(121) Department of Commerce
Patent and Trademark Office
37 CFR Part 1
[Docket No. 921118-3184]
RIN: 0651-AA63
Patent Interference Practice Burden of Proof
Agency: Patent and Trademark Office, Commerce
Action: Final Rule
Summary: The Patent and Trademark Office (PTO) is amending its rules of
practice in patent interference cases. The amended rules specify that a
party filing a motion has the burden of proof for that motion. The
amended rules also more clearly state the nature of expert-witness and
fact-witness evidence that must accompany a preliminary motion.
Moreover, a definition of "interlocutory order," as contrasted with a
final decision, is added to clarify the meaning of "interlocutory order."
Effective Date: Oct. 25, 1993. These rules will apply to all papers
filed with the PTO on or after the effective date.
For Further Information Contact: Fred E. McKelvey by telephone at (703)
305-9035 or by mail marked to his attention and addressed to Box 8,
Commissioner of Patents and Trademarks, Washington D.C. 20231.
Supplementary Information: A Notice of Proposed Rulemaking was published
in the Federal Register (58 FR 528) on Jan. 6, 1993, and in the Official
Gazette of the PTO (1147 Off. Gaz. 11) on Feb. 2, 1993. Comments were
due Mar. 8, 1993. Four comments were received.
The PTO proposed moving the presumption of correctness of an
interlocutory order, which is presently in 37 CFR 1.655(a), to a
proposed new subsection 1.601(q). The PTO also proposed to make explicit
in 37 CFR 1.637(a) that a party filing a motion has the burden of
proving why it is entitled to the relief sought in the motion.
The PTO proposed to amend 37 CFR 1.639 to incorporate guidance
provided in Hanagan v. Kimura, 16 USPQ2d 1791, 1794 (Comm'r Pat. 1990).
Subsection (c) of 1.639 was proposed to be amended to refer to
"additional evidence in the form of testimony" so as to distinguish the
evidence needed under subsection (c) from evidence submitted under
subsections (a) and (b). Subsection (d) to 37 CFR 1.639 was proposed
to be added to specify that the nature of evidence that must be
submitted when an opinion of an expert is needed. Subsection (e) was
proposed to be added to specify the nature of evidence that must be
submitted when a statement of a fact witness is to be relied upon.
Subsection (f) was proposed to be added to specify the nature of a
showing that should be made when a statement of an opponent is needed or
evidence in possession of an opponent is needed. Subsection (g) was
proposed to be added to specify the nature of evidence that must be
supplied if inter partes tests are to be conducted.
Present 37 CFR 1.655(a) was proposed to be amended by deleting the
last sentence, which would be moved to and be included in the proposed
definition of interlocutory order in proposed subsection 1.601(g).
The PTO received one comment that endorsed the proposed rulemaking,
but was otherwise directed to an earlier rulemaking.
The PTO received two comments regarding proposed subsection 1.601(q).
One comment suggested that procedural rules should not be placed in a
definition. The comment suggested that the last two sentences of
proposed subsection 1.601(q), which deal with the presumed correctness
of interlocutory orders, be in a new subsection of section 1.655. This
suggestion is adopted in part. The last two sentences of subsection
1.601(q) will be moved to the end of subsection 1.655(a).
A second comment challenged the sufficiency of the notice in the
proposed rulemaking. The comment noted that the word "manifest" was
omitted from the portion of existing subsection 1.655(a) that was moved
to new subsection 1.601(q) and that the word "manifestly" was omitted
from the remainder of subsection 1.655(a). The comment argued that the
Notice of Proposed Rulemaking did not provide sufficient notice of these
omissions, which the comment characterized as substantive changes, and
thus violates the requirements of 5 U.S.C. 553. This comment is not
adopted.
The Notice of Proposed Rulemaking gave specific notice of the actual
terms of the proposed rule. Cf. 553(b) (requiring "[g]eneral notice"
of "either the terms or substance of the proposed rule or a description
of the subjects and issues involved.") In any case, no change actually
occurs because the omitted words, "manifest" and "manifestly", in 37 CFR
1.655(a) are unnecessary. No board decision is known to have relied
on the distinction between "error", "clear error", and "manifest error".
In appellate courts, manifest error is an extremely deferential standard
of review that is closely tied to the abuse-of-discretion standard. See
e.g., Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 827-28, 11 USPQ2d
1321, 1326 (Fed. Cir. 1989) (finding no manifest error). Board review of
an examiner-in-chief's interlocutory orders is not an independent review
of a final decision by a lower tribunal. The board is the only entity
that may decide interferences, 35 U.S.C. 135(a), and the
examiner-in-chief, who is a member of the board, 35 U.S.C. 7(a), is
almost always a member of the panel that ultimately decides the
interference. Thus, an extremely deferential standard of appeal in this
context is inappropriate.
The PTO received one comment regarding proposed subsection 1.637(a).
The comment noted that subsection 1.637(a) had been misprinted so that
the text "a statement of the precise relief requested, (2)" had been
omitted following the "(1)". The comment is correct, the omission was a
misprint, and the omitted text has been restored.
The PTO received one comment regarding 37 CFR 1.639(b). The
comment suggested that all proofs introduced under subsection 1.639(b)
remain in the record after the decision on the preliminary motions
unless the proofs are expressly withdrawn. The opposing party could
treat such proofs as subsection 1.672(b) declarations and request an
opportunity to cross examine the declarants. The suggestion is not
adopted because it is beyond the scope of the present rulemaking.
The PTO received one comment regarding subsection 1.639(c). The
comment assumed that the word "needed" had been intentionally deleted
from the end of the first sentence of subsection 1.639(c), but noted
that the deletion was not mentioned in the summary. The assumption is
correct. This deletion is grammatically required after the addition of
the text amending subsection 1.639(c).
