[Federal Register Volume 59, Number 190 (Monday, October 3, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-24203]


[[Page Unknown]]

[Federal Register: October 3, 1994]


=======================================================================
-----------------------------------------------------------------------

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.

-----------------------------------------------------------------------

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 order] indicating that the 
exhibit has been returned.
* * * * *
    50. Section 1.654 is proposed to be amended by revising paragraphs 
(a) and (d) to read as follows:


Sec. 1.654  Final hearing.

    (a) At an appropriate stage of the interference, the parties will 
be given an opportunity to appear before the Board to present oral 
argument at a final hearing. An administrative patent judge 
may [examiner-in-chief shall] set a date and time for final 
hearing. Unless otherwise ordered by an administrative 
patent judge [examiner-in-chief] or the Board, each party 
will be entitled to no more than 30 [60] minutes 
or oral argument at final hearing. A party who does not file 
a brief for final hearing (Sec. 1.656(a)) shall not be entitled to 
appear at final hearing.
* * * * *
    (d) After final hearing, the interference shall be taken under 
advisement by the Board. No further paper shall be filed except under 
Sec. 1.658(b) or as authorized by an administrative patent 
judge [examiner-in-chief] or the Board. No additional oral 
argument shall be had unless ordered by the Board.
    51. Section 1.655 is proposed to be amended by revising paragraphs 
(a), (b) and (c) to read as follows:


Sec. 1.655  Matters considered in rendering a final decision.

    (a) In rendering a final decision, the Board may consider any 
properly raised issue including (1) priority of invention, (2) 
derivation by an opponent from a party who filed a preliminary 
statement under Sec. 1.625, (3) patentability of the invention, (4) 
admissibility of evidence, (5) any interlocutory matter deferred to 
final hearing, and (6) any other matter necessary to resolve the 
interference. The Board may also consider whether entry 
of any interlocutory order was [erroneous or] an abuse of 
discretion. All interlocutory orders shall be presumed to have been 
correct and the burden of showing [error or] an abuse of discretion 
shall be on the party attacking the order. When two or more 
interlocutory orders involve the same issue, the last entered order 
shall be presumed to have been correct.
    (b) A party shall not be entitled to raise for consideration at 
final hearing a matter which properly could have been raised by a 
motion under Secs. 1.633 or 1.634 unless (1) the matter was 
properly raised in a motion that was 
[properly] timely filed by the party 
under Secs. 1.633 or 1.634 and the motion was denied or deferred to 
final hearing, (2) the matter was properly raised by [a] 
the party in [an] a timely 
filed opposition to a motion under Secs. 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 [timely] properly raised by 
a timely filed motion or opposition. A 
change of attorneys during the interference generally does not 
constitute good cause. 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 to an 
administrative patent judge or the Board the separate patentability or 
lack of separate patentability of claims designated to correspond to 
the count.
    (c) In the interest of justice [To prevent 
manifest injustice], the Board may exercise its discretion 
to consider an issue even though it would not otherwise be 
entitled to consideration under this section.
    52. Section 1.656 is proposed to be amended by revising paragraphs 
(a), (d), (e), (g), (h) and (i), redesignating paragraphs (b)(1) 
through (b)(6) as (b)(3) through (b)(8), revising newly designated 
paragraphs (b)(5) and (b)(6), and adding new paragraphs (b)(1) and 
(b)(2) to read as follows:


Sec. 1.656  Briefs for final hearing.

    (a) Each party shall be entitled to file briefs for final hearing. 
The administrative patent judge [examiner-in-
chief] shall determine the briefs needed and shall set the time and 
order for filing briefs.
    (b) * * *
    (1) A statement of interest indicating:
    (i) The full name of every party represented by the attorney in the 
interference.
    (ii) The name of the real party in interest if the party named in 
the caption is not the real party in interest.
    (2) A statement of related cases indicating:
    (i) Whether the interference was previously before the Board for 
final hearing.
    (ii) The name and number of any related appeal or interference 
which is pending before, or which has been decided by, the Board, or 
which is pending before, or which has been decided by, the U.S. Court 
of Appeals for the Federal Circuit or a district court in a proceeding 
under 35 U.S.C. 146. A related appeal or interference is one which will 
directly affect or be directly affected by or have a bearing on the 
Board's decision in the pending interference.
    (3) * * *
    (4) [(2)] A statement of the issues presented 
for decision in the interference.
    (5) [(3)] A statement of the facts 
, preferably in numbered paragraphs, relevant to 
the issues presented for decision with appropriate references to the 
record.
    (6) [(4)] An argument, which may be preceded 
by a summary, which shall contain the contentions of the party with 
respect to the issues it is raising for consideration at 
final hearing [to be decided], and the reasons therefor, 
with citations to the cases, statutes, other authorities, and parts of 
the record relied on.
    (7) [(5)] A short conclusion stating the 
precise relief requested.
    (8) [(6)] An appendix containing a copy of 
the counts.
* * * * *
    (d) Unless ordered otherwise by an administrative patent 
judge, briefs shall be double-spaced (except for footnotes, which may 
be single-spaced) and shall comply with the requirements of 
Sec. 1.653(g) for records except the requirement for 
binding. [Briefs may be printed or typwritten. If 
typewritten, legal-size paper may be used. The opening brief of each 
party in excess of 50 legal-size double-spaced typewritten pages or any 
other brief in excess of 25 legal-size double spaced typewritten pages 
shall be printed unless a satisfactory reason be given why the brief 
should not be printed. Any printed brief shall comply with the 
requirements of Sec. 1.653(g). Any typewritten brief shall comply with 
the requirements of Sec. 1.653(h), except legal-size paper may be used 
and the binding and covers specified are not required.]
    (e) An original and four [three] copies of 
each brief must be filed.
* * * * *
    (g) Any party, separate from its opening brief, but filed 
concurrently therewith, may file an original and 
four [three] copies of concise proposed findings 
of fact and conclusions of law. Any proposed findings of fact shall be 
in numbered paragraphs and supported by specific 
references to the record. Any proposed conclusions of law shall be 
in numbered paragraphs and supported by citation 
of cases, statutes, or other authority. Any [opposing party] 
opponent, separate from its opening or reply 
brief, but filed concurrently therewith, may file a paper accepting or 
objecting to any proposed findings of fact or conclusions of law; when 
objecting, a reason must be given. The Board may adopt the proposed 
findings of fact and conclusions of law in whole or in part.
    (h) If a party wants the Board in rendering its final decision to 
rule on the admissibility of any evidence, the party shall file with 
its opening brief an original and four [three] 
copies of a motion (Sec. 1.635) to suppress the evidence. The 
provisions of Sec. 1.637(b) do not apply to a motion to suppress under 
this paragraph. Any objection previously made to the admissibility of 
the evidence of an opponent [an opponent's 
evidence] is waived unless the motion required by this paragraph is 
filed. A party that failed to challenge the admissibility of 
the evidence of an opponent on a ground that could have been raised in 
a timely objection under Sec. 1.672(c), 1.682(c), 1.683(b) or 1.688(b) 
may not move under this paragraph to suppress the evidence on that 
ground at final hearing. An original and 
four [three] copies of an opposition to the 
motion may be filed with an opponent's opening brief or reply brief as 
may be appropriate.
    (i) When a junior party fails to timely file an opening brief, an 
order may issue requiring the junior party to show cause why the Board 
should not treat failure to file the brief as a concession of priority. 
If the junior party fails to show good cause 
[respond] within a time period set in the order, judgment may be 
entered against the junior party.
    53. Section 1.657 is proposed to be revised to read as follows:


Sec. 1.657  Burden of proof as to date of invention.

    (a) A rebuttable presumption shall exist 
that, as to each count, the inventors made their invention in the 
chronological order of the earlier of their [filing dates or] effective 
filing dates. The burden of proof shall be upon a party who contends 
otherwise.
    (b) In an interference involving copending applications 
or involving a patent and an application having an effective filing 
date on or before the date the patent issued, a junior party shall have 
the burden of establishing priority by a preponderance of the evidence.
    (c) In an interference involving an application and a patent and 
where the effective filing date of the application is after the date 
the patent issued, a junior party shall have the burden of establishing 
priority by clear and convincing evidence.
    54. Section 1.658 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.658  Final decision.

    (a) After final hearing, the Board shall enter a decision resolving 
the issues raised at final hearing. The decision may (1) enter 
judgment, in whole or in part, (2) remand the interference to an 
administrative patent judge [examiner-in-chief] 
for further proceedings, or (3) take further action not inconsistent 
with law. A judgment as to a count shall state whether or not each 
party is entitled to a patent containing the claims in the party's 
patent or application which correspond to the count. When the Board 
enters a decision awarding judgment as to all counts, the decision 
shall be regarded as a final decision for the purpose of 
judicial review (35 U.S.C. 141-144, 146) unless a request for 
reconsideration under paragraph (b) of this section is timely 
filed.
    (b) Any request for reconsideration of a decision under paragraph 
(a) of this section shall be filed within one month after the date of 
the decision. The request for reconsideration shall specify with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision. Any [reply] 
opposition to a request for reconsideration shall 
be filed within 14 days of the date of service of the request for 
reconsideration. [Where reasonably possible, service] 
Service of the request for reconsideration shall 
be [such that delivery is accomplished] by hand or [``]Express 
Mail.[''] The Board shall enter a decision on the request for 
reconsideration. If the Board shall be of the opinion that the decision 
on the request for reconsideration significantly modifies its original 
decision under paragraph (a) of this section, the Board may designate 
the decision on the request for reconsideration as a new decision. 
A decision on reconsideration is a final decision for the 
purpose of judicial review (35 U.S.C. 141-144, 146).
* * * * *
    55. Section 1.660 is proposed to be amended by adding paragraph (e) 
to read as follows:


Sec. 1.660  Notice of reexamination, reissue, protest or litigation.

* * * * *
    (e) The notice required by this section is designed to 
assist the administrative patent judge and the Board in efficiently 
handling interference cases. Failure of a party to comply with the 
provisions of this section may result in sanctions under Sec. 1.616. 
Knowledge by, or notice to, an employee of the Office other than an 
employee of the Board, of the existence of the re-examination, 
application for reissue, protest, or litigation shall not be 
sufficient. The notice contemplated by this section is noticed 
addressed specifically to an administrative patent judge or the 
Board.
    56. Section 1.662 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.662  Request for entry of adverse judgment; re-issue filed by 
patentee.

    (a) A party may, at any time during an interference, request and 
agree to entry of an adverse judgment. The filing by a 
party [an applicant or patentee] of a written disclaimer of 
the invention defined by a court, concession of priority or 
unpatentability of the subject matter of a count, abandonment of the 
invention defined by a count, or abandonment of the contest as to a 
count will be treated as a request for entry of an adverse judgment 
against the applicant or patentee as to all claims which correspond to 
the count. Abandonment of an application [by an applicant], other than 
an [applicant] application for re-issue having a 
claim of the patent sought to be reissued involved in the interference, 
will be treated as a request for entry of an adverse judgment against 
the applicant as to all claims corresponding to all counts. Upon the 
filing by a party of a request for entry of an adverse judgment, the 
Board may enter judgment against the party.
    (b) If a patentee involved in an interference files an application 
for reissue during the interference and the reissue 
application does not include a claim that corresponds to a 
count [omits all claims of the patent corresponding to the 
counts of the interference for the purpose of avoiding the 
interference], judgment may be entered against the patentee. A patentee 
who files an application for re-issue  which includes a 
claim that corresponds to a count [other than for the 
purpose of avoiding the interference] shall , in addition to 
complying with the provisions of Sec. 1.660(b), timely file 
a preliminary motion under Sec. 1.663(h) or show good cause why the 
motion could not have been timely filed or would not be appropriate.
* * * * *
    57. Section 1.664 is proposed to be amended by revising paragraphs 
(a) and (b) to read as follows:


Sec. 1.664  Action after interference.

