Patent Appeal and Interference Practice

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 940968-4268]

RIN 0651-AA71

Patent Appeal and Interference Practice

AGENCY: Patent and Trademark Office, Commerce..

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office proposes to amend the rules of

practice in patent cases, part 1 of title 37, Code of Federal

Regulations, relating to patent appeal and interference proceedings.

The proposed changes include amendments to conform the interference

rules to 35 U.S.C. 104 as amended by Public Law 103-182, 107 Stat. 2057

(1993) (North American Free Trade Agreement Implementation Act) and a

number of clarifying and housekeeping amendments.

DATES: Written comments must be submitted no later than November 30,

1994. A public hearing will be held on December 7, 1994. Requests to

present oral testimony must be received no later than December 2, 1994.

ADDRESSES: Address written comments to Board of Patent Appeals and

Interference, P.O. Box 15647, Arlington, Virginia 22215, marked to the

attention of Fred E. McKelvey. Written comments will be available for

public inspection in the interference copy room, which is located on

the 10th floor of Crystal Gateway 2, 1225 Jefferson Davis Highway,

Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT:Fred E. McKelvey by telephone at (703)

603-3320 or by mail marked to the attention of Fred E. McKelvey at P.O.

Box 15647, Arlington, Virginia 22215.

SUPPLEMENTARY INFORMATION:

I. Amendments Responsive to Adoption of Public Law 103-182

Several of the proposed 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),

which amended 35 U.S.C. 104 to permit reliance on activities occurring

in a ``NAFTA country'' to prove a date of invention. Paragraph (b) of

Sec. 104 as amended states that ``the term `NAFTA country' has the

meaning given that term in section 2(4) of the North American Free

Trade Agreement Implementation Act.'' That section of Public Law 103-

182 has been codified at 19 U.S.C. 3301(4), which reads:

(4) NAFTA Country

Except as provided in section 3332 of this title, the term

``NAFTA country'' means--

(A) Canada for such time as the [North American Free Trade]

Agreement is in force with respect to, and the United States applies

the Agreement to, Canada; and

(B) Mexico for such time as the Agreement is in force with

respect to, and the United States applies the Agreement to, Mexico.

Accordingly, it is proposed to amend 37 CFR 1.601 by adding a new

paragraph (r) defining the term ``NAFTA country'' and ``non-NAFTA

country'' and to amend the following interference rules, which set

forth the requirements for preliminary statements, so as to permit

reliance on activities occurring in a NAFTA country: Secs. 1.622(b),

1.623(a), 1.624(a) and 1.628(b)(2).

37 CFR 1.684, which relates to the taking of testimony in a foreign

country, is proposed to be deleted and reserved in view of proposed

amendments to Secs. 1.671 and 1.672. Section 1.671 is proposed to be

amended by redesignating paragraph (h) as paragraph (i) and adding new

paragraphs (h) and (j). New paragraph (h) would set forth the

requirements for a motion Sec. 1.635 to compel testimony or the

production of documents or things in a foreign country. New paragraph

(j) would provide that the weight to be given testimony taken in a

foreign country will be determined on a case-by-case basis. Little, if

any, weight would 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. The proposed amendments to

Sec. 1.672 include amending paragraphs (a) and (b), redesignating

current paragraphs (c) through (f) as paragraphs (e) through (h) and

adding new provisions identified as paragraphs (c) and (d). Paragraph

(a) as proposed to be amended would limit a party's case-in-chief

testimony to affidavits, except where testimony is to be compelled

under 35 U.S.C. 24 or compelled from a party or in a foreign country.

New paragraph (c) would provide 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

particularity the nature of the objection, to which the party may

respond by filing supplemental affidavits and supplemental official

records and printed publications. New paragraph (c) further would

provide that any objections to the admissibility of any evidence

contained in or submitted with a supplemental affidavit shall be by a

motion to suppress under Sec. 1.656(h). New paragraph (d) of Sec. 1.672

would require any cross-examination of affiants to be by deposition

within the United States, which is defined in current Sec. 1.601(p) as

the United States of America, its territories and possessions. New

paragraph (d) of Sec. 1.672 would require that the party whose witness

is to be cross-examined notice the deposition under Sec. 1.673(e),

obtain a court reporter and provide a translator of the witness will

not testify in English. Although not set forth in the proposed rules,

any party attending the deposition can bring its own translator or the

parties can agree to share the cost of single mutually agreeable

translator. Paragraphs (g) and (h) of Sec. 1.671 as proposed to be

amended would provide that a party seeking to compel testimony or

production of documents or things pursuant to 35 U.S.C. 24 or to compel

testimony or production from a party or in a foreign country would have

to first file a Sec. 1.635 motion to obtain permission from an

administrative patent judge. A motion to compel testimony or the

production of documents or things in a foreign country would have to

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, and 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 current requirements for an oral

conference (Sec. 1.673(g)) and service of documents and a proffer of

access to things (Sec. 1.673(b)), would be required to notice the

deposition under Sec. 1.673(a).

Section 1.616 is proposed to be amended by adding a paragraph (c)

stating that to the extent that any information under the control of an

individual or entity located in a NAFTA 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 (Sec. 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, including imposition of appropriate

sanctions under Sec. 1.616(a).

Section 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 proposed to

be amended to extend these requirements to non-English language

documents that a party is required to produce via discovery (see

Sec. 1.671(h)).

II. Attorney Fees and Expenses

Section 1.616 is proposed to be amended 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). New paragraph (a)(5)

would authorize the award of compensatory (as opposed to punitive)

expenses and/or attorney fees as a sanction for failing to comply with

the rules or an order, since there are occasions when such a sanction

would be more commensurate in scope with the infraction than the

sanctions that are currently authorized. New paragraph (b) would

authorize 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.

III. Certificates of Prior Consultation

Paragraph (b) of Sec. 1.637 currently requires that a miscellaneous

motion under Sec. 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. It is proposed to

amend paragraph (b) to extend the requirement for such a certificate to

motions filed under Secs. 1.633 and 1.634 and also 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 proposed requirement for

consultation should result in a reduction in the number of issues

raised by motions under Sec. 1.633 and 1.634 as well as a reduction in

the number of motions filed under those rules.

IV. Service of a ``Developing Record''

In addition to the amendments to Sec. 1.672 discussed above under

the heading ``Amendments responsive to adoption of Public Law 103-

182,'' it is proposed to amend Secs. 1.672, 1.682, 1.683 and 1.688 to

require each party to serve on each opponent a ``developing record''

that will evolve into the record required to be filed under Sec. 1.653.

Specifically, in Sec. 1.672, it is proposed to amend paragraph (b) 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 (which includes serve) the affidavit,

whether it is a new affidavit or an affidavit that was previously filed

by that party during ex parte prosecution of an application or under

Sec. 1.608 or 1.639(b).

Sections 1.682, 1.683 and 1.688 are proposed to be amended to

parallel the proposed amendments to Sec. 1.672. Specifically, paragraph

(a) of Sec. 1.682 as proposed to be amended would provide 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 an oral deposition of a witness, by filing (which

includes serving) a copy of the official record or publication no later

than the time set for filing affidavits under Sec. 1.672(b), thereby

dispensing with the current requirement to file a notice of intent to

rely on the official record or printed publication. In Sec. 1.683,

paragraph (a) as proposed to be amended would 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 (which includes serving) a

copy of the affidavit or a copy of the deposition transcript no later

than the time set for filing affidavits under Sec. 1.672(b), thereby

dispensing with the current requirement for a party to file a motion

under Sec. 1.635 for leave to rely on such testimony. Section 1.688 as

proposed to be amended would 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 Sec. 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 Sec. 1.672(b). Thus, all evidence filed under

Secs. 1.672, 1.682, 1.683 and 1.688 that relates to a party's case-in-

chief should be filed together no later than the date set by an

administrative patent judge for the party to serve affidavits under

Sec. 1.672(b) for its case-in-chief and all evidence under those

sections that relates to the party's rebuttal should be filed no later

than the date set for the party to serve affidavits under Sec. 1.672(b)

for its case-in-rebuttal.

The pages of all affidavits and deposition transcripts would be

required to have sequential numbers that would also serve as the record

page numbers for the affidavits and transcripts in the party's record

when it is filed under Sec. 1.653. Likewise, the exhibits identified in

the affidavits and deposition transcripts and any official records and

printed publications served under Sec. 1.682(a) would be required to

have sequential numbers which would serve as the exhibit numbers when

the exhibits are filed with the party's record. Affidavits and

Sec. 1.683(a) testimony would have to 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 would have to be accompanied by an

index briefly describing the nature of each exhibit and giving the

number of the page of affidavit or Sec. 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 Secs. 1.672(b), 1.682(b), 1.683(a) and 1.688(a) would have to

file objections under Secs. 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 paragraph Sec. 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

Secs. 1.672(c), 1.682(c), 1.683(b) or 1.688(b) would not be permitted

to move under Sec. 1.656(h) to suppress the evidence on that ground. If

an opponent timely files an objection to evidence filed under

Secs. 1.672(b), 1.682(b), 1.683(a) or 1.688(a), the party may respond

by filing supplemental affidavits and, in the case of objections to

evidence filed under Secs. 1.672(b), 1.682(b) and 1.683(a), may also

file supplemental official records and printed publications. No

objection to the admissibility of supplemental evidence shall be made,

except as provided by Sec. 1.656(h). The page numbers of the

supplemental affidavits would be sequentially numbered beginning with

the number following the last page number of the testimony served under

Secs. 1.672(b), 1.683(a) and 1.688(a). Likewise, any additional

exhibits identified in the supplemental affidavits and any supplemental

official records and printed publications would be given sequential

numbers beginning with the number following the last number of the

previously identified exhibits. After the time expires for filing

objections and supplemental affidavits, or earlier when appropriate,

the administrative patent judge would set a time within which any

opponent may file a request to cross-examine an affiant on oral

deposition.

If any opponent requests cross-examination of an affiant, the party

shall notice a deposition at a reasonable location within the United

States under Sec. 1.673(e) for the purpose of cross-examination. Any

redirect and recross shall take place at the deposition. Within 45 days

of the close of the period for taking cross-examination (Sec. 1.678 is

proposed to be amended to change the time for filing certified

transcripts from 45 days to 30 days), the party would 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 would be sequentially

numbered in the manner discussed above. The deposition transcripts

would 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

Sec. 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).

Since the proposed amendments to Sec. 1.672 would require a party,

during its testimony period, to file all affidavits on which it intends

to rely at final hearing, it is proposed to delete as unnecessary

paragraph (e) of Sec. 1.671, 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 Sec. 1.608 or

1.639(b).

