[Federal Register Volume 65, Number 227 (Friday, November 24, 2000)]
[Rules and Regulations]
[Pages 70489-70490]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-30015]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB15


Simplification of Certain Requirements in Patent Interference 
Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office amends its rules 
of practice in patent interferences to simplify certain requirements 
relating to the declaration of interferences and the presentation of 
evidence.

EFFECTIVE DATE: December 26, 2000.

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

SUPPLEMENTARY INFORMATION:

Background

    An interim final version of this rulemaking was published at 65 FR 
56792, Sept. 20, 2000, and also at U.S. Patent and Trademark Office, 
1239 Off. Gaz. 125 (Oct. 17, 2000). The rationale for the rulemaking 
appears with the interim rule.

Comments

    The interim rule elicited two comments. One comment notes a 
reference in 37 CFR 1.671(e) to a rule that was deleted. That reference 
is eliminated in this final rule. Any other references to deleted rules 
in subpart E of this title should be considered obsolete. They will be 
eliminated in a future rulemaking.

[[Page 70490]]

    A second comment raised a concern as to whether exhibits should be 
numbered, noting that there is no patent interference rule requiring 
that exhibits be numbered. Each exhibit needs to be identified in some 
unique manner. All interferences declared by the Board of Patent 
Appeals and Interferences (Board) at this time are subject to a 
``Standing Order'' that requires that exhibits be numbered.
    The same comment noted that former 37 CFR 1.682 authorized placing 
a publication in evidence without the need for an affidavit. According 
to the comment, affidavits will now be necessary. Publications 
generally may be placed in evidence in interference cases without an 
affidavit. If an objection is made by an opponent, e.g., for lack of 
authenticity, then under the Board's practice the party has a period of 
time within which to supplement its evidence by properly authenticating 
the publication. The Board expects few, if any, problems with the 
admissibility of most printed publications given that most parties will 
have no reason to question the authenticity of most printed 
publications.

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 Part 1 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. Amend the authority citation for 37 CFR Part 1 to read as 
follows:


    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


    2. Amend Sec. 1.601(f) to revise 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.

    4. Amend Sec. 1.671 to revise paragraphs (a) and (e) to read as 
follows:


Sec. 1.671  Evidence must comply with rules.

    (a) Evidence consists of affidavits, transcripts of depositions, 
documents and things.
* * * * *
    (e) A party may not rely on an affidavit (including exhibits), 
patent, or printed publication previously submitted by the party under 
Sec. 1.639(b) unless a copy of the affidavit, patent, or printed 
publication has been served and a written notice is filed prior to the 
close of the party's relevant testimony period stating that the party 
intends to rely on the affidavit, patent, or printed publication. When 
proper notice is given under this paragraph, the affidavit, patent, or 
printed publication shall be deemed as filed under Sec. 1.640(b), 
Sec. 1.640(e)(3), or Sec. 1.672, as appropriate.
* * * * *

    Dated: November 9, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-30015 Filed 11-22-00; 8:45 am]
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