**Board of Patent Appeals and Interferences -- Answers to Frequently
Asked Questions**

[In May 2001, the Interference Committee of the American Intellectual
Property Law]{.underline}

[Association submitted a set of questions to the Chief Administrative
Patent Judge of the Board of]{.underline}

[Patent Appeals and Interferences. Since the questions are deemed to be
of general interest, the]{.underline}

[issues submitted have been recast in a \"frequently asked question\"
format for general]{.underline}

[distribution. Several multi-part questions have been divided into their
component questions for]{.underline}

[ease of presentation.]{.underline}

**[Question 1]{.underline}**

[What is the effect of Trial Section binding precedent on the rest of
the Board and the rest]{.underline}

[of the United States Patent and Trademark Office?]{.underline}

**[Answer to Question 1]{.underline}**

[A decision supported by an opinion that is determined by the Trial
Section to be binding]{.underline}

[precedent of the Trial Section normally will contain the following
caption at the top of the first]{.underline}

[page of the opinion:]{.underline}

[The opinion in support of the decision being entered today
is]{.underline}

[binding precedent of the Interference Trial Section of the Board
of]{.underline}

[Patent Appeals and Interferences. The opinion is otherwise
]{.underline}***[not]{.underline}***

[binding precedent of the Board.]{.underline}

[The significance of the caption is that the opinion has been read and
agreed to by all eight]{.underline}

[administrative patent judges assigned to the Trial Section and is
precedent which all eight will]{.underline}

[apply in interferences which come before them, as individual judges or
as members of panels]{.underline}

[assigned to handle a particular interference.]{.underline}

[As of June 1, 2001, sixty-one administrative patent judges are members
of the Board of]{.underline}

[Patent Appeals and Interferences.]{.underline}[^1][ In
]{.underline}*[ex parte ]{.underline}*[matters, the judges decide
matters almost]{.underline}

[exclusively in panels of three judges. In interference matters,
non-final orders may be entered by]{.underline}

[a single judge or, at the election of the single judge in panels of two
or more judges (37 CFR]{.underline}

[§ 1.610(b)). Presently, most decisions on preliminary and other
significant motions entered by]{.underline}

[judges assigned to the Trial Section are entered by a panel of at least
three judges, unless an]{.underline}

[important issue is deemed to be presented, in which case the decision
may be entered by a panel]{.underline}

[consisting of all eight judges assigned to the Trial Section. A
three-judge decision entered in the]{.underline}

[Trial Section governs further proceedings in the
interference.]{.underline}

[It is not practical for the board to enter a decision ]{.underline}*[en
ban]{.underline}*[c. Nor is it practical to circulate]{.underline}

[each opinion to be entered by a single judge or a panel to all
sixty-one judges for comment.]{.underline}

[Precedent adopted as binding precedent by the Trial Section is not
binding on non-Trial]{.underline}

[Section judges, but neither are ordinary decisions entered by panels
consisting of other judges in]{.underline}

[other ]{.underline}*[ex parte ]{.underline}*[or interference cases.
With few exceptions, all interferences declared since]{.underline}

[October 1, 1998, have been declared by the Trial Section and all
non-final orders entered in those]{.underline}

[interferences generally have been entered by judges assigned to the
Trial Section. Furthermore,]{.underline}

[and perhaps more important, opinions that are determined by the Trial
Section to be binding]{.underline}

[precedent of the Trial Section generally involve procedural issues
applicable only in Trial]{.underline}

[Section proceedings. The benefit of binding precedent, particularly
precedent involving]{.underline}

[procedural issues or interpreting interference rules, is that it can be
published thereby notifying]{.underline}

[the bar of current practice before the Trial Section. The bar can then
expect that similar issues in]{.underline}

[other interferences will be handled by the Trial Section in a similar
fashion. The notion of]{.underline}

[having binding precedent of the Trial Section is believed to be
consistent with one of the]{.underline}

[objectives for creating a Trial Section, namely, a pre-Trial Section
observation from the bar that]{.underline}

[individual judges handled interferences in different ways.]{.underline}

[Finally, to the extent that a judge disagrees with an decision entered
by any other judge or]{.underline}

