comment noted
that:
while this might be of some minor convenience to the PTO, it is
inconvenient for the public, and may be difficult to be accomplished in
practice. Due to severe PTO time constraints in preparing affidavits, it
is usually essential to amend, add to, rewrite and execute declarations
and affidavits in parallel. Often, the declarants are in different
physical locations. Modern offices do not have the old fashioned manual
impact typewriters that would be required to superpose new page numbers on
executed documents. Declarations are already clearly identifiable, by the
name of the declarant and the page of his or her declaration. . . .
The comment apparently assumes, incorrectly, that the required sequential
numbers are to be used in lieu of the usual page numbers that appear in
affidavits and deposition transcripts. The sequential numbers are in
addition to the usual page numbers and are typically added to the pages by
a sequential numbering device (e.g., a "Bates" stamp).
Since a party may decide not to rely at final hearing on a previously
filed 1.639(b) affidavit (including any exhibits), or on patents and
printed publications that it previously filed under 1.639(b) in
connection with a motion, there may be gaps in the sequential numbers of
the affidavit pages and exhibits that are relied on at final hearing.
Compare, e.g., Federal Circuit Rule 30(c)(2) with respect to pages omitted
from an appendix. Furthermore, due to circumstances beyond the party's
control it may not be possible to submit the 1.639(b) affidavits and
accompanying exhibits into evidence in the proper order. Finally, the
exhibits referred to in testimony under 1.683 from another proceeding
will obviously already have the exhibit numbers assigned to them in that
proceeding. When possible, those planning to use exhibits and testimony
from a previous interference may wish to avoid using an exhibit number
used in the previous interference, thereby minimizing the possibility of
confusion which can exist when two exhibits in the same record have the
same exhibit number. For these reasons, the proposal to amend 1.672 to
require that testimony pages and exhibits "shall be given sequential
numbers" is changed to a requirement that testimony and exhibits "shall be
given sequential numbers to the extent possible." This change also applies
to evidence submitted under 1.682, 1.683 and 1.688 as amended, which
state that the pages of affidavits and deposition transcripts served under
those paragraphs and any new exhibits served therewith shall be assigned
sequential numbers by the party in the manner set forth in 1.672(b). In
order to take into account that there may be gaps in page numbers in the
record and in the exhibit numbers, 1.653(d) is revised to state that
the pages of the record shall be consecutively numbered "to the extent
possible." Sections 1.677(a) and (b) are revised in a similar manner. That
is, paragraph (a) is revised to limit its requirement for consecutive page
numbering, which the rule currently applies to "the entire record of each
party," to the pages of each transcript. Paragraph (b) is revised to
require that exhibits be numbered consecutively "to the extent possible."
Section 1.672(a) affidavits and 1.683(a) testimony shall be
accompanied by an index giving the name of each witness and the number of
the page where the testimony of each witness begins. The exhibits shall be
accompanied by an index briefly describing the nature of each exhibit and
giving the number of the page of affidavit or 1.683(a) testimony where
each exhibit identified in an affidavit or during an oral deposition is
first identified and offered into evidence.
An opponent who objects to the admissibility of any evidence filed
under 1.672(b), 1.682(b), 1.683(a) and 1.688(a) must file objections
under 1.672(c), 1.682(c), 1.683(b) and 1.688(b) no later than the
date set by the administrative patent judge for filing objections to
affidavits under paragraph 1.672(c). An opponent who fails to challenge
the admissibility of the evidence on a ground that could have been raised
in a timely objection under 1.672(c), 1.682(c), 1.683(b) or 1.688(b)
will not be permitted to move under 1.656(h) to suppress the evidence
on that ground. If an opponent timely files an objection to evidence filed
under 1.672(b), 1.682(b), 1.683(a) or 1.688(a), the party may respond
by filing one or more supplemental affidavits and, in the case of
objections to evidence filed under 1.672(b), 1.682(b) and 1.683(a),
may also file supplemental official records or printed publications. No
objection to the admissibility of supplemental evidence shall be made
except as provided by 1.656(h). A party submitting evidence in response
to an objection is aware of the objection and should take whatever steps
are necessary in presenting supplemental evidence to overcome the
objection. Whether the steps were sufficient is determined at final
hearing on the basis of a motion to suppress the evidence under
1.656(h).
The pages of the supplemental affidavits shall be sequentially numbered
beginning with the number following the last page number of the testimony
served under 1.672(b), 1.683(a) and 1.688(a), if possible. Likewise,
any additional exhibits identified in the supplemental affidavits and any
supplemental official records and printed publications shall be given
sequential numbers beginning with the number following the last number of
the previously identified exhibits, if possible. After the time expires
for filing objections and supplemental affidavits, or earlier when
appropriate, the administrative patent judge shall set a time within which
any opponent may file a request to cross-examine an affiant on oral
deposition.
If any opponent requests cross-examination of an affiant, the party
shall notice a deposition at a reasonable location within the United
States under 1.673(e) for the purpose of cross-examination. Ordinarily,
the parties should be able to agree on a "reasonable" place within the
United States. Whether a place is a reasonable place depends on the
circumstances. Generally a reasonable place within the United States would
be the place where a witness resides or the office of one of the counsel
of record in the interference. In assessing the reasonableness of a place,
the convenience of both parties should be considered. For example, in a
two-party interference if an affiant normally resides in Ohio and counsel
are located respectively in Illinois and New York, noticing a deposition
for Arizona may not be reasonable. In the event agreement cannot be
reached, a place will be set by the administrative patent judge for taking
the deposition.
Any redirect and recross shall take place at the deposition.
Within 45 days of the close of the period for taking cross-examination
( 1.678 is revised to change the time for filing certified transcripts
from 45 days to one month), the party shall serve (but not file) a copy of
each deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by a witness during a
deposition. The pages of the transcripts served under this paragraph and
the accompanying exhibits shall be sequentially numbered in the manner
discussed above. The deposition transcripts shall be accompanied by an
index of the names of the witnesses, giving the number of the page where
cross-examination, redirect and recross of each witness begins, and an
index of exhibits of the type specified in 1.672(b). At this point in
time, the opponent will have been served with all of the testimony that
will appear in the party's record (with the same page numbers) as well as
all of the documentary exhibits that will accompany the record (with the
same exhibit numbers).
In the first sentence of 1.688(a), the comma proposed to be inserted
after "evidence" is inserted instead after "admissible."
V. Miscellaneous Amendments.
Although not proposed in the Notice of Proposed Rulemaking, the
authority citation for 37 CFR Part 1 is revised by changing it from "35
U.S.C. 6" to "35 U.S.C. 6 and 23."
Throughout the rules, the term "examiner-in-chief" is replaced by
"administrative patent judge" to reflect the change in the title of the
members of the Board. See Commissioner's Notice of October 15, 1993, "New
Title for Examiners-in-Chief," 1156 Off. Gaz. Pat. Office 332 (Nov. 9,
1993). One comment correctly noted that the Notice of Proposed Rulemaking
failed to apply the change to 1.610(b). The omission has been
corrected. Another comment, citing possible confusion over the meaning of
the term "administrative patent judge," suggested adding one of the
following provisions to 1.601 to define "administrative patent judge"
in either of the following ways:
An administrative patent judge is a member of the Board of Patent Appeals
and Interferences, or
An administrative patent judge is an examiner-in-chief (35 U.S.C. 7) or
the Commissioner, the Deputy Commissioner or, an Assistant Commissioner
when acting as a member of the Board of Patent Appeals and Interferences.
Neither suggestion is being adopted. The members of the Board of Patent
Appeals and Interferences are the Commissioner [Assistant Secretary and
Commissioner of Patents and Trademarks], the Deputy Commissioner [Deputy
Assistant Secretary and Deputy Commissioner of Patents and Trademarks] and
the Assistant Commissioners [the Assistant Commissioner for Patents and
the Assistant Commissioner for Trademarks], and the examiners-in-chief,
now administrative patent judges, including the Chief Administrative
Patent Judge and the Vice-Chief Administrative Patent Judge, 35 U.S.C.
7(a). While the rules talk in terms of administrative patent judge, it
must be recognized that any member of the Board, including a
Commissioner-member, may take action in an interference which can be taken
by an administrative patent judge.
Section 1.11(e) is revised to allow access to the file of an
interference involving a reissue application once the interference has
terminated or an award of priority or judgment has been entered as to all
counts. Although it was intended that the public have access to any
interference that involves a case which is open to the public, and
1.11(b) provides that a reissue application is open to the public,
interferences involving reissue applications were inadvertently not
included in current 1.11(e).
Section 1.192(a), which specifies the contents of the brief of an
appellant for final hearing in an ex parte appeal, is revised to state
that arguments or authorities not included in the brief will be refused
consideration by the Board unless good cause is shown. The rule previously
stated that such arguments and authorities may be refused consideration by
the Board, without specifying how the Board decides whether or not it
should be considered. One comment suggested that the amendment, if
adopted, would make PTO less "user friendly" and would increase the burden
of mere technicalities on applicants. It is believed that the comment
misapprehends the nature of the proposed change, inasmuch as the change
would merely codify the "good cause" standard that is currently applied by
the Board in determining whether a new argument or authority will be
considered.
Section 1.192(c) is revised in several respects. A first amendment
simplifies the language used in the rule to refer to a brief filed by an
applicant who is not represented by a registered practitioner. A second
amendment removes from paragraph (c) the requirement that such a brief be
in substantial compliance with the requirements of paragraphs (c)(1), (2),
(6) and (7). Experience has shown that it is better to evaluate pro se
briefs on a case-by-case basis. Section 1.192(c) is also revised to
redesignate current paragraphs (c)(1) through (c)(7) as paragraphs (c)(3)
through (c)(9), and to add new paragraphs (c)(1) and (c)(2). The added
paragraphs (c)(1) and (c)(2) require an appellant who has filed an appeal
to the Board to identify the real party in interest and any related
appeals and interferences. It is necessary to know the identity of the
real party in interest so that members of the Board can comply with
applicable ethics regulations associated with working on matters in which
the member has an interest. The requirement to identify related appeals
and interferences is derived in part from Federal Circuit Rule 47.5 and
will minimize the chance that the Board will enter inconsistent decisions
in related cases.
One comment suggested that the term "real party in interest" be
replaced by "owner" in order to avoid confusion with the term "party in
interest of record," which appears in PTO's Notice of Allowance and Issue
Fee Due (PTO-85B). The suggestion is not being adopted, since it appears
unlikely that any confusion will occur.
A comment on behalf of a large U.S. corporation having extensive
overseas operations noted that the proposed requirement to identify the
real party in interest will impose a substantial burden in appeals to the
Board where the real party in interest is a corporation with international
operations and many diverse and frequently changing affiliates. The
comment was accompanied by a copy of a "Certificate of Interest"
previously filed by the corporation in an appeal to the Federal Circuit,
which named some three hundred subsidiaries and affiliates in which the
corporation had an ownership interest of five percent or more. According
to the comment, if ownership interests of less than five percent had been
included, the list would have been about twice as long. The comment
explained that because the corporation's business interests worldwide are
frequently changing, the list would require updating for each and every
appeal brief, and questioned whether this burden is justified. Upon
consideration of the comment, it is believed, at this particular time,
that the proposed rule would be burdensome on the public. Whether in the
future more information might be required to the nature of a real party in
interest is a matter which can await experience under a rule which
requires identification only of the real party in interest. Accordingly,
the suggestion is being adopted to the extent of requiring appellants to
the Board to identify only the real party in interest. In this respect,
1.192(c)(1) will parallel an equivalent requirement for briefs in inter
partes cases. See 1.656(b)(1)(ii), as amended.
One comment suggested revising proposed 1.192(c)(9), which calls for
an appendix including the claims on appeal, to include a statement that
the rule sets forth the minimum requirements for a brief. According to the
comment, the statement would make it clear that 1.192 does not prohibit
inclusion of other materials which an appellant may consider necessary or
desirable, a point which the comment noted is explained in the Manual of
Patent Examining Procedure 1206, at 1200-6. The suggestion is not being
adopted, since it is believed to be apparent from the rule that the
requirements set forth therein are the minimum requirements.
Section 1.192 as proposed to be amended in the Notice of Proposed
Rulemaking includes an amendment to current paragraph (a)(5) ("Grouping of
claims"), proposed to be redesignated as paragraph (a)(7), that
inadvertently was not discussed in the commentary in the Notice of
Proposed Rulemaking. Specifically, it was proposed to amend that paragraph
to state that for each ground of rejection which an appellant contests and
which applies to more than one claim, the rejected claims shall stand or
fall together with the broadest claim, and that only the broadest claim
would be considered by the Board of Patent Appeals and Interferences
unless a statement is included that the rejected claims do not stand or
fall together and, in the argument under paragraph (c)(8), appellant
presents reasons as to why appellant considers the rejected claims to be
separately patentable from the broadest claim; merely pointing out what a
claim covers is not an argument as to why the claim is separately
patentable from the broadest claim. One comment suggested that it is not
always clear which is the broadest claim, such as where there are two
broad independent claims of differing scope (e.g., claims to ABCDE and
ABCDF). The comment suggested that simply saying that the claims stand or
fall together, as the current rule does, is probably the best one can do
on a generic basis. The points raised by the comment are partly well
taken. Paragraph (c)(7), as adopted, therefore reads as follows:
Grouping of claims. For each ground of rejection which appellant contests
and which applies to a group of two or more claims, the Board shall select
a single claim from the group and shall decide the appeal as to the ground
of rejection on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or fall together and,
in the argument under paragraph(c)(8) of this section, appellant explains
why the claims of the group are believed to be separately patentable.
Merely pointing out differences in what the claims cover is not an
argument as to why the claims are separately patentable.
Where there is a "broadest" claim, that claim will normally be selected.
Where there are two broad claims, such as ABCDE and ABCDF, as mentioned in
the comment, the panel assigned to the case will select which claim to
consider. The same would be true in a case where there are both broad
method and apparatus claims. The rationale behind the rule, as amended, is
to make the appeal process as efficient as possible. Thus, while the Board
will consider each separately argued claim, the work of the Board can be
done in a more efficient manner by selecting a single claim when the
appellant does not meet the conditions of paragraph (c)(7) of 1.192, as
adopted. The choice of whether each claim will be considered separately or
whether all claims will be considered on the basis of a single claim is a
choice to be made by the appellant.
The term "subparagraph," which appeared in 1.192(c)(7) and (c)(8)
in their originally proposed form, has been replaced by "paragraph" in
those sections as amended.
Section 1.601 in general defines a number of terms used throughout the
interference rules. One comment noted that a consistent format is not used
throughout the definitions. For example, in 1.601(q) all defined terms
are italicized and in 1.601(n) the defined terms are in quotation
marks. The comment is well taken that there should be uniformity.
Accordingly, paragraphs (l), (m) and (n) are revised by italicizing the
first occurrence of each of the following defined terms: "junior party",
"same patentable invention" and "separate patentable invention."
The Notice of Proposed Rulemaking proposed amending paragraph (f) of
1.601 in a number of respects, including adding the following sentence: "A
count should be broad enough to encompass the broadest corresponding
patentable claim of each of the parties." One comment questioned whether
the requirement is to be applied only at the time the interference is
declared or throughout the interference. The comment notes that after an
interference is declared, prior art may come to light which renders
unpatentable all of the parties' claims that correspond to the count. The
comment suggests that under these circumstances, requiring a count to be
patentable over the prior art could mean that there might not be a proper
count. According to the comment, a result might be that the Board, whose
authority to enter judgments under the rules is limited to claims that
correspond to a count ( 1.658 and 1.659), would be unable to enter
judgment against the claims on the ground of unpatentability. Furthermore,
since the Notice of Proposed Rulemaking was published, it has become
apparent that 1.601(f) could also be clarified in two other respects.
First, the count should be broad enough to encompass all of the patentable
claims that are designated as corresponding to the count, as opposed to
solely each party's broadest corresponding patentable claim, i.e., where a
party claims ABCDE in one claim and ABCDF in another claim and both claims
are designated to correspond to the count. The current language of the
rule can be argued to overlook the situation where a party has specific
claims but no generic claim. Second, it should be made clear that the term
"patentable" as used in 1.601(f) in describing the scope of the count
means patentable in view of the prior art, as opposed to unpatentability
based on non-prior art grounds, e.g., the written description requirement
of 35 U.S.C. 112, first paragraph. Accordingly, in lieu of the sentence
proposed in the Notice of Proposed Rulemaking, 1.601(f) is revised to
include the following sentence: "At the time the interference is initially
declared, a count should be broad enough to encompass all of the claims
that are patentable over the prior art and designated to correspond to the
count." A similar change is made in 1.603 and 1.606. That is, instead
of revising these rules to require that each application "must contain, or
be amended to contain, at least one patentable claim that corresponds to
the count," as proposed in the Notice of Proposed Rulemaking, these rules
as amended require that each application "must contain, or be amended to
contain, at least one claim that is patentable over the prior art and
corresponds to the count."
The Notice of Proposed Rulemaking also proposed adding to 1.601(f) a
sentence stating: "A count may not be so broad as to be unpatentable over
the prior art." Several comments questioned the meaning of the proposed
sentence on the ground that a count, unlike a claim, does not have an
effective filing date for purposes of establishing what is available
against it as prior art. In view of the comments, the proposal to add the
sentence is hereby withdrawn.
The Notice of Proposed Rulemaking proposed to amend the second sentence
of 1.601(f) by changing "which corresponds" to read "that is designated
to correspond." This proposal should have referred instead to the third
sentence, which is revised in the manner proposed. It was also proposed to
revise the fourth and fifth sentences to read as follows, except that, for
the reasons given above, the terms "correspond exactly" and "correspond
substantially" are italicized rather than set off by quotation marks:
A claim of a patent or application which is designated to correspond to a
count that is identical to a count is said to correspond exactly to the
count. A claim of a patent or application designated to correspond to a
count that is not identical to a count is said to correspond substantially
to the count.
On oral comment suggested that these sentences could be made clearer by
revising them to read as follows:
A claim of a patent or application that is designated to correspond to a
count and is identical to the count is said to correspond exactly to the
count. A claim of a patent or application that is designated to correspond
to a count but is not identical to the count is said to correspond
substantially to the count.
This suggestion is being adopted.
As proposed in the Notice of Proposed Rulemaking, the fifth sentence of
1.601(f) is revised by removing the phrase "but which defines the same
patentable invention as the count," which is used to describe a claim that
corresponds to the count but is not identical to the count. The phrase is
superfluous because a claim that corresponds to the count by definition is
directed to the same patentable invention as the count.
The Notice of Proposed Rulemaking proposed to revise the last sentence
of 1.601(f) to state that: "A phantom count is unpatentable to all
parties under the written description requirement of the first paragraph
of 35 U.S.C. 112." One comment said that the sentence as proposed to be
revised is inaccurate supposedly because a phantom count is not
necessarily unpatentable to all parties for lacking written description
support. According to the comment, a party may have written description
support for a new claim identical to the count, yet choose not to present
such a claim during the interference for tactical reasons, such as the
desire to keep the count narrow enough to prevent an opponent from
presenting priority evidence it might be able to produce with respect to a
broader count. Another comment suggested that a phantom count be defined
as a count that is "broader than the disclosure of any party to the
interference." A third comment suggested that patentability under the
enablement and best mode requirements be addressed along with
patentability under the written description requirement. Apart from the
comments, since patentability affects claims rather than counts, the
proposal to amend the last sentence of 1.601(f) is hereby withdrawn and
the last sentence in its current form is removed.
One comment suggested counts serve little, if any, purpose under the
new rules. The comment states that if PTO nevertheless feels compelled by
tradition to have counts, each count should be the alternative union of
all the parties' claims that are designated to correspond to the same
invention. The suggestion that counts be abolished altogether, while
superficially appearing to have considerable merit, is believed to be
outside the scope of the present rulemaking and, for that reason, is not
being adopted at this time. The suggestion that a count be the alternative
union of all of the parties' claims that define the same patentable
invention would not appear to require any change in the rules. The
formulation of the count, whether by reference to particular claims in the
parties' applications/patents or by describing the subject matter of the
interference, is a matter within the discretion of PTO at this time.
The Notice of Proposed Rulemaking proposed amending 1.601(g).
Specifically, it was proposed to define the effective filing date of an
application as the filing date of an earlier application accorded to the
application or patent under 35 U.S.C. 119, 120, 121 or 365, or, if no
benefit is accorded, the filing date of the application, and to define the
effective filing date of a patent as the filing date of an earlier
application accorded to the patent under 35 U.S.C. 120, 121, or 365(c) or,
if no benefit is accorded, the filing date of the application which
matured into the patent. The purpose of including the reference to 35
U.S.C. 121 is to eliminate any doubt that a divisional application may be
entitled to an earlier filing date in accordance with 35 U.S.C. 121.
One comment suggested that the definition of effective filing date in
1.601(g) should be expressly keyed to the claims rather than to the
applications and patents, since different claims in the same application
or patent may have different effective filing dates. The comment also
suggested that the rules should be revised to make it clear that a motion
under 1.633(h) to add a reissue application need not be accompanied by
a motion under 1.633(f) for benefit of the patent sought to be
reissued. Another comment suggested that the rule be revised to state that
the effective filing date referred to in 1.601(g) is the effective
filing date of an application which constitutes a constructive reduction
to practice of the subject matter of the count so as to make it clear that
the rule is not referring to the effective filing date of an involved
claim. These comments demonstrate that there is considerable uncertainty
with respect to the inter-relationship between benefit issues and priority
proof issues, including, among other issues, (a) benefit for a claim, (b)
benefit for a count, (c) constructive reductions to practice based on a
species disclosed in an earlier application (foreign or domestic) when
claims of the U.S. application are not supported under 119 in the
priority document (see In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.
Cir. 1989) and In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978), and
compare to the so-called one species is sufficient for priority "rule"),
and (d) the fact that under interference practice since 1985,
patentability is an issue which can be raised, whereas prior to 1985,
priority was "not ancillary" and could not be raised. A notice of proposed
rulemaking will be issued in due course to address the issue, as well as
other issues raised in comments responding to the current Notice of
Proposed Rulemaking. A comment that the language of the proposed amendment
to 1.601(g) fails to take into account the fact that a patent may be
accorded benefit of the filing date of an earlier foreign application
during the interference is, however, well taken. Accordingly, 1.601(g)
is revised to make clear that a patent may be entitled to benefit under 35
U.S.C. 119.
As proposed in the Notice of Proposed Rulemaking, 1.601(j) is
revised by changing "which" to "that." One comment suggested changing
"that corresponds to a count" to "that is designated to correspond to a
count" for clarity and consistency with the language in 1.601(f). The
suggestion is being adopted.
In 1.601, paragraph (l) is revised, as proposed, by changing
"assignee" to "assignee of record in the Patent and Trademark Office."
Paragraph (q) of 1.601 is revised by deleting "a panel of" as
superfluous.
Section 1.602 is revised by changing "within 20 days of" to "within 20
days after." One comment suggested clarification of the meaning of "any
right, title and interest," noting involvement in several disputes over
whether this includes a relationship such as a non-exclusive license, and
also questioned whether the rule requires a party in a three-party
interference to disclose that it is paying another party's expenses or
attorney fees. The suggestion, which is outside the scope of the present
rulemaking, is not being adopted at this time. The suggestion will be made
the subject of a future notice of proposed ruleÍmaking.
Sections 1.603 and 1.606 are revised, as proposed, by deleting the
third sentence ("Each count shall define a separate patentable
invention.") as redundant in view of the identical sentence in 1.601(f)
and by requiring that each application to be put into interference
contain, or be amended to contain, at least one claim which is patentable
over the prior art and which corresponds to each count. The introductory
language in each of these sections ("Before an interference is declared .
. .") makes it clear that the patentability requirement applies at the
time that the interference is declared, as opposed to at all times during
the interference.
One comment suggested that 1.603 and 1.606 be further revised to
require the examiner to examine all of the prior art in all of the
potential parties' application and patent files in making a patentability
determination. The suggestion is not being adopted. Ordinarily, the
examiner determines that claims are patentable before an interference is
declared. While there may be no express statement, consideration of
whether claims are patentable in one application to be placed in an
interference normally would involve consideration of prior art in a second
application to be placed in the same interference.
In 1.604, paragraph (a)(1) is revised by changing "his or her" to
"its."
In 1.605, paragraph (a) is revised for clarification essentially in
the manner set forth in the Notice of Proposed RuleÍmaking. Part of the
last sentence of the rules, however, is revised to require an applicant to
"explain why the other claims would be more appropriate to be designated
to correspond to a count in any interference which may be declared." In
responding to a request by an examiner to copy a claim for purpose of a
possible interference, an applicant should present the exact claim
requested by the examiner. Often, however, an applicant may believe that
the claim suggested by the examiner is not appropriate. For example, an
applicant may believe it cannot support the exact claim requested by the
examiner. Accordingly, while the applicant must present the exact claim
requested by the examiner, the applicant is also free to suggest that the
exact claim is inappropriate, but that other claims proposed by the
applicant are more appropriate to be designated as corresponding to a
count of any possible interference. Obviously, the applicant is also free
to make a suggestion to the examiner as to what the count should be in any
interference. The examiner can then determine whether an applicant's
alternatively proposed claims are more appropriate than the exact claim
suggested.
One comment suggested that 1.605 further be revised "to include a
reminder of the statutory prohibition against an interference copying
claims from a patent issued more than one year, (as Rule 607 already does
for applicants), since some examiners have been doing it" (original
emphasis). The comment is understood to mean that examiners have suggested
that applicants copy patent claims in violation of 35 U.S.C. 135(b). The
suggested reminder is not incorporated into the rule, because it would not
implement or interpret any requirement of law, and, while plausibly
legitimate, is better made in administrative instructions, such as the
Manual of Patent Examining Procedure.
Section 1.606 is also revised, as proposed, by adding a sentence
stating that the claim in the application need not be, and most often will
not be, identical to a claim in the patent.
One comment suggested that the last sentence of 1.606, which the
Notice of Proposed Rulemaking did not propose to revise, be revised to
apply to application claims as well as patent claims and that the sentence
be broken into two sentences for clarity, so as to read as follows:
At the time an interference is initially declared ( 1.611), a count
shall not be narrower in scope than (i) any application claim designated
to correspond to the count and indicated in the form PTO-850 as allowable
or (ii) any patent claim designated to correspond to the count. Any single
patent claim designated to correspond to the count will be presumed,
subject to a motion under 1.633(c), not to contain separate patentable
inventions.
The suggestion is being adopted; however, because it is inappropriate to
refer to a PTO form in a rule, the following language is used:
At the time an interference is initially declared ( 1.611), a count
shall not be narrower in scope than any application claim that is
patentable over the prior art and designated to correspond to the count or
any patent claim designated to correspond to the count. Any single patent
claim designated to correspond to the count will be presumed, subject to a
motion under 1.633(c), not to contain separate patentable inventions.
One comment questioned why the declaration of interferences under 1.606
is limited to unexpired patents, suggesting that there are rare cases
where it would be very desirable to have an interference between an
application and either a patent that has expired or a patent that has
lapsed for failure to pay a maintenance fee. The enabling statute,
however, authorizes interferences involving patents which are "unexpired."
35 U.S.C. 135(a).
In 1.607, paragraph (a)(4) is revised to change "his or her" to
"its" and to add a new paragraph (a)(6) requiring an applicant seeking an
interference with a patent to demonstrate compliance with 35 U.S.C.
