[Federal Register Volume 64, Number 50 (Tuesday, March 16, 1999)]
[Rules and Regulations]
[Pages 12900-12902]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-6346]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket #: 990204043-9043-01]
RIN 0651-AB03


Consideration of Interlocutory Rulings at Final Hearing in 
Interference Proceedings

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Interim rule with request for comments.

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SUMMARY: The Patent and Trademark Office (Office) is amending its 
interference regulations to clarify the standard under which the Board 
of Patent Appeals and Interferences (Board) considers interlocutory 
decisions entered by a single administrative patent judge (APJ) at the 
time of the final hearing.

DATES: Effective Date: March 16, 1999.
    Comment Deadline Date: Written comments must be received on or 
before

[[Page 12901]]

May 17, 1999. No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
to ``Interference.R[email protected]'' and should include ``Rule 655(a)'' 
in the subject line. Comments may also be submitted by mail addressed 
to BOX INTERFERENCE, Commissioner of Patents and Trademarks, 
Washington, DC 20231, or by facsimile to (703) 305-0942, marked to the 
attention of Fred McKelvey or Richard Torczon. The Office prefers to 
receive comments by electronic mail via the Internet. Where comments 
are submitted by mail, please include an electronic copy of the 
comments on a DOS-formatted 3\1/2\ inch diskette in addition to a paper 
copy.
    The comments will be available for public inspection in Room 10C10 
of Crystal Gateway, 1225 Jefferson Davis Highway, Arlington, Virginia, 
and will be available through anonymous file transfer protocol (ftp) 
via the Internet (address: ftp.uspto.gov). Since comments will be made 
available for public inspection, information that is not desired to be 
made public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Fred McKelvey or Richard Torczon by 
telephone at (703) 308-9797, or by mail addressed to: BOX INTERFERENCE, 
Commissioner of Patents and Trademarks, Washington, DC 20231, or by 
facsimile to (703) 305-0942, marked to the attention of Mr. McKelvey or 
Mr. Torczon.

SUPPLEMENTARY INFORMATION: The Patent and Trademark Office has for some 
time received inquiries from members of the bar with respect to the 
meaning of Rule 655(a). In particular, the Patent and Trademark Office 
has received inquiries concerning the application of the abuse of 
discretion standard by a merits panel of the Board when considering an 
interlocutory order entered by a single administrative patent judge 
during the interlocutory phase of an interference. The purpose of this 
notice of interim rule is to clarify Rule 655(a). This clarification 
should eliminate unnecessary issues from arising in interference cases 
and should provide the public with more certainty as to how matters 
will be considered. The notice will also make practice within the Board 
more uniform.
    Any final decision in an interference is entered by a panel of at 
least three members of the Board. Rule 655(a), as currently worded, 
gives the impression that the abuse of discretion standard is to be 
applied by a merits panel for all interlocutory orders, including those 
involving the merits of the interference, e.g., patentability or 
attempts to obtain benefit of an earlier filed application. The rule is 
amended to emphasize that a panel of the Board will resolve the merits 
of an interference as a panel without deference to any interlocutory 
order. Panels will, however, continue to apply the abuse of discretion 
standard, but only with respect to procedural orders. No list could 
completely detail which issues are procedural, but examples would 
include granting or denying an extension of time, granting or denying 
additional discovery under 37 CFR 1.687(c), dismissing a motion for 
failure to comply with the rules and setting of times to take action in 
an interference, and determining the dates for conference calls.
    For the convenience of the reader, the precise changes being made 
to Sec. 1.655(a) are reproduced in the following paragraph, with 
deleted text in brackets and added text underlined:

    (a) In rendering a final decision, the Board may consider any 
properly raised issue, including priority of invention, derivation 
by an opponent from a party who filed a preliminary statement under 
Sec. 1.625 of this title, patentability of the invention, 
admissibility of evidence, any interlocutory matter deferred to 
final hearing, and any other matter necessary to resolve the 
interference. The Board may also consider whether [entry of any] an 
interlocutory order [was an abuse of discretion] should be modified. 
[All interlocutory orders shall be presumed to have been correct, 
and the] The burden of showing [an abuse of discretion] that an 
interlocutory order should be modified 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.] The abuse of discretion standard shall apply only to 
procedural matters.

    Interested members of the public are invited to present written 
comments on the change to Sec. 1.655(a) contained in this Interim Rule.

Other Considerations

    An interim final rule is appropriate under the present 
circumstances for at least two reasons. First, the rulemaking is 
procedural within the meaning of 5 U.S.C. 553(b)(A). Second, the 
Commissioner of Patents and Trademarks for good cause finds that notice 
and public procedure would be contrary to the public interest within 
the meaning of 5 U.S.C. 553(b)(B) because delay in the promulgation of 
this rule would perpetuate the burdens on parties seeking full 
consideration of interlocutory decisions at the time of the final 
hearing.
    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553, or any other law, the analytical 
requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., 
are inapplicable.
    This rule involves no collection of information subject to the 
Paperwork Reduction Act, 44 U.S.C. ch. 35. Notwithstanding any other 
provision of law, no person is required to respond nor shall a person 
be subject to a penalty for failure to comply with a collection of 
information subject to the requirements of the Paperwork Reduction Act 
unless that collection of information displays a currently valid OMB 
Control Number.
    This rule does not contain policies with federalism implications 
sufficient to warrant preparation of a Federalism Assessment under 
Executive Order 12612 (October 26, 1987).
    This rule has been determined to be not significant for purposes of 
Executive Order 12866 (September 30, 1993).

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.
    For the reasons set forth in the preamble, 37 CFR part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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

    2. Section 1.655 is amended by revising paragraph (a) 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 priority of invention, derivation by 
an opponent from a party who filed a preliminary statement under 
Sec. 1.625, patentability of the invention, admissibility of evidence, 
any interlocutory matter deferred to final hearing, and any other 
matter necessary to resolve the interference. The Board may also 
consider whether an interlocutory order should be modified. The burden 
of showing that an interlocutory order should be modified shall be on 
the party attacking the order. The abuse of discretion standard shall 
apply only to procedural matters.
* * * * *

[[Page 12902]]

    Dated: March 10, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 99-6346 Filed 3-15-99; 8:45 am]
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