V. Withdrawal of Previous Notices

Some of the clarifying and housekeeping amendments proposed in part

VI below originally appeared in the same or similar form in two

previous notices of proposed rulemaking, which are hereby withdrawn:

(a) RIN: 0651-AA53--``Patent Interference Practice--Notice of

Proposed Rulemaking,'' 57 Fed. Reg. 2698 (Jan. 23, 1992), reprinted in

1135 Off. Gaz. Pat. Office 37 (Feb. 11, 1992); and

(b) RIN:0651-AA66--``Patent Interference Practice--Separate

Patentability of Claims,'' 58 FR 39704 (July 26, 1993), reprinted in

1153 Off. Gaz. Pat. Office 59 (Aug. 17, 1993).

VI. Miscellaneous Amendments

Throughout the rules, the term ``examiner-in-chief'' has been

replaced by ``administrative patent judge'' to reflect the change in

the title of the members of the Board. See Commissioner's Notice of

October 13, 1993, published as ``New Title for Examiners-in-Chief,''

1156 Off. Gaz. Pat. Office 332 (Nov. 9, 1993).

In Sec. 1.11, it is proposed to amend paragraph (e) to allow access

to the file on 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 Sec. 1.11(b) provides that a reissue application is open

to the public, interferences involving reissue applications were

inadvertently not included in current Sec. 1.11(e).

In Sec. 1.192, which specifies the contents of the brief of an

appellant for final hearing in an ex parte appeal, it is proposed to

amend paragraph (a) in three respects. The first proposal is to

simplify the language used to refer to a brief filed by an applicant

who is not represented by a registered practitioner. The second is to

delete the requirement that such a brief be in substantial compliance

with the requirements of paragraphs (c) (1), (2), (6) and (7), because

experience has shown that it is better to evaluate such briefs on a

case-by-case basis. The third is to codify the ``good cause'' standard

that is currently used to determine whether the Board will consider any

arguments or authorities not included in the brief. It is proposed to

make clarifying amendments to paragraphs (c), (c)(5) and (c)(5)(ii), 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) that

would require an appellant who has filed an appeal to the Board to

identify the real party in interest and any related appeals and

interferences. The proposed requirement to identify the real party in

interest is derived from Federal Circuit Rule 47.4 and Federal Circuit

Form 7. For some time, it has been necessary to know the identity of

the real party in interest. This information would permit members of

the Board to comply with ethics regulations associated with working on

matters in which the member has an interest. The proposed requirement

to identify related appeals and interferences is derived in part from

Federal Circuit Rule 47.5 and, if adopted, would prevent the Board from

entering inconsistent decisions in related cases.

Section 1.601 is proposed to be amended in several ways. Paragraph

(f) as proposed to be amended would specify that a count should be

sufficiently broad as to encompass the broadest corresponding

patentable claim of each of the parties without being so broad as to be

unpatentable over the prior art and also to indicate that a phantom

count is unpatentable to all parties under the written description

requirement of the first paragraph of 35 U.S.C. 112. Paragraph (g) as

proposed to be amended would broaden the definition of ``effective

filing date'' to mean the actual filing date when the involved

application or patent is not entitled to the benefit of the filing date

of an earlier application. Specifically, paragraph (g) would provide

that the effective filing date of an application is the filing date of

an earlier application 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 would be defined 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 reference to

35 U.S.C. 121 is included to eliminate any doubt that a divisional

application may be entitled to an earlier filing date in accordance

with 35 U.S.C. 121.

Paragraph (j) is proposed to be amended by changing ``which'' to

``that.'' Paragraph (1) is proposed to be amended by changing

``assignee'' to ``assignee of record in the Patent and Trademark

Office.'' Paragraph (q) is proposed to be amended by deleting ``a panel

of'' as superfluous.

Section 1.602 is proposed to be clarified by changing ``within 20

days of'' to ``within 20 days after.''

Sections 1.603 and 1.606 are proposed to be amended by deleting the

third sentence (``Each count shall define a separate patentable

invention.'') as redundant in view of the identical sentence in

Sec. 1.601(f). In addition, it is proposed to clarify Secs. 1.603 and

1.606 by amending them to require each application to contain, or be

amended to contain, at least one patentable claim which corresponds to

each count.

In section 1.604, it is proposed to amend paragraph (a)(1) by

changing ``his or her'' to ``its.''

In Sec. 1.605, it is proposed to amend paragraph (a) for

clarification.

Section 1.606 is also proposed to be amended to note that the claim

in the application need not be, and most often will not be, identical

to a claim in the patent.

In Sec. 1.607, it is proposed to amend paragraph (a)(4) by changing

``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 Sec. 135(b) before an

interference is declared will prevent an interference from being

declared where the applicant cannot satisfy Sec. 135(b) with respect to

any claim alleged to correspond to the proposed count.

In Sec. 1.608, it is proposed to amend paragraphs (a) and (b) in

several respects. First, both paragraphs are proposed to be amended to

delete the information about effective filing dates, which would appear

instead in Sec. 1.601(g) as proposed to be amended. Second, it is

proposed to relax the current requirement of paragraph (a) for an

affidavit filed by the applicant. Paragraph (a) as proposed to be

amended would permit a statement to be filed by the applicant or a

practitioner of record. Third, it is proposed to change ``sufficient

cause'' in paragraph (b) and in other interference rules to ``good

cause'' in order to make it clear that only one ``cause'' standard is

intended. Fourth, it is proposed to change ``8\1/2\ x 11 inches (21.8

by 27.9 cm.)'' to ``21.8 by 27.9 cm. (8\1/2\ x 11 inches).''

In Sec. 1.609, it is proposed to amend paragraphs (b)(2) and (b)(3)

to require the examiner's statement (i.e., the 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 and why each claim designated as not

corresponding to a count is not directed to the same patentable

invention as the count. The proposed amendment, if adopted, would

provide the Board and the parties with the benefit of the examiner's

reasoning and would provide a better foundation for considering

preliminary motions to designate claims as corresponding or as not

corresponding to a count.

In Sec. 1.610, it is proposed to amend paragraph (a) by deleting

the language ``a panel consisting of at least three members of'' as

superfluous and by deleting the reference to Sec. 1.640(e), which is

proposed to be amended to allow a request for reconsideration under

Sec. 1.640(c) to be decided by an individual administrative patent

judge rather than by the Board. It is further proposed to amend

paragraph (b) by deleting ``Unless otherwise provided in this

section,'' as unnecessary in light of the proposed amendment to

paragraph (a).

Section 1.611 is proposed to be amended by redesignating paragraph

(a)(8) as paragraph (a)(9) and adding a new paragraph (a)(8) requiring

that a notice of declaration of interference indicate 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 a count is not directed to the same patentable

invention as the count. This information should assist the parties in

deciding whether to move to have claims designated as corresponding or

not corresponding to the count. An administrative patent judge can

satisfy this requirement by enclosing a copy of the examiner's

statement with the parties' copies of the declaration notice. It is

also proposed to capitalize the first word in each of paragraphs (d)(2)

and (d)(3).

In Sec. 1.612, it is proposed to amend paragraph (a) to change

``opposing party's'' to ``opponent's'' and to add a sentence referring

to Sec. 1.11(e) concerning public access to interference files.

In Sec. 1.614, it is proposed to clarify the meaning of paragraph

(a) by changing ``the Board shall assume jurisdiction'' to ``the Board

acquires jurisdiction.''

In Sec. 1.616, in addition to authorizing an award of compensatory

attorney fees and expenses in appropriate circumstances, as discussed

above, it is proposed to amend current paragraph (b) (which is proposed

to be redesignated as paragraph (a)(2)) 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 any type of paper. Paragraph

(b) currently permits entry of an order precluding the filing of a

motion or a preliminary statement.

Section 1.617 is proposed to be amended to authorize a party

against whom a Sec. 1.617(a) order to show cause has been issued to

respond with an appropriate preliminary motion under Sec. 1.633(c), (f)

or (g). A preliminary motion under Sec. 1.633(c) to redefine the

interference, under Sec. 1.633(f) for benefit of the filing date of an

earlier application or under Sec. 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 Sec. 1.608(b). A preliminary motion

under Sec. 1.633(f) or (g) may also be appropriate where the count set

forth in the notice delcaring the interference is the same as the count

proposed in the applicant's showing under Sec. 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 Sec. 1608(b)

showing or accords the parentee the benefit of the filing date of an

earlier application whose benefit the Sec. 1.608(b) showing argued

should not be accorded the patentee.

In Sec. 1.618, it is proposed to amend paragraph (a) for

clarification and to state that a paper that has been returned as

unauthorized will not thereafter be considered in the interference.

Paragraph (a) currently states that a paper that has been returned as

unauthorized will not thereafter be considered by the Patent and

Trademark Office.

In Sec. 1.625, it is proposed to simplify paragraph (a) by deleting

``the invention was made in the United States or abroad and'' as

surplusage.

Section 1.626 is proposed to be simplified by changing ``earlier

application filed in the United States or aboard'' to ``earlier filed

application.'' The same change is proposed for Secs. 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).

In Sec. 1.628, it is proposed to amend paragraph (a) by changing

``ends of justice'' to ``interest of justice'' to be consistent with

the language used in Secs. 1.628(a) and 1.687(c), since a single

standard is intended. Paragraph (a) of Sec. 1.628 is also proposed to

be amended to apply the ``interest of justice'' requirement 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 will not normally be

prejudiced by the filing of a corrected statement.

In Sec. 1.629, it is proposed to amend paragraphs (a), (c)(1) and

(d) to make them consistent with the proposed amendment of the

definition of ``effective filing date'' in Sec. 1.601(g).

In Sec. 1.631, it is proposed to amend paragraph (a) to delete ``by

the examiner-in-chief'' (second occurrence) as superfluous.

Section 1.632 is proposed to be amended 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.

In Sec. 1.633, it is proposed to amend paragraph (a) to specify

that a claim shall be construed in light of the specification of the

application or patent in which it appears. This amendment would

administratively set aside the judicially created rule of In re Spina,

975 F.2d 854, 856, 24 USPQ2d 1142, 1144 (Fed. Cir. 1992), to the extent

it held that the interference rules require that an ambiguous claim

copied from a patent for interference purposes be construed in light of

the disclosure of the patent. A claim that has been added to a pending

application for any purpose, including to provoke an interference,

would 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 Sec. 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), it is also proposed to delete ``by reference to

the prior art of record'' as unnecessary.

Paragraphs (a)(1) and (a)(2) of Sec. 1.633 are proposed to be

amended by deleting some unnecessary language from each paragraph and

by changing ``derivation'' to ``Derivation'' in paragraph (a)(2).

Paragraph (b), which concerns motions for judgment on the ground of no

interference-in-fact, is proposed to be amended by stating 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).

Paragraph (i) of Sec. 1.633 in its current form authorizes a party

who opposes a preliminary motion under Sec. 1.633 (a), (b) or (g) to

file a preliminary motion under Sec. 1.633 (c) or (d). It is proposed

to amend paragraph (i) to additionally authorize a party-patentee to

file a preliminary motion under Sec. 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, the proposed amendment would

give a patentee an option similar to that afforded in the same

situation to a party-applicant, who can file a preliminary motion under

Sec. 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.

In Sec. 1.637, it is proposed to amend paragraph (a) to incorporate

the substance of the Notice of the Chairman of the Board of Patent

Appeals and Interferences of August 10, 1990, published as

``Interferences--Preliminary Motions for Judgment,'' 1118 Off. Gaz.