135(b), which provides:
A claim which is the same as, or for the same or substantially the same
subject matter as, a claim of an issued patent may not be made in any
application unless such a claim is made prior to one year from the date on
which the patent was granted.
Requiring an applicant to show compliance with 35 U.S.C. 135(b) before an
interference is declared should prevent an interference from being
declared where the applicant cannot satisfy 135(b) with respect to any
claim alleged to correspond to the proposed count. One comment suggested
that requiring an applicant who has requested an interference with a
patent to demonstrate compliance with 135(b) is ultra vires. The
comment argues that In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980),
precludes an examiner from relying on 135(b) to refuse to declare an
interference and that Sasse can only be overruled by statute or decision
of the Federal Circuit in banc, citing Chevron U.S.A., Inc. v. Natural
Resources Defense Council, Inc., 467 U.S. 837 (1984). The argument in the
comment is not persuasive. Sasse held that a claim added in violation of
135(b) cannot be rejected by PTO under that statute; it did not hold that
PTO cannot refuse to declare an interference where all of an applicant's
claims that are proposed to correspond to the count fail to satisfy the
statute. In fact, the court specifically held that the effect of 135(b)
is that "a procedural statutory bar arises proscribing the instigation of
interferences after a specified time interval." 629 F.2d at 680, 207 USPQ
at 110 (original emphasis).
In 1.608, paragraphs (a) and (b) are revised in several respects, as
proposed. First, both paragraphs are revised by removing the information
about effective filing dates, which appears instead in 1.601(g), as
amended. Second, the current requirement of paragraph (a) for an affidavit
filed by the applicant has been relaxed. Paragraph (a), as amended,
permits a statement to be filed by the applicant or a practitioner of
record. Third, "sufficient cause" in paragraph (b) of 1.608 and in
other interference rules is changed to "good cause" in order to make it
clear that only one "cause" standard is intended. Fourth, "8 1/2 x 11
inches (21.8 by 27.9 cm.)" is changed to "21.8 by 27.9 cm. (8 1/2 x 11
inches)" to put the emphasis on the metric measurements. Fifth, the phrase
"( 1.653(g) and (h)") is revised to read "( 1.653(g))" in view of the
removal and reservation of 1.653(h).
One comment stated a belief that there may be some confusion regarding
the application of 1.608(b) when the basis upon which an applicant is
entitled to judgment is not priority of invention. According to the
comment, while 1.608(b) appears to include derivation as a basis, it is
uncertain whether it applies in a situation where the applicant believes
the patent claims are unpatentable over prior art that does not also
render unpatentable the applicant's claims. The suggested change is not
necessary. The comment's statement that derivation (35 U.S.C. 102(f))
provides a basis for a showing under 1.608(b) is correct. Section
1.608(b) requires an applicant to explain why the applicant is entitled to
judgment vis-a-vis the patentee. As explained in the Notice of Final Rule,
49 FR 48416, 48421 (Dec. 12, 1984), "[t]he evidence may relate to
patentability and need not be restricted to priority." Such evidence could
be, for example, evidence relating to derivation as noted by the comment.
The Notice of Proposed Rulemaking proposed that 1.609(b)(2), be
revised to require the examiner's statement (i.e., currently Form PTO-850,
also known as the initial interference memorandum) to explain why each
claim designated as corresponding to a count is directed to the same
patentable invention as the count. It was also proposed that
1.609(b)(3) be revised to require the examiner's statement to explain "why
each claim designated as not corresponding to a count is not directed to
the same patentable invention as the count." The purpose of these
amendments is to provide the Board and the parties with the benefit of the
examiner's reasoning and to provide a better foundation for considering
preliminary motions to designate claims as corresponding or as not
corresponding to a count.
Paragraph (b)(2) is revised essentially as proposed in the Notice of
Proposed Rulemaking. Upon further reflection, no need is seen for the
examiner to indicate whether a claim corresponds exactly or substantially
to a count.
One comment suggested that the proposed requirement of 1.609(b)(3)
may be unduly burdensome in multi-count interferences if it requires an
examiner to explain not only why an involved claim corresponds to one
count, but also why that claim does not correspond to each other count.
Another comment, apparently construing the proposed language in the same
way, suggested that the requirement could be made clearer by modifying the
proposed language to read, "why each claim designated as not corresponding
to each (or the) count is not directed to the same patentable invention as
the count." To make it clear that such a requirement is not intended, the
proposed amendment is withdrawn and paragraph (b)(3) is instead revised to
read, "why each claim designated as not corresponding to any count is not
directed to the same patentable invention as any count." Under
1.609(b)(3), as adopted, the examiner's statement need not explain why a
claim that is designated as corresponding to one count is not directed to
the same patentable invention as another count in the interference.
One comment suggested that interferences involving patentees who are
incontestably junior could be shortened by amending the rules to require a
junior party patentee, prior to the preliminary motion period, to make a
prima facie case of priority of the type currently required of junior
party applicants by 1.608. The suggestion is outside the scope of the
present rulemaking and is not being adopted, but may be considered in a
future notice of proposed rulemaking.
One comment suggested that 1.609(b)(1) and 1.611(c)(6) also be
revised to require that the examiner and the declaration notice explain,
when there will be more than one count, why each count is patentably
distinct from the other counts. The suggestion is being adopted.
Section 1.610(a) is revised by deleting the language "a panel
consisting of at least three members of" as superfluous and by deleting
the reference to 1.640(c), which is revised to allow a request for
reconsideration under 1.640(c) to be decided by an individual
administrative patent judge rather than by the Board. Section 1.610(b) is
also revised by deleting "Unless otherwise provided in this section," as
unnecessary in light of the amendment to paragraph (a).
One comment suggested that 1.610(a) be revised to provide that an
interference is handled throughout, including final hearing, by a single
administrative patent judge, thereby avoiding the delays that occur when
an issue is deferred to final hearing for decision by a three-member
panel. The comment also suggested that 1.610(b) be revised to provide
that, at the discretion of the administrative patent judge, a panel
consisting of two or more administrative patent judges may sit at final
hearing (as well as deciding interlocutory orders). The suggestions have
not been adopted. First, the suggestions are outside the scope of the
present rulemaking. Second, the suggestions could not be implemented
without amendment of 35 U.S.C. 7(b), which requires that an interference
must be decided by at least three members of the Board.
One comment suggested that the second sentence of 1.610(c) ("Times
for taking action shall be set, and the administrative patent judge shall
exercise control over the interference such that the pendency of the
interference before the Board does not normally exceed two years.") be
removed as wishful thinking that only confuses district court judges
confronted with a motion to stay a civil action pending the outcome of an
interference. The suggestion is not being adopted. The two-year period,
while not always attainable, is nevertheless believed to be realistic.
The Notice of Proposed Rulemaking proposed amending 1.611 by
redesignating paragraph (c)(8) as paragraph (c)(9) and adding a new
paragraph (c)(8) requiring that a notice of declaration of interference
state "[w]hy each claim designated as corresponding to a count is directed
to the same patentable invention as the count and why each claim
designated as not corresponding to a count is not directed to the same
patentable invention as the count." For the reasons given above in the
discussion of 1.609(b)(3), the proposed language is changed to read,
"[t]he examiner's explanation as to why each claim designated as
corresponding to a count is directed to the same patentable invention as
the count and why each claim designated as not corresponding to any count
is not directed to the same patentable invention as any count." The
examiner's explanation should assist the parties in deciding whether to
move to have claims designated as corresponding or not corresponding to
the count. Normally, parties can expect that a copy of the examiner's
explanation will accompany the notice declaring the interference. It
should be understood that in declaring the interference, the
administrative patent judge is neither agreeing nor disagreeing with the
examiner's explanation and that the explanation is not binding on the
administrative patent judge or the Board in further proceedings in the
interference. As proposed in the Notice of Proposed Rulemaking, the first
word in each of paragraphs (d)(2) and (d)(3) is also capitalized.
One comment suggested deleting ", oppositions to the motions, and
replies to the motions" from 1.611(d)(3) as surplusage. The suggestion
is being adopted. In addition, paragraphs (d)(1), (d)(2) and (d)(3) are
revised to be separately indented under paragraph (d).
Paragraph (a) of 1.612 is revised to change "opposing party's" to
"opponent's" and to add a sentence referring to 1.11(e) concerning
public access to interference files. One comment suggested amending
1.612(a) to provide for automatic access to an application referred to in
an opponent's involved case rather than requiring a motion for access
under 1.635, as under the current rule. The suggestion, which is
outside the scope of the present rulemaking, is not being adopted.
Regarding 1.613, one comment suggested that paragraph (c) be revised
to give an administrative patent judge the authority to decide
disqualification questions rather than requiring such questions to be
referred to the Commissioner. Under current practice, the authority to
decide motions for disqualification of counsel in cases before the Board
of Patent Appeals and Interference has been delegated by the Commissioner
to the Chief Administrative Patent Judge. Administratively, it is more
appropriate that authority to decide disqualification matters be capable
of being delegated to specific individuals rather than being assigned to
administrative patent judges generally through a rule. The comment also
suggested that paragraph (d) be revised to clarify whether "attorney or
agent of record" includes an attorney or agent who is merely "of counsel."
The term "attorney or agent of record" in the interference rules should be
construed in the manner it is defined in 37 CFR 1.34(b). The rules do not
recognize, or use, the term "of counsel." Accordingly, the suggestions are
not being adopted. Furthermore, each suggestion is outside the scope of
the present rulemaking.
Paragraph (a) of 1.614 is clarified, as proposed in the Notice of
Proposed Rulemaking, by changing "the Board shall assume jurisdiction" to
"the Board acquires jurisdiction." One comment suggested amending
1.614(c) ("An administrative patent judge, where appropriate, may for a
limited purpose restore jurisdiction to the examiner over any application
involved in the interference.") by deleting the current language ", when
appropriate," as surplusage in view of "may." The suggestion is being
adopted.
In addition to amending 1.616 to authorize an award of compensatory
attorney fees and expenses in appropriate circumstances, as discussed
above, current paragraph (b), which is redesignated as paragraph (a)(2),
is revised to permit a party to be sanctioned for failing to comply with
the rules or an order by entering an order precluding the party from
filing "a paper." Current paragraph (b) permits entry of an order
precluding the filing only of a motion or a preliminary statement. The
term "paper" will be given a broad construction, and includes a motion, a
preliminary motion, a preliminary statement, evidence in the form of
documents, a brief, or any other paper.
Section 1.617(b) is revised, as proposed, to authorize a party against
whom a 1.617(a) order to show cause has been issued to respond with an
appropriate preliminary motion under 1.633(c), (f) or (g). The reason
is that a preliminary motion under 1.633(c) to redefine the
interference, under 1.633(f) for benefit of the filing date of an
earlier application or under 1.633(g) attacking the benefit accorded a
patentee may be appropriate where the count set forth in the notice
declaring the interference is not the same as the count proposed in the
applicant's showing under 1.608(b). A preliminary motion under
1.633(f) or (g) may also be appropriate where the count set forth in the
notice declaring the interference is the same as the count proposed in the
applicant's showing under 1.608(b), but the notice either fails to
accord the applicant the benefit of the filing date of an earlier
application whose benefit was requested in the 1.608(b) showing or
accords the patentee the benefit of the filing date of an earlier
application whose benefit the 1.608(b) showing argued should not be
accorded the patentee.
One comment suggested that 1.617(b) be revised to state that a
change of counsel is not "good cause" for presenting additional evidence
in response to a 1.617(a) show cause order, noting the similar
amendment proposed in the Notice of Proposed Rulemaking for 1.655(b).
The suggestion is not being adopted. Moreover, the statement that a change
of attorney is not generally good cause is not being added to 1.655(b)
as proposed. Upon reflection, it is better to leave the term "good cause"
to be decided on a case-by-case basis. The proposed amendments to the
rules to state that a change of attorney is generally not good cause for
considering an issue belatedly raised by a new attorney is generally
correct. In fact, recent experience shows that parties often retain new
counsel after they find that "they are in trouble in the interference."
Retaining new counsel midway through the case is almost never a reason to
subject the opponent to starting over again. On the other hand, the rules
use the term "good cause" in various places and PTO does not want to
incorrectly give the impression that change of attorney is not good cause
only when specifically stated in a rule which uses the phrase "good
cause." Nor does PTO want to have a per se rule which says that a change
of attorney cannot be good cause in any instance, although it would be
rare for a change of attorney to be good cause.
One comment suggested that the second sentence of 1.617(d) be
revised to indicate that any statement filed by an opponent may set forth
views as to why any (c), (f) or (g) motion filed by the applicant should
be denied. The suggestion is not being adopted. The first sentence of
1.617(d) as revised authorizes an opponent to file an opposition to any
(c), (f) or (g) motion filed by the applicant, which opposition should
include views as to why any (c), (f) or (g) motion filed by the applicant
should be denied.
Another comment suggested that 1.617(d), which currently prohibits
an opponent from requesting a hearing, be revised to permit such a request
on the ground that a hearing is the opponent's best chance to pretermit
the whole interference process. The suggestion, which is outside the scope
of the present rulemaking, is not being adopted.
The Notice of Proposed Rulemaking proposed amending the first sentence
of 1.618(a), which currently reads "The Patent and Trademark Office
shall return to a party any paper presented by the party when the filing
of the paper is unauthorized by, or not in compliance with the
requirements of, this subpart" to read: "An administrative patent judge or
the Board shall enter an order directing the return to a party of any
paper presented by the party when the filing of the paper is not
authorized by, or is not in compliance with the requirements of, this
subpart." The Notice of Proposed Rulemaking also proposed amending the
second sentence of paragraph (a), which currently states that any paper
returned "will not thereafter be considered by the Patent and Trademark
Office in the interference," by deleting "by the Patent and Trademark
Office." One comment questioned why the phrase "by the Patent and
Trademark Office" is proposed to be removed. The reason is that the phrase
is superfluous. Another comment questioned who is being ordered to return
the paper and suggested that 1.618(a) be revised to simply provide that
the administrative patent judge shall return the unauthorized papers, with
the understanding that it is the administrative patent judge's secretary
who actually mails orders, opinions, etc. The suggestion is being adopted,
but with the rule stating that the paper shall be returned by an
administrative patent judge or the Board. Although not proposed in the
Notice of Proposed Rulemaking, the last sentence of 1.618(a), which
states that a party may be permitted to file a corrected paper under such
conditions as may be deemed appropriate by an administrative patent judge,
is revised to also allow the Board to set such conditions.
One comment suggested an amendment to 1.622(a) to clarify that the
inventors named in the preliminary statement do not have to be all of the
inventors named in the party's case in interference, citing Larson v.
Johenning, 17 USPQ2d 1610 (Bd. Pat. App. & Int. 1990). The comment
alternatively suggested dropping preliminary statements altogether on the
grounds that they are (a) useless and (b) a snare and a delusion. These
suggestions are outside the scope of the present rulemaking and are not
being adopted.
Section 1.625(a) is revised, as proposed, by deleting "the invention
was made in the United States or abroad and" as surplusage.
Section 1.626 is revised, as proposed, by revising "earlier application
filed in the United States or abroad" to read "earlier filed application."
The same change is made in 1.630, 1.633(f), 1.633(g),
1.637(c)(1)(vi), 1.637(e)(1)(viii), 1.637(e)(2)(vii) and 1.637(h)(4).
Section 1.628(a) is revised, as proposed, to change "ends of justice"
to "interest of justice" to be consistent with the language used in
1.628(a) and 1.687(c), since a single standard is intended. The "interest
of justice" requirement will be applied only to corrected preliminary
statements that are filed on or after the due date for serving preliminary
statements. Where the moving party has not yet seen the opponent's
statement, an opponent normally will not be prejudiced by the filing of a
corrected statement. One comment raised the following question:
What is the standard if the motion is filed before the time set by the APJ
for service of preliminary motions [sic, statements]? If, as implied by
the comments, amendments prior to that date can be made freely, why not
simply provide that the preliminary statements (if they are to be retained
at all) are to be filed and served on the date set by the APJ pursuant to
37 CFR 1.628(a)? Particularly where it is obvious that the count(s) is or
are going to be changed anyway, all of the parties' work preparing and the
PTO's work in processing the original preliminary statement is wasted
effort anyway.
(Original emphasis; footnote omitted.) The standard for a motion to amend
that is filed before service of preliminary statements is that it be
accompanied by an affidavit stating when the error occurred and be filed
"as soon as practical after discovery of the error." The suggestion that
preliminary statements be filed and served on the date set by the
administrative patent judge pursuant to 37 CFR 1.628(a) is not understood,
since that rule does not provide for setting such a date. Instead, the
provisions relating to filing and serving preliminary statements appear in
1.621(a) and 1.631, respectively. To the extent the comment is
suggesting that these provisions be revised, the suggestion is outside the
scope of the present rulemaking and is not being adopted.
As proposed in the Notice of Proposed Rulemaking, paragraphs (a),
(c)(1) and (d) of 1.629 are revised to make each consistent with the
amendment of the definition of "effective filing date" in 1.601(g). One
comment suggested that in 1.629(a), second sentence, the comma between
"statement" and "as," which was proposed to be removed, be retained for
clarity. As suggested, the comma is retained.
The first sentence of 1.631(a) is revised by removing "by the
examiner-in-chief" (first occurrence) as superfluous. The Notice of
Proposed Rulemaking incorrectly proposed to remove the second occurrence
of this phrase. Thus revised and with the remaining occurrences of
"examiner-in-chief" changed to "administrative patent judge," the first
sentence of 1.631(a), as it was proposed to be revised, reads as
follows: "Unless otherwise ordered by an administrative patent judge,
concurrently with entry of a decision on preliminary motions filed under
1.633, any preliminary statement filed under 1.621(a) shall be opened
to inspection by the senior party and any junior party who filed a
preliminary statement." (The proposed language set forth in the Notice of
Proposed Rulemaking inadvertently omitted the phrase, "concurrently with
entry of a decision on preliminary motions filed under 1.633," which
appears in the current rule and was not proposed to be removed.) In order
to make it clear that the phrase "concurrently with entry of a decision on
preliminary motions filed under 1.633" modifies the succeeding phrase
rather than the preceding phrase, the second comma is removed, so that the
first sentence of 1.631(a) as revised reads as follows: "Unless
otherwise ordered by an administrative patent judge, concurrently with
entry of a decision on preliminary motions filed under 1.633 any
preliminary statement filed under 1.621(a) shall be opened to
inspection by the senior party and any junior party who filed a
preliminary statement."
Section 1.632 is revised, as proposed, to more precisely state that a
notice of intent to argue abandonment, suppression or concealment must be
filed "within ten days after," rather than "within ten days of," the close
of the testimony-in-chief of the opponent. One comment suggested that
1.632 be further revised to (1) state what happens next and (2) provide a
period for shifting the burden of proof. The suggestion is outside the
scope of the present rulemaking, and is not being adopted.
Several comments were received with respect to 1.633 in general. Two
of the comments noted that 1.642, which presumably was intended to
allow an administrative patent judge to add a new party to an
interference, has also been used to "request" addition of an application
or patent of an already involved party, citing Theeuwes v. Bogentoft, 2
USPQ2d 1378 (Comm'r Pat. 1986). The two comments suggested that 1.633
be revised to specifically provide for a motion to request addition of an
application or patent of a party in order to make it clear that the
standards for preliminary motions apply. Two other comments suggested
amending 1.633 and 1.637(h) to authorize a motion to add a claim to a
party's application or an opponent's application (including a reissue
application) to be designated as not corresponding to the count, thereby
removing what is alleged to be one of the major drawbacks of the current
rules. Still another comment suggested that in order to avoid the
inefficiencies that result when prior art surfaces for the first time in a
motion under 1.633(a), which may render moot other preliminary motions,
the parties should be required to file and serve all relevant prior art of
which they are aware prior to the preliminary motion period. While some of
the suggestions have merit, all are outside the scope of the present
rulemaking and are not being adopted.
As proposed in the Notice of Proposed Rulemaking, paragraph (a) of
1.633 is revised in several respects. The first is to specify that a claim
shall be construed in light of the specification of the application or
patent in which it appears. The amendment clarifies an ambiguity in PTO
interference practice. Previously, the Federal Circuit had interpreted
1.633 to require an ambiguous claim to be interpreted in light of the
patent from which it was copied. In re Spina, 975 F.2d 854, 856, 24 USPQ2d
1142, 1144 (Fed. Cir. 1992). While this interpretation was a possible
interpretation of previous 1.633, PTO had intended that a copied claim
be interpreted in light of the specification of the application or patent
in which it appears. The rule, as adopted, will make ex parte and inter
partes practice the same. A claim that has been added to a pending
application for any purpose, including to provoke an interference, will be
given the broadest reasonable interpretation consistent with the
disclosure of the application to which it is added, as are claims which
are added during ex parte prosecution. As explained In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989):
[d]uring patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined
with that meaning, in order to achieve a complete exploration of the
applicant's invention and its relation to the prior art. See In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before the
application is granted, there is no reason to read into the claim the
limitations of the specification). The reason is simply that during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.
Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436,
1438 (Fed. Cir. 1987); In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934,
936 (Fed. Cir. 1984).
If a party believes an opponent's claim corresponding to the count is
ambiguous when construed in light of the opponent's disclosure, the party
should move under 1.633(a) for judgment against the claim on the ground
of unpatentability under the second paragraph of 35 U.S.C. 112. In
paragraph (a), "by reference to the prior art of record" is removed as
unnecessary. Paragraphs (a)(1) and (a)(2) of 1.633 are revised by
deleting some unnecessary language from each paragraph and by changing
"derivation" to "Derivation" in paragraph (a)(2). One comment suggested
changing "corresponding to a count" in 1.633(a) to "designated to
correspond to a count" for consistency with 1.601(f), as amended. The
suggestion is being adopted.
Although not proposed in the Notice of Proposed Rulemaking, 1.633(a)
is also revised by adding a sentence requiring that the motion separately
address each claim alleged to be unpatentable. For example, where a
plurality of claims are alleged to be unpatentable over prior art, the
motion must compare each of those claims to the prior art. As a result, a
party would not be allowed to allege that all of the opponent's claims
that correspond to the count are unpatentable simply because the
opponent's claim that corresponds exactly to the count is anticipated by,
or would have been obvious in view of, the prior art. At the time an
interference is declared, it may appear (and the parties may then believe)
that all claims designated as corresponding to a count are directed to the
same patentable invention. Once additional prior art is discovered in the
preliminary motion period, however, what was the case when the
interference was declared may no longer be the case. Hence, a preliminary
motion under 1.633(a) alleging unpatentability over the prior art
should address each claim believed to be unpatentable. In the case where a
party has two claims, e.g., a genus and a species, if a preliminary motion
under 1.633(a) is filed by an opponent which argues that only the genus
is unpatentable, the party will need only respond to the argument relative
to the genus. Thus, to the extent there ever was a perception that all
claims designated to correspond to a count stand or fall with the
"patentability of the count," the rule as adopted attempts to overcome
that perception. There is no presumption in an interference that because
one claim designated to correspond to a count is unpatentable over the
prior art (35 U.S.C. 102(a), (b) and (e)), that all claims are
unpatentable over the same prior art. On the other hand, in deciding
priority of invention, all claims designated to correspond to a count at
the time priority is decided will stand or fall together on the issue of
priority.
Section 1.633(b), which concerns motions for judgment on the ground of
no interference-in-fact, was proposed to be revised to state that it is
possible for claims of opponents presented in "means plus function" format
to define separate patentable inventions even though the claims of the
opponents contain the same literal wording. The reason is that the sixth
paragraph of 35 U.S.C. 112, which is applicable to "means plus function"
limitations in application claims and patent claims, provides that such
limitations are to be construed as covering the corresponding structure
disclosed in the associated application or patent and equivalents thereof.
In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994). The
proposed change has been adopted, but with the proposed term "opponents"
being replaced by "different parties." One comment suggested that in
addition to Donaldson, support for the amendment can be found in Blackmore
v. Hall, 1905 Dec. Comm'r Pat. 561 (Comm'r Pat. 1905), and the withdrawn
opinion in Rion v. Ault, 455 F.2d 570, 172 USPQ 588 (1972) (Rion I),
modified, 482 F.2d 948 (CCPA 1973) (Rion II), which the comment says stand
for a proposition even broader than the one set forth in the proposed
amendment. Inasmuch as Blackmore predates the statutory language in
question and Rion I was withdrawn by the CCPA, the suggestion is not being
adopted.
Paragraph (i) of 1.633, which in its current form authorizes a party
who opposes a preliminary motion under 1.633(a), (b) or (g) to file a
preliminary motion under 1.633(c) or (d), is revised to additionally
authorize a party-patentee to file a preliminary motion under 1.633(h)
to add to the interference an application for reissue of the party's
involved patent. Because a reissue application can include an amended or
new claim to be designated as corresponding to a count, paragraph (i) as
revised gives a patentee an option similar to that afforded in the same
situation to a party-applicant, who can file a preliminary motion under
1.633(c)(2) to amend a claim in, or add a claim to, its involved
application to be designated as corresponding to a count. One comment
suggested further amending 1.633(i) to authorize a 1.633(c)(1)
motion in response to an opponent's 1.633(c)(1) motion. The suggestion,
which is outside the scope of the present rulemaking, is not being adopted.
One comment suggested that 1.636, as proposed to be revised, which
requires that a motion under 1.634 to correct inventorship of a patent
or application "be diligently filed after an error is discovered," is
ultra vires with respect to patents. The suggestion is outside the scope
of the present rulemaking and is not being adopted. The suggestion will be
considered in a future rulemaking.
The Notice of Proposed Rulemaking proposed amending paragraph (a) of
1.637 to incorporate the essence of a notice of August 10, 1990, published
as "Interferences - Preliminary Motions for Judgment," 1118 Off. Gaz. Pat.
Office 19 (Sept. 11, 1990). Specifically, the Notice of Proposed
Rulemaking proposed adding the following language at the end of the
paragraph:
If a party files a motion for judgment under 1.633(a) against an
opponent based on the ground of unpatentability over prior art, and the
dates of the cited prior art are such that the prior art appears to be
applicable to the party, it will be presumed, without regard to the dates
alleged in the preliminary statement of the party, that the cited prior
art is applicable to the party unless there is included with the motion an
explanation, and evidence if appropriate, as to why the prior art does not
apply to the party. If the motion fails to include a sufficient
explanation or evidence, the party will not be permitted to rely on any
such explanation or evidence in response to or in any subsequent action in
the interference.
Two comments suggested that the proposed last sentence is imprecise in
that although it is presumably intended to preclude a party whose motion
an administrative patent judge has held to include an insufficient
explanation or evidence from later supplementing the explanation or
evidence offered in the motion, the sentence is broad enough to be
construed as also precluding the party from relying on the arguments and
evidence that were offered in the motion. Accordingly, one of the comments
suggested that the proposed last sentence be replaced by the following two
sentences: "If the administrative patent judge holds that the motion fails
to include a sufficient explanation or evidence as to why the cited prior
art is not applicable to the party, the party will not be permitted to
supplement any such explanation or evidence in any subsequent action in
the interference. However, the party is not precluded from subsequently
arguing that the administrative patent judge's decision was incorrect."
