[Federal Register Volume 68, Number 228 (Wednesday, November 26, 2003)]
[Proposed Rules]
[Pages 66647-66691]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-29154]



[[Page 66647]]

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Part III





Department of Commerce





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 Patent and Trademark Office



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37 CFR Parts 1, 5, and 41



Rules of Practice Before the Board of Patent Appeals and Interferences; 
Proposed Rule

Federal Register / Vol. 68, No. 228 / Wednesday, November 26, 2003 / 
Proposed Rules

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 5, and 41

RIN 0651-AB32


Rules of Practice Before the Board of Patent Appeals and 
Interferences

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Proposed rule.

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SUMMARY: The Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office proposes 
changes to the rules governing practice before the Board of Patent 
Appeals and Interferences to consolidate and simplify such rules and to 
reflect developments in case law, legislation, and administrative 
practice.

DATES: Submit comments on or before January 26, 2004.

ADDRESSES: Submit comments:
    1. By electronic mail to [email protected].
    2. By mail to Mail Stop Interference, Director of the United States 
Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450.
    3. By facsimile to 703-308-7953.
    See the SUPPLEMENTARY INFORMATION for further information about 
submitting comments.

FOR FURTHER INFORMATION CONTACT:
    Appeals: Jeffrey V. Nase or William F. Smith, 703-308-9797.
    Otherwise: Richard Torczon, 703-308-9797.

SUPPLEMENTARY INFORMATION:

Relationship to Announced Rule Makings

    This notice combines two rule makings previously announced in the 
Unified Agenda as 0651-AB27 (Appeals) and 0651-AB32 (Interferences).

Filing Comments on This Proposed Rule

    To the extent reasonably possible, the Office will make the 
comments available at http://www.uspto.gov/web/offices/dcom/bpai/. To 
facilitate this goal, the Office strongly encourages the submission of 
comments electronically, in either ASCII format or ADOBE[reg] portable 
document format (pdf). Regardless of which submission mode you select, 
write only ``Consolidated Board Rules'' in the subject line to ensure 
prompt consideration of your comments.
    Since the comments will be made available to the public, the 
comments should not include information that the submitter does not 
wish to have published. Comments that include confidentiality notices 
will not be entered into the record.
    The Board of Patent Appeals and Interferences (Board) has 
significantly overhauled its operations to address concerns about the 
duration of proceedings before the Board. Improvements include an 
increase in the number of administrative patent judges, outreach 
programs to educate parties and examiners about Board operations, and 
restructuring of Board procedures. This rule making proposes to revise 
the rules governing Board proceedings to better reflect these new 
procedures. Consistent with these improvements, the rules are also 
consolidated and simplified to ease use. Finally, the rules address 
case law and legislative changes that have occurred since the last 
significant revision of the Board's rules.

Explanation of Proposed Changes

    In keeping with long-standing patent practice, existing rules are 
denominated ``Rule x'' in this supplementary information. The proposed 
rules are denominated ``proposed Sec.  41.x'' to help readers 
distinguish between existing and proposed rules.
    Rules 1(a)(1)(iii), 5(e), 6(d)(9), 8(a)(2)(i)(B) and (a)(2)(i)(C), 
and 11(e), and subpart E of part 1, would be removed to consolidate 
interference information in proposed part 41, subparts D and E.
    Rules 4(a)(2); 9(g); 36; 59(a)(1); 103(g); 112; 113(a); 114(d); 
131(a)(1); 136(a)(1) and (a)(2); 181(a)(3); 248(c); 292(a) and (c); 
295(b); 302(b); 303(c); 304(a)(1) and (a)(2); 322(a)(3); 323; 324; 
565(e); 701(c)(2)(ii); 703(a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e); 
704(c)(9); and 993 would be revised to change cross-references to Board 
proceedings.
    Rule 14(e) would be revised to eliminate references to Board 
actions. An analogous rule for Board actions is proposed in Sec.  
41.6(a). The Office previously proposed a similar change to Rule 14(e). 
See ``Changes to Implement Electronic Maintenance of Official Patent 
Application Records'', 68 FR 14365 (25 March 2003), in which the 
paragraph in question was numbered Rule 14(f). The Office received two 
comments that were specific to then-proposed Rule 14(f). See http://www.uspto.gov/web/offices/pac/dapp/opla/comments/efw/aipla.pdf and 
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/efw/neifeld.pdf. To avoid confusion with this proposed rule making, no 
change was adopted to the language of the rule beyond renumbering it as 
Rule 14(e). 68 FR 38611, 38612, 38620 (30 June 2003). In the present 
proposal, the language of the rule has been simplified to avoid some of 
the criticisms in one comment, but the suggestion in the comments to 
relax the standards for publishing decisions is not being proposed. 
Proposed Rule 14(e)(1) would continue to state that publicly available 
materials are publicly available. Such materials may be published 
without notification to or permission from the applicant or patent 
owner.
    Rules 17(b)-(d) and (h) would be revised to remove the Board fees, 
which will be relocated to proposed Sec.  41.20.
    Rule 48(a)-(c) and (i) would be revised, and Rule 48(j) added, to 
consolidate the cross-reference correction of inventorship for 
applications in contested cases before the Board.
    Rules 55(a)(3) and (a)(4), and 136(b) would be revised to eliminate 
the cross-references to Board rules.
    Rule 116 would be amended to limit amendments after a final 
rejection or other final action (Rule 113) in an application or in an 
ex parte reexamination filed under Rule 510, or after an action closing 
prosecution (Rule 949) in an inter partes reexamination filed under 
Rule 913, to such amendments filed before or with any appeal to the 
Board under proposed Sec.  41.31 or Sec.  41.61. Amendments after 
appeal currently treated under Rule 116 would be moved to proposed 
Sec. Sec.  41.33 and 41.63. Rule 116(d) would be amended to permit only 
an amendment canceling claims, where such cancellation does not affect 
the scope of any other pending claim in the proceeding, to be made in 
an inter partes reexamination proceeding after the right of appeal 
notice has issued under Rule 953, except as provided in Rule 981 or as 
permitted by proposed Sec.  41.77(b)(1). Rule 116(e) would be added to 
set forth a standard for treatment of an affidavit or other evidence 
submitted after a final rejection or other final action (Rule 113) in 
an application or in an ex parte reexamination filed under Rule 510, or 
in an action closing prosecution (Rule 949) in an inter partes 
reexamination filed under Rule 913, but before or with any appeal 
(proposed Sec.  41.31 or proposed Sec.  41.61). The proposed standard 
would be that such an affidavit or other evidence could be admitted 
upon a showing of good and sufficient reasons why the affidavit or 
other evidence is necessary and was not earlier presented. This 
standard is currently in effect under Rule 195 for an affidavit or 
other evidence submitted

[[Page 66649]]

after appeal. Rule 116(f) would be added to prohibit affidavits and 
other evidence in an inter partes reexamination proceeding after the 
right of appeal notice under Rule 953, except as provided in Rule 981 
or as permitted by proposed Sec.  41.77(b)(1).
    Rule 191 would be amended to direct appellants under 35 U.S.C. 
134(a) or (b) to proposed part 41, subpart B. Rules 192-196 would be 
removed and reserved.
    Rule 197 would be amended by changing its title to ``Return of 
Jurisdiction from the Board of Patent Appeals and Interferences; 
termination of proceedings'' to reflect the two remaining paragraphs of 
this section. The subject matter of current paragraph (b) would be 
moved to proposed Sec.  41.52 and the subject matter of current 
paragraph (c) would be moved to proposed paragraph (b) of this section. 
In addition, paragraph (a) would be amended to return of jurisdiction 
of the involved application or patent under ex parte reexamination 
proceeding to the examiner.
    Rule 198 would be amended by changing its title to ``Reopening 
after a final decision of the Board of Patent Appeals and 
Interferences'' to better reflect the substance of the section and to 
clarify that it applies when a decision by the Board of Patent Appeals 
and Interferences on appeal has become final for judicial review.
    Rule 324(a) and (c) would be revised, and Rule 324(d) added, to 
consolidate cross-references to correction of inventorship for patents 
in contested cases before the Board.
    Rule 959 would be revised to direct inter partes reexamination 
participants to proposed part 41, subpart C, for information about 
appeals in such proceedings.
    Rules 961-977 would be removed to consolidate inter partes 
reexamination appeal information in proposed part 41, subpart C.
    Rule 979 would be amended by changing its title to ``Return of 
Jurisdiction from the Board of Patent Appeals and Interferences; 
termination of proceedings'' to reflect the two paragraphs of this 
section. Most of the subject matter of current paragraphs (a)-(g) would 
be moved to proposed Sec. Sec.  41.79, 41.81 and 41.83. Paragraph (a) 
would be amended to recite that jurisdiction over an inter partes 
reexamination proceeding passes to the examiner after a decision by the 
Board of Patent Appeals and Interferences upon transmittal of the file 
to the examiner, subject to each appellant's right of appeal or other 
review, for such further action as the condition of the inter partes 
reexamination proceeding may require, to carry into effect the decision 
of the Board of Patent Appeals and Interferences. Paragraph (b) would 
be amended to state that upon termination of the appeal before the 
Board of Patent Appeals and Interferences (proposed Sec.  41.83), if no 
further appeal has been taken (Rule 983), the inter partes 
reexamination proceeding will be terminated and the Director will issue 
a certificate under Rule 997. If an appeal to the U.S. Court of Appeals 
for the Federal Circuit has been filed, that appeal is considered 
terminated when the mandate is received by the Office.
    Rule 981 would be amended by changing its title to ``Reopening 
after a final decision of the Board of Patent Appeals and 
Interferences'' to better reflect the substance of the section and to 
clarify that it applies when a decision by the Board of Patent Appeals 
and Interferences on appeal has become final for judicial review.
    Section 3 of part 5 provides that no interference will be declared 
with an application under a national secrecy order. In part, this is 
because the application cannot issue while the secrecy order is in 
place so the completion requirement of proposed Sec.  41.102 is not 
met. Cf. Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200 
(Fed. Cir. 1984) (the Director declares an interference to determine 
whether the application may issue). The proposed revision to Rule 5.3 
would remove the reference to a patent because an interference may be 
provoked with an application as well (proposed Sec.  41.202(a)(1)). The 
proposed revision would also remove the requirement to place a notice 
in the file of the targeted patent. Since the Office will not act on 
the suggestion for an interference, the notice only serves to cast 
unexamined doubt on the claims of the patentee without providing any 
route of relief. An applicant intent on having an interference should 
take steps to have the secrecy order lifted.
    Section 23(c)(7) of part 10 would be amended to change the cross-
reference to the interference rules.
    A new part 41 would permit consolidation of rules relating to Board 
practice and to simplify reference to such practices. The Board would 
continue the practice used in part 1 of this title of citing sections 
without the part number. In proceedings before the Board, a party could 
cite ``Sec.  41.x'' as ``Board Rule x''.
    Proposed part 41 would better state the existing practice and 
should not be read to change the existing practice except as explicitly 
provided.
    Proposed subpart A would state policies, practices, and definitions 
common to all proceedings before the Board.
    Proposed Sec.  41.1 would set forth general principles for proposed 
part 41. Proposed Sec.  41.1(a) would define the scope of rules. 
Proposed Sec.  41.1(b) would mandate that the Board's rules be 
construed to achieve just, speedy, and inexpensive resolutions of all 
Board proceedings, following the model of Rule 601 and Federal Rule of 
Civil Procedure 1. Proposed Sec.  41.1(c) would explicitly extend the 
requirement for decorum under Rule 3 to Board proceedings, including 
dealings with opposing parties. Board officials are similarly expected 
to treat parties with courtesy and decorum.
    Proposed Sec.  41.2 would set forth definitions for Board 
proceedings under proposed part 41. The preamble to proposed Sec.  41.2 
is based on the preamble of Rule 601, which cautions that context may 
give a defined word a different meaning. For instance, although 
``final'' would be defined for the purposes of identifying final agency 
actions of the Board, it would not change the meaning of ``final 
rejection'' in proposed Sec.  41.37(c)(1)(iv), which refers to an 
action by an examiner.
    The proposed definition of ``Board'' would cover three distinct 
situations. First, for the purposes of a final agency action committed 
to a panel of Board members, the definition would be identical in scope 
to 35 U.S.C. 6(b). Second, the definition would include action by the 
Chief Administrative Patent Judge in matters delegated in these 
proposed rules to the Chief Administrative Patent Judge. Third, the 
definition would recognize that non-final actions are often performed 
by officials other than a panel or the Chief Administrative Patent 
Judge. See Rule 610(a); cf. 37 CFR 2.127(c). This definition should not 
be read to authorize a final decision on patentability, priority, or 
United States Government ownership by anything other than a Board 
panel. Other than instances in which a panel is required by statute, 
the selection and authorization of an official to act on behalf of the 
Board would be entirely a matter of internal administration.
    The definition of ``Board member'' would follow the definition in 
35 U.S.C. 6(a), under which the Under Secretary of Commerce for 
Intellectual Property and Director of the United States Patent and 
Trademark Office, the Deputy Under Secretary of Commerce for 
Intellectual Property and Deputy Director of the United States Patent 
and Trademark Office, the Commissioner for

[[Page 66650]]

Patents, and the Commissioner for Trademarks are ex officio members of 
the Board.
    The phrase ``contested case'' would include patent interferences 
(35 U.S.C. 135(a)) and proceedings with interference-based procedures 
(42 U.S.C. 2182 and 2457(d)). The existence of a contested case is a 
predicate for authorizing a subpoena under 35 U.S.C. 24. Although both 
appeals in inter partes reexaminations under 35 U.S.C. 134(c) and some 
petitions to the Chief Administrative Patent Judge, such as a petition 
for access under 35 U.S.C. 135(c), may involve more than one party, 
they are not considered contested cases for the purposes of proposed 
part 41.
    Finality is required for judicial review. Barton v. Adang, 162 F.3d 
1140, 1143, 49 USPQ2d 1128, 1131 (Fed. Cir. 1998). The term ``final'' 
would be defined pursuant to 5 U.S.C. 704 to assist parties in 
determining when a Board action is ripe for judicial review. In Barton, 
162 F.3d at 1143, 49 USPQ2d at 1131, the Court of Appeals for the 
Federal Circuit held that an adverse judgment against a single party in 
a multi-party patent interference was a final agency action with 
respect to that party for the purposes of review under 35 U.S.C. 141. 
The proposed definition of ``final'' would follow Barton in linking the 
question of finality to whether an agency action on the merits is 
operative against the party seeking judicial review. Under 35 U.S.C. 
6(b), a decision on the merits in an appeal or a contested case by any 
entity other than three Board members cannot be a final agency action. 
Affirming or reversing disposes of an issue on appeal on the merits; 
vacating or remanding does not. Entry of a new ground of rejection, by 
definition, does not dispose of an issue on the merits. A petition 
decision might not be final if, for instance, the decision is rendered 
without prejudice to take some further action. An issue in a non-final 
decision may usually be preserved for review in a final decision. See, 
e.g., proposed Sec.  41.125(c)(5) under which a party may request 
reconsideration by a panel.
    The definition of ``hearing'' would reflect the holding of In re 
Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985) that a 
party is entitled to judicial consideration of properly raised issues, 
but is not entitled to an oral argument or consideration of improperly 
raised issues.
    The definitions of ``panel'' and ``panel proceeding'' would reflect 
the minimum quorum established in 35 U.S.C. 6(b), which reserves action 
on patentability and priority to panels. 35 U.S.C. 6(b).
    The term ``party'' would set forth a generic term for entities 
acting in a Board proceeding.
    The delegation of petition authority to the Chief Administrative 
Patent Judge in proposed Sec.  41.3(a) would be new as a rule, but 
follows a delegation already published in the Manual of Patent 
Examining Procedure (MPEP) at Sec.  1002.02(f). This delegation by rule 
would not prejudice the Director's prerogative to decide a petition or 
to delegate authority to decide a petition to another subordinate. The 
Chief Administrative Patent Judge could also delegate petition-deciding 
authority to an official, provided the delegation is stated in writing. 
Note that under proposed Sec.  41.3(b)(1) decisions committed by 
statute to the Board would not be subject to petitions for supervisory 
review. Such decisions would include merits decisions in appeals and 
contested cases, and decisions on requests for rehearing. 35 U.S.C. 
6(b). Review of such decisions would come through a request for 
rehearing or through judicial review. Proposed Sec.  41.3(b)(2), which 
would provide for petitions in contested cases to be decided by other 
officials, would reflect the MPEP's designation of other actions 
typical in the ordinary course of Board proceedings as ``petitions''. 
See MPEP Sec.  1002.02(g) (various procedural decisions in 
interferences). These actions would be considered routine motions or 
requests.
    Proposed Sec.  41.3(c) would reflect current practice in requiring 
payment of a standard petition fee. Matters that would be excluded from 
the scope of petitions in Sec.  41.3(a)(2) would not be petitions and 
so would not require payment of a fee. Petitions seeking supervisory 
review of a discretionary matter would also not require payment of a 
petition fee. Compare Rule 181(a)(3) with Rules 182 and 183.
    Proposed Sec.  41.3(d) would reflect the current practice of not 
staying any action for a petition for supervisory review in Rule 
181(f). Note that the Court of Appeals for the Federal Circuit has held 
that a request for rehearing may toll the time for seeking judicial 
review. In re Graves, 69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed. 
Cir. 1995).
    Proposed Sec.  41.3(e) would set times for filing petitions. As 
with Rule 181(f), failure to file a timely petition would be sufficient 
basis for dismissing or denying a motion.
    Proposed Sec.  41.4(a) and (b) would follow the requirements of 
Rules 136(b) and 645 in providing rules for extensions of time and for 
acceptance of untimely papers. Congress has authorized patent term 
adjustments for time spent in proceedings before the Board. 35 U.S.C. 
154(b)(1)(C). Consequently, the Board must be mindful to avoid delays 
in its administration of its proceedings, including delays requested or 
caused by a party. The Board might set conditions on extensions to 
minimize the effects of any delay, including restriction under 35 
U.S.C. 121 of claims directed to subject matter not involved in the 
Board proceeding. Proposed Sec.  41.4(c) would point parties to 
timeliness rules that are related to Board proceedings, but not within 
the scope of the Board rules.
    Proposed Sec.  41.5 would set forth a limited delegation to the 
Board under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel 
in Board proceedings. It would generally be more efficient to have a 
Board official familiar with the specific proceeding decide questions 
of representation limited to the specific proceeding. Disqualification 
would be a case-specific suspension or exclusion from practice within 
the meaning of 35 U.S.C. 32. Under the terms of section 32, the 
official conducting the disqualification hearing would have to be an 
attorney.
    Proposed Sec.  41.5(b) would delegate to the Board the authority to 
conduct counsel disqualification proceedings while the Board has 
jurisdiction over a proceeding. It also would clarify counsel 
disqualification practice under Rule 613(c) by making explicit the fact 
that a final decision to disqualify is an exercise of the powers of the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office under Sec.  32, not the 
Board. The rule would delegate to the Chief Administrative Patent Judge 
the authority to make final a decision to disqualify counsel in a 
proceeding before the Board for the purposes of judicial review. This 
delegation would not derogate from the Director the prerogative to make 
such decisions, nor would it prevent the Chief Administrative Patent 
Judge from further delegating authority to an administrative patent 
judge, provided the delegation was stated in writing.
    Proposed Sec.  41.6(a) would relocate into part 41 the portions of 
Rule 14(e) that apply to the Board. Proposed Sec.  41.6(a)(1) would 
continue to state that publicly available materials are publicly 
available. Such materials may be published without notification to or 
permission from the applicant. Proposed Sec.  41.6(a)(2) would set 
forth the basis for making a determination under 35 U.S.C. 122(a) that 
the publication of a Board action constitutes a special

[[Page 66651]]

circumstance. Parties should note that disagreement with a holding is 
not an appropriate basis for challenging a special circumstance 
determination. Moreover, a party not entitled to confidentiality under 
section 122(a) would not have the standing to challenge publication 
under this paragraph. For instance, an involved patentee could not 
assert an opposing applicant's confidences as the basis for blocking a 
publication.
    Proposed Sec.  41.6(b) would generalize to all Board proceedings 
the practice under Rule 11(e) of making the record of most interference 
proceedings publicly available eventually, although that availability 
might not occur until an involved patent application becomes available. 
It also recognizes pre-grant publication as a basis for making a file 
publicly available.
    Proposed Sec.  41.7 would adopt the current practice of Rule 618 
regarding duplicate papers and the expunging of papers, but would 
generalize it to all Board proceedings. In recent decades, the typical 
size of files has increased significantly. The increase imposes burdens 
on the Office in managing the records and on users of the record. This 
rule would provide a tool for managing the size and complexity of the 
record and for preventing abuses that can occur in filing.
    Proposed Sec.  41.8(a) would reflect the current practice under 
Rules 192(c)(1) and 602 regarding disclosure of the real parties-in-
interest. Federal officials must meet high ethical standards. A 
principal ethical concern is the avoidance of conflicts of interest for 
the officials, including even the appearance of a conflict. See e.g., 
Stanek v. Dep't of Transp., 805 F.2d 1572, 1577 (Fed. Cir. 1986) 
(affirming dismissal of employee for appearance of a conflict of 
interest). In the case of the Board, a conflict would typically arise 
when an official has an investment in a company with a direct interest 
in a Board proceeding. Such conflicts could only be avoided if the 
parties promptly provide the information necessary to identify 
potential conflicts. The identity of a real party-in-interest might 
also affect the credibility of evidence presented in a proceeding. For 
instance, testimony from a source related to a real party-in-interest 
may be seen as misleading or self-serving compared to evidence from a 
completely independent source (e.g., Refac Int'l, Ltd. v. Lotus Dev. 
Corp., 81 F.3d 1576, 1581-82, 38 USPQ2d 1665, 1669 (Fed. Cir. 1996) 
(failure to identify declarants as former co-workers was inequitable 
conduct)). Finally, in a contested case, the presence of a common real 
party-in-interest might reflect a lack of genuine adversity between the 
parties. Common ownership would ordinarily result in prompt termination 
of any proceeding between the commonly owned parties. Barton, 162 F.3d 
at 1143, 49 USPQ2d at 1131 (recognizing the practice while noting an 
exception). See proposed Sec.  41.206.
    The notice of judicial proceedings required in proposed Sec.  
41.8(b) would be important because a judicial decision in another case 
might be binding on the Board or a party. The Board might also use such 
information to determine the best pacing for a Board proceeding. Notice 
of other administrative proceedings might also be relevant. In the case 
of other Office proceedings, particularly other Board proceedings, 
notice might allow the Board to more efficiently allocate its limited 
resources and to avoid inconsistent outcomes. In re Berg, 140 F.3d 
1428, 1435 nn.7&8, 46 USPQ2d 1226, 1231 nn.7&8 (Fed. Cir. 1998) 
(calling failure to identify a related application relevant to a 
double-patenting analysis ``misleading''). The ``affect or be affected 
by'' standard in proposed Sec.  41.8(b) is derived from Federal Circuit 
Rule 47.5(b). The proposed rule would also follow Rule 660(d) in 
requiring notice to the Board of judicial review of the proceeding 
itself. In the absence of such timely notice, the Board would usually 
distribute records associated in the proceeding to other parts of the 
Office for further action. Failure to provide a timely mandatory notice 
under proposed Sec.  41.8 might result in sanctions including 
disqualification of counsel and adverse judgment.
    Proposed Sec.  41.9 would follow Rule 643 regarding action by an 
assignee to the exclusion of an inventor, but would generalize it to 
all Board proceedings. Orders permitting an assignee of a partial 
interest to act to the exclusion of an inventor or co-assignee would 
rarely be granted outside of contested cases. Even in contested cases, 
such orders would typically issue only when the partial assignee was in 
a proceeding against its co-assignee. Ex parte Hinkson, 1904 Comm'r. 
Dec. 342.
    Proposed Sec.  41.20 would consolidate the rules on fees associated 
with Board practice. Rules 22, 23, and 25-28, which govern fee practice 
before the Office generally, would continue to apply in Board 
proceedings. Proposed paragraph (a) would set forth the petition fee, 
while proposed paragraph (b) would set forth appeals-related fees.
    Proposed subpart B would set forth rules for the ex parte appeal 
under 35 U.S.C. 134 of a rejection in either a national application for 
a patent, an application for reissue of a patent, or an ex parte 
reexamination proceeding to the Board.
    The preamble to proposed Sec.  41.30 would be based on a similar 
provision in the preamble of Rule 601. The term ``proceeding'' would 
set forth a generic term for a national application for a patent, an 
application for reissue of a patent, and an ex parte reexamination 
proceeding. The term ``applicant'' would set forth a generic term for 
either the applicant in a national application for a patent or the 
applicant in an application for reissue of a patent. The term ``owner'' 
would set forth a shorthand reference to the owner of the patent 
undergoing ex parte reexamination under Rule 510.
    Proposed Sec.  41.31 would generally incorporate the requirements 
of current Rule 191(a)-(d). Paragraph (a) would be subdivided into 
three parts to improve readability. Paragraph (d) would be amended to 
refer only to the time periods referred to in paragraphs (a)(1)-(a)(3) 
of this section, while the current extension of time requirements for 
Rules 192, 193, 194, 196 and 197, now provided in Rule 191(e), would be 
relocated to proposed Sec. Sec.  41.37, 41.41, 41.47, 41.50 and 41.52.
    Proposed Sec.  41.33(a) and (b) would replace the requirements of 
current Rule 116 with a prohibition of amendments submitted after the 
date the proceeding has been appealed pursuant to proposed Sec.  
41.31(a)(1)-(a)(3), except amendments canceling claims or rewriting 
dependent claims into independent form and as permitted by Sec. Sec.  
41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). A dependent claim is 
rewritten into independent form by including all of the limitations of 
the base claim and any intervening claims. Thus, no limitation of a 
dependent claim can be excluded in rewriting that claim into 
independent form. Proposed Sec.  41.33(c) would replace the 
requirements of Rule 195 with a prohibition on the admission of 
affidavits and other evidence submitted after the case has been 
appealed pursuant to proposed Sec.  41.31(a)(1)-(a)(3), except as 
permitted by proposed Sec. Sec.  41.39(b)(1), 41.50(a)(2)(i) and 
41.50(b)(1). This would replace the current practice of permitting such 
evidence based on a showing of good and sufficient reasons why such 
evidence was not earlier presented. The Office believes that 
prosecution of an application should occur before the examiner prior to 
an appeal being filed, not after the case has been appealed pursuant to 
proposed Sec.  41.31(a)(1)-(a)(3).
    Proposed Sec.  41.35 would generally incorporate the requirements 
of current

[[Page 66652]]