Pat. Office 19 (Sept. 11, 1990). Paragraph (a) as proposed to be

amended would state that where a party files a preliminary motion for

judgment against an opponent under Sec. 1.633(a) based on

unpatentability over prior art having a date that appears to make the

prior art equally applicable to the moving party, it will be presumed,

without regard to the dates alleged in the preliminary statement of the

party, that the cited prior art is also 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. The

proposed amendment differs from the notice by providing that 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. The notice

had directed the administrative party, a procedure which results in

delaying a decision on the preliminary motion. Paragraph (a) is further

proposed to be clarified by changing ``Every'' in the second sentence

to ``Each.''

Paragraph (c)(1) of Sec. 1.637 sets forth the requirements for a

preliminary motion to add or substitute a proposed count. It is

proposed to amend paragraph (c)(1)(v) in two respects. The first is to

require a moving party to show that the proposed count is patentable

over the prior art. The second is 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. Paragraph (c)(1)(vi) is proposed to be amended to clarify

that a preliminary motion under Sec. 1.633(c)(1) need not be

accompanied by a preliminary motion for benefit under Sec. 1.633(f)

unless the moving party seeks benefit with respect to the proposed

count. It is also proposed to add a new paragraph (c)(1)(vii)

specifying that where an opponent is accorded the benefit of the filing

date of an earlier filed application in the notice of declaration of

the interference, the moving party must show why the opponent is not

also entitled to benefit of the filing date 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. The amendment would

eliminate the need for an opponent to respond to a Sec. 1.633(c)(1)

motion with a preliminary motion under Sec. 1.633(f) claiming benefit,

which has the effect of delaying a decision on the Sec. 1.633(c)(1)

motion.

Paragraphs (c)(2) (ii) and (iii) of Sec. 1.637 are proposed to be

amended for clarification. Paragraphs (c)(2)(iv) and

Sec. 1.637(c)(3)(iii), which relate to Sec. 1.633(f) motions for

benefit, are proposed to be deleted and reserved as unnecessary, since

motions under Sec. 1.633(c) (2) and (3) do not efect the count.

Paragraph (c)(3)(ii), which applies to motions under Sec. 1.633(c)(3)

to designate a claim as corresponding to a count, is proposed to be

amended to have claims compared to claims, as is the case in

Sec. 1.633(c)(4)(ii), which applies to motions filed under

Sec. 1.633(c)(4) to designate a claim as not corresponding to a count.

The proposed amendment avoids the need to compare claims to counts,

which are subject to different rules of construction than are claims.

Paragraph (c)(4)(ii) of Sec. 1.637 is proposed to be amended 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 Sec. 1.633(c)(1) to add a new count. The

proposed amendment, if adopted, would preclude 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, in which case the

party could file a Sec. 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.

Paragraph (d)(4) of Sec. 1.637, which authorizes a party to file a

motion for benefit together with a motion under Sec. 1.633(d), is

proposed to be deleted and reserved as unnecessary, because motions

filed under Sec. 1.633(d) do not affect the count. Paragraphs

(e)(1)(viii) and (e)(2)(vii) are proposed to be amended to make it

clear that a preliminary motion under Sec. 1.633(e) (1) or (2) need not

be accompanied by a preliminary motion for benefit under Sec. 1.633(f)

unless the moving party seeks benefit with respect to the proposed

count. Paragraphs (e)(1)(ix) and (e)(2)(viii) are proposed to be added

to specify that where an opponent is accorded the benefit of the filing

date of an earlier filed application in the notice of declaration of

the interference, the moving party must show why the opponent is not

entitled to benefit of the earlier filed application with respect to

the proposed count; otherwise, the opponent will be presumed to be

entitled to benefit of the earlier filed application with respect to

the proposed count. Paragraph (f)(2) of Sec. 1.637 is proposed to be

amended to change ``abroad'' to ``in a foreign country'' and to delete

both occurrences of ``filed abroad'' as superfluous.

Paragraph (h) of Sec. 1.637 is proposed to be amended to explain

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).

In Sec. 1.638, it is proposed to amend paragraph (b) for

clarification by changing ``a reply'' to ``any reply.''

in Sec. 1.639, it is proposed to amend paragraph (a), which

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, 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. It is also proposed to amend paragraph

(d)(1) by changing ``call'' to ``use.''

In Sec. 1.640, it is proposed to amend paragraph (b) in several

respects. The first is to provide that a decision on a preliminary

motion shall be deferred to final hearing unless an administrative

patent judge or the Board is of the opinion that a decision on a

preliminary motion will materially advance the resolution of the

interference. The second is 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. It is also

proposed to amend paragraph (b) to state that where 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 of the

administrative patent judge that the party wishes to have reviewed at

final hearing as well as identifying any deferred or belatedly filed

motions that the party wishes to have considered at final hearing.

Paragraph (b) as proposed to be amended would also require that any

evidence a party wishes to have considered with respect to the

decisions and motions to be considered or reviewed at final hearing,

including any affidavits filed by the party under Sec. 1.608(b) or

1.639(b), would have to be served on the opponent during the testimony-

in-chief period of the party.

Paragraph (b)(1) of Sec. 1.640 is proposed to be amended for

clarification. Paragraph (b)(2), which currently states that a

preliminary motion filed after a decision is entered on preliminary

motions under Sec. 1.633 will not be considered except as provided by

Sec. 1.655(b), is proposed to be amended to state that a preliminary

motion filed after the time expires for filing preliminary motions will

not be considered except as provided by Sec. 1.645(b) by changing

``1.655(b)'' to ``1.645(b),'' which relates to consideration of

belatedly filed papers in general.

Paragraph (c) of Sec. 1.640, which currently requires an

administrative patent judge or the Board to specifically authorize an

opposition to a request for reconsideration of a decision by an

administrative patent judge, is proposed to be amended 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 an opposition should be authorized. If adopted, the

administrative patent judge would continue to have the authority to

deny a request for reconsideration without waiting for an opposition.

In order to conserve the resources of the Board, it is also proposed to

delete the last sentence of Sec. 1.640(c) so as to authorize a single

individual administrative patent judge to decide a request for

reconsideration. Paragraph (c) is also proposed to be amended to

require that a request for reconsideration be filed by hand or Express

Mail. Paragraph (d)(1), which currently states that an order to show

cause under that section can be based on a decision on a motion which

is dispositive of the interference against a party as to any count, is

proposed to be amended to include decisions on dispositive matters

raised sua sponte by an administrative patent judge.

Paragraph (e) of Sec. 1.640 is proposed to be amended to

incorporate the substance of the Deputy Commissioner's 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), reprinted in 1086 Off. Gaz. Pat. Office 282 (Jan. 5, 1988).

Specifically, paragraph (e) as proposed to be amended would provide

that where the order to show cause was issued under Sec. 1.640(d)(1),

the party may respond with 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 other

party would be 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

Sec. 1.640(d)(1) and the paper includes a request for final hearing,

the response must identify every decision of the administrative patent

judge that the responding party wishes to have reviewed by the Board at

a final hearing. Where the order was issued under Sec. 1.640(d)(1) and

the paper does not include a request for final hearing, the response

may include a request for final hearing, which must identify every

decision of the administrative patent judge that the responding party

wishes to have reviewed by the Board at a final hearing. Where only the

response includes a request for a final hearing, the party who filed

the paper would have 14 days from the date of service of the 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

would have to be accompanied by a motion (Sec. 1.635) requesting a

testimony period if a party wishes to introduce any evidence to be

considered at final hearing (Sec. 1.671), such as affidavits previously

filed under Sec. 1.639(b). A request for a testimony period would be

construed as including a request for final hearing. Where 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 is the basis for the order would be reviewed based on

the contents of the paper and the response. If the paper fails to show

good cause, the Board would enter judgment against the party against

whom the order issued.

Section 1.641 currently indicates that an administrative patent

judge who, during the pendency of an interference, 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, which the administrative

patent judge will consider in determining how the interference shall

proceed. It is proposed to amend Sec. 1.641 to indicate that a party's

views may include argument or appropriate preliminary motions under

Sec. 1.633(c), (d) and (h), including any supporting evidence.

In Sec. 1.643, it is proposed to amend paragraph (b) 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 Secs. 1.628(a) and 1.687(c).

In Sec. 1.644, it is proposed to simplify paragraph (a) by changing

``a panel consisting of more than one examiner-in-chief'' to ``the

Board.'' Paragraphs (a)(1), (b) and (c) are proposed to be amended by

changing both occurrences of ``panel'' to ``Board.'' Paragraphs (a)(2)

and (b) are proposed to be changed 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; these paragraphs

currently provide that such a petition shall not be filed prior to a

decision of the Board awarding judgment.

Paragraph (b) of Sec. 1.644 is proposed to be clarified by

amending it to state that a petition under Sec. 1.644(a) shall be

considered timely if it is made as part of, or simultaneously with, a

proper motion under Sec. 1.633, 1.634, or 1.635 when granting the

motion would require waiver of a rule. In other words, a petition under

Sec. 1.644(a)(2) must seek waiver of a rule prospectively rather than

retroactively.

Paragragh (d) of Sec. 1.644 is proposed to be amended to provide

that the statement of facts in a petition preferably should be in

numbered paragraphs and also to delete the second sentence as

unnecessary. Paragraph (f) is proposed to be amended to change the ``15

days'' in which to request reconsideration of a decision by the

Commissioner to ``14 days.'' In paragraph (g), it is proposed to delete

the quotation marks around ``Express Mail.''

Section 1.645, which in its current form permits consideration of a

belatedly filed paper only if accompanied by a motion under Sec. 1.635

which shows sufficient cause (Sec. 1.645(b)) why the paper was not

timely filed, is proposed to be amended in several respects. First, it

is proposed to change ``sufficient cause'' to ``good cause'' in order

to use a single ``cause'' standard throughout the interference rules.

Second, it is proposed to amend paragraph (b) 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. For

purposes of the sections other than Sec. 1.645, a belatedly filed paper

is considered ``timely filed'' if accompanied by a motion under

Sec. 1.635 which is granted.

Paragraph (d) of Sec. 1.645 is proposed to be amended 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.

In Sec. 1.646, it is proposed to amend paragraph (a)(2) by deleting

the reference to Sec. 1.684, which is proposed to be deleted. It is

proposed to amend paragraph (c)(1) 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, for example. In paragraph (c)(4), it is proposed to change

``mail'' (second occurrence) to ``first class mail'' to make it clear

that the service date specified in that paragraph applies only to first

class mail. It is also proposed to redesignate paragraph (c)(5) as

paragraph (c)(6) and to add a new paragraph (c)(5) which clarifies 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. Paragraph (d) is proposed to be

amended to delete the quotation marks around ``Express Mail.''

Paragraph (e) is proposed to be amended 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.

In Sec. 1.651, it is proposed to amend paragraph (a)(2) by deleting

``(testimony includes testimony to be taken abroad under Sec. 1.684)''

in order to be consistent with the proposal to delete Sec. 1.684.

Paragraphs (c)(2) and (c)(3) are proposed to be amended to be

consistent with the proposed amendment to the definition of ``effective

filing date'' in Sec. 1.601(g). In paragraph (d), it is proposed to

change ``abroad under Sec. 1.684'' to ``in a foreign country.''