The substance of the suggestions is believed to be correct, but the
suggested language will not be adopted. Instead, 1.637(a) is revised to
read:
A party filing a motion has the burden of proof to show that it is
entitled to the relief sought in the motion. Each motion shall include a
statement of the precise relief requested, a statement of the material
facts in support of the motion, in numbered paragraphs, and a full
statement of the reasons why the relief requested should be granted. If a
party files a motion for judgment under 1.633(a) against an opponent
based on the ground of unpatentability over prior art, and the dates of
the cited prior art are such that the prior art appears to be applicable
to the party, it will be presumed, without regard to the dates alleged in
the preliminary statement of the party, that the cited prior art is
applicable to the party unless there is included with the motion an
explanation, and evidence if appropriate, as to why the prior art does not
apply to the party.
Rather than specify a particular sanction for failure of a party to comply
with 1.637(a), as adopted, it is more appropriate to rely on
application of the provisions of 1.618. A party who fails to timely
include the explanation and/or evidence required by the rule runs a
considerable risk that an explanation and/or evidence presented at a
future time will be returned as untimely. See 1.618(a). Papers which
are returned are not considered part of the record.
Section 1.637(a) was proposed to be revised to state that the statement
of material facts be "preferably in numbered paragraphs." One comment
suggested that numbered paragraphs be a requirement, because it would make
matters easier for opponents as well as administrative patent judges. The
suggestion is being adopted. Ordinarily, it will be expected that each
numbered paragraph will recite a single fact which can easily be
"admitted" or "denied." The use of numbered paragraphs should make the
decision-making process of the administrative patent judge easier.
Another comment suggested that 1.637(a) be revised to require that
motions, oppositions and replies be numbered sequentially, so that party
X's opposition No. 1 will be its opposition to party Y's motion No. 1,
etc. The suggestion, while having considerable merit, is outside the scope
of the present rulemaking, and is not being adopted. The suggestion will
be made the subject of a future rulemaking effort. In papers filed in PTO
in interference cases, there is an increasing tendency for parties to use
"long" titles, e.g., PARTY SMITH'S PRELIMINARY MOTION FOR DECLARATION OF
PARTY OPPONENT RAYMOND'S CLAIMS TO BE UNPATENTABLE UNDER 37 CFR
1.633(a). The opponent then responds with an opposition styled PARTY
RAYMOND'S OPPOSITION TO PARTY SMITH'S PRELIMINARY MOTION FOR DECLARATION
OF PARTY OPPONENT RAYMOND'S CLAIMS UNPATENTABLE UNDER 37 CFR 1.633(a).
The reply then tends to be PARTY SMITH'S REPLY TO PARTY RAYMOND'S
OPPOSITION TO PARTY SMITH'S PRELIMINARY MOTION FOR DECLARATION OF PARTY
OPPONENT RAYMOND'S CLAIMS UNPATENTABLE UNDER 37 CFR 1.633(a). It should
be apparent that the styling of the paper loses its significance.
Accordingly, pending a further rulemaking effort parties in interference
can simplify matters by voluntarily adopting the essence of the suggestion
by replacing the styling of the three papers identified above with the
following: (1) SMITH'S PRELIMINARY MOTION NO. 1; (2) RAYMOND'S OPPOSITION
NO. 1; and (3) SMITH'S REPLY NO. 1. If numerous motions are filed, then
sequential numbers can be used. In a two-party interference, if the
parties can agree, one can use numbers and the other letters. In any
event, it would be of considerable help to the Board if the style of a
paper does not exceed a single line.
As proposed in the Notice of Proposed Rulemaking, 1.637(a) is also
revised by changing "Every" in the second sentence to "Each."
Section 1.637(c)(1) sets forth the requirements for a preliminary
motion to add or substitute a proposed count. The Notice of Proposed
Rulemaking proposed amending paragraph (c)(1)(v) in two respects: (1) to
require a moving party to show that the proposed count is patentable over
the prior art; and (2) to specify that a proposed substitute count need
only be shown to be patentably distinct from the other counts proposed to
remain in the interference, since a proposed substitute count need not be
patentably distinct from the count it is to replace. Several comments
opposed amending 1.637(c)(1)(v) to require a party to show that a
proposed new count is patentable over the prior art, stating, inter alia,
that the date of a count for purposes of determining what is available as
prior art is not clear. The statements in the comment are well taken for
the reasons given above in the discussion of 1.601(f). Accordingly, the
proposal to amend paragraph (c)(1)(v) to require the moving party to show
the patentability of a proposed new count over the prior art is withdrawn.
Paragraph (c)(1)(v) is revised only to require that a proposed substitute
count must be shown to be patentably distinct from the other counts
proposed to remain in the interference.
As proposed in the Notice of Proposed Rulemaking, 1.637(c)(1)(vi) is
revised to clarify that a preliminary motion under 1.633(c)(1) need not
be accompanied by a preliminary motion for benefit under 1.633(f)
unless the moving party seeks benefit with respect to the proposed count
In order to eliminate the need for an opponent to respond to a
1.633(c)(1) motion with a preliminary motion under 1.633(f) claiming
benefit, which has the effect of delaying a decision on the 1.633(c)(1)
motion, the Notice of Proposed Rulemaking also proposed amending 1.637
by adding a new paragraph (c)(1)(vii) reading as follows:
If an opponent is accorded the benefit of the filing date of an earlier
filed application in the notice of declaration of the interference, show
why the opponent is not also entitled to benefit of the earlier filed
application with respect to the proposed count. Otherwise, the opponent
will be presumed to be entitled to the benefit of the earlier filed
application with respect to the proposed count.
One comment suggested clarifying the first sentence by inserting "and if
the movant desires a holding that its opponent is not entitled to the
benefit of the filing date of the earlier filed application for the
proposed count" after "interference." The same change was suggested for
proposed new 1.637(e)(1)(ix) and 1.637(e)(2)(viii), which are
identical to 1.637(c)(1)(vii). The suggestion is not being adopted. The
rule, as amended, states that a moving party must take a positive action
if it believes an opponent is not entitled to benefit for a new count.
Failure to take the positive action creates a presumption. The rule, as
amended, also states the consequences of not taking a positive action.
Taking the positive action is the manner to procedurally attempt to
overcome the presumption. Hence, the suggested "clarification" is not
necessary.
As proposed, minor housekeeping amendments are made to
1.637(c)(2)(ii) and (iii) for clarification, and 1.637(c)(2)(iv) and
1.637(c)(3)(iii), which relate to 1.633(f) motions for benefit, are
removed and reserved as unnecessary, since motions under 1.633(c)(2)
and (3) do not affect the count. Section 1.637(c)(3)(ii), which applies to
motions under 1.633(c)(3) to designate a claim as corresponding to a
count, is revised to have claims compared to claims, as is the case in
1.633(c)(4)(ii), which applies to motions filed under 1.633(c)(4) to
designate a claim as not corresponding to a count. The amendment avoids
the need to compare claims to counts.
Section 1.637(c)(4)(ii) was proposed to be revised to require that a
party moving to designate a claim as not corresponding to a count must
show that the claim could not serve as the basis for a preliminary motion
under 1.633(c)(1) to add a new count. As proposed to be, the rule
precludes a party from moving to designate one of its claims as not
corresponding to the count where an opponent's disclosure would support a
similar claim. The supporting rationale is that the party could file a
1.633(c)(1) preliminary motion proposing a claim to be added to the
opponent's application and suggesting that the proposed claim and the
party's claim in question be designated as corresponding to a proposed new
count. One comment argues that the proposed amendment would unduly burden
a party by requiring it to propose claims to be added to an opponent's
application, whereas under the current rule the opponent, who has the
option to propose such a count and add such a claim in a motion under
1.633(c)(1), runs the risk of interference estoppel by not pursuing an
interference on common patentable subject matter. Thus, the comment notes
that the effect of the proposed requirement would be to require a party to
prevent its opponent from possibly getting itself into an estoppel
situation. The point of the comment is well taken. Accordingly, the
proposal to amend 1.637(c)(4) in the manner criticized by the comment
hereby withdrawn.
As proposed in the Notice of Proposed Rulemaking, 1.637(d)(4), which
authorizes a party to file a motion for benefit together with a motion
under 1.633(d), is removed and reserved as unnecessary. Motions filed
under 1.633(d) do not affect the count. Sections 1.637(e)(1)(viii) and
(e)(2)(vii) are revised to make it clear that a preliminary motion under
1.633(e)(1) or (e)(2) need not be accompanied by a preliminary motion
for benefit under 1.633(f) unless the moving party seeks benefit with
respect to the proposed count. As proposed, 1.637(e)(1)(ix) and
(e)(2)(viii) are added specifying that where a party is accorded the
benefit of the filing date of an earlier filed application in the notice
of declaration of the interference, that party is presumed to be entitled
to the benefit of the earlier filed application with respect to the
proposed count.
Section 1.637(f)(2) is revised, as proposed, by changing "abroad" to
"in a foreign country" and removing both occurrences of "filed abroad" as
superfluous.
The Notice of Proposed Rulemaking proposed to amend 1.637(h) by
adding a sentence stating that "[a] patentee may not move under
1.633(h) to add a reissue application that includes new or amended claims
to be designated as not corresponding to a count." The purpose of the
proposal was to make clear that a preliminary motion to add a reissue
application that includes a new or amended claim to be designated as not
corresponding to a count will be given the same treatment as a preliminary
motion proposing to amend a claim in, or add a new claim to, an involved
application to be designated as not corresponding to the count, i.e., the
preliminary motion will be dismissed. See L'Esperance v. Nishimoto, 18
USPQ2d 1534, 1537 (Bd. Pat. App. & Int. 1991) (interference rules do not
authorize a motion by party-applicant to amend or add a claim to be
designated as not corresponding to the count). Several comments were
received in opposition to this proposal, one of which stated:
As understood, this would prevent moving to add any reissue application to
an interference if even a single claim of that reissue was independently
patentable, i.e., properly not subject to the interference, even if some
or most of the other claims were the same as, or patentably indistinct
from, claims already subject to the interference.
It is not seen why patent owners should be deprived of their statutory and
normal ex parte right to have and maintain reissue applications with
appropriate claims to inventions disclosed in their specifications, simply
to meet a new interference rule requirement that appears to be solely for
administrative convenience for the interference proceeding.
The statement in the comment is justified. The rule as proposed to be
revised would unfairly preclude a patentee whose involved claims are all
held to be unpatentable during the interference (e.g., under 35 U.S.C.
112, first paragraph, for lack of written description support) from adding
a reissue application that contains new or amended claims to be designated
as corresponding to a count simply because the reissue application also
happens to include a new or amended claim to be designated as not
corresponding to a count. Accordingly, the proposed amendment to paragraph
(h) is hereby withdrawn.
As proposed in the Notice of Proposed Rulemaking, 1.638(b) is
revised by changing "a reply" to "any reply."
One comment suggested amending 1.638(a) to take into account that an
opposition may be based on material facts that are not set forth in the
motion, by changing "(2) include an argument why the relief requested in
the motion should be denied" to "(2) set forth in numbered paragraphs any
material facts in support of the opposition not set forth in the motion
and include an argument why the relief requested in the motion should be
denied." A similar amendment was suggested for paragraph (b) as to
replies. The suggestions, which are outside the scope of the present
rulemaking, are not being adopted. The suggestions would appear to have
considerable merit and will be made the subject of a future rulemaking
effort.
Paragraph (a) of 1.639, which currently requires that a motion,
opposition or reply be accompanied by the evidence on which a party
intends to rely in support of or in opposition to a motion, is revised as
proposed in the Notice of Proposed Rulemaking to be consistent with
paragraphs (c) through (g), which permit some types of evidence to be
filed after filing of the motion, opposition or reply. In addition,
paragraph (d)(1) is revised, as proposed, by changing "call" to "use."
One comment expressed concern about 1.639(a) to the extent it is
construed as requiring that all available evidence in support of a motion,
opposition or reply must be filed and served with the motion, opposition
or reply, which is presumed to be a reference to the construction given
1.639 in Irikura v. Petersen, 18 USPQ2d 1362, 1368 (Bd. Pat. App. & Int.
1990):
A good faith effort must be made to submit evidence to support a
preliminary motion or opposition when the evidence is available. Orikasa
v. Oonishi, [10 USPQ2d 1996, 2000 n.12 (Comm'r Pat. 1989)]. Note the
commentary [Patent Interference Proceedings; Final Rule,] 49 F.R. [48416],
at 48442 (Dec. 12, 1984), 1050 O.G. [385], at 411 (Jan. 29, 1985]),
[corrections] 50 F.R. 23122 (May 31, 1985), 1059 O.G. 27 (Oct. 22, 1985).
See also Okada v. Hitotsumachi, 16 USPQ2d 1789, 1790 (Comm'r Pat. 1990).
Specifically, the comment notes that:
[t]o permit testimony beyond the evidence filed with the motion, has been
likened to "two bites of the apple". I think there is a misunderstanding
here, it is not two bites.
For example, a motion for summary judgment that is denied, [sic] does not
preclude the party from proving his case at trial with additional
evidence. Two bites comes if, after decision on motion, a party tries to
bring a second motion with additional evidence or argument, or if after
trial and judgment, the loser wants to introduce more evidence that was
available all along. I see nothing wrong with an interference party
submitting the prior art and arguing that "any fool can plainly see" the
subject matter of the count is obvious. That's a sort of motion for
summary judgment on the issue. If the APJ does not perceive the
obviousness to be apparent, he or she should invite the parties to present
additional testimony on obviousness during the testimony time, not block
it. Obviously, the same reasoning would apply to enablement, operability,
same patentable invention, etc.
(Original emphasis.) The suggestion that the rules be revised to permit a
party to later submit evidence that it could have submitted in support of
or in opposition to a preliminary motion is declined for the reasons given
in Hanagan v. Kimura, 16 USPQ2d 1791, 1793 (Comm'r Pat. 1990) ("the new
interference rules were not intended to permit routine requests to take
testimony in lieu of presenting timely affidavits and other available
proof of material [facts] with the motion"). See also Staehelin v. Secher,
24 USPQ2d 1513, 1515 n.3 (Bd. Pat. App. & Int. 1992).
Another comment suggested amending the rules to permit the filing of a
motion for "summary judgment" shortly (e.g., within two months) after the
interference is declared on a matter that may be dispositive of the
interference, such as the absence of an interference-in-fact,
unpatentability of all of the parties' claims that correspond to the count
or unpatentability of all of the opponent's claims that correspond to the
count, with testimony being restricted to affidavits and
counter-affidavits. Compare Fed. R. Civ. P. 56. The comment continues that
if the motion is denied by the administrative patent judge, there would be
no right of appeal; if the motion is granted, the opponent could appeal to
a three-member panel of the board and, if the panel concurs with the
decision of the administrative patent judge, the opponent could seek
judicial review. To the extent the suggestion is seeking a rule
authorizing motions for summary judgment like those provided for in Fed.
R. Civ. P. 56, the suggestion is outside the scope of the present
rulemaking and is therefore not being adopted. In a future rulemaking
effort, PTO will consider whether there is an advantage to be gained by
some form of "summary judgment" motion.
The Notice of Proposed Rulemaking proposed to amend 1.640(b) in
several respects. First, it was proposed to add a first sentence providing
that "[u]nless an administrative patent judge or the Board is of the
opinion that a decision on a preliminary motion would materially advance
the resolution of the interference, decision on a preliminary motion shall
be deferred to final hearing." One comment indicated that requiring
deferral of non-dispositive motions may adversely affect settlement of
interferences:
Under the current procedure, where most motions are initially decided, if
a party is faced with a particular decision on a non-dispositive motion,
that decision may affect the party's willingness to settle with the
opposing party, even knowing that the decision may be changed at final
hearing. For example, if a party has proposed a new count that better fits
its proofs and the motion proposing the new count is denied, the party may
be willing to request adverse judgment (e.g., in exchange for a license)
rather than try to prove invention of the original count for which its
proofs are not as good, even knowing that there is a chance that the
proposed count may be adopted at final hearing. Similarly, a party that
has succeeded in having important claims designated as not corresponding
to the count may be willing to settle on that basis, even though it may
lose certain other claims. To the extent that early decisions on
preliminary motions motivate settlement in that way, the proposed
amendments will decrease the settlement rate of interferences, adding to
the workload of the Board and of practitioners.
While the comment can be correct in some interferences, it may not be true
in other interferences. In those interferences where decision on a
preliminary motion is likely to lead to settlement, the parties should
approach the administrative patent judge and discuss the matter. The
administrative patent judge will then be in a position to make an informed
decision on an "opinion that an earlier decision on a preliminary motion
would material advance the resolution of the interference." Amending the
rule, as proposed, will advance resolution of interferences where
settlement is not likely, while at the same time giving the parties a
means by which to inform the administrative patent judge that a decision
on a particular motion would assist the settlement process.
One comment suggested that the proposed language could be clarified by
changing "a decision" (first occurrence) to "an earlier decision" so that
the sentence reads: "Unless an administrative patent judge or the Board is
of the opinion that an earlier decision on a preliminary motion would
materially advance the resolution of the interference, decision on a
preliminary motion shall be deferred to final hearing." The suggestion is
being adopted.
Another comment stated that the second sentence of 1.640(b) as
proposed to be revised ("Motions otherwise will be decided by an
administrative patent judge.") is somewhat confusing and asks whether it
is intended to mean that if the administrative patent judge decides not to
defer a motion to final hearing, the administrative patent judge will then
decide the motion. Any possible ambiguity is avoided by changing
"otherwise" to "not deferred to final hearing."
Although not proposed in the Notice of Proposed Rulemaking, the
sentence in 1.640(b) which currently reads "[a]n administrative patent
judge may consult with an examiner in deciding motions involving a
question of patentability" is changed to "[a]n administrative patent judge
may consult with an examiner in deciding motions" to avoid any uncertainty
that the administrative patent judge is free to consult with an examiner
on any preliminary motion.
Still another comment suggested that the fourth sentence of 1.640(b)
as proposed to be revised ("An administrative patent judge may take up
motions for decision in any order and may grant or deny any motion or take
such other action which will secure the just, speedy, and inexpensive
determination of the interference.") be changed to read as follows to make
it clear that the goal of ensuring a just, speedy, and inexpensive
determination of the interference applies to the choice of order of
deciding motions: "An administrative patent judge may take up motions for
decision in any order, may grant or deny any motion, and may take such
other action which will secure the just, speedy, and inexpensive
determination of the interference." The suggestion is being adopted. The
rule is also revised to make absolutely clear that, among other things, an
administrative patent judge may dismiss a motion, e.g., when a motion does
not comply with a rule. The addition of the possibility of "dismissing" a
motion augments the sanction available under 1.618(a), i.e., return of
a paper.
One comment suggested adding a provision to 1.640(b) specifically
recognizing the authority of the administrative patent judge, for the
purpose of promoting the just, speedy and inexpensive resolution of the
interference, "to schedule a final hearing on deferred preliminary motions
prior to the time of testimony on priority, etc. See also 1.654(a)."
The suggestion, which is outside the scope of the present rulemaking, is
not being adopted. The suggestion will be considered in a future
rulemaking effort, although it should be noted that nothing in the rules
should be construed as precluding an administrative patent judge or the
Board from ordering a "final" hearing on a particular issue. Whether such
a "final hearing" is ordered is within the sound discretion of the
administrative patent judge or the Board.
As proposed in the Notice of Proposed Rulemaking, 1.640(b) is also
revised to state that "[a] matter raised by a party in support of, or in
opposition to, a motion that is deferred to final hearing will not be
entitled to consideration at final hearing unless the matter is raised in
the party's brief at final hearing." One comment questioned whether it
will be sufficient to simply incorporate the deferred motion and reply
into the brief. The answer is no. With the exception of a motion to
suppress, which may be filed as a separate paper together with a party's
brief ( 1.656(h)), and papers properly belatedly filed after the brief
has been filed, the brief must satisfy the requirements of 1.656(b)
with respect to all issues to be decided at final hearing, including the
requirement for a statement of the issue ( 1.656(b)(4)), a statement of
the relevant facts ( 1.656(b)(5)), and an argument ( 1.656(b)(6)). It
will be noted at this point, that the Board generally discourages the
practice of incorporating an argument in one paper into a second paper.
The reason is that the argument in the first paper can easily be
overlooked in considering the second paper, i.e., when an administrative
patent judge studies a motion, opposition, or reply at home only to find
that the "incorporated paper" is not available.
As proposed in the Notice of Proposed Rulemaking, 1.640(b) is
revised to state that "[i]f the administrative patent judge determines
that the interference shall proceed to final hearing on the issue of
priority or derivation, a time shall be set for each party to file a paper
identifying any decisions on motions or on matters raised sua sponte by
the administrative patent judge that the party wishes to have reviewed at
final hearing as well as identifying any deferred motions that the party
wishes to have considered at final hearing." One comment questioned why
the statement of matters to be reviewed at final hearing is limited to
final hearings on "priority or derivation." The reason is that final
hearings on priority and/or derivation are the only types of final hearing
that will be scheduled pursuant to 1.640(b). Final hearings that are
requested in response to show cause orders under 1.640(d) are set
pursuant to 1.640(e), which, as amended likewise requires statements
identifying the matters to be reviewed at final hearing.
Section 1.640(b) was also proposed to be revised by adding as the last
sentence: "Any evidence that a party wishes to have considered with
respect to the decisions and motions identified by the party or by an
opponent for consideration or review at final hearing, including any
affidavit filed by the party under 1.608 or 1.639(b), shall be served
on the opponent during the testimony-in-chief period of the party." In
order to be consistent with the terminology in the preceding sentence of
1.640(b), the phrase "decisions and motions" in the proposed last
sentence is replaced by "decisions and deferred motions." Furthermore, the
last sentence, as adopted, has been worded to takes into account the
retention and amendment of 1.671(e) to permit a party to file a notice
of intent to rely on affidavits, patents and printed publications
previously submitted under 1.639(b). Accordingly, the last sentence, as
adopted, reads: "Any evidence that a party wishes to have considered with
respect to the decisions and deferred motions identified by the party or
by an opponent for consideration or review at final hearing shall be filed
or, if appropriate, noticed under 1.671(e) during the
testimony-in-chief period of the party."
As proposed in the Notice of Proposed Rulemaking, the last sentence of
1.640(b)(1) ("After the time expires for filing any amendment and
supplemental preliminary statement, the examiner-in-chief will, if
necessary, redeclare the interference.") is changed to read: "At an
appropriate time in the interference, and when necessary, an order will be
entered redeclaring the interference." One comment requested clarification
of the meaning of "when necessary" and suggested that redeclaration should
be required when the order of parties is changed but the count remains the
same, in order to make it clear who is junior and who is senior. The
suggestion, which included no specific language for its implementation and
is outside the scope of the present rulemaking, is not being adopted. It
will be considered in a future rulemaking effort.
Section 1.640(b)(2), which currently states that a preliminary motion
filed after a decision is entered on preliminary motions under 1.633
will not be considered except as provided by 1.655(b), is revised to
state that a preliminary motion filed after the time expires for filing
preliminary motions will not be considered except as provided by
1.645(b) by changing "1.655(b)" to "1.645(b)." Section 1.645(b) relates to
consideration of belatedly filed papers in general.
The Notice of Proposed Rulemaking proposed to amend 1.640(c), which
currently requires an administrative patent judge or the Board to
specifically authorize an opposition to a request for reconsideration of a
decision by an administrative patent judge, to authorize an opponent to
file an opposition, thereby saving the administrative patent judge or the
Board the time it would otherwise take to determine whether to authorize
an opposition. An opposition is normally required before the Board will
modify the decision of an administrative patent judge. One comment
suggested that because the Board frequently dismisses or denies requests
for reconsideration without requesting an opposition, the proposed
amendment will have the effect of unnecessarily increasing costs by
encouraging the filing of oppositions that the Board may frequently find
unnecessary to consider. The point is well taken and the proposal to amend
1.640(c) to authorize oppositions to be filed without leave of the
administrative patent judge is therefore withdrawn.
As proposed in the Notice of Proposed Rulemaking, the last sentence of
1.640(c) is removed in order to authorize a single individual
administrative patent judge to decide a request for reconsideration and is
also revised to require that a request for reconsideration be filed by
hand or Express Mail. The amendment of the rule should not be construed as
limiting the authority of the Board, in the discretion of an
administrative patent judge or the Board, to decide a request for
reconsideration.
One comment suggested amending the second sentence of 1.640(c) to
permit service by next-business-day courier, arguing that hand delivery is
often impractical and Express Mail unduly difficult. The comment also
suggested that paragraph (c) be revised to allow reconsideration of a
decision on motions, which is currently limited to identifying points that
have been "misapprehended or overlooked," on the additional ground that
the decision is simply wrong on the merits, noting that decisions on
reconsideration in several interferences agreed that a decision is wrong
on the merits but refused to change it on the grounds that nothing was
overlooked or misapprehended. Both of these suggestions are outside the
scope of the present rulemaking and are not being adopted. However,
pending a future rulemaking effort, the word "served by hand" in
1.640(c) and elsewhere in the rules should be construed to include service
by next-business-day courier. In using a next-business-day courier, a
party is serving the paper by hand, the "hand" being the courier service.
Hence, service by hand will be construed to include service by any
commercial courier which performs a service essentially equivalent to the
Express Mail service provided by the U.S. Postal Service. Pending further
rulemaking, the date of service shall be the date of delivery to the
courier.
Section 1.640(d)(1), which currently states that an order to show cause
under that section may be based on a decision on a motion which is
dispositive of the interference against a party as to any count, is
revised, as proposed in the Notice of Proposed Rulemaking, to also include
decisions on dispositive matters raised sua sponte by an administrative
patent judge.
Section 1.640(e) is revised, as proposed, to incorporate the substance
of the Notice of December 8, 1986, published as "Interference Practice:
Response to Order to Show Cause Under 37 CFR 1.640," 1074 Off. Gaz. Pat.
Office 4 (Jan. 6, 1987), 1086 Off. Gaz. Pat. Office 282 (Jan. 5, 1988).
Specifically, 1.640(e), as amended, provides that where the order to
show cause was issued under 1.640(d)(1), the party may file a paper (i)
requesting that final hearing be set to review the decision which is the
basis for the order and identifying every other decision of the
administrative patent judge that the party wishes to have reviewed by the
Board at a final hearing, or (ii) fully explaining why judgment should not
be entered. Any opponent is permitted to file a response to the paper
within 20 days of the date of service of the paper. Where the order was
issued under 1.640(d)(1), and the paper includes a request for final
hearing, the opponent's response must identify every decision of the
administrative patent judge that the opponent wishes to have reviewed by
the Board at a final hearing. Where the order was issued under
1.640(d)(1) and the paper does not include a request for final hearing,
the opponent's response may include a request for final hearing, which
must identify every decision of the administrative patent judge that the
opponent wishes to have reviewed by the Board at a final hearing. Where an
opponent's response includes a request for a final hearing, the party who
filed the paper shall have 14 days from the date of service of the
opponent's response in which to file a supplemental paper identifying any
other decision of the administrative patent judge that the party wishes to
have reviewed by the Board at a final hearing. The paper or the response
thereto shall be accompanied by a motion ( 1.635) requesting a testimony
period if a party wishes to introduce any evidence to be considered at
final hearing ( 1.671), such as affidavits previously filed under
1.639(b). A request for a testimony period will be construed as including
a request for final hearing. If the paper contains an explanation of why
judgment should not be entered in accordance with the order and no party
has requested a final hearing, the decision that is the basis for the
order shall be reviewed based on the contents of the paper and the
response. If the paper fails to show good cause, the Board shall enter
judgment against the party against whom the order issued.