Rule 191(e). In addition, the section is proposed to be amended to make 
clear that jurisdiction over an application may be relinquished by the 
Board and the application returned to the examining operation to permit 
processing to be completed by the examining operation before the Board 
takes up the appeal for decision. This is consistent with the present 
practice of returning an appealed application to the examining 
operation where some matter requiring attention has been identified 
prior to assignment of the appeal number and docketing of the appeal. 
In addition, it is proposed to permit the Board to take other 
appropriate action to complete the proceeding. For example, if the 
proceeding was not complete because one copy of the brief was missing, 
the Board may contact the appellant to obtain the missing copy.
    Proposed Sec.  41.37 would generally incorporate the requirements 
of Rule 192. In addition, it is proposed to:
    (1) Change the title of the section from ``Appellant's brief'' to 
``Appeal brief''.
    (2) In paragraph (a), require one copy of the brief rather than 
three copies consistent with the Office's move to an electronic file 
wrapper.
    (3) In paragraph (a), require the brief to be filed within two 
months from the date of the notice of appeal under proposed Sec.  41.31 
even if the time allowed for reply to the action from which the appeal 
was taken is later, which overall simplifies docketing of the due date.
    (4) In paragraph (c)(1)(i), require a statement in the brief 
identifying by name the real party in interest even if the party named 
in the caption of the brief is the real party in interest. This 
amendment would provide appellant the necessary mechanism for complying 
with proposed Sec.  41.8(a) in an appeal to the Board.
    (5) In paragraph (c)(1)(ii), require identification of all other 
prior and pending appeals, interferences or judicial proceedings known 
to appellant, the appellant's legal representative, or assignee which 
may be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal, as well as to 
set forth a mechanism for complying with proposed Sec.  41.8(b) in an 
appeal to the Board.
    (6) In paragraph (c)(1)(iii), require both a statement of the 
status of all the claims in the proceeding (e.g., rejected, allowed or 
confirmed, withdrawn, objected to, canceled) and an identification of 
those claims that are being appealed.
    (7) In paragraph (c)(1)(v), require a concise explanation of the 
invention defined in each of the independent claims involved in the 
appeal, which explanation shall refer to the specification by page and 
line number, and to the drawings, if any, by reference characters. For 
each claim involved in the appeal, it is proposed that every means plus 
function and step plus function as permitted by 35 U.S.C. 112, sixth 
paragraph, be identified and that the structure, material, or acts 
described in the specification as corresponding to each claimed 
function be set forth with reference to the specification by page and 
line number, and to the drawing, if any, by reference characters. The 
current requirement of Rule 192(c)(5) to set forth a concise 
explanation of the invention defined in the claims involved in the 
appeal by reference to the specification by page and line number, and 
to the drawings, if any, by reference characters is not being followed 
in a great number of briefs before the Board. It is expected that the 
proposed requirements will be enforced by the examiner. Accordingly, 
any brief filed by an appellant who is represented by a registered 
practitioner that fails to set forth a summary which references the 
specification by page and line number, and to the drawing, if any, by 
reference characters or which fails to identify every means plus 
function and step plus function as permitted by 35 U.S.C. 112, sixth 
paragraph, would be in non-compliance with this section and would be 
handled as set forth in proposed paragraph (d) of this section.
    (8) In paragraph (c)(1)(vi), require a concise statement listing 
each ground of rejection presented for review rather than issues for 
review. An example of a concise statement is ``Claims 1 to 10 stand 
rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. 
X.''
    (9) Delete the current grouping of claims requirement set forth in 
Rule 192(c)(7). The general purpose served by Rule 192(c)(7) is 
addressed in proposed Sec.  41.37(c)(1)(viii). The existing grouping of 
claims requirement has led to many problems such as (i) Grouping of 
claims across multiple rejections (e.g., claims 1-9 rejected under 35 
U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103 
over A and the appellant states that claims 1-15 are grouped together); 
(ii) Claims being grouped together but argued separately (e.g., claims 
1-9 rejected under Sec.  102 over A, the appellant groups claims 1-9 
together but then argues the patentability of claims 1 and 5 
separately); and (iii) examiners disagreeing with the appellant's 
grouping of claims.
    (10) In paragraph (c)(1)(vii), require that any arguments or 
authorities not included in the brief or a reply brief filed pursuant 
to proposed Sec.  41.41 will be refused consideration by the Board, 
unless good cause is shown (requirement currently found in Rule 
192(a)), and to require a separate heading for each ground of rejection 
in place of the previous Grouping of claims section of the brief. For 
each ground of rejection applying to two or more claims, the claims may 
be argued separately or as a group. It is proposed that, when an 
appellant argues as a group multiple claims subject to the same ground 
of rejection, the Board may select a single claim from that group of 
claims and treat its disposition of a ground of rejection of that claim 
as applying to the disposition of that ground of rejection of all 
claims in the group of claims. Notwithstanding any other provision of 
this paragraph, it is proposed to make explicit by rule that an 
appellant's failure to argue separately claims that the appellant has 
grouped together constitutes a waiver of any argument that the Board 
must consider the patentability of any grouped claim separately. See In 
re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 
2002) (interpreting Rule 192(c)(7) to require separate treatment of 
separately rejected claims). It is further proposed that any claim 
argued separately should be placed under a subheading identifying the 
claim by number and that claims argued as a group should be placed 
under a subheading identifying the claims by number. For example, if 
Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as being 
anticipated by U.S. Patent No. Y and appellant is only going to argue 
the limitations of independent claim 1, and thereby group dependent 
claims 2 to 5 to stand or fall with independent claim 1, then one 
possible heading as required by this subsection could be Rejection 
under 35 U.S.C. 102(b) over U.S. Patent No. Y and the optional 
subheading would be Claims 1 to 5. As another example, where claims 1 
to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. 
Patent No. Z and the appellant wishes to argue separately the 
patentability of each claim, a possible heading as required by this 
subsection could be Rejection under 35 U.S.C. 102(b) over U.S. Patent 
No. Z, and the optional subheadings would be Claim 1, Claim 2 and Claim 
3. Under each subheading the appellant would present the argument for 
patentability of that claim.
    (11) In paragraph (c)(1)(vii), state that ``Merely pointing out 
differences in

[[Page 66653]]

what the claims cover is not an argument as to why the claims are 
separately patentable'', a statement that in slightly different form 
appears in Rule 192(c)(7).
    (12) In paragraph (c)(1)(vii), eliminate subparagraphs (i) through 
(v) of Rule 192(c)(8) which relate to the manner in which arguments are 
to be made. Although they provide useful advice as to what an effective 
argument ought to include, these provisions have often been ignored by 
appellants and, for the most part, have not been enforced as set forth 
in paragraph (d) of that rule.
    (13) Add paragraph (c)(1)(ix) to require appellant to include an 
evidence appendix of any evidence relied upon by appellant in the 
appeal with a statement setting forth where that evidence was entered 
in the record by the examiner so that the Board will be able to easily 
reference such evidence during consideration of the appeal.
    (14) Add paragraph (c)(1)(x) to require appellant to include a 
related proceedings appendix containing copies of decisions rendered by 
a court or the Board in any proceeding identified pursuant to paragraph 
(c)(1)(ii) of this section so that the Board can take into 
consideration such decisions.
    (15) Add paragraph (c)(2) to exclude any new or non-admitted 
amendment, affidavit or other evidence from being included in the 
brief.
    (16) Add paragraph (e) to provide notice that the periods set forth 
in this section are extendable under the provisions of Rule 136 for 
patent applications and Rule 550(c) for ex parte reexamination 
proceedings. This provision currently appears in Rule 191(d), but would 
be more useful if provided in this section.
    Proposed Sec.  41.39 would generally incorporate requirements found 
in Rule 193(a).
    Proposed Sec.  41.39(a)(2) would permit a new ground of rejection 
to be included in an examiner's answer eliminating the current 
prohibition of new grounds of rejection in examiner's answers. Many 
appellants are making new arguments for the first time in their appeal 
brief (apparently stimulated by a former change to the appeal process 
that inserted the prohibition on new grounds of rejection in the 
examiner's answer). Because the current appeal rules only allow the 
examiner to make a new ground by reopening prosecution, some examiners 
have allowed cases to go forward to the Board without addressing the 
new arguments. Thus, the proposed revision would improve the quality of 
examiner's answers and reduce pendency by providing for the inclusion 
of the new ground of rejection in an examiner's answer without having 
to reopen prosecution. By permitting examiners to include a new ground 
of rejection in an examiner's answer, newly presented arguments can now 
be addressed by a new ground of rejection in the examiner's answer when 
appropriate. Furthermore, if new arguments can now be addressed by the 
examiner by incorporating a new ground of rejection in the examiner's 
answer, the new arguments may be able to be addressed without reopening 
prosecution and thereby decreasing pendency. Proposed paragraph (b) of 
this rule would specify the options available to an appellant who has 
received a new ground of rejection, including the option to request and 
have prosecution reopened before the examiner.
    The proposed change to permit new grounds of rejection in 
examiner's answers would not be open-ended but is envisioned to be 
rare, rather than a routine occurrence. The Office plans to issue 
instructions that will be incorporated into the MPEP requiring that any 
new ground of rejection made by an examiner in an answer must be 
approved by a management official such as a Technology Center Director 
and that any new ground of rejection made in an answer be prominently 
identified as such. It is the further intent of the Office to provide 
guidance to examiners that will also be incorporated into the MPEP as 
to what circumstances, e.g., responding to a new argument or new 
evidence submitted prior to appeal, would be appropriate for entry of a 
new ground of rejection in an examiner's answer rather than the 
reopening of prosecution. Where, for example, a new argument(s) or new 
evidence cannot be addressed by the examiner based on the information 
then of record, the examiner may need to reopen prosecution rather than 
apply a new ground of rejection in an examiner's answer to address the 
new argument(s) or new evidence. Paragraph (b) of Sec.  41.39 would 
provide the appellant two options when a new ground of rejection in an 
examiner's answer is made, including the option of having prosecution 
reopened.
    The following examples are set forth to provide guidance as to when 
the Office may or may not consider a factual scenario suitable for 
introducing new grounds of rejection in the examiner's answer. These 
examples are not considered an exhaustive list of situations that meet 
or do not meet the criteria for making a new ground of rejection in an 
examiner's answer:

    Example 1: A new ground of rejection based upon prior art may be 
allowed if the examiner obviously failed to include a dependent 
claim in a rejection. For example, in the final rejection, claims 1, 
13 and 27 were rejected under 35 U.S.C. 102(b) as being anticipated 
by U.S. Patent No. Y. Claim 27 depended from claim 22 which depended 
from claim 13 which depended from independent claim 1. No rejection 
of claim 22 was set forth in the final rejection; however, the 
summary sheet of the final rejection indicated that claims 1, 13 and 
27 were rejected. In this situation, the examiner would reject claim 
22 under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y 
as a new ground of rejection in the answer.
    Example 2: A new ground of rejection would not be allowed to 
reject a previously allowed or objected to claim even if the new 
ground of rejection would rely upon prior art already of record. In 
this instance, rather than making a new ground of rejection in an 
examiner's answer, if the basis for the new ground of rejection was 
approved by a supervisory patent examiner as currently set forth in 
MPEP 1208.02, the examiner would reopen prosecution.
    Example 3: The proposed amendment is intended to continue to 
permit the examiner to include new grounds of rejection where 
appellant was advised that an amendment under Rule 116 would be 
entered for appeal purposes. The proposed rule would eliminate Rule 
193(a)(2), which states that the filing of an amendment under Rule 
116 represents applicant's consent when so advised that any appeal 
on that claim will proceed subject to any rejections set forth in an 
action from which appeal was taken. Proposed Sec.  41.39(a)(2) 
broadens the situations in which an examiner can make a new ground 
of rejection to include circumstances currently covered by Rule 
193(a)(2).

    Paragraph (b) of Sec.  41.39 would set forth the responses an 
appellant may make when an examiner's answer sets forth a new ground of 
rejection. Appellant would be required within two months from the date 
of the examiner's answer containing a new ground of rejection either:
    (1) To request that prosecution be reopened by filing a reply under 
Rule 111 with or without amendment or submission of affidavits (Rules 
130, 131 or 132) or other evidence, which would result in prosecution 
being reopened before the examiner, or
    (2) To file a reply brief under Sec.  41.41, which would act as a 
request that the appeal be maintained. Such a reply brief could not be 
accompanied by any amendment, affidavit (Rules 130, 131, or 132) or 
other evidence. If such a reply brief were accompanied by any amendment 
or evidence, it would be treated as a request that prosecution be 
reopened before the examiner under paragraph (b)(1) of this section. 
Any reply brief would have to specify the error in each new ground of 
rejection as set forth in Sec.  41.37(c)(1)(viii) and should

[[Page 66654]]

generally follow the other requirements of a brief set forth in Sec.  
41.37(c).
    If in response to the examiner's answer containing a new ground of 
rejection, appellant decides to reopen prosecution of the application 
before the examiner, the Office will treat the decision to reopen 
prosecution also as a request to withdraw the appeal. If appellant 
fails to exercise one of the two options within two months from the 
date of the examiner's answer, the appeal will be dismissed (i.e., 
terminated) sua sponte.
    Paragraph (c) of Sec.  41.39 is proposed to be added to provide 
notice that the period set forth in proposed paragraph (b) of this 
section is extendable under the provisions of Rule 136(b) for patent 
applications and Rule 550(c) for ex parte reexamination proceedings. 
This provision currently appears in Rule 191(d), but it would be more 
useful if provided in this section.
    Proposed Sec.  41.41 would generally incorporate requirements found 
in Rule 193(b). In addition:
    (1) Paragraph (a) would make explicit that a reply brief could not 
include any new or non-admitted amendment, affidavit or other evidence.
    (2) Paragraph (b) would be added to make clear that a reply brief 
not in compliance with paragraph (a) would not be considered. The 
examiner would notify the appellant in this event.
    (3) Paragraph (c) would be added to provide notice that the period 
set forth in this section would be extendable under the provisions of 
Rule 136(b) for patent applications and Rule 550(c) for ex parte 
reexamination proceedings. This provision currently appears in Rule 
191(d), but would be more useful if provided in this section.
    Proposed Sec.  41.43 is proposed to be added to permit the examiner 
to furnish a supplemental examiner's answer to respond to any new issue 
raised in the reply brief. This would dispense with the need for the 
Board to remand the proceeding to the examiner to treat any new issue 
raised in the reply brief. It is proposed that a supplemental 
examiner's answer may not include a new ground of rejection. If a 
supplemental examiner's answer is furnished by the examiner, it is 
proposed to permit the appellant to file another reply brief under 
proposed Sec.  41.41 within two months from the date of the 
supplemental examiner's answer.
    The current prohibition against a supplemental examiner's answer in 
other than a remand situation would be removed to permit use of 
supplemental examiner's answers where the examiner is responding only 
to new issues raised in the reply brief. As a consequence, the 
requirements pertaining to appellants when prosecution is reopened 
under Rule 193(b)(2) would be removed.
    Section 41.43(a)(1) as proposed would permit the examiner to 
furnish a supplemental examiner's answer to respond to any new issue 
raised in a reply brief. It should be noted that an indication of a 
change in status of claims (e.g., that certain rejections have been 
withdrawn as a result of a reply brief) is not a supplemental 
examiner's answer and therefore would not give appellant the right to 
file a reply brief. Such an indication of a change in status may be 
made on form PTOL-90. The Office will develop examples to help the 
examiner determine what would or would not be considered a new issue 
warranting a supplemental examiner's answer. An appellant who disagrees 
with an examiner's decision that a supplemental examiner's answer is 
permitted under this proposed rule may petition for review of the 
decision under Rule 181. Possible examples of new issues raised in a 
reply brief include the following:

    Example 1: The rejection is under 35 U.S.C. 103 over A in view 
of B. The brief argues that element 4 of reference B cannot be 
combined with reference A as it would destroy the function performed 
by reference A. The reply brief argues that B is nonanalogous art 
and therefore the two references cannot be combined.
    Example 2: Same rejection as in Example 1. The brief argues only 
that the pump means of claim 1 is not taught in the applied prior 
art. The reply brief argues that the particular retaining means of 
claim 1 is not taught in the applied prior art.

    Paragraph (a)(1) of proposed Sec.  41.43 would also set forth the 
ability of the examiner to withdraw the final rejection and reopen 
prosecution as an alternative to the use of a supplemental examiner's 
answer. The primary examiner's decision to withdraw the final rejection 
and reopen prosecution to enter a new ground of rejection will require 
approval from the supervisory patent examiner as currently set forth in 
MPEP 1208.02.
    Paragraph (b) of proposed Sec.  41.43 would permit appellant to 
file a supplemental reply brief in response to a supplemental 
examiner's answer within two months from the date of the supplemental 
examiner's answer. That two-month time period may be extended under the 
provisions of Rule 136(b) for patent applications and Rule 550(c) for 
ex parte reexamination proceedings as set forth in proposed Sec.  
41.43(c).
    Proposed Sec.  41.47 would generally incorporate the requirements 
of Rule 194. In addition:
    (1) Paragraph (b) is proposed to be amended to require the separate 
paper requesting the oral hearing to be captioned ``REQUEST FOR ORAL 
HEARING'' and that such a request can be filed within two months from 
the date of the examiner's answer or supplemental examiner's answer.
    (2) Paragraph (d) is proposed to be added to set forth the 
procedure for handling the request for oral hearing when an appellant 
has complied with all the requirements of paragraph (b) of this 
section. Since notice to the primary examiner is a matter internal to 
the Office, it is proposed that the requirement for notice to the 
primary examiner be removed from the rule. It is anticipated that the 
primary examiner will be sent notice of the hearing time and date by e-
mail.
    (3) Paragraph (e) is proposed to be added to specifically provide 
that at the oral hearing (i) appellant may only rely on evidence that 
has been previously considered by the primary examiner and present 
argument that has been relied upon in the brief or reply brief; (ii) 
the primary examiner may only rely on argument and evidence raised in 
the answer or a supplemental answer; and (iii) that appellant opens and 
concludes the argument (i.e., the order of the argument at the hearing 
is: Appellant opens, then the primary examiner argues, then the 
appellant concludes presuming that appellant has reserved some time for 
a concluding argument).
    (4) The substance of proposed paragraph (f) is found in Rule 194. 
Exemplary situations where the Board may decide no hearing is necessary 
include those where the Board has become convinced, prior to hearing, 
that an application must be remanded for further consideration prior to 
evaluating the merits of the appeal or that the examiner's position 
cannot be sustained in any event.
    (5) Paragraph (g) is proposed to be added to provide notice that 
the periods set forth in this section are extendable under the 
provisions of Rule 136(b) for patent applications and Rule 550(c) for 
ex parte reexamination proceedings. This provision currently appears in 
Rule 191(d), but would be more useful if provided in this section.
    Proposed Sec.  41.50 would generally incorporate the requirements 
of Rule 196. In addition:
    (1) Paragraph (a)(1) would explicitly provide that the Board, in 
its principal role under 35 U.S.C. 6(b) of reviewing adverse decisions 
of examiners, may in its decision affirm or reverse the decision of the 
examiner in whole or in part on the grounds and on the claims specified 
by the examiner. The Board

[[Page 66655]]

may also remand an application to the examiner.
    (2) Paragraph (a)(2) would be added to require appellant to respond 
to any supplemental examiner's answer issued in response to a remand 
from the Board to the examiner for further consideration of a rejection 
to avoid sua sponte dismissal of the appeal as to all claims under 
appeal. It is proposed that appellant must exercise one of the 
following two options to avoid such sua sponte dismissal of the appeal 
as to all claims under appeal: (i) Request that prosecution be reopened 
before the examiner by filing a reply under Rule 111 with or without 
amendment or submission of affidavits (Rules 130, 131 or 132) or other 
evidence, and (ii) request that the appeal be maintained by filing a 
reply brief as provided in proposed Sec.  41.41. If such a reply brief 
is accompanied by any amendment, affidavit or other evidence, it shall 
be treated as a request that prosecution be reopened before the 
examiner under proposed Sec.  41.50(a)(2)(i). Any request that 
prosecution be reopened under this paragraph would be treated as a 
request to withdraw the appeal.
    A first example of a remand from the Board to the examiner for 
further consideration of a rejection is a remand for the examiner to 
provide additional explanation as to how a reference anticipates a 
claim (i.e., asking the examiner to set forth a prima facie case of 
anticipation). A second example of a remand from the Board to the 
examiner for further consideration of a rejection is a remand for the 
examiner to ascertain (i.e., set forth) the differences between the 
claimed subject matter of the primary reference in an obviousness 
rejection and then to state why the claimed subject matter as a whole 
would have been obvious at the time the invention was made to a person 
of ordinary skill in the art (i.e., asking the examiner to set forth a 
prima facie case of obviousness).
    A first example of a remand from the Board to the examiner that is 
not for further consideration of a rejection is a remand for the 
examiner to consider an Information Disclosure Statement. A second 
example of a remand from the Board to the examiner that is not for 
further consideration of a rejection is a remand for the examiner to 
consider a reply brief.
    (3) Paragraph (b)(2) would eliminate the provision relating to 
requests that the application or patent under ex parte reexamination be 
reheard, since that provision would be included in proposed Sec.  
41.52(a).
    (4) Paragraph (c) would provide that the opinion of the Board may 
include an explicit statement how a claim on appeal could be amended to 
overcome a specific rejection and that when the opinion of the Board 
included such a statement, appellant would have the right to amend in 
conformity therewith. Such an amendment in conformity with such 
statement would overcome the specific rejection, but an examiner could 
still reject a claim so-amended, provided that the rejection 
constituted a new ground of rejection.
    (5) Paragraph (d) would provide that appellant's failure to timely 
respond to an order of the Board of Patent Appeals and Interferences 
could result in the dismissal of the appeal.
    (6) Paragraph (f) would be added to provide notice that the periods 
set forth in this section are extendable under the provisions of Rule 
136(b) for patent applications and Rule 550(c) for ex parte 
reexamination proceedings. This provision currently appears in Rule 
191(d), but it would appear to be more useful if provided in this 
section.
    Proposed Sec.  41.52 would generally incorporate the requirements 
of Rule 197(b). In addition, paragraph (a) is proposed to be amended to 
incorporate the matter being deleted from Rule 196(b)(2) relating to 
the request that the application or patent under ex parte reexamination 
be reheard. In addition, the rule as proposed would permit the Board to 
simply deny a request for rehearing in appropriate cases rather than 
rendering a new opinion and decision on the request for rehearing. 
Paragraph (b) is proposed to be added to provide notice that the period 
set forth in this section is extendable under the provisions of Rule 
136(b) for patent applications and Rule 550(c) for ex parte 
reexamination proceedings. This provision currently appears in Rule 
191(d), but would be more useful if provided in this section.
    Proposed Sec.  41.54 would generally incorporate the requirements 
of Rule 197(a).
    Proposed Sec.  41.56 provides that an appeal under this proposed 
subpart is terminated by the dismissal of the appeal or when, after a 
final Board action a notice of appeal under 35 U.S.C. 141 is filed, a 
civil action under 35 U.S.C. 146 is commenced, or the time for seeking 
judicial review (Rule 304) has expired. Termination of an appeal under 
this proposed subpart is the cessation of the appeal proceeding before 
the Board and is distinct and separate from the termination of 
proceedings on an application (proposed Rule 197(b)) or the termination 
of proceedings on an ex parte reexamination proceeding which is 
concluded by the issuance of a certificate pursuant to Rule 570. A 
dismissal of an appeal results in a termination of the appeal 
proceeding before the Board. After dismissal of an appeal, an 
application is returned to the examiner to determine the proper course 
of action (e.g., possible allowance and issuance if there are allowed 
claims; possible abandonment if there are no allowed claims) as set 
forth in sections 1214 to 1215.04 of the MPEP. After dismissal of an 
appeal, an ex parte reexamination proceeding is returned to the 
examiner to issue the appropriate certificate pursuant to Rule 570.
    Proposed subpart C provides rules for the inter partes appeal under 
35 U.S.C. 315 of a rejection in an inter partes reexamination 
proceeding to the Board. This proposed subpart does not apply to any 
other Board proceeding and is strictly limited to appeals in inter 
partes reexamination proceedings filed under 35 U.S.C. 311.
    The preamble to proposed Sec.  41.60 is based on a similar 
provision in the preamble of Rule 601. The term ``proceeding'' provides 
a shorthand reference to an inter partes reexamination proceeding. The 
term ``owner'' provides a shorthand reference to the owner of the 
patent undergoing inter partes reexamination under Rule 915. The term 
``requester'' provides a generic term to describe each party other than 
the owner who requested that the patent undergo inter partes 
reexamination under Rule 915. The term ``appellant'' provides a generic 
term for any party, whether the owner or a requester, filing a notice 
of appeal or cross appeal under proposed Sec.  41.61. If more than one 
party appeals or cross appeals, each appealing or cross appealing party 
is an appellant with respect to the claims to which his or her appeal 
or cross appeal is directed. The term ``respondent'' provides a generic 
term for any requester responding under proposed Sec.  41.68 to the 
appellant's brief of the owner, or the owner responding under proposed 
Sec.  41.68 to the appellant's brief of any requester. No requester may 
be a respondent to the appellant brief of any other requester. The 
terms ``appellant'' and ``respondent'' are currently defined in Rule 
962. The proposed definition of the term ``filing'' provides a generic 
requirement that any document filed in the proceeding by any party must 
include a certificate indicating service of the document to all other 
parties to the proceeding as required by Rule 903.
    Proposed Sec.  41.61 would generally incorporate the requirements 
of current Rule 959 and the changes thereto proposed in ``Changes To 
Implement the

[[Page 66656]]

