[Federal Register Volume 69, Number 189 (Thursday, September 30, 2004)]
[Rules and Regulations]
[Page 58260]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-21966]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

RIN 0651-AB32


Rules of Practice Before the Board of Patent Appeals and 
Interferences

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule; Correcting amendments.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
correcting a rule that appeared in the Federal Register of 12 August 
2004 (69 FR 49960). The document revised the rules of practice before 
the Board of Patent Appeals and Interferences and made corresponding 
amendments to rules in 37 CFR part 1.

DATES: Effective date: September 30, 2004.

FOR FURTHER INFORMATION CONTACT: Richard Torczon, 703-308-9797.

SUPPLEMENTARY INFORMATION: In FR Doc. 04-17699 appearing on page 49960 
in the Federal Register of 12 August 2004, the following correction is 
made to the SUPPLEMENTARY INFORMATION:
    On page 49980, first column, third full paragraph (answer to 
comment 69), the fourth sentence ``Furthermore, it is noted that the 
appellant can file a request for continued prosecution pursuant to 
Sec.  1.114 and then the appellant would be able to submit an amendment 
and/or evidence directed to only claims unrelated to the new ground of 
rejection and have such considered by the examiner.'' is corrected to 
read: ``Furthermore, it is noted that the appellant can file a request 
for continued prosecution pursuant to Sec.  1.114 and then the 
appellant would be able to submit an amendment and/or evidence also 
directed to claims unrelated to the new ground of rejection and have 
such considered by the examiner.''

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

0
Therefore, 37 CFR parts 1 and 41 are corrected by making the following 
correcting amendments:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. In Sec.  1.248, revise paragraph (c) to read as follows:


Sec.  1.248  Service of papers; manner of service; proof of service in 
cases other than interferences.

* * * * *
    (c) See Sec.  41.106(e) of this title for service of papers in 
contested cases before the Board of Patent Appeals and Interferences.

0
3. In Sec.  1.302, revise paragraph (b) to read as follows:


Sec.  1.302  Notice of appeal.

* * * * *
    (b) In interferences, the notice must be served as provided in 
Sec.  41.106(e) of this title.
* * * * *

0
4. In Sec.  1.303, revise paragraph (c) to read as follows:


Sec.  1.303  Civil action under 35 U.S.C. 145, 146, 306.

* * * * *
    (c) A notice of election under 35 U.S.C. 141 to have all further 
proceedings on review conducted as provided in 35 U.S.C. 146 must be 
filed with the Office of the Solicitor and served as provided in Sec.  
41.106(e) of this title.
* * * * *

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

0
5. The authority citation continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.


0
6. In Sec.  41.3, revise paragraph (e)(1) to read as follows:


Sec.  41.3  Petitions.

* * * * *
    (e) Time for action. (1) Except as otherwise provided in this part 
or as the Board may authorize in writing, a party may:
    (i) File the petition within 14 days from the date of the action 
from which the party is requesting relief, and
    (ii) File any request for reconsideration of a petition decision 
within 14 days of the decision on petition or such other time as the 
Board may set.
* * * * *

0
7. In Sec.  41.127, revise paragraph (d) to read as follows:


Sec.  41.127  Judgment.

* * * * *
    (d) Rehearing. A party dissatisfied with the judgment may file a 
request for rehearing within 30 days of the entry of the judgment. The 
request must specifically identify all matters the party believes to 
have been misapprehended or overlooked, and the place where the matter 
was previously addressed in a motion, opposition, or reply.

0
8. In Sec.  41.154, revise paragraph (c)(1) to read as follows:


Sec.  41.154  Form of evidence.

* * * * *
    (c) * * *
    (1) Each exhibit must have an exhibit label with a unique number in 
a range assigned by the Board, the names of the parties, and the 
proceeding number in the following format:


JONES EXHIBIT 2001

Jones v. Smith

Contested Case 104,999
* * * * *

0
9. In Sec.  41.155, revise paragraph (b) to read as follows:


Sec.  41.155  Objection; motion to exclude; motion in limine.

* * * * *
    (b) Other than deposition. For evidence other than deposition 
evidence:
    (1) Objection. Any objection must be served within five business 
days of service of evidence, other than deposition evidence, to which 
the objection is directed.
    (2) Supplemental evidence. The party relying on evidence for which 
an objection is timely served may respond to the objection by serving 
supplemental evidence within ten business days of service of the 
objection.
* * * * *

    Dated: September 24, 2004.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 04-21966 Filed 9-29-04; 8:45 am]
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