    (a) After termination of an interference, the examiner will 
promptly take such action in any application previously involved in the 
interference as may be necessary. Unless entered by order of an 
administrative patent judge [examiner-in-chief], 
amendments presented during the interference shall not be entered, but 
may be subsequently presented by the applicant subject to the 
provisions of this subpart provided prosecution of the application is 
not otherwise closed.
    (b) After judgment, the application of any party may be held 
subject to further examination, including an interference with another 
application.
    58. Section 1.671 is proposed to be amended by revising paragraphs 
(a), (c)(1), (c)(2), (c)(6), (c)(7), (f) and (g) to read as follows, 
deleting paragraph (e) and redesignating it as ``Reserved'', 
redesignating current paragraph (h) as (i), and adding new paragraphs 
(h) and (j) to read as follows:


Sec. 1.671  Evidence must comply with rules.

    (a) Evidence consists of testimony and exhibits, official records 
and publications filed under Sec. 1.682, [evidence] 
testimony from another interference, proceeding, 
or action filed under Sec. 1.683, and discovery relied upon under 
Sec. 1.688, and the specification (including claims) and drawings of 
any application or patent:
* * * * *
    (c) * * *
    (1) Courts of the United States, U.S. Magistrate, court, trial 
court, or trier of fact means administrative patent 
judge [examiner-in-chief] or Board as may be appropriate.
    (2) Judge means administrative patent judge 
[examiner-in-chief].
* * * * *
    (6) Before the hearing in Rule 703 means before giving testimony by 
affidavit or oral deposition [or affidavit].
    (7) The trial or hearing in Rules 803(24) and 804(5) means the 
taking of testimony by affidavit or oral 
deposition [or affidavit].
* * * * *
    (e) Reserved. [A party may not rely on an 
affidavit filed by that party during ex parte prosecution of an 
application, an affidavit under Sec. 1.608, or an affidavit under 
Sec. 1.639(b) unless: (1) A copy of the affidavit is or has been served 
and (2) a written notice is filed prior to the close of the party's 
relevant testimony period stating that the party intends to rely on the 
affidavit. When proper notice is given under this paragraph, the 
affidavit shall be deemed filed under Sec. 1.672(b). A copy of the 
affidavit shall be included in the record (Sec. 1.653).]
    (f) The significance of documentary and other exhibits 
identified by a witness in an affidavit or during oral 
deposition shall be discussed with particularity by [a] 
the witness [during oral deposition or in an 
affidavit].
    (g) A party must file a motion (Sec. 1.635) seeking permission from 
an administrative patent judge [examiner-in-
chief] prior to compelling [taking] testimony or 
production of [seeking] documents or things under 
35 U.S.C. 24 or from a party. The motion shall 
describe the general nature and the relevance of the testimony, 
document, or thing. If permission is granted, the party 
shall notice a deposition under Sec. 1.673 and may proceed to take 
testimony. The testimony of the witness shall be taken on oral 
deposition.
    (h) A party must file a motion (Sec. 1.635) seeking 
permission from an administrative patent judge prior to compelling 
testimony or production of documents or things in a foreign country.
    (1) In the case of testimony, the motion shall:
    (i) Describe the general nature and relevance of the testimony;
    (ii) Identify the witness by name or title;
    (iii) State why the party believes the witness can be compelled to 
testify in the foreign country; and
    (iv) Demonstrate that the witness has been asked to testify in the 
United States and has refused to do so even though the party has 
offered to pay the expenses of the witness to travel to the United 
States.
    (2) In the case of production of a document or thing, the motion 
shall:
    (i) Describe the general nature and relevance of the document or 
thing;
    (ii) State why the party believes production of the document or 
thing can be compelled in the foreign country; and
    (iii) Demonstrate that the individual or entity having possession, 
custody, and control of the document or thing will not produce the 
document or thing in the United States even though the party has 
offered to pay the expenses of producing the document or thing in the 
United States.
    (i) [(h)] Evidence which is not taken or 
sought and filed in accordance with this subpart shall not be 
admissible.
    (j) The weight to be given testimony taken in a foreign 
country will be determined on a case-by-case basis. Little, if any, 
weight may be given to testimony taken in a foreign country unless the 
party taking the testimony proves by clear and convincing evidence (1) 
that giving false testimony in an interference proceeding is punishable 
as perjury under the laws of the foreign country where the testimony is 
taken and (2) that the punishment in a foreign country for giving such 
false testimony is similar to the punishment for perjury committed in 
the United States.
    59. Section 1.672 is proposed to be amended by revising paragraphs 
(a), (b), (c) and (d), redesignating paragraphs (c), (d), (e) and (f) 
as paragraphs (e), (f), (g) and (h), respectively, and by adding new 
paragraphs (c) and (d) to read as follows:


Sec. 1.672  Manner of taking testimony.