2002 Inter Partes Reexamination and Other Technical Amendments to the 
Patent Statute'', 68 FR 22343 (28 April 2003) (RIN 0651-AB57).
    Proposed Sec.  41.63(a) and (b) would replace the requirements of 
current Rule 116 with a prohibition of amendments submitted after the 
date the proceeding has been appealed pursuant to proposed Sec.  41.61, 
except for amendments permitted by proposed Sec.  41.77(b)(1) and 
amendments canceling claims where such cancellation does not affect the 
scope of any other pending claim in the proceeding. Proposed Sec.  
41.63(c) would replace the requirements of Rule 975 with a prohibition 
on the admission of affidavits and other evidence submitted after the 
case has been appealed pursuant to proposed Sec.  41.61 except as 
permitted by proposed Sec.  41.77(b)(1). This would replace the current 
practice of permitting such evidence based on a showing of good and 
sufficient reasons why such evidence was not earlier presented. The 
Office believes that prosecution of an application should occur before 
the examiner prior to an appeal being filed, not after the case has 
been appealed pursuant to proposed Sec.  41.61.
    Proposed Sec.  41.64 would generally incorporate the requirements 
of Rule 961, but would make clear that jurisdiction over a proceeding 
may be relinquished and the proceeding returned to the examining 
operation to permit processing to be completed before the Board takes 
up the appeal for decision.
    Proposed Sec.  41.66 would generally incorporate the requirements 
of Rule 963.
    Proposed Sec.  41.67 would generally incorporate the requirements 
of Rule 965 and the changes thereto proposed in ``Changes To Implement 
the 2002 Inter Partes Reexamination and Other Technical Amendments to 
the Patent Statute'', 68 FR 22343 (28 April 2003) (RIN 0651-AB57). In 
addition, it is proposed:
    (1) In paragraph (a), to require one copy of the brief rather than 
three copies consistent with the Office's move to an electronic file 
wrapper.
    (2) In paragraph (c)(1)(i), to require a statement in the brief 
identifying by name the real party in interest even if the party named 
in the caption of the brief is the real party in interest. This 
provides appellant the necessary mechanism of complying with proposed 
Sec.  41.8(a) in an appeal to the Board;
    (3) In paragraph (c)(1)(ii), to require clear identification of all 
other prior and pending appeals, interferences or judicial proceedings 
known to appellant, the appellant's legal representative, or assignee 
which may be related to, directly affect or be directly affected by or 
have a bearing on the Board's decision in the pending appeal, as well 
as to provide a mechanism of complying with proposed Sec.  41.8(b) in 
an appeal to the Board.
    (4) In paragraph (c)(1)(iii), to require both a statement of the 
status of all the claims in the proceeding (e.g., rejected, allowed or 
confirmed, withdrawn, objected to, canceled) and an identification of 
those claims that are being appealed.
    (5) In paragraph (c)(1)(v), to require a concise explanation of the 
subject matter defined in each of the independent claims involved in 
the appeal and which concise explanation shall refer to the 
specification by page and line number, and to the drawings, if any, by 
reference characters. For each claim involved in the appeal, it is 
proposed that every means plus function and step plus function as 
permitted by 35 U.S.C. 112, sixth paragraph, be identified and that the 
structure, material, or acts described in the specification as 
corresponding to each claimed function be set forth with reference to 
the specification by page and line number, and to the drawing, if any, 
by reference characters. Any brief filed by an appellant who is 
represented by a registered practitioner that fails to provide a 
summary of the claimed subject matter which references the 
specification by page and line number, and to the drawing, if any, by 
reference characters or which fails to identify every means plus 
function and step plus function as permitted by 35 U.S.C. 112, sixth 
paragraph, would be in non-compliance with this section and would be 
handled as provided in proposed paragraph (d) of this section.
    (6) In paragraph (c)(1)(vi), to require a concise statement listing 
each issue presented for review. An example of a concise statement is 
claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being 
anticipated by U.S. Patent No. X.
    (7) To delete the current grouping of claims requirement set forth 
in Rule 965(c)(7). The general purpose served by Rule 965(c)(7) is 
addressed in proposed Sec.  41.67(c)(1)(viii). The existing grouping of 
claims requirement has led to many problems such as (i) Grouping of 
claims across multiple rejections (e.g., claims 1-9 rejected under 35 
U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103 
over A and the appellant states that claims 1-15 are grouped together); 
(ii) claims being grouped together but argued separately (e.g., claims 
1-9 rejected under Sec.  102 over A, the appellant groups claims 1-9 
together but then argues the patentability of claims 1 and 5 
separately); and (iii) examiners disagreeing with the appellant's 
grouping of claims.
    (8) In paragraph (c)(1)(vii), to set forth that any arguments or 
authorities not included in a brief permitted in this section or filed 
pursuant to proposed Sec. Sec.  41.68 and 41.71 will be refused 
consideration by the Board, unless good cause is shown, and to require 
a separate heading for each ground of rejection in place of the 
previous grouping of claims section of the brief. For each ground of 
rejection applying to two or more claims, the claims may be argued 
separately or as a group. When an appellant argues as a group multiple 
claims subject to the same ground of rejection, the Board may select a 
single claim from that group of claims and treat its disposition of a 
ground of rejection of that claim as applying to the disposition of 
that ground of rejection of all claims in the group of claims. 
Notwithstanding any other provision of this paragraph, it is proposed 
to make explicit by rule that an appellant's failure to argue 
separately claims that appellant has grouped together would constitute 
a waiver of any argument that the Board must consider the patentability 
of any grouped claim separately. See In re McDaniel, 293 F.3d 1379, 
1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002) (interpreting analogous 
Rule 192(c)(7) to require separate treatment of separately rejected 
claims). It is further proposed that any claim argued separately should 
be placed under a subheading identifying the claim by number and that 
claims argued as a group should be placed under a subheading 
identifying the claims by number.
    (9) In paragraph (c)(1)(vii), to state that ``Merely pointing out 
differences in what the claims cover is not an argument as to why the 
claims are separately patentable.'' This statement in slightly 
different form is in Rule 965(c)(7).
    (10) In paragraph (c)(1)(vii), to eliminate subparagraphs (i) 
through (v) of Rule 965(c)(8), which relate to the manner in which 
arguments are to be made. Although providing useful advice as to what 
an effective argument ought to include, these provisions have often 
been ignored by appellants and, for the most part, have not been 
enforced as provided in Rule 965(d).
    (11) To add paragraph (c)(1)(ix) to require appellant to include an 
evidence appendix of any evidence relied upon by appellant in the 
appeal with a statement setting forth where that evidence was entered 
in the record by the examiner so that the Board would be

[[Page 66657]]

able to reference such evidence easily during their consideration of 
the appeal.
    (12) To add paragraph (c)(1)(x) to require appellant to include a 
related proceedings appendix containing copies of decisions rendered by 
a court or the Board in any proceeding identified pursuant to proposed 
Sec.  41.67(c)(1)(ii) so that the Board can take into consideration 
such decisions.
    (13) Add paragraph (c)(2) to exclude any new or non-admitted 
amendment, affidavit or other evidence from being included in an 
appellant's brief.
    Proposed Sec.  41.68 would generally incorporate requirements found 
in Rule 967 and the changes thereto proposed in ``Changes To Implement 
the 2002 Inter Partes Reexamination and Other Technical Amendments to 
the Patent Statute'', 68 FR 22343 (28 April 2003) (RIN 0651-AB57), and 
changes similar to those proposed in Sec.  41.67. In addition, it is 
proposed to add paragraph (b)(2) to exclude any new or non-admitted 
amendment, affidavit or other evidence from being included in a 
respondent's brief.
    Proposed Sec.  41.69 would generally incorporate requirements found 
in Rule 969.
    Proposed Sec.  41.71 would generally incorporate requirements found 
in Rule 971 and the changes thereto proposed in ``Changes To Implement 
the 2002 Inter Partes Reexamination and Other Technical Amendments to 
the Patent Statute'', 68 FR 22343 (April 28, 2003) (RIN 0651-AB57).
    Proposed Sec.  41.73 would generally incorporate the requirements 
of Rule 973. In addition:
    (1) Paragraph (b) would require the separate paper requesting the 
oral hearing to be captioned ``REQUEST FOR ORAL HEARING'' and that such 
a request can be filed within two months from the date of the 
examiner's answer.
    (2) Paragraph (d) would be added to provide the procedure for 
handling the request for oral hearing in which a party has complied 
with all the requirements of paragraph (b) of this section. Since 
notice to the primary examiner is a matter internal to the Office, it 
is proposed that the requirement for notice to the primary examiner be 
removed from the rule. It is anticipated that the primary examiner will 
be sent notice of the hearing time and date by e-mail.
    (3) Paragraph (e) would be added to specifically provide that at 
the oral hearing (i) parties may only rely on evidence that has been 
previously considered by the primary examiner and present argument that 
has been relied upon in the briefs; (ii) the primary examiner may only 
rely on argument and evidence relied upon in the answer; and (iii) that 
the Board will determine the order of the arguments presented at the 
oral hearing.
    (4) The substance of proposed paragraph (f) is found in Rule 194. 
Exemplary situations where the Board might decide no hearing is 
necessary include those where the Board has become convinced, prior to 
hearing, that the proceeding must be remanded for further consideration 
prior to evaluating the merits of the appeal.
    Proposed Sec.  41.77 would generally incorporate the requirements 
of Rule 977 and the changes thereto proposed in ``Changes To Implement 
the 2002 Inter Partes Reexamination and Other Technical Amendments to 
the Patent Statute'', 68 FR 22343 (April 28, 2003) (RIN 0651-AB57).
    Proposed Sec.  41.79 would generally incorporate the requirements 
of current Rule 979 concerning rehearing before the Board. Paragraph 
(b) is proposed to be amended to generally incorporate the requirements 
of current Rule 979(d). Paragraph (c) is proposed to be amended to 
generally incorporate the requirements of current Rule 979(b). 
Paragraph (d) is proposed to be amended to generally incorporate the 
requirements of current Rule 979(c). Paragraph (e) is proposed to be 
amended to generally incorporate the requirements of current Rule 
979(g).
    Proposed Sec.  41.81 would generally incorporate the requirements 
of current Rule 979(e) and the changes thereto proposed in ``Changes To 
Implement the 2002 Inter Partes Reexamination and Other Technical 
Amendments to the Patent Statute'', 68 FR 22343 (April 28 2003) (RIN 
0651-AB57).
    Proposed Sec.  41.83 would incorporate some of the requirements 
found in current Rule 979(f) and would provide that an appeal by a 
party under this proposed subpart is terminated by the dismissal of 
that party's appeal, or when, after a final Board action, a notice of 
appeal under 35 U.S.C. 141 is filed or the time for seeking judicial 
review (Rule 983) has expired. Termination of an appeal by a party 
under this proposed subpart is the cessation of that appeal proceeding 
before the Board and is distinct and separate from the termination of 
proceedings on an inter partes reexamination proceeding which is 
concluded by the issuance of a certificate pursuant to Rule 997.
    Proposed subpart D would provide rules for contested cases. 
Contested cases are predominantly patent interferences under 35 U.S.C. 
135(a), but also include United States Government ownership contests 
under 42 U.S.C. 2182[3] and 2457(d). The proposed rules in this 
proposed subpart would be more general than the existing rules for 
three reasons. First, while three different statutory proceedings are 
currently conducted under ``interference rules'', the rules are only 
tailored to patent interferences. Second, the considerable detail of 
the current rules has fostered a tendency toward technical compliance 
with the rules rather than actually proving a case (e.g., Hillman v. 
Shyamala, 55 USPQ2d 1220, 1221 (BPAI 2000)). Third, experience with the 
current rules suggests that attempts to codify the procedures for 
contested cases too precisely frustrates the policy of administering 
interferences in a fast, inexpensive, and fair manner. Consequently, 
the rules would be simplified to give parties adequate guidance about 
the procedures while permitting the Board to design an approach 
appropriate to each case. The proposed rules would also better describe 
the practice for most interferences declared since October 1998. A more 
complete understanding of existing practice as it relates to the 
current rules can be obtained from reading the Interference Trial 
Section's Standing Order, which can be found at http://www.uspto.gov/web/offices /dcom/bpai/standing 2003May.pdf.
    Proposed Sec.  41.100 would define two terms. The term ``business 
day'' would be defined in a manner consistent with 35 U.S.C. 21(b) to 
exclude Saturday, Sunday, and Federal holidays, when the closure of the 
Board may affect the Board's, or a party's, ability to perform an 
action.
    The term ``involved'' appears in 35 U.S.C. 135(a) with respect to 
claims and is implicitly defined in Rule 601(f) (for claims) and in 
Rule 601(l) (for applications), but is not explicitly defined in the 
current rules. The proposed rule would expressly define ``involved'' as 
designating any patent application, patent, or claim that is the 
subject of the contested case.
    Proposed Sec.  41.101 would follow the practice in Rule 611(a) and 
(b) for notifying parties of a contested case. As a courtesy, the Board 
would make reasonable efforts to provide notice to all parties. Note 
that failure to maintain a current correspondence address may result in 
adverse consequences. Cf. Ray v. Lehman, 55 F.3d 606, 610, 34 USPQ2d 
1786, 1788-89 (Fed. Cir. 1995) (finding notice of maintenance fee 
provided to obsolete, but not updated, address of record to have been 
adequate).
    Proposed Sec.  41.102 would require completion of examination for 
most applications (and of reexamination for most patents) before the 
Board will institute a contested case. Contested

[[Page 66658]]

cases are generally much more expensive than ex parte proceedings. 
Consequently, it makes little sense to initiate a contested case before 
all patentability issues (other than those that are the subject of the 
contested case) have been resolved. Brenner v. Manson, 383 U.S. 519, 
528 n.12 (1966) (rejecting the proposition that an interference must be 
declared when the applicant's interfering claims are unpatentable). The 
main exceptions would be title contests under 42 U.S.C. 2182 and 
2457(d), where control of the examination may itself be a 
consideration.
    Proposed Sec.  41.103 would follow the file jurisdiction practice 
in Rules 614 and 615 except to generalize the temporary transfer of 
jurisdiction to include parts of the Office other than the examining 
corps, including, for example, the Office of Public Records. Such 
transfers of jurisdiction will generally be for short periods and for 
limited purposes.
    Proposed Sec.  41.104(a) would follow the practice of Rule 610(e), 
which permits an administrative patent judge wide latitude in 
administering interferences. The waiver provision of proposed Sec.  
41.104(b) would be modeled on Rule 183 and would balance the ideal of 
precise rules for most proceedings against the need for flexibility to 
achieve reasonably fast, inexpensive, and fair proceedings. The 
decision to waive a procedural requirement would be committed to the 
discretion of the administrative patent judge. This provision would 
eliminate the need for repeatedly stating exceptions throughout 
proposed subpart D. For instance, the current rules have many instances 
where a time is set in a rule, but the rule also permits an 
administrative patent judge to adjust the time. Proposed Sec.  
41.104(c) would make clear that any default times set by rule may be 
changed by order. ``Times'' in paragraph (c) would include both dates 
and durations.
    Proposed Sec.  41.105 would codify existing practice prohibiting ex 
parte communications about a contested case with an official actually 
conducting the proceeding. Initiation of an ex parte communication 
might result in sanctions against the initiating party. The prohibition 
would include communicating with any member of a panel acting in the 
proceeding or seeking supervisory review in a proceeding without 
including the opposing party in the communication. In general, it is 
wisest to avoid substantive discussions of a pending contested case 
with a Board official. The prohibition on ex parte communications would 
not extend to (1) ministerial communications with support staff (for 
instance, to arrange a conference call), (2) hearings in which opposing 
counsel declines to participate, (3) informing the Board in one 
proceeding of the existence or status of a related Board proceeding, or 
(4) reference to a pending case in support of a general proposition 
(for instance, citing a published opinion from a pending case or 
referring to a pending case to illustrate a systemic problem).
    Proposed Sec.  41.106 would provide guidance for the filing and 
service of papers. Under proposed Sec.  41.106(a), papers to be filed 
would be required to meet standards very similar to those required in 
patent prosecution, Rule 52(a), and in filings in the Court of Appeals 
for the Federal Circuit, Fed. R. App. P. 32. Proposed Sec.  
41.106(a)(1) would permit a party to file papers in either A4 format or 
8\1/2\-inch x 11-inch format, but not to alternate between formats. See 
Standing Order ] 3.3. At present, the Board prefers papers to be filed 
in 8\1/2\-inch x 11-inch format because the present filing system is 
best adapted to this paper format. Electronic filing might eventually 
render this preference moot.
    Proposed Sec.  41.106(b) would provide guidance specific to papers 
other than exhibits. Proposed Sec.  41.106(b)(1) would codify current 
practices for the cover sheet of a paper. Standing Order ]] 3.1, 3.5 
and 3.6; cf. Fed. R. App. P. 32(a)(2). The caption aids in the prompt 
matching of the paper to its file. The header expedites communications 
between the Board staff and the party in the event that some prompt 
action, such as the correction of a filing defect, is necessary. The 
current practice of requiring a pink cover sheet aids in the processing 
and filing of papers at the Board and facilitates use of the 
administrative record by clearly indicating the beginning of each 
paper.
    Proposed Sec.  41.106(b)(2), which would require holes at the top 
of the paper, would codify the practice under Standing Order ] 3.4, 
which is based on Local Civil Rule 5.1(f) (1999) of the United States 
District Court for the District of Columbia. The proposed rule would 
facilitate entry of the paper in the administrative record.
    The bar in proposed Sec.  41.106(b)(3) against incorporation by 
reference and combination of papers would minimize the chance that an 
argument will be overlooked and would eliminate abuses that arise from 
incorporation and combination. In DeSilva v. DiLeonardi, 181 F.3d 865, 
866-67 (7th Cir 1999), the court rejected ``adoption by reference'' as 
``a self-help increase in the length of the * * * brief'' and noted 
that ``incorporation is a pointless imposition on the court's time. A 
brief must make all arguments accessible to the judges, rather than ask 
them to play archaeologist with the record.'' The same rationale 
applies to Board proceedings.
    Proposed Sec.  41.106(b)(4) would provide rules for the citation of 
authority. Parallel citation to a West Company reporter and to the 
United States Patents Quarterly, particularly for patent decisions of 
Federal courts, is the norm in patent law. See Federal Circuit Rule 
28(e). Pinpoint citations, also called ``jump citations'', are the norm 
in legal practice. See The Bluebook: A Uniform System of Citation Sec.  
3.3(a) (Columbia L. Rev. Ass'n et al. 17th ed. 2000). The citation of 
secondary authority would be discouraged whenever primary authority 
exists. For instance, a citation to the MPEP is unhelpful if the MPEP 
itself is merely summarizing binding case law.
    Proposed Sec.  41.106(d) would provide additional guidance for 
special modes of filing. Proposed Sec.  41.106(d)(1) would provide a 
mailing address. Note that the proposed rule would encourage the use of 
the EXPRESS MAIL[reg] service of the United States Postal Service. Mail 
sent by other means would not be considered to have been filed until it 
is actually received. Cf. proposed Sec.  41.106(e)(3), which would 
permit service by methods at least as fast and reliable as EXPRESS 
MAIL[reg]. Proposed Sec.  41.106(d)(2) would permit other modes of 
filing. For instance, the Board is currently working on a pilot program 
for electronic filing in contested cases. The diversity of possible 
filing forms and the varying ability of parties to cope with electronic 
filing requires a case-by-case determination of whether to place a 
proceeding in the pilot program. Practitioners permitted to file 
electronically are encouraged to agree to do so.
    Proposed Sec.  41.106(e)(1) would require papers to be served when 
they are filed if they have not already been served. Under current 
practice, the usual instance in which filing before service is 
authorized is the case of preliminary statements where prior filing is 
a mechanism for ensuring that a party states its priority case based on 
what it knows about its own proofs rather than on what it knows about 
what the other party intends to prove. Proposed Sec.  41.106(e)(3) 
would provide for expedited service, which would place the parties on 
an equal footing by reducing the disparities that can arise from the 
use of different forms of delivery.

[[Page 66659]]

    Proposed Sec.  41.106(f) would provide rules for certificates of 
service. Proposed Sec.  41.106(f)(1) would require the certificate to 
be incorporated into each paper other than exhibits. The filing of 
additional papers like certificates of service and transmittal letters 
as separate papers places a file maintenance burden on the Board. The 
filing of transmittal letters is strongly discouraged. Exhibits 
constitute the exception to the rule since the current practice permits 
the filing of most or all exhibits at one time. When the exhibits are 
filed at the same time, the certificate may be incorporated into the 
exhibit list. See proposed Sec.  41.154(d).
    Section 41.107 of proposed subpart D would be reserved. It is 
likely that rules for electronic filing and service will evolve in the 
next few years. When they are ready for codification, Sec.  41.107 
would be the natural place for them to appear.
    Proposed Sec.  41.108 would require each party to identify its 
counsel, if any. The proposed rule would also follow Rule 613(a), which 
permits the Board to require the appointment of a lead counsel.
    Proposed Sec.  41.109 would follow Rule 612 in permitting parties 
to obtain copies of certain Office files directly related to the 
contested case. Current practice is to make the necessary files 
available for copying immediately after the Board initiates the 
proceeding. Standing Order ] 6. After that initial opportunity passes, 
files typically become less available because they are often required 
in other parts of the Office. Proposed Sec.  41.109(c) would require a 
party that has not received copies of a requested file to notify the 
Board of the problem promptly. A delay in receiving a file resulting 
from a failure to order a file promptly, or to notify the Board 
promptly that a file has not been received, would not justify a delay 
in the proceeding.
    The proposed rule would depart from Rule 612 by eliminating the 
requirement for withholding declarations under Rule 131 and statements 
under Rule 608. One reason for withholding such papers is that they 
give the opponent an advanced view of the applicant's priority case, 
which is said to be unfair (and can enable fraud by the other party in 
stating its priority case). This practice, however, is asymmetric 
because the withholding only applies to applicants while a patentee's 
Rule 131 declaration is publicly available. Moreover, to the extent the 
applicant has relied on the declaration to obtain allowable claims, it 
is an important element in the prosecution history. On balance, the 
goals of examination are better served by permitting early access to 
such statements. Nothing in the proposed rule would prevent the Board 
from authorizing the withholding of such declarations on a showing of 
good cause.
    Proposed Sec.  41.110(a) would require a single clean set of the 
claims, analogous to the requirement for amendments ``in clean form'' 
in Rule 121. The annotated copy required in proposed Sec.  41.110(b) 
would provide the opposing party and the Board with a clear 
understanding of how the party construes its own claim. The clean and 
annotated copies would provide everyone in the proceeding with a 
convenient reference and help to identify mistakes, such as amendments 
that were not entered or portions of the disclosure that were not 
printed, before the proceeding begins in earnest. Cf. Southwest 
Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1296, 56 USPQ2d 1161, 
1173 (Fed. Cir. 2000) (critical portion of disclosure missing). 
Moreover, identically worded claims in separate applications claims 
can, when properly construed in view of the specification, have 
patentably distinct scopes. This possibility is particularly important 
for claims written in the form permitted under 35 U.S.C. 112[6], where 
identically worded means or steps might not correspond to equivalent 
structures, materials, or acts in the respective disclosures. For 
instance, a limitation requiring ``means for fastening'' might refer to 
rivets in one specification and glue in another, which on the facts of 
the case might not prove to be equivalent. Here is an example of the 
annotation that would be required (except the bracketed portion should 
also be shown in bold face): `` . . . means for fastening {Fig. 6, item 
3; also page 17, lines 9-22{time}  . . . .''
    Proposed Sec.  41.120 would provide for notice of requested relief 
and the basis for that relief in contested cases. Similar notices are 
already common in patent interferences, e.g., a preliminary statement, 
a statement under Rule 608, and a motions list currently required at 
the first status conference. These notices can be effective mechanisms 
for administering cases efficiently and for placing opponents on 
notice. Interferences suggested under proposed Sec.  41.202(a) would 
already include a notice from at least one party, although the Board 
could require more detail.
    Proposed Sec.  41.120(b) would apply present Rule 629(e) regarding 
the effect of preliminary statements to notices generally. Preliminary 
statements are binding on the submitting party. The proposed rule would 
make other such notices presumptively binding because compliance with 
current notice practices is highly variable and can have the effect of 
prejudicing the party that complies most completely with a notice 
requirement. The filing party should not be allowed to hide behind an 
ambiguous notice. For instance, a notice that alleges a date of 
conception ``no later than 20 June 2000'' would be construed as 
limiting the submitting party to proving a date no earlier than 20 June 
2000. Note that a notice is not evidence except to the extent it 
qualifies as a party-opponent admission. See Federal Rule of Evidence 
801(d)(2). Proposed Sec.  41.120(c) would permit correction of a notice 
after the time set for filing the notice, but would set a high 
threshold for entry of the correction.
    Proposed Sec.  41.121(a)(1) would redefine motions practice under 
Rule 633(a), (b), (c)(2), (c)(3), (c)(4), (f) and (g) to focus more 
specifically on the central issue in the contested case. Current 
practice often permits motions that have little to do with the point of 
the contest. For instance, a motion for unpatentability in an 
interference is not helpful if it does not result in a loss of 
standing, a change in the scope of the count, or a change in the 
accorded benefit.
    Proposed Sec.  41.121(a)(1)(iii) would permit a motion for judgment 
in the contest, which can include an attack on standing as well as a 
motion for relief on the central issue of the contest. For instance, 
priority in interferences would be raised through motions. This 
departure from current practice would address a potential disadvantage 
to the senior party, which currently may have to make decisions about 
the junior party's priority case after the junior party has provided 
its evidence but before it explains the evidence. The prohibition on 
motions directed to priority and derivation in Rule 633(a) would be 
removed, although a decision on such motions would likely be contingent 
on decisions regarding the scope of the interference. Consequently, the 
Board might not authorize the filing of a priority or derivation motion 
until after scope issues have been resolved.
    Proposed Sec.  41.121(a)(2) and (a)(3) would modify the responsive 
motion and miscellaneous motion practice under Rules 633(i) and (j), 
634, and 635 to ensure that the proceeding remains focused. For 
instance, current practice allows a motion to correct inventorship at 
any time (Rule 634). Under the proposed rules, a motion to correct 
inventorship could be an appropriate responsive motion in the face of a 
patentability attack or in view of a priority statement, but would not 
be permitted without some connection to an issue that must be resolved 
in the