In Sec. 1.653, it is proposed to amend paragraph (a) in several

ways. The first is to change the references to paragraphs of Sec. 1.672

to be consistent with the proposed redesignation of certain paragraphs

of Sec. 1.672, discussed below. The second is to delete ``of fact'' in

the clause ``agreed statements of fact under Sec. 1.672(f)'' (proposed

to be redesignated as Sec. 1.672(h)), because agreed statements under

Sec. 1.672(f) 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. The third is to delete ``under Sec. 1.684(c),'' since

Sec. 1.684 is proposed to be deleted. A fourth proposed amendment to

Sec. 1.653(a) is to indicate that in addition to the types of testimony

already set forth in paragraph (a), 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 Sec. 1.687(c) is granted.

Paragraph (b) of Sec. 1.653 is proposed to be amended to be

consistent with the proposed redesignation of certain paragraphs of

Sec. 1.672, to delete the reference to Sec. 1.684(c), which is proposed

to be cancelled, and for clarity. Paragraphs (c)(1) and (c)(4) of

Sec. 1.653 are proposed to be amended 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.

It is proposed that paragraph (c)(5) of Sec. 1.653 be deleted and

reserved. Paragraph (c)(5) 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 Sec. 1.682(a). This

requirement is considered unnecessary because such notices, official

records and printed publications are in the nature of exhibits under

Sec. 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.

Paragraph (g) of Sec. 1.653 is proposed to be amended and

paragraphs (f) and (h) deleted and reserved to eliminate the current

distinction between typewritten and printed records. Paragraph (g) is

also proposed to be amended to change ``8\1/2\ x 11 inches (21.8 by

27.9 cm.)'' to ``21.8 by 27.9 cm. (8\1/2\ x 11 inches)'' and to delete

the requirement for justified margins and to require 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 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. Paragraph

(i) is proposed to be amended 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 Sec. 1.682(a).

In Sec. 1.654, it is proposed to amend paragraph (a) 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, because most hearings have required no more than 30 minutes

per side and a panel has the discretion to grant more time at the

hearing, where necessary.

In Sec. 1.655, it is proposed to amend paragraph (a) by changing

the standard of review from ``erroneous or an abuse of discretion'' to

``an abuse of discretion.'' The recitation of a separate ``error''

standard is unnecessary, because 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 decision. See, e.g., Heat and Control Inc. v. Hester

Industries, Inc., 785 F.2d 1017, 228 USPQ 926 (Fed. Cir. 1986); Western

Electric Co. v. Piezo Technology, Inc. v. Quigg, 860 F.2d 428, 8 USPQ2d

1853 (Fed. Cir. 1988).

It is proposed to amend paragraph (b) of Sec. 1.655 to clarify

which matters a party is not entitled to raise for consideration at

final hearing. As proposed to be amended, paragraph (b) would provide

that a party shall not be entitled to raise for consideration at final

hearing a matter which properly could have been raised by a motion

under Sec. 1.633 or 1.634 unless (1) the matter was properly raised in

a motion that was timely filed by the party under Sec. 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 Sec. 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 is also proposed to amend paragraph (b) of Sec. 1.655 to

state that a change of attorneys during the interference generally does

not constitute good cause for failing to file a timely motion or

opposition.

It is further proposed, in response to In re Van Geuns, 988 F.2d

1181, 26 USPQ2d 1057 (Fed. Cir. 1993), to amend paragraph (b) of

Sec. 1.655 by adding a sentence explaining that a party who fails to

contest, by way of a timely filed preliminary motion under

Sec. 1.633(c), the designation of a claim as corresponding to a count

may not subsequently argue the separate patentability or the lack of

separate patentability of claims designated as corresponding to the

count. The Patent and Trademark Office conducts interference

proceedings to determine who, as between two or more applicants for

patent or one or more applicants for patent and one or more patentees,

is the first inventor of a patentable invention. A primary examiner

determines in the first instance whether the claims in a pending

application interfere with the claims in another pending application or

unexpired patent. When the examiner is of the view that an interference

exists, the Board is notified (Sec. 1.609). The interference is

assigned to an administrative patent judge (Sec. 1.610), who issues a

notice declaring the interference (Sec. 1.611). Each separately

patentable invention involved in the interference is defined by a

count, which is merely a vehicle for contesting priority of invention

(i.e, who made the invention defined by the count first) and

determining the evidence relevant to the issue of priority. A

preliminary determination is made by the Patent and Trademark Office as

to which claims should be designated to correspond to the count. The

claims that are initially determined to define the same patentable

invention are designated as corresponding to the count. All other

claims are designated as not corresponding to the count. The

designation of claims provides a starting point in an interference.

There is a presumption that the designation of a claim as corresponding

or as not corresponding to a count is correct.

The interference rules authorize a party to file a preliminary

motion to redefine an interference by designating a claim as

corresponding (Sec. 1.633(c)(3)) or not corresponding

(Sec. 1.633(c)(4)) to a count. Prior to Van Geuns, the Patent and

Trademark Office interpreted the interference rules as requiring a

party to file a preliminary motion under Sec. 1.633(c)(4) to designate

a claim as not corresponding to the count as a condition for arguing at

final hearing that a claim designated as corresponding to the count is

patentably distinct from another claim designated as corresponding to

the count. See Brooks v. Street, 16 USPQ2d 1374, 1377 (Bd. Pat. App. &

Int. 1990); Flehmig v. Geisa, 13 USPQ2d 1052, 1054 (Bd. Pat. App. &

Int. 1989); Kwon v. Perkins, 6 USPQ2d 1747, 1750 (Bd. Pat. App. & Int.

1988), aff'd on other grounds, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir.

1989); see also Lamont v. Berguer, 7 USPQ2d 1580, 1582 (Bd. Pat. App. &

Int. 1988). However, in Van Geuns the Federal Circuit interpreted the

rules differently, stating:

[T]he position of the Commissioner that claims designated as

corresponding to a court stand or fall with the patentability of the

subject matter of the count is overboard.

988 F.2d at 1185, 26 USPQ2d at 1060. The Court further stated:

[W]e conclude that a party to an interference, who has failed to

timely contest the designation of claims as corresponding to a

count, has not conceded that claims corresponding to a count are

anticipated or made obvious [i.e., are unpatentable] by the prior

art when the subject matter of account is determined to be

unpatentable for obviousness. The PTO must determine, based on the

actual prior art reference or references, whether claims not

[designated as] corresponding exactly to the count are unpatentable.

* * * The interference rules do not specify whether a party may

argue the patentability of claims separately to the EIC [examiner-

in-chief, now administrative patent judge] and the board.

Id. at 1186, 26 USPQ2d at 1060 (bracketed material added by the

Commissioner). The proposed amendment to Sec. 655(b) is designed to

overcome the Federal Circuit's interpretation of the rules and to

create a presumption that all claims designated as corresponding to a

count are directed to the same patentable invention.

It is proposed to amend paragraph (c) of Sec. 1.655 by changing

``To prevent manifest injustice'' to ``In the interest of justice'' to

be consistent with the language used in other interference rules.

In Sec. 1.656, it is proposed to redesignate paragraphs (b)(1)

through (b)(6) as paragraphs (b)(3) through (b)(8), respectively, and

to add 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 or 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 related issues may be

present before the board simultaneously in an ex parte appeal and an

interference. It is also proposed to amend current paragraph (b)(3)

(proposed to be redesignated as paragraph (b)(5)) to specify that

statements of fact preferably should be presented in numbered

paragraphs.

Current paragraph (b)(4) of Sec. 1.656 (proposed to be redesignated

as paragraph (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 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'' interference rules (i.e.,

Sec. 1.201 et seq.) of which Sec. 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 Sec. 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, it is proposed to amend current

paragraph (b)(4) to require 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

union party includes a new argument in response the case-in-chief of

the senior party as presented in the senior party's opening brief, the

senior party may move under Sec. 1.635 for leave to file a reply to the

junior party's reply brief, which motion must be accompanied by a copy

of the senior party's reply.

Paragraph (d) of Sec. 1.656 is proposed to be amended 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 Sec. 1.653(g) for

records except the requirement for binding. As a result, the current

distinction between printed and typewritten briefs would be eliminated.

Paragraphs (e), (g) and (h) of Sec. 1.656 are proposed to be

amended 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.

Paragraph (g) of Sec. 1.656, which permits a party to file proposed

findings of fact and conclusions of law, is further proposed to be

amended to require paragraph numbers for the findings of fact and

conclusions of law.

Paragraph (h) is further proposed to be amended 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 Secs. 1.672(c), 1.682(c), 1.683(b) or 1.688(b) constitutes a

waiver of the right to move under Sec. 1.656(h) to suppress the

evidence on that ground at final hearing.

Paragraph (i) of Sec. 1.656 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 negate

Sec. 1.656(i). The term ``respond'' is proposed to be changed to ``show

good cause'' in order 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., Secs. 1.640(c) and 1.652.

Section 1.657 is proposed to be amended to be consistent with the

proposed changes to the definition of ``effective filing date'' in

Sec. 1.601(g) to 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, and that in

other interferences the junior party has the burden of establishing

priority by a preponderance of the evidence. The proposed amendment

would codify the holding of Price v. Symsek, 988 F.2d 1187, 19990-91,

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).

In Sec. 1.658, it is proposed to amend paragraph (a) 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. 141-144, 146) unless a request for

reconsideration under paragraph (b) of this section is timely filed. In

paragraph (b), third sentence, it is proposed to delete the phrases

``[w]here reasonably possible'' and ``such that delivery is

accomplished'' as unnecessary and to add a sentence specifying that a

decision on reconsideration is a final decision for the purpose of

judicial review (35 U.S.C. 141-144, 146). It is also proposed to amend

paragraph (b) by changing ``reply to a request for reconsideration'' to

be consistent with the terminology employed in Sec. 1.640(c) regarding

requests for reconsideration of decisions on preliminary motions.

Section 1.660 is proposed to be amended by adding a new paragraph

(e) explaining that the failure of a party to comply with the notice

provisions of Sec. 1.660 may result in sanctions under Sec. 1.616, 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, and that the notice contemplated by this section is notice

addressed specifically to an administrative patent judge or the Board.

In Sec. 1.662, it is proposed to amend paragraph (a) by changing

``filing by an applicant or patentee'' in the second sentence to

``filing by a party'' to make it clear that the terminal disclaimer can

be signed by the party's attorney or agent of record. For the same

reason, it is proposed to change ``by an applicant'' to ``by a party''

in the third sentence of paragraph (a), which concerns abandonment of

an involved application.

In paragraph (b) of Sec. 1.662, the first sentence is proposed to

be amended to change ``omits all claims of the patent corresponding to

the counts of the interference for the purpose of avoiding the

interference'' to ``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 a new or amended claim that

should be designated as corresponding to a count, even if the patentee

argues that it should be designated as not corresponding to a count.

Similarly, it is proposed to change ``reissue other than for the

purpose of avoiding the interference'' to ``reissue which includes a

claim that corresponds to a count.''

