14488 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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 § 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, twentysix 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:

Section 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 ‘‘nonNAFTA 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14489

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 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).

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. 2057 (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. 4809 (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 testimonyin-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 crossexamination 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 crossexamination 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 crossexamination, 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,
14490 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

because it would eliminate the abovenoted 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-inchief. 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 anything 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 particularly 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 crossexamination 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 crossexamined 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 crossexamination 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 crossexamination 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 crossexamination. 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14491

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 crossexamination. 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
14492 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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(1) 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 timeconsuming 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 class-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,’’
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14493

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 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 disposition 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-inchief 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
14494 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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 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 crossexamination 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14495

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 FortySecond 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 Civil

Court 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
14496 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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

positions, 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’’ in 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 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14497

§ 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 multiparty 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 on 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
14498 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

affidavits under § 1.672(b) for its casein-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 crossexamination 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 § 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 crossexamination 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 crossexamination. 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14499

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-inchief, 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 Commissionermember, 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 requirements 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–

850). 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
14500 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14501

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.
14502 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

In § 1.601, paragraph (1) 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 rulemaking.

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

Rulemaking. 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. Any

single patent claim designated to correspond

to the count or any 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14503

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, ‘‘81⁄2 x 11 inches (21.8

by 27.9 cm.)’’ is changed to ‘‘21.8 by

27.9 cm. (81⁄2 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 multicount 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
14504 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14505

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 examinerin-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-inchief’’ 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
14506 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14507

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 is 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 be

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
14508 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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

revised, 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 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14509

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 counteraffidavits. 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 threemember 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 should 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 nondispositive 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. Then 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

materially 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
14510 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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

(§ 1.6565(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 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 take 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 testimonyin-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 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14511

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 by 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 in 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 specially 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.
14512 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

*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.’’

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 under rule 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 of the 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.

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)
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14513

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 finaldecision—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 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 ion

the best position to address the matter

and take whatever action might be in

the opponent’s interest in the event a

petition is granted. One 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

§ 1.544(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 ‘‘clause’’

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 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
14514 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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 nextbusiness-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 rulemaking, 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 ‘‘81⁄2 x

11 inches (21.8 by 27.9 cm.)’’ to ‘‘21.8

by 27.9 cm. (81⁄2 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 separatee ‘‘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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14515

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 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 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 [Examinerin-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,
14516 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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’’ interferences

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-inchief 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.
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14517

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 requires 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.’’
14518 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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 ‘‘81⁄2x11

inches (21.8 by 27.9 cm.)’’ to ‘‘21.8 by

27.9 cm. (81⁄2x11 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 citations 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 paragraphs (c)(7),

(c)(8) introductory text, and (c)(8)(v),

and (d) are revised; and paragraphs

(c)(1) and (c)(2) are added to read

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.

* * * * *

(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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14519

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.

* * * * *

(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 noncompliance 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 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
14520 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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

applications 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. (81⁄2 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 selfauthenticating 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14521

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
14522 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14523

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:
14524 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

§ 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-infact. 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.
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14525

(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

defined 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 an 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 decisions 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
14526 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14527

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 notion

(§ 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:
14528 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

(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. (81⁄2 by 11 inches) (letter size)

with printed matter 16.5 by 24.1 cm.

(61⁄2 by 91⁄2 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14529

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

(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
14530 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14531

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-inchief. 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
14532 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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 opponents

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 crossexamination, 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 crossexamination, 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, (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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14533

(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. (81⁄2 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. (11⁄2

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 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
14534 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

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 crossexamination 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 crossexamination, 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 crossexamination, 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 crossexamine 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 crossexamination, 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
Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations 14535

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 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 crossexamination 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 crossexamination, 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 crossexamination, 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.

* * * * *
14536 Federal Register / Vol. 60, No. 52 / Friday, March 17, 1995 / Rules and Regulations

Dated: March 3, 1995.

Bruce A. Lehman,

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks.

[FR Doc. 95–6377 Filed 3–16–95; 8:45 am]

BILLING CODE 3510–16–M