[[Page 66660]]

contested case. The authorization requirement in proposed Sec.  
41.121(a)(2) would also provide a mechanism for limiting abusive 
practices, such as moving to add many more claims than are necessary to 
cure a problem. Proposed Sec.  41.121(a)(3) would provide for 
miscellaneous motions, which would offer a mechanism for requesting 
relief on procedural issues and other issues tangential to 
patentability and priority. See proposed Sec.  41.104. A miscellaneous 
motion would not be considered a petition; hence, no petition fee is 
required. See proposed Sec.  41.3(b). Panel review of a decision on a 
miscellaneous motion would apply an abuse of discretion standard. See 
proposed Sec.  41.125(c)(5); Rule 655(a).
    Proposed Sec.  41.121(b) would place the burden of proof on the 
moving party, following Rule 637(a). Since priority would be presented 
as a motion, this paragraph would change the allocation of burden of 
proof established in Rule 657(a). Cf. Brown v. Barbacid, 276 F.3d 1327, 
1332, 61 USPQ2d 1236, 1239 (Fed. Cir. 2002) (construing Rule 657(a) to 
require the ultimate burden of proof on priority to remain on the 
junior party). A motion that fails to justify relief on its face could 
be dismissed or denied without regard to subsequent briefing.
    Proposed Sec.  41.121(c)(1) would follow Rule 637(a) regarding the 
general contents of motions, but would also codify the current practice 
of requiring a separate paper for each motion. The separate paper 
requirement would reduce the chances that an argument will be 
overlooked and would generally reduce the complexity of any given 
paper. The numbered paragraphs stating material facts in proposed Sec.  
41.121(c)(1)(ii) should be short, ideally just a sentence or two, to 
permit the opposing party to admit or deny each fact readily. Under 
proposed Sec.  41.121(c)(1)(iii), sloppy motion drafting would be held 
against the moving party. A vague argument or citation to the record 
creates inefficiencies for the Board and is fundamentally unfair to the 
opposing party. Cf. Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 
1351, 53 USPQ2d 1580, 1589 (Fed. Cir. 2000) (declining to scour the 
record to make out an argument for a party).
    Proposed Sec.  41.121(c)(2) would require the movant to make 
showings ordinarily required for the requested relief in other parts of 
the Office. Many actions, particularly corrective actions like changes 
in inventorship, filing reissue applications, and seeking a retroactive 
foreign filing license, are governed by other rules of the Office. By 
requiring the same showings, the proposed rule would keep practice 
uniform throughout the Office. The Board could temporarily release the 
affected file to the part of the Office usually responsible for 
administering the rule to ensure consistency or otherwise take 
advantage of that entity's expertise. See proposed Sec.  41.103.
    Proposed Sec.  41.121(d) would provide authority comparable to Rule 
641, which allows an administrative patent judge to raise questions of 
patentability. The proposed rule would be broader because it would 
permit the Board to inquire into other issues that may arise, such as 
whether there continues to be an interference-in-fact in view of a 
claim construction reached in deciding a motion. In this regard, it 
would be akin to an order to show cause under Rule 640(d)(1).
    Proposed Sec.  41.122 would address the perennial problem of new 
arguments or requests for relief creeping in at inappropriate times. 
The proposed rule would largely adopt the present practice in Standing 
Order ] 13.7, but would extend the practice to oppositions as well. 
Note that a movant need not anticipate all possible bases for 
opposition, but may be held accountable for positions apparently 
inconsistent with those taken by the movant during prosecution of an 
application. For instance, a motion to add a broad claim to an 
application in which the claims have been narrowed to avoid prior art 
should explain why the new claim is patentable, not only in terms of 
written description in the specification but also in terms of the 
previously applied prior art. The Board could expunge improper papers. 
See proposed Sec.  41.7(a); Winter v. Fujita, 53 USPQ2d 1234, 1250 
(BPAI 1999).
    Proposed Sec.  41.123(a) would maintain the practice of having the 
Board set the times for filing motions found in Rule 636, but would 
eliminate the default times provided in that rule. Proposed Sec.  
41.123(a)(1)-(3) would provide default times for filing an opposition, 
a reply, and a responsive motion, but would not themselves authorize 
the filing of an opposition, a reply, or a responsive motion.
    Proposed Sec.  41.123(b) would provide requirements for 
miscellaneous motions. A conference call would be required before the 
motion is filed because most relief requested in such motions can be 
granted (or denied) in a conference call. In other cases, the call 
would permit the setting of a schedule to accommodate full briefing of 
the issue. This telephone practice has greatly increased speed and 
reduced costs associated with miscellaneous motion practice.
    A party is not entitled to an oral argument. In re Bose Corp., 772 
F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985). Hence, a party could 
request an oral argument under proposed Sec.  41.124(a), but requests 
would not be automatically granted. Factors considered in setting an 
oral argument might include the usefulness of an oral argument to the 
administrative patent judge or panel and the burden on an opponent of 
attending an oral argument. A corollary is that not all requested 
issues would necessarily be heard. Under proposed Sec.  41.124(b), the 
parties would be required to file three working copies of the papers to 
be considered for the panel if the hearing is set for a panel. This 
requirement would be comparable to Rule 656(e) and Federal Circuit Rule 
31(b).
    Proposed Sec.  41.124(c) would provide a default time of 20 minutes 
per party for oral arguments at the Board because they are not 
evidentiary hearings. This default time would be comparable to the 15 
minutes typically provided for oral argument at the Court of Appeals 
for the Federal Circuit. Fed. Cir. R. 34, practice note (2001).
    Proposed Sec.  41.124(d) would permit the use of demonstrative 
exhibits. Visual aids requiring special equipment would be discouraged 
since the argument time would be short and cumbersome exhibits would 
tend to detract from the user's argument. The use of a compilation with 
each demonstrative exhibit separately tabbed would be encouraged, 
particularly when a court reporter is transcribing the oral argument 
because the tabs provide a convenient way to record which exhibit is 
being discussed. It is helpful to provide a copy of the compilation to 
each member of the panel hearing the argument.
    Proposed Sec.  41.124(e) would permit the transcription of the 
argument. The transcription would become part of the record and could 
be helpful to the panel in reaching its decision. See Okajima v. 
Bourdeau, 261 F.3d 1350, 1356, 59 USPQ2d 1795, 1798 (Fed. Cir. 2001) 
(noting the role of the transcript in the Board's decision). To be 
helpful, however, the transcript would have to be filed promptly.
    Proposed Sec.  41.125(a) would maintain the practice under Rule 
640(b) of addressing issues in a manner that is both fair and 
efficient. Noted with approval in Berman v. Housey, 291 F.3d 1345, 
1352, 63 USPQ2d 1023, 1028 (Fed. Cir. 2002). A decision on a motion 
might be logically contingent on the outcome of another motion even 
though

[[Page 66661]]

the motion is not expressly identified as a contingent motion. 
Moreover, efficient allocation of Office resources might require 
deferral of a motion or referral of a matter to another part of the 
Office. Given the great cost of contested cases for both parties and 
the Office, the Board will continue to focus on efficient 
administration consistent with the requirements of due process.
    Proposed Sec.  41.125(b) would clarify the current practice that a 
decision short of judgment is not final. It would also codify the 
current practice of having panel decisions bind further action during 
the proceeding. The practice of having panel decisions bind further 
proceedings has eliminated much of the uncertainty and added cost that 
results from deferring any final decision until the end of the 
proceeding. A party dissatisfied with an interlocutory decision on 
motions should promptly seek rehearing rather than waiting for a final 
judgment. A panel could, when the interests of justice require it, 
reconsider its decision at any time in the proceeding prior to final 
judgment. A belated request for rehearing would rarely be granted, 
however, because its untimeliness would detract from the efficiencies 
that have resulted from making interlocutory decisions binding.
    Proposed Sec.  41.125(c) would adopt the time for requesting 
rehearing from Rule 640(c) and the procedural requirements of the last 
two sentences of Rule 655(a). Since 35 U.S.C. 6(b) requires a panel 
decision for finality, a party should request rehearing by a panel to 
preserve an issue for judicial review. A panel will apply the 
deferential abuse-of-discretion standard to procedural decisions on 
rehearing.
    Proposed Sec.  41.126 would adopt the arbitration practice of Rule 
690. Although parties may submit any issue to binding arbitration, the 
Board might independently decide any questions of patentability. The 
proposed rule would also clarify that the Board could independently 
determine questions like whether an interference-in-fact exists or what 
an Office rule means.
    Proposed Sec.  41.127(a)(1) would adopt the estoppel provision of 
Rule 658(c). Note that while the second sentence of the proposed 
paragraph would continue to focus on the losing party, a decision of no 
interference-in-fact could also estop a party from provoking an 
interference with the same opponent for the same subject matter under 
the first sentence. Cf. Rule 665, which cites Rule 658(c).
    Proposed Sec.  41.127(a)(2) restates the final disposal provision 
of Rule 663. Proposed Sec.  41.127(b) would restate the conditions in 
Rule 662 under which the Board would infer a concession of the contest. 
Proposed Sec.  41.127(c) would restate the recommendation provision of 
Rule 659.
    The Director has authority to prescribe a time for seeking judicial 
review. 35 U.S.C. 142 and 146[1]. The prescribed time (2 months) is set 
in Rule 304(a)(1), but can be extended on petition under Rule 
304(a)(3). Proposed Sec.  41.127(d) would provide a time for requesting 
a rehearing and would delegate to the Board limited discretion to toll 
the time for seeking judicial review for the pendency of the request. 
Tolling the time for seeking judicial review would codify the result of 
In re Graves, 69 F.3d 1147, 1149-51, 36 USPQ2d 1697, 1698-1700 (Fed. 
Cir. 1995), but such tolling would not be automatic. The Board would 
not toll the time for seeking review where the request for rehearing 
appears to be a delaying tactic, for example if a party files requests 
serially.
    Proposed Sec.  41.128 would define the term ``termination'', which 
appears several times in 35 U.S.C. 135(c). Section 135(c) renders 
settlement agreements and patents involved in or resulting from the 
interference unenforceable if the parties fail to file the agreements 
prior to termination. The Office is required to provide notice of the 
requirement within a reasonable time before termination or else the 
agreement may be filed up to sixty days after notice is provided. The 
Office has generally tried to minimize the potential traps for the 
unwary by construing the requirements liberally. Over time, this has 
led to divergent constructions of ``termination''. In Hunter v. 
Beissbarth, 15 USPQ2d 1343, 1344 n.1 (Comm'r Pat. 1990), the question 
of when such agreements must be filed was liberally construed to extend 
the time until after judicial review was complete. In contrast, the 
question of what agreements are covered was limited to agreements 
reached during proceedings before the Board in Johnston v. Beachy, 60 
USPQ2d 1584, 1588 (BPAI 2001). A third construction is possible in 
which the interference proceeding is tolled during the judicial 
proceeding such that both Hunter and Johnston are correct. In the 
proposed rule, the Director would construe section 135(c) to mean the 
interference terminates when the time for seeking judicial review under 
35 U.S.C. 142 and 146[1] expires, whether such review is sought or not. 
This construction offers several practical benefits. First, by limiting 
the number of agreements covered, the risk of inadvertent failure to 
file is correspondingly limited. Second, although parties will have 
less time to file than they would under the Hunter construction, the 
outer bound for timely filing will be much closer to the date of all 
affected agreements, thus reducing the likelihood of an accidental 
failure to file. Finally, since the Director has authority to extend 
the time for seeking judicial review, sections 142 and 146[1], the 
proposed definition permits an additional route of relief when such 
relief, though otherwise unavailable, would be in the interests of 
justice.
    Proposed Sec.  41.128(a) would codify the holding of In re Graves, 
69 F.3d 1147, 1151, 36 USPQ2d 1697, 1699-1700 (Fed. Cir. 1995), that 
whether the time for seeking judicial review has run or not, a timely 
notice of appeal on an appealable decision terminates further Board 
jurisdiction to act on the merits. Proposed Sec.  41.128(b) would 
extend the same principal to the timely commencement of a district 
court action under 35 U.S.C. 146 seeking review of an appealable 
decision.
    Proposed Sec.  41.129(a) would restate Rule 616 on sanctions, but 
would expressly add the examples of misleading arguments and dilatory 
tactics to the list of reasons for sanctions. A party always has a duty 
of candor toward a tribunal. Hence, while the proposed rules no longer 
expressly require a movant to show the patentability of a proposed 
claim to the movant, the filing of a claim that the party knew or 
should have known to be unpatentable would be inconsistent with that 
duty of candor. The concern about dilatory tactics arises from the 
potential for abuse inherent in patent term adjustments for time spent 
in an interference provided in 35 U.S.C. 154(b)(1)(C).
    Proposed Sec.  41.129(b) would restate the list of sanctions 
provided in Rule 616, but would add terminal disclaimer as a sanction. 
Terminal disclaimer would be an appropriate sanction in cases where a 
party has caused needless delay. The sanction of expunging papers would 
be consistent with proposed Sec.  41.7(a), under which unauthorized 
papers may be expunged. Neither the list of sanctionable acts nor the 
list of sanctions should be considered exhaustive.
    Proposed Sec.  41.150(a) would restate the present policy of 
limited discovery, consistent with the goal of providing contested 
proceedings that are fast, inexpensive, and fair. Proposed Sec.  
41.150(b) would provide for automatic discovery of materials cited in 
the specification of an involved or benefit disclosure. The proposed 
rule would place the parties on a level playing field since the party 
that relied on the requested materials in its disclosure

[[Page 66662]]

would ordinarily have easier access to such materials than the 
requester and would be in a better position to ensure that the 
requested material is the material cited. It would also eliminate many 
routine discovery requests and disputes. The requirement would not be a 
requirement for a party to create materials or to provide materials not 
cited. See Scott v. Gbur, 62 USPQ2d 1959 (BPAI 2002) (nonprecedential). 
Any request under proposed Sec.  41.150(b) should come early in the 
proceeding to ensure that the requesting party will have timely access 
to such materials. Proposed Sec.  41.150(c) would restate existing 
practice under Rule 687 regarding additional testimony.
    Proposed Sec.  41.151 would continue the practice under Rule 671(i) 
of making failure to comply with the rules a basis for challenging 
admissibility.
    Proposed Sec.  41.152 would continue the current practice of using 
the Federal Rules of Evidence in contested cases. Experience since this 
practice was implemented in 1984 has shown it to be beneficial without 
being unduly restrictive for either the parties or the Board. Moreover, 
the Federal Rules of Evidence embrace a well-developed body of case law 
and are familiar to the courts charged with reviewing Board decisions 
in contested cases. Minor changes to the rule have been made to conform 
the rule with amendments to the Federal Rules of Evidence since 1984.
    No special provisions for electronic records are proposed beyond 
the provisions already in the Federal Rules of Evidence. See Fed. R. 
Evid. 1001(3). While electronic records appear to be of special concern 
because they often may be easily altered, the requirements already 
present in the Federal Rules of Evidence adequately addressed this 
concern. The Board's limited experience with electronic records in 
interferences has not suggested any unique admissibility problems 
requiring special provisions. Electronic records have been admissible 
in interferences on the same basis as other records.
    Proposed Sec.  41.153 would restate the practice under Rule 671(d) 
of admitting Office records that are available to all parties without 
certification. Cf. 28 U.S.C. 1744, which provides for the admissibility 
of certified Office records. Note that under proposed Sec.  41.154(a), 
each Office record cited as evidence would have to be submitted as an 
exhibit, following the practice of Standing Order ] 14.5. In the case 
of application files and similar files, only the specific record cited 
should be submitted as an exhibit. Submitting the entire file when only 
discrete portions are cited would create a record-management problem 
for the Board and confusion about what the fact-finders must consider 
in reaching a decision. The Board might expunge such filings sua 
sponte.
    Proposed Sec.  41.154(a) would restate Rule 671(a), which sets the 
form of evidence, and would codify the existing practice that all 
evidence must be submitted as an exhibit. Proposed Sec.  41.154(b) 
would restate Rule 647 regarding translation of foreign language 
evidence. Proposed Sec.  41.154(c) would set forth additional formal 
requirements for exhibits consistent with current practice under 
Standing Order ] 14.8.1. An exhibit list would be required under 
proposed Sec.  41.154(d), following the current practice under Standing 
Order ] 14.8.5.
    Proposed Sec.  41.155 would set forth rules for objecting to 
evidence and responding to objections. The current practice is to 
provide a time for filing motions to exclude. Under proposed Sec.  
41.155(b)(1), the default time for serving an objection to evidence 
other than testimony would be five business days. Since evidence would 
have to be served by EXPRESS MAIL[reg] or comparably fast means, see 
proposed Sec.  41.106(e)(3), five business days would ordinarily be 
adequate time to object.
    Proposed Sec.  41.155(b)(2) would permit a party that submitted 
evidence ten business days after service of the objection to cure any 
defect in the evidence. (Standing Order ] 14.2 provides two weeks.) The 
Board would not ordinarily address an objection unless the objecting 
party filed a motion to exclude under Sec.  41.155(c) because the 
objection either might have been cured or might prove unimportant in 
light of subsequent developments. Proposed Sec.  41.155(d) would 
provide for a motion in limine for a ruling on admissibility, following 
the practice of Standing Order ] 13.10.3.2.
    Under 35 U.S.C. 23, the Director may establish rules for affidavit 
and deposition testimony. Under 35 U.S.C. 24[1], a party in a contested 
case may apply for a subpoena to compel testimony in the United States, 
but only for testimony to be used in the contested case. Proposed Sec.  
41.156(a) would require the party seeking a subpoena to first obtain 
authorization from the Board; otherwise the compelled evidence would 
not be used in the contested case. Proposed Sec.  41.156(b) would 
impose additional requirements on a party seeking testimony or 
production outside the United States because the use of foreign 
testimony generally increases the cost and complexity of the proceeding 
for both the parties and the Board. The Board would give weight to 
foreign deposition testimony to the extent warranted in view of all the 
circumstances, including the laws of the foreign country governing the 
testimony. Little, if any, weight might be given to deposition 
testimony taken in a foreign country unless the party taking the 
testimony proved, as a matter of fact, that knowingly giving false 
testimony in that country in connection with a Board proceeding is 
punishable under the laws of that country and that the punishment in 
that country for such false testimony is comparable to or greater than 
the punishment for perjury committed in the United States. Proposed 
Sec.  41.156(c) would advise that the Board may rely on official notice 
and hearsay to determine the scope and effect of foreign law.
    Proposed Sec.  41.157 would restate existing practice regarding the 
taking of testimony. The time period for cross-examination set in 
proposed Sec.  41.157(c)(2) would follow the current practice under 
Standing Order ] 14.3 and would set a norm for the conference held 
under proposed Sec.  41.157(c)(1). A party seeking to push the 
deposition outside this period would have to be prepared to show good 
cause. Proposed Sec.  41.157(c)(3) would clarify the practice of 
providing documents in advance by limiting the practice to direct 
testimony. Since direct testimony is generally in the form of a 
declaration, the circumstance in which proposed Sec.  41.157(c)(3) 
would apply should rarely occur apart from compelled testimony.
    Proposed Sec.  41.157(d) would codify the existing requirement for 
a conference before a deposition with an interpreter. Board experience 
suggests that the complexity of foreign language depositions can be so 
great that in many cases the resulting testimony is not very useful to 
the fact-finder. To avoid a waste of resources in the production of an 
unhelpful record, the Board must approve of the deposition format in 
advance and may require that the testimony occur before the Board. 
Occasionally other testimony that particularly touches on the 
credibility of the witness, such as testimony about best mode, 
derivation, or inequitable conduct, will also be required to be taken 
before the Board so the Board may directly observe the demeanor of the 
witness.
    Proposed Sec.  41.157(e) would depart from the current rules in 
adopting ``officer'', the term used in 35 U.S.C. 23, to refer to the 
person qualified to administer testimony.
    The certification of proposed Sec.  41.157(e)(6)(vi) would 
substantially adopt the standard of Rule 674 for

[[Page 66663]]

disqualifying an officer from administering a deposition. The use of 
financial interest as a disqualification, however, would be broader 
than the employment interest currently barred. Payment for ordinary 
services rendered in the ordinary course of administering the 
deposition and preparing the transcript would not be a disqualifying 
financial interest. An interest acknowledged by the parties on the 
record without objection would not be a disqualifying interest.
    Proposed Sec.  41.157(e)(7) would require the proponent of the 
testimony to file the transcript of the testimony. If the original 
proponent of the testimony declined to file the transcript (for 
instance, because that party no longer intended to rely on the 
testimony), but another party wished to rely on the testimony, that 
party becomes the proponent and could file the transcript as its own 
exhibit.
    Proposed Sec.  41.157(f) would codify the existing practice of 
requiring the proponent of testimony to pay the reasonable costs 
associated with making the witness available for cross examination, 
including the costs of the reporter and transcript.
    Proposed Sec.  41.158 would codify the practice under Standing 
Order ]] 14.9 and 14.10 regarding expert testimony and scientific tests 
and data. Opinions expressed without disclosing the underlying facts or 
data may be given little, if any, weight. Rohm & Haas Co. v. Brotech 
Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997). 
United States patent law is not an appropriate topic for expert 
testimony before the Board.
    Proposed subpart E would provide rules specific to patent 
interferences. Proposed Sec.  41.200(a) would specifically identify 
patent interferences as contested cases subject to the rules in 
proposed subpart D.
    Proposed Sec.  41.200(b) would continue the practice under Rule 
633(a) of looking at the applicant's specification to determine the 
meaning of a copied claim, not the specification from which the claim 
was copied. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1554 
(Fed. Cir. 1997) (explaining the change in practice). Claims in 
interferences are not to be treated any differently than any other 
claim before the Office. In this regard, the proposed rule would also 
clarify that claims are given their broadest reasonable interpretation 
in light of the associated specification. In re Van Geuns, 988 F.2d 
1181, 1185, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (application claim in 
interference); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 
(Fed. Cir. 1989) (application claim after interference); In re Etter, 
756 F.2d 852, 858-59, 225 USPQ 1, 5-6 (Fed. Cir. 1985) (en banc) 
(patent claim in reexamination). The court in Etter noted that a 
patentee in reexamination can amend its claim, while a patentee in 
litigation ordinarily may not. A patentee in an interference can 
contingently narrow its claim by filing a reissue application. 35 
U.S.C. 251; Rule 633(h) and (i); proposed Sec.  41.121(a)(2). Indeed, a 
patentee may face an estoppel if it does not seek to amend its claim 
when necessary. Rule 658(c); proposed Sec.  41.127(a)(1).
    Proposed Sec.  41.200(c) would set forth the policy now found in 
Rule 610(c) setting two years as the maximum normal pendency for patent 
interferences. New procedures adopted since October 1998 have permitted 
the Board to meet or exceed this goal in most interferences declared 
since that time. The cooperation of the parties has been a critical 
factor in this success. The proposed rules would build on this success 
by codifying procedures that have facilitated efficiency, removing 
procedures that delayed proceedings, and creating new opportunities for 
improvement.
    Proposed Sec.  41.201 would set forth definitions specific to 
patent interferences. The phrase ``accorded benefit'' would be defined 
as an act by the Board with regard to priority. Specifically, it would 
be the Board's recognition of an application as providing a proper 
constructive reduction to practice for a party. This recognition would 
create a presumption that is important for setting the burdens for 
proving priority. ``Accorded benefit'' in this proposed subpart would 
be a term of art limited to priority determinations under 35 U.S.C. 
102(g). In this regard accorded benefit should be understood to be 
distinct from benefit under 35 U.S.C. 119, 120, 121, or 365(a), which 
impose additional requirements not directly relevant to a priority 
determination under section 102(g).
    A definition would be set forth for the phrase ``constructive 
reduction to practice'' because this phrase would be used in the 
proposed rules instead of ``earliest effective filing date'' to explain 
more precisely how benefit would be accorded for the purpose of 
determining priority. ``Earliest effective filing date'' has proved 
confusing because the same term is used to discuss compliance with the 
disclosure requirements of 35 U.S.C. 119, 120, 121, and 365. Compliance 
with these statutes is important when considering most questions of 
patentability, but the question of benefit for priority under 35 U.S.C. 
102(g) is narrower than full compliance with the disclosure statutes. 
Sections 119, 120, 121, and 365 focus on whether the full scope of a 
claim is adequately disclosed, while an interference is focused on 
whether at least one embodiment anticipates the interfering subject 
matter as defined in a count.
    The phrase ``constructive reduction to practice'' would focus 
consideration on the value of a disclosure as a potentially 
anticipating reference under section 102(g). Only a single enabled 
embodiment is necessary for anticipation of the count. Note that 
abandonment of an application without a co-pending (section 120 and 
121) or timely filed (sections 119 and 365) successor application can 
render an otherwise anticipating disclosure under section 102(g) 
``inoperative for any purpose, save as evidence of conception.'' In re 
Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 391 (Fed. Cir. 1983). The 
phrase ``earliest constructive reduction to practice'' would reflect 
this requirement for continuity in the disclosure of the anticipating 
embodiment under section 102(g).
    The term ``count'' would be redefined to emphasize the relationship 
of the count to admissible proofs of priority under section 102(g). 
Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 
2000) (priority cannot be established with a reduction to practice 
outside the count). There has been a theoretical debate in the 
interference bar about whether a count is necessary. Opponents hold 
that a count is an artificial construct that imposes significant 
administrative costs. It is true that the use of a count is the 
principal reason why interferences almost always proceed in two phases: 
a first phase to examine issues related to the scope of the count and a 
second phase to determine priority for the count. Moreover, use of a 
count might in some cases obscure the relationship between the priority 
proofs and the patentability of claims said to correspond to the count. 
Proponents, however, note that addressing the separate unpatentability 
of claims without the benefit of a count to focus the analysis also 
imposes extensive costs and uncertainties.
    While a count may be theoretically unnecessary, experience with the 
current rules suggests that a count is desirable. The costs associated 
with the count are outweighed by the advantages flowing from having a 
single description of the interfering subject matter both for the 
purpose of determining priority and, perhaps more importantly, for the