In Sec. 1.671, it is proposed to amend paragraph (a) by changing

``evidence from another interference, proceeding, or action filed

Sec. 1.683'' to ``testimony from another interference, proceeding, or

action filed under Sec. 1.683'' in order to be consistent with the

terminology of Sec. 1.683. It is proposed to amend paragraphs (c)(6)

and (c)(7) of Sec. 1.671 to change ``by oral deposition or affidavit''

to ``by affidavit or oral deposition.'' Paragraph (f) is proposed to be

amended 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. Paragraph (f) does

not apply to official records and printed publications submitted into

evidence pursuant to Sec. 1.682(a).

In Sec. 1.672, in addition to the proposed amendments discussed

above under the heading ``Amendments responsive to adoption of Public

Law 103-182,'' it is proposed to amend paragraph (b) by deleting the

third sentence, which specifies the type of paper to be used for

affidavits, as being superfluous in view of Sec. 1.677(a). In paragraph

(d), it is proposed to delete the fifth sentence (``A party electing to

present testimony of a witness by deposition shall notice a deposition

of the witness under Sec. 1.673(a).'') as superfluous in view of the

second sentence of Sec. 1.672(d).

In Sec. 1.673, it is proposed to amend paragraph (b) by changing

the time for service of evidence to be relied on at an oral deposition

from ``at least three days'' prior to the conference required by

Sec. 1.673(g) when service is by hand or by Express Mail to ``at least

three working days'' prior to the conference. It is also proposed to

amend paragraph (b) to change the time for service by any other means

from 10 days to 14 days prior to the conference.

It is proposed to amend paragraph (d) of Sec. 1.673 by deleting the

second sentence as unnecessary, since all depositions for a case-in-

chief would have to be approved by an administrative patent judge. It

is also proposed to delete the quotation marks around ``Express Mail''

in paragraph (b).

Also in Sec. 1.673, it is proposed to clarify paragraph (e) by

changing ``party electing to present testimony by affidavit'' to

``party who has presented testimony by affidavit.''

In paragraph (a) of Sec. 1.674, which specifies before whom

depositions may be taken, it is proposed to delete the reference to

``United States or a territory or insular possession of the United

States'' in order to make this paragraph applicable to depositions for

testimony compelled in foreign countries.

In Sec. 1.675, it is proposed to amend paragraph (d), which

concerns reading and signing of a transcript by the witness, 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 (Sec. 1.676(c)).

In Sec. 1.676, it is proposed to amend paragraph (a)(4) by changing

``opposing party'' to ``opponent.''

Section 1.677, which in its current form specifies the required

form for transcripts of depositions, is proposed to be amended to also

apply to affidavits. Furthermore, it is proposed to delete the

reference to ``typewritten'' matter, to change ``pica-type'' to ``11

point type'' and to change ``8\1/2\ x 11 inches (21.8 by 27.9 cm.)''

to ``21.8 by 27.9 cm. (8\1/2\ x 11 inches).''

In Sec. 1.678, it is proposed to change the section heading from

``Transcript of deposition must be filed'' to ``Time for filing

transcript of deposition'' for clarity and to amend the text by

changing the time for filing the certified transcript from 45 days to

30 days.

In Sec. 1.679, it is proposed to change ``transcript'' to

``transcript of a deposition'' for clarity and also to delete ``for

printing (Sec. 1.653(g))'' as unnecessary.

In Sec. 1.682, in addition to the proposed amendments discussed

above under the heading ``service of a `developing record,''' it is

proposed to amend paragraph (a) by changing ``identified during the

taking of testimony of a witness'' to ``identified in an affidavit or

on the record during an oral deposition of a witness'' for clarity. It

is also proposed to delete and reserve paragraph (a)(4) (``where

appropriate, be accompanied by a certified copy of the official record

or a copy of the printed publication (Sec. 1.671(d))'') as superfluous

in view of Rules 901 and 902 of the Federal Rules of Evidence, which

apply to interference proceedings (Sec. 1.671(b)) and require

authentication of evidence that is not self-authenticating. Finally, it

is proposed to capitalize the first word in each of paragraphs (a)(2),

(a)(3) and (a)(4).

In Sec. 1.685, it is proposed to amend paragraph (d) for

clarification.

In Sec. 1.687, it is proposed to amend paragraph (c) to refer to

Sec. 1.647 concerning translations of documents in a foreign language.

Other Considerations

These proposed 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 proposed

rules 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 the proposed 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.

The Patent and Trademark Office 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, it is proposed to amend 37

CFR Part 1 wherein removals are indicated by brackets ([]) and

additions by arrows () as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR Part 1 would continue to read

as follows:

Authority: 35 U.S.C. 6, unless otherwise noted.

2. Section 1.11 is proposed to be amended by revising paragraph (e)

to read as follows:

Sec. 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 Sec. 1.192, it is proposed to revise paragraphs (a), (c),

(c)(5) and (c)(5)(ii), redesignate current paragraphs (c)(1) through

(c)(7) as paragraphs (c)(3) through (c)(9) and add new paragraphs

(c)(1) and (c)(2) to read as follows:

Sec. 1.192 Appellant's brief.

(a) [The appellant] Appellant shall, within 2

months from the date of the notice of appeal under Sec. 1.191 [in an

application, reissue application, or patent under reexamination,] 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 Sec. 1.17(f) and must set

forth the authorities and arguments on which [the] appellant will rely

to maintain the appeal. Any arguments or authorities not included in

the brief will [may] 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 [here] indicated below

unless the brief is filed by an applicant who is not

represented by a registered practitioner [there is no

attorney or agent of record in the application or reexamination

proceeding, the brief was not prepared by a registered practitioner,

and the brief was not signed by a registered practitioner, wherein the

brief will be accepted as complying with this paragraph provided it is

at least in substantial compliance with the requirements of paragraphs

(c)(1), (2), (6) and (7)]:

(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, and the parent companies,

subsidiaries (except wholly owned subsidiaries) and affiliates that

have issued shares to the public of 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.

[(1)] (3) Status of Claims. A statment of the

status of all the claims, pending or cancelled, and identifying the

claims appealed.

[(2)] (4) Status of Amendments. A statment of

the status of any amendment filed subsequent to final rejection.

[(3)] (5) Summary of Invention. A concise

explanation of the invention defined in the claims involved in the

appeal, which shall refer to the specification by page and line number,

and to the drawing, if any, by reference characters.

[(4)] (6) Issues. A concise statement of the

issues presented for review.

[(5)] (7) Grouping of Claims. For each ground

of rejection which appellant contests and which applies to more than

one claim, [it will be presumed that] the rejected claims

shall stand or fall together with the

broadest claim, and only the broadest claim will be considered by the

Board of Patent Appeals and Interferences unless:

(i) a statement is included that the rejected

claims do not stand or fall together, and

(ii) in [the appropriate part or parts of]

the argument under subparagraph (c) (8) [(c) (6)]

of this section 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.

[(6)] (8) Argument. The contentions of [the]

appellant with respect to each of the issues presented for review in

subparagraph (c) (6) [(c) (4)] 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) [(6) (6) (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.

[(7)] (9) Appendix. An appendix containing a

copy of the claims involved in the appeal.

(d) If a brief is filed which does not comply with all the

requirements of paragraph (c) of this section, [the] appellant will be

notified of the reasons for non-compliance and provided with a period

of one month within which to file an amended brief. If [the] appellant

does not file an amended brief during the one-month period, or files an

amended brief which does not overcome all the reasons from non-

compliance stated in the notification, the appeal will

stand [be] dismissed.

4. Section 1.601 is proposed to be amended by revising paragraphs

(f), (g), (j), (k), (l), and (q) and adding a new paragraph (r) to read

as follows:

Sec. 1.601 Scope of rules, definitions.

* * * * *

(f) A count defines the interfering subject matter between (1) two

or more applications or (2) one or more applications and one or more

patents. A count should be broad enough to encompass the

broadest corresponding patentable claim of each of the parties. A count

may not be so broad as to be unpatentable over the prior

art. When there is more than one count, each count shall

define a separate patentable invention. Any claim of an application or

patent [which] that is designated to

correspond[s] 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

designated to correspond to a count that [which]

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 [which] is not identical to a count [, but

which defines the same patentable invention as 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.'' A phantom count is [not patentable to any party]

unpatentable to all parties under the written description

requirement of the first paragraph of 35 U.S.C. 112.

(g) The effective filing date of an application [or a patent] is

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. The effective filing date of a patent is 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 issued as the patent.

* * * * *

(j) An interference-in-fact exists when at least one claim of a

party [which] that corresponds to a count and at

least one claim of an opponent [which] that

corresponds 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 [examiner-in-chief]

may contact to set times and take other action in the interference.

(1) A party is (1) an applicant or patentee involved in the

interference or (2) 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 a 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.

* * * * *

(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 [examiner-in-chief]

or [a panel of] 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. A ``non-NAFTA country'' is a country other than the United States

or a NAFTA country.

5. Section 1.602 is proposed to be amended by revising paragraph

(c) to read as follows:

Sec. 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 [of] the change.

6. Section 1.603 is proposed to be revised to read as follows:

Sec. 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 count shall define a separate patentable invention.] Each

application must contain, or be amended to contain, at least one

patentable claim which 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 is proposed to be amended by revising paragraph

(a)(1) to read as follows:

Sec. 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 [his or her] its application that corresponds

to the proposed count,

* * * * *

8. Section 1.605 is proposed to be amended by revising paragraph

(a) to read as follows:

Sec. 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

[The] examiner may suggest that an applicant present a

claim [in an application] drawn to an invention claimed in

another 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 (1) call the examiner's attention to other claims already in the

application or which are presented with the suggested claim and (2)

explain why the other claims [would be more appropriate to]

should be included in any interference which may

be declared.

* * * * *

9. Section 1.606 is proposed to be revised to read as follows:

Sec. 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.

[Each count shall define a separate patentable invention.]

The [Any] application must contain, or be amended

to contain, at least one patentable claim which

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 (Sec. 1.611), a count shall not be narrower in scope than any

patent claim which corresponds to the count and any single patent claim

will be presumed. subject to a motion under Sec. 1.633(c), not to

contain separate patentable inventions.

10. Section 1.607 is proposed to be amended by revising paragraph

(a)(4) and adding a new paragraph (a)(6) to read as follows:

Sec. 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 [his or her]

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

(5) * * *

(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 proposed to be amended by revising paragraphs

(a) and (b) thereof to read as follows:

Sec. 1.608 Interference between an application and a patent; prima

facie showing by applicant.

(a) When the [earlier of the filing date or] effective filing date

of an application is three months or less after the [earlier of the

filing date or] effective filing date of a patent, [the applicant,]

before an interference will be declared, either the

applicant or the applicant's attorney or agent of record

shall file [an affidavit] a statement alleging

that there is a basis upon which the applicant is

entitled to a judgment relative to the patentee.

(b) When the [earlier of the filing date or the] effective filing

date of an application is more than three months after the [earlier of

the filing date or the] effective filing date [under 35 U.S.C. 120] of

a patent, the applicant, before an interference will be declared, shall

file (1) 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 (2) 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

[earlier of the filing date or] effective filing date of the patent. To

facilitate preparation of a record (Sec. 1.653 (g) and (h)) for final

hearing, an applicant should file affidavits on paper which is

21.8 by 27.9 cm. (8\1/2\ x 11 inches) [8\1/2\ x

11 inches (21.8 by 27.9 cm.)]. 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 Sec. 1.671(d)

and any patent shall be discussed in an affidavit or the explanation.