One comment suggested that in view of the proposed addition to
1.640(b) to create a presumption of deferral of nondispositive preliminary
motions, a provision should be added allowing the parties to request that
the Board also consider deferred preliminary motions at a 1.640(e)
final hearing. The comment has merit and, while not being adopted
specifically at this time, will be made the subject of future rulemaking.
In the interim, and consistent with the second sentence of 1.601, the
rules should be construed to give the administrative patent judge the
maximum discretion to determine what issues might be considered at any
final hearing set as a result of entry of an order to show cause.
One comment suggested that 1.640(e)(1) be revised to automatically
authorize the party who filed a paper in response to a 1.640(d) show
cause order to file a reply to an opponent's response in order to avoid
the need for motions to file such replies. The suggestion is outside the
scope of the present rulemaking and is not being adopted. Another comment
suggested adding a provision to 1.640(e) similar to the last sentence
of proposed 1.640(b) so that parties can include 1.639 preliminary
motion proofs in the record for consideration at a 1.640(e) final
hearing. The suggestion is being adopted. Accordingly, the penultimate
sentence of 1.640(e)(3), as adopted, reads: "Any evidence that a party
wishes to have considered with respect to the decisions and deferred
motions identified by the party or by an opponent for consideration or
review at final hearing shall be filed or, if appropriate, noticed under
1.671(e) during the testimony period of the party."
One comment suggested modifying the first sentence of proposed
1.640(e)(4) ("If the paper contains an explanation of why judgment should
not be entered in accordance with the order and no party has requested a
final hearing . . . .") by changing "order and" to read "order, and if."
The suggestion is being adopted.
Two comments suggested that interferences can be expedited and the
costs reduced by amending the rules to formalize the procedure of having
an administrative patent judge conduct a hearing after the filing of
motions, oppositions and replies on issues that are potentially
dispositive of the interference, as has been done on an experimental basis
in several interferences. The comment indicates that such a procedure
should reduce time and costs, encourage settlements, reduce issues, and
help parties reach stipulations. The suggestion, which is outside the
scope of the present rulemaking, is not being adopted. The suggestion will
be the subject of future rulemaking. In the interim, there is nothing in
the rules to preclude a party from requesting a hearing on a dispositive
motion. Whether a hearing is conducted is a matter within the discretion
of the administrative patent judge.
Section 1.641 currently provides that an administrative patent judge
who becomes aware of a reason why a claim designated to correspond to a
count may not be patentable should notify the parties of the reason and
set a time within which each party may present its views. After
considering the views, the administrative patent judge determines how the
interference shall proceed. The Notice of Proposed Rulemaking proposed to
amend 1.641 to state that a party's views "may include argument or
appropriate preliminary motions under 1.633(c), (d) or (h), including
any supporting evidence." After the Notice of Proposed Rulemaking was
published it became apparent that the proposed language is ambiguous as to
(1) whether evidence can be submitted in support of argument as well as in
support of appropriate motions and (2) as to whether a party who agrees
with the administrative patent judge's determination of unpatentability is
entitled to file motions under 1.633(c), (d) and (h). These possible
ambiguities are avoided by amending the rule to state that a party's views
may include argument, including any supporting evidence, and in the case
of the party whose claim may be unpatentable, may also include one or more
appropriate preliminary motions under 1.633(c), (d) and (h), including
any supporting evidence. The Notice of Proposed Rulemaking also proposed
amending 1.641 to state that "[a]fter considering any timely filed
views, including any timely filed preliminary motions under 1.633, the
administrative patent judge shall decide how the interference shall
proceed." Inasmuch as the proposed language fails to take into account any
oppositions and replies for the motions, the rule is instead revised to
read: "After considering any timely filed views, including any timely
filed preliminary motions under 1.633, oppositions and replies, the
administrative patent judge shall decide how the interference shall
proceed.
"One comment responded to the proposed amendments of 1.641 as
follows:
The action taken by an administrative patent judge under this rule should
be described as, in effect, a section 1.633(a) motion by the
administrative patent judge. The action should point out that any party
disagreeing with the administrative patent judge should respond in the
same fashion as it would in opposing a section 1.633(a) motion including
the submission of all available evidence underrule 1.639. By taking action
under this rule, an administrative patent judge* becomes the (or an)
adversary to at least one party in the interference and therefore any
decision on such a motion by an administrative patent judge should be
deferred to final hearing and the administrative patent judge who took the
action should not be a member ofthe panel at final hearing. Other
possibilities would be to remand the matter to the primary examiner for
his or her decision as to whether there is any merit to the purported
ground of unpatentability. If the purported ground of unpatentability
applies to the claims of a patent involved in the interference, the
primary examiner could determine whether the purported ground of
unpatentability is sufficient to institute a reexamination proceeding with
respect to the patent. If the primary examiner's decision is adverse to
one or more of the parties, that party or those parties would have the
burden of showing that the primary examiner's decision was incorrect.
Another possibility would be for the administrative patent judge to merely
notice the issue and provide the parties with a period of time within
which to submit a motion under section 1.633(a). If none of the parties
submits a section 1.633(a) motion and the administrative patent judge
considers the matter to be of sufficient importance, he or she could then
remand to the attention of the primary examiner for his or her decision as
previously indicated.
* Cf. In re Van Geuns, 20 USPQ2d 1291, 1295 (Fed. Cir.1991):"[a]s in all
ex parte cases, the entity adverse to Van Geuns is the PTO Commissioner."
The suggestion that 1.641 be revised to characterize an administrative
patent judge's determination that a party's claim may be unpatentable as,
in effect, a 1.633(a) motion is not being adopted. Section 1.641, as
proposed to be revised by the comment, could be construed as precluding an
opponent who agrees with the determination from submitting argument and
appropriate motions, including evidence, in support of the determination.
The suggestion that the administrative patent judge who initially made the
determination of unpatentability be precluded from serving as a member of
the reviewing panel at final hearing is not adopted. Judges in various
courts and judges in administrative proceedings routinely issue orders to
show cause and consider views presented in response to those orders. In
the case of a dispositive matter which results in the issuance of an order
to show cause, the party receiving the order to show cause knows that in
addition to the administrative patent judge issuing the order, at least
two other administrative patent judges will consider the response.
Moreover, it should be noted that resolving patentability in an
interference and in ex parte proceedings is not the same. In ex parte
examination of a patent application, the statute specifically contemplates
an administrative appeal to the Board. 35 U.S.C. 134. In the case of
interferences, the statute authorizes the Board, in the first instance, to
make a patentability determination. 35 U.S.C. 135(a). Hence, the statute
does not require that an administrative patent judge issuing an order to
show cause not participate in ruling on the sufficiency of any response to
the order. Efficient administration of interferences in PTO dictates that
the administrative patent judge most likely to be familiar with the record
participate in evaluating responses to orders to show cause.
Another comment suggested that a 1.641 order authorizing views be
identified in the rule as an order to show cause. The suggestion is not
being adopted. If, after considering the parties' arguments, motions,
oppositions and replies, the administrative patent judge concludes that
all of the involved claims or one or both parties are unpatentable, the
administrative patent judge may issue an order to show cause pursuant to
1.640(d)(1) as amended, which expressly provides for a show cause order
based on a decision on a matter raised sua sponte by an administrative
patent judge.
Section 1.643(b) is revised, as proposed in the Notice of Proposed
Rulemaking, for clarification and also to change "ends of justice" to
"interest of justice" to be consistent with the language used in other
interference rules, including 1.628(a) and 1.687(c).
As proposed in the Notice of Proposed Rulemaking, 1.644(a) is
revised by changing "a panel consisting of more than one
examiner-in-chief" to "the Board" and paragraphs (a)(1), (b) and (c) are
revised by changing both occurrences of "panel" to "Board."
Section 1.644(a)(2) is revised by removing the statement concerning
when parties are authorized to file a petition seeking to invoke the
supervisory authority of the Commissioner. The times for filing petitions
are set out in 1.644(b).
Section 1.644(b) is revised to provide that a petition seeking to
invoke the supervisory authority of the Commissioner shall not be filed
prior to the party's brief for final hearing. Sections 1.644(a)(2) and (b)
currently provide that such a petition shall not be filed "prior to the
decision of the Board awarding judgment." Since promulgation of the "new"
rules, 49 FR 48416 (Dec. 12, 1984), reprinted in 1050 Off. Gaz. Pat.
Office 385 (Jan. 29, 1985), there have been relatively few petitions filed
in interference cases, particularly petitions seeking to invoke
supervisory authority. Thus, a result sought to be achieved under the
"new" rules has been, in fact, achieved, i.e., fewer petitions. Under the
rules, there should be few, if any, petitions to invoke supervisory
authority. Section 1.644(a)(1), which authorizes important questions to be
certified to the Commissioner, should be sufficient in most cases to
resolve questions of interpretation of the rules. Section 1.644(a)(2)
provides a vehicle for rule interpretation in those cases where
certification is declined by the administrative patent judge and there
remains, at the time briefs are filed for final hearing, a need to resolve
the interpretation. The time for filing a petition to invoke supervisory
authority is believed to be more appropriate before the Board enters a
final decision, as opposed to after entry of a final decision--as required
by current practice. Parties should not file petitions seeking to invoke
supervisory authority in cases involving routine interlocutory orders
which do not involve an interpretation of a rule. As noted in the notice
of final rule:
[a] final decision of the Board is reviewable in the U.S. Court of Appeals
for the Federal Circuit or an appropriate U.S. district court. Any
reviewing court can review all aspects of the decision including
patentability, priority, and all relevant interlocutory orders, such as
denials of discovery.
49 FR 48416, 48418 (Dec. 12, 1984), reprinted in 1050 Off. Gaz. Pat.
Office 385, 387 (Jan. 29, 1985).
Section 1.644(b) is also revised, as proposed, by revising it to state
that a petition under 1.644(a) shall be considered timely if it is
filed simultaneously with a proper motion under 1.633, 1.634, or
1.635 when granting the motion would require waiver of a rule. In other
words, a petition under 1.644(a)(3) should seek waiver of a rule
prospectively rather than retroactively. Parties should recognize that
waiver of a rule is reserved for unusual circumstances. Myers v.
Feigelman, 455 F.2d 596, 601, 172 USPQ 580, 584 (CCPA 1972) (waiver of
rules on routine basis would defeat the purpose of the rules and
substantially confuse interference practice). Nevertheless, since PTO
cannot possibly contemplate all circumstances which can arise in
interferences at the time a rule is promulgated, waiver of a rule may be
entirely appropriate in unusual circumstances. By encouraging parties to
file a petition when they know a rule must be waived, the opponent is put
in the best position to address the matter and to take whatever action
might be in the opponent's interest in the event a petition is granted. On
the other hand, parties should not expect many petitions to be granted
which seek to waive the rules.
The time for responding to a petition under 1.644(a)(1) or (a)(2) is
changed from (a) 15 to days (b) to 20 days. The time for responding to a
petition under 1.644(a)(3) is changed from (a) 15 days to (b) 20 days
or the date an opposition is due to the accompanying motion, whichever is
earlier. The change will permit an opponent to file an opposition to the
motion and the petition on the same day and should eliminate different,
but related, time periods from running concurrently.
Section 1.644(b), as proposed, would have authorized the petition to be
made part of the motion, as does 1.644(b) in its current form. Upon
reflection, since the petition is decided by one PTO official and the
motion by another, it will be more efficient for PTO if the petition and
motion are filed as separate papers. Additionally, the fact that a
petition has been filed is less likely to be inadvertently overlooked if
the petition and motion appear in separate papers.
In 1.644(d), the second sentence, as proposed, is removed as
unnecessary. The Notice of Proposed Rulemaking also proposed amending this
paragraph to provide that the statement of facts in a petition preferably
should be in numbered paragraphs. One comment suggested that numbered
paragraphs be required, rather than just preferred. The suggestion is
being adopted. Another comment suggested inserting a comma after "Board"
in the second sentence of 1.644(d), as proposed to be revised. The
suggestion is being adopted.
As proposed in the Notice of Proposed Rulemaking, 1.644(f) is
revised to change the "15 days" in which to request reconsideration of a
decision by the Commissioner to "14 days."
In 1.644(g), the quotation marks around "Express Mail" are removed,
as proposed.
Section 1.645(b), which in its current form permits consideration of a
belatedly filed paper only if accompanied by a motion under 1.635
showing sufficient cause ( 1.645(b)) for the belatedness, is revised in
several respects, as proposed in the Notice of Proposed Rulemaking. First,
"sufficient cause" is changed to "good cause" in order to provide a single
"cause" standard throughout the interference rules. Second, paragraph (b)
is revised to permit consideration of a belatedly filed paper if an
administrative patent judge or the Board, sua sponte, is of the opinion
that it would be in the interest of justice to consider the paper. An
example would be where the delay is short (e.g., one day) and there is no
prejudice to an opponent or where all parties and the Board act as though
a paper is timely only to discover later that it was not. For purposes of
sections other than 1.645, a belatedly filed paper is considered
"timely filed" if accompanied by a motion under 1.635 to excuse the
belatedness, which is granted.
Section 1.645(d) is revised, as proposed, by deleting "In an
appropriate circumstance" as superfluous in view of the language "may stay
proceedings," which indicates that the administrative patent judge has the
discretion to stay an interference.
Section 1.646 is revised in the manner proposed in the Notice of
Proposed Rulemaking. Specifically, 1.646(a)(2) is revised by deleting
the reference to 1.684, which is removed. Section 1.646(c)(1) is
revised by inserting "or causing a copy of the paper to be handed" after
"By handing a copy of the paper" to make it clear that the paper need not
be personally delivered by the party, i.e., that delivery by hand can be
effected by a commercial courier, for example. When a next-business-day
commercial courier is used, it should be understood that the party
normally will deliver the paper to the courier on one day and the paper
will be delivered to the office of counsel for the opponent on the next
day. A certificate of service that states that the paper is being served
"via the following commercial courier: [insert name]" is deemed to be a
proper service within the meaning of 1.646(c)(1), as amended. Pending
further rulemaking, the date of service will be considered the date the
paper is delivered to the courier.
In 1.646(c)(4), "mail" (second occurrence)"is changed to "first
class mail" to make it clear that the service date specified in that
paragraph applies only to first class mail.
Section 1.646(c)(5) is redesignated as 1.646(c)(6) and a new
1.646(c)(5) is added which explains that a party may serve by Express Mail
and that when service is effected by Express Mail, the date of service is
considered to be the date of deposit with the U.S. Postal Service.
Section 1.646(d) is revised by removing the quotation marks around
"Express Mail."
Section 1.646(e) is revised to state that the due date for serving a
paper is the same as the due date for filing the paper in the Patent and
Trademark Office.
One comment suggested amending 1.646 to authorize service by
next-business-day courier, with the date of service being the day the
paper is given to the courier. The suggestion is not being adopted at this
time, but will be considered in future rulemaking. In the interim, for the
reasons given above, service by a next-business-day courier may be
regarded as service by hand.
Section 1.651(a)(2) is revised, as proposed, by removing "(testimony
includes testimony to be taken abroad under 1.684)" in order to be
consistent with the proposal to remove and reserve 1.684 and by
amending 1.651(c)(2) and (c)(3) to be consistent with the amendment
to the definition of "effective filing date" in 1.601(g).
The Notice of Proposed Rulemaking proposed further amending 1.651(d)
by changing "abroad under 1.684" to "in a foreign country." One comment
noted that the term "foreign country" is unduly restrictive in that it
does not include a foreign place that is not part of a "country" and
suggested that the phrase "in a place outside the United States" be used
instead. The suggestion is being adopted.
Section 1.653(a) is revised as proposed in the Notice of Proposed
Rulemaking. First, the references to certain paragraphs of 1.672 are
revised to reflect the redesignation of those paragraphs. Second, "of
fact" in the clause "agreed statements of fact under 1.672(f)" is
removed, because agreed statements under 1.672(f), redesignated as
1.672(h), can set forth either (1) how a particular witness would testify
if called or (2) the facts in the case of one or more of the parties.
Third, "under 1.684(c)" is removed in view of the removal of 1.684.
Fourth, 1.653(a) is revised to indicate that in addition to the types
of testimony already set forth therein, testimony includes copies of
written interrogatories and answers and written requests for admissions
and answers, which might be obtained where a motion for additional
discovery under 1.687(c) is granted.
One comment suggested deleting "transcripts of interrogatories, cross
interrogatories, and recorded answers" on the ground that this language is
from 1.684, which is removed. The suggestion is not being adopted,
since there may be occasions when such testimony would be appropriate and
authorized by an administrative patent judge or the Board.
Another comment suggested amending 1.653 to provide that a party's
record can include copies of videotapes of depositions and inter partes
tests (in addition to the transcripts of the depositions), citing
disparate treatment of this matter said to be occurring with different
administrative patent judges. The suggestion, which is outside the scope
of the present ruleÍmaking, is not being adopted. The matter of videotapes
and other forms of proof will be considered in a future rulemaking effort.
As proposed in the Notice of Proposed Rulemaking, 1.653(b) is
revised to be consistent with the redesignation of certain paragraphs of
1.672 and to remove the reference to 1.684(c), which is removed.
Section 1.653(b) is also revised for clarity, while 1.653(c)(1) and
(4) are revised to make it clear that the only testimony to be included in
a party's record is testimony submitted on behalf of the party. Having
copies of the same testimony appear in both parties' records unnecessarily
encumbers the records and is confusing in that a given page of testimony
will have different page numbers in the different records, with the result
that the briefs of the parties will refer to different record pages for
the same testimony.
One comment suggested that either 1.653(b) or 1.672(h) be revised
to specify when an "an original agreed statement under 1.672(h)" is to
be filed, since the due date for filing such a statement is not provided
in the current rules. The suggestion is outside the scope of the current
rulemaking and is not being adopted. In the interim, parties should plan
on filing an agreed statement as soon as practical after it is agreed to,
but an administrative patent judge shall have discretion to accept the
agreed statement at any reasonable time.
Section 1.653(c)(5), which currently requires that the record filed by
each party include each notice, official record and printed publication
relied upon by the party and filed under 1.682(a), is removed and
reserved, as proposed. The requirement is unnecessary because notices,
official records and printed publications are in the nature of exhibits
under 1.653(i), which are submitted with but not included in the
record. The inclusion of exhibits in the record merely increases the size
of the record without serving any useful purpose.
As proposed in the Notice of Proposed Rulemaking, 1.653(g) is
revised, and 1.653(f) and (h) removed and reserved, to eliminate the
current distinction between typewritten and printed records. Specifically,
1.653(g) is revised by changing "8 1/2 x 11 inches (21.8 by 27.9 cm.)"
to "21.8 by 27.9 cm. (8 1/2 x 11 inches)" in order to emphasize the metric
dimension, by removing the requirement for justified margins, by requiring
that the records be bound with covers at their left edges in such manner
as to lie flat when open to any page and in one or more volumes of
convenient size (approximately 100 pages per volume is suggested) and by
requiring that when there is more than one volume, the numbers of the
pages contained in each volume must appear at the top of the cover for
each volume. Section 1.653(i) is revised, as proposed, to state that
exhibits include documents and things identified in affidavits or on the
record during the taking of oral depositions as well as official records
and publications submitted pursuant to 1.682(a).
Section 1.654(a) is revised, as proposed, by changing "shall" in the
second sentence to "may" for clarity and also to reduce the time for oral
argument by a party from 60 minutes to 30 minutes. Most hearings require
no more than 30 minutes per side. A panel hearing oral argument retains
discretion to grant more time at a hearing.
The Notice of Proposed Rulemaking proposed amending 1.655(a) to
state that the standard of review for interlocutory orders is "an abuse of
discretion" rather than "erroneous or an abuse of discretion." As
explained in the Notice of Proposed Rulemaking, the recitation of a
separate "error" standard is believed to be superfluous, because legal
error is one of the alternative bases for finding an abuse of discretion.
Specifically, an abuse of discretion may be found when (1) the decision of
an administrative patent judge is clearly unreasonable, arbitrary or
fanciful, (2) the decision is based on an erroneous conclusion of law, (3)
the findings of the administrative patent judge are clearly erroneous, or
(4) the record contains no evidence upon which the administrative patent
judge rationally could have based the decision. Compare, e.g., Heat and
Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1022, 228 USPQ
926, 930 (Fed. Cir. 1986); Western Electric Co. v. Piezo Technology, Inc.
v. Quigg, 860 F.2d 428, 430-31, 8 USPQ2d 1853, 1855 (Fed. Cir. 1988);
Abrutyn v. Giovanniello, 15 F.3d 1048, 1050-51, 29 USPQ2d 1615, 1617 (Fed.
Cir. 1994), all of which define the phrase "abuse of discretion." One
comment stated that the rule, as proposed to be amended, in effect raises
the standard of review because "abuse of discretion" includes "clear
error" but not mere "error." In view of the above-cited Federal Circuit
decisions, it is believed that the statement in the comment is not correct.
One comment suggested inserting a comma after "correct" in the
penultimate sentence of 1.655(a). The suggestion is being adopted.
Section 1.655(b) is revised to clarify the language concerning matters
that a party is not entitled to raise for consideration at final hearing.
Specifically, 1.655(b), as amended, provides that a party shall not be
entitled to raise for consideration at final hearing any matter which
properly could have been raised by a motion under 1.633 or 1.634 unless
(1) the matter was properly raised in a motion that was timely filed by
the party under 1.633 or 1.634 and the motion was denied or deferred to
final hearing, (2) the matter was properly raised by the party in a timely
filed opposition to a motion under 1.633 or 1.634 and the motion was
granted over the opposition or deferred to final hearing, or (3) the party
shows good cause why the issue was not properly raised by a timely filed
motion or opposition. It was proposed in the Notice of Proposed Rulemaking
to amend 1.655(b) to state that "[a] change of attorneys during the
interference generally does not constitute good cause." For the reasons
already given, it has been decided not to adopt the proposed amendment to
1.655(b).
The Notice of Proposed Rulemaking also proposed to amend 1.655(b) to
create a rebuttable presumption that all claims of a party that are
designated as corresponding to a count are directed to the same patentable
invention for the purpose of determining unpatentability in view of prior
art. The Federal Circuit had interpreted the former rule to suggest that
the presumption applied only where a party's claim corresponded exactly to
a count and was anticipated by prior art. In re Van Geuns, 988 F.2d 1181,
1185, 26 USPQ2d 1057, 1060 (Fed. Cir. 1993). The proposed revised rule
would have made it clear that the rebuttable presumption applies to all
claims that are designated as corresponding to the count, regardless of
whether the count is anticipated by ( 102) or would have been obvious
view of ( 103) the prior art. Specifically, the Notice of Proposed
Rulemaking proposed adding the following sentence: "A party who fails to
contest, by way of a timely filed preliminary motion under 1.633(c),
the designation of a claim as corresponding to a count may not
subsequently argue to an administrative patent judge or the Board the
separate patentability or lack of separate patentability of claims
designated to correspond to the count." Comments were filed in opposition
to the proposed amendment. One comment, for example, stated that the
proposed amendment, as well as the accompanying commentary in the Notice
of Proposed Rulemaking,
falsely assumes that claims cannot be separately patentable merely because
they have been designated as corresponding to the count, i.e., merely
because the claims are patentably indistinct from each other. The falsity
of this proposition is apparent from the practice of the Patent and
Trademark Office of designating as corresponding to the count both the
patentable and unpatentable claims of a party.
Two different comparisons are relevant: a party's claims with other claims
of the party and the claims of a party with the prior art. The claims may
be patentably indistinct from each other and, thus, provide no basis for a
motion under 1.633(c)(4), yet be separately patentable over the prior
art.
Accordingly, for example, a party should be able to respond to a motion
for judgment on grounds of unpatentability over the prior art by arguing
that some, but not necessarily all, of the designated claims are
patentable over the prior art, even though the party had not previously
moved to designate the separately patentable claims as not corresponding
to the count. Indeed, it is entirely possible that no basis existed for
making such a previous motion. The proposed amended rule, however,
forecloses a party from responding to an attack on patentability of its
claims by arguing that some, but not all, of the claims are patentable
over the prior art.
(Emphasis in original.) The comment included several illustrative
examples, including the following example said to be from an actual
interference:
The count is directed to a broad generic class of compounds. While the
compounds are useful herbicides, the count and corresponding claims are
directed to compounds per se. The applications of both parties contain
designated claims substantially corresponding to the count as well as
claims directed to species falling within the count.
The application of party A contains a designated claim directed
specifically to a species with [sic; within] the genus that possesses
ordinary activity for compounds of the claimed class; i.e., the species
compound is not separately patentable over the genus. Thus, the claim to
the species is not patentable over the count if the count were prior art
and is properly designated as corresponding to the count.
Party B, during the motion period, moves for judgment under 1.633(a) on
the basis of a reference that is not prior art against party B, only
against party A. That reference discloses a single compound falling
squarely within the genus of the count * * *, but that is significantly
different structurally from the species claimed in A's application.
Furthermore, the reference does not indicate that the disclosed compound
has herbicidal properties and it is shown in opposition to the motion for
judgment that the compound, in fact, possesses virtually no herbicidal
activity.
Under this set of facts, the compound of the reference anticipates party
A's claim that corresponds * * * [exactly] to the count. Nevertheless, the
reference has no significance with regard to the patentability of the
species claim in party A's application.
In this particular case, the EIC [Examiner-in-Chief] had no difficulty in
partially granting the motion for judgment against party A as to the
generic claim, but denying the motion as to the species claim. The
interference was continued with the count unchanged (because the reference
was not prior art as to party B), with party A ultimately prevailing on
the issue of priority. Thus, neither party received a generic claim, but
party A ultimately obtained a species claim that was patentably indistinct
from the genus of the count. Presumably under the new rules, party B would
have retained all its claims while all of party A's claims would be found
unpatentable.
This case clearly illustrates that a claim that is patentably indistinct
from the count and from a claim corresponding * * * [exactly] to the count
(i.e., a claim that cannot be designated as not corresponding to the
count), nevertheless can be patentable over prior art that renders
unpatentable a claim corresponding precisely to the count. This case also
illustrates that failure to file a motion to designate certain claims as
not corresponding to the count cannot be taken as a concession that all of
the designated claims are unpatentable merely because the count (or a
claim corresponding precisely to the count) is unpatentable over the prior
art. Moreover, this situation is not an unusual one. It happens often in
chemical cases, particularly chemical cases dealing with biologically
active compounds.
Another comment questioned when a party that has failed to contest the
designation of a claim as corresponding to a count would ever have
occasion to later argue a lack of separate patentability.
The above comments are well taken. Accordingly, the proposal to amend
1.655(b) to preclude a party from arguing separate patentability or a
lack of separate patentability of claims over prior art in the absence of
a 1.633(c) motion is hereby withdrawn. Instead, the rule is revised to
read as follows: "A party that fails to contest, by way of a timely filed
preliminary motion under 1.633(c), the designation of a claim as
corresponding to a count, or fails to timely argue the separate
patentability of a particular claim when the ground for unpatentability is
first raised, will not be permitted to later argue the separate
patentability of that claim with respect to that ground." Thus, a party
that fails to timely argue the separate patentability of a particular
claim when the ground for unpatentability is first raised will not be
permitted to later argue the separate patentability of that claim with
respect to that ground. As noted in the comment, often the first
opportunity to address patentability is in an opposition to a preliminary
motion for judgment under 1.633(a). In addition, inasmuch as a party
filing a motion under 1.633(a) must separately address each claim
alleged to be unpatentable, the opponent will be in a position to know how
to prepare an opposition, whereas under the current rules preparation of
an opposition separately addressing each claim is not clearly required by
the rules. The basic idea is that an opponent should have a fair
opportunity to address the patentability of any of the opponent's claims
when a patentability issue is first raised. Patentability can be raised,
for example, by a preliminary motion under 1.633(a) or sua sponte by an
administrative patent judge. However, a party is not entitled to wait
until the 11th hour in an interference to belatedly raise for the first
time an issue of separate patentability of claims corresponding to a count.