[by a panel, including a decision entered by judges assigned to the
Trial Section, the board has a]{.underline}

[mechanism (Standard Operating Procedure 2, rev. 4) whereby the judge
may notify the Chief]{.underline}

[Administrative Patent Judge of the disagreement and a panel of 11
judges, including the Chief]{.underline}

[Administrative Patent Judge, may be designated to settle the
disagreement.]{.underline}

**[Question 2]{.underline}**

[Is the USPTO making effective use of its \"PALM\" docketing system to
uncover proposed]{.underline}

[interferences that are sitting in the group? \"Submarine\"
interferences are as publicly harmful (if]{.underline}

[not more so) than all other \"submarine\" patent applications having
long delayed prosecutions.]{.underline}

**[Answer to Question 2]{.underline}**

[Questions regarding the USPTO's use of the PALM system are best
directed to the Office]{.underline}

[of the Commissioner for Patents.]{.underline}

[The following observations may be useful to the bar.]{.underline}

[First, before an interference is declared, there is a meeting between
individuals in the]{.underline}

[relevant Technology Center (Interference Practice Specialists) and at
least one administrative]{.underline}

[patent judge to determine whether there is an interference and, if so,
what documentation might]{.underline}

[be necessary (e.g., a PTO Form 850 or a statement similar to the
statement required by former]{.underline}

[37 CFR § 1.609(b)). Experience shows that the meeting helps to expedite
declaration of]{.underline}

[interferences or a decision that an interference is not
appropriate.]{.underline}

[Second, it is appropriate for a practitioner, after contacting an
examiner and the]{.underline}

[examiner\'s supervisor (SPE), to contact a Group Director to report
inaction on a request for an]{.underline}

[interference filed in connection with a particular patent
application.]{.underline}

[Third, individual applicants and patentees are able to track the
whereabouts of their own]{.underline}

[applications and patents through the use of the Patent Application
Information Retrieval or PAIR]{.underline}

[system which may be accessed at the following site: ]{.underline}

**[Question 3, Part 1]{.underline}**

[What is the Board policy on two-way unpatentability for declaration of
interferences?]{.underline}

[The Official Gazette notice published January 16, 2001,
]{.underline}[^2][ says the standard is that ]{.underline}*[Winter
v.]{.underline}*

*[Fujit]{.underline}*[a, 53 USPQ2d 1234 (Bd. Pat. App. & Int. 1999),
]{.underline}*[reconsideration denie]{.underline}*[d, 53 USPQ2d
1478]{.underline}

[(Bd. Pat. App. & Int. 2000), but ]{.underline}*[Winter
]{.underline}*[says that patentability or unpatentability in
both]{.underline}

[directions must be \"considered,\" not that there must be two-way
unpatentability in all cases.]{.underline}

**[Answer to Question 3, Part 1]{.underline}**

[The notice and the ]{.underline}*[Winter ]{.underline}*[decision speak
for themselves. Although ]{.underline}*[Winter ]{.underline}*[leaves
open]{.underline}

[the possibility of an interference being declared (or continued) where
only one-way]{.underline}

[unpatentability has been shown, as a practical matter it is not clear
when an exception could or]{.underline}

[should be made to the two-way test. Since that very question was the
subject of extensive]{.underline}

[comments in response to the notice, any change in policy is best left
to any follow up notice on]{.underline}

[the topic. For the purposes of clarification, however, some
considerations relevant to the]{.underline}

[remaining questions is offered below.]{.underline}

**[Question 3, Part 2]{.underline}**

[If, for example, there is an issued patent with a generic claim, and an
applicant claims a]{.underline}

[species within the claimed genus, but the species claim is believed to
be patentable over the]{.underline}

[generic claim, can the applicant have an interference declared in order
to invalidate the dominant]{.underline}

[patented generic claim?]{.underline}

**[Answer to Question 3, Part 2]{.underline}**

[In the situation described, an interference does not appear to be
necessary, unless two]{.underline}

[conditions exists: (1) the applicant\'s species renders the patent's
genus unpatentable and (2) the]{.underline}

[patent's genus renders the applicant\'s species unpatentable, in which
case there is an]{.underline}