Any printed publication or other document which is not self-

authenticating shall be authenticated and discussed with particularity

in an affidavit. Upon a showing of good

[sufficient] 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 proposed to be amended by revising paragraph

(b)(2) and (b)(3) to read as follows:

Sec. 1.609 Preparation of interference papers by examiner.

* * * * *

(b) * * *

(2) The claims of any application or patent which correspond to

each count, stating whether the claims correspond exactly or

substantially to each count and an explanation 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 [are deemed by the examiner to be patentable over any]

do not correspond to each count and an

explanation why each claim designated as not corresponding to a count

is not directed to the same patentable invention as the

count ; and

* * * * *

13. Section 1.610 is proposed to be amended by revising the section

heading and paragraphs (a) through (e) to read as follows:

Sec. 1.610 Assignment of interference to administrative

patent judge [examiner-in-chief], time period for completing

interference.

(a) Each interference will be declared by an

administrative patent judge [examiner-in-chief]

who may enter all interlocutory orders in the interference, except that

only [a panel consisting of at least three members of] the Board shall

(1) hear oral argument at final hearing, (2) enter a decision under

Secs. 1.617, 1.640(e) [1.640(c) or (e)], 1.652,

1.656(i) or 1.658 or (3) enter any other order which terminates the

interference.

(b) As necessary, another administrative patent

judge [examiner-in-chief] may act in place of the one who

declared the interference. [Unless otherwise provided in this section,

at] At the discretion of the examiner-in-chief

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

[examiner-in-chief] assigned to the interference. Times for taking

action shall be set and the administrative patent

judge [examiner-in-chief] 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 [examiner-

in-chief] may hold a conference with the parties to consider: (1)

Simplification of any issues, (2) the necessity or desirability of

amendments to counts, (3) the possibility of obtaining admissions of

fact and genuineness of documents which will avoid unnecessary proof,

(4) any limitations on the number of expert witnesses, (5) the time and

place for conducting a deposition (Sec. 1.673(g)), and (6) any other

matter as may aid in the disposition of the interference. After a

conference, the administrative patent judge

[examiner-in-chief] may enter any order which may be appropriate.

(e) The administrative patent judge

[examiner-in-chief] may determine a proper course of conduct in an

interference for any situation not specifically covered by this part.

14. Section 1.611 is proposed to be amended by redesignating

paragraph (c)(8) as paragraph (c)(9), adding a new paragraph (c)(8) and

revising paragraphs (b), (c)(8) and (d) to read as follows:

Sec. 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 [examiner-in-chief]

may (1) 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 (2) order publication of an appropriate

notice in the Official Gazette.

(c) * * *

(7) The claim or claims of any application or any patent which

correspond to each count; [and]

(8) 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 a count is not directed

to the same patentable invention as the count; and

(9) The order of the parties.

(d) The notice of declaration may also specify the time for: (1)

Filing a preliminary statement as provided in Sec. 1.621(a); (2)

Serving [serving] notice that a preliminary

statement has been filed as provided in Sec. 1.621(b); and (3)

Filing [filing] preliminary motions authorized by

Sec. 1.633, oppositions to the motions, and replies to the oppositions.

* * * * *

15. Section 1.612 is proposed to be amended by revising paragraph

(a) to read as follows:

Sec. 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

Sec. 1.131 and any evidence and explanation under Sec. 1.608 filed

separate from an amendment. A party seeking access to any abandoned or

pending application referred to in the [opposing party's]

opponent's involved application or access to any

pending application referred to in the [opposing party's]

opponent's patent must file a motion under

Sec. 1.635. See Sec. 1.11(e) concerning public access to

interference files.

* * * * *

16. Section 1.613 is proposed to be amended by revising paragraphs

(c) and (d) to read as follows:

Sec. 1.613 Lead attorney, same attorney representing different parties

in an interference, withdrawal of attorney or agent.

* * * * *

(c) An administrative patent judge [examiner-

in-chief] 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

[examiner-in-chief] is of the opinion that an attorney or agent should

be disqualified, the administrative patent judge

[examiner-in-chief] 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 [examiner-in-chief]

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 (Sec. 1.635).

17. Section 1.614 is proposed to be amended by revising paragraphs

(a) and (c) to read as follows:

Sec. 1.614 Jurisdiction over interference.

(a) The Board acquires [shall assume]

jurisdiction over an interference when the interference is declared

under Sec. 1.611.

* * * * *

(c) The examiner shall have jurisdiction over any pending

application until the interference is declared. An

administrative patent judge [examiner-in-chief],

where appropriate, may for a limited purpose restore jurisdiction to

the examiner over any application involved in the interference.

18. Section 1.615 is proposed to be amended by revising paragraphs

(a) and (b) to read as follows:

Sec. 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 [examiner-in-chief].

(b) Ex parte prosecution as to specified matters may be continued

concurrently with the interference with consent of the

administrative patent judge [examiner-in-chief].

19. Section 1.616 is proposed to be amended by revising the section

heading, introductory text and paragraphs (a) through (e) to read as

follows and by adding new paragraphs (b) and (c) to read as follows:

Sec. 1.616 Sanctions for failure to comply with rules or order

or for taking or maintaining a frivolous

position.

(a) An administrative patent

judge [examiner-in-chief] 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 [examiner-in-chief]

or the Board. An appropriate sanction may include among others entry of

an order:

(1) [(a)] Holding certain facts to have been

established in the interference;

(2) [(b)] Precluding a party from filing a

paper [motion or a preliminary statement];

(3) [(c)] Precluding a party from presenting

or contesting a particular issue;

(4) [(d)] Precluding a party from requesting,

obtaining, or opposing discovery; [or]

(5) [(e)] 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

or maintaining a frivolous position.

(c) To the extent that any information under the control of an

individual or entity located in a NAFTA 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 (Sec. 1.671(h)), but has 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.

20. Section 1.617 is proposed to be amended by revising paragraphs

(a), (b), (d), (e), (g) and (h) to read as follows:

Sec. 1.617 Summary judgment against applicant.

(a) An administrative patent judge [examiner-

in-chief] shall review any evidence filed by an applicant under

Sec. 1.608(b) to determine if the applicant is prima facie entitled to

a judgment relative to the patentee. If the administrative

patent judge [examiner-in-chief] 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 [examiner-in-chief]

the evidence fails to show that the applicant is prima facie entitled

to a judgment relative to the patentee, the administrative

patent judge [examiner-in-chief] 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

Sec. 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

Sec. 1.608(b). At the time an applicant files a response, the applicant

shall serve a copy of any evidence filed under Sec. 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 Sec. 1.633(c), (f) or (g) by the applicant

within a time set by the adminsitrative patent

judge [examiner-in-chief]. 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 [examiner-in-chief]

for issuing the order to show cause. Except as required to

oppose a motion under Sec. 1.633(c), (f) or (g) by the applicant,

evidence [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 [examiner-in-chief], 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 [examiner-in-chief]

or the Board shall decide whether the evidence submitted under

Sec. 1.608(b) and any additional evidence properly submitted under

paragraphs [paragraph] (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 Sec. 1.608(b) may

requests 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

[examiner-in-chief] shall set a date and time for the hearing. Unless

otherwise ordered by the administrative patent

judge [examiner-in-chief] 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 proposed to be amended by revising paragraph

(a) to read as follows:

Sec. 1.618 Return of unauthorized papers.

(a) An administrative patent judge or the Board shall

enter an order directing the [The Patent and Trademark

Office shall] 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, this subpart. Any

paper returned will not thereafter be considered [by the Patent and

Trademark Office] 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 [examiner-in-

chief].

* * * * *

22. Section 1.621 is proposed to be amended by revising paragraph

(b) to read as follows:

Sec. 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 [examiner-in-chief].

23. Section 1.622 is proposed to be amended by revising paragraph

(b) to read as follows:

Sec. 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), or [abroad] in a non-NAFTA

country. If made in a non-NAFTA

country [abroad], the preliminary statement shall state

whether the party is entitled to the benefit of the second sentence of

35 U.S.C. 104.

24. Section 1.623 is proposed to be amended by revising the section

heading and paragraph (a) to read as follows:

Sec. 1.623 Preliminary statement; invention made in United States

or a NAFTA country.

(a) When the invention was made in the United States or

a NAFTA country, or a party is entitled to the benefit of

the second sentence of 35 U.S.C. 104, the preliminary statement must

state the following facts as to the invention defined by each count:

* * * * *

25. Section 1.624 is proposed to be amended by revising the section

heading and paragraphs (a), (a)(1) through (a)(6) and (c) to read as

follows:

Sec. 1.624 Preliminary statement; invention made [abroad]

in a non-NAFTA country.

(a) When the invention was made in a non-NAFTA

county [abroad] and a party intends to rely on introduction

of the invention into the United States or a NAFTA

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 or a NAFTA

country.

(2) The date on which a written description of the invention was

first introduced into the United States or a NAFTA

country.

(3) The date on which the invention was first disclosed to another

person in the United States or a NAFTA country.

(4) The date on which the inventor's conception of the invention

was first introduced into the United States or a NAFTA

country.

(5) The date on which an actual reduction to practice of the

invention was first introduced into the United States or a

NAFTA country. If an actual reduction to practice of the

invention was not introduced into the United States or a

NAFTA country, the preliminary amendment shall so state.

(6) The date after introduction of the inventor's conception into

the United States or a NAFTA country when active

exercise of reasonable diligence in the United States or a

NAFTA 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 or a

NAFTA 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 or a NAFTA

country, a copy of that written description shall be filed

with and identified in the preliminary statement. See Sec. 1.628(b)

when a copy of the first drawing or first written description

introduced in the United States or a NAFTA

country cannot be filed with the preliminary statement.

26. Section 1.625 is proposed to be amended by revising paragraph

(a) introductory test to read as follows:

Sec. 1.625 Preliminary statement; derivation by an opponent.

(a) When [the invention was made in the United States or abroad

and] 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 proposed to be revised to read as follows:

Sec. 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 [filed in the United States or

abroad] 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 is proposed to be amended by revising paragraph

(b) to read as follows:

Sec. 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 [examiner-in-

chief].

29. Section 1.628 is proposed to be amended by revising paragraphs

(a) and (b)(2) to read as follows:

Sec. 1.628 Preliminary statement; correction of error.

(a) A material error arising through inadvertence or mistake in

connection with (1) a preliminary statement or (2) drawings or a

written description submitted therewith or omitted therefrom, may be

corrected by a motion (Sec. 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,

[and shall show that the correction is essential to the ends of justice

and] shall be accompanied by the corrected statement [. The motion]

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) * * *

(2) shall attach to the preliminary statement the earliest drawing

or written description made in or introduced into the United States

or a NAFTA country which is available. The party

shall file a motion (Sec. 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

or a NAFTA country becomes available. A copy of

the drawing or written description may be obtained, where appropriate,

by a motion (Sec. 1.635) for additional discovery under Sec. 1.687 or

during a testimony period.