[[Page 66664]]

purpose of claim correspondence. The Federal Circuit recently reached a 
similar conclusion regarding the use of a count in the context of 
interfering patents in 35 U.S.C. 291 proceedings. Slip-Track Sys. v. 
Metal-Lite, Inc., 304 F.3d 1256, 1264, 64 USPQ2d 1423, 1428 (Fed. Cir. 
2002) (requiring the use of a count). Note that the requirement that 
counts be separately patentable preserves the current practice of 
having genus and species counts in appropriate cases, e.g., Hester v. 
Allgeier, 687 F.2d 464, 215 USPQ 481 (CCPA 1982) because a generic 
invention and a specific invention are often patentably distinct.
    The definition of ``involved claim'' would be based on a similar 
definition in Rule 601(f). This definition would be consistent with the 
definition of ``involved'' for contested cases in proposed Sec.  41.100 
because only claims that correspond to the count are at risk in an 
interference, except to the extent a question is raised as to whether a 
claim that does not correspond should.
    The definition of ``senior party'' would depart from the current 
definition in Rule 601(m) by focusing on the earliest constructive 
reduction to practice to determine which party, if any, is senior. 
Identification of the senior party is important because a presumption 
of priority attaches to the senior party under proposed Sec.  
41.207(a)(1).
    The phrase ``threshold issue'' would be defined to include three 
specific issues that affect the standing of a party to participate in 
an interference. All three are of particular interest to the Board 
because they have been subject to abuse by parties using interferences 
as a type of opposition proceeding. An adverse decision on these issues 
with respect to all of a party's claims would ordinarily end the 
interference. The list would be open-ended and thus admit the 
possibility that another issue might qualify as a threshold issue on 
the particular facts of a specific case. Note that these threshold 
issues would exist in addition to the possibility that a junior party 
has failed to allege a prima facie sufficient case of priority. See 
proposed Sec. Sec.  41.202(d) and 41.204(a).
    The first identified threshold issue would be no interference-in-
fact. Without an interference-in-fact, there would be no reason to 
place either party's claim in jeopardy in the context of an 
interference proceeding.
    The other two specifically identified issues, the bar under 35 
U.S.C. 135(b) and lack of written description under 35 U.S.C. 112[1], 
would be directed to the prevention of spuriously provoked 
interferences and would consequently be limited to motions from a party 
with a patent or published application against a party with an involved 
application. Note that the section 135(b) bar and lack of written 
description address complementary problems: Under section 135(b) a 
claim may be supported but untimely, while a claim lacking written 
description may be timely but is unsupported. For the purposes of the 
proposed rule, provocation of an interference would be inferred from 
the circumstances, such as entry of a claim after publication of the 
movant's application or issuance of the movant's patent. It would not 
require any determination that the opponent had an intent to provoke 
the interference.
    Proposed Sec.  41.202(a) would restate the requirements of Rules 
604, 607, and 608 for applicants provoking an interference. A showing 
of priority need not anticipate all possible bases for opposing the 
showing. For instance, when the applicant's earliest constructive 
reduction to practice of the interfering subject matter occurred before 
the apparent earliest constructive reduction to practice of a targeted 
patent, it would typically suffice for the applicant to show precisely 
where its earliest constructive reduction to practice was disclosed.
    Proposed Sec.  41.202(a)(5) would continue the practice under Rule 
633(a) of looking at the applicant's specification to determine the 
meaning of a copied claim, not the specification from which the claim 
was copied. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1554 
(Fed. Cir. 1997) (explaining the change in practice). It would also set 
forth a mechanism for weeding out frivolous attempts to provoke an 
interference. A protester under Rule 291 hoping to prompt an examiner 
to propose an interference could improve its chances of success by 
satisfying the requirements of proposed Sec.  41.202(a)(1)-(a)(4) in 
its protest.
    Proposed Sec.  41.202(c) would restate the practice under Rule 605 
of requiring an applicant to add a claim to provoke an interference. 
This requirement is an effective and sometimes necessary method for 
determining whether an interference actually exists between two 
parties. In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA 
1975). The requirement may be used to obtain a clearer definition of 
the interfering subject matter or to establish whether the applicant 
will pursue claims to the interfering subject matter. While an 
applicant must add the claim or forfeit the subject matter of the 
claim, the applicant may contest the requirement and the examiner may 
withdraw the requirement. Where the requirement is based on a patent or 
a published application, the examiner should note the patent or 
application in making the requirement. In challenging the requirement, 
the applicant may point to another claim in the application that 
already claims the subject matter of the required claim. The applicant 
may also propose an alternative claim with an explanation of why the 
alternative claim would be better for the purpose of determining the 
interference. A common reason for proposing an alternative claim is 
that the applicant believes the required claim to be unpatentable at 
least to the applicant.
    Proposed Sec.  41.202(d) would set forth the basis for a summary 
proceeding when an applicant does not appear to be able to show it 
would prevail on priority. Proposed Sec.  41.202(d)(1) would restate 
Rule 608, but would eliminate the distinction between Rule 608(a) and 
Rule 608(b). The requirement could be made under 35 U.S.C. 132 even 
when a rejection is not available. Failure to comply with the 
requirement would result in abandonment of the application under 35 
U.S.C. 133. Proposed Sec.  41.202(d)(2) would restate Rule 617 by 
providing a basis for a summary proceeding on priority when the 
applicant fails to make a sufficient showing of priority. To be 
sufficient, under proposed Sec.  41.202(e), the showing would by 
itself, if unrebutted, have to warrant a determination of priority.
    Proposed Sec.  41.203(a) would state the standard for declaring a 
patent interference. The Director uses a two-way unpatentability test 
to determine whether claimed inventions interfere because, while a one-
way test is only sufficient for rejecting a claim under 35 U.S.C. 
102(g), a two-way test is necessary to ensure that the claims of both 
parties are directed to the same invention.
    The case law provides that there is no interference-in-fact when 
there is patentable distinctness between the claims of the parties 
(e.g., Case v. CPC Int'l, Inc., 730 F.2d 745, 221 USPQ 196 (Fed. 
Cir.1984); Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977); Nitz 
v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976)). Consequently, 
to declare an interference, the Director requires patentable 
indistinctness between the claimed subject matter of the parties. Eli 
Lilly & Co. v. Bd. of Regents of Univ. of Washington, 334 F.3d 1264, 67 
USPQ2d 1161 (Fed. Cir. 2003). In practice this means that a claim of A 
and a claim of B interfere if the subject matter of A's claim would, if 
treated as prior art, have anticipated or rendered obvious (alone or in

[[Page 66665]]

combination with prior art) the subject matter of B's claim, and vice 
versa. This standard has recently come to be known as the ``two-way'' 
test because it concisely summarizes the analysis. If this test is not 
effectively satisfied there is no interference-in-fact, i.e., no 
priority question to be resolved, although there may be other 
applicable rejections.
    Proposed Sec.  41.203(b) would specifically delegate this 
discretion to an administrative patent judge. Proposed Sec.  41.203(c) 
would similarly authorize an administrative patent judge to redeclare 
the interference sua sponte or in response to a decision on motions. An 
administrative patent judge could redeclare an interference sua sponte, 
for instance, when another interfering patent or application came to 
light. An interference is often redeclared after a motion is decided, 
particularly when there are changes in the scope of the count, in the 
order of the parties, or in the claims that would be affected by the 
judgment as the result of the decision.
    Proposed Sec.  41.203(d) would depart from current practice 
regarding adding files or declaring additional interferences. Rules 
633(d), (e), and (h) treat the addition of a party's application or 
patent, or the declaration of an additional interference involving the 
parties, as substantive motions, while Rule 642 treats the addition of 
other patents or applications to the interference as an action more 
akin to the original declaration. The proposed rule would eliminate 
this difference in treatment and permit a suggestion, like an 
applicant's request for an interference, to have an administrative 
patent judge exercise discretion to declare a new interference or to 
redeclare the existing interference to accommodate such files. The net 
effect of these changes would be to unify the treatment and legal 
effect of declaring and redeclaring interferences.
    Proposed Sec.  41.204 would define notices of requested relief in 
interferences. Proposed Sec.  41.204(a) would greatly simplify the 
formal requirements for the principal notice on priority, the 
preliminary statement (which is renamed a ``priority statement''). It 
would not specify the information that needs to be filed with a 
priority statement. Instead, the rule would require each party to state 
with particularity the facts on which it intends to rely. The 
requirement for filing documentary support would reflect the current 
practice under Rule 623(c) of filing first drawings and written 
descriptions. The requirement would be limited to documents under the 
control of a party because those documents are more susceptible to 
alteration in light of subsequent developments in the interference. 
Derivation would not be treated separately in the proposed rule since 
it is a type of attack on priority.
    Proposed Sec.  41.204(b) would codify the existing practice of 
requiring a list of motions, but under the proposed rule a party would 
ordinarily be limited to filing substantive motions consistent with its 
notice of requested relief. No default times would be set for 
statements in proposed Sec.  41.204(c) because the time for filing such 
statements would be contingent on too many other variables to make 
default times useful. Generally, such statements would be required 
early in the interference because there would be very little discovery 
permitted so most motions will be based on information under the 
party's control. Subsequent developments in the proceeding, such as a 
change in the count, might justify corrections to a statement.
    Proposed Sec.  41.205 would restate practice under Rule 666 
regarding the filing of settlement agreements and would implement the 
requirements of 35 U.S.C. 135(c).
    Proposed Sec.  41.206 would revise practice under Rule 602(a) to 
use the ``commonly owned'' test discussed in Barton, 162 F.3d at 1144, 
49 USPQ2d at 1132. Common ownership in a contested case is a concern 
because it can lead to manipulation of the process. The proposed rule 
would be stated permissively because not all cases of overlapping 
ownership would be cause for concern. The cases of principal concern 
involve a real party-in-interest with the ability to control the 
conduct of more than one party.
    Proposed Sec.  41.207(a)(1) would adopt the presumption regarding 
order of invention from Rule 657(a). The presumption is based on the 
date of the earliest constructive reduction to practice and permits a 
different senior party for each count. Proposed Sec.  41.207(a)(2) 
would adopt the evidentiary standards for proving priority stated in 
Rule 657(b) and (c), but would restate the standard of Rule 657(c) in 
terms of the date of the earliest constructive reduction to practice. 
The proposed rule would also add publication under 35 U.S.C. 122(b) as 
a reason for requiring proof of priority under a clear and convincing 
evidence standard.
    Proposed Sec.  41.207(b) would clarify claim correspondence 
practice and explicitly state the effect of claim correspondence. 
Proposed Sec.  41.207(b)(1) would reflect the practice under In re Van 
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993), for 
grounds of unpatentability other than priority, under which 
patentability must be determined for claims, not counts. The Board 
could rely, however, on claim grouping that is explicit in the 
arguments of the parties, see e.g., In re Roemer, 258 F.3d 1303, 1307, 
59 USPQ2d 1527, 1529 (Fed. Cir. 2001) (noting party concession to have 
claims stand or fall according to correspondence), or implicit from a 
logical relationship of the claims (e.g., lack of written support for a 
limitation in a claim might also affect its dependent claims).
    Under proposed Sec.  41.207(b)(2), a claim would correspond to the 
count if the subject matter of the claim would have been anticipated by 
or obvious (alone or in combination with prior art) in view of the 
subject matter of the count. The Director proposes to use a one-way 
test for claim correspondence because correspondence is a provisional 
rejection based on 35 U.S.C. 102(g). The count defines the scope of 
admissible proofs for proving priority and thus, in theory, defines a 
single inventive concept based on the claims of the parties. An adverse 
determination of priority for the invention of the count would be the 
basis for the rejection under section 102(g) or section 103.
    The claims that correspond to the count are the ``claims involved'' 
in the interference as that phrase is used in 35 U.S.C. 135(a). Claim 
correspondence identifies the parties' claims that are at risk in the 
event of an adverse judgment on priority such that they will be finally 
refused (involved application claims) or cancelled (involved patent 
claims) by virtue of the judgment as required under section 135(a). If 
a party loses on priority with respect to the subject matter of a 
count, the party would not be entitled to a claim that is anticipated 
by (section 102(g)) or obvious in view of (section 103) the subject 
matter of the lost count. Since correspondence is effectively a 
provisional rejection under section 102(g), only a one-way test is 
required to determine which claims would be at risk (e.g., In re 
Saunders, 219 F.2d 455, 104 USPQ 394 (CCPA 1955) (generic claim 
unpatentable in view of lost count to species)).
    The current rules use both count-based and claim-based 
correspondence. Compare Rules 603, 606, and 637(c)(2)(ii) (count based) 
with Rules 637(c)(3)(ii) and (c)(4)(ii) (claim based). The principal 
virtue of claim-based correspondence is that it clearly reflects the 
implicit rejection of the corresponding claim based on 35 U.S.C. 
102(g). A rejection based on Sec.  102(g) must look to the invention of 
another.

[[Page 66666]]

Ordinarily in proceedings before the Office, a determination of the 
invention must be based on what is claimed. 35 U.S.C. 112[2]. A claim 
is not a prerequisite for a rejection under section 102(g), however 
(e.g., Apotex USA, Inc. v. Merck & Co., Inc., 254 F.3d 1031, 59 USPQ2d 
1139 (Fed. Cir. 2001) (prior invention of another not based on a 
claim)). It has long been the practice to determine priority in an 
interference based on a count, which might not even be fully supported 
by the disclosure of either party, Aelony v. Arni, although other 
patentability determinations must be based on claims, In re Van Geuns, 
988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The count is understood 
be the common inventive concept of the parties.
    Both claim-based and count-based correspondence rest on the 
assumptions that the claim or count on which correspondence is based 
defines a single inventive concept and that any obviousness 
relationship between the proof of priority and a corresponding claim is 
not too attenuated. Either of these problems can be addressed by filing 
an appropriate motion regardless of the basis on which correspondence 
is determined.
    In cases where the count is closely based on actual claims and 
where the number of claims is small, there is generally very little 
practical difference between claim-based and count-based 
correspondence. In cases involving very large numbers of claims, 
however, claim-based correspondence places a huge burden on a party 
seeking to have a claim designated as not corresponding because a 
comparison must be made with every single corresponding claim. Count-
based correspondence would make analysis of claim correspondence easier 
by providing a single point of reference--the count--for determining 
correspondence. Moreover, by basing correspondence exclusively on the 
count, the proposed rule would make the basis for claim correspondence 
consistent with the basis for the priority determination.
    The presumption in proposed Sec.  41.207(c) would restate the 
presumption in Rule 637(a) that prior art cited against an opponent is 
presumed to apply against the movant's claims. Note that the proposed 
rule would clarify the current practice by not triggering the 
presumption unless the motion is granted with respect to an opponent's 
claim. Although the proposed rule would omit the reference to priority 
statements, a party could not rely on its notice of requested relief as 
evidence, see proposed Sec.  41.120(b), so the repetition in this 
section would not be necessary.
    The presumption of abandonment after one year in proposed Sec.  
41.207(d) would be new. It is modeled after the one-year statutory bars 
(e.g., 35 U.S.C. 102(b), 102(d), and 135(b)) and other incentives for 
prompt filing (e.g., 35 U.S.C. 119(a) and 273(b)(1)). The presumption 
is intended to encourage prompt filing of patent applications and to 
help parties facing the issue by simplifying the analysis of an 
apparent abandonment, suppression, or concealment. An invention, though 
completed, is deemed abandoned, suppressed, or concealed if, within a 
reasonable time after completion, no steps are taken to make the 
invention publicly known. For example, failure to file a patent 
application, to describe the invention in a publicly disseminated 
document, or to use the invention publicly, has been held to constitute 
abandonment, suppression, or concealment. Correge v. Murphy, 705 F.2d 
1326, 1330, 217 USPQ 753, 756 (Fed. Cir. 1983). The case law does not 
give definitive guidance on when abandonment, suppression, or 
concealment has occurred. This uncertainty makes it harder to determine 
what evidence to present in order to show an abandonment, suppression 
or concealment; and to determine in close cases whether abandonment, 
suppression, or concealment has occurred. Although this presumption is 
designed to encourage prompt filing, it does not exclude rebuttal 
proofs of continuing activity other than filing, such as those listed 
in the Correge decision.
    Proposed Sec.  41.208(a) would focus substantive motions on the 
core questions of priority.
    Proposed Sec.  41.208(b) would place the burden of proof on the 
movant and would provide guidance on how to satisfy the burden of going 
forward.
    Proposed Sec.  41.208(c) would set forth some guidance to parties 
about specific motions, but would not attempt to list all possible 
substantive requirements for each motion, nor would it exhaustively 
list all possible kinds of motions. In practice, interference practice 
has proved too varied to permit an exhaustive list. The specific 
requirements of the analogous Rule 637 have proved both over-inclusive, 
see Chief Admin. Pat. J., ``Interference Practice--Interference Rules 
Which Require a Party to `Show the Patentability' of a Claim'', 1217 
Official Gaz. 17 (USPTO 1998) (limiting the scope of showings), and 
under-inclusive, see Hillman v. Shyamala, 55 USPQ2d 1220, 1221 (BPAI 
2000) (holding the required showings to be insufficient). Ultimately, 
the movant would have to justify the relief sought substantively, which 
means compliance with statutes, rules, and case law that could never be 
fully replicated in a rule governing the content of motions.
    Substantive motions in an interference essentially ask three 
questions. First, should the proceeding reach the question of priority 
at all? Second, what is the scope of the proofs necessary and proper 
for proving priority and what claims must be cancelled in the event of 
an adverse judgment? Third, which party will lose the determination of 
priority? While final judgment is possible on a wide array of issues, 
the fundamental purpose of an interference is to determine priority. 
Consequently, substantive motions without some nexus to an ultimate 
question of priority would not ordinarily be considered. For example, a 
motion that a claim is unpatentable might be dismissed if it does not 
affect a party's standing, the scope of the count, or the accorded 
benefit.
    The first question implicates the three ``threshold issues'' that 
are ordinarily taken up early because they affect a party's standing in 
an interference. Berman v. Housey, 291 F.3d 1345, 1352, 63 USPQ2d 1023, 
1028 (Fed. Cir. 2002) (endorsing the Board practice of early 
determination of threshold issues). These threshold issues are no 
interference-in-fact, repose under 35 U.S.C. 135(b), and lack of 
written description supporting claims added to provoke an interference. 
Threshold issues present a movant with an opportunity to escape the 
burdens of a full-scale interference. A party that failed to request 
such relief early would not ordinarily receive an early determination. 
The practice of deciding threshold issues early evolved to address 
abuses on the part of some applicants provoking interferences.
    An attack on standing must necessarily be effective with respect to 
all of an opponent's claims on which the determination of interference-
in-fact depends; otherwise, it would really be some other type of 
motion, such as a motion to change the count, claim correspondence, or 
accorded benefit. Occasionally, more than one threshold issue might 
need to be raised (in separate motions) to address all involved claims. 
For instance, an opponent's copied claims might lack written 
description, while its other corresponding claims would not in fact 
interfere. Issues other than threshold issues could also affect 
standing, but would rarely be taken up early because they have less 
connection with the

[[Page 66667]]

threshold determination of whether the Director is of the opinion that 
an interference exists.
    Proposed Sec.  41.208(c)(1) would set forth guidance on filing a 
motion for judgment of no interference-in-fact. The proposed rule would 
require a showing that the test for an interference under proposed 
Sec.  41.203(a) is not met. The showing must be for all claims because 
a single claim of each party is sufficient to support the Director's 
opinion that an interference exists in fact.
    Proposed Sec.  41.208(c)(2) would set forth guidance on filing a 
motion for judgment that a patentee is entitled to repose under 35 
U.S.C. 135(b). Section 135(b) has two aspects. It is a statute of 
repose, Berman v. Housey, 291 F.3d 1345, 1351, 63 USPQ2d 1023, 1027 
(Fed. Cir. 2002), and a statutory bar, In re McGrew, 120 F.3d 1236, 
1238-39, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997). As a statute of repose, 
it presents a threshold issue; otherwise, it is simply an attack on 
patentability. To be a threshold issue, the motion must satisfy two 
conditions. First, the party moving for repose must be the patentee or 
published applicant entitled to repose under the statute. Second, it 
must apply (possibly in combination with other threshold issues) to all 
of an opponent's involved claims; otherwise, the interference would 
continue whether the motion is granted or not. If either condition is 
not met, the motion would be treated as a motion for unpatentability, 
but not as a threshold issue.
    Proposed Sec.  41.208(c)(3) would set forth general guidance for 
attacking patentability. This guidance would apply to a non-threshold 
motion alleging unpatentability under 35 U.S.C. 135(b) in view of non-
party's patent or published application. A motion attacking 
patentability could be a threshold issue (e.g., an attack on the 
written description of a copied claim), an effort to change the count 
(by showing that claims within the scope of the count are not 
patentable over prior art), or a priority issue, depending on the 
claims attacked and the basis for the attack. Note that because counts 
would continue to be used, the Board would continue the practice of 
ordinarily either not authorizing the filing of, or deferring any 
decision on, a patentability motion that raises questions of priority 
or derivation during the first part of the interference. Generally 
motions attacking patentability under 35 U.S.C. 102(a), 102(e), 102(f), 
or 102(g) will be deferred, in whole or in part. This practice does 
not, however, relieve a party of its obligation to state these grounds 
as bases for relief when required.
    The second set of substantive questions would involve changes to 
the scope of the count, claim correspondence, and accorded benefit. 
Motions under proposed Sec.  41.208(c)(3) attacking the patentability 
of claimed subject matter within the scope of the count might also fall 
within this category if they have the effect of narrowing the count.
    Proposed Sec.  41.208(c)(4) would set forth guidance for some 
common motions to change the count. If the count changes, no change in 
accorded benefit will be presumed; it would have to be established in a 
contingent motion to change benefit. Proposed Sec.  41.208(c)(4)(i) 
would restate the requirement of Rule 637(c)(1)(v) to show that counts 
are separately patentable. Proposed Sec.  41.208(c)(4)(ii)(C) would 
codify the practice in Louis v. Okada, 59 USPQ2d 1073, 1076 (BPAI 
2001), which required a movant seeking to broaden a count to cover its 
best proof of priority to proffer that proof so the Board could 
evaluate the merits of the motion.
    Proposed Sec.  41.208(c)(5) would set forth guidance for parties 
moving to change claim correspondence. Proposed Sec.  41.208(c)(5)(i) 
would require that any added claim be patentable and correspond to the 
count. A motion to add a claim that did not correspond to the count 
would in effect be a request for an advisory action, which the Board 
would not ordinarily give. A patentee could not use a reissue 
application to circumvent this requirement that all claims in an 
interference must correspond to the count. Winter v. Fujita, 53 USPQ2d 
1234, 1249 (BPAI 1999). The proposed rule could be used to compel an 
opponent to add a claim to its involved application or patent. Note 
that patentee cannot be literally compelled to file a reissue 
application for any reason, including to add a claim. Green v. Rich 
Iron Co., 944 F.2d 852, 854, 20 USPQ2d 1075, 1076-77 (Fed. Cir. 1991). 
The consequence of an opponent's refusal to add a claim, however, may 
be a concession of priority with respect to the subject matter that the 
patentee refuses to add. See Rule 605(a); cf. In re Ogiue, 517 F.2d at 
1390, 186 USPQ at 235 (an applicant surrenders the subject matter of a 
claim it refuses to copy); proposed Sec.  41.202(c). The remainder of 
proposed Sec.  41.208(c)(5) would restate the correspondence test in 
terms of a one-way test for patentability in which the subject matter 
of the count is used as the primary reference.
    Proposed Sec.  41.208(c)(6) would restate the test for according 
benefit of an application in terms of recognition for a constructive 
reduction to practice. In doing so, the test would avoid confusion with 
the related, but distinct, tests for benefit of a disclosure for the 
purposes of 35 U.S.C. 119, 120, 121, and 365. Note that a constructive 
reduction to practice relates to the count, not a claim. Moreover, the 
showing for a constructive reduction to practice would generally be 
narrower because only a single embodiment is necessary to anticipate a 
count. By contrast, Sec.  120 incorporates the requirements of 35 
U.S.C. 112[1], which include disclosure of sufficient embodiments to 
support the full scope of a claim. See Cromlish v. D.Y., 57 USPQ2d 1318 
(BPAI 2000) (discussing this difference).
    Proposed Sec.  41.208(c)(7) would permit the Board to require 
additional showings. For example if a party had copied a claim and 
during the interference proposed to argue that its opponent's claim was 
indefinite under 35 U.S.C. 112[2], the Board could require the movant 
to explain why its copied claim was not also indefinite.
    Proposed Sec.  41.208(d) would require the use of claim charts 
whenever a claim is being compared to something else. Claim charts are 
often the most effective way to present the comparison convincingly. 
Claim charts would not, however, be a substitute for argument since the 
comparison would generally require additional explanation. The proposed 
rule would refer to a ``paper'' rather than a ``motion'' because such 
comparisons can arise in oppositions and even replies.

Regulatory Flexibility Act

    The Deputy General Counsel for General Law of the United States 
Patent and Trademark Office has certified to the Chief Counsel for 
Advocacy of the Small Business Administration under the provisions of 
section 605(b) of the Regulatory Flexibility Act that this proposed 
rule making will not have a significant economic impact on a 
substantial number of small entities.

Executive Order 13132

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

Executive Order 12866

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

Paperwork Reduction Act

    This proposed rule involves information collection requirements

[[Page 66668]]

which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et 
seq.).
    Currently approved forms include PTO/SB/31 (Notice of appeal) and 
PTO/SB/32 (Request for hearing), both of which were cleared under the 
OMB 0651-0031 collection, which will expire at the end of July 2006.
    Notwithstanding any other provision of law, no person is required 
to respond to 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.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 5

    Classified information, Exports, Foreign relations, Inventions and 
patents.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons stated in the preamble, the Under Secretary of 
Commerce for Intellectual Property and Director of the United States 
Patent and Trademark Office proposes to amend 37 CFR chapter I as 
follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for Part 1 continues to read as follows:

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


Sec.  1.1  [Amended]

    2. Remove and reserve Sec.  1.1(a)(1)(iii).
    3. In Sec.  1.4, revise paragraph (a)(2) to read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

    (a) * * *
    (2) Correspondence in and relating to a particular application or 
other proceeding in the Office. See particularly the rules relating to 
the filing, processing, or other proceedings of national applications 
in subpart B, Sec. Sec.  1.31 to 1.378; of international applications 
in subpart C, Sec. Sec.  1.401 to 1.499; of ex parte reexaminations of 
patents in subpart D, Sec. Sec.  1.501 to 1.570; of extension of patent 
term in subpart F, Sec. Sec.  1.710 to 1.785; of inter partes 
reexaminations of patents in subpart H, Sec. Sec.  1.902 to 1.997; and 
of the Board of Patent Appeals and Interferences in part 41 of this 
title.
* * * * *


Sec.  1.5  [Amended]

    4. Remove and reserve Sec.  1.5(e).


Sec.  1.6  [Amended]

    5. Remove and reserve Sec.  1.6(d)(9).


Sec.  1.8  [Amended]

    6. Remove and reserve Sec.  1.8(a)(2)(i)(B) and (a)(2)(i)(C).
    7. In Sec.  1.9, revise paragraph (g) to read as follows:


Sec.  1.9  Definitions.

* * * * *
    (g) For definitions in Board of Patent Appeals and Interferences 
proceedings, see part 41 of this title.
* * * * *
    8. In Sec.  1.14, revise paragraph (e) to read as follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (e) Decisions on petition. (1) Any decision on petition is 
available for public inspection without applicant's or patent owner's 
permission if rendered in a file open to the public pursuant to Sec.  
1.11 or in an application that has been published in accordance with 
Sec. Sec.  1.211 through 1.221. The Office may independently publish 
any decision that is available for public inspection.
    (2) Any decision on petition not publishable under paragraph (e)(1) 
of this section may be published or made available for public 
inspection if the Director believes that special circumstances warrant 
publication and the applicant does not, within two months after being 
notified of the intention to make the decision public, object in 
writing on the ground that the decision discloses a trade secret or 
other confidential information and states that such information is not 
otherwise publicly available. If a decision discloses such information, 
the applicant shall identify the deletions in the text of the decision 
considered necessary to protect the information. If the applicant 
considers that the entire decision must be withheld from the public to 
protect such information, the applicant must explain why. The applicant 
will be given time, not less than twenty days, to request 
reconsideration and seek court review before any contested portion of a 
decision is made public over its objection. See Sec.  2.27 for 
trademark applications.
* * * * *
    9. In Sec.  1.17, remove and reserve paragraphs (b)-(d), and revise 
paragraph (h) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (h) For filing a petition under one of the following sections which 
refers to this paragraph: $130.00.
    Sec.  1.12--for access to an assignment record.
    Sec.  1.14--for access to an application.
    Sec.  1.47--for filing by other than all the inventors or a person 
not the inventor.
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.59--for expungement and return of information.
    Sec.  1.84--for accepting color drawings or photographs.
    Sec.  1.91--for entry of a model or exhibit.
    Sec.  1.102--to make an application special.
    Sec.  1.103(a)--to suspend action in an application.
    Sec.  1.138(c)--to expressly abandon an application to avoid 
publication.
    Sec.  1.182--for decision on a question not specifically provided 
for.
    Sec.  1.183--to suspend the rules.
    Sec.  1.295--for review of refusal to publish a statutory invention 
registration.
    Sec.  1.313--to withdraw an application from issue.
    Sec.  1.314--to defer issuance of a patent.
    Sec.  1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec.  1.378(e)--for reconsideration of decision on petition 
refusing to accept delayed payment of maintenance fee in an expired 
patent.
    Sec.  1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.
    Sec.  5.12--for expedited handling of a foreign filing license.
    Sec.  5.15--for changing the scope of a license.
    Sec.  5.25--for retroactive license.
    Sec.  104.3--for waiver of a rule in Part 104 of this title.
* * * * *
    10. Revise Sec.  1.36 to read as follows:


Sec.  1.36  Revocation of power of attorney; withdrawal of patent 
attorney or agent.