[interference-in-fact.]{.underline}

[The question does not indicate who is the senior party. If it is
assumed that the applicant]{.underline}

[is the junior party, and the applicant\'s species is patentably
distinct from the patent's genus, then]{.underline}

[a patent lawfully may be issued to the applicant.]{.underline}

[The question suggests a belief that there is a right before the USPTO
\"to invalidate the]{.underline}

[dominant patented generic claim.\" An applicant receives all the relief
to which it is entitled]{.underline}

[under the Patent Law when a patent is issued containing claims that it
requests in its application.]{.underline}

[There is no \"right\" under the Patent Law \"to invalidate\" another\'s
patent as part of the process of]{.underline}

[filing a patent application and obtaining a patent thereon.
]{.underline}*[Accord Ewing v. Fowler Car
C]{.underline}*[o.,]{.underline}

[244 U.S. 1, 10-11 (1917) (explicitly rejecting the assertion of an
applicant\'s right to an]{.underline}

[interference). The applicant and its real party in interest, if any,
have a remedy by way of a]{.underline}

[defense of invalidity under 35 U.S.C. § 102(g) in the event a civil
action alleging infringement is]{.underline}

[filed against the applicant or its real party in interest. An
interference is a proceeding designed to]{.underline}

[assist the Director, acting through a patent examiner, in a
determination of whether a patent]{.underline}

[should issue to an applicant, not whether a patent should be
cancelled\--albeit cancellation of a]{.underline}

[patent is a consequence of a patentee losing an application versus
patent interference. If the]{.underline}

[applicant\'s species is patentable over the prior art genus, there
would be no basis for rejecting the]{.underline}

[applicant\'s claims and an interference would not be necessary to
assist the Director, acting]{.underline}

[through an examiner, in determining whether to issue a patent to the
applicant.]{.underline}

[The result is not different if it is assumed that the applicant is the
senior party. A junior]{.underline}

[party patent claiming a genus facially would not be prior art as to the
applicant. Accordingly,]{.underline}

[there is no basis for declining to issue a patent to the applicant. As
in the case where the]{.underline}

[applicant is the junior party, the applicant has no \"right\" as part
of the examination process \"to]{.underline}

[invalidate\" the patent claiming the genus. There are, however,
remedies available to the]{.underline}

[applicant.]{.underline}

[First, after its patent issues, the applicant (now patentee) can
request the Director to]{.underline}

[reexamine the patent on the basis of its newly issued patent to the
species. If during the course]{.underline}

[of the reexamination, it turns out that an interference may be
necessary, an application to reissue]{.underline}

[the patent being reexamined may be filed and the Director, at that
time, can determine whether]{.underline}

[an interference should be declared. Some have said that reexamination
is not a realistic remedy]{.underline}

[because of its ]{.underline}*[ex parte ]{.underline}*[nature. It is
important to remember that an interference under 35 U.S.C.]{.underline}

[§ 135(a) is not a pre-grant opposition or a post-grant cancellation. At
this time, the sole statutory]{.underline}

[means for seeking cancellation of the claims of a patent before the
USPTO is through a]{.underline}

[reexamination proceeding.]{.underline}

[Second, in the event of a civil action against the applicant and its
real party in interest, a]{.underline}

[defense may be asserted that the patent to the genus is unpatentable
over the applicant\'s patent to]{.underline}

[the species.]{.underline}

**[Question 3, Part 3]{.underline}**

[In provoking such interferences, does it matter if the applicant is
junior or senior in filing]{.underline}

[date, or by how much?]{.underline}

**[Answer to Question 3, Part 3]{.underline}**

[As noted in the Answer to Question 3, Part 2, there is no apparent
reason why it should]{.underline}

[matter whether the applicant is junior party or senior party, or by how
much.]{.underline}

**[Question 3, Part 4]{.underline}**

[If not, does the applicant need to establish patentability over the
issued patent, get his]{.underline}

[own patent issued, and then request reexamination of the earlier-issued
generic patent?]{.underline}

**[Answer to Question 3, Part 4]{.underline}**

[Yes.]{.underline}

**[Question 3, Part 5]{.underline}**

[If reexamination is ordered and the earlier-issued patentee with a
generic claim]{.underline}