    (a) Unless testimony must be compelled under 35 U.S.C. 
24 or compelled from a party or in a foreign country, 
testimony [Testimony] of a witness 
shall [may] be taken by [oral deposition or] 
affidavit in accordance with this subpart. Testimony which 
must be compelled under 35 U.S.C. 24 or compelled from a party or in a 
foreign country shall be taken by oral deposition.
    (b) [A party wishing to take the testimony of a witness whose 
testimony will not be compelled under 35 U.S.C. 24 may elect to present 
the testimony of the witness by affidavit or deposition.] A party 
[electing to present] presenting testimony of a 
witness by affidavit shall, prior to the [close of the party's relevant 
testimony period, file and serve] time set by the 
administrative patent judge for serving affidavits, file a copy of 
the [an] affidavit [of the witness or, where appropriate, a 
notice under Sec. 1.671(e). To facilitate preparation of the record 
(Sec. 1.653 (g) and (h)), a party should file an affidavit on paper 
which is 8\1/2\ by 11 inches (21.8 by 27.9 cm)]. If the 
affidavit relates to a party's case-in-chief, it shall be filed no 
later than the date set by an administrative patent judge for the party 
to file affidavits for its case-in-chief. If the affidavit relates to a 
party's case-in-rebuttal, it shall be filed no later than the date set 
by an administrative patent judge for the party to file affidavits for 
its case-in-rebuttal. A party shall not be entitled to rely 
on any document referred to in the affidavit unless a copy of the 
document is filed with the affidavit. A party shall not be entitled to 
rely on any thing mentioned in the affidavit unless the opponent is 
given reasonable access to the thing. A thing is something other than a 
document. The pages of affidavits filed under this paragraph 
and of any other testimony filed therewith under Secs. 1.683(a) and 
1.688(a) shall be given sequential numbers which shall also serve as 
the record page numbers for the affidavits and other testimony in the 
party's record to be filed under Sec. 1.653. Exhibits identified in the 
affidavits or in any other testimony filed under Secs. 1.683(a) and 
1.688(a) and any official records and printed publications filed under 
Sec. 1.682(a) shall be given sequential exhibit numbers which shall 
also serve as the exhibit numbers when the exhibits are filed with the 
party's record. The affidavits, testimony filed under Secs. 1.683(a) 
and 1.688(a) exhibits shall be accompanied by an index of the names of 
the witnesses, giving the number of the page where the testimony of 
each witness begins, and by an index of the exhibits briefly describing 
the nature of each exhibit and giving the number of the page where each 
exhibit is first identified and offered into evidence.
    (c) If an opponent objects to the admissibility of any evidence 
contained, in or submitted with an affidavit filed under paragraph (b) 
of this section, the opponent must, no later than the date set by the 
administrative patent judge for filing objections under this paragraph, 
file objections stating with particularity the nature of each 
objection. An opponent that fails to challenge the admissibility of the 
evidence contained in or submitted with an affidavit on a ground that 
could have been raised in a timely objection under this paragraph will 
not be entitled to move under Sec. 1.656(h) to suppress the evidence on 
that ground. If an opponent timely files objections, the party may, 
within 20 days of the due date for filing objections, file supplemental 
affidavits and supplemental official records and printed publications 
to overcome the objections. No objection to the admissibility of the 
supplemental evidence shall be made, except as provided by 
Sec. 1.656(h). The pages of supplemental affidavits filed under this 
paragraph shall be sequentially numbered beginning with the number 
following the last page number of the party's testimony submitted under 
paragraph (b) of this section. The page numbers assigned to the 
supplemental affidavits shall also serve as the record page numbers for 
the supplemental affidavits in the party's record filed under 
Sec. 1.653. Additional exhibits identified in supplemental affidavits 
and any supplemental official records and printed publications shall be 
given sequential numbers beginning with the number following the last 
number of the exhibits submitted under paragraph (b) of this section. 
The exhibit numbers shall also serve as the exhibit numbers when the 
exhibits are filed with the party's record. The supplemental affidavits 
shall be accompanied by an index of the names of the witnesses and an 
index of exhibits of the type specified in paragraph (b) of this 
section.
    (d) After the time expires for filing 
objections and supplemental affidavits, or earlier when 
appropriate, [affidavit is filed and within a time set by an 
examiner-in-chief,] the administrative patent judge shall 
set a time within which any opponent may file a request to 
cross-examine [the witness] 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 by any opponent. Any redirect and recross shall 
take place at the deposition. At any deposition for the purpose of 
cross-examination of a witness [whose testimony is presented by 
affidavit], the party shall not be entitled to rely on any document or 
thing not mentioned in one or more of the affidavits filed under [this 
paragraph] paragraphs (b) and (c) of this 
section, except to the extent necessary to conduct proper 
redirect. [A party electing to present testimony of a witness by 
deposition shall notice a deposition of the witness under 
Sec. 1.673(a).] The party who gives notice of a deposition shall be 
responsible for providing a translator if the witness does 
not testify in English, for obtaining a court reported and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for 
taking cross-examination, the party shall serve (but not file) a copy 
of each transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of the transcripts served under this paragraph 
shall be sequentially numbered beginning with the number following the 
last page number of the party's supplemental affidavits submitted under 
paragraph (c) of this section. The numbers assigned to the transcript 
pages shall also serve as the record page numbers for the transcripts 
in the party's record fled under Sec. 1.653. Additional exhibits 
identified in the transcripts shall be given sequential numbers 
beginning with the number following the last number of the exhibits 
submitted under paragraphs (b) and (c) of this section. The exhibit 
numbers assigned to the additional exhibits shall also serve as the 
exhibit numbers when those exhibits are filed with the party's record. 
The deposition transcripts shall be accompanied by an index of the 
names of the witnesses, giving the number of the page where cross-
examination, redirect and recross of each witness begins, and an index 
of exhibits of the type specified in paragraph (b) of this section.
    (e) Reserved. [(c) A party wishing to take the testimony 
of a witness whose testimony will be compelled under 35 U.S.C. 24 must 
first obtain permission from an examiner-in-chief under Sec. 1.671(g). 
If permission is granted, the party shall notice a deposition of the 
witness under Sec. 1.673 and may proceed under 35 U.S.C. 24. The 
testimony of the witness shall be taken on oral deposition.]
    (f) [(d)] When a deposition is 
authorized under [Notwithstanding the provisions of] this 
subpart, if the parties agree in writing, the [a] 
deposition may be taken before any person authorized to administer 
oaths, at any place, upon any notice, and in any manner, and when so 
taken may be used like other depositions.
    (g) [(e)] If the parties agree in writing, 
the testimony of any witness may be submitted in the form of an 
affidavit without opportunity for cross-examination. The affidavit of 
the witness shall be filed in the Patent and Trademark Office.
    (h) [(f)] If the parties agree in writing, 
testimony may be submitted in the form of an agreed statement setting 
forth: (1) How a particular witness would testify if called or (2) the 
facts in the case of one or more of the parties. The agreed statement 
shall be filed in the Patent and Trademark Office. See Sec. 1.653(a).
    60. Section 1.673 is proposed to be amended by revising paragraphs 
(a), (b), (c), (c)(2), (d), (e) and (g) to read as follows:


Sec. 1.673  Notice of examination of witness when deposition 
testimony is authorized.

