(122)              Interference Practice: Matters Relating to
                          Belated Preliminary Motions

   In some interference proceedings, evidence which would provide a 
basis for a preliminary motion under 37 CFR 1.633 does not come to light 
until after a decision on preliminary motions has been entered. For 
example, a party may conclude, after hearing the opponent's testimony, 
that the opponent's application or patent does not comply with the "best 
mode" requirement of 35 USC    112, first paragraph; or a prior art 
reference may be found which the party could not previously have 
located. The purpose of this notice is to clarify the policy of the 
Board of Patent Appeals and Interferences as to what steps the party 
must take if it wishes to have an issue based on such evidence 
considered by the Board.
   If the time for filing preliminary motions has expired, and then
evidence comes to light which in the opinion of a party would provide
basis for a preliminary motion under 37 CFR 1.633, that party may not
simply raise the matter in its brief at final hearing for the Board's
consideration. Rather, it is the policy of the Board that it will not
consider the matter unless the party files promptly after the evidence
becomes available:
   (1) the appropriate preliminary motion under 37 CFR 1.633; and
   (2) a motion under 37 CFR 1.635 showing sufficient cause why the
preliminary motion was not timely filed, as required by 37 CFR 1.645(b).
This motion must include the certificate required by 37 CFR 1.637(b).
   If either party believes that additional evidence or discovery
concerning the matter raised by the motion(s) is necessary, motions (1)
and (2) should also be accompanied by or responded to by such other
motions as may be appropriate, as for example, motions under 37 CFR
1.651(b) (4) or 1.687(c).

Oct. 6, 1992                                            SAUL I. SEROTA
                                             Chairman, Board of Patent
                                             Appeals and Interferences

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