[establishes, say through a Rule 131 antedating effort, that its generic
invention was made before]{.underline}

[the filing date of the later-issued species patent, would an
interference be declared to permit the]{.underline}

[owner of the later-issued species patent to establish
priority?]{.underline}

**[Answer to Question 3, Part 5]{.underline}**

[Under 35 U.S.C. §§ 301-318, the only prior art that may be considered
in a reexamination]{.underline}

[consists of patents and printed publications. It is not apparent how
the patentee of the later-issued]{.underline}

[species would be permitted, in a reexamination, to establish priority.
Moreover, the]{.underline}

[USPTO does not have authority to declare an interference between two
patents.]{.underline}

**[Question 3, Part 6]{.underline}**

[Is the presentation of a narrow claim for purpose of interference with
a broad claim]{.underline}

[construed as an admission that the narrow claim is unpatentable over
the broad claim? (Is it]{.underline}

[essential that an applicant have a claim designated as corresponding to
the count, or would]{.underline}

[presentation of a narrow claim within the scope of an issued claim, but
which is asserted to be]{.underline}

[patentable over the count, suffice?)]{.underline}

**[Answer to Question 3, Part 6]{.underline}**

[Under present practice, each party in an interference must have at
least one claim]{.underline}

[designated as corresponding to each count in the interference. Hence,
if there is one count, each]{.underline}

[party must have a least one claim corresponding to the
count.]{.underline}

[Ordinarily, if an applicant presents a species claim and maintains that
it interferes with a]{.underline}

[patentee\'s generic claim, the applicant will have to establish two-way
unpatentability before an]{.underline}

[interference will be declared. If the applicant is unwilling to concede
that a genus renders its]{.underline}

[species unpatentable (i.e., asserts that its species is patentable over
the genus), and if the]{.underline}

[examiner agrees, there is no impediment to issuing a patent to the
applicant on its species. An]{.underline}

[interference is not necessary.]{.underline}

[If there is to be an interference between the species and the genus,
the applicant, of]{.underline}

[course, would like a count limited to the species. The patentee, on the
other hand, would like a]{.underline}

[count to the genus so that it can take advantage of more evidence on
the issue of priority. To]{.underline}

[date, those who have commented on the two-way patentability standard
have not provided a]{.underline}

[satisfactory answer to the question of what the scope of the count
should be in such cases.]{.underline}

**[Question 3, Part 7]{.underline}**

[If the presentation of a narrow claim for purpose of interference with
a broad claim is]{.underline}

[construed as an admission that the narrow claim is unpatentable over
the broad claim, is the]{.underline}

[admission rebuttable or conclusive?]{.underline}

**[Answer to Question 3, Part 7]{.underline}**

[The answer to the question is best resolved in a live case where the
question is presented.]{.underline}

**[Question 4]{.underline}**

[A recent rule change eliminated the following language from 37 CFR §
1.606:]{.underline}

[At the time an interference is initially declared \... a count shall
not]{.underline}

[be narrower in scope than any application claim that is
patentable]{.underline}

[over the prior art and designated as corresponding to the count
or]{.underline}

[any patent claim that is designated as corresponding to the
count,]{.underline}

[A party presenting a claim that is broader than the count might only be
able to establish an]{.underline}

[earlier date of invention for a species of the invention that is within
his broad claims, but outside]{.underline}

[the scope of the count. (I.e., \"A\" invents a broad claim before \"B\"
invents a narrow claim totally]{.underline}

[within the scope of A\'s broad claim, but B invents the narrow claim
before A invents the narrow]{.underline}

[claim. If the count is B\'s narrow claim, then A loses his broad claim
that he was first to invent.]{.underline}

[If the count is A\'s broad claim, A would not lose the broad claim that
A was first to invent.)]{.underline}

[Why was the part of Rule 606 quoted above removed, anyway? Why is a
party to an]{.underline}

[interference not automatically allowed to prove priority for any claim
designated as]{.underline}

[corresponding to the count, in order to establish priority with respect
to the count? What is the]{.underline}