    (a) A power of attorney, pursuant to Sec.  1.32(b), may be revoked 
at any stage in the proceedings of a case by the applicant for patent 
(Sec.  1.41(b)) or the assignee of the entire interest. A

[[Page 66669]]

registered patent attorney or patent agent will be notified of the 
revocation of the power of attorney. Where power of attorney is given 
to the patent practitioners associated with a Customer Number (Sec.  
1.32(b)(2)(iii)), the practitioners so appointed will also be notified 
of the revocation of the power of attorney when the power of attorney 
to the practitioners associated with the Customer Number is revoked. 
The notice of revocation will be mailed to the correspondence address 
for the application (Sec.  1.33) in effect before the revocation. An 
assignment will not of itself operate as a revocation of a power 
previously given, but the assignee of the entire interest may revoke 
previous powers and give another power of attorney as provided in Sec.  
1.32(b) of the assignee's own selection. See Sec.  41.5 of this title 
for proceedings before the Board of Patent Appeals and Interferences.
    (b) A registered patent attorney or patent agent who has been given 
a power of attorney pursuant to Sec.  1.32(b) may withdraw upon 
application to and approval by the Director. The applicant or patent 
owner will be notified of the withdrawal of the registered patent 
attorney or patent agent. Where power of attorney is given to the 
patent practitioners associated with a Customer Number, a request to 
delete all of the patent practitioners associated with the Customer 
Number may not be granted if an applicant has given power of attorney 
to the patent practitioners associated with the Customer Number and 
insufficient time remains for the applicant to file a reply. See Sec.  
41.5(c) of this title for withdrawal in a proceeding before the Board 
of Patent Appeals and Interferences.
    11. Amend Sec.  1.48 to revise paragraphs (a)-(c) and (i), and to 
add paragraph (j), to read as follows:


Sec.  1.48  Correction of inventorship in a patent application, other 
than a reissue application, pursuant to 35 U.S.C. 116.

    (a) Nonprovisional application after oath/declaration filed. If the 
inventive entity is set forth in error in an executed Sec.  1.63 oath 
or declaration in a nonprovisional application, and such error arose 
without any deceptive intention on the part of the person named as an 
inventor in error or on the part of the person who through error was 
not named as an inventor, the inventorship of the nonprovisional 
application may be amended to name only the actual inventor or 
inventors. Amendment of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor and 
from each person being deleted as an inventor that the error in 
inventorship occurred without deceptive intention on his or her part;
    (3) An oath or declaration by the actual inventor or inventors as 
required by Sec.  1.63 or as permitted by Sec. Sec.  1.42, 1.43 or 
Sec.  1.47;
    (4) The processing fee set forth in Sec.  1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec.  3.73(b) of 
this chapter).
    (b) Nonprovisional application--fewer inventors due to amendment or 
cancellation of claims. If the correct inventors are named in a 
nonprovisional application, and the prosecution of the nonprovisional 
application results in the amendment or cancellation of claims so that 
fewer than all of the currently named inventors are the actual 
inventors of the invention being claimed in the nonprovisional 
application, an amendment must be filed requesting deletion of the name 
or names of the person or persons who are not inventors of the 
invention being claimed. Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec.  1.33(b), to 
correct the inventorship that identifies the named inventor or 
inventors being deleted and acknowledges that the inventor's invention 
is no longer being claimed in the nonprovisional application; and
    (2) The processing fee set forth in Sec.  1.17(i).
    (c) Nonprovisional application--inventors added for claims to 
previously unclaimed subject matter. If a nonprovisional application 
discloses unclaimed subject matter by an inventor or inventors not 
named in the application, the application may be amended to add claims 
to the subject matter and name the correct inventors for the 
application. Amendment of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor that 
the addition is necessitated by amendment of the claims and that the 
inventorship error occurred without deceptive intention on his or her 
part;
    (3) An oath or declaration by the actual inventors as required by 
Sec.  1.63 or as permitted by Sec. Sec.  1.42, 1.43, or Sec.  1.47;
    (4) The processing fee set forth in Sec.  1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec.  3.73(b) of 
this chapter).
* * * * *
    (i) Correction of inventorship in patent. See Sec.  1.324 for 
correction of inventorship in a patent.
    (j) Correction of inventorship in a contested case before the Board 
of Patent Appeals and Interferences. In a contested case under part 41, 
subpart D, of this title, a request for correction of an application 
must be in the form of a motion under Sec.  41.121(a)(2) of this title 
and must comply with the requirements of this section.
    12. In Sec.  1.55, revise paragraphs (a)(3) and (a)(4) to read as 
follows:


Sec.  1.55  Claim for foreign priority.

    (a) * * *
    (3) The Office may require that the claim for priority and the 
certified copy of the foreign application be filed earlier than 
provided in paragraphs (a)(1) or (a)(2) of this section:
    (i) When the application becomes involved in an interference (see 
Sec.  41.202 of this title),
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner, or
    (iii) When deemed necessary by the examiner.
    (4)(i) An English language translation of a non-English language 
foreign application is not required except:
    (A) When the application is involved in an interference (see Sec.  
41.202 of this title),
    (B) When necessary to overcome the date of a reference relied upon 
by the examiner, or
    (C) When specifically required by the examiner.
    (ii) If an English language translation is required, it must be 
filed together with a statement that the translation of the certified 
copy is accurate.
* * * * *
    13. In Sec.  1.59, revise paragraph (a)(1) to read as follows:


Sec.  1.59  Expungement of information or copy of papers in application 
file.

    (a)(1) Information in an application will not be expunged and 
returned, except as provided in paragraph (b) of this section or Sec.  
41.7(a) of this title.
* * * * *
    14. In Sec.  1.103, revise paragraph (g) to read as follows:


Sec.  1.103  Suspension of action by the Office.

* * * * *
    (g) Statutory invention registration. The Office will suspend 
action by the

[[Page 66670]]

Office for the entire pendency of an application if the Office has 
accepted a request to publish a statutory invention registration in the 
application, except for purposes relating to patent interference 
proceedings under part 41, subpart D, of this title.
    15. Revise Sec.  1.112 to read as follows:


Sec.  1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec.  1.111 or Sec.  
1.945) to a non-final action and any comments by an inter partes 
reexamination requester (Sec.  1.947), the application or the patent 
under reexamination will be reconsidered and again examined. The 
applicant, or in the case of a reexamination proceeding the patent 
owner and any third party requester, will be notified if claims are 
rejected, objections or requirements made, or decisions favorable to 
patentability are made, in the same manner as after the first 
examination (Sec.  1.104). Applicant or patent owner may reply to such 
Office action in the same manner provided in Sec.  1.111 or Sec.  
1.945, with or without amendment, unless such Office action indicates 
that it is made final (Sec.  1.113) or an appeal (Sec.  41.31 of this 
title) has been taken (Sec.  1.116), or in an inter partes 
reexamination, that it is an action closing prosecution (Sec.  1.949) 
or a right of appeal notice (Sec.  1.953).
    16. In Sec.  1.113, revise paragraph (a) to read as follows:


Sec.  1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration by 
the examiner the rejection or other action may be made final, whereupon 
applicants, or for ex parte reexaminations filed under Sec.  1.510, 
patent owner's reply is limited to appeal in the case of rejection of 
any claim (Sec.  41.31 of this title), or to amendment as specified in 
Sec.  1.114 or Sec.  1.116. Petition may be taken to the Director in 
the case of objections or requirements not involved in the rejection of 
any claim (Sec.  1.181). Reply to a final rejection or action must 
comply with Sec.  1.114 or paragraph (c) of this section. For final 
actions in an inter partes reexamination filed under Sec.  1.913, see 
Sec.  1.953.
* * * * *
    17. In Sec.  1.114, revise paragraph (d) to read as follows:


Sec.  1.114  Request for continued examination.

* * * * *
    (d) If an applicant timely files a submission and fee set forth in 
Sec.  1.17(e), the Office will withdraw the finality of any Office 
action and the submission will be entered and considered. If an 
applicant files a request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it will be treated 
as a request to withdraw the appeal and to reopen prosecution of the 
application before the examiner. An appeal brief (Sec.  41.37 of this 
title) or a reply brief (Sec.  41.41 of this title), or related papers, 
will not be considered a submission under this section.
* * * * *
    18. Revise Sec.  1.116 to read as follows:


Sec.  1.116  Amendments and affidavits or other evidence after final 
action.

    (a) An amendment after final action must comply with Sec.  1.114 or 
this section.
    (b) After a final rejection or other final action (Sec.  1.113) in 
an application or in an ex parte reexamination filed under Sec.  1.510, 
or an action closing prosecution (Sec.  1.949) in an inter partes 
reexamination filed under Sec.  1.913, but before or with any appeal 
(Sec.  41.31 or Sec.  41.61).
    (1) An amendment may be made canceling claims or complying with any 
requirement of form expressly set forth in a previous Office action;
    (2) An amendment presenting rejected claims in better form for 
consideration on appeal may be admitted;
    (3) An amendment touching the merits of the application or patent 
under reexamination may be admitted upon a showing of good and 
sufficient reasons why the amendment is necessary and was not earlier 
presented.
    (c) The admission of, or refusal to admit, any amendment after a 
final rejection, a final action, an action closing prosecution, or any 
related proceedings will not operate to relieve the application or 
reexamination proceeding from its condition as subject to appeal or to 
save the application from abandonment under Sec.  1.135, or the 
reexamination prosecution from termination under Sec.  1.550(d) or 
Sec.  1.957(b) or limitation of further prosecution under Sec.  
1.957(c).
    (d)(1) Notwithstanding the provisions of paragraph (b) of this 
section, no amendment other than canceling claims, where such 
cancellation does not affect the scope of any other pending claim in 
the proceeding, can be made in an inter partes reexamination proceeding 
after the right of appeal notice under Sec.  1.953 except as provided 
in Sec.  1.981 or as permitted by Sec.  41.77(b)(1).
    (2) Notwithstanding the provisions of paragraph (b) of this 
section, an amendment made after a final rejection or other final 
action (Sec.  1.113) in an ex parte reexamination filed under Sec.  
1.510, or an action closing prosecution (Sec.  1.949) in an inter 
partes reexamination filed under Sec.  1.913 may not cancel claims 
where such cancellation affects the scope of any other pending claim in 
the reexamination proceeding except as provided in Sec.  1.981 or as 
permitted by Sec.  41.77(b)(1).
    (e) An affidavit or other evidence submitted after a final 
rejection or other final action (Sec.  1.113) in an application or in 
an ex parte reexamination filed under Sec.  1.510, or an action closing 
prosecution (Sec.  1.949) in an inter partes reexamination filed under 
Sec.  1.913 but before or with any appeal (Sec.  41.31 or Sec.  41.61), 
may be admitted upon a showing of good and sufficient reasons why the 
affidavit or other evidence is necessary and was not earlier presented.
    (f) Notwithstanding the provisions of paragraph (e) of this 
section, no affidavit or other evidence can be made in an inter partes 
reexamination proceeding after the right of appeal notice under Sec.  
1.953 except as provided in Sec.  1.981 or as permitted by Sec.  
41.77(b)(1).
    (g) After decision on appeal, amendments, affidavits and other 
evidence can only be made as provided in Sec. Sec.  1.198 and 1.981, or 
to carry into effect a recommendation under Sec.  41.50(c).
    19. In Sec.  1.131, revise paragraph (a)(1) to read as follows:


Sec.  1.131  Affidavit or declaration of prior invention.

    (a) * * *
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application to another 
or others that claims interfering subject matter as defined in Sec.  
41.203(a) of this title, in which case an applicant may suggest an 
interference pursuant to Sec.  41.202(a); or
* * * * *
    20. In Sec.  1.136, revise paragraphs (a)(1), (a)(2), and (b) to 
read as follows:


Sec.  1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory 
or shortened statutory time period, applicant may extend the time 
period for reply up to the earlier of the expiration of any maximum 
period set by statute or five months after the time period set for 
reply, if a petition for an extension of time and the fee set in Sec.  
1.17(a) are filed, unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) The reply is a reply brief submitted pursuant to Sec.  41.41 
of this title;

[[Page 66671]]

    (iii) The reply is a request for an oral hearing submitted pursuant 
to Sec.  41.47(a) of this title;
    (iv) The reply is to a decision by the Board of Patent Appeals and 
Interferences pursuant to Sec.  1.304 or to Sec.  41.50 or Sec.  41.52 
of this title; or
    (v) The application is involved in a contested case (Sec.  
41.101(a) of this title).
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior 
to the expiration of the period of extension to avoid abandonment of 
the application (Sec.  1.135), but in no situation may an applicant 
reply later than the maximum time period set by statute, or be granted 
an extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. See Sec.  1.304 for 
extensions of time to appeal to the U.S. Court of Appeals for the 
Federal Circuit or to commence a civil action; Sec.  1.550(c) for 
extensions of time in ex parte reexamination proceedings, Sec.  1.956 
for extensions of time in inter partes reexamination proceedings; and 
Sec. Sec.  41.4(a) and 41.121(a)(3) of this title for extensions of 
time in contested cases before the Board of Patent Appeals and 
Interferences.
* * * * *
    (b) When a reply cannot be filed within the time period set for 
such reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on 
which such reply is due, but the mere filing of such a request will not 
affect any extension under this paragraph. In no situation can any 
extension carry the date on which reply is due beyond the maximum time 
period set by statute. See Sec.  1.304 for extensions of time to appeal 
to the U.S. Court of Appeals for the Federal Circuit or to commence a 
civil action; Sec.  1.550(c) for extensions of time in ex parte 
reexamination proceedings; and Sec.  1.956 for extensions of time in 
inter partes reexamination proceedings.
* * * * *
    21. In Sec.  1.181, revise paragraph (a)(3) to read as follows:


Sec.  1.181  Petition to the Director.

    (a) * * *
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances. For petitions involving action of the Board 
of Patent Appeals and Interferences, see Sec.  41.3 of this title.
* * * * *
    22. Revise Sec.  1.191 to read as follows:


Sec.  1.191  Appeal to Board of Patent Appeals and Interferences.

    Appeals to the Board of Patent Appeals and Interferences under 35 
U.S.C. 134(a) and (b) are conducted according to part 41, subpart B, of 
this title.


Sec. Sec.  1.192-1.196  [Removed and reserved]

    23. Remove and reserve Sec. Sec.  1.192-1.196.
    24. Revise Sec.  1.197 to read as follows:


Sec.  1.197  Return of Jurisdiction from the Board of Patent Appeals 
and Interferences; termination of proceedings.

    (a) Jurisdiction over an application or patent under ex parte 
reexamination proceeding passes to the examiner after a decision by the 
Board of Patent Appeals and Interferences upon transmittal of the file 
to the examiner, subject to appellant's right of appeal or other 
review, for such further action by appellant or by the examiner, as the 
condition of the application or patent under ex parte reexamination 
proceeding may require, to carry into effect the decision of the Board 
of Patent Appeals and Interferences.
    (b) Proceedings on an application are considered terminated by the 
dismissal of an appeal or the failure to timely file an appeal to the 
court or a civil action (Sec.  1.304) except: Where claims stand 
allowed in an application; or where the nature of the decision requires 
further action by the examiner. The date of termination of proceedings 
on an application is the date on which the appeal is dismissed or the 
date on which the time for appeal to the court or review by civil 
action (Sec.  1.304) expires. If an appeal to the court or a civil 
action has been filed, proceedings on an application are considered 
terminated when the appeal or civil action is terminated. An appeal to 
the U.S. Court of Appeals for the Federal Circuit is terminated when 
the mandate is issued by the Court. A civil action is terminated when 
the time to appeal the judgment expires.
    25. Revise Sec.  1.198 to read as follows:


Sec.  1.198  Reopening after a final decision of the Board of Patent 
Appeals and Interferences.

    When a decision by the Board of Patent Appeals and Interferences on 
appeal has become final for judicial review, prosecution of the 
proceeding before the primary examiner will not be reopened or 
reconsidered by the primary examiner except under the provisions of 
Sec.  1.114 or Sec.  41.50 without the written authority of the 
Director, and then only for the consideration of matters not already 
adjudicated, sufficient cause being shown.
    26. In Sec.  1.248, revise paragraph (c) to read as follows:


Sec.  1.248  Service of papers; manner of service; proof of service in 
cases.

* * * * *
    (c) See Sec.  41.105(f) of this title for service of papers in 
contested cases before the Board of Patent Appeals and Interferences.
    27. In Sec.  1.292, revise paragraphs (a) and (c) to read as 
follows:


Sec.  1.292  Public use proceedings.

    (a) When a petition for the institution of public use proceedings, 
supported by affidavits or declarations is found, on reference to the 
examiner, to make a prima facie showing that the invention claimed in 
an application believed to be on file had been in public use or on sale 
more than one year before the filing of the application, a hearing may 
be had before the Director to determine whether a public use proceeding 
should be instituted. If instituted, the Director may designate an 
appropriate official to conduct the public use proceeding, including 
the setting of times for taking testimony, which shall be taken as 
provided by part 41, subpart D, of this title. The petitioner will be 
heard in the proceedings but after decision therein will not be heard 
further in the prosecution of the application for patent.
* * * * *
    (c) A petition for institution of public use proceedings shall not 
be filed by a party to an interference as to an application involved in 
the interference. Public use and on sale issues in an interference 
shall be raised by a motion under Sec.  41.121(a)(1) of this title.
    28. In Sec.  1.295, revise paragraph (b) to read as follows:


Sec.  1.295  Review of decision finally refusing to publish a statutory 
invention registration.

* * * * *
    (b) Any requester who is dissatisfied with a decision finally 
rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the 
decision by filing an appeal to the Board of Patent Appeals and 
Interferences pursuant to Sec.  41.31 of this title. If the decision 
rejecting claims pursuant to 35 U.S.C. 112 is reversed, the request for 
a statutory invention registration will be approved and the 
registration published if all of the other provisions of Sec.  1.293 
and this section are met.

[[Page 66672]]

    29. In Sec.  1.302, revise paragraph (b) to read as follows:


Sec.  1.302  Notice of appeal.

* * * * *
    (b) In interferences, the notice must be served as provided in 
Sec.  41.106(f) of this title.
* * * * *
    30. In Sec.  1.303, revise paragraph (c) to read as follows:


Sec.  1.303  Civil action under 35 U.S.C. 145, 146, 306.

* * * * *
    (c) A notice of election under 35 U.S.C. 141 to have all further 
proceedings on review conducted as provided in 35 U.S.C. 146 must be 
filed with the Office of the Solicitor and served as provided in Sec.  
41.106(f) of this title.
* * * * *
    31. In Sec.  1.304, revise paragraphs (a)(1) and (a)(2) to read as 
follows:


Sec.  1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court 
of Appeals for the Federal Circuit (Sec.  1.302) or for commencing a 
civil action (Sec.  1.303) is two months from the date of the decision 
of the Board of Patent Appeals and Interferences. If a request for 
rehearing or reconsideration of the decision is filed within the time 
period provided under Sec.  41.52(a), Sec.  41.79(a), or Sec.  
41.127(d) of this title, the time for filing an appeal or commencing a 
civil action shall expire two months after action on the request. In 
contested cases before the Board of Patent Appeals and Interferences, 
the time for filing a cross-appeal or cross-action expires:
    (i) Fourteen days after service of the notice of appeal or the 
summons and complaint; or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (2) The time periods set forth in this section are not subject to 
the provisions of Sec.  1.136, Sec.  1.550(c), or Sec.  1.956, or of 
Sec.  41.4 of this title.
* * * * *
    32. In Sec.  1.322, revise paragraph (a)(3) to read as follows:


Sec.  1.322  Certificate of correction of Office mistake.

    (a) * * *
    (3) If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section and be 
accompanied by a motion under Sec.  41.121(a)(2) of this title.
* * * * *
    33. Revise Sec.  1.323 to read as follows:


Sec.  1.323  Certificate of correction of applicant's mistake.

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth in Sec.  
1.20(a). If the request relates to a patent involved in an 
interference, the request must comply with the requirements of this 
section and be accompanied by a motion under Sec.  41.121(a)(2) of this 
title.
    34. In Sec.  1.324, revise paragraphs (a) and (c), and add 
paragraph (d), to read as follows:


Sec.  1.324  Correction of inventorship in patent, pursuant to 35 
U.S.C. 256.

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or through error an inventor is not named in an issued 
patent and such error arose without any deceptive intention on his or 
her part, the Director may, on petition, or on order of a court before 
which such matter is called in question, issue a certificate naming 
only the actual inventor or inventors. A petition to correct 
inventorship of a patent involved in an interference must comply with 
the requirements of this section and must be accompanied by a motion 
under Sec.  41.121(a)(2) of this title.
* * * * *
    (c) For correction of inventorship in an application, see 
Sec. Sec.  1.48 and 1.497, and in a contested case before the Board of 
Patent Appeals and Interferences, see Sec.  41.121(a)(2) of this title.
    (d) Correction of inventorship in a contested case before the Board 
of Patent Appeals and Interferences. In a contested case under part 41, 
subpart D, of this title, a request for correction of a patent must be 
in the form of a motion under Sec.  41.121(a)(2) of this title.
    35. In Sec.  1.565, revise paragraph (e) to read as follows:


Sec.  1.565  Concurrent Office proceedings which include an ex parte 
reexamination proceeding.

* * * * *
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Director may suspend the 
reexamination or the interference. The Director will not consider a 
request to suspend an interference unless a motion (Sec.  41.121(a)(3) 
of this title) to suspend the interference has been presented to, and 
denied by, an administrative patent judge, and the request is filed 
within ten (10) days of a decision by an administrative patent judge 
denying the motion for suspension or such other time as the 
administrative patent judge may set. For concurrent inter partes 
reexamination and interference of a patent, see Sec.  1.993.


Sec. Sec.  1.601-1.690  (Subpart E) [Removed and reserved]

    36. Remove and reserve subpart E, consisting of Sec. Sec.  1.601 
through 1.690, of part 1.
    37. In Sec.  1.701, revise paragraph (c)(2)(ii) to read as follows:


Sec.  1.701  Extension of patent term due to examination delay under 
the Uruguay Round Agreements Act (original applications, other than 
designs, filed on or after June 8, 1995, and before May 29, 2000).

* * * * *
    (c) * * *
    (2) * * *
    (ii) The number of days, if any, in the period beginning on the 
date of mailing of an examiner's answer under Sec.  41.39 of this title 
in the application under secrecy order and ending on the date the 
secrecy order and any renewal thereof was removed;
* * * * *
    38. In Sec.  1.703, revise paragraphs (a)(4), (b)(3)(ii), (b)(4), 
(d)(2), and (e) to read as follows:


Sec.  1.703  Period of adjustment of patent term due to examination 
delay.

    (a) * * *
    (4) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date an appeal brief in 
compliance with Sec.  41.37 of this title was filed and ending on the 
date of mailing of any of an examiner's answer under Sec.  41.39 of 
this title, an action under 35 U.S.C. 132, or a notice of allowance 
under 35 U.S.C. 151, whichever occurs first;
* * * * *
    (b) * * *
    (3) * * *
    (ii) The number of days, if any, in the period beginning on the 
date of mailing of an examiner's answer under Sec.  41.39 of this title 
in the application under secrecy order and ending on the date the 
secrecy order was removed;
* * * * *
    (4) The number of days, if any, in the period beginning on the date 
on which a notice of appeal to the Board of Patent Appeals and 
Interferences was under 35 U.S.C. 134 and Sec.  41.31 of this title and 
ending on the date of the last decision by the Board of Patent Appeals 
and Interferences or by a Federal court in an appeal under 35 U.S.C. 
141 or a civil action under 35 U.S.C. 145, or on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs

[[Page 66673]]

first, if the appeal did not result in a decision by the Board of 
Patent Appeals and Interferences.
* * * * *
    (d) * * *
    (2) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec.  41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order was removed;
* * * * *
    (e) The period of adjustment under Sec.  1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which a 
notice of appeal to the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and Sec.  41.31 of this title and ending on 
the date of a final decision in favor of the applicant by the Board of 
Patent Appeals and Interferences or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
* * * * *
    39. In Sec.  1.704, revise paragraph (c)(9) to read as follows:


Sec.  1.704  Reduction of period of adjustment of patent term.

* * * * *
    (c) * * *
    (9) Submission of an amendment or other paper after a decision by 
the Board of Patent Appeals and Interferences, other than a decision 
designated as containing a new ground of rejection under Sec.  41.50(b) 
of this title or statement under Sec.  41.50(c) of this title, or a 
decision by a Federal court, less than one month before the mailing of 
an Office action under 35 U.S.C. 132 or notice of allowance under 35 
U.S.C. 151 that requires the mailing of a supplemental Office action or 
supplemental notice of allowance, in which case the period of 
adjustment set forth in Sec.  1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the mailing date of the supplemental Office action or notice 
of allowance; or
    (ii) Four months;
* * * * *
    40. Revise Sec.  1.959 to read as follows:


Sec.  1.959  Appeal in inter partes reexamination.

    Appeals to the Board of Patent Appeals and Interferences under 35 
U.S.C. 134(c) are conducted according to part 41, subpart C, of this 
title.


Sec. Sec.  1.961-1.977  [Removed and reserved]

    41. Remove and reserve Sec. Sec.  1.961-1.977.
    42. Revise Sec.  1.979 to read as follows:


Sec.  1.979  Return of Jurisdiction from the Board of Patent Appeals 
and Interferences; termination of proceedings.

    (a) Jurisdiction over an inter partes reexamination proceeding 
passes to the examiner after a decision by the Board of Patent Appeals 
and Interferences upon transmittal of the file to the examiner, subject 
to each appellant's right of appeal or other review, for such further 
action as the condition of the inter partes reexamination proceeding 
may require, to carry into effect the decision of the Board of Patent 
Appeals and Interferences.
    (b) Upon termination of the appeal before the Board of Patent 
Appeals and Interferences (Sec.  41.83), if no further appeal has been 
taken (Sec.  1.983), the inter partes reexamination proceeding will be 
terminated and the Director will issue a certificate under Sec.  1.997 
terminating the proceeding. If an appeal to the U.S. Court of Appeals 
for the Federal Circuit has been filed, that appeal is considered 
terminated when the mandate is issued by the Court.
    43. Revise Sec.  1.981 to read as follows:


Sec.  1.981  Reopening after a final decision of the Board of Patent 
Appeals and Interferences.

