[Federal Register Volume 65, Number 183 (Wednesday, September 20, 2000)]
[Rules and Regulations]
[Pages 56792-56794]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-24120]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Chapter I and Part 1

RIN 0651-AB15


Simplification of Certain Requirements in Patent Interference 
Practice

September 15, 2000.

AGENCY: United States Patent and Trademark Office, Commerce.

[[Page 56793]]


ACTION: Interim rule with request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) amends 
its rules of practice in patent interferences to simplify certain 
requirements relating to the declaration of interferences and the 
presentation of evidence. USPTO is also revising its CFR chapter 
heading to reflect its new name.

DATES: Effective Date: October 20, 2000.
    Comment Date: Submit comments on or before October 20, 2000.

ADDRESSES: Send all comments:
    1. Electronically to ``[email protected],'' Subject: 
``Interference Simplification''; or
    2. By mail to Director of the United States Patent and Trademark 
Office, BOX INTERFERENCE, Washington, D.C. 20231, ATTN: ``Interference 
Simplification''; or
    3. By facsimile to 703-305-9373, ATTN: ``Interference 
Simplification.''

FOR FURTHER INFORMATION CONTACT: Fred McKelvey or Richard Torczon at 
703-308-9797.

SUPPLEMENTARY INFORMATION:

Comment Format

    The USPTO prefers to receive comments in electronic form, either 
via the Internet or on a 3\1/4\-inch diskette. Comments submitted in 
electronic form should be submitted as ASCII text. Special characters 
and encryption should not be used.

Background

    The USPTO is amending 37 CFR Secs. 1.601(f) and 1.606 and is 
deleting 37 CFR Sec. 1.609 because the requirements being eliminated 
presented obstacles to the efficient declaration of interferences 
without corresponding benefits. In particular, Rules 601(f) and 606 
create a presumption about the scope of the interfering subject matter 
that often is not supported by the record. The change eliminates that 
presumption. The changes in sections 1.601(f) and 1.606, as well as 
changes in the process of proposing an interference in the examining 
corps, have made section 1.609 unnecessary. Now an administrative 
patent judge meets with a representative from the technology center to 
ensure that the record contains adequate bases for declaring an 
interference.
    The USPTO is amending 37 CFR Sec. 1.671 to provide that all 
evidence is presented in the form of an exhibit. This simplifying 
amendment to Sec. 1.671 makes the more complex requirements of 37 CFR 
Secs. 1.682, 1.683, and 1.688 unnecessary, so they are being deleted. 
An interim rule is appropriate because the rulemaking is not 
substantive and the elimination of these requirements provides relief 
from unnecessary requirements. The USPTO appreciates that other changes 
to the rules of practice in patent interferences may be appropriate, 
but this interim rule is not an appropriate vehicle for such changes, 
which will have to be addressed in future rulemaking. These rule 
changes will apply to any interference declared after the effective 
date of this rulemaking and to any interference in which these changes 
are adopted by order.

Regulatory Flexibility Act

    This rulemaking is procedural and is not subject to the 
requirements of 5 U.S.C. 553 so no initial regulatory flexibility 
analysis is required under 5 U.S.C. 603.

Executive Order 13132: Federalism Assessment

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (August 4, 1999).

Executive Order 12866

    This rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

    This interim rule creates no information collection requirements 
subject to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et 
seq.).

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Inventions and patents.

    For the reasons stated in the preamble, the United States Patent 
and Trademark Office amends 37 CFR Chapter I as follows:
    1. The heading of Chapter I is revised to read as follows:

CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
COMMERCE

PART 1--RULES OF PRACTICE IN PATENT CASES

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

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


    2. Amend Sec. 1.601 by revising paragraph (f) to read as follows:


Sec. 1.601  Scope of rules, definitions.

* * * * *
    (f) A count defines the interfering subject matter between two or 
more applications or between one or more applications and one or more 
patents. When there is more than one count, each count shall define a 
separate patentable invention. Any claim of an application or patent 
that is designated to correspond to a count is a claim involved in the 
interference within the meaning of 35 U.S.C. 135(a). A claim of a 
patent or application that is designated to correspond to a count and 
is identical to the count is said to correspond exactly to the count. A 
claim of a patent or application that is designated to correspond to a 
count but is not identical to the count is said to correspond 
substantially to the count. When a count is broader in scope than all 
claims which correspond to the count, the count is a phantom count.
* * * * *

    3. Revise Sec. 1.606 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. 
The application must contain, or be amended to contain, at least one 
claim that is patentable over the prior art and corresponds to each 
count. The claim in the application need not be, and most often will 
not be, identical to a claim in the patent. All claims in the 
application and patent which define the same patentable invention as a 
count shall be designated to correspond to the count.


Sec. 1.609  [Removed and Reserved]

    4. Remove and reserve Sec. 1.609.

    5. Amend Sec. 1.671 by revising paragraph (a) to read as follows:


Sec. 1.671  Evidence must comply with rules.

    (a) Evidence consists of affidavits, transcripts of depositions, 
documents and things.
* * * * *


Secs. 1.682, 1.683, and 1.688  [Removed and Reserved]

    6. Remove and reserve Sec. 1.682, 1.683, and 1.688.


[[Page 56794]]


    Dated: September 13, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-24120 Filed 9-19-00; 8:45 am]
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