As proposed in the Notice of Proposed Rulemaking, 1.655(c) is
revised by changing "To prevent manifest injustice" to "In the interest of
justice" to be consistent with the language used in other interference
rules.
Section 1.656 is revised, as proposed, by redesignating paragraphs
(b)(1) through (b)(6) as paragraphs (b)(3) through (b)(8), respectively,
and adding new paragraphs (b)(1) and (b)(2) requiring the brief to include
(1) a statement of interest identifying every party represented by the
attorney in the interference and the real party in interest if the party
named in the caption is not the real party in interest and (2) a statement
of related cases indicating whether the interference was previously before
the Board for final hearing and identifying any related appeal or
interference which is pending before, or which has been decided by, the
Board, or which is pending before, or which has been decided by, the Court
of Appeals for the Federal Circuit or a district court in a proceeding
under 35 U.S.C. 146. A related appeal or interference is one which will
directly affect or be directly affected by or have a bearing on the
Board's decision in the pending interference. Appeals are mentioned
because there have been numerous situations where related issues have been
present before the Board simultaneously or sequentially in an ex parte
appeal and an interference and vice versa. It was also proposed to amend
current paragraph (b)(3), redesignated as paragraph (b)(5), to specify
that statements of fact preferably should be presented in numbered
paragraphs. One comment suggested that numbered paragraphs be required.
The suggestion is being adopted.
As explained in the Notice of Proposed Rulemaking, 1.656(b)(4),
which is redesignated as 1.656(b)(6), requires that the opening brief
of the junior party contain the contentions of the party with respect to
the "issues to be decided," which has been construed to include the matter
of whether some of the senior party's evidence of conception was
inadmissible hearsay. Suh v. Hoefle, 23 USPQ2d 1321, 1323 (Bd. Pat. App. &
Int. 1991). As support, the Board in Suh relied on Fisher v. Bouzard, 3
USPQ2d 1677 (Bd. Pat. App. & Int. 1987), and Moller v. Harding, 214 USPQ
730 (Bd. Pat. Int. 1982). Both of these cases concern interferences
declared under the "old" interference rules (i.e., 1.201 et seq.), of
which 1.254 specified that the opening brief of the junior party shall
"present a full, fair statement of the questions involved, including his
position with respect to the priority evidence on behalf of other
parties." Current 1.656(b)(4) does not expressly require, and was not
intended to imply, that the opening brief of the junior party must address
the evidence of any other party with respect to the issue of priority or
any other issue. In order to clarify that the opening brief of a junior
party need not address the evidence of the other parties, 1.656(b)(6),
as adopted, is revised to require only that the junior party's opening
brief contain the contentions of the party "with respect to the issues it
is raising for consideration at final hearing." These issues would include
the junior party's case-in-chief for priority with respect to an opponent
or derivation by an opponent as well as matters raised in any denied or
deferred motions of the junior party that are to be reviewed or considered
at final hearing. Where the reply brief of the junior party is believed to
include a new argument in response to the case-in-chief of the senior
party as presented in the senior party's opening brief, the senior party
may move under 1.635 for leave to file a reply to the junior party's
reply brief. The motion must be accompanied by a copy of the senior
party's reply.
Section 1.656(d) is revised, as proposed, to state that unless ordered
otherwise by an administrative patent judge, briefs shall be double-spaced
(except for footnotes, which may be single-spaced) and shall comply with
the requirements of 1.653(g) for records except the requirement for
binding. As a result, the current distinctions between printed and
typewritten briefs are eliminated. Recent briefs filed in interference
cases have been fairly long, e.g., 150 pages. The parties should make
every effort to file briefs which, to borrow the words in one section of
the patent statute, 35 U.S.C. 112, are "full, clear, concise, and exact."
Consideration will be given in a future rulemaking effort as to whether it
might be appropriate to require a party to submit both (1) findings of
fact and conclusions of law and (2) a brief, wherein it might be presumed
that the reader of the brief is familiar with the proposed
findings/conclusions. So that members of the bar practicing before the
Board in interference cases can be apprised of how briefs are used at the
Board, the following comments are made. Briefs serve two purposes. First,
briefs enable all three panel members to prepare for oral argument. During
the time a member prepares for oral argument, often there is not time to
become fully familiar with the record, particularly where the brief is
being read at a location outside PTO, e.g., home. Second, when an opinion
is authored by one panel member and reviewed by the other two panel
members, the brief serves as a road map during the necessarily more
thorough and more complete review of the record. Whereas there may not be
time to "check" the record during the preparation phase before oral
argument, there is time to "check" the record during the opinion writing
and review period. An effective brief, with or without proposed
findings/conclusions, is one which permits the members of the Board to
accomplish both purposes mentioned above.
In 1.656, paragraphs (e), (g) and (h) are revised, as proposed, to
require an original and four copies (currently an original and three
copies are required) of each brief, any proposed findings of fact and
conclusions of law, any motion under 37 CFR 1.635 to suppress evidence and
any opposition to a motion to suppress evidence.
The Notice of Proposed Rulemaking proposed amending the third sentence
of 1.656(g) to read as follows: "Any proposed findings of fact shall be
in numbered paragraphs and supported by specific references to the
record." One comment suggested that "and supported" be changed to "and
shall be supported." The suggestion is being adopted.
Section 1.656(h) is revised, as proposed, to state that a party's
failure to challenge the admissibility of the evidence of an opponent on a
ground that could have been raised in a timely objection under
1.672(c), 1.682(c), 1.683(b) or 1.688(b) constitutes a waiver of the right
to move under 1.656(h) to suppress the evidence on that ground at final
hearing.
Section 1.656(i) currently provides that if a junior party fails to
file an opening brief for final hearing, an order may be issued by the
administrative patent judge requiring the junior party to show cause why
the failure to file a brief should not be treated as a concession of
priority, and further provides that judgment may be rendered against the
junior party if the junior party "fails to respond" within a time period
set in the order. The expression "fails to respond" has been
misinterpreted by some junior parties as meaning that the mere filing of a
response of any kind to the order to show cause should be sufficient to
avoid the entry of judgment. Such an interpretation was not intended and,
if adopted, would effectively nullify 1.656(i). As proposed in the
Notice of Proposed Rulemaking, "respond" is changed to "show good cause"
to make it clear that a junior party's failure to file a timely opening
brief will not be excused unless good cause is shown to explain or justify
the failure to file a brief. The language of the rule will then be
consistent with the other interference rules concerning orders to show
cause, e.g., 1.640(c) and 1.652.
Section 1.657 is revised, as proposed, to be consistent with the
changes to the definition of "effective filing date" in 1.601(g). As
revised, 1.657 will also state that in an interference involving an
application and a patent where the effective filing date of the
application is after the date the patent issued, a junior party has the
burden of establishing priority by clear and convincing evidence. In other
interferences the junior party has the burden of establishing priority by
a preponderance of the evidence. The amendment codifies the holding of
Price v. Symsek, 988 F.2d 1187, 1190-91, 26 USPQ2d 1031, 1033 (Fed. Cir.
1993), as clarified by Bosies v. Benedict, 27 F.3d 539, 541-42, 30 USPQ2d
1862, 1864 (Fed. Cir. 1994).
Section 1.658(a) is revised, as proposed, to state that when the Board
enters a decision awarding judgment as to all counts, the decision shall
be regarded as a final decision for the purpose of judicial review (35
U.S.C. 141-44, 146) unless a request for reconsideration under paragraph
(b) of this section is timely filed.
Section 1.658(b) is revised, as proposed, by removing the phrases
"[w]here reasonably possible" and "such that delivery is accomplished" as
unnecessary, so that the sentence as revised reads as follows: "Service of
the request for reconsideration shall be by hand or Express Mail." As
proposed, a sentence is also added specifying that a decision on
reconsideration is a final decision for the purpose of judicial review (35
U.S.C. 141-44, 146). Section 1.658(b) is further revised, as proposed, by
changing "reply to a request for reconsideration" to "opposition to a
request for reconsideration" in order to be consistent with the
terminology employed in 1.640(c), which concerns requests for
reconsideration of decisions on preliminary motions.
One comment suggested amending 1.658(b) to permit service of
requests for reconsideration by next-business-day commercial courier. The
suggestion is not being adopted at this time, but will be the subject of a
future rulemaking effort. In the interim, see the discussion above
concerning the interpretation to be given the phrase "service . . . by
hand."
As proposed in the Notice of Proposed Rulemaking, 1.660 has been
revised by adding a new paragraph (e) explaining that the failure of a
party to comply with the notice provisions of 1.660 may result in
sanctions under 1.616 and that knowledge by, or notice to, an employee
of the Office other than an employee of the Board, of the existence of the
reexamination, application for reissue, protest, or litigation shall not
be sufficient. It was also proposed to provide that the notice
contemplated by this section is notice addressed specifically to an
administrative patent judge or the Board. One comment suggested that
rather than requiring the notice to be "addressed specifically to an
administrative patent judge or the Board," the rule require that it be
"addressed to the administrative patent judge in charge of the
interference in which the application or patent is involved." The
suggestion is being adopted.
Section 1.662(a) is revised, as proposed, by changing "filing by an
applicant or patentee" in the second sentence to "filing by a party" to
make it clear that a request for adverse judgment, including a written
disclaimer of the invention defined by a count, a concession of priority
or unpatentability of the subject matter of a count, abandonment of the
invention defined by a count and abandonment of the contest as to a count,
can be signed by the party's attorney or agent of record. For the same
reason, in the third sentence of paragraph (a), which concerns abandonment
of an involved application "by an applicant" is removed and "applicant" is
revised to read "application."
In 1.662(b), the first sentence is revised, as proposed, by changing
"omits all claims of the patent corresponding to the counts of the
interference for the purpose of avoiding the interference" to read "does
not include a claim that corresponds to a count" in order to make it clear
that judgment may not be entered where the reissue application includes
any claim that corresponds to a count, including a new or amended claim
that should be designated as corresponding to the count. Similarly,
"reissue other than for the purpose of avoiding the interference" is
changed to "reissue which includes a claim that corresponds to a count,"
which means corresponds to the count or should be designated to correspond
to the count.
Section 1.674(a), which specifies before whom depositions may be taken,
the reference to "United States or a territory or insular possession of
the United States" is removed, as proposed, in order to make the paragraph
applicable to depositions for testimony compelled in foreign countries.
Section 1.675(d), which concerns reading and signing of a transcript
by the witness, is revised, as proposed, to take into account that the
witness might refuse to read and/or sign the transcript of the deposition,
in which case the circumstances under which the witness refused to sign
must be noted on the certificate by the officer who prepared the certified
transcript ( 1.676(c)). One comment suggested that 1.675 be revised
to recognize the witness's right to make corrections to the transcript
prior to signing, as in Fed. R. Civ. P. 30(e), second sentence. The
suggestion, which is outside the scope of the present rulemaking, is not
being adopted. The substance of the suggestion will be considered in a
future rulemaking effort.
Section 1.676(a)(4) is revised, as proposed, by changing "opposing
party" to "opponent."
Section 1.677(a), which in its current form specifies the required form
for transcripts of depositions, is revised, as proposed, to also apply to
affidavits, by removing the reference to "typewritten" matter, changing
"pica-type" to "11 point type," and changing "8 1/2 x 11 inches (21.8 by
27.9 cm.)" to "21.8 by 27.9 cm. (8 1/2 x 11 inches)." For the reasons
given above in the discussion of a "developing record," 1.677(b), which
concerns numbering of exhibits submitted with affidavits and deposition
transcripts, is revised to change "consecutively" to "consecutively to the
extent possible."
In 1.678, the section heading is changed, as proposed, from
"Transcript of deposition must be filed" to "Time for filing transcript of
deposition" for clarity. The text is revised by changing the time for
filing the certified transcript from 45 days to one month after the
deposition.
Section 1.679 is revised as proposed by changing "transcript" to
"transcript of a deposition" for clarity and "for printing ( 1.653(g))"
is removed as unnecessary.
In 1.682, paragraph (a) is revised, as proposed, in the
"Miscellaneous Amendments" part of the Notice of Proposed Rulemaking in
the following respects. First, "identified during the taking of testimony
of a witness" is changed to "identified in an affidavit or on the record
during an oral deposition of a witness" for clarity. Second,
1.682(a)(4) ("where appropriate, be accompanied by a certified copy of the
official record or a copy of the printed publication ( 1.671(d))") is
removed and reserved as superfluous in view of Rules 901 and 902 of the
Federal Rules of Evidence, which apply to interference proceedings (
1.671(b), and require authentication of evidence that is not
self-authenticating. Third, the first word in each of paragraphs (a)(2),
(a)(3) and (a)(4) is capitalized.
Section 1.685(d) is revised, as proposed, for clarification.
Section 1.687(c) is revised, as proposed, to refer to 1.647
concerning translations of documents in a foreign language.
One comment stated that the lack of discovery available under
1.687(c) has prevented some interferences from reaching the "correct"
result. According to the comment, a different result might have been
reached if the discovery available under the Federal Rules of Civil
Procedure had been allowed. The comment suggests that PTO consider
authorizing discovery similar to the Fed. R. Civ. P. in interferences. The
suggestion, which is outside the scope of the present rulemaking, is not
being adopted.
In 1.690(a), "37 CFR, Subpart E of Part 1" is revised to read "this
subpart."
Other Considerations: These rules conform with the requirements of the
Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order 12866,
and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. The Office
of Management and Budget has determined that these rule changes are not
significant for the purposes of Executive Order 12866.
The Assistant Counsel for Legislation and Regulation of the Department
of Commerce has certified to the Chief Counsel for Advocacy, Small
Business Administration, that these rule changes will not have a
significant economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)), because the changes clarify
existing rules setting forth the procedures used in patent appeals and
interferences.
PTO has determined that this notice has no Federalism implications
affecting the relationship between the National Government and the States
as outlined in Executive Order 12612.
These rule changes will not impose any additional burden under the
Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq., since no record
keeping or reporting requirements within the coverage of the Act are
placed upon the public.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Inventions and Patents.
For the reasons set out in the preamble, Part 1 of Title 37 of the Code
of Federal Regulations is amended as set forth below:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 is revised to read as
follows:
Authority: 35 U.S.C. 6 and 23, unless otherwise noted.
2. Section 1.11(e) is revised to read as follows:
1.11 Files open to the public.
* * * * *
(e) The file of any interference involving a patent, a statutory invention
registration, a reissue application, or an application on which a patent
has been issued or which has been published as a statutory invention
registration, is open to inspection by the public, and copies may be
obtained upon paying the fee therefor, if:
(1) The interference has terminated or
(2) An award of priority or judgment has been entered as to all parties
and all counts.
3. In 1.192, paragraphs (c)(1) through (c)(7) are redesignated as
paragraphs (c)(3) through (c)(9); paragraphs (a), (c) introductory text,
newly designated paragraph (c)(7), introductory text of (c)(8), and
(c)(8)(v), and (d) are revised; and paragraphs (c)(1) and (c)(2) are added
to read as follows:
1.192 Appellant's brief.
(a) Appellant shall, within 2 months from the date of the notice of appeal
under 1.191 or within the time allowed for response to the action
appealed from, if such time is later, file a brief in triplicate. The
brief must be accompanied by the requisite fee set forth in 1.17(f) and
must set forth the authorities and arguments on which appellant will rely
to maintain the appeal. Any arguments or authorities not included in the
brief will be refused consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
* * * * *
(c) The brief shall contain the following items under appropriate headings
and in the order indicated below unless the brief is filed by an applicant
who is not represented by a registered practitioner:
(1) Real party in interest. A statement identifying the real party in
interest, if the party named in the caption of the brief is not the real
party in interest.
(2) Related appeals and interferences. A statement identifying by
number and filing date all other appeals or interferences known to
appellant, the appellant's legal representative, or assignee which will
directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal.
(3) Status of claims. A statement of the status of all the claims,
pending or canceled, and identifying the claims appealed.
(4) Status of amendments. A statement of the status of any amendment
filed subsequent to final rejection.
(5) Summary of invention. A concise explanation of the invention
defined in the claims involved in the appeal, which shall refer to the
specification by page and line number, and to the drawing, if any, by
reference characters.
(6) Issues. A concise statement of the issues presented for review.
(7) Grouping of claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide the appeal as
to the ground of rejection on the basis of that claim alone unless a
statement is included that the claims of the group do not stand or fall
together and, in the argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are believed to be
separately patentable. Merely pointing out differences in what the claims
cover is not an argument as to why the claims are separately patentable.
(8) Argument. The contentions of appellant with respect to each of the
issues presented for review in paragraph (c)(6) of this section, and the
basis therefor, with citations of the authorities, statutes, and parts of
the record relied on. Each issue should be treated under a separate
heading.
* * * * *
(v) For any rejection other than those referred to in paragraphs (c)(8)(i)
to (iv) of this section, the argument shall specify the errors in the
rejection and the specific limitations in the rejected claims, if
appropriate, or other reasons, which cause the rejection to be in error.
(9) Appendix. An appendix containing a copy of the claims involved in
the appeal.
(d) If a brief is filed which does not comply with all the requirements
of paragraph (c) of this section, appellant will be notified of the
reasons for non-compliance and provided with a period of one month within
which to file an amended brief. If appellant does not file an amended
brief during the one-month period, or files an amended brief which does
not overcome all the reasons for non-compliance stated in the
notification, the appeal will stand dismissed.
4. Section 1.601 is amended by revising paragraphs (f), (g), (j), (k),
(l), (m), (n), and (q) and adding new paragraphs (r) and (s) to read as
follows:
1.601 Scope of rules, definitions.
* * * * *
(f) A count defines the interfering subject matter between two or more
applications or between one or more applications and one or more patents.
At the time the interference is initially declared, a count should be
broad enough to encompass all of the claims that are patentable over the
prior art and designated to correspond to the count. When there is more
than one count, each count shall define a separate patentable invention.
Any claim of an application or patent that is designated to correspond to
a count is a claim involved in the interference within the meaning of 35
U.S.C. 135(a). A claim of a patent or application that is designated to
correspond to a count and is identical to the count is said to correspond
exactly to the count. A claim of a patent or application that is
designated to correspond to a count but is not identical to the count is
said to correspond substantially to the count. When a count is broader in
scope than all claims which correspond to the count, the count is a
phantom count.
(g) The effective filing date of an application is the filing date of
an earlier application, benefit of which is accorded to the application
under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded, the
filing date of the application. The effective filing date of a patent is
the filing date of an earlier application, benefit of which is accorded to
the patent under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is
accorded, the filing date of the application which issued as the patent.
* * * * *
(j) An interference-in-fact exists when at least one claim of a party that
is designated to correspond to a count and at least one claim of an
opponent that is designated to correspond to the count define the same
patentable invention.
(k) A lead attorney or agent is a registered attorney or agent of
record who is primarily responsible for prosecuting an interference on
behalf of a party and is the attorney or agent whom an administrative
patent judge may contact to set times and take other action in the
interference.
(l) A party is an applicant or patentee involved in the interference or
a legal representative or an assignee of record in the Patent and
Trademark Office of an applicant or patentee involved in an interference.
Where acts of a party are normally performed by an attorney or agent,
"party" may be construed to mean the attorney or agent. An inventor is the
individual named as inventor in an application involved in an interference
or the individual named as inventor in a patent involved in an
interference.
(m) A senior party is the party with the earliest effective filing date
as to all counts or, if there is no party with the earliest effective
filing date as to all counts, the party with the earliest filing date. A
junior party is any other party.
(n) Invention "A" is the same patentable invention as an invention "B"
when invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C.
103) in view of invention "B" assuming invention "B" is prior art with
respect to invention "A". Invention "A" is a separate patentable invention
with respect to invention "B" when invention "A" is new (35 U.S.C. 102)
and non-obvious (35 U.S.C. 103) in view of invention "B" assuming
invention "B" is prior art with respect to invention "A".
* * * * *
(q) A final decision is a decision awarding judgment as to all counts. An
interlocutory order is any other action taken by an administrative patent
judge or the Board in an interference, including the notice declaring an
interference.
(r) NAFTA country means NAFTA country as defined in section 2(4) of the
North American Free Trade Agreement Implementation Act, Pub. L. 103-182,
107 Stat. 2060 (19 U.S.C. 3301).
(s) WTO member country means WTO member country as defined in section
2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4813
(19 U.S.C. 3501).
5. Section 1.602 is amended by revising paragraph (c) to read as follows:
1.602 Interest in applications and patents involved in an interference.
* * * * *
(c) If a change of any right, title, and interest in any application or
patent involved or relied upon in the interference occurs after notice is
given declaring the interference and before the time expires for seeking
judicial review of a final decision of the Board, the parties shall notify
the Board of the change within 20 days after the change.
6. Section 1.603 is revised to read as follows:
1.603 Interference between applications; subject matter of the
interference.
Before an interference is declared between two or more applications, the
examiner must be of the opinion that there is interfering subject matter
claimed in the applications which is patentable to each applicant subject
to a judgment in the interference. The interfering subject matter shall be
defined by one or more counts. Each application must contain, or be
amended to contain, at least one claim that is patentable over the prior
art and corresponds to each count. All claims in the applications which
define the same patentable invention as a count shall be designated to
correspond to the count.
7. Section 1.604(a)(1) is revised to read as follows:
1.604 Request for interference between applications by an applicant.
(a) * * *
(1) Suggesting a proposed count and presenting at least one claim
corresponding to the proposed count or identifying at least one claim in
its application that corresponds to the proposed count,
* * * * *
8. Section 1.605(a) is revised to read as follows:
1.605 Suggestion of claim to applicant by examiner.
(a) If no claim in an application is drawn to the same patentable
invention claimed in another application or patent, the examiner may
suggest that an applicant present a claim drawn to an invention claimed in
another application or patent for the purpose of an interference with
another application or a patent. The applicant to whom the claim is
suggested shall amend the application by presenting the suggested claim
within a time specified by the examiner, not less than one month. Failure
or refusal of an applicant to timely present the suggested claim shall be
taken without further action as a disclaimer by the applicant of the
invention defined by the suggested claim. At the time the suggested claim
is presented, the applicant may also call the examiner's attention to
other claims already in the application or presented with the suggested
claim and explain why the other claims would be more appropriate to be
designated to correspond to a count in any interference which may be
declared.
* * * * *
9. Section 1.606 is revised to read as follows:
1.606 Interference between an application and a patent; subject matter
of the interference.
Before an interference is declared between an application and an unexpired
patent, an examiner must determine that there is interfering subject
matter claimed in the application and the patent which is patentable to
the applicant subject to a judgment in the interference. The interfering
subject matter will be defined by one or more counts. The application must
contain, or be amended to contain, at least one claim that is patentable
over the prior art and corresponds to each count. The claim in the
application need not be, and most often will not be, identical to a claim
in the patent. All claims in the application and patent which define the
same patentable invention as a count shall be designated to correspond to
the count. At the time an interference is initially declared ( 1.611), a
count shall not be narrower in scope than any application claim that is
patentable over the prior art and designated to correspond to the count or
any patent claim designated to correspond to the count. Any single patent
claim designated to correspond to the count will be presumed, subject to a
motion under 1.633(c), not to contain separate patentable inventions.
10. Section 1.607 is amended by revising paragraph (a)(4) and adding a new
paragraph (a)(6) to read as follows:
1.607 Request by applicant for interference with patent.
(a) * * *
(4) Presenting at least one claim corresponding to the proposed count
or identifying at least one claim already pending in its application that
corresponds to the proposed count, and, if any claim of the patent or
application identified as corresponding to the proposed count does not
correspond exactly to the proposed count, explaining why each such claim
corresponds to the proposed count, and
* * * * *
(6) Explaining how the requirements of 35 U.S.C. 135(b) are met, if the
claim presented or identified under paragraph (a)(4) of this section was
not present in the application until more than one year after the issue
date of the patent.
* * * * *
11. Section 1.608 is revised to read as follows:
1.608 Interference between an application and a patent; prima facie
showing by applicant.
(a) When the effective filing date of an application is three months or
less after the effective filing date of a patent, before an interference
will be declared, either the applicant or the applicant's attorney or
agent of record shall file a statement alleging that there is a basis upon
which the applicant is entitled to a judgment relative to the patentee.
(b) When the effective filing date of an application is more than three
months after the effective filing date of a patent, the applicant, before
an interference will be declared, shall file evidence which may consist of
patents or printed publications, other documents, and one or more
affidavits which demonstrate that applicant is prima facie entitled to a
judgment relative to the patentee and an explanation stating with
particularity the basis upon which the applicant is prima facie entitled
to the judgment. Where the basis upon which an applicant is entitled to
judgment relative to a patentee is priority of invention, the evidence
shall include affidavits by the applicant, if possible, and one or more
corroborating witnesses, supported by documentary evidence, if available,
each setting out a factual description of acts and circumstances performed
or observed by the affiant, which collectively would prima facie entitle
the applicant to judgment on priority with respect to the effective filing
date of the patent. To facilitate preparation of a record ( 1.653(g))
for final hearing, an applicant should file affidavits on paper which is
21.8 by 27.9 cm. (8 1/2 x 11 inches). The significance of any printed
publication or other document which is self-authenticating within the
meaning of Rule 902 of the Federal Rules of Evidence or 1.671(d) and
any patent shall be discussed in an affidavit or the explanation. Any
printed publication or other document which is not self-authenticating
shall be authenticated and discussed with particularity in an affidavit.
Upon a showing of good cause, an affidavit may be based on information and
belief. If an examiner finds an application to be in condition for
declaration of an interference, the examiner will consider the evidence
and explanation only to the extent of determining whether a basis upon
which the application would be entitled to a judgment relative to the
patentee is alleged and, if a basis is alleged, an interference may be
declared.
12. Section 1.609 is amended by revising paragraphs (b)(1), (b)(2) and
(b)(3) to read as follows:
1.609 Preparation of interference papers by examiner.
* * * * *
(b) * * *
(1) The proposed count or counts and, if there is more than one count
proposed, explaining why the counts define different patentable inventions;
(2) The claims of any application or patent which correspond to each
count, explaining why each claim designated as corresponding to a count is
directed to the same patentable invention as the count;
(3) The claims in any application or patent which do not correspond to
each count and explaining why each claim designated as not corresponding
to any count is not directed to the same patentable invention as any
count; and
* * * * *
13. Section 1.610 is revised to read as follows:
1.610 Assignment of interference to administrative patent judge, time
period for completing interference.
(a) Each interference will be declared by an administrative patent judge
who may enter all interlocutory orders in the interference, except that
only the Board shall hear oral argument at final hearing, enter a decision
under 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter any other
order which terminates the interference.
(b) As necessary, another administrative patent judge may act in place
of the one who declared the interference. At the discretion of the
administrative patent judge assigned to the interference, a panel
consisting of two or more members of the Board may enter interlocutory
orders.
(c) Unless otherwise provided in this subpart, times for taking action
by a party in the interference will be set on a case-by-case basis by the
administrative patent judge assigned to the interference. Times for taking
action shall be set and the administrative patent judge shall exercise
control over the interference such that the pendency of the interference
before the Board does not normally exceed two years.