30. Section 1.629 is proposed to be amended by revising paragraphs

(a), (c)(1) and (d) to read as follows:

Sec. 1.629 Effect of preliminary statement.

(a) A party shall be strictly held to any date alleged in the

preliminary statement. Doubts as to (1) definiteness or sufficiency of

any allegation in a preliminary statement or (2) compliance with formal

requirements will be resolved against the party filing the statement by

restricting the party to [the earlier of] its [filing date or]

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 Sec. 1.628.

* * * * *

(c) * * *

(1) Shall be restricted to the [earlier of the] party's [filing

date or] 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

Sec. 1.623(c), Sec. 1.624(c), or Sec. 1.625(c), the party will be

restricted to the [earlier of the] party's [filing date or] effective

filing date as to that allegation unless the party complies with

Sec. 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 proposed to be revised to read as follows:

Sec. 1.630 Reliance on earlier application.

A party shall not be entitled to rely on the filing date of an

earlier filed application [filed in the United

States or abroad] unless (a) the earlier application is identified

(Sec. 1.611(c)(5)) in the notice declaring the interference or (b) the

party files a preliminary motion under Sec. 1.633 seeking the benefit

of the filing date of the earlier application.

32. Section 1.631 is proposed to be amended by revising paragraph

(a) to read as follows:

Sec. 1.631 Access to preliminary statement, service of preliminary

statement.

(a) Unless otherwise ordered by an administrative patent

judge [examiner-in-chief] on preliminary motions filed under

Sec. 1.633, any preliminary statement filed under Sec. 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 [examiner-in-chief],

a party shall serve a copy of its preliminary statement on each

opponent who served a notice under Sec. 1.621(b).

* * * * *

33. Section 1.632 is proposed to be revised to read as follows:

Sec. 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 [examiner-in-

chief], a notice is timely when filed within ten (10) days

after [of] the close of the testimony-in-chief of

the opponent.

34. Section 1.633 is proposed to be amended by revising paragraphs

(a), (a)(1), (a)(2), (b)(2), (f), (g) and (i) to read as follows:

Sec. 1.633 Preliminary motions.

* * * * *

(a) A motion for judgment against [on the

ground that] an opponent's claim corresponding to a count on

the ground that the claim is not patentable to the opponent.

In deciding an issue raised in [determining] a

motion filed under this paragraph, a claim [may]

will be construed [by reference to the prior art

of record] 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 [of the subject matter of a count] by the

moving party as against any opponent or

(2) Derivation [derivation] of the

invention [subject matter of a count] by an

opponent from the moving party. See 1.637(a).

(b) * * *

(2) no claim of a party which corresponds to a count is identical

to any claim of an opponent which corresponds to that count. See

Sec. 1.637(a). When claims of opponents are presented in

``means plus function'' format, it may be possible for the claims of

the opponents 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 [filed in the United

States or abroad]. See Sec. 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 [filed in the United States or

abroad]. See Sec. 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 [or] , 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 proposed to be amended by revising paragraphs

(a) through (d) to read as follows:

Sec. 1.636 Motions, time for filing.

(a) A preliminary motion under Sec. 1.633 (a) through (h) shall be

filed within a time period set by an administrative patent

judge [examiner-in-chief].

(b) A preliminary motion under Sec. 1.633 (i) or (j) shall be filed

within 20 days of the service of the preliminary motion under

Sec. 1.633 (a), (b), (c)(1), or (g) unless otherwise ordered by an

administrative patent judge [examiner-in-chief].

(c) A motion under Sec. 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 buy an

administrative law judge [examiner-in-chief].

(d) A motion under Sec. 1.635 shall be filed as specified in this

subpart or when appropriate unless otherwise ordered by an

administrative patent judge [examiner-in-chief].

36. Section 1.637 is proposed to be amended by revising paragraphs

(a), (b), (c)(1)(v), (c)(1)(vi), (c)(2)(ii), (c)(2)(iii), (c)(3)(ii),

(c)(4)(i), (c)(4)(ii), (d) introductory text, (e)(1)(viii),

(e)(2)(vii), (f)(2), (h)(3), (h)(4) to read as follows, deleting

paragraphs (c)(2)(iv), (c)(3)(iii), (d)(4) and redesignating them as

``Reserved.'' and adding paragraphs (c)(1)(vii), (e)(1)(ix),

(e)(2)(viii) to read as follows:

Sec. 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 [Every] motion shall include (1) a statement

of the precise relief requested, (2) a statement of the material facts

in support of the motion preferably in numbered

paragraphs, and (3) a full statement of the reasons why the

relief requested should be granted. If a party files a

motion for judgment under Sec. 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. 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.

(b) A motion under [Sec. ] Secs. 1.633, 1,634

or 1.635 shall contain a certificate by the moving party

stating that the moving party has conferred with all [opposing parties]

opponents in an effort in good faith to resolve

by agreement the issues raised by the motion. The

certificate shall 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. [A moving party shall

indicate in the motion whether any other party plans to oppose the

motion.] The provisions of this paragraph do not apply to a motion to

suppress evidence (Sec. 1.656(h)).

(c) * * *

(1) * * *

(v) Show that each proposed count is patentable over the

prior art and defines a separate patentable invention from

every other count proposed to remain in the

interference.

(vi) Be accompanied by a motion under Sec. 1.633(f) requesting the

benefit of the filing date of any earlier filed

application [filed in the United States or abroad] , 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 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 [claim] defines the same

patentable invention as the count.

(iii) Show the patentability to the applicant of each

claim proposed to be amended or added [claim] and

apply the terms of the claim proposed to be

amended or added [claim] to the disclosure of the application; when

necessary a moving party applicant shall file with the motion [an]

a proposed amendment [making the amended]

to the application amending the claim corresponding to the

count or [added] adding the proposed

additional claim to the application.

(iv) Reserved. [Be accompanied by a motion

under Sec. 1.633(f) requesting the benefit of the filing date of any

earlier application filed in the United States or abroad.]

(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.

(iii) Reserved. [Be accompanied by a motion

under Sec. 1.633(f) requesting the benefit of the filing date of any

earlier application filed in the United States or abroad.]

(4) * * *

(ii) Show (A) that the claim does not define

the same patentable invention as any other claim [designated]

whose designation in the notice declaring the

interference as corresponding to the count the party does

not dispute and (B) that the claim cannot serve as the basis for a

motion under Sec. 1.633(c)(1) to add a new count.

* * * * *

(d) A preliminary motion under Sec. 1.633(d) to substitute a

different application of the moving party shall:

* * * * *

(4) Reserved. [Be accompanied by a motion

under Sec. 1.633(f) requesting the benefit of the filing date of an

earlier application filed in the United States or abroad].

(e) * * *

(1) * * *

(viii) Be accompanied by a motion under Sec. 1.633(f) requesting

the benefit of the filing date of an earlier

filed application [filed in the United States or

abroad] , 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 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 Sec. 1.633(f) requesting the

benefit of the filing date of an earlier filed

application [filed in the United States or abroad] , 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 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 the 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 Sec. 1.131 or Sec. 1.608,

has been served on all opponents. When the earlier application is an

application filed in a foreign country [abroad],

certify that a copy of the application [filed abroad] has been served

on all opponents. If the earlier filed

application [filed abroad] is not in English, the requirements of

Sec. 1.647 must also be met.

* * * * *

(h) * * *

(3) Show the patentability of all claims in, or proposed to be

added to, the application for reissue which correspond to each count

and apply the terms of the claims to the disclosure of the application

for reissue; when necessary a moving applicant for reissue shall file

with the motion an amendment adding any proposed claim to the

application for reissue. A patentee may not move under

Sec. 1.633(h) to add a reissue application that includes new or amended

claims to be designated as not corresponding to a count.

(4) Be accompanied by a motion under Sec. 1.633(f) requesting the

benefit of the filing date of any earlier filed

application [filed in the United States or abroad] , if

benefit is desired.

37. Section 1.638 is proposed to be amended by revising paragraphs

(a) and (b) to read as follows:

Sec. 1.638 Opposition and reply, time for filing opposition and reply.

(a) Unless otherwise ordered by an administrative patent

judge [examiner-in-chief], any opposition to any motion

shall be filed within 20 days after service of the motion. An

opposition shall (1) identify any material fact set forth in the motion

which is in dispute and (2) include an argument why the relief

requested in the motion should be denied.

(b) Unless otherwise ordered by an administrative patent

judge [examiner-in-chief], any [a]

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 proposed to be amended by revising paragraphs

(a), (c), and (d)(1) to read as follows:

Sec. 1.639 Evidence in support of motion, opposition, or reply.

(a) Except as provided in paragraphs (c) through (g) of

this section, proof [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.

* * * * *

(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 Sec. 1.633 or a motion to correct

inventorship under Sec. 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

[examiner-in-chief] finds that testimony is needed to decide the

motion, the administrative patent judge

[examiner-in-chief] may grant appropriate interlocutory relief and

enter an order authorizing the taking of testimony and deferring a

decision on the motion to final hearing.

(d) * * *

(1) Identify the person whom it expects to [call]

use as an expert;

* * * * *

39. Section 1.640 is proposed to be amended by revising paragraphs

(a), (b), (b)(1), (b)(2), (c), (d), (d)(1), (d)(3) and (e) to read as

follows:

Sec. 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 [examiner-in-chief].

The administrative patent judge [examiner-in-

chief] 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 [examiner-in-

chief]. An administrative patent judge [examiner-

in-chief] may direct that a hearing take place by telephone.

(b) Unless 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 shall be deferred to final hearing.

Motions otherwise will be decided by an

administrative patent judge [examiner-in-chief].

An administrative patent judge [examiner-in-

chief] may consult with an examiner in deciding motions involving a

question of patentability. An administrative patent

judge [examiner-in-chief] 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. 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 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

motions identified by the party or by an opponent for consideration or

review at final hearing, including any affidavit filed by the party

under Sec. 1.608 or 1.639(b), shall be served on the opponent during

the testimony-in-chief period of the party.

(1) When appropriate after the time expires for filing

replies to oppositions to preliminary motions [When

preliminary motions under Sec. 1.633 are decided], the

administrative patent judge [examiner-in-chief]

will [, when necessary,] 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 [examiner-in-chief] 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 Sec. 1.623, Sec. 1.624, Sec. 1.625, or Sec. 1.626, but

need not be filed if a party states that it intends to rely on a

preliminary statement previously filed under Sec. 1.621(a).

At an appropriate time in the interference, and when

necessary [After the time expires for filing any amendment

and supplemental preliminary statement], an order will be

entered redeclaring [the examiner-in-chief will, if necessary,

redeclare] the interference.

(2) After the time expires for filing preliminary

motions [a decision is entered on preliminary motions filed

under Sec. 1.633], a further preliminary motion

under Sec. 1.633 will not be considered except as provided by

Sec. [1.655(b)] 1.645(b).

(c) When a decision on any motion under Sec. 1.633, Sec. 1.634, or

Sec. 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 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. An opponent may file

an opposition within 14 days after service of the request for

reconsideration. [No opposition to a request for

reconsideration shall be filed unless requested by an examiner-in-chief

or the Board. A decision of a single examiner-in-chief will not

ordinarily be modified unless an opposition has been requested by an

examiner-in-chief or the Board. The request for reconsideration shall

be acted on by a panel of the Board consisting of at least three

examiners-in-chief, one of whom will normally be the examiner-in-chief

who decided the motion].