The PTO received two comments regarding codification of the Hanagan
guidelines in subsections 1.639(d)-(g). One comment endorsed
codification of the Hanagan guidelines, but suggested that the
codification be reformulated to increase flexibility. In particular, the
comment pointed to the unusual case described in the Notice of Proposed
Rulemaking where an opponent to a preliminary motion was overwhelmed
with evidence. The comment suggested that the mandatory requirements of
subsection 1.639, as amended, be revised to state that the information
required under the Hanagan guidelines "should ordinarily" be provided.
The comment is not adopted.
When necessary, a party opposing a preliminary motion should request
an extension of time to submit the information described in subsections
1.639(d) through (g), which do not require the submission of the actual
testimony or evidence. In contrast, in the example discussed in the
Notice of Proposed Rulemaking, the examiner-in-chief deferred
consideration of the preliminary motion until the final hearing to allow
the opponent time to prepare a full opposition, which included the
actual evidence the opponent relied upon to support the opposition. As
the Notice of Proposed Rulemaking pointed out, examiners-in-chief have,
and should exercise, discretion to extend time or otherwise remedy
problems that may arise when applying the requirements of section 1.639
in specific cases.
A second comment suggested that the requirements of subsections
1.639(d) and (e) duplicate the declarations submitted under 37 CFR
1.672(b). The comment recommends that the rules be revised to require a
subsection 1.672(b) declaration be submitted once, during the motions
period, in support of an opposition to a preliminary motion. The
recommendation is not adopted.
Subsection 1.672(b) is directed to the technical requirements for
submitting affidavits or depositions for testimony that will not be
compelled. Subsection 1.639(c), which invokes the requirements of
subsections 1.639(d) and (e), requires a description of the proposed
testimony, not an affidavit or deposition of the testimony itself. A
request under subsection 1.639(c) must describe the nature of the
testimony being sought so the examiner-in-chief can determine whether
the testimony is actually needed. Hanagan, 16 USPQ2d at 1794. Subsection
1.639(c) is intended to address the situation where evidence in the form
of testimony is not available to the party asserting a need for the
evidence. The Hanagan guidelines require such a party to justify the
delay and inconvenience that may result by explaining what the party
expects the testimony to prove. To this end, subsection 1.639(c) is
revised to clarify that it only applies to testimony that is unavailable
to the party seeking the testimony.
OTHER CONSIDERATION
The rule changes are in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C.601 et seq.), Executive Orders 12291
and 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et.
seq.
The General Counsel 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)). The principle impact of these changes would be to
clarify procedure in patent interferences and thereby eliminate
ambiguity that may exist in current rules.
The Office has determined that these rule changes are not a major
rule under Executive Order 12291. The annual effect on the economy will
be less than $100 million. There will be no major increase in costs or
prices for consumers; individuals; industries; Federal, state or local
government agencies; or geographic regions. There will be no significant
effects on competition, employment, investment, productivity,
innovation, or on the ability of the United States-based enterprises to
compete with foreign-based enterprises in domestic or export markets.
The Office has also 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 a burden under the Paperwork
Reduction Act of 1980, 44 U.S.C. 3501 et seq., since no recordkeeping 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.
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.601 is amended by adding paragraph (q) to read as follows:
1.601 Scope of rules, definitions.
* * * * *
(q) A final decision is a decision awarding judgement as to all counts.
An interlocutory order is any other action taken by an examiner-in-chief
or a panel of the Board in an interference, including the notice
declaring an interference.
3. Section 1.637 is amended by revising paragraph (a) 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. Every motion shall include
(1) a statement of the precise relief requested, (2) a statement of the
material facts in support of the motion, and (3) a full statement of the
reasons why the relief requested should be granted.
* * * * *
4. Section 1.639 is amended by revising paragraph (c) and by adding
paragraphs (d) through (g) as follows:
1.639 Evidence in support of motion, opposition, or reply.
* * * * *
(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 examiner-in-chief finds that testimony is needed to
decide the motion, the examiner-in-chief finds that testimony is needed
to decide the motion, the examiner-in-chief may grant appropriate
interlocutory relief and enter an order authorizing the taking of
testimony and deferring a decision on the motion to final hearing.
(d) When additional evidence in the form of expert-witness testimony
is needed in support of or opposition to a preliminary motion, the
moving party or opponent should:
(1) identify the person whom it expects to call as an expert;
(2) state the field in which the person is alleged to be an expert;
and
(3) state:
(i) the subject matter on which the person is expected to
testify;
(ii) the facts and opinions to which the person is expected to
testify: and
(iii) a summary of the grounds and basis for each opinion.
(e) When additional evidence in the form of fact-witness
testimony is necessary, state the facts to which the witness is expected
to testify.
(f) If the opponent is to be called, or if evidence in the possession
of the opponent is necessary, explain the evidence sought, what it will
show, and why it is needed.
(g) When inter partes tests are to be performed, describe the tests
stating what they will be expected to show.
5. Section 1.655 is amended by revising paragraph (a) 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 (1) priority of invention, (2) derivation by an
opponent from a party who filed a preliminary statement under 1.625,
(3) patentability of the invention, (4) admissibility of evidence, (5)
any interlocutory matter deferred to final hearing, and (6) any other
matter necessary to resolve the interference. The Board may also
consider whether any interlocutory order was erroneous or an abuse of
discretion. All interlocutory orders shall be presumed to have been
correct and the burden of showing error or 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.
* * * * *
Sept. 16, 1993 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1155 OG 65]