    When a decision by the Board of Patent Appeals and Interferences on 
appeal has become final for judicial review, prosecution of the inter 
partes reexamination proceeding will not be reopened or reconsidered by 
the primary examiner except under the provisions of Sec.  41.77 without 
the written authority of the Director, and then only for the 
consideration of matters not already adjudicated, sufficient cause 
being shown.
    44. Revise Sec.  1.993 to read as follows:


Sec.  1.993  Suspension of concurrent interference and inter partes 
reexamination proceeding.

    If a patent in the process of inter partes reexamination is or 
becomes involved in an interference, the Director may suspend the inter 
partes reexamination or the interference. The Director will not 
consider a request to suspend an interference unless a motion under 
Sec.  41.121(a)(3) of this title to suspend the interference has been 
presented to, and denied by, an administrative patent judge and the 
request is filed within ten (10) days of a decision by an 
administrative patent judge denying the motion for suspension or such 
other time as the administrative patent judge may set.

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

    45. The authority citation for Part 5 continues to read as follows:

    Authority: 35 U.S.C.2(b)(2), 41, 181-188, as amended by the 
patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.CX. 
2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 U.S.C. 
3201 et seq.; and the delegations in the regulations under these 
Acts of the Commissioner (15 CFR 3701.10(j), 22 CFR 125.04, and 10 
CFR 810.7).

    45a. In Sec.  5.3, revise paragraph (b) to read as follows:


Sec.  5.3  Prosecution of application under secrecy orders; withholding 
patent.

* * * * *
    (b) An interference will not be declared involving a national 
application under secrecy order. An applicant whose application is 
under secrecy order may suggest an interference (Sec.  41.202(a)), but 
the Office will not act on the request while the application remains 
under a secrecy order.
* * * * *

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE

    46. The authority citation for Part 10 continues to read as 
follows:

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 31, 
32, 41.

    46a. In Sec.  10.23, revise paragraph (c)(7) to read as follows:


Sec.  10.23  Misconduct.

* * * * *
    (c) * * *
    (7) Knowingly withholding from the Office information identifying a 
patent or patent application of another from which one or more claims 
have been copied. See Sec.  41.202(a)(1) of this title.
* * * * *
    47. Add part 41 to read as follows:

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

Subpart A--General Provisions
Sec.
41.1 Policy.
41.2 Definitions.
41.3 Petitions.
41.4 Timeliness.
41.5 Counsel.
41.6 Public availability of Board records.

[[Page 66674]]

41.7 Management of the record.
41.8 Mandatory notices.
41.9 Action by owner.
41.20 Fees.
Subpart B--Ex parte Appeals to the Board
41.30 Definitions.
41.31 Appeal to Board.
41.33 Amendments and affidavits or other evidence after appeal.
41.35 Jurisdiction over appeal.
41.37 Appeal brief.
41.39 Examiner's answer.
41.41 Reply brief.
41.43 Examiner's response to reply brief.
41.47 Oral hearing.
41.50 Decisions and other actions by the Board.
41.52 Rehearing.
41.54 Action following decision.
41.56 Termination of appeal.
Subpart C--Inter Partes Appeals to the Board
41.60 Definitions.
41.61 Notice of appeal and cross appeal to Board.
41.63 Amendments and affidavits or other evidence after appeal.
41.64 Jurisdiction over appeal in inter partes reexamination.
41.66 Time for filing briefs.
41.67 Appellant's brief.
41.68 Respondent's brief.
41.69 Examiner's answer.
41.71 Rebuttal brief.
41.73 Oral hearing.
41.77 Decisions and other actions by the Board.
41.79 Rehearing.
41.81 Action following decision.
41.83 Termination of appeal.
Subpart D--Contested Cases
41.100 Definitions.
41.101 Notice of proceeding.
41.102 Completion of examination.
41.103 Jurisdiction over involved files.
41.104 Conduct of contested case.
41.105 Ex parte communications.
41.106 Filing and service.
41.107 [Reserved].
41.108 Lead counsel.
41.109 Access to and copies of Office records.
41.110 Filing claim information.
41.120 Notice of basis for relief.
41.121 Motions.
41.122 New arguments in opposition or reply.
41.123 Time for acting on motions.
41.124 Oral argument.
41.125 Decisions on motions.
41.126 Arbitration.
41.127 Judgment.
41.128 Termination.
41.129 Sanctions.
41.150 Discovery.
41.151 Admissibility.
41.152 Applicability of the Federal Rules of Evidence.
41.153 Records of the United States Patent and Trademark Office.
41.154 Form of evidence.
41.155 Objection; motion to exclude; motion in limine.
41.156 Compelling testimony and production.
41.157 Taking testimony.
41.158 Expert testimony; tests and data.
Subpart E--Patent Interferences
41.200 Procedure; pendency.
41.201 Definitions.
41.202 Suggesting an interference.
41.203 Declaration.
41.204 Notice of basis for relief.
41.205 Settlement agreements.
41.206 Common interests in the invention.
41.207 Presumptions.
41.208 Content of substantive and responsive motions.

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.

Subpart A--General Provisions


Sec.  41.1  Policy.

    (a) Scope. This Part 41 governs proceedings before the Board of 
Patent Appeals and Interferences. Sections 1.1 to 1.36 and 1.181 to 
1.183 of this title also apply to practice before the Board, as do 
other sections of part 1 of this title that are cited in this part 41.
    (b) Construction. The provisions of this Part 41 shall be construed 
to secure the just, speedy, and inexpensive resolution of every 
proceeding before the Board.
    (c) Decorum. Each party must act with courtesy and decorum in all 
proceedings before the Board, including interactions with other 
parties.


Sec.  41.2  Definitions.

    Unless otherwise clear from the context, the following definitions 
apply to proceedings under this part:
    Affidavit means affidavit, declaration under Sec.  1.68 of this 
title, or statutory declaration under 28 U.S.C. 1746. A transcript of 
an ex parte deposition may be used as an affidavit in a contested case.
    Board means the Board of Patent Appeals and Interferences and 
includes:
    (1) For a final Board:
    (i) In an appeal or contested case, a panel of the Board.
    (ii) In a proceeding under Sec.  41.3, the Chief Administrative 
Patent Judge or another official acting under an express delegation 
from the Chief Administrative Patent Judge.
    (2) For non-final actions, a Board member or employee acting with 
the authority of the Board.
    Board member means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office, 
the Deputy Under Secretary of Commerce for Intellectual Property and 
Deputy Director of the United States Patent and Trademark Office, the 
Commissioner for Patents, the Commissioner for Trademarks, and the 
administrative patent judges.
    Contested case means a Board proceeding other than an appeal under 
35 U.S.C. 134 or a petition under Sec.  41.3. An appeal in an inter 
partes reexamination is not a contested case.
    Final means, with regard to a Board action, final for the purposes 
of judicial review. A decision is final only if:
    (1) In a panel proceeding. The decision is rendered by a panel, 
disposes of all issues with regard to the party seeking judicial 
review, and does not indicate that further action is required; and
    (2) In other proceedings. The decision disposes of all issues or 
the decision states it is final.
    Hearing means consideration of the issues of record. Rehearing 
means reconsideration.
    Office means United States Patent and Trademark Office.
    Panel means at least three Board members acting in a panel 
proceeding.
    Panel proceeding means a proceeding in which final action is 
reserved by statute to at least three Board members, but includes a 
non-final portion of such a proceeding whether administered by panel or 
not.
    Party, in this part, means any entity participating in a Board 
proceeding, other than officers and employees of the Office, including:
    (1) An appellant;
    (2) A participant in a contested case;
    (3) A petitioner; and
    (4) Counsel for any of the above, where context permits.


Sec.  41.3  Petitions.

    (a) Deciding official. Petitions must be addressed to the Chief 
Administrative Patent Judge. A panel or an administrative patent judge 
may certify a question of policy to the Chief Administrative Patent 
Judge for decision. The Chief Administrative Patent Judge may delegate 
authority to decide petitions.
    (b) The following matters are not subject to petition:
    (1) Issues committed by statute to a panel, and
    (2) In pending contested cases, procedural issues. See Sec.  
41.121(a)(3) and Sec.  41.125(c).
    (c) Petition fee. The fee set in Sec.  41.20(a) must accompany any 
petition under this section except no fee is required for a petition 
under this section seeking supervisory review.
    (d) Effect on proceeding. The filing of a petition does not stay 
the time for any other action in a Board proceeding.
    (e) Time for action.

[[Page 66675]]

    (1) Except as otherwise provided in this part or as the Board may 
authorize in writing, a party may:
    (i) File the petition within 14 calendar days from the date of the 
action from which the party is requesting relief, and
    (ii) File any request for reconsideration of a petition decision 
within 14 calendar days of the decision on petition or such other time 
as the Board may set.
    (2) A party may not file an opposition or a reply to a petition 
without Board authorization.


Sec.  41.4  Timeliness.

    (a) Extensions of time. Extensions of time will be granted only on 
a showing of good cause except as otherwise provided by rule.
    (b) Late filings. Late filings will not be considered absent a 
showing of excusable neglect or a Board determination that 
consideration on the merits would be in the interest of justice.
    (c) Scope. This section governs all proceedings before the Board, 
but does not apply to Board-related proceedings outside the Board, such 
as:
    (1) Seeking judicial review (see Sec. Sec.  1.301-1.304 of this 
title) or
    (2) Extensions during prosecution (see Sec.  1.136 of this title).


Sec.  41.5  Counsel.

    While the Board has jurisdiction:
    (a) Appearance pro hac vice. The Board may authorize a person other 
than a patent practitioner to appear as counsel in a specific 
proceeding.
    (b) Disqualification. (1) The Board may disqualify counsel in a 
specific proceeding after notice and an opportunity to be heard.
    (2) A decision to disqualify is not final for the purposes of 
judicial review until certified by the Chief Administrative Patent 
Judge.
    (c) Withdrawal. Counsel may not withdraw from a proceeding before 
the Board unless the Board authorizes such withdrawal.
    (d) Procedure. The Board may institute a proceeding under this 
section on its own or a party in a contested case may request relief 
under this section.
    (e) Referral to the Director of Enrollment and Discipline. The 
Board may refer a question arising under paragraphs (a) or (b) of this 
section to the Director of Enrollment and Discipline for action.


Sec.  41.6  Public availability of Board records.

    (a) Publication.--(1) Generally. Any Board action is available for 
public inspection without a party's permission if rendered in a file 
open to the public pursuant to Sec.  1.11 of this title or in an 
application that has been published in accordance with Sec. Sec.  1.211 
through 1.221 of this title. The Office may independently publish any 
Board action that is available for public inspection.
    (2) Determination of special circumstances. Any Board action not 
publishable under paragraph (a)(1) of this section may be published or 
made available for public inspection if the Director believes that 
special circumstances warrant publication and a party does not, within 
two months after being notified of the intention to make the action 
public, object in writing on the ground that the action discloses the 
objecting party's trade secret or other confidential information and 
states with specificity that such information is not otherwise publicly 
available. If the action discloses such information, the party shall 
identify the deletions in the text of the action considered necessary 
to protect the information. If the affected party considers that the 
entire action must be withheld from the public to protect such 
information, the party must explain why. The party will be given time, 
not less than twenty days, to request reconsideration and seek court 
review before any contested portion of the action is made public over 
its objection.
    (b) Record of proceeding.--(1) The record of a Board proceeding is 
available to the public unless a patent application not otherwise 
available to the public is involved.
    (2) Notwithstanding paragraph (b)(1) of this section, after a final 
Board action in or termination of a Board proceeding, the record of the 
Board proceeding will be made available to the public if any involved 
file is or becomes open to the public under Sec.  1.11 of this title or 
an involved application is or becomes published under Sec. Sec.  1.211-
1.221 of this title.


Sec.  41.7  Management of the record.

    (a) The Board may expunge any paper that is not authorized under 
this part or in a Board order, or that is filed contrary to a Board 
order.
    (b) A party may not file a paper previously filed in the same Board 
proceeding, not even as an exhibit or appendix, without Board 
authorization.


Sec.  41.8  Mandatory notices.

    In an appeal (Sec. Sec.  41.37, 41.67, or Sec.  41.68) or at the 
initiation of a contested case (Sec.  41.101), and within 20 days of 
any change during the proceeding, a party must identify:
    (a) Its real party-in-interest, and
    (b) Each judicial or administrative proceeding that could affect, 
or be affected by, the Board proceeding, specifically including 
judicial review of the Board proceeding.


Sec.  41.9  Action by owner.

    (a) Entire interest. An owner of the entire interest in an 
application or patent involved in a Board proceeding may act in the 
proceeding to the exclusion of the inventor (see Sec.  3.73(b) of this 
title).
    (b) Part interest. An owner of a part interest in an application or 
patent involved in a Board proceeding may petition to act in the 
proceeding to the exclusion of an inventor or a co-owner. The petition 
must show the inability or refusal of an inventor or co-owner to 
prosecute the proceeding or other cause why it is in the interest of 
justice to permit the owner of a part interest to act in the 
proceeding. An order granting the petition may set conditions on the 
actions of the parties during the proceeding.


Sec.  41.20  Fees.

    (a) Petition fee. The fee for filing a petition under this part 
is--Sec.  130.00.
    (b) Appeal fees.
    (1) For filing a notice of appeal from the examiner to the Board:
    (i) By a small entity (Sec.  1.27(a) of this title)--$165.00.
    (ii) By other than a small entity--$330.00.
    (2) In addition to the fee for filing a notice of appeal, for 
filing a brief in support of an appeal:
    (i) By a small entity (Sec.  1.27(a) of this title)--$165.00.
    (ii) By other than a small entity--$330.00.
    (3) For filing a request for an oral hearing before the Board in an 
appeal under 35 U.S.C. 134:
    (i) By a small entity (Sec.  1.27(a) of this title)--$145.00
    (ii) By other than a small entity--$290.00.

Subpart B--Ex parte Appeals to the Board


Sec.  41.30  Definitions.

    In addition to the definitions in Sec.  41.2, the following 
definitions apply to proceedings under this subpart unless otherwise 
clear from the context:
    Proceeding means either a national application for a patent, an 
application for reissue of a patent, or an ex parte reexamination 
proceeding. Appeal to the Board in an inter partes reexamination 
proceeding is controlled by subpart C of this part.
    Applicant means either the applicant in a national application for 
a patent or the applicant in an application for reissue of a patent.

[[Page 66676]]

    Owner means the owner of the patent undergoing ex parte 
reexamination under Sec.  1.510 of this title.


Sec.  41.31  Appeal to Board.

    (a) Who may appeal and how to file an appeal:
    (1) Every applicant, any of whose claims has been twice or finally 
(Sec.  1.113 of this title) rejected, may appeal the decision of the 
examiner to the Board by filing a notice of appeal accompanied by the 
fee set forth in Sec.  41.20(b)(1) within the time period provided 
under Sec.  1.134 of this title for reply.
    (2) Every owner of a patent under ex parte reexamination filed 
under Sec.  1.510 of this title before November 29, 1999, any of whose 
claims has been twice or finally (Sec.  1.113 of this title) rejected, 
may appeal from the decision of the examiner to the Board by filing a 
notice of appeal accompanied by the fee set forth in Sec.  41.20(b)(1) 
within the time period provided under Sec.  1.134 of this title for 
reply.
    (3) Every owner of a patent under ex parte reexamination filed 
under Sec.  1.510 of this title on or after November 29, 1999, any of 
whose claims has been finally (Sec.  1.113 of this title) rejected, may 
appeal from the decision of the examiner to the Board by filing a 
notice of appeal accompanied by the fee set forth in Sec.  41.20(b)(1) 
within the time period provided under Sec.  1.134 of this title for 
reply.
    (b) The signature requirement of Sec.  1.33 of this title does not 
apply to a notice of appeal filed under this section.
    (c) An appeal, when taken, must be taken from the rejection of all 
claims under rejection which the applicant or owner proposes to 
contest. Questions relating to matters not affecting the merits of the 
invention may be required to be settled before an appeal can be 
considered.
    (d) The time periods set forth in paragraphs (a)(1)-(a)(3) of this 
section are extendable under the provisions of Sec.  1.136 of this 
title for patent applications and Sec.  1.550(c) of this title for ex 
parte reexamination proceedings.


Sec.  41.33  Amendments and affidavits or other evidence after appeal.

    (a) Amendments submitted after the date the proceeding has been 
appealed pursuant to Sec.  41.31(a)(1)-(a)(3) may be admitted:
    (1) To cancel claims, where such cancellation does not affect the 
scope of any other pending claim in the proceeding, or
    (2) To rewrite dependent claims into independent form.
    (b) All other amendments submitted after the date the proceeding 
has been appealed pursuant to Sec.  41.31(a)(1)-(a)(3) will not be 
admitted except as permitted by Sec. Sec.  41.39(b)(1), 41.50(a)(2)(i) 
and 41.50(b)(1).
    (c) Affidavits or other evidence submitted after the date the 
proceeding has been appealed pursuant to Sec.  41.31(a)(1)-(a)(3) will 
not be admitted except as permitted by Sec. Sec.  41.39(b)(1), 
41.50(a)(2)(i) and 41.50(b)(1).


Sec.  41.35  Jurisdiction over appeal.

    (a) Jurisdiction over the proceeding passes to the Board upon 
transmittal of the file, including all briefs and examiner's answers, 
to the Board.
    (b) If, after receipt and review of the proceeding, the Board 
determines that the file is not complete or is not in compliance with 
the requirements of this subpart, the Board may relinquish jurisdiction 
to the examiner or take other appropriate action to permit completion 
of the proceeding.
    (c) Prior to the entry of a decision on the appeal by the Board, 
the Director may sua sponte order the proceeding remanded to the 
examiner.


Sec.  41.37  Appeal brief.

    (a)(1) Appellant must file a brief under this section within two 
months from the date of the notice of appeal under Sec.  41.31.
    (2) The brief must be accompanied by the fee set forth in Sec.  
41.20(b)(2).
    (b) On failure to file the brief, accompanied by the requisite fee, 
within the period specified in paragraph (a) of this section, the 
appeal will stand dismissed.
    (c)(1) The brief shall contain the following items under 
appropriate headings and in the order indicated in paragraphs (c)(1)(i) 
through (c)(1)(x) of this section, except that a brief filed by an 
appellant who is not represented by a registered practitioner need only 
substantially comply with paragraphs (c)(1)(i) through (c)(1)(iv) and 
(c)(1)(vii) through (c)(1)(x) of this section:
    (i) Real party in interest. A statement identifying by name the 
real party in interest.
    (ii) Related appeals and interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
appellant, the appellant's legal representative, or assignee which may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (c)(1)(x) of this section.
    (iii) Status of claims. A statement of the status of all the claims 
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, 
objected to, canceled) and an identification of those claims that are 
being appealed.
    (iv) Status of amendments. A statement of the status of any 
amendment filed subsequent to final rejection.
    (v) Summary of claimed subject matter. A concise explanation of the 
subject matter defined in each of the independent 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. For each 
claim involved in the appeal, every means plus function and step plus 
function as permitted by 35 U.S.C. 112, sixth paragraph, must be 
identified and the structure, material, or acts described in the 
specification as corresponding to each claimed function must be set 
forth with reference to the specification by page and line number, and 
to the drawing, if any, by reference characters.
    (vi) Grounds of rejection to be reviewed on appeal. A concise 
statement of each ground of rejection presented for review.
    (vii) Argument. The contentions of appellant with respect to each 
ground of rejection presented for review in paragraph (c)(1)(vi) of 
this section, and the basis therefor, with citations of the statutes, 
regulations, authorities, and parts of the record relied on. Any 
arguments or authorities not included in the brief or a reply brief 
filed pursuant to Sec.  41.41 will be refused consideration by the 
Board, unless good cause is shown. Each ground of rejection must be 
treated under a separate heading. For each ground of rejection applying 
to two or more claims, the claims may be argued separately or as a 
group. When multiple claims subject to the same ground of rejection are 
argued as a group by appellant, the Board may select a single claim 
from the group of claims that are argued together to decide the appeal 
with respect to the group of claims as to the ground of rejection on 
the basis of the selected claim alone. Notwithstanding any other 
provision of this paragraph, the failure of appellant to separately 
argue claims which appellant has grouped together shall constitute a 
waiver of any argument that the Board must consider the patentability 
of any grouped claim separately. Any claim argued separately should be 
placed under a subheading identifying the claim by number. Claims 
argued as a group should be placed

[[Page 66677]]

under a subheading identifying the claims by number. A statement which 
merely points out what a claim recites will not be considered an 
argument for patentability of the claim.
    (viii) Claims appendix. An appendix containing a copy of the claims 
involved in the appeal.
    (ix) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec.  1.130, 1.131, 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by appellant in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner. 
Reference to unentered evidence is not permitted in the brief. See 
Sec.  41.33 for treatment of evidence submitted after appeal. This 
appendix may also include copies of the evidence relied upon by the 
examiner as to grounds of rejection to be reviewed on appeal.
    (x) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (c)(1)(ii) of this section.
    (2) A brief shall not include any new or non-admitted amendment, or 
any new or non-admitted affidavit or other evidence. See Sec.  1.116 of 
this title for amendments, affidavits or other evidence filed after 
final action but before or with any appeal and Sec.  41.33 for 
amendments, affidavits or other evidence filed after the date of the 
appeal.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for non-compliance and given a time period 
within which to file an amended brief. If appellant does not file an 
amended brief within the set time period, or files an amended brief 
which does not overcome all the reasons for non-compliance stated in 
the notification, the appeal will stand dismissed.
    (e) The time periods set forth in this section are extendable under 
the provisions of Sec.  1.136 of this title for patent applications and 
Sec.  1.550(c) of this title for ex parte reexamination proceedings.


Sec.  41.39  Examiner's answer.

    (a)(1) The primary examiner may, within such time as may be 
directed by the Director, furnish a written answer to the appeal brief 
including such explanation of the invention claimed and of the 
references relied upon and grounds of rejection as may be necessary, 
supplying a copy to appellant. If the primary examiner determines that 
the appeal does not comply with the provisions of Sec. Sec.  41.31-
41.37 or does not relate to an appealable action, the primary examiner 
shall make such determination of record.
    (2) An examiner's answer may include a new ground of rejection.
    (b) If an examiner's answer contains a new ground of rejection, 
appellant must within two months from the date of the examiner's answer 
exercise one of the following two options to avoid sua sponte dismissal 
of the appeal as to the claims subject to the new ground of rejection:
    (1) Reopen prosecution. Request that prosecution be reopened before 
the primary examiner by filing a reply under Sec.  1.111 of this title 
with or without amendment or submission of affidavits (Sec. Sec.  
1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment 
or submission of affidavits or other evidence must be relevant to the 
new ground of rejection. A request that complies with this paragraph 
will be entered and the application or the patent under ex parte 
reexamination will be reconsidered by the examiner under the provisions 
of Sec.  1.112 of this title. Any request that prosecution be reopened 
under this paragraph will be treated as a request to withdraw the 
appeal.
    (2) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as set forth in Sec.  41.41. Such a reply brief 
must address each new ground of rejection as set forth in Sec.  
41.37(c)(1)(vii) and should follow the other requirements of a brief as 
set forth in Sec.  41.37(c). A reply brief may not be accompanied by 
any amendment, affidavit (Sec. Sec.  1.130, 1.131 or 1.132 of this 
title) or other evidence. If a reply brief filed pursuant to this 
section is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened before 
the primary examiner under paragraph (b)(1) of this section.
    (c) Extensions of time under Sec.  1.136(a) of this title for 
patent applications are not applicable to the time period set forth in 
this section. See Sec.  1.136(b) of this title for extensions of time 
to reply for patent applications and Sec.  1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.


Sec.  41.41  Reply brief.

    (a)(1) Appellant may file a reply brief to an examiner's answer 
within two months from the date of the examiner's answer.
    (2) A reply brief shall not include any new or non-admitted 
amendment, or any new or non-admitted affidavit or other evidence. See 
Sec.  1.116 of this title for amendments, affidavits or other evidence 
filed after final action but before or with any appeal and Sec.  41.33 
for amendments, affidavits or other evidence filed after the date of 
the appeal.
    (b) A reply brief that is not in compliance with paragraph (a) of 
this section will not be considered. Appellant will be notified if a 
reply brief is not in compliance with paragraph (a) of this section.
    (c) Extensions of time under Sec.  1.136(a) of this title for 
patent applications are not applicable to the time period set forth in 
this section. See Sec.  1.136(b) of this title for extensions of time 
to reply for patent applications and Sec.  1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.


Sec.  41.43  Examiner's response to reply brief.

    (a)(1) After receipt of a reply brief in compliance with Sec.  
41.41, the primary examiner must acknowledge receipt and entry of the 
reply brief. In addition, the primary examiner may withdraw the final 
rejection and reopen prosecution or may furnish a supplemental 
examiner's answer responding to any new issue raised in the reply 
brief.
    (2) A supplemental examiner's answer may not include a new ground 
of rejection.
    (b) If a supplemental examiner's answer is furnished by the 
examiner, appellant may file another reply brief under Sec.  41.41 to 
any supplemental examiner's answer within two months from the date of 
the supplemental examiner's answer.
    (c) Extensions of time under Sec.  1.136(a) of this title for 
patent applications are not applicable to the time period set forth in 
this section. See Sec.  1.136(b) of this title for extensions of time 
to reply for patent applications and Sec.  1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.


Sec.  41.47  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which appellant considers such a hearing necessary or desirable for 
a proper presentation of the appeal. An appeal decided on the briefs 
without an oral hearing will receive the same consideration by the 
Board as appeals decided after an oral hearing.
    (b) If appellant desires an oral hearing, appellant must file, as a 
separate paper captioned ``REQUEST FOR ORAL HEARING,'' a written 
request for such hearing accompanied by the fee set forth in Sec.  
41.20(b)(3) within two months from the date of the examiner's answer or 
supplemental examiner's answer.

[[Page 66678]]

    (c) If no request and fee for oral hearing have been timely filed 
by appellant as required by paragraph (b) of this section, the appeal 
will be assigned for consideration and decision on the briefs without 
an oral hearing.
    (d) If appellant has complied with all the requirements of 
paragraph (b) of this section, a date for the oral hearing will be set, 
and due notice thereof given to appellant. If an oral hearing is held, 
an oral argument may be presented by, or on behalf of, the primary 
examiner if considered desirable by either the primary examiner or the 
Board. A hearing will be held as stated in the notice, and oral 
argument will ordinarily be limited to twenty minutes for appellant and 
fifteen minutes for the primary examiner unless otherwise ordered.
    (e) Appellant will argue first and may reserve time for rebuttal. 
At the oral hearing, appellant may only rely on evidence that has been 
previously entered and considered by the primary examiner and present 
argument that has been relied upon in the brief or reply brief. The 
primary examiner may only rely on argument and evidence relied upon in 
an answer or a supplemental answer.
    (f) Notwithstanding the submission of a request for oral hearing 
complying with this rule, if the Board decides that a hearing is not 
necessary, the Board will so notify appellant.
    (g) Extensions of time under Sec.  1.136(a) of this title for 
patent applications are not applicable to the time periods set forth in 
this section. See Sec.  1.136(b) of this title for extensions of time 
to reply for patent applications and Sec.  1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.