    (a) A party [electing] authorized to take 
testimony of a witness by deposition shall, after complying with 
paragraphs (b) and (g) of this section, file and serve a single notice 
of deposition stating the time and place of each deposition to be 
taken. Depositions to be taken in the United 
States may be noticed for a reasonable time and place in the 
United States. [Unless the parties agree in writing, a] 
A deposition may not be noticed for any other 
place without approval of an administrative patent 
judge [examiner-in-chief (see Sec. 1.684)]. The notice shall 
specify the name and address of each witness and the general nature of 
the testimony to be given by the witness. If the name of a witness is 
not known, a general description sufficient to identify the witness or 
a particular class or group to which the witness belongs may be given 
instead.
    (b) Unless the parties agree or an administrative patent 
judge or the Board determine otherwise, a party shall serve, 
but not file, at least three working days prior 
to the conference required by paragraph (g) of this section, if service 
is made by hand or [``]Express Mail,[''] or at least 
14 [ten] days prior to the conference if service 
is made by any other means, the following:
* * * * *
    (c) A party shall not be permitted to rely [at any deposition] on 
any witness not listed in the notice, or any document not served or any 
thing not listed as required by paragraph (b) of this section:
    (1) * * *
    (2) except upon a motion (Sec. 1.635) promptly filed which is 
accompanied by any proposed notice, additional documents, or lists and 
which shows [sufficient] good cause why the 
notice, documents, or lists were nit served in accordance with this 
section.
    (d) Each [opposing party] opponent shall have 
a full opportunity to attend a deposition and cross-examine. [If an 
opposing party attends a deposition of a witness not named in a notice 
and cross-examines the witness or fails to object to the taking of the 
deposition, the opposing party shall be deemed to have waived any right 
to object to the taking of the deposition for lack of proper notice.]
    (e) A party who has presented [electing to 
present] testimony by affidavit and [who] is required to notice 
depositions for the purpose of cross-examination under Sec. 1.672(b), 
shall, after complying with paragraph (g) of this section, file and 
serve a single notice of depsotion stating the time and place of each 
cross-examination deposition to be taken.
* * * * *
    (g) Before serving a notice of deposition and after complying with 
paragraph (b) of this section, a party shall have an oral conference 
with all opponents to attempt to agree on a mutually acceptable time 
and place for conducting the deposition. A certificate shall appear in 
the notice stating that the oral conference took place or explaining 
why the conference could not be had. If the parties cannot agree to a 
mutually acceptable place and time for conducting the deposition at the 
conference, the parties shall contact an administrative 
patent judge [examiner-in-chief] who shall then designate 
the time and place for conducting the deposition.
* * * * *
    61. Section 1.674 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.674  Persons before whom depositions may be taken.

    (a) A [Within the United States or a 
territory or insular possession of the United States a] deposition 
shall be taken before an officer authorized to administer oaths by the 
laws of the United States or of the place where the examination is 
held.
* * * * *
    62. Section 1.675 is proposed to be amended by revising paragraph 
(d) to read as follows:


Sec. 1.675  Examination of witness, reading and signing transcript of 
deposition.

* * * * *
    (d) Unless the parties agree in writing or waive reading and 
signature by the witness on the record at the depsotion, when the 
testimony has been transcribed a transcript of the deposition shall 
, unless the witness refuses to read and/or sign the 
transcript of the depsotion, be read by the witness and then 
signed by the witness in the form of: (1) An affidavit in the presence 
of any notary or (2) a declaration.
    63. Section 1.676 is proposed to be amended by revising paragraph 
(a)(4) to read as follows:


Sec. 1.676  Certification and filing by officer, marking exhibits.

    (a) * * *
    (4) The presence or absence of any [opposing party] 
opponent.
* * * * *
    64. Section 1.677 is proposed to be amended by revising the section 
heading and paragraph (a) to read as follows:


Sec. 1.677  Form of affidavit or a transcript of 
deposition.

    (a) An affidavit or a [A] transcript of a 
deposition must be [typewritten] on opaque, unglazed, durable paper 
approximately 21.8 by 27.9 cm. (8\1/2\ by 11 
inches) [8\1/2\ by 11 inches (21.8 by 27.9 cm.)] in size 
(letter size). [Typing] The printed matter shall 
be double-spaced on one side of the paper in not smaller than 
11 point type [pica-type] with a margin of 
3.8 cm. (1\1/2\ inches) [1\1/2\ inches (3.8 cm.)] 
on the left-hand side of the page. The pages must be consecutively 
numbered throughout the entire record of each party (Sec. 1.653(d)) and 
the name of the witness [must be typed] shall 
appear at the top of the each page (Sec. 1.653(e)). 
In transcripts of depositions, the [The] 
questions propounded to each witness must be consecutively numbered 
unless paper with numbered lines is used and each question must be 
followed by its answer.
* * * * *
    65. Section 1.678 and the section heading are proposed to be 
revised to read as follows:


Sec. 1.678  Time for filing transcript 
[Transcript] of deposition [must be filed].

    Unless otherwise ordered by an administrative patent 
judge [examiner-in-chief], a certified transcript of a 
deposition must be filed in the Patent and Trademark Office within [45] 
30 days from the date of deposition. If a party 
refuses to file a certified transcript, the administrative 
patent judge [examiner-in-chief] or the Board may take 
appropriate action must Sec. 1.616. If a party refuses to file a 
certified transcript, any opponent may move for leave to file the 
certified transcript and include a copy of the transcript as part of 
the opponent's record.
    66. Section 1.679 is proposed to be revised to read as follows:


Sec. 1.679  Inspection of transcript.

    A certified transcript of a desposition filed 
in the Patent and Trademark Office may be inspected by any party. The 
certified transcript may not be removed from the Patent and Trademark 
Office [for printing (Sec. 1.653(g)(1)] unless authorized by an 
administrative patent judge [examiner-in-chief] 
upon such terms as may be appropriate.
    67. Section 1.682 is proposed to be amended by deleting paragraphs 
(a)(4) and (b) and redesignating them as ``Reserved,'' revising 
paragraphs (a), (a)(2), (a)(3), and (c) and adding a new paragraph (d) 
to read as follows:


Sec. 1.682  Official records and printed publications.