[standard for allowing a party to do so?]{.underline}

**[Answer to Question 4]{.underline}**

[Rule 606 was amended on October 20, 2000. ]{.underline}[^3][ The notice
amending Rule 606 observes]{.underline}

[that \"\[t\]he USPTO is amending 37 CFR §§ \*\*\* 1.606 \*\*\* because
the requirements being]{.underline}

[eliminated presented obstacles to the efficient declaration of
interferences without corresponding]{.underline}

[benefits. Also eliminated was a requirement of Rule 609(b) that an
examiner present an]{.underline}

[explanation as to why each claim should correspond or not correspond to
each count.]{.underline}

[As a general proposition, a count should be limited to a single
patentable invention. The]{.underline}

[claims that are designated as corresponding to the count should also
cover the single patentable]{.underline}

[invention, although the claim may also cover a different patentable
invention. To the extent a]{.underline}

[party loses on the issue of priority, its claims that cover the single
patentable invention]{.underline}

[(presumably having been designated as corresponding to the count)
become unpatentable to that]{.underline}

[party. The party may well be entitled to a patent containing a narrower
claim limited to the]{.underline}

[different patentable invention.]{.underline}

[In 1984, when the new interferences rules were promulgated, it was
believed, particularly]{.underline}

[in the case of a patent, that a count should not be narrower than the
broadest patent claim]{.underline}

[designated as corresponding to the count. In other words, a procedural
presumption was created]{.underline}

[in the rules that any single patent claim defines a single patentable
invention. The presumption]{.underline}

[could be overcome through a preliminary motion to narrow the count. The
moving party seeking]{.underline}

[to narrow the count had the burden of proof to establish that a count
(and therefore a patent]{.underline}

[claim) covered two patentable inventions and that the count should be
narrowed to a single]{.underline}

[patentable invention.]{.underline}

[The board's experience has established that the presumption thought to
be appropriate in]{.underline}

[1984 is not viable today. All one need do is consult chemical compound
patents containing]{.underline}

[claims to multiple compounds to understand that the USPTO properly
issues patents containing]{.underline}

[claims which cover separate patentable inventions. In an
]{.underline}*[ex parte ]{.underline}*[context, there is
nothing]{.underline}

[inappropriate or questionable about issuing a claim that covers more
than one patentable]{.underline}

[invention. There is, however, something inappropriate or questionable
about permitting one]{.underline}

[party to defeat another party on the basis of priority proofs to an
invention which is patentably]{.underline}

[distinct from the invention claimed by an opponent. ]{.underline}*[Cf.
Godtfredsen v. Banne]{.underline}*[r, 598 F.2d 589,]{.underline}

[592, 202 USPQ 7, 10 (CCPA 1979).]{.underline}[^4]

[The change in Rule 606 boils down to a question of who should have the
burden of proof]{.underline}

[with respect to an attempt to change a count. Consider the case where
claim 1 of a patent covers]{.underline}

[patentably distinct inventions A and B and claim 1 of an application
covers only invention A.]{.underline}

[Under Rule 606 prior to its amendment, the count would have covered
both inventions A and B.]{.underline}

[If the applicant sought to limit the count to invention A, then the
applicant would have been]{.underline}

[under a burden to establish that invention B (the invention being taken
out) is patentably distinct]{.underline}

[from invention A). That is, the applicant would have been under a
\"negative\" burden of proof,]{.underline}

[needing to prove that something is not true. It is difficult to cite
and apply prior art to establish]{.underline}

[that two inventions are patentably distinct.]{.underline}

[After the change to Rule 606, the interference can be declared with a
count limited to]{.underline}

[invention A. Claim 1 of the patent and claim 1 of the application would
be designated as]{.underline}

[corresponding to the count. If the applicant wins on the issue of
priority, the patentee is not]{.underline}

[entitled to claim 1 because it covers invention A even though it also
covers invention B. If the]{.underline}

[patentee believes that the count should be changed to cover inventions
A and B, the patentee is in]{.underline}

[a position to cite prior art which when combined with invention A
(which would be presumed to]{.underline}

[be prior art) would render obvious invention B. The patentee, unlike
the applicant prior to the]{.underline}

[amendment to Rule 606, is under a \"positive\" burden of proof, i.e.,
to prove that something is]{.underline}