(d) An administrative patent judge may hold a conference with the
parties to consider simplification of any issues, the necessity or
desirability of amendments to counts, the possibility of obtaining
admissions of fact and genuineness of documents which will avoid
unnecessary proof, any limitations on the number of expert witnesses, the
time and place for conducting a deposition ( 1.673(g)), and any other
matter as may aid in the disposition of the interference. After a
conference, the administrative patent judge may enter any order which may
be appropriate.
(e) The administrative patent judge may determine a proper course of
conduct in an interference for any situation not specifically covered by
this part.
14. Section 1.611 is amended by redesignating paragraph (c)(8) as
paragraph (c)(9); adding a new paragraph (c)(8); and revising paragraphs
(b), (c)(6), (c)(7), and (d) to read as follows:
1.611 Declaration of interference.
* * * * *
(b) When a notice of declaration is returned to the Patent and Trademark
Office undelivered, or in any other circumstance where appropriate, an
administrative patent judge may send a copy of the notice to a patentee
named in a patent involved in an interference or the patentee's assignee
of record in the Patent and Trademark Office or order publication of an
appropriate notice in the Official Gazette.
(c) * * *
(6) The count or counts and, if there is more than one count, the
examiner's explanation why the counts define different patentable
inventions;
(7) The claim or claims of any application or any patent which
correspond to each count;
(8) The examiner's explanation as to why each claim designated as
corresponding to a count is directed to the same patentable invention as
the count and why each claim designated as not corresponding to any count
is not directed to the same patentable invention as any count; and
* * * * *
(d) The notice of declaration may also specify the time for:
(1) Filing a preliminary statement as provided in 1.621(a);
(2) Serving notice that a preliminary statement has been filed as
provided in 1.621(b); and
(3) Filing preliminary motions authorized by 1.633.
* * * * *
15. Section 1.612 is amended by revising paragraph (a) to read as follows:
1.612 Access to applications.
(a) After an interference is declared, each party shall have access to and
may obtain copies of the files of any application set out in the notice
declaring the interference, except for affidavits filed under 1.131 and
any evidence and explanation under 1.608 filed separate from an
amendment. A party seeking access to any abandoned or pending application
referred to in the opponent's involved application or access to any
pending application referred to in the opponent's patent must file a
motion under 1.635. See 1.11(e) concerning public access to
interference files.
* * * * *
16. Section 1.613 is amended by revising paragraphs (c) and (d) to read as
follows:
1.613 Lead attorney, same attorney representing different parties in an
interference, withdrawal of attorney or agent.
* * * * *
(c) An administrative patent judge may make necessary inquiry to determine
whether an attorney or agent should be disqualified from representing a
party in an interference. If an administrative patent judge is of the
opinion that an attorney or agent should be disqualified, the
administrative patent judge shall refer the matter to the Commissioner.
The Commissioner will make a final decision as to whether any attorney or
agent should be disqualified.
(d) No attorney or agent of record in an interference may withdraw as
attorney or agent of record except with the approval of an administrative
patent judge and after reasonable notice to the party on whose behalf the
attorney or agent has appeared. A request to withdraw as attorney or agent
of record in an interference shall be made by motion ( 1.635).
17. Section 1.614 is amended by revising paragraphs (a) and (c) to read as
follows:
1.614 Jurisdiction over interference.
(a) The Board acquires jurisdiction over an interference when the
interference is declared under 1.611.
* * * * *
(c) The examiner shall have jurisdiction over any pending application
until the interference is declared. An administrative patent judge may for
a limited purpose restore jurisdiction to the examiner over any
application involved in the interference.
18. Section 1.615 is revised to read as follows:
1.615 Suspension of ex parte prosecution.
(a) When an interference is declared, ex parte prosecution of an
application involved in the interference is suspended. Amendments and
other papers related to the application received during pendency of the
interference will not be entered or considered in the interference without
the consent of an administrative patent judge.
(b) Ex parte prosecution as to specified matters may be continued
concurrently with the interference with the consent of the administrative
patent judge.
19. Section 1.616 is revised to read as follows:
1.616 Sanctions for failure to comply with rules or order or for taking
and maintaining a frivolous position.
(a) An administrative patent judge or the Board may impose an appropriate
sanction against a party who fails to comply with the regulations of this
part or any order entered by an administrative patent judge or the Board.
An appropriate sanction may include among others entry of an order:
(1) Holding certain facts to have been established in the interference;
(2) Precluding a party from filing a paper;
(3) Precluding a party from presenting or contesting a particular issue;
(4) Precluding a party from requesting, obtaining, or opposing
discovery;
(5) Awarding compensatory expenses and/or compensatory attorney fees; or
(6) Granting judgment in the interference.
(b) An administrative patent judge or the Board may impose a sanction,
including a sanction in the form of compensatory expenses and/or
compensatory attorney fees, against a party for taking and maintaining a
frivolous position in papers filed in the interference.
(c) To the extent that an administrative patent judge or the Board has
authorized a party to compel the taking of testimony or the production of
documents or things from an individual or entity located in a NAFTA
country or a WTO member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of invention (
1.671(h)), but the testimony, documents or things have not been produced
for use in the interference to the same extent as such information could
be made available in the United States, the administrative patent judge or
the Board shall draw such adverse inferences as may be appropriate under
the circumstances, or take such other action permitted by statute, rule,
or regulation, in favor of the party that requested the information in the
interference, including imposition of appropriate sanctions under
paragraph (a) of this section.
(d) A party may file a motion ( 1.635) for entry of an order imposing
sanctions, the drawing of adverse inferences or other action under
paragraph (a), (b) or (c) of this section. Where an administrative patent
judge or the Board on its own initiative determines that a sanction,
adverse inference or other action against a party may be appropriate under
paragraph (a), (b) or (c) of this section, the administrative patent judge
or the Board shall enter an order for the party to show cause why the
sanction, adverse inference or other action is not appropriate. The Board
shall take action in accordance with the order unless, within 20 days
after the date of the order, the party files a paper which shows good
cause why the sanction, adverse inference or other action would not be
appropriate.
20. Section 1.617 is amended by revising paragraphs (a), (b), (d), (e),
(g) and (h) to read as follows:
1.617 Summary judgment against applicant.
(a) An administrative patent judge shall review any evidence filed by an
applicant under 1.608(b) to determine if the applicant is prima facie
entitled to a judgment relative to the patentee. If the administrative
patent judge determines that the evidence shows the applicant is prima
facie entitled to a judgment relative to the patentee, the interference
shall proceed in the normal manner under the regulations of this part. If
in the opinion of the administrative patent judge the evidence fails to
show that the applicant is prima facie entitled to a judgment relative to
the patentee, the administrative patent judge shall, concurrently with the
notice declaring the interference, enter an order stating the reasons for
the opinion and directing the applicant, within a time set in the order,
to show cause why summary judgment should not be entered against the
applicant.
(b) The applicant may file a response to the order, which may include
an appropriate preliminary motion under 1.633(c), (f) or (g), and state
any reasons why summary judgment should not be entered. Any request by the
applicant for a hearing before the Board shall be made in the response.
Additional evidence shall not be presented by the applicant or considered
by the Board unless the applicant shows good cause why any additional
evidence was not initially presented with the evidence filed under
1.608(b). At the time an applicant files a response, the applicant shall
serve a copy of any evidence filed under 1.608(b) and this paragraph.
* * * * *
(d) If a response is timely filed by the applicant, all opponents may file
a statement and may oppose any preliminary motion filed under 1.633(c),
(f) or (g) by the applicant within a time set by the administrative patent
judge. The statement may set forth views as to why summary judgment should
be granted against the applicant, but the statement shall be limited to
discussing why all the evidence presented by the applicant does not
overcome the reasons given by the administrative patent judge for issuing
the order to show cause. Except as required to oppose a motion under
1.633(c), (f) or (g) by the applicant, evidence shall not be filed by any
opponent. An opponent may not request a hearing.
(e) Within a time authorized by the administrative patent judge, an
applicant may file a reply to any statement or opposition filed by any
opponent.
* * * * *
(g) If a response by the applicant is timely filed, the administrative
patent judge or the Board shall decide whether the evidence submitted
under 1.608(b) and any additional evidence properly submitted under
paragraphs (b) and (e) of this section shows that the applicant is prima
facie entitled to a judgment relative to the patentee. If the applicant is
not prima facie entitled to a judgment relative to the patentee, the Board
shall enter a final decision granting summary judgment against the
applicant. Otherwise, an interlocutory order shall be entered authorizing
the interference to proceed in the normal manner under the regulations of
this subpart.
(h) Only an applicant who filed evidence under 1.608(b) may request
a hearing. If that applicant requests a hearing, the Board may hold a
hearing prior to entry of a decision under paragraph (g) of this section.
The administrative patent judge shall set a date and time for the hearing.
Unless otherwise ordered by the administrative patent judge or the Board,
the applicant and any opponent will each be entitled to no more than 30
minutes of oral argument at the hearing.
21. Section 1.618 is amended by revising paragraph (a) to read as follows:
1.618 Return of unauthorized papers.
(a) An administrative patent judge or the Board shall return to a party
any paper presented by the party when the filing of the paper is not
authorized by, or is not in compliance with the requirements of, this
subpart. Any paper returned will not thereafter be considered in the
interference. A party may be permitted to file a corrected paper under
such conditions as may be deemed appropriate by an administrative patent
judge or the Board.
* * * * *
22. Section 1.621 is amended by revising paragraph (b) to read as follows:
1.621 Preliminary statement, time for filing, notice of filing.
* * * * *
(b) When a party files a preliminary statement, the party shall also
simultaneously file and serve on all opponents in the interference a
notice stating that a preliminary statement has been filed. A copy of the
preliminary statement need not be served until ordered by the
administrative patent judge.
23. Section 1.622 is amended by revising paragraph (b) to read as follows:
1.622 Preliminary statement, who made invention, where invention made.
* * * * *
(b) The preliminary statement shall state whether the invention was made
in the United States, a NAFTA country (and, if so, which NAFTA country), a
WTO member country (and if so, which WTO member country), or in a place
other than the United States, a NAFTA country, or a WTO member country. If
made in a place other than the United States, a NAFTA country, or a WTO
member country, the preliminary statement shall state whether the party is
entitled to the benefit of 35 U.S.C. 104(a)(2).
24. Section 1.623 is amended by revising the section heading and paragraph
(a) introductory text to read as follows:
1.623 Preliminary statement; invention made in United States, a NAFTA
country, or a WTO member country.
(a) When the invention was made in the United States, a NAFTA country, or
a WTO member country, or a party is entitled to the benefit of 35 U.S.C.
104(a)(2), the preliminary statement must state the following facts as to
the invention defined by each count:
* * * * *
25. Section 1.624 is amended by revising the section heading and
paragraphs (a) and (c) to read as follows:
1.624 Preliminary statement; invention made in a place other than the
United States, a NAFTA country, or a WTO member country.
(a) When the invention was made in a place other than the United States, a
NAFTA country, or a WTO member country and a party intends to rely on
introduction of the invention into the United States, a NAFTA country, or
a WTO member country, the preliminary statement must state the following
facts as to the invention defined by each count:
(1) The date on which a drawing of the invention was first introduced
into the United States, a NAFTA country, or a WTO member country.
(2) The date on which a written description of the invention was first
introduced into the United States, a NAFTA country, or a WTO member
country.
(3) The date on which the invention was first disclosed to another
person in the United States, a NAFTA country, or a WTO member country.
(4) The date on which the inventor's conception of the invention was
first introduced into the United States, a NAFTA country, or a WTO member
country.
(5) The date on which an actual reduction to practice of the invention
was first introduced into the United States, a NAFTA country, or a WTO
member country. If an actual reduction to practice of the invention was
not introduced into the United States, a NAFTA country, or a WTO member
country, the preliminary amendment shall so state.
(6) The date after introduction of the inventor's conception into the
United States, a NAFTA country, or a WTO member country when active
exercise of reasonable diligence in the United States, a NAFTA country, or
a WTO member country toward reducing the invention to practice began.
* * * * *
(c) When a party alleges under paragraph (a)(1) of this section that a
drawing was introduced into the United States, a NAFTA country, or a WTO
member country, a copy of that drawing shall be filed with and identified
in the preliminary statement. When a party alleges under paragraph (a)(2)
of this section that a written description of the invention was introduced
into the United States, a NAFTA country, or a WTO member country, a copy
of that written description shall be filed with and identified in the
preliminary statement. See 1.628(b) when a copy of the first drawing or
first written description introduced in the United States, a NAFTA
country, or a WTO member country cannot be filed with the preliminary
statement.
26. Section 1.625 is amended by revising paragraph (a) introductory text
to read as follows:
1.625 Preliminary statement; derivation by an opponent.
(a) When a party intends to prove derivation by an opponent from the
party, the preliminary statement must state the following as to the
invention defined by each count:
* * * * *
27. Section 1.626 is revised to read as follows:
1.626 Preliminary statement; earlier application.
When a party does not intend to present evidence to prove a conception or
an actual reduction to practice and the party intends to rely solely on
the filing date of an earlier filed application to prove a constructive
reduction to practice, the preliminary statement may so state and identify
the earlier filed application with particularity.
28. Section 1.627(b) is revised to read as follows:
1.627 Preliminary statement; sealing before filing, opening of
statement.
* * * * *
(b) A preliminary statement may be opened only at the direction of an
administrative patent judge.
29. Section 1.628 is revised to read as follows:
1.628 Preliminary statement; correction of error.
(a) A material error arising through inadvertence or mistake in connection
with a preliminary statement or drawings or a written description
submitted therewith or omitted therefrom may be corrected by a motion (
1.635) for leave to file a corrected statement. The motion shall be
supported by an affidavit stating the date the error was first discovered,
shall be accompanied by the corrected statement and shall be filed as soon
as practical after discovery of the error. If filed on or after the date
set by the administrative patent judge for service of preliminary
statements, the motion shall also show that correction of the error is
essential to the interest of justice.
(b) When a party cannot attach a copy of a drawing or written
description to the party's preliminary statement as required by
1.623(c), 1.624(c) or 1.625(c), the party shall show good cause and
explain in the preliminary statement why a copy of the drawing or written
description cannot be attached to the preliminary statement and shall
attach to the preliminary statement the earliest drawing or written
description made in or introduced into the United States, a NAFTA country,
or a WTO member country which is available. The party shall file a motion
( 1.635) to amend its preliminary statement promptly after the first
drawing, first written description, or drawing or written description
first introduced into the United States, a NAFTA country, or a WTO member
country becomes available. A copy of the drawing or written description
may be obtained, where appropriate, by a motion ( 1.635) for additional
discovery under 1.687 or during a testimony period.
30. Section 1.629 is amended by revising paragraphs (a), (c)(1) and (d) to
read as follows:
1.629 Effect of preliminary statement.
(a) A party shall be strictly held to any date alleged in the preliminary
statement. Doubts as to definiteness or sufficiency of any allegation in a
preliminary statement or compliance with formal requirements will be
resolved against the party filing the statement by restricting the party
to its effective filing date or to the latest date of a period alleged in
the preliminary statement, as may be appropriate. A party may not correct
a preliminary statement except as provided by 1.628.
* * * * *
(c) * * *
(1) Shall be restricted to the party's effective filing date and
* * * * *
(d) If a party files a preliminary statement which contains an allegation
of a date of first drawing or first written description and the party does
not file a copy of the first drawing or written description with the
preliminary statement as required by 1.623(c), 1.624(c), or
1.625(c), the party will be restricted to the party's effective filing
date as to that allegation unless the party complies with 1.628(b). The
content of any drawing or written description submitted with a preliminary
statement will not normally be evaluated or considered by the Board.
* * * * *
31. Section 1.630 is revised to read as follows:
1.630 Reliance on earlier application.
A party shall not be entitled to rely on the filing date of an earlier
filed application unless the earlier application is identified (
1.611(c)(5)) in the notice declaring the interference or the party files a
preliminary motion under 1.633 seeking the benefit of the filing date
of the earlier application.
32. Section 1.631(a) is revised to read as follows:
1.631 Access to preliminary statement, service of preliminary statement.
(a) Unless otherwise ordered by an administrative patent judge,
concurrently with entry of a decision on preliminary motions filed under
1.633 any preliminary statement filed under 1.621(a) shall be opened
to inspection by the senior party and any junior party who filed a
preliminary statement. Within a time set by the administrative patent
judge, a party shall serve a copy of its preliminary statement on each
opponent who served a notice under 1.621(b).
* * * * *
33. Section 1.632 is revised to read as follows:
1.632 Notice of intent to argue abandonment, suppression or concealment
by opponent.
A notice shall be filed by a party who intends to argue that an opponent
has abandoned, suppressed, or concealed an actual reduction to practice
(35 U.S.C. 102(g)). A party will not be permitted to argue abandonment,
suppression, or concealment by an opponent unless the notice is timely
filed. Unless authorized otherwise by an administrative patent judge, a
notice is timely when filed within ten (10) days after the close of the
testimony-in-chief of the opponent.
34. Section 1.633 is amended by revising paragraphs (a), (b), (f), (g) and
(i) to read as follows:
1.633 Preliminary motions.
* * * * *
(a) A motion for judgment against an opponent's claim designated to
correspond to a count on the ground that the claim is not patentable to
the opponent. The motion shall separately address each claim alleged to be
unpatentable. In deciding an issue raised in a motion filed under this
paragraph (a), a claim will be construed in light of the specification of
the application or patent in which it appears. A motion under this
paragraph shall not be based on:
(1) Priority of invention by the moving party as against any opponent or
(2) Derivation of the invention by an opponent from the moving party.
See 1.637(a).
(b) A motion for judgment on the ground that there is no
interference-in-fact. A motion under this paragraph is proper only if the
interference involves a design application or patent or a plant
application or patent or no claim of a party which corresponds to a count
is identical to any claim of an opponent which corresponds to that count.
See 1.637(a). When claims of different parties are presented in "means
plus function" format, it may be possible for the claims of the different
parties not to define the same patentable invention even though the claims
contain the same literal wording.
* * * * *
(f) A motion to be accorded the benefit of the filing date of an earlier
filed application. See 1.637 (a) and (f).
(g) A motion to attack the benefit accorded an opponent in the notice
declaring the interference of the filing date of an earlier filed
application. See 1.637 (a) and (g).
* * * * *
(i) When a motion is filed under paragraph (a), (b), or (g) of this
section, an opponent, in addition to opposing the motion, may file a
motion to redefine the interfering subject matter under paragraph (c) of
this section, a motion to substitute a different application under
paragraph (d) of this section, or a motion to add a reissue application to
the interference under paragraph (h) of this section.
* * * * *
35. Section 1.636 is revised to read as follows:
1.636 Motions, time for filing.
(a) A preliminary motion under 1.633 (a) through (h) shall be filed
within a time period set by an administrative patent judge.
(b) A preliminary motion under 1.633 (i) or (j) shall be filed
within 20 days of the service of the preliminary motion under 1.633
(a), (b), (c)(1), or (g) unless otherwise ordered by an administrative
patent judge.
(c) A motion under 1.634 shall be diligently filed after an error is
discovered in the inventorship of an application or patent involved in an
interference unless otherwise ordered by an administrative patent judge.
(d) A motion under 1.635 shall be filed as specified in this subpart
or when appropriate unless otherwise ordered by an administrative patent
judge.
36. Section 1.637 is amended by revising paragraphs (a), (b), (c)(1)(v),
(c)(1)(vi), (c)(2)(ii), (c)(2)(iii), (c)(3)(ii), (c)(4)(ii), (d)
introductory text, (e)(1)(viii), (e)(2)(vii), (f)(2), and (h)(4); removing
paragraphs (c)(2)(iv), (c)(3)(iii), and (d)(4); and adding paragraphs
(c)(1)(vii), (e)(1)(ix), and (e)(2)(viii) to read as follows:
1.637 Content of motions.
(a) A party filing a motion has the burden of proof to show that it is
entitled to the relief sought in the motion. Each motion shall include a
statement of the precise relief requested, a statement of the material
facts in support of the motion, in numbered paragraphs, and a full
statement of the reasons why the relief requested should be granted. If a
party files a motion for judgment under 1.633(a) against an opponent
based on the ground of unpatentability over prior art, and the dates of
the cited prior art are such that the prior art appears to be applicable
to the party, it will be presumed, without regard to the dates alleged in
the preliminary statement of the party, that the cited prior art is
applicable to the party unless there is included with the motion an
explanation, and evidence if appropriate, as to why the prior art does not
apply to the party.
(b) Unless otherwise ordered by an administrative patent judge or the
Board, a motion under 1.635 shall contain a certificate by the moving
party stating that the moving party has conferred with all opponents in an
effort in good faith to resolve by agreement the issues raised by the
motion. The certificate shall indicate whether any opponent plans to
oppose the motion. The provisions of this paragraph do not apply to a
motion to suppress evidence ( 1.656(h)).
(c) * * *
(1) * * *
(v) Show that each proposed count defines a separate patentable
invention from every other count proposed to remain in the interference.
(vi) Be accompanied by a motion under 1.633(f) requesting the
benefit of the filing date of any earlier filed application, if benefit of
the earlier filed application is desired with respect to a proposed count.
(vii) If an opponent is accorded the benefit of the filing date of an
earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit of the
earlier filed application with respect to the proposed count. Otherwise,
the opponent will be presumed to be entitled to the benefit of the earlier
filed application with respect to the proposed count.
(2) * * *
(ii) Show that the claim proposed to be amended or added defines the
same patentable invention as the count.
(iii) Show the patentability to the applicant of each claim proposed to
be amended or added and apply the terms of the claim proposed to be
amended or added to the disclosure of the application; when necessary a
moving party applicant shall file with the motion a proposed amendment to
the application amending the claim corresponding to the count or adding
the proposed additional claim to the application.
(3) * * *
(ii) Show the claim defines the same patentable invention as another
claim whose designation as corresponding to the count the moving party
does not dispute.
(4) * * *
(ii) Show that the claim does not define the same patentable invention
as any other claim whose designation in the notice declaring the
interference as corresponding to the count the party does not dispute.
* * * * *
(d) A preliminary motion under 1.633(d) to substitute a different
application of the moving party shall:
* * * * *
(e) * * *
(1) * * *
(viii) Be accompanied by a motion under 1.633(f) requesting the
benefit of the filing date of an earlier filed application, if benefit is
desired with respect to a proposed count.
(ix) If an opponent is accorded the benefit of the filing date of an
earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit of the
earlier filed application with respect to the proposed count. Otherwise,
the opponent will be presumed to be entitled to the benefit of the earlier
filed application with respect to the proposed count.
(2) * * *
(vii) Be accompanied by a motion under 1.633(f) requesting the
benefit of the filing date of an earlier filed application, if benefit is
desired with respect to a proposed count.
(viii) If an opponent is accorded the benefit of the filing date of an
earlier filed application in the notice of declaration of the
interference, show why the opponent is not also entitled to benefit of the
earlier filed application with respect to the proposed count. Otherwise,
the opponent will be presumed to be entitled to the benefit of the earlier
filed application with respect to the proposed count.
(f) * * *
(2) When the earlier application is an application filed in the United
States, certify that a complete copy of the file of the earlier
application, except for documents filed under 1.131 or 1.608, has
been served on all opponents. When the earlier application is an
application filed in a foreign country, certify that a copy of the
application has been served on all opponents. If the earlier filed
application is not in English, the requirements of 1.647 must also be
met.
* * * * *
(h) * * *
(4) Be accompanied by a motion under 1.633(f) requesting the benefit
of the filing date of any earlier filed application, if benefit is desired.
37. Section 1.638 is revised to read as follows:
1.638 Opposition and reply; time for filing opposition and reply.
(a) Unless otherwise ordered by an administrative patent judge, any
opposition to any motion shall be filed within 20 days after service of
the motion. An opposition shall identify any material fact set forth in
the motion which is in dispute and include an argument why the relief
requested in the motion should be denied.
(b) Unless otherwise ordered by an administrative patent judge, any
reply shall be filed within 15 days after service of the opposition. A
reply shall be directed only to new points raised in the opposition.
38. Section 1.639 is amended by revising paragraphs (a), (b), (c) and
(d)(1) to read as follows:
1.639 Evidence in support of motion, opposition, or reply.
(a) Except as provided in paragraphs (c) through (g) of this section,
proof of any material fact alleged in a motion, opposition, or reply must
be filed and served with the motion, opposition, or reply unless the proof
relied upon is part of the interference file or the file of any patent or
application involved in the interference or any earlier application filed
in the United States of which a party has been accorded or seeks to be
accorded benefit.
(b) Proof may be in the form of patents, printed publications, and
affidavits. The pages of any affidavits filed under this paragraph shall,
to the extent possible, be given sequential numbers, which shall also
serve as the record page numbers for the affidavits in the event they are
included in the party's record ( 1.653). Any patents and printed
publications submitted under this paragraph and any exhibits identified in
affidavits submitted under this paragraph shall, to the extent possible,
be given sequential exhibit numbers, which shall also serve as the exhibit
numbers in the event the patents, printed publications and exhibits are
filed with the party's record ( 1.653).
(c) If a party believes that additional evidence in the form of
testimony that is unavailable to the party is necessary to support or
oppose a preliminary motion under 1.633 or a motion to correct
inventorship under 1.634, the party shall describe the nature of any
proposed testimony as specified in paragraphs (d) through (g) of this
section. If the administrative patent judge finds that testimony is needed
to decide the motion, the administrative patent judge may grant
appropriate interlocutory relief and enter an order authorizing the taking
of testimony and deferring a decision on the motion to final hearing.
(d) * * *
(1) Identify the person whom it expects to use as an expert;
* * * * *
39. Section 1.640 is amended by revising paragraphs (a), (b), (c), (d)
introductory text, (d)(1), (d)(3) and (e) to read as follows:
1.640 Motions, hearing and decision, redeclaration of interference,
order to show cause.
(a) A hearing on a motion may be held in the discretion of the
administrative patent judge. The administrative patent judge shall set the
date and time for any hearing. The length of oral argument at a hearing on
a motion is a matter within the discretion of the administrative patent
judge. An administrative patent judge may direct that a hearing take place
by telephone.
(b) Unless an administrative patent judge or the Board is of the
opinion that an earlier decision on a preliminary motion would materially
advance the resolution of the interference, decision on a preliminary
motion shall be deferred to final hearing. Motions not deferred to final
hearing will be decided by an administrative patent judge. An
administrative patent judge may consult with an examiner in deciding
motions. An administrative patent judge may take up motions for decision
in any order, may grant, deny, or dismiss any motion, and may take such
other action which will secure the just, speedy, and inexpensive
determination of the interference. A matter raised by a party in support
of or in opposition to a motion that is deferred to final hearing will not
be entitled to consideration at final hearing unless the matter is raised
in the party's brief at final hearing. If the administrative patent judge
determines that the interference shall proceed to final hearing on the
issue of priority or derivation, a time shall be set for each party to
file a paper identifying any decisions on motions or on matters raised sua
sponte by the administrative patent judge that the party wishes to have
reviewed at final hearing as well as identifying any deferred motions that
the party wishes to have considered at final hearing. Any evidence that a
party wishes to have considered with respect to the decisions and deferred
motions identified by the party or by an opponent for consideration or
review at final hearing shall be filed or, if appropriate, noticed under
1.671(e) during the testimony-in-chief period of the party.