    (a) A party may introduce into evidence, if otherwise admissible, 
[any] an official record or printed publication 
not identified in an affidavit or on the record 
during an oral deposition [the taking of 
testimony] of a witness, by filing [a notice offering] a 
copy of the official record or printed 
publication [into evidence]. If the official record or 
printed publication [evidence] relates to the party's case-
in-chief, it shall be filed together with any affidavits 
filed by the party under Sec. 1.672(b) for its case-in-chief or, if the 
party does not serve any affidavits under Sec. 1.672(b) for its case-
in-chief, no later than the date set by an administrative patent judge 
for the party to file affidavits under Sec. 1.672(b) for its 
[the notice shall be filed prior to close of testimony of the party's] 
case-in-chief. If the official record or printed 
publication [evidence] relates to rebuttal, it 
shall be filed together with any affidavits filed by the party under 
Sec. 1.672(b) for its case-in-rebuttal or, if the party does not file 
any affidavits under Sec. 1.672(b) for its case-in-rebuttal, no later 
than the date set by an administrative patent judge for the party to 
file affidavits under Sec. 1.672(b) for its [the notice 
shall be filed prior to close of testimony of the party's] case-in-
rebuttal. [The notice] Official records and printed 
publications filed under this paragraph shall be assigned sequential 
exhibits numbers by the party in the manner set forth in Sec. 1.672(b). 
The official record and printed publications shall be accompanied by a 
paper which shall:
    (1) * * *
    (2) Identify [identify] the portion thereof 
to be introduced in evidence, and
    (3) Indicate [indicate] generally the 
relevance of the portion sought to be introduced in evidence 
. [, and]
    (4) Reserved. [where appropriate, be 
accompanied by a certified copy of the official record or a copy of the 
printed publication (Sec. 1.671(d)).]
    (b) Reserved. [A copy of the notice, official 
record, and publication shall be served.]
    (c) Unless otherwise ordered by an administrative patent 
judge [examiner-in-chief], any written objection 
by an opponent to the [notice] 
paper or to the admissibility of the official 
record or printed publication shall be filed [within 15 days of service 
of the notice] no later than the date set by the 
administrative patent judge for the opponent to file objections under 
Sec. 1.672(c) to affidavits submitted by the party under Sec. 1.672(b). 
An opponent who fails to challenge the admissibility of the official 
record or printed publication on a ground that could have been raised 
in a timely objection under this paragraph will not be entitled to move 
under Sec. 1.656(h) to suppress the evidence on that ground. If an 
opponent timely files an objection, the party may respond by filing 
supplemental affidavits and supplemental official records and printed 
publications, which must be filed together with any supplemental 
evidence filed by the party under Sec. 1.672(c) or, if the party does 
not file any supplemental evidence under Sec. 1.672(c), no later than 
the date set by an administrative patent judge for the party to file 
supplemental affidavits under Sec. 1.672(c). No objection to the 
admissibility of the supplemental evidence shall be made, except as 
provided by [See also] Sec. 1.656(h). 
The pages of supplemental affidavits and the exhibits filed 
under this section shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(c). The supplemental affidavits and 
exhibits shall be accompanied by an index of witnesses and an index of 
exhibits of the type required by Sec. 1.672(b).
    (d) Any request by an opponent to cross-examine on oral deposition 
the affiant of a supplemental affidavit submitted under paragraph (c) 
of this section shall be filed no later than the date set by the 
administrative patent judge for the opponent to file a request to 
cross-examine an affiant with respect to an affidavit served by the 
party under Sec. 1.672 (b) or (c). If any opponent requests cross-
examination of an affiant, the party shall file notice of a deposition 
for a reasonable location within the United States under Sec. 1.673(e) 
for the purpose of cross-examination by any opponent. Any redirect and 
recross shall take place at the deposition. At any deposition for the 
purpose of cross-examination of a witness, the party shall not be 
entitled to rely on any document or thing not mentioned in one or more 
of the affidavits filed under this paragraph, except to the extent 
necessary to conduct proper redirect. The party who gives notice of a 
deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
deposition transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of deposition transcripts and exhibits served 
under this paragraph shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(d). The deposition transcripts shall be 
accompanied by an index of the names of the witnesses, giving the 
number of the page where cross-examination, redirect and recross of 
each witness begins, and an index of exhibits of the type specified in 
Sec. 1.672(b).
    68. Section 1.683 is proposed to be amended by revising paragraphs 
(a) and (b) and adding a new paragraph (c) to read as follows:


Sec. 1.683  Testimony in another interference, proceeding, or action.

    (a) A party may introduce into evidence, if otherwise 
admissible, [Prior to close of a party's appropriate 
testimony period or within such time as may be set by an examiner-in-
chief, a party may file a motion (Sec. 1.635) for leave to use in an 
interference] testimony by affidavit or oral 
deposition [of a witness] from another interference, 
proceeding, or action involving the same parties [, subject to such 
conditions as may be deemed appropriate by an examiner-in-chief.] 
by filing a copy of the affidavit or a copy of the 
transcript of the oral deposition. If the testimony relates to the 
party's case-in-chief, it shall be filed together with any affidavits 
served by the party under Sec. 1.672(b) for its case-in-chief or, if 
the party does not file any affidavits under Sec. 1.672(b) for its 
case-in-chief, no later than the date set by an administrative patent 
judge for the party to file affidavits under Sec. 1.672(b) for its 
case-in-chief. If the testimony relates to rebuttal, it shall be filed 
together with any affidavits served by the party under Sec. 1.672(b) 
for its case-in-rebuttal or, if the party does not file any affidavits 
under Sec. 1.672(b) for its case-in-rebuttal, no later than the date 
set by an administrative patent judge for the party to file affidavits 
under Sec. 1.672(b) for its case-in-rebuttal. Pages of affidavits and 
deposition transcripts served under this paragraph and any new exhibits 
served therewith shall be assigned sequential numbers by the party in 
the manner set forth in Sec. 1.672(b). The [motion] 
testimony shall be accompanied by a paper which 
specifies [shall specify] with particularity the exact 
testimony to be used and demonstrates [shall 
demonstrate] its relevance.
    (b) [Any objection to the admissibility of the testimony of the 
witness shall be made in an opposition to the motion. See also] 
Unless otherwise ordered by an administrative patent judge, 
any written objection by an opponent to the paper or the admissibility 
of the testimony filed under this section shall be filed no later than 
the date set by the administrative patent judge for the opponent to 
file any objections under Sec. 1.672(c) to affidavits submitted by the 
party under Sec. 1.672(b). An opponent who fails to challenge the 
admissibility of the testimony on a ground that could have been raised 
in a timely objection under this paragraph will not be entitled to move 
under Sec. 1.656(h) to suppress the evidence on that ground. If an 
opponent timely files an objection, the party may respond with a 
supplemental affidavit and supplemental official records and printed 
publications, which must be filed together with any supplemental 
evidence filed by the party under Sec. 1.672(c) or, if the party does 
not file any supplemental evidence under Sec. 1.672(c), no later than 
the date set by an administrative patent judge for the party to file 
supplemental evidence under Sec. 1.672(c). No objection to the 
admissibility of the evidence contained in or submitted with a 
supplemental affidavit shall be made, except as provided by 
Sec. 1.656(h). The pages of supplemental affidavits and the 
exhibits filed under this section shall be sequentially numbered by the 
party in the manner set forth in Sec. 1.672(c). The supplemental 
affidavits and exhibits shall be accompanied by an index of witnesses 
and an index of exhibits of the type required by Sec. 1.672(b).
    (c) Any request by an opponent to cross-examine on oral deposition 
the affiant of an affidavit or supplemental affidavit submitted under 
paragraph (a) or (b) of this section shall be filed no later than the 
date set by the administrative patent judge for the opponent to file a 
request to cross-examine an affiant with respect to an affidavit filed 
by the party under Sec. 1.672 (b) or (c). If any opponent requests 
cross-examination of an affiant, the party shall file a notice of 
deposition for a reasonable location within the United States under 
Sec. 1.673(e) for the purpose of cross-examination by any opponent. Any 
redirect and recross shall take place at the deposition. At any 
deposition for the purpose of cross-examination of a witness, the party 
shall not be entitled to rely on any document or thing not mentioned in 
one or more of the affidavits filed under this paragraph, except to the 
extent necessary to conduct proper redirect. The party who gives notice 
of a deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
deposition transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of deposition transcripts and exhibits served 
under this paragraph shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(d). The deposition transcripts shall be 
accompanied by an index of the names of the witnesses, giving the 
number of the page where cross-examination, redirect and recross of 
each witness begins, and an index of exhibits of the type specified in 
Sec. 1.672(b).
    69. Section 1.684 is proposed to be deleted and redesignated as 
``Reserved,'' as follows:


Sec. 1.684  Reserved. [Testimony in a foreign 
country]

    (a) An examiner-in-chief may authorize testimony of a witness to be 
taken in a foreign country. A party seeking to take testimony in a 
foreign country shall, promptly after the testimony period is set, file 
a motion (Sec. 1.635):
    (1) Naming the witness.
    (2) Describing the particular facts to which it is expected that 
the witness will testify.
    (3) Stating the grounds on which the moving party believes that the 
witness will testify.
    (4) Demonstrating that the expected testimony is relevant.
    (5) Demonstrating that the testimony cannot be taken in this 
country at all or cannot be taken in this country without hardship to 
the moving party greatly exceeding the hardship to which all opposing 
parties will be exposed by the taking of the testimony in a foreign 
country.
    (6) Accompanied by an affidavit stating that the motion is made in 
good faith and not for the purpose of delay or harassing any party.
    (7) Accompanied by written interrogatories to be asked of the 
witness.
    (b) Any opposition under Sec. 1.638(a) shall state any objection to 
the written interrogatories and shall include any cross-interrogatories 
to be asked of the witness. A reply under Sec. 1.638(b) may be filed 
and shall be limited to stating any objection to any cross-
interrogatories proposed in the opposition.
    (c) If the motion is granted, taking of the testimony abroad must 
be completed within the testimony period set under Sec. 1.651 or within 
such time as may be set by the Examiner-in-Chief. The moving party 
shall be responsible for obtaining answers to the interrogatories and 
cross-interrogatories before an officer qualified to administer oaths 
in the foreign country under the laws of the United States or the 
foreign country. The officer shall prepare a transcript of the 
interrogatories, cross-interrogatories, and recorded answers to the 
interrogatories and cross-interrogatories and shall transmit the 
transcript to Box Interference, Commissioner of Patents and Trademarks, 
Washington, D.C. 20231, with a certificate signed and sealed by the 
officer and showing:
    (1) The witness was duly sworn by the officer before answering the 
interrogatories and cross-interrogatories.
    (2) The recorded answers are a true record of the answers given by 
the witness to the interrogatories and cross-interrogatories.
    (3) The name of the person by whom the answers were recorded and, 
if not recorded by the officer, whether the answers were recorded in 
the presence of the officer.
    (4) The presence or absence of any party.
    (5) The place, day, and hour that the answers were recorded.
    (6) A copy of the recorded answers was read by or to the witness 
before the witness signed the recorded answers and that the witness 
signed the recorded answers in the presence of the officer. The officer 
shall state the circumstances under which a witness refuses to read or 
sign recorded answers.
    (7) The officer is not disqualified under Sec. 1.674.
    (d) If the parties agree in writing, the testimony may be taken 
before the officer on oral deposition.
    (e) A party taking testimony in a foreign country shall have the 
burden of proving that false swearing in the giving of testimony is 
punishable as perjury under the laws of the foreign country. Unless 
false swearing in the giving of testimony before the officer shall be 
punishable as perjury under the laws of the foreign country where 
testimony is taken, the testimony shall not be entitled to the same 
weight as testimony taken in the United States. The weight of the 
testimony shall be determined in each case.]
    70. Section 1.685 is proposed to be amended by revising paragraphs 
(d) and (e) to read as follows:


Sec. 1.685  Errors and irregularities in depositions.

* * * * *
    (d) An objection to the deposition on any grounds, such 
as the competency of a witness, admissibility of evidence, 
manner of taking the deposition, the form of questions and answers, any 
oath or affirmation, or conduct of any party at the deposition 
, is waived unless an objection is made on the 
record at the deposition stating the specific ground of objection. Any 
objection which a party wishes considered by the Board at final hearing 
shall be included in a motion to suppress under Sec. 1.656(h).
    (e) Nothing in this section precludes taking notice of plain errors 
affecting substantial rights although they were not brought to the 
attention of an administrative patent judge 
[examiner-in-chief] or the Board.
    71. Section 1.687 is proposed to be amended by revising paragraph 
(c) to read as follows:


Sec. 1.687  Additional discovery.