[true. Since it is often impossible to adequately sustain a negative
burden of proof, it is generally]{.underline}

[faster, fairer, and more cost-effective to place the initial burden on
the party able to present]{.underline}

[positive proofs.]{.underline}

[The change in Rule 606 now permits an interference to be declared on
the basis of a]{.underline}

[count directed to common subject matter, leaving it to a party to file
a preliminary motion to]{.underline}

[broaden the count having a \"positive\" as opposed to a \"negative\"
burden of proof.]{.underline}

[A party is \"not automatically allowed to prove priority\" with proofs
within the scope of]{.underline}

[its broad claim for the reasons quoted in the
]{.underline}*[Godtfredsen ]{.underline}*[case,
]{.underline}*[supra.]{.underline}*

**[Question 5]{.underline}**

[What is the duty of a patentee who is involved in an interference to
advise the APJ and]{.underline}

[his interference opponent of prior art or other circumstances relevant
to patentability of the]{.underline}

[patentee\'s claims, that may have come to his attention after the
patent issued? Does a new]{.underline}

[USPTO Director have to be appointed before any further action is taken
on this question?]{.underline}

**[Answer to Question 5]{.underline}**

[Unless an order is entered in a particular interference there currently
is no regulation]{.underline}

[which requires a patentee in an interference to advise the board or its
opponent of prior art falling]{.underline}

[within the scope of Rule 56.]{.underline}

[The board is currently in the process of drafting revisions to the
interference rule. An]{.underline}

[individual with views on whether the provisions of Rule 56, or similar
provisions, should apply]{.underline}

[to patentees in an interference, may submit those views to
Administrative Patent Judge Richard]{.underline}

[Torczon by letter or to his e-mail address:]{.underline}

[richard.torczon@uspto.gov]{.underline}

**[Question 6]{.underline}**

[Do you have any idea when a new USPTO Director/Commissioner of Patents
and]{.underline}

[Trademarks will take be appointed?]{.underline}

**[Answer to Question 6]{.underline}**

[On May 24, 2001, the President nominated James E. Rogan to be Under
Secretary of]{.underline}

[Commerce for Intellectual Property and Director of the United States
Patent and Trademark]{.underline}

[Office. As of this writing, confirmation is pending before the United
States Senate.]{.underline}

**[Question 7, Part 1]{.underline}**

[Is any progress being made on any of the \"black hole\" problems
--]{.underline}

[(a) the prompt declaration of interferences for which files have
been]{.underline}

[forwarded to the Board,]{.underline}

[(b) getting examiners to forward files to the Board for declaration
of]{.underline}

[interferences (in proper cases), and]{.underline}

[(c) getting examiners to act on post-interference
applications?]{.underline}

**[Answers to Question 7, Part 1]{.underline}**

[Upon receipt of files forwarded to the board for consideration of
whether an interference]{.underline}

[should be declared, the Trial Section takes the following action. If
the files are not in order (e.g.,]{.underline}

[a file is missing or paperwork required to be completed has not been
completed), then within]{.underline}

[seven (7) days the Trial Section will return the files to the examiner
for appropriate action and]{.underline}

[the attorneys for all parties are notified by the Trial Section that
the papers have been returned.]{.underline}

[The Trial Section does not set a time for an examiner to take
appropriate action. If the files are]{.underline}

[in order, the Trial Section will declare an interference within thirty
(30) days of receipt of the]{.underline}

[files.]{.underline}

[As noted earlier, if a party has requested an interference and, in the
opinion of the]{.underline}

[applicant, timely action has not taken place respect to the request,
the applicant should contact]{.underline}

[the examiner. If there is still no timely action, the applicant should
contact the examiner\'s]{.underline}

[supervisor, i.e., the examiner\'s SPE. If there is still no timely
action, it is appropriate to contact]{.underline}

[the Group Director in the Technology Center.]{.underline}

[Following entry of a final decision in an interference an examiner
takes up an application]{.underline}

[for such further action as may be appropriate. If, in the opinion of an
applicant, the action is not]{.underline}

[deemed timely, or no action is taking place, the applicant should
contact the examiner's]{.underline}