(d) An administrative patent judge [examiner-

in-chief] 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 [earlier of the filing date or] 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 other party 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)(10 of this section and the paper

includes a request for final hearing, the response must identify every

decision of the administrative patent judge that the responding party

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 response may include a

request for final hearing, which must identify every decision of the

administrative patent judge that the responding party wishes to have

reviewed by the Board at a final hearing. Where only the response

includes a request for a final hearing, the party that filed the paper

has 14 days from the date of service of the 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.

(3) The paper or the response thereto should be accompanied by a

motion (Sec. 1.635) requesting a testimony period if a party wishes to

introduce any evidence to be considered at final hearing (Sec. 1.671).

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 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. [If the party

against whom the order was issued fails to show good cause, the Board

shall enter judgment against the party. If a party wishes to take

testimony in response to an order to show cause, the party's response

should be accompanied by a motion (Sec. 1.635) requesting the testimony

period. See Sec. 1.651(c)(4).]

40. Section 1.461 and the section heading are proposed to be

revised to read as follows:

Sec. 1.641 Unpatentability discovered by administrative

patent judge [examiner-in-chief].

(a) During the pendency of an interference,

if the administrative patent judge [examiner-in-

chief] becomes aware of a reason why a claim designated to

correspond [corresponding] to a count may not be patentable,

the administrative patent judge [examiner-inc-

chief] may enter an order notifying [notify] the

parties of the reason and set a time within which each party may

present its views, which may include argument and any

appropriate preliminary motions under Sec. 1.633(c), (d) or (h),

including any supporting evidence.

(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 pursuant to Sec. 1.638(a). If an opponent files

an opposition, the party may reply pursuant to Sec. 1.638(b).

(c) After considering any timely filed views,

including any timely filed preliminary motions under

Sec. 1.633, the administrative patent

judge [examiner-in-chief] shall decide how the interference

shall proceed.

41. Section 1.642 is proposed to be revised to read as follows:

Sec. 1.642 Addition of application or patent to interference.

During the pendency of an interference, if the

administrative patent judge [examiner-in-chief]

becomes aware of an application of a patent not involved in the

interference which claims the same patentable invention as a count in

the interference, the administrative patent judge

[examiner-in-chief] may add the application or patent to the

interference on such terms as may be fair to all parties.

42. Section 1.643 is proposed to be amended by revising paragraph

(b) to read as follows:

Sec. 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 (Sec. 1.635) for entry of

an order authorizing it to prosecute the interference. The motion shall

show (1) the inability or refusal of the inventor to prosecute the

interference or (2) other cause why it is in the interest

of [the ends of] justice to permit

[require that] the assignee of a part interest [be permitted] to

prosecute the interference. The administrative patent

judge [examiner-in-chief] may allow the assignee of a part

interest to prosecute the interference upon such terms as may be

appropriate.

43. Section 1.644 is proposed to be amended by revising paragraphs

(a), (a)(1), (a)(2), (b), (c), (d), (f) and (g) to read as follows:

Sec. 1.644 Petitions in interferences.

(a) There is no appeal to the Commissioner in an interference from

a decision of an administrative patent judge

[examiner-in-chief] or the Board [a panel

consisting of more than one examiner-in-chief]. The Commissioner will

not consider a petition in an interference unless:

(1) The petition is from a decision of an administrative

patent judge [examiner-in-chief] or [a panel] the

Board and the administrative patent

judge [examiner-in-chief] or the [panel]

Board shall be of the opinion

* * * * *

(2) The petition seeks to invoke the supervisory authority of the

Commissioner [and is not filed prior to the decision of the Board

awarding judgment] and does not relate to

* * * * *

(3) * * *

(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 [examiner-in-chief]

or the [panel] 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

Sec. 1.656) [the decision by the Board awarding judgment].

Any petition under paragraph (a)(3) of this section shall be timely if

it is made as part of, or simultaneously with, a proper motion under

Sec. 1.633, Sec. 1.634, or Sec. 1.635 when granting the

motion would require waiver of a rule. Any opposition to a

petition shall be filed within 15 days of the date of service of the

petition.

(c) The filing of a petition shall not stay the proceeding unless a

stay is granted in the discretion of the administrative

patent judge [examiner-in-chief, the panel], the

Board, or the Commissioner.

(d) Any petition must contain a statement of the facts involved

, preferably in numbered paragraphs, and the

point or points to be reviewed and the action requested. [Briefs or

memoranda, if any, in support of the petition or opposition shall

accompany or be embodied therein.] The petition will be decided on the

basis of the record made before the administrative patent

judge [examiner-in-chief] or the [panel]

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 [15] days

of the decision of the Commissioner and must be accompanied by the fee

set forth in Sec. 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 proposed to be amended by revising paragraphs

(a), (b) and (d) to read as follows:

Sec. 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 (Sec. 1.635) seeking an extension of

time to take action in an interference. See Sec. 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 [examiner-in-chief]

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 [examiner-in-chief] 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 motion (Sec. 1.635) which shows good

[sufficient] cause why the paper was not timely filed [.] or

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 Sec. 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) [In an appropriate circumstance, an] An

administrative patent judge [examiner-in-chief] may stay

proceedings in an interference.

45. Section 1.646 is proposed to be amended by revising paragraphs

(a)(1), (a)(2), (b), (c), (c)(1), (c)(4), (d) and (e), redesignating

paragraph (c)(5) as (c)(6) and revising it, and adding a new paragraph

(c)(5) to read as follows:

Sec. 1.646 Service of papers, proof of service.

(a) * * *

(1) Preliminary statements when filed under Sec. 1.621; preliminary

statements shall be served when service is ordered by an

administrative patent judge [examiner-in-chief].

(2) Certified transcripts and exhibits which accompany the

transcripts filed under Sec. [Sec. ] 1.676 [or 1.684]; copies of

transcripts shall be served as part of a party's record under

Sec. 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 [examiner-in-

chief] may order additional service or waive service where appropriate.

(c) Unless otherwise ordered by an administrative patent

judge [examiner-in-chief], or except as otherwise provided

by this subpart, service of a paper shall be made as follows:

(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 [examiner-in-chief]

that none of the above methods of obtaining or serving the copy of the

paper was successful, the administrative patent

judge [examiner-in-chief] may order service by publication

of an appropriate notice in the Official Gazette.

(d) An administrative patent judge [examiner-

in-chief] 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 proposed to be revised to read as follows:

Sec. 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 proposed to be amended by revising paragraphs

(a), (a)(2), (c)(1), (c)(2), (c)(3) and (d) to read as follows:

Sec. 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 [examiner-in-chief]

shall set

* * * * *

(2) Testimony periods for taking any necessary testimony

[(testimony includes testimony to be taken abroad under Sec. 1.684)].

* * * * *

(c) * * *

(1) The administrative patent judge

[examiner-in-chief] orders the taking of testimony under Sec. 1.639(c);

(2) The party alleges in its preliminary statement a date of

invention prior to the [earlier of the filing date or] 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 [earlier of the filing date or]

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

foreign country [abroad under Sec. 1.684], 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 Sec. 1.635 and Sec. 1.645(a).

48. Section 1.652 is proposed to be revised to read as follows:

Sec. 1.652 judgment for failure to take testimony or file record.

If a junior party fails to timely take testimony authorized under

Sec. 1.651, or file a record under Sec. 1.653(c), an

administrative patent judge [examiner-in-chief].

with or without a motion (Sec. 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 page 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 proposed to be amended by deleting paragraphs

(c)(5), (f) and (h) and redesignating them as ``Reserved'' and by

revising paragraphs (a), (b), (c), (c)(1), (c)(4), (g) and (i) to read

as follows:

Sec. 1.653 Record and exhibits.

(a) Testimony shall consist of affidavits under [Sec. ]

Secs. 1.672(b) , (c) and

[(e)] (g), 1.682(c), 1.683(b) and 1.688(b),

transcripts of depositions under Secs. [1.672(b) and (c)]

1.671(g) and 1.672(a) when a deposition is authorized by an

administrative patent judge, transcripts of depositions under

Secs. 1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed

statements [of fact] under Sec. [1.672(f)]

1.672.(h), [and] transcripts of interrogatories,

cross-interrogatories, and recorded answers and copies of

written interrogatories and answers and written requests for admissions

and answers under Sec. [1.684(c)]

1.688(a).

(b) An affidavit shall be filed as set forth in Sec. [1.672(b)]

1.677. A certified transcript of a deposition

, including a deposition cross-examining an

affiant, shall be filed as set forth in [Sec. ]

Secs. 1.676 , 1.677 and

1.678. An original agreed statement shall be filed as set

forth in Sec. 1.672(h) [Sec. 1.672(f). A

transcript of interrogatories, cross-interrogatories, and recorded

answers shall be filed as set forth under Sec. 1.684(c)].

(c) In addition to the items specified in paragraph (b) of this

section and within a time set by an administrative patent

judge, [examiner-in-chief] each party shall file three

copies and serve one copy of a record consisting of:

(1) An index of the names of [each witness] the

witnesses for the party, giving the pages of the record

where the direct testimony and cross-examination of each witness

begins.

* * * * *

(4) Each (i) affidavit by a witness for the

party, (ii) 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, (iii) agreed statement relied upon by the party, and

(iv) transcript of interrogatories, cross-interrogatories and recorded

answers [filed under paragraph (b) of this section].

(5) Reserved. [Each notice, official record,

and publication relied upon by the party and filed under

Sec. 1.682(a).]

* * * * *

(f) Reserved. [The record may be typewritten

or printed.]

(g) [When the] The [is printed, it] 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. [Margins

must be justified.] Footnotes may not be printed in type smaller than 9

point. The pages [pages] size shall be

21.8 by 27.9 cm. (8\1/2\ by 11 inches) (letter

size) [8\1/2\ by 11 inches (21.8 by 27.9 cm.)] with [type]

printed matter 16.5 by 24.1 cm. (6\1/

2\ by 9\1/2\ inches) [6\1/2\ by 9\1/2\ inches (16.5 by 24.1

cm.)]. 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.

(h) Reserved. [When the record is type

written, it must be clearly legible on opaque, unglazed, durable paper

approximately 8\1/2\ by 11 inches (21.8 by 27.9 cm.) in size (letter

size). Typing shall be double-spaced on one side of the paper in not

smaller than pica-type with a margin of 1\1/2\ (3.8 cm.) on the left-

hand side of the page. The pages of the record shall be bound with

covers at their left edges in such manner to lie flat when open in one

or more volumes of convenient size (approximately 100 pages per volume

is suggested). Multigraph or otherwise reproduced copies conforming to

the standards specified in this paragraph may be accepted.]

(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 and official records and publications filed by the

party under Sec. 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 Sec. 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 [examiner-in-chief] may return an exhibit to the party

filing the exhibit. When any exhibit is returned, [the examiner-in-

chief] an order shall be

entered [enter an appropriate

This text is long and has been trimmed here. Open the source document for the complete record.