* * * * *
    (c) Upon a motion (Sec. 1.635) brought by a party within the time 
set by an administrative patent judge [examiner-
in-chief] under Sec. 1.651 or thereafter as authorized by Sec. 1.645 
and upon a showing that the interest of justice so requires, an 
administrative patent judge [examiner-in-chief] 
may order additional discovery, as to matters under the control of a 
party within the scope of the Federal Rules of Civil Procedure, 
specifying the terms and conditions of such additional discovery. 
See Sec. 1.647 concerning translations of documents in a 
foreign language.
* * * * *
    72. Section 1.688 is proposed to be amended by revising paragraphs 
(a) and (b) and adding a new paragraph (c) to read as follows:


Sec. 1.688  Use of discovery.

    (a) If otherwise admissible a party may introduce into evidence, an 
answer to a written request for an admission or an answer to a written 
interrogatory obtained by discovery under Sec. 1.687 by filing a copy 
of the request for admission or the written interrogatory and the 
answer. If the answer relates to a party's case-in-chief, the answer 
shall be [filed prior to the close of testimony of the party's] 
served together with any affidavits served by the party 
under Sec. 1.672(b) for its case-in-chief or, if the party does not 
serve any affidavits under Sec. 1.672(b) for its case-in-chief, no 
later than the date set by an administrative patent judge for the party 
to serve affidavits under Sec. 1.672(b) for its case-in-
chief. If the answer relates to the party's rebuttal, the [admission 
or] answer shall be [filed prior to the close of testimony of the 
party's] served together with any affidavits served by the 
party under Sec. 1.672(b) for the its case-in-rebuttal or, if the party 
does not serve any affidavits under Sec. 1.672(b) for its case-in-
rebuttal, no later than the date set by an administrative patent judge 
for the party to serve affidavits under Sec. 1.672(b) for 
its case-in-rebuttal.
    (b) Unless otherwise ordered by an 
administrative patent judge [examiner-in-chief], 
any written objection to the admissibility of an answer shall be filed 
[within 15 days of service of the answer.] no later than the 
date set by the administrative patent judge for the opponent to file 
any objections under Sec. 1.672(c) to affidavits submitted by the party 
under Sec. 1.672(b). An opponent who fails to challenge the 
admissibility of an answer on a ground that could have been raised in a 
timely objection under this paragraph will not be entitled to move 
under Sec. 1.656(h) to suppress the evidence on that ground. If an 
opponent timely files an objection, the party may respond with 
supplemental affidavits, which must be filed together with any 
supplemental evidence filed by the party under Sec. 1.672(c) or, if the 
party does not file any supplemental evidence under Sec. 1.672(c), no 
later than the date set by an administrative patent judge for the party 
to file supplemental affidavits under Sec. 1.672(c). No objection to 
the admissibility of the evidence contained in or submitted with a 
supplemental affidavit shall be made, except as provided by 
Sec. 1.656(h). The pages of supplemental affidavits and the 
exhibits filed under this section shall be sequentially numbered by the 
party in the manner set forth in Sec. 1.672(c). The supplemental 
affidavits and exhibits shall be accompanied by an index of witnesses 
and an index of exhibits of the type required by Sec. 1.672(b).
    (c) Any request by an opponent to cross-examine on oral deposition 
the affiant of a supplemental affidavit submitted under paragraph (b) 
of this section shall be filed no later than the date set by the 
administrative patent judge for the opponent to file a request to 
cross-examine an affiant with respect to an affidavit filed by the 
party under Sec. 1.672(b) or (c). If any opponent requests cross-
examination of an affiant, the party shall file a notice of deposition 
for a reasonable location within the United States under Sec. 1.673(e) 
for the purpose of cross-examination by any opponent. Any redirect and 
recross shall take place at the deposition. At any deposition for the 
purpose of cross-examination of a witness, the party shall not be 
entitled to rely on any document or thing not mentioned in one or more 
of the affidavits filed under this paragraph, except to the extent 
necessary to conduct proper redirect. The party who gives notice of a 
deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
deposition transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of deposition transcripts and exhibits served 
under this paragraph shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(d). The deposition transcripts shall be 
accompanied by an index of the names of the witnesses, giving the 
number of the page where cross-examination, redirect and recross of 
each witness begins, and an index of exhibits of the type specified in 
Sec. 1.672(b).
    [(b)] (d) A party may not rely upon any other 
matter obtained by discovery unless it is introduced into evidence 
under this subpart.
    73. Section 1.690 is proposed to be amended by revising paragraphs 
(a), (b) and (c) to read as follows:


Sec. 1.690  Arbitration of interferences.

    (a) Parties to a patent interference may determine the interference 
or any aspect thereof by arbitration. Such arbitration shall be 
governed by the provisions of Title 9, United States Code. The parties 
must notify the Board in writing of their intention to arbitrate. An 
agreement to arbitrate must be in writing, specify the issues to be 
arbitrated, the name of the arbitrator or a date not more than thirty 
(30) days after the execution of the agreement for the selection of the 
arbitrator, and provide that the arbitrator's award shall be binding on 
the parties and that judgment thereon can be entered by the Board. A 
copy of the agreement must be filed within twenty (20) days after its 
execution. The parties shall be solely responsible for the selection of 
the arbitrator and the rules for conducting proceedings before the 
arbitrator. Issues not disposed of by the arbitration will be resolved 
in accordance with the procedures established in 37 CFR, Subpart E of 
Part 1, as determined by the administrative patent 
judge [examiner-in-chief].
    (b) An arbitration proceeding under this section shall be conducted 
within such time as may be authorized on a case-by-case basis by an 
administrative patent judge [examiner-in-chief].
    (c) An arbitration award will be given no consideration unless it 
is binding on the parties, is in writing and states in a clear and 
definite manner (1) the issue or issues arbitrated and (2) the 
disposition of each issue. The award may include a statement of the 
grounds and reasoning in support thereof. Unless otherwise ordered by 
an administrative patent judge [examiner-in-
chief], the parties shall give notice to the Board of an arbitration 
award by filing within twenty (20) days from the date of the award a 
copy of the award signed by the arbitrator or arbitrators. When an 
award is timely filed, the award shall, as to the parties to the 
arbitration, be dispositive of the issue or issues to which it relates.
* * * * *
    Dated: September 23, 1994.
Bruce A. Lehman,
Assistant Secretary of Commerce, and Commissioner of Patents and 
Trademarks.
[FR Doc. 94-24203 Filed 9-30-94; 8:45 am]
BILLING CODE 3510-16-M