[supervisor, etc.]{.underline}

**[Question 7, Part 2]{.underline}**

[Does an examiner receive credit for work on a post-interference
application?]{.underline}

**[Answer to Question 7, Part 2]{.underline}**

[Examiner credits are administered by the patent examining operation, so
detailed]{.underline}

[questions about examiner credits should be directed there.]{.underline}

**[Question 7, Part 3]{.underline}**

[Since the appointments of interference practice specialists in the
Technology Centers]{.underline}

[change over time, can lists of current interference specialists for the
various technical centers be]{.underline}

[published from time to time in the Official Gazette, or on the USPTO
web site?]{.underline}

**[Answer to Question 7, Part 3]{.underline}**

[Yes. Please see ]{.underline}**[Question 8, Part 1]{.underline}**

[What are the current time-lags for decisions in ]{.underline}*[ex parte
]{.underline}*[appeals in ordinary applications,]{.underline}

[and in reexaminations?]{.underline}

**[Answer to Question 8, Part 1]{.underline}**

[All appeals in reexamination proceedings are handled as "special" cases
at the Board.]{.underline}

[That is, they are reviewed and docketed ahead of other appeals and are
marked as special on the]{.underline}

[docket listings sent monthly to each APJ. The most recent reports
indicate that there are]{.underline}

[presently seventeen appeals in reexamination proceedings at the Board
awaiting decision.]{.underline}

[With regard to ]{.underline}*[ex parte ]{.underline}*[appeals
generally, the answer depends, in part, on whether the]{.underline}

[subject matter of the involved application is from the mechanical,
electrical, chemical or]{.underline}

[biotechnology Technology Centers. The board is most current for cases
coming from the]{.underline}

[mechanical areas (TCs 3600 and 3700) and least current in the chemical
area (TC 1700) and]{.underline}

[biotechnology area (TC 1600), although rapid strides are being made on
biotechnology appeals.]{.underline}

[As of the beginning of June 2001, the great majority of chemical
appeals now at the board]{.underline}

[arrived at the board in FY 1998 or later. As of the beginning of June
2001, the great majority of]{.underline}

[biotechnology appeals (TC 1600) , and electrical appeals (TCs 2100,
2600 and 2800) now at the]{.underline}

[board arrived at the board in FY 1999 or later. The great majority of
mechanical appeals now at]{.underline}

[the board arrived at the board in FY 2000 or later. Design appeals,
like reexamination]{.underline}

[proceedings, are docketed ahead of ordinary appeals. There are
presently 31 design appeals]{.underline}

[pending at the board.]{.underline}

[It is expected that the board will decide about 5000 appeals in FY 2001
and receive 3500]{.underline}

[to 4000 new appeals in FY 2001. By the end of FY 2001, it is expected
that the board will have]{.underline}

[an undecided inventory of around 5000 new appeals, roughly the number
the board is capable of]{.underline}

[deciding in a single year.]{.underline}

**[Question 8, Part 2]{.underline}**

[Is this information published periodically in the Official Gazette or
on the USPTO web]{.underline}

[site, so that appeal attorneys can advise their clients about when to
expect a decision in an]{.underline}

[appealed application? If not, could it be?]{.underline}

**[Answer to Question 8, Part 2]{.underline}**

*[Ex parte ]{.underline}*[appeal statistics are published monthly in the
Official Gazette. Additionally, the]{.underline}

[same statistics appear on the USPTO website and can be retrieved by
clicking on the "Board]{.underline}

[Statistics" text at the following address:]{.underline}

[<http://www.uspto.gov/web/offices/dcom/bpai/index.html.>]{.underline}

# [Question 8, Part 3]{.underline}

[Do reexaminations move to the head of the line when they arrive at the
Board for ]{.underline}*[ex]{.underline}*

*[parte ]{.underline}*[appeals, or are all appeals \"special\" so that
reexaminations take their turn like other]{.underline}

[appeals?]{.underline}

**[Answer to Question 8, Part 3]{.underline}**

[Appeals involving reexamination and reissue applications are considered
\"special\" at the]{.underline}

[board and are taken up ahead of other appeals before the
board.]{.underline}

**[Question 9, Part 1]{.underline}**

[When an ex parte appeal is remanded to the examiner for further
consideration of some]{.underline}