(1) When appropriate after the time expires for filing replies to
oppositions to preliminary motions, the administrative patent judge will
set a time for filing any amendment to an application involved in the
interference and for filing a supplemental preliminary statement as to any
new counts which may become involved in the interference if a preliminary
motion to amend or substitute a count has been filed. Failure or refusal
of a party to timely present an amendment required by an administrative
patent judge shall be taken without further action as a disclaimer by that
party of the invention involved. A supplemental preliminary statement
shall meet the requirements specified in 1.623, 1.624, 1.625, or
1.626, but need not be filed if a party states that it intends to rely on
a preliminary statement previously filed under 1.621(a). At an
appropriate time in the interference, and when necessary, an order will be
entered redeclaring the interference.
(2) After the time expires for filing preliminary motions, a further
preliminary motion under 1.633 will not be considered except as
provided by 1.645(b).
(c) When a decision on any motion under 1.633, 1.634, or 1.635 or
on any matter raised sua sponte by an administrative patent judge is
entered which does not result in the issuance of an order to show cause
under paragraph (d) of this section, a party may file a request for
reconsideration within 14 days after the date of the decision. The request
for reconsideration shall be filed and served by hand or Express Mail. The
filing of a request for reconsideration will not stay any time period set
by the decision. The request for reconsideration shall specify with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision. No opposition to a request for
reconsideration shall be filed unless requested by an administrative
patent judge or the Board. A decision ordinarily will not be modified
unless an opposition has been requested by an administrative patent judge
or the Board. The request for reconsideration normally will be acted on by
the administrative patent judge or the panel of the Board which issued the
decision.
(d) An administrative patent judge may issue an order to show cause why
judgment should not be entered against a party when:
(1) A decision on a motion or on a matter raised sua sponte by an
administrative patent judge is entered which is dispositive of the
interference against the party as to any count;
* * * * *
(3) The party is a junior party whose preliminary statement fails to
overcome the effective filing date of another party.
(e) When an order to show cause is issued under paragraph (d) of this
section, the Board shall enter judgment in accordance with the order
unless, within 20 days after the date of the order, the party against whom
the order issued files a paper which shows good cause why judgment should
not be entered in accordance with the order.
(1) If the order was issued under paragraph (d)(1) of this section, the
paper may:
(i) Request that final hearing be set to review any decision which is
the basis for the order as well as any other decision of the
administrative patent judge that the party wishes to have reviewed by the
Board at final hearing or
(ii) Fully explain why judgment should not be entered.
(2) Any opponent may file a response to the paper within 20 days of the
date of service of the paper. If the order was issued under paragraph
(d)(1) of this section and the party's paper includes a request for final
hearing, the opponent's response must identify every decision of the
administrative patent judge that the opponent wishes to have reviewed by
the Board at a final hearing. If the order was issued under paragraph
(d)(1) of this section and the paper does not include a request for final
hearing, the opponent's response may include a request for final hearing,
which must identify every decision of the administrative patent judge that
the opponent wishes to have reviewed by the Board at a final hearing.
Where only the opponent's response includes a request for a final hearing,
the party filing the paper shall, within 14 days from the date of service
of the opponent's response, file a reply identifying any other decision of
the administrative patent judge that the party wishes to have reviewed by
the Board at a final hearing.
(3) The paper or the response should be accompanied by a motion (
1.635) requesting a testimony period if either party wishes to introduce
any evidence to be considered at final hearing ( 1.671). Any evidence
that a party wishes to have considered with respect to the decisions and
deferred motions identified for consideration or review at final hearing
shall be filed or, if appropriate, noticed under 1.671(e) during the
testimony period of the party. A request for a testimony period shall be
construed as including a request for final hearing.
(4) If the paper contains an explanation of why judgment should not be
entered in accordance with the order, and if no party has requested a
final hearing, the decision that is the basis for the order shall be
reviewed based on the contents of the paper and the response. If the paper
fails to show good cause, the Board shall enter judgment against the party
against whom the order issued.
40. Section 1.641 is revised to read as follows:
1.641 Unpatentability discovered by administrative patent judge.
(a) During the pendency of an interference, if the administrative patent
judge becomes aware of a reason why a claim designated to correspond to a
count may not be patentable, the administrative patent judge may enter an
order notifying the parties of the reason and set a time within which each
party may present its views, including any argument and any supporting
evidence, and, in the case of the party whose claim may be unpatentable,
any appropriate preliminary motions under 1.633(c), (d) and (h).
(b) If a party timely files a preliminary motion in response to the
order of the administrative patent judge, any opponent may file an
opposition ( 1.638(a)). If an opponent files an opposition, the party
may reply ( 1.638(b)).
(c) After considering any timely filed views, including any timely
filed preliminary motions under 1.633, oppositions and replies, the
administrative patent judge shall decide how the interference shall
proceed.
41. Section 1.642 is revised to read as follows:
1.642 Addition of application or patent to interference.
During the pendency of an interference, if the administrative patent judge
becomes aware of an application or a patent not involved in the
interference which claims the same patentable invention as a count in the
interference, the administrative patent judge may add the application or
patent to the interference on such terms as may be fair to all parties.
42. Section 1.643(b) is revised to read as follows:
1.643 Prosecution of interference by assignee.
* * * * *
(b) An assignee of a part interest in an application or patent involved in
an interference may file a motion ( 1.635) for entry of an order
authorizing it to prosecute the interference. The motion shall show the
inability or refusal of the inventor to prosecute the interference or
other cause why it is in the interest of justice to permit the assignee of
a part interest to prosecute the interference. The administrative patent
judge may allow the assignee of a part interest to prosecute the
interference upon such terms as may be appropriate.
43. Section 1.644 is amended by revising paragraphs (a) introductory text,
(a)(1), (a)(2), (b), (c), (d), (f) and (g) to read as follows:
1.644 Petitions in interferences.
(a) There is no appeal to the Commissioner in an interference from a
decision of an administrative patent judge or the Board. The Commissioner
will not consider a petition in an interference unless:
(1) The petition is from a decision of an administrative patent judge
or the Board and the administrative patent judge or the Board shall be of
the opinion that the decision involves a controlling question of procedure
or an interpretation of a rule as to which there is a substantial ground
for a difference of opinion and that an immediate decision on petition by
the Commissioner may materially advance the ultimate termination of the
interference;
(2) The petition seeks to invoke the supervisory authority of the
Commissioner and does not relate to the merits of priority of invention or
patentability or the admissibility of evidence under the Federal Rules of
Evidence; or
* * * * *
(b) A petition under paragraph (a)(1) of this section filed more than 15
days after the date of the decision of the administrative patent judge or
the Board may be dismissed as untimely. A petition under paragraph (a)(2)
of this section shall not be filed prior to the party's brief for final
hearing (see 1.656). Any petition under paragraph (a)(3) of this
section shall be timely if it is filed simultaneously with a proper motion
under 1.633, 1.634, or 1.635 when granting the motion would require
waiver of a rule. Any opposition to a petition under paragraphs (a)(1) or
(a)(2) of this section shall be filed within 20 days of the date of
service of the petition. Any opposition to a petition under paragraph
(a)(3) of this section shall be filed within 20 days of the date of
service of the petition or the date an opposition to the motion is due,
whichever is earlier.
(c) The filing of a petition shall not stay the proceeding unless a
stay is granted in the discretion of the administrative patent judge, the
Board, or the Commissioner.
(d) Any petition must contain a statement of the facts involved, in
numbered paragraphs, and the point or points to be reviewed and the action
requested. The petition will be decided on the basis of the record made
before the administrative patent judge or the Board, and no new evidence
will be considered by the Commissioner in deciding the petition. Copies of
documents already of record in the interference shall not be submitted
with the petition or opposition.
* * * * *
(f) Any request for reconsideration of a decision by the Commissioner
shall be filed within 14 days of the decision of the Commissioner and must
be accompanied by the fee set forth in 1.17(h). No opposition to a
request for reconsideration shall be filed unless requested by the
Commissioner. The decision will not ordinarily be modified unless such an
opposition has been requested by the Commissioner.
(g) Where reasonably possible, service of any petition, opposition, or
request for reconsideration shall be such that delivery is accomplished
within one working day. Service by hand or Express Mail complies with this
paragraph.
* * * * *
44. Section 1.645 is amended by revising paragraphs (a), (b) and (d) to
read as follows:
1.645 Extension of time, late papers, stay of proceedings.
(a) Except to extend the time for filing a notice of appeal to the U.S.
Court of Appeals for the Federal Circuit or for commencing a civil action,
a party may file a motion ( 1.635) seeking an extension of time to take
action in an interference. See 1.304(a) for extensions of time for
filing a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit or for commencing a civil action. The motion shall be filed within
sufficient time to actually reach the administrative patent judge before
expiration of the time for taking action. A moving party should not assume
that the motion will be granted even if there is no objection by any other
party. The motion will be denied unless the moving party shows good cause
why an extension should be granted. The press of other business arising
after an administrative patent judge sets a time for taking action will
not normally constitute good cause. A motion seeking additional time to
take testimony because a party has not been able to procure the testimony
of a witness shall set forth the name of the witness, any steps taken to
procure the testimony of the witness, the dates on which the steps were
taken, and the facts expected to be proved through the witness.
(b) Any paper belatedly filed will not be considered except upon motion
( 1.635) which shows good cause why the paper was not timely filed, or
where an administrative patent judge or the Board, sua sponte, is of the
opinion that it would be in the interest of justice to consider the paper.
See 1.304(a) for exclusive procedures relating to belated filing of a
notice of appeal to the U.S. Court of Appeals for the Federal Circuit or
belated commencement of a civil action.
* * * * *
(d) An administrative patent judge may stay proceedings in an interference.
45. Section 1.646 is amended by revising paragraphs (a)(1), (a)(2), (b),
(c) introductory text, (c)(1), (c)(4), (d) and (e); redesignating
paragraph (c)(5) as paragraph (c)(6) and revising it; and adding a new
paragraph (c)(5) to read as follows:
1.646 Service of papers, proof of service.
(a) * * *
(1) Preliminary statements when filed under 1.621; preliminary
statements shall be served when service is ordered by an administrative
patent judge.
(2) Certified transcripts and exhibits which accompany the transcripts
filed under 1.676; copies of transcripts shall be served as part of a
party's record under 1.653(c).
(b) Service shall be on an attorney or agent for a party. If there is
no attorney or agent for the party, service shall be on the party. An
administrative patent judge may order additional service or waive service
where appropriate.
(c) Unless otherwise ordered by an administrative patent judge, or
except as otherwise provided by this subpart, service of a paper shall be
made as follows:
(1) By handing a copy of the paper or causing a copy of the paper to be
handed to the person served.
* * * * *
(4) By mailing a copy of the paper by first class mail; when service is by
first class mail the date of mailing is regarded as the date of service.
(5) By mailing a copy of the paper by Express Mail; when service is by
Express Mail the date of deposit with the U.S. Postal Service is regarded
as the date of service.
(6) When it is shown to the satisfaction of an administrative patent
judge that none of the above methods of obtaining or serving the copy of
the paper was successful, the administrative patent judge may order
service by publication of an appropriate notice in the Official Gazette.
(d) An administrative patent judge may order that a paper be served by
hand or Express Mail.
(e) The due date for serving a paper is the same as the due date for
filing the paper in the Patent and Trademark Office. Proof of service must
be made before a paper will be considered in an interference. Proof of
service may appear on or be affixed to the paper. Proof of service shall
include the date and manner of service. In the case of personal service
under paragraphs (c)(1) through (c)(3) of this section, proof of service
shall include the names of any person served and the person who made the
service. Proof of service may be made by an acknowledgment of service by
or on behalf of the person served or a statement signed by the party or
the party's attorney or agent containing the information required by this
section. A statement of an attorney or agent attached to, or appearing in,
the paper stating the date and manner of service will be accepted as prima
facie proof of service.
46. Section 1.647 is revised to read as follows:
1.647 Translation of document in foreign language.
When a party relies on a document or is required to produce a document in
a language other than English, a translation of the document into English
and an affidavit attesting to the accuracy of the translation shall be
filed with the document.
47. Section 1.651 is amended by revising paragraphs (a), (c)(1), (c)(2),
(c)(3) and (d) to read as follows:
1.651 Setting times for discovery and taking testimony, parties
entitled to take testimony.
(a) At an appropriate stage in an interference, an administrative patent
judge shall set a time for filing motions ( 1.635) for additional
discovery under 1.687(c) and testimony periods for taking any necessary
testimony.
* * * * *
(c) * * *
(1) The administrative patent judge orders the taking of testimony
under 1.639(c);
(2) The party alleges in its preliminary statement a date of invention
prior to the effective filing date of the senior party;
(3) A testimony period has been set to permit an opponent to prove a
date of invention prior to the effective filing date of the party and the
party has filed a preliminary statement alleging a date of invention prior
to that date; or
* * * * *
(d) Testimony, including any testimony to be taken in a place outside the
United States, shall be taken and completed during the testimony periods
set under paragraph (a) of this section. A party seeking to extend the
period for taking testimony must comply with 1.635 and 1.645(a).
48. Section 1.652 is revised to read as follows:
1.652 Judgment for failure to take testimony or file record.
If a junior party fails to timely take testimony authorized under
1.651, or file a record under 1.653(c), an administrative patent judge,
with or without a motion ( 1.635) by another party, may issue an order
to show cause why judgment should not be entered against the junior party.
When an order is issued under this section, the Board shall enter judgment
in accordance with the order unless, within 15 days after the date of the
order, the junior party files a paper which shows good cause why judgment
should not be entered in accordance with the order. Any other party may
file a response to the paper within 15 days of the date of service of the
paper. If the party against whom the order was issued fails to show good
cause, the Board shall enter judgment against the party.
49. Section 1.653 is amended by removing and reserving paragraphs
(c)(5), (f) and (h) and by revising paragraphs (a), (b), (c) introductory
text, (c)(1), (c)(4), (d), (g) and (i) to read as follows:
1.653 Record and exhibits.
(a) Testimony shall consist of affidavits under 1.672(b), (c) and
(g), 1.682(c), 1.683(b) and 1.688(b), transcripts of depositions under
1.671(g) and 1.672(a) when a deposition is authorized by an
administrative patent judge, transcripts of depositions under
1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed statements under
1.672(h), transcripts of interrogatories, cross-interrogatories, and
recorded answers and copies of written interrogatories and answers and
written requests for admissions and answers under 1.688(a).
(b) An affidavit shall be filed as set forth in 1.677. A certified
transcript of a deposition, including a deposition cross-examining an
affiant, shall be filed as set forth in 1.676, 1.677 and 1.678. An
original agreed statement shall be filed as set forth in 1.672(h).
(c) In addition to the items specified in paragraph (b) of this section
and within a time set by an administrative patent judge, each party shall
file three copies and serve one copy of a record consisting of:
(1) An index of the names of the witnesses for the party, giving the
pages of the record where the direct testimony and cross-examination of
each witness begins.
* * * * *
(4) Each affidavit by a witness for the party, transcript, including
transcripts of cross-examination of any affiant who testified for the
party and transcripts of compelled deposition testimony by a witness for
the party, agreed statement relied upon by the party, and transcript of
interrogatories, cross-interrogatories and recorded answers.
* * * * *
(d) The pages of the record shall be consecutively numbered to the extent
possible.
* * * * *
(g) The record may be produced by standard typographical printing or by
any other process capable of producing a clear black permanent image. All
printed matter except on covers must appear in at least 11 point type on
opaque, unglazed paper. Footnotes may not be printed in type smaller than
9 point. The page size shall be 21.8 by 27.9 cm. (8 1/2 by 11 inches)
(letter size) with printed matter 16.5 by 24.1 cm. (6 1/2 by 9 1/2
inches). The record shall be bound with covers at their left edges in such
manner as to lie flat when open to any page and in one or more volumes of
convenient size (approximately 100 pages per volume is suggested). When
there is more than one volume, the numbers of the pages contained in each
volume shall appear at the top of the cover for each volume.
(i) Each party shall file its exhibits with the record specified in
paragraph (c) of this section. Exhibits include documents and things
identified in affidavits or on the record during the taking of oral
depositions as well as official records and publications filed by the
party under 1.682(a). One copy of each documentary exhibit shall be
served. Documentary exhibits shall be filed in an envelope or folder and
shall not be bound as part of the record. Physical exhibits, if not filed
by an officer under 1.676(d), shall be filed with the record. Each
exhibit shall contain a label which identifies the party submitting the
exhibit and an exhibit number, the style of the interference (e.g., Jones
v. Smith), and the interference number. Where possible, the label should
appear at the bottom right-hand corner of each documentary exhibit. Upon
termination of an interference, an administrative patent judge may return
an exhibit to the party filing the exhibit. When any exhibit is returned,
an order shall be entered indicating that the exhibit has been returned.
* * * * *
50. Section 1.654 is amended by revising paragraphs (a) and (d) to read as
follows:
1.654 Final hearing.
(a) At an appropriate stage of the interference, the parties will be given
an opportunity to appear before the Board to present oral argument at a
final hearing. An administrative patent judge may set a date and time for
final hearing. Unless otherwise ordered by an administrative patent judge
or the Board, each party will be entitled to no more than 30 minutes of
oral argument at final hearing. A party who does not file a brief for
final hearing ( 1.656(a)) shall not be entitled to appear at final
hearing.
* * * * *
(d) After final hearing, the interference shall be taken under
advisement by the Board. No further paper shall be filed except under
1.658(b) or as authorized by an administrative patent judge or the Board.
No additional oral argument shall be had unless ordered by the Board.
51. Section 1.655 is revised to read as follows:
1.655 Matters considered in rendering a final decision.
(a) In rendering a final decision, the Board may consider any properly
raised issue, including priority of invention, derivation by an opponent
from a party who filed a preliminary statement under 1.625,
patentability of the invention, admissibility of evidence, any
interlocutory matter deferred to final hearing, and any other matter
necessary to resolve the interference. The Board may also consider whether
entry of any interlocutory order was an abuse of discretion. All
interlocutory orders shall be presumed to have been correct, and the
burden of showing an abuse of discretion shall be on the party attacking
the order. When two or more interlocutory orders involve the same issue,
the last entered order shall be presumed to have been correct.
(b) A party shall not be entitled to raise for consideration at final
hearing any matter which properly could have been raised by a motion under
1.633 or 1.634 unless the matter was properly raised in a motion that
was timely filed by the party under 1.633 or 1.634 and the motion was
denied or deferred to final hearing, the matter was properly raised by the
party in a timely filed opposition to a motion under 1.633 or 1.634
and the motion was granted over the opposition or deferred to final
hearing, or the party shows good cause why the issue was not properly
raised by a timely filed motion or opposition. A party that fails to
contest, by way of a timely filed preliminary motion under 1.633(c),
the designation of a claim as corresponding to a count, or fails to timely
argue the separate patentability of a particular claim when the ground for
unpatentability is first raised, may not subsequently argue to an
administrative patent judge or the Board the separate patentability of
claims designated to correspond to the count with respect to that ground.
(c) In the interest of justice, the Board may exercise its discretion
to consider an issue even though it would not otherwise be entitled to
consideration under this section.
52. In 1.656, paragraphs (a), (d), (e), (g), (h) and (i) are revised;
paragraphs (b)(1) through (b)(6) are redesignated as paragraphs (b)(3)
through (b)(8); newly designated paragraphs (b)(5) and (b)(6) are revised;
and new paragraphs (b)(1) and (b)(2) are added to read as follows:
1.656 Briefs for final hearing.
(a) Each party shall be entitled to file briefs for final hearing. The
administrative patent judge shall determine the briefs needed and shall
set the time and order for filing briefs.
(b) * * *
(1) A statement of interest indicating the full name of every party
represented by the attorney in the interference and the name of the real
party in interest if the party named in the caption is not the real party
in interest.
(2) A statement of related cases indicating whether the interference
was previously before the Board for final hearing and the name and number
of any related appeal or interference which is pending before, or which
has been decided by, the Board, or which is pending before, or which has
been decided by, the U.S. Court of Appeals for the Federal Circuit or a
district court in a proceeding under 35 U.S.C. 146. A related appeal or
interference is one which will directly affect or be directly affected by
or have a bearing on the Board's decision in the pending interference.
* * * * *
(5) A statement of the facts, in numbered paragraphs, relevant to the
issues presented for decision with appropriate references to the record.
(6) An argument, which may be preceded by a summary, which shall
contain the contentions of the party with respect to the issues it is
raising for consideration at final hearing, and the reasons therefor, with
citations to the cases, statutes, other authorities, and parts of the
record relied on.
* * * * *
(d) Unless ordered otherwise by an administrative patent judge, briefs
shall be double-spaced (except for footnotes, which may be single-spaced)
and shall comply with the requirements of 1.653(g) for records except
the requirement for binding.
(e) An original and four copies of each brief must be filed.
* * * * *
(g) Any party, separate from its opening brief, but filed concurrently
therewith, may file an original and four copies of concise proposed
findings of fact and conclusions of law. Any proposed findings of fact
shall be in numbered paragraphs and shall be supported by specific
references to the record. Any proposed conclusions of law shall be in
numbered paragraphs and shall be supported by citation of cases, statutes,
or other authority. Any opponent, separate from its opening or reply
brief, but filed concurrently therewith, may file a paper accepting or
objecting to any proposed findings of fact or conclusions of law; when
objecting, a reason must be given. The Board may adopt the proposed
findings of fact and conclusions of law in whole or in part.
(h) If a party wants the Board in rendering its final decision to rule
on the admissibility of any evidence, the party shall file with its
opening brief an original and four copies of a motion ( 1.635) to
suppress the evidence. The provisions of 1.637(b) do not apply to a
motion to suppress under this paragraph. Any objection previously made to
the admissibility of the evidence of an opponent is waived unless the
motion required by this paragraph is filed. A party that failed to
challenge the admissibility of the evidence of an opponent on a ground
that could have been raised in a timely objection under 1.672(c),
1.682(c), 1.683(b) or 1.688(b) may not move under this paragraph to
suppress the evidence on that ground at final hearing. An original and
four copies of an opposition to the motion may be filed with an opponent's
opening brief or reply brief as may be appropriate.
(i) When a junior party fails to timely file an opening brief, an order
may issue requiring the junior party to show cause why the Board should
not treat failure to file the brief as a concession of priority. If the
junior party fails to show good cause within a time period set in the
order, judgment may be entered against the junior party.
53. Section 1.657 is revised to read as follows:
1.657 Burden of proof as to date of invention.
(a) A rebuttable presumption shall exist that, as to each count, the
inventors made their invention in the chronological order of their
effective filing dates. The burden of proof shall be upon a party who
contends otherwise.
(b) In an interference involving copending applications or involving a
patent and an application having an effective filing date on or before the
date the patent issued, a junior party shall have the burden of
establishing priority by a preponderance of the evidence.
(c) In an interference involving an application and a patent and where
the effective filing date of the application is after the date the patent
issued, a junior party shall have the burden of establishing priority by
clear and convincing evidence.
54. Section 1.658 is amended by revising paragraphs (a) and (b) to read as
follows:
1.658 Final decision.
(a) After final hearing, the Board shall enter a decision resolving the
issues raised at final hearing. The decision may enter judgment, in whole
or in part, remand the interference to an administrative patent judge for
further proceedings, or take further action not inconsistent with law. A
judgment as to a count shall state whether or not each party is entitled
to a patent containing the claims in the party's patent or application
which correspond to the count. When the Board enters a decision awarding
judgment as to all counts, the decision shall be regarded as a final
decision for the purpose of judicial review (35 U.S.C. 141-144, 146)
unless a request for reconsideration under paragraph (b) of this section
is timely filed.
(b) Any request for reconsideration of a decision under paragraph (a)
of this section shall be filed within one month after the date of the
decision. The request for reconsideration shall specify with particularity
the points believed to have been misapprehended or overlooked in rendering
the decision. Any opposition to a request for reconsideration shall be
filed within 14 days of the date of service of the request for
reconsideration. Service of the request for reconsideration shall be by
hand or Express Mail. The Board shall enter a decision on the request for
reconsideration. If the Board shall be of the opinion that the decision on
the request for reconsideration significantly modifies its original
decision under paragraph (a) of this section, the Board may designate the
decision on the request for reconsideration as a new decision. A decision
on reconsideration is a final decision for the purpose of judicial review
(35 U.S.C. 141-144, 146).
* * * * *
55. Section 1.660 is amended by adding paragraph (e) to read as follows:
1.660 Notice of reexamination, reissue, protest, or litigation.
* * * * *
(e) The notice required by this section is designed to assist the
administrative patent judge and the Board in efficiently handling
interference cases. Failure of a party to comply with the provisions of
this section may result in sanctions under 1.616. Knowledge by, or
notice to, an employee of the Office other than an employee of the Board,
of the existence of the reexamination, application for reissue, protest,
or litigation shall not be sufficient. The notice contemplated by this
section is notice addressed to the administrative patent judge in charge
of the interference in which the application or patent is involved.
56. Section 1.662 is amended by revising paragraphs (a) and (b) to read as
follows:
1.662 Request for entry of adverse judgment; reissue filed by patentee.
(a) A party may, at any time during an interference, request and agree to
entry of an adverse judgment. The filing by a party of a written
disclaimer of the invention defined by a count, concession of priority or
unpatentability of the subject matter of a count, abandonment of the
invention defined by a count, or abandonment of the contest as to a count
will be treated as a request for entry of an adverse judgment against the
applicant or patentee as to all claims which correspond to the count.
Abandonment of an application, other than an application for reissue
having a claim of the patent sought to be reissued involved in the
interference, will be treated as a request for entry of an adverse
judgment against the applicant as to all claims corresponding to all
counts. Upon the filing by a party of a request for entry of an adverse
judgment, the Board may enter judgment against the party.
(b) If a patentee involved in an interference files an application for
reissue during the interference and the reissue application does not
include a claim that corresponds to a count, judgment may be entered
against the patentee. A patentee who files an application for reissue
which includes a claim that corresponds to a count shall, in addition to
complying with the provisions of 1.660(b), timely file a preliminary
motion under 1.633(h) or show good cause why the motion could not have
been timely filed or would not be appropriate.
* * * * *
57. Section 1.664 is revised to read as follows:
1.664 Action after interference.
(a) After termination of an interference, the examiner will promptly take
such action in any application previously involved in the interference as
may be necessary. Unless entered by order of an administrative patent
judge, amendments presented during the interference shall not be entered,
but may be subsequently presented by the applicant subject to the
provisions of this subpart provided prosecution of the application is not
otherwise closed.
(b) After judgment, the application of any party may be held subject to
further examination, including an interference with another application.
58. Section 1.671 is amended by revising paragraphs (a) introductory text,
(c)(1), (c)(2), (c)(6), (c)(7), (e), (f) and (g); redesignating paragraph
(h) as paragraph (i) and revising it; and adding new paragraphs (h) and
(j) to read as follows:
1.671 Evidence must comply with rules.
(a) Evidence consists of testimony and referenced exhibits, official
records and publications filed under 1.682, testimony and referenced
exhibits from another interference, proceeding, or action filed under
1.683, discovery relied upon under 1.688, and the specification
(including claims) and drawings of any application or patent:
* * * * *
(c) * * *
(1) Courts of the United States, U.S. Magistrate, court, trial court,
or trier of fact means administrative patent judge or Board as may be
appropriate.
(2) Judge means administrative patent judge.
* * * * *
(6) Before the hearing in Rule 703 of the Federal Rules of Evidence means
before giving testimony by affidavit or oral deposition.
(7) The trial or hearing in Rules 803(24) and 804(5) of the Federal
Rules of Evidence means the taking of testimony by affidavit or oral
deposition.
* * * * *
(e) A party may not rely on an affidavit (including any exhibits), patent
or printed publication previously submitted by the party under 1.639(b)
unless a copy of the affidavit, patent or printed publication has been
served and a written notice is filed prior to the close of the party's
relevant testimony period stating that the party intends to rely on the
affidavit, patent or printed publication. When proper notice is given
under this paragraph, the affidavit, patent or printed publication shall
be deemed as filed under 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a),
as appropriate.
(f) The significance of documentary and other exhibits identified by a
witness in an affidavit or during oral deposition shall be discussed with
particularity by a witness.
(g) A party must file a motion ( 1.635) seeking permission from an
administrative patent judge prior to compelling testimony or production of
documents or things under 35 U.S.C. 24 or from an opposing party. The
motion shall describe the general nature and the relevance of the
testimony, document, or thing. If permission is granted, the party shall
notice a deposition under 1.673 and may proceed to take testimony.
(h) A party must file a motion ( 1.635) seeking permission from an
administrative patent judge prior to compelling testimony or production of
documents or things in a foreign country.
(1) In the case of testimony, the motion shall:
(i) Describe the general nature and relevance of the testimony;
(ii) Identify the witness by name or title;
(iii) Identify the foreign country and explain why the party believes
the witness can be compelled to testify in the foreign country, including
a description of the procedures that will be used to compel the testimony
in the foreign country and an estimate of the time it is expected to take
to obtain the testimony; and
(iv) Demonstrate that the party has made reasonable efforts to secure
the agreement of the witness to testify in the United States but has been
unsuccessful in obtaining the agreement, even though the party has offered
to pay the expenses of the witness to travel to and testify in the United
States.
(2) In the case of production of a document or thing, the motion shall:
(i) Describe the general nature and relevance of the document or thing;
(ii) Identify the foreign country and explain why the party believes
production of the document or thing can be compelled in the foreign
country, including a description of the procedures that will be used to
compel production of the document or thing in the foreign country and an
estimate of the time it is expected to take to obtain production of the
document or thing; and
(iii) Demonstrate that the party has made reasonable efforts to obtain
the agreement of the individual or entity having possession, custody, or
control of the document to produce the document or thing in the United
States but has been unsuccessful in obtaining that agreement, even though
the party has offered to pay the expenses of producing the document or
thing in the United States.
(i) Evidence which is not taken or sought and filed in accordance with
this subpart shall not be admissible.
(j) The weight to be given deposition testimony taken in a foreign
country will be determined in view of all the circumstances, including the
laws of the foreign country governing the testimony. Little, if any,
weight may be given to deposition testimony taken in a foreign country
unless the party taking the testimony proves by clear and convincing
evidence, as a matter of fact, that knowingly giving false testimony in
that country in connection with an interference proceeding in the United
States Patent and Trademark Office is punishable under the laws of that
country and that the punishment in that country for such false testimony
is comparable to or greater than the punishment for perjury committed in
the United States. The administrative patent judge and the Board, in
determining foreign law, may consider any relevant material or source,
including testimony, whether or not submitted by a party or admissible
under the Federal Rules of Evidence.
59. Section 1.672 is revised to read as follows:
1.672 Manner of taking testimony.
(a) Unless testimony must be compelled under 35 U.S.C. 24, compelled from
a party, or compelled in a foreign country, testimony of a witness shall
be taken by affidavit in accordance with this subpart. Testimony which
must be compelled under 35 U.S.C. 24, compelled from a party, or compelled
in a foreign country shall be taken by oral deposition.
(b) A party presenting testimony of a witness by affidavit shall,
within the time set by the administrative patent judge for serving
affidavits, file a copy of the affidavit or, if appropriate, notice under
1.671(e). If the affidavit relates to a party's case-in-chief, it shall
be filed or noticed no later than the date set by an administrative patent
judge for the party to file affidavits for its case-in-chief. If the
affidavit relates to a party's case-in-rebuttal, it shall be filed or
noticed no later than the date set by an administrative patent judge for
the party to file affidavits for its case-in-rebuttal. A party shall not
be entitled to rely on any document referred to in the affidavit unless a
copy of the document is filed with the affidavit. A party shall not be
entitled to rely on any thing mentioned in the affidavit unless the
opponent is given reasonable access to the thing. A thing is something
other than a document. The pages of affidavits filed under this paragraph
and of any other testimony filed therewith under 1.683(a) and
1.688(a) shall, to the extent possible, be given sequential numbers which
shall also serve as the record page numbers for the affidavits and other
testimony in the party's record to be filed under 1.653. Exhibits
identified in the affidavits or in any other testimony filed under
1.683(a) and 1.688(a) and any official records and printed publications
filed under 1.682(a) shall, to the extent possible, be given sequential
exhibit numbers, which shall also serve as the exhibit numbers when the
exhibits are filed with the party's record. The affidavits, testimony
filed under 1.683(a) and 1.688(a) and exhibits shall be accompanied
by an index of the names of the witnesses, giving the number of the page
where the testimony of each witness begins, and by an index of the
exhibits briefly describing the nature of each exhibit and giving the
number of the page where each exhibit is first identified and offered into
evidence.
(c) If an opponent objects to the admissibility of any evidence
contained in or submitted with an affidavit filed under paragraph (b) of
this section, the opponent must, no later than the date set by the
administrative patent judge for filing objections under this paragraph,
file objections stating with particularity the nature of each objection.
An opponent that fails to object to the admissibility of the evidence
contained in or submitted with an affidavit on a ground that could have
been raised in a timely objection under this paragraph will not be
entitled to move under 1.656(h) to suppress the evidence on that
ground. If an opponent timely files objections, the party may, within 20
days of the due date for filing objections, file one or more supplemental
affidavits, official records or printed publications to overcome the
objections. No objection to the admissibility of the supplemental evidence
shall be made, except as provided by 1.656(h). The pages of
supplemental affidavits filed under this paragraph shall, to the extent
possible, be sequentially numbered beginning with the number following the
last page number of the party's testimony submitted under paragraph (b) of
this section. The page numbers assigned to the supplemental affidavits
shall also serve as the record page numbers for the supplemental
affidavits in the party's record filed under 1.653. Additional exhibits
identified in supplemental affidavits and any supplemental official
records and printed publications shall, to the extent possible, be given
sequential numbers beginning with the number following the last number of
the exhibits submitted under paragraph (b) of this section. The exhibit
numbers shall also serve as the exhibit numbers when the exhibits are
filed with the party's record. The supplemental affidavits shall be
accompanied by an index of the names of the witnesses and an index of
exhibits of the type specified in paragraph (b) of this section.
(d) After the time expires for filing objections and supplemental
affidavits, or earlier when appropriate, the administrative patent judge
shall set a time within which any opponent may file a request to
cross-examine an affiant on oral deposition. If any opponent requests
cross-examination of an affiant, the party shall notice a deposition at a
reasonable location within the United States under 1.673(e) for the
purpose of cross-examination by any opponent. Any redirect and recross
shall take place at the deposition. At any deposition for the purpose of
cross-examination of a witness, the party shall not be entitled to rely on
any document or thing not mentioned in one or more of the affidavits filed
under paragraphs (b) and (c) of this section, except to the extent
necessary to conduct proper redirect. The party who gives notice of a
deposition shall be responsible for providing a translator if the witness
does not testify in English, for obtaining a court reporter, and for
filing a certified transcript of the deposition as required by 1.676.
Within 45 days of the close of the period for taking cross-examination,
the party shall serve (but not file) a copy of each transcript on each
opponent together with copies of any additional documentary exhibits
identified by the witness during the deposition. The pages of the
transcripts served under this paragraph shall, to the extent possible, be
sequentially numbered beginning with the number following the last page
number of the party's supplemental affidavits submitted under paragraph
(c) of this section. The numbers assigned to the transcript pages shall
also serve as the record page numbers for the transcripts in the party's
record filed under 1.653. Additional exhibits identified in the
transcripts, shall, to the extent possible, be given sequential numbers
beginning with the number following the last number of the exhibits
submitted under paragraphs (b) and (c) of this section. The exhibit
numbers assigned to the additional exhibits shall also serve as the
exhibit numbers when those exhibits are filed with the party's record. The
deposition transcripts shall be accompanied by an index of the names of
the witnesses, giving the number of the page where cross-examination,
redirect and recross of each witness begins, and an index of exhibits of
the type specified in paragraph (b) of this section.
(e) [Reserved]
(f) When a deposition is authorized to be taken within the United
States under this subpart and if the parties agree in writing, the
deposition may be taken in any place within the United States, before any
person authorized to administer oaths, upon any notice, and in any manner,
and when so taken may be used like other depositions.
(g) If the parties agree in writing, the affidavit testimony of any
witness may be submitted without opportunity for cross-examination.
(h) If the parties agree in writing, testimony may be submitted in the
form of an agreed statement setting forth how a particular witness would
testify, if called, or the facts in the case of one or more of the
parties. The agreed statement shall be filed in the Patent and Trademark
Office. See 1.653(a).
(i) In an unusual circumstance and upon a showing that testimony cannot
be taken in accordance with the provisions of this subpart, an
administrative patent judge upon motion ( 1.635) may authorize testimony
to be taken in another manner.
60. Section 1.673 is amended by revising paragraphs (a), (b) introductory
text, paragraphs (c) through (e) and (g) to read as follows:
1.673 Notice of examination of witness.
(a) A party authorized to take testimony of a witness by deposition shall,
after complying with paragraphs (b) and (g) of this section, file and
serve a single notice of deposition stating the time and place of each
deposition to be taken. Depositions to be taken in the United States may
be noticed for a reasonable time and place in the United States. A
deposition may not be noticed for any other place without approval of an
administrative patent judge. The notice shall specify the name and address
of each witness and the general nature of the testimony to be given by the
witness. If the name of a witness is not known, a general description
sufficient to identify the witness or a particular class or group to which
the witness belongs may be given instead.
(b) Unless the parties agree or an administrative patent judge or the
Board determine otherwise, a party shall serve, but not file, at least
three working days prior to the conference required by paragraph (g) of
this section, if service is made by hand or Express Mail, or at least 14
days prior to the conference if service is made by any other means, the
following:
* * * * *
(c) A party shall not be permitted to rely on any witness not listed in
the notice, or any document not served or any thing not listed as required
by paragraph (b) of this section:
(1) Unless all opponents agree in writing or on the record to permit
the party to rely on the witness, document or thing, or
(2) Except upon a motion ( 1.635) promptly filed which is accompanied
by any proposed notice, additional documents, or lists and which shows
good cause why the notice, documents, or lists were not served in
accordance with this section.
(d) Each opponent shall have a full opportunity to attend a deposition
and cross-examine.
(e) A party who has presented testimony by affidavit and is required to
notice depositions for the purpose of cross-examination under 1.672(b),
shall, after complying with paragraph (g) of this section, file and serve
a single notice of deposition stating the time and place of each
cross-examination deposition to be taken.
* * * * *
(g) Before serving a notice of deposition and after complying with
paragraph (b) of this section, a party shall have an oral conference with
all opponents to attempt to agree on a mutually acceptable time and place
for conducting the deposition. A certificate shall appear in the notice
stating that the oral conference took place or explaining why the
conference could not be had. If the parties cannot agree to a mutually
acceptable place and time for conducting the deposition at the conference,
the parties shall contact an administrative patent judge who shall then
designate the time and place for conducting the deposition.
* * * * *
61. Section 1.674 is amended by revising paragraph (a) to read as follows:
1.674 Persons before whom depositions may be taken.
(a) A deposition shall be taken before an officer authorized to administer
oaths by the laws of the United States or of the place where the
examination is held.
* * * * *
62. Section 1.675 is amended by revising paragraph (d) to read as follows:
1.675 Examination of witness, reading and signing transcript of
deposition.
* * * * *
(d) Unless the parties agree in writing or waive reading and signature by
the witness on the record at the deposition, when the testimony has been
transcribed a transcript of the deposition shall, unless the witness
refuses to read and/or sign the transcript of the deposition, be read by
the witness and then signed by the witness in the form of:
(1) An affidavit in the presence of any notary or
(2) A declaration.
63. Section 1.676 is amended by revising paragraph (a)(4) to read as
follows:
1.676 Certification and filing by officer, marking exhibits.
(a) * * *
(4) The presence or absence of any opponent.
* * * * *
64. Section 1.677 is revised to read as follows:
1.677 Form of an affidavit or a transcript of deposition.
(a) An affidavit or a transcript of a deposition must be on opaque,
unglazed, durable paper approximately 21.8 by 27.9 cm. (8 1/2 by 11
inches) in size (letter size). The printed matter shall be double-spaced
on one side of the paper in not smaller than 11 point type with a margin
of 3.8 cm. (1 1/2 inches) on the left-hand side of the page. The pages of
each transcript must be consecutively numbered and the name of the witness
shall appear at the top of each page ( 1.653(e)). In transcripts of
depositions, the questions propounded to each witness must be
consecutively numbered unless paper with numbered lines is used and each
question must be followed by its answer.
(b) Exhibits must be numbered consecutively to the extent possible and
each must be marked as required by 1.653(i).
65. Section 1.678 is revised to read as follows:
1.678 Time for filing transcript of deposition.
Unless otherwise ordered by an administrative patent judge, a certified
transcript of a deposition must be filed in the Patent and Trademark
Office within one month after the date of deposition. If a party refuses
to file a certified transcript, the administrative patent judge or the
Board may take appropriate action under 1.616. If a party refuses to
file a certified transcript, any opponent may move for leave to file the
certified transcript and include a copy of the transcript as part of the
opponent's record.
66. Section 1.679 is revised to read as follows:
1.679 Inspection of transcript.
A certified transcript of a deposition filed in the Patent and Trademark
Office may be inspected by any party. The certified transcript may not be
removed from the Patent and Trademark Office unless authorized by an
administrative patent judge upon such terms as may be appropriate.
67. Section 1.682 is revised to read as follows:
1.682 Official records and printed publications.
(a) A party may introduce into evidence, if otherwise admissible, an
official record or printed publication not identified in an affidavit or
on the record during an oral deposition of a witness, by filing a copy of
the official record or printed publication or, if appropriate, a notice
under 1.671(e). If the official record or printed publication relates
to the party's case-in-chief, it shall be filed or noticed together with
any affidavits filed by the party under 1.672(b) for its case-in-chief
or, if the party does not serve any affidavits under 1.672(b) for its
case-in-chief, no later than the date set by an administrative patent
judge for the party to file affidavits under 1.672(b) for its
case-in-chief. If the official record or printed publication relates to
rebuttal, it shall be filed or noticed together with any affidavits filed
by the party under 1.672(b) for the its case-in-rebuttal or, if the
party does not file any affidavits under 1.672(b) for its
case-in-rebuttal, no later than the date set by an administrative patent
judge for the party to file affidavits under 1.672(b) for its
case-in-rebuttal. Official records and printed publications filed under
this paragraph shall be assigned sequential exhibit numbers by the party
in the manner set forth in 1.672(b). The official record and printed
publications shall be accompanied by a paper which shall:
(1) Identify the official record or printed publication;
(2) Identify the portion thereof to be introduced in evidence; and
(3) Indicate generally the relevance of the portion sought to be
introduced in evidence.
(b) [Reserved]
(c) Unless otherwise ordered by an administrative patent judge, any
written objection by an opponent to the paper or to the admissibility of
the official record or printed publication shall be filed no later than
the date set by the administrative patent judge for the opponent to file
objections under 1.672(c) to affidavits submitted by the party under
1.672(b). An opponent who fails to object to the admissibility of the
official record or printed publication on a ground that could have been
raised in a timely objection under this paragraph will not be entitled to
move under 1.656(h) to suppress the evidence on that ground. If an
opponent timely files an objection, the party may respond by filing one or
more supplemental affidavits, official records or printed publications,
which must be filed together with any supplemental evidence filed by the
party under 1.672(c) or, if the party does not file any supplemental
evidence under 1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental affidavits
under 1.672(c). No objection to the admissibility of the supplemental
evidence shall be made, except as provided by 1.656(h). The pages of
supplemental affidavits and the exhibits filed under this section shall be
sequentially numbered by the party in the manner set forth in 1.672(c).
The supplemental affidavits and exhibits shall be accompanied by an index
of witnesses and an index of exhibits of the type required by 1.672(b).
(d) Any request by an opponent to cross-examine on oral deposition the
affiant of a supplemental affidavit submitted under paragraph (c) of this
section shall be filed no later than the date set by the administrative
patent judge for the opponent to file a request to cross-examine an
affiant with respect to an affidavit served by the party under 1.672(b)
or (c). If any opponent requests cross-examination of an affiant, the
party shall file notice of a deposition for a reasonable location within
the United States under 1.673(e) for the purpose of cross-examination
by any opponent. Any redirect and recross shall take place at the
deposition. At any deposition for the purpose of cross-examination of a
witness, the party shall not be entitled to rely on any document or thing
not mentioned in one or more of the affidavits filed under this paragraph,
except to the extent necessary to conduct proper redirect. The party who
gives notice of a deposition shall be responsible for providing a
translator if the witness does not testify in English, for obtaining a
court reporter, and for filing a certified transcript of the deposition as
required by 1.676. Within 45 days of the close of the period for taking
cross-examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served under
this paragraph shall be sequentially numbered by the party in the manner
set forth in 1.672(d). The deposition transcripts shall be accompanied
by an index of the names of the witnesses, giving the number of the page
where cross-examination, redirect and recross of each witness begins, and
an index of exhibits of the type specified in 1.672(b).
68. Section 1.683 is revised to read as follows:
1.683 Testimony in another interference, proceeding, or action.
(a) A party may introduce into evidence, if otherwise admissible,
testimony by affidavit or oral deposition and referenced exhibits from
another interference, proceeding, or action involving the same parties by
filing a copy of the affidavit or a copy of the transcript of the oral
deposition and the referenced exhibits. If the testimony and referenced
exhibits relate to the party's case-in-chief, they shall be filed together
with any affidavits served by the party under 1.672(b) for its
case-in-chief or, if the party does not file any affidavits under
1.672(b) for its case-in-chief, no later than the date set by an
administrative patent judge for the party to file affidavits under
1.672(b) for its case-in-chief. If the testimony and referenced exhibits
relate to rebuttal, they shall be filed together with any affidavits
served by the party under 1.672(b) for its case-in-rebuttal or, if the
party does not file any affidavits under 1.672(b) for its
case-in-rebuttal, no later than the date set by an administrative patent
judge for the party to file affidavits under 1.672(b) for its
case-in-rebuttal. Pages of affidavits and deposition transcripts served
under this paragraph and any new exhibits served therewith shall be
assigned sequential numbers by the party in the manner set forth in
1.672(b). The testimony shall be accompanied by a paper which specifies
with particularity the exact testimony to be used and demonstrates its
relevance.
(b) Unless otherwise ordered by an administrative patent judge, any
written objection by an opponent to the paper or the admissibility of the
testimony and referenced exhibits filed under this section shall be filed
no later than the date set by the administrative patent judge for the
opponent to file any objections under 1.672(c) to affidavits submitted
by the party under 1.672(b). An opponent who fails to challenge the
admissibility of the testimony or referenced exhibits on a ground that
could have been raised in a timely objection under this paragraph will not
be entitled to move under 1.656(h) to suppress the evidence on that
ground. If an opponent timely files an objection, the party may respond
with one or more supplemental affidavits, official records or printed
publications, which must be filed together with any supplemental evidence
filed by the party under 1.672(c) or, if the party does not file any
supplemental evidence under 1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental evidence
under 1.672(c). No objection to the admissibility of the evidence
contained in or submitted with a supplemental affidavit shall be made,
except as provided by 1.656(h). The pages of supplemental affidavits
and the exhibits filed under this section shall be sequentially numbered
by the party in the manner set forth in 1.672(c). The supplemental
affidavits and exhibits shall be accompanied by an index of witnesses and
an index of exhibits of the type required by 1.672(b).
(c) Any request by an opponent to cross-examine on oral deposition the
affiant of an affidavit or supplemental affidavit submitted under
paragraph (a) or (b) of this section shall be filed no later than the date
set by the administrative patent judge for the opponent to file a request
to cross-examine an affiant with respect to an affidavit filed by the
party under 1.672(b) or (c). If any opponent requests cross-examination
of an affiant, the party shall file a notice of deposition for a
reasonable location within the United States under 1.673(e) for the
purpose of cross-examination by any opponent. Any redirect and recross
shall take place at the deposition. At any deposition for the purpose of
cross-examination of a witness, the party shall not be entitled to rely on
any document or thing not mentioned in one or more of the affidavits filed
under this paragraph, except to the extent necessary to conduct proper
redirect. The party who gives notice of a deposition shall be responsible
for providing a translator if the witness does not testify in English, for
obtaining a court reporter, and for filing a certified transcript of the
deposition as required by 1.676. Within 45 days of the close of the
period for taking cross-examination, the party shall serve (but not file)
a copy of each deposition transcript on each opponent together with copies
of any additional documentary exhibits identified by the witness during
the deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in 1.672(d). The deposition transcripts shall be
accompanied by an index of the names of the witnesses, giving the number
of the page where cross-examination, redirect and recross of each witness
begins, and an index of exhibits of the type specified in 1.672(b).
69. Section 1.684 is removed and reserved.
70. Section 1.685 is amended by revising paragraphs (d) and (e) to read as
follows:
1.685 Errors and irregularities in depositions.
* * * * *
(d) An objection to the deposition on any grounds, such as the competency
of a witness, admissibility of evidence, manner of taking the deposition,
the form of questions and answers, any oath or affirmation, or conduct of
any party at the deposition, is waived unless an objection is made on the
record at the deposition stating the specific ground of objection. Any
objection which a party wishes considered by the Board at final hearing
shall be included in a motion to suppress under 1.656(h).
(e) Nothing in this section precludes taking notice of plain errors
affecting substantial rights although they were not brought to the
attention of an administrative patent judge or the Board.
71. Section 1.687 is amended by revising paragraph (c) to read as follows:
1.687 Additional discovery.
* * * * *
(c) Upon a motion ( 1.635) brought by a party within the time set by an
administrative patent judge under 1.651 or thereafter as authorized by
1.645 and upon a showing that the interest of justice so requires, an
administrative patent judge may order additional discovery, as to matters
under the control of a party within the scope of the Federal Rules of
Civil Procedure, specifying the terms and conditions of such additional
discovery. See 1.647 concerning translations of documents in a foreign
language.
* * * * *
72. Section 1.688 is revised to read as follows:
1.688 Use of discovery.
(a) If otherwise admissible, a party may introduce into evidence an
answer to a written request for an admission or an answer to a written
interrogatory obtained by discovery under 1.687 by filing a copy of the
request for admission or the written interrogatory and the answer. If the
answer relates to a party's case-in-chief, the answer shall be served
together with any affidavits served by the party under 1.672(b) for its
case-in-chief or, if the party does not serve any affidavits under
1.672(b) for its case-in-chief, no later than the date set by an
administrative patent judge for the party to serve affidavits under
1.672(b) for its case-in-chief. If the answer relates to the party's
rebuttal, the answer shall be served together with any affidavits served
by the party under 1.672(b) for the its case-in-rebuttal or, if the
party does not serve any affidavits under 1.672(b) for its
case-in-rebuttal, no later than the date set by an administrative patent
judge for the party to serve affidavits under 1.672(b) for its
case-in-rebuttal.
(b) Unless otherwise ordered by an administrative patent judge, any
written objection to the admissibility of an answer shall be filed no
later than the date set by the administrative patent judge for the
opponent to file any objections under 1.672(c) to affidavits submitted
by the party under 1.672(b). An opponent who fails to challenge the
admissibility of an answer on a ground that could have been raised in a
timely objection under this paragraph will not be entitled to move under
1.656(h) to suppress the evidence on that ground. If an opponent timely
files an objection, the party may respond with one or more supplemental
affidavits, which must be filed together with any supplemental evidence
filed by the party under 1.672(c) or, if the party does not file any
supplemental evidence under 1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental affidavits
under 1.672(c). No objection to the admissibility of the evidence
contained in or submitted with a supplemental affidavit shall be made,
except as provided by 1.656(h). The pages of supplemental affidavits
and the exhibits filed under this section shall be sequentially numbered
by the party in the manner set forth in 1.672(c). The supplemental
affidavits and exhibits shall be accompanied by an index of witnesses and
an index of exhibits of the type required by 1.672(b).
(c) Any request by an opponent to cross-examine on oral deposition the
affiant of a supplemental affidavit submitted under paragraph (b) of this
section shall be filed no later than the date set by the administrative
patent judge for the opponent to file a request to cross-examine an
affiant with respect to an affidavit filed by the party under 1.672(b)
or (c). If any opponent requests cross-examination of an affiant, the
party shall file a notice of deposition for a reasonable location within
the United States under 1.673(e) for the purpose of cross-examination
by any opponent. Any redirect and recross shall take place at the
deposition. At any deposition for the purpose of cross-examination of a
witness, the party shall not be entitled to rely on any document or thing
not mentioned in one or more of the affidavits filed under this paragraph,
except to the extent necessary to conduct proper redirect. The party who
gives notice of a deposition shall be responsible for providing a
translator if the witness does not testify in English, for obtaining a
court reporter, and for filing a certified transcript of the deposition as
required by 1.676. Within 45 days of the close of the period for taking
cross-examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served under
this paragraph shall be sequentially numbered by the party in the manner
set forth in 1.672(d). The deposition transcripts shall be accompanied
by an index of the names of the witnesses, giving the number of the page
where cross-examination, redirect and recross of each witness begins, and
an index of exhibits of the type specified in 1.672(b).
(d) A party may not rely upon any other matter obtained by discovery
unless it is introduced into evidence under this subpart.
73. Section 1.690 is amended by revising paragraphs (a), (b) and (c) to
read as follows:
1.690 Arbitration of interferences.
(a) Parties to a patent interference may determine the interference or any
aspect thereof by arbitration. Such arbitration shall be governed by the
provisions of Title 9, United States Code. The parties must notify the
Board in writing of their intention to arbitrate. An agreement to
arbitrate must be in writing, specify the issues to be arbitrated, the
name of the arbitrator or a date not more than thirty (30) days after the
execution of the agreement for the selection of the arbitrator, and
provide that the arbitrator's award shall be binding on the parties and
that judgment thereon can be entered by the Board. A copy of the agreement
must be filed within twenty (20) days after its execution. The parties
shall be solely responsible for the selection of the arbitrator and the
rules for conducting proceedings before the arbitrator. Issues not
disposed of by the arbitration will be resolved in accordance with the
procedures established in this subpart, as determined by the
administrative patent judge.
(b) An arbitration proceeding under this section shall be conducted
within such time as may be authorized on a case-by-case basis by an
administrative patent judge.
(c) An arbitration award will be given no consideration unless it is
binding on the parties, is in writing and states in a clear and definite
manner the issue or issues arbitrated and the disposition of each issue.
The award may include a statement of the grounds and reasoning in support
thereof. Unless otherwise ordered by an administrative patent judge, the
parties shall give notice to the Board of an arbitration award by filing
within twenty (20) days from the date of the award a copy of the award
signed by the arbitrator or arbitrators. When an award is timely filed,
the award shall, as to the parties to the arbitration, be dispositive of
the issue or issues to which it relates.
* * * * *
March 3, 1995 BRUCE A LEHMAN
Assistant Secretary of Commerce
and Commissioner of Patents
and Trademarks