[item, before the Board acts on the appeal, does the Board check
periodically to see if the]{.underline}

[examiner has acted on the case?]{.underline}

**[Answer to Question 9, Part 1]{.underline}**

[No. The board does not exercise supervisory authority over examiners.
If, in the opinion]{.underline}

[of an applicant, action on a remand is not deemed timely, or if no
action is taking place, then the]{.underline}

[applicant should contact the examiner and the examiner's supervisor,
etc.]{.underline}

**[Question 9, Part 2]{.underline}**

[Is the applicant notified when an application is remanded prior to
consideration of an]{.underline}

[appeal?]{.underline}

**[Answer to Question 9, Part 2]{.underline}**

[Yes. When an application is remanded to an examiner, the board enters a
remand order]{.underline}

[and that order is mailed to the applicant.]{.underline}

**[Question 9, Part 3]{.underline}**

[What mechanism prevents remanded cases from falling into an
]{.underline}*[\"ex parte ]{.underline}*[black hole\"?]{.underline}

**[Answer to Question 9, Part 3]{.underline}**

[The board mails a copy of its remand order to applicant.]{.underline}

**[Question 10, Part 1]{.underline}**

[What is the scope and purpose of the \"observations on
cross-examination\" that must be]{.underline}

[filed concurrently with motions to suppress evidence?]{.underline}

**[Answer to Question 10, Part 1]{.underline}**

[First, there is no requirement that any comment be filed.]{.underline}

[Second, while it should be unusual, it is possible that a party may
rely on a witness in]{.underline}

[filing a reply to an opposition to a preliminary motion. The opponent
has a right to cross-examine the witness. Accordingly, the Trial Section
authorizes the opponent to file a paper]{.underline}

[making such observations with respect to cross-examination as may be
appropriate. The party]{.underline}

[relying on the witness may then respond to the opponent\'s
observations. Absent observations]{.underline}

[and a response, the board would have no guidance on what weight to give
cross-examination.]{.underline}

**[Question 10, Part 2]{.underline}**

[What happens if the observations exceed the intended scope (are they
ignored)?]{.underline}

**[Answer to Question 10, Part 2]{.underline}**

[Observations and responses to observations obviously should not raise
new issues. If a]{.underline}

[party believes that an observation or a reply to an observation is not
appropriate or exceeds the]{.underline}

[intended scope, the party should arrange for an inter partes conference
call with the]{.underline}

[administrative patent judge handling the interference and a decision
will be made on a case-by-case basis as to what, if anything, should
take place.]{.underline}

[^1]: The Director (formerly Commissioner of Patents and Trademarks),
    the Commissioner for Patents (formerly Assistant Commissioner for
    Patents) and the Commissioner for Trademarks (formerly Assistant
    Commissioner for Trademarks) are also members of the board, but
    rarely participate in deciding cases.

[^2]: Notice and request for comments, Standard for Declaring a Patent
    Interference, 65 Fed. Reg. 79809 (Dec. 20, 2000), *reprinted in
    *1242 Off. Gaz. Pat. & Tm. Office 113 (Jan. 16, 2001).

[^3]: Interim rule with request for comments, Simplification of Certain
    Requirements in Patent Interference Practice, 65 Fed. Reg. 56792
    (Sept. 20, 2000).

[^4]: Quoting the Commissioner, who said:

    [Where, as here, the parties both disclose the same three species,
    that fact does not justify including those species in a single count
    as members of a Markush group if the Examiner has determined that
    the three species are ]{.underline}

    [patentably distinct inventions. If such a count were permitted,
    then the party who proved the earliest date of]{.underline}

    [invention as to any one of the members of the group would be
    awarded priority as to the entire count, i.e., as to]{.underline}

    [all three members. It is not considered that such a result would be
    consonant with the primary purpose of an]{.underline}

    [interference or with the intent of 35 U.S.C. 135, since there would
    be no determination of priority as to ]{.underline}*[each
    ]{.underline}*[of]{.underline}

    [the common \[patentably distinct\] inventions claimed by the
    parties \[emphasis in original\].]{.underline}