Sec.  41.50  Decisions and other actions by the Board.

    (a)(1) The Board, in its decision, may affirm or reverse the 
decision of the examiner in whole or in part on the grounds and on the 
claims specified by the examiner. The affirmance of the rejection of a 
claim on any of the grounds specified constitutes a general affirmance 
of the decision of the examiner on that claim, except as to any ground 
specifically reversed. The Board may also remand an application to the 
examiner.
    (2) If a supplemental examiner's answer is written in response to a 
remand by the Board for further consideration of a rejection pursuant 
to paragraph (a)(1) of this section, the appellant must exercise one of 
the following two options to avoid sua sponte dismissal of the appeal 
as to all claims under appeal:
    (i) Reopen prosecution. Request that prosecution be reopened before 
the examiner by filing a reply under Sec.  1.111 of this title with or 
without amendment or submission of affidavits (Sec. Sec.  1.130, 1.131 
or 1.132 of this title) or other evidence. Any amendment or submission 
of affidavits or other evidence must be relevant to the issues set 
forth in the remand or raised in the supplemental examiner's answer. A 
request that complies with this paragraph will be entered and the 
application or the patent under ex parte reexamination will be 
reconsidered by the examiner under the provisions of Sec.  1.112 of 
this title. Any request that prosecution be reopened under this 
paragraph will be treated as a request to withdraw the appeal.
    (ii) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as provided in Sec.  41.41. If such a reply brief 
is accompanied by any amendment, affidavit or other evidence, it shall 
be treated as a request that prosecution be reopened before the 
examiner under paragraph (a)(2)(i) of this section.
    (b) Should the Board have knowledge of any grounds not involved in 
the appeal for rejecting any pending claim, it may include in its 
opinion a statement to that effect with its reasons for so holding, 
which statement constitutes a new ground of rejection of the claim. A 
new ground of rejection pursuant to this paragraph shall not be 
considered final for judicial review. When the Board makes a new ground 
of rejection, the appellant, within two months from the date of the 
decision, must exercise one of the following two options with respect 
to the new ground of rejection to avoid termination of the appeal 
(Sec.  41.56) as to the rejected claims:
    (1) Reopen prosecution. Submit an appropriate amendment of the 
claims so rejected or a showing of facts relating to the claims so 
rejected, or both, and have the matter reconsidered by the examiner, in 
which event the proceeding will be remanded to the examiner. The new 
ground of rejection is binding upon the examiner unless an amendment or 
showing of facts not previously of record is made which, in the opinion 
of the examiner, overcomes the new ground of rejection stated in the 
decision. Should the examiner reject the claims, appellant may again 
appeal to the Board pursuant to Sec. Sec.  41.31 through 41.56.
    (2) Request rehearing. Request that the proceeding be reheard under 
Sec.  41.52 by the Board upon the same record. The request for 
rehearing must address any new ground of rejection and state with 
particularity the points believed to have been misapprehended or 
overlooked in entering the new ground of rejection and also state all 
other grounds upon which rehearing is sought.
    (c) The opinion of the Board may include an explicit statement how 
a claim on appeal may be amended to overcome a specific rejection. When 
the opinion of the Board includes such a statement, appellant has the 
right to amend in conformity therewith. An amendment in conformity with 
such statement will overcome the specific rejection. An examiner may 
reject a claim so-amended, provided that the rejection constitutes a 
new ground of rejection.
    (d) The Board may order appellant to additionally brief any matter 
that the Board considers to be of assistance in reaching a reasoned 
decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such an order. 
Failure to timely comply with the order may result in the sua sponte 
dismissal of the appeal.
    (e) Whenever a decision of the Board includes a remand, that 
decision shall not be considered final for judicial review. When 
appropriate, upon conclusion of proceedings on remand before the 
examiner, the Board may enter an order otherwise making its decision 
final for judicial review.
    (f) Extensions of time under Sec.  1.136(a) of this title for 
patent applications are not applicable to the time periods set forth in 
this section. See Sec.  1.136(b) of this title for extensions of time 
to reply for patent applications and Sec.  1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.


Sec.  41.52  Rehearing.

    (a) Appellant may file a single request for rehearing within 2 
months of the date of the original decision of the Board. No request 
for rehearing from a decision on rehearing will be permitted, unless 
the rehearing decision so modified the original decision as to become, 
in effect, a new decision, and the Board states that a second request 
for rehearing would be permitted. The request for rehearing must state 
with particularity the points believed to have been misapprehended or 
overlooked by the Board. Except for arguments responding to a new 
ground of rejection made pursuant to Sec.  41.50(b), arguments not 
raised in the briefs before the Board and evidence not previously 
relied upon in the brief and any reply brief(s) are not permitted in 
the request for rehearing. When a request for rehearing is made, the 
Board shall render a decision on the request for rehearing. The 
decision on the request for rehearing is deemed to

[[Page 66679]]

incorporate the earlier opinion reflecting its decision for appeal, 
except for those portions specifically withdrawn on rehearing, and is 
final for the purpose of judicial review, except when noted otherwise 
in the decision on rehearing.
    (b) Extensions of time under Sec.  1.136(a) of this title for 
patent applications are not applicable to the time period set forth in 
this section. See Sec.  1.136(b) of this title for extensions of time 
to reply for patent applications and Sec.  1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.


Sec.  41.54  Action following decision.

    After decision by the Board, the proceeding will be returned to the 
examiner, subject to appellant's right of appeal or other review, for 
such further action by appellant or by the examiner, as the condition 
of the proceeding may require, to carry into effect the decision.


Sec.  41.56  Termination of appeal.

    An appeal under this subpart is terminated by the dismissal of the 
appeal or when, after a final Board action:
    (a) A notice of appeal under 35 U.S.C. 141 is filed,
    (b) A civil action under 35 U.S.C. 146 is commenced, or
    (c) The time for seeking judicial review (Sec.  1.304 of this 
title) has expired.

Subpart C--Inter Partes Appeals to the Board


Sec.  41.60  Definitions.

    In addition to the definitions in Sec.  41.2, the following 
definitions apply to proceedings under this subpart unless otherwise 
clear from the context:
    Proceeding means an inter partes reexamination proceeding. Appeal 
to the Board in an ex parte reexamination proceeding is controlled by 
subpart B of this part. An inter partes reexamination proceeding is not 
a contested case subject to subpart D of this part.
    Owner means the owner of the patent undergoing inter partes 
reexamination under Sec.  1.915 of this title.
    Requester means each party, other than the owner, who requested 
that the patent undergo inter partes reexamination under Sec.  1.915 of 
this title.
    Appellant means any party, whether the owner or a requester, filing 
a notice of appeal or cross appeal under Sec.  41.61. If more than one 
party appeals or cross appeals, each appealing or cross appealing party 
is an appellant with respect to the claims to which his or her appeal 
or cross appeal is directed.
    Respondent means any requester responding under Sec.  41.68 to the 
appellant's brief of the owner, or the owner responding under Sec.  
41.68 to the appellant's brief of any requester. No requester may be a 
respondent to the appellant brief of any other requester.
    Filing means filing with a certificate indicating service of the 
document under Sec.  1.903 of this title.


Sec.  41.61  Notice of appeal and cross appeal to Board.

    (a)(1) Upon the issuance of a Right of Appeal Notice under Sec.  
1.953 of this title, the owner may appeal to the Board with respect to 
the final rejection of any claim of the patent by filing a notice of 
appeal within the time provided in the Right of Appeal Notice and 
paying the fee set forth in Sec.  41.20(b)(1).
    (2) Upon the issuance of a Right of Appeal Notice under Sec.  1.953 
of this title, the requester may appeal to the Board with respect to 
any final decision favorable to the patentability, including any final 
determination not to make a proposed rejection, of any original, 
proposed amended, or new claim of the patent by filing a notice of 
appeal within the time provided in the Right of Appeal Notice and 
paying the fee set forth in Sec.  41.20(b)(1).
    (b)(1) Within fourteen days of service of a requester's notice of 
appeal under paragraph (a)(2) of this section and upon payment of the 
fee set forth in Sec.  41.20(b)(1), an owner who has not filed a notice 
of appeal may file a notice of cross appeal with respect to the final 
rejection of any claim of the patent.
    (2) Within fourteen days of service of an owner's notice of appeal 
under paragraph (a)(1) of this section and upon payment of the fee set 
forth in Sec.  41.20(b)(1), a requester who has not filed a notice of 
appeal may file a notice of cross appeal with respect to any final 
decision favorable to the patentability, including any final 
determination not to make a proposed rejection, of any original, 
proposed amended, or new claim of the patent.
    (c) The notice of appeal or cross appeal in the proceeding must 
identify the appealed claim(s) and must be signed by the owner, the 
requester, or a duly authorized attorney or agent.
    (d) An appeal or cross appeal, when taken, must be taken from all 
the rejections of the claims in a Right of Appeal Notice which the 
patent owner proposes to contest or from all the determinations 
favorable to patentability, including any final determination not to 
make a proposed rejection, in a Right of Appeal Notice which a 
requester proposes to contest. Questions relating to matters not 
affecting the merits of the invention may be required to be settled 
before an appeal is decided.
    (e) The time periods for filing a notice of appeal or cross appeal 
may not be extended.
    (f) If a notice of appeal or cross appeal is timely filed but does 
not comply with any requirement of this section, appellant will be 
notified of the reasons for non-compliance and given a non-extendable 
time period within which to file an amended notice of appeal or cross 
appeal. If the appellant does not then file an amended notice of appeal 
or cross appeal within the set time period, or files a notice which 
does not overcome all the reasons for non-compliance stated in the 
notification of the reasons for non-compliance, that appellant's appeal 
or cross appeal will stand dismissed.


Sec.  41.63  Amendments and affidavits or other evidence after appeal.

    (a) Amendments submitted after the date the proceeding has been 
appealed pursuant to Sec.  41.61 canceling claims may be admitted where 
such cancellation does not affect the scope of any other pending claim 
in the proceeding.
    (b) All other amendments submitted after the date the proceeding 
has been appealed pursuant to Sec.  41.61 will not be admitted except 
as permitted by Sec.  41.77(b)(1).
    (c) Affidavits or other evidence submitted after the date the 
proceeding has been appealed pursuant to Sec.  41.61 will not be 
admitted except as permitted by reopening prosecution under Sec.  
41.77(b)(1).


Sec.  41.64  Jurisdiction over appeal in inter partes reexamination.

    (a) Jurisdiction over the proceeding passes to the Board upon 
transmittal of the file, including all briefs and examiner's answers, 
to the Board.
    (b) If, after receipt and review of the proceeding, the Board 
determines that the file is not complete or is not in compliance with 
the requirements of this subpart, the Board may relinquish jurisdiction 
to the examiner or take other appropriate action to permit completion 
of the proceeding.
    (c) Prior to the entry of a decision on the appeal by the Board, 
the Director may sua sponte order the proceeding remanded to the 
examiner.


Sec.  41.66  Time for filing briefs.

    (a) An appellant's brief must be filed no later than two months 
from the latest filing date of the last-filed notice of appeal or cross 
appeal or, if any party to the proceeding is entitled to file an appeal 
or cross appeal but fails to timely

[[Page 66680]]

do so, the expiration of time for filing (by the last party entitled to 
do so) such notice of appeal or cross appeal. The time for filing an 
appellant's brief or an amended appellant's brief may not be extended.
    (b) Once an appellant's brief has been properly filed, any brief 
must be filed by respondent within one month from the date of service 
of the appellant's brief. The time for filing a respondent's brief or 
an amended respondent's brief may not be extended.
    (c) The examiner will consider both the appellant's and 
respondent's briefs and may prepare an examiner's answer under Sec.  
41.69.
    (d) Any appellant may file a rebuttal brief under Sec.  41.71 
within one month of the date of the examiner's answer. The time for 
filing a rebuttal brief or an amended rebuttal brief may not be 
extended.
    (e) No further submission will be considered and any such 
submission will be treated in accordance with Sec.  1.939 of this 
title.


Sec.  41.67  Appellant's brief.

    (a)(1) Appellant(s) may once, within time limits for filing set 
forth in Sec.  41.66, file a brief and serve the brief on all other 
parties to the proceeding in accordance with Sec.  1.903 of this title.
    (2) The brief must be signed by the appellant, or the appellant's 
duly authorized attorney or agent and must be accompanied by the 
requisite fee set forth in Sec.  41.20(b)(2).
    (b) A party's appeal shall stand dismissed upon failure of that 
party to file an appellant's brief, accompanied by the requisite fee, 
within the time allowed under Sec.  41.66(a).
    (c)(1) The appellant's brief shall contain the following items 
under appropriate headings and in the order indicated in paragraphs 
(c)(1)(i) through (c)(1)(xi) of this section.
    (i) Real party in interest. A statement identifying by name the 
real party in interest.
    (ii) Related appeals and interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
appellant, the appellant's legal representative, or assignee which may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (c)(1)(xi) of this section.
    (iii) Status of claims. A statement of the status of all the claims 
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, 
objected to, canceled). If the appellant is the owner, the appellant 
must also identify the rejected claims whose rejection is being 
appealed. If the appellant is a requester, the appellant must identify 
the claims that the examiner has made a determination favorable to 
patentability, which determination is being appealed.
    (iv) Status of amendments. A statement of the status of any 
amendment filed subsequent to the close of prosecution.
    (v) Summary of claimed subject matter. A concise explanation of the 
subject matter defined in each of the independent claims involved in 
the appeal, which shall refer to the specification by column and line 
number, and to the drawing(s), if any, by reference characters. For 
each claim involved in the appeal, every means plus function and step 
plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be 
identified and the structure, material, or acts described in the 
specification as corresponding to each claimed function must be set 
forth with reference to the specification by page and line number, and 
to the drawing, if any, by reference characters.
    (vi) Issues to be reviewed on appeal. A concise statement of each 
issue presented for review. No new ground of rejection can be proposed 
by a third party requester appellant, unless such ground was withdrawn 
by the examiner during the prosecution of the proceeding, and the third 
party requester has not yet had an opportunity to propose it as a third 
party requester proposed ground of rejection.
    (vii) Argument. The contentions of appellant with respect to each 
issue presented for review in paragraph (c)(1)(vi) of this section, and 
the basis therefor, with citations of the statutes, regulations, 
authorities, and parts of the record relied on. Any arguments or 
authorities not included in the brief permitted under this section or 
Sec. Sec.  41.68 and 41.71 will be refused consideration by the Board, 
unless good cause is shown. Each issue must be treated under a separate 
heading. If the appellant is the patent owner, for each ground of 
rejection in the Right of Appeal Notice which appellant contests and 
which applies to two or more claims, the claims may be argued 
separately or as a group. When multiple claims subject to the same 
ground of rejection are argued as a group by appellant, the Board may 
select a single claim from the group of claims that are argued together 
to decide the appeal with respect to the group of claims as to the 
ground of rejection on the basis of the selected claim alone. 
Notwithstanding any other provision of this paragraph, the failure of 
appellant to separately argue claims which appellant has grouped 
together shall constitute a waiver of any argument that the Board must 
consider the patentability of any grouped claim separately. Any claim 
argued separately should be placed under a subheading identifying the 
claim by number. Claims argued as a group should be placed under a 
subheading identifying the claims by number. A statement which merely 
points out what a claim recites will not be considered an argument for 
patentability of the claim.
    (viii) Claims appendix. An appendix containing a copy of the claims 
to be reviewed on appeal.
    (ix) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec.  1.130, 1.131, 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by appellant in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner. 
Reference to unentered evidence is not permitted in the brief. See 
Sec.  41.63 for treatment of evidence submitted after appeal. This 
appendix may also include copies of the evidence relied upon by the 
examiner in any ground of rejection to be reviewed on appeal.
    (x) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (c)(1)(ii) of this section.
    (xi) Certificate of service. A certification that a copy of the 
brief has been served in its entirety on all other parties to the 
reexamination proceeding. The names and addresses of the parties served 
must be indicated.
    (2) A brief shall not include any new or non-admitted amendment, or 
any new or non-admitted affidavit or other evidence. See Sec.  1.116 of 
this title for amendments, affidavits or other evidence filed after 
final action but before or with any appeal and Sec.  41.63 for 
amendments, affidavits or other evidence after the date of the appeal.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (a) and paragraph (c) of this section, 
appellant will be notified of the reasons for non-compliance and given 
a non-extendable time period within which to file an amended brief. If 
appellant does not file an amended brief within the set time period, or 
files an amended brief which does not overcome all the reasons for non-
compliance

[[Page 66681]]

stated in the notification, that appellant's appeal will stand 
dismissed.


Sec.  41.68  Respondent's brief.

    (a)(1) Respondent(s) in an appeal may once, within the time limit 
for filing set forth in Sec.  41.66, file a respondent brief and serve 
the brief on all parties in accordance with Sec.  1.903 of this title.
    (2) The brief must be signed by the party, or the party's duly 
authorized attorney or agent, and must be accompanied by the requisite 
fee set forth in Sec.  41.20(b)(2).
    (3) The respondent brief shall be limited to issues raised in the 
appellant brief to which the respondent brief is directed.
    (4) A requester's respondent brief may not address any brief of any 
requester.
    (b)(1) The respondent brief shall contain the following items under 
appropriate headings and in the order here indicated, and may include 
an appendix containing only those portions of the record on which 
reliance has been made.
    (i) Real Party in Interest. A statement identifying by name the 
real party in interest.
    (ii) Related Appeals and Interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
respondent, the respondent's legal representative, or assignee which 
may be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (b)(1)(ix) of this section.
    (iii) Status of claims. A statement accepting or disputing 
appellant's statement of the status of claims. If appellant's statement 
of the status of claims is disputed, the errors in appellant's 
statement must be specified with particularity.
    (iv) Status of amendments. A statement accepting or disputing 
appellant's statement of the status of amendments. If appellant's 
statement of the status of amendments is disputed, the errors in 
appellant's statement must be specified with particularity.
    (v) Summary of claimed subject matter. A statement accepting or 
disputing appellant's summary of the subject matter defined in each of 
the independent claims involved in the appeal. If appellant's summary 
of the subject matter is disputed, the errors in appellant's summary 
must be specified.
    (vi) Issues to be reviewed on appeal. A statement accepting or 
disputing appellant's statement of the issues presented for review. If 
appellant's statement of the issues presented for review is disputed, 
the errors in appellant's statement must be specified. A counter 
statement of the issues for review may be made. No new ground of 
rejection can be proposed by a requester respondent.
    (vii) Argument. A statement accepting or disputing the contentions 
of appellant with each of the issues presented by the appellant for 
review. If a contention of the appellant is disputed, the errors in 
appellant's argument must be specified, stating the basis therefor, 
with citations of the statutes, regulations, authorities, and parts of 
the record relied on. Each issue must be treated under a separate 
heading. An argument may be made with each of the issues stated in the 
counter statement of the issues, with each counter-stated issue being 
treated under a separate heading.
    (viii) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec.  1.130, 1.131, 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by respondent in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner. 
Reference to unentered evidence is not permitted in the respondent's 
brief. See Sec.  41.63 for treatment of evidence submitted after 
appeal.
    (ix) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (b)(1)(ii) of this section.
    (x) Certificate of service. A certification that a copy of the 
respondent brief has been served in its entirety on all other parties 
to the reexamination proceeding. The names and addresses of the parties 
served must be indicated.
    (2) A respondent brief shall not include any new or non-admitted 
amendment, or any new or non-admitted affidavit or other evidence. See 
Sec.  1.116 of this title for amendments, affidavits or other evidence 
filed after final action but before or with any appeal and Sec.  41.63 
for amendments, affidavits or other evidence filed after the date of 
the appeal.
    (c) If a respondent brief is filed which does not comply with all 
the requirements of paragraph (a) and paragraph (b) of this section, 
respondent will be notified of the reasons for non-compliance and given 
a non-extendable time period within which to file an amended brief. If 
respondent does not file an amended respondent brief within the set 
time period, or files an amended respondent brief which does not 
overcome all the reasons for non-compliance stated in the notification, 
the respondent brief and any amended respondent brief by that 
respondent will not be considered.


Sec.  41.69  Examiner's answer.

    (a) The primary examiner may, within such time as directed by the 
Director, furnish a written answer to the owner's and/or requester's 
appellant brief or respondent brief including, as may be necessary, 
such explanation of the invention claimed and of the references relied 
upon, the grounds of rejection, and the reasons for patentability, 
including grounds for not adopting any proposed rejection. A copy of 
the answer shall be supplied to the owner and all requesters. If the 
primary examiner determines that the appeal does not comply with the 
provisions of Sec. Sec.  41.61-41.68 or does not relate to an 
appealable action, the primary examiner shall make such determination 
of record.
    (b) An examiner's answer may not include a new ground of rejection.
    (c) An examiner's answer may not include a new determination not to 
make a proposed rejection of a claim.
    (d) Any new ground of rejection, or any new determination not to 
make a proposed rejection, must be made in an Office action reopening 
prosecution.


Sec.  41.71  Rebuttal brief.

    (a) Within one month of the examiner's answer, any appellant may 
once file a rebuttal brief.
    (b)(1) The rebuttal brief of the owner may be directed to the 
examiner's answer and/or any respondent brief.
    (2) The rebuttal brief of the owner shall not include any new or 
non-admitted amendment, or an affidavit or other evidence. See Sec.  
1.116 of this title for amendments, affidavits or other evidence filed 
after final action but before or with any appeal and Sec.  41.63 for 
amendments, affidavits or other evidence filed after the date of the 
appeal.
    (c)(1) The rebuttal brief of any requester may be directed to the 
examiner's answer and/or the respondent brief of the owner.
    (2) The rebuttal brief of a requester may not be directed to the 
respondent brief of any other requester.
    (3) No new ground of rejection can be proposed by a requester.
    (4) The rebuttal brief of a requester shall not include any new or 
non-

[[Page 66682]]

admitted affidavit or other evidence. See Sec.  1.116(d) of this title 
for affidavits or other evidence filed after final action but before or 
with any appeal and Sec.  41.63(c) for affidavits or other evidence 
filed after the date of the appeal.
    (d) The rebuttal brief must include a certification that a copy of 
the rebuttal brief has been served in its entirety on all other parties 
to the proceeding. The names and addresses of the parties served must 
be indicated.
    (e) If a rebuttal brief is timely filed under paragraph (a) of this 
section but does not comply with all the requirements of paragraphs 
(a)-(d) of this section, appellant will be notified of the reasons for 
non-compliance and provided with a non-extendable period of one month 
within which to file an amended rebuttal brief. If the appellant does 
not file an amended rebuttal brief during the one-month period, or 
files an amended rebuttal brief which does not overcome all the reasons 
for non-compliance stated in the notification, that appellant's 
rebuttal brief and any amended rebuttal brief by that appellant will 
not be considered.


Sec.  41.73  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which an appellant or a respondent considers such a hearing 
necessary or desirable for a proper presentation of the appeal. An 
appeal decided on the briefs without an oral hearing will receive the 
same consideration by the Board as an appeal decided after an oral 
hearing.
    (b) If an appellant or a respondent desires an oral hearing, he or 
she must file, as a separate paper captioned ``REQUEST FOR ORAL 
HEARING,'' a written request for such hearing accompanied by the fee 
set forth in Sec.  41.20(b)(3) within two months after the date of the 
examiner's answer. The time for requesting an oral hearing may not be 
extended. The request must include a certification that a copy of the 
request has been served in its entirety on all other parties to the 
proceeding. The names and addresses of the parties served must be 
indicated.
    (c) If no request and fee for oral hearing have been timely filed 
by appellant or respondent as required by paragraph (b) of this 
section, the appeal will be assigned for consideration and decision on 
the briefs without an oral hearing.
    (d) If appellant or respondent has complied with all the 
requirements of paragraph (b) of this section, a hearing date will be 
set, and notice given to the owner and all requesters. If an oral 
hearing is held, an oral argument may be presented by, or on behalf of, 
the primary examiner if considered desirable by either the primary 
examiner or the Board. The notice shall set a non-extendable period 
within which all requests for oral hearing shall be submitted by any 
other party to the appeal desiring to participate in the oral hearing. 
A hearing will be held as stated in the notice, and oral argument will 
be limited to thirty minutes for each appellant and respondent who has 
requested an oral hearing, and twenty minutes for the primary examiner 
unless otherwise ordered. No appellant or respondent will be permitted 
to participate in an oral hearing unless he or she has requested an 
oral hearing and submitted the fee set forth in Sec.  41.20(b)(3).
    (e) At the oral hearing, each appellant and respondent may only 
rely on evidence that has been previously entered and considered by the 
primary examiner and present argument that has been relied upon in the 
briefs. The primary examiner may only rely on argument and evidence 
relied upon in an answer. The Board will determine the order of the 
arguments presented at the oral hearing.
    (f) Notwithstanding the submission of a request for oral hearing 
complying with this rule, if the Board decides that a hearing is not 
necessary, the Board will so notify the owner and all requesters.


Sec.  41.77  Decisions and other actions by the Board.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse each decision of the examiner on all issues 
raised on each appealed claim, or remand the reexamination proceeding 
to the examiner for further consideration. The reversal of the 
examiner's determination not to make a rejection proposed by the third 
party requester constitutes a decision adverse to the patentability of 
the claims which are subject to that proposed rejection which will be 
set forth in the decision of the Board of Patent Appeals and 
Interferences as a new ground of rejection under paragraph (b) of this 
section. The affirmance of the rejection of a claim on any of the 
grounds specified constitutes a general affirmance of the decision of 
the examiner on that claim, except as to any ground specifically 
reversed.
    (b) Should the Board reverse the examiner's determination not to 
make a rejection proposed by a requester, the Board shall set forth in 
the opinion in support of its decision a new ground of rejection; or 
should the Board have knowledge of any grounds not raised in the appeal 
for rejecting any pending claim, it may include in its opinion a 
statement to that effect with its reasons for so holding, which 
statement shall constitute a new ground of rejection of the claim. Any 
decision which includes a new ground of rejection pursuant to this 
paragraph shall not be considered final for judicial review. When the 
Board makes a new ground of rejection, the owner, within one month from 
the date of the decision, must exercise one of the following two 
options with respect to the new ground of rejection to avoid 
termination of the appeal proceeding as to the rejected claim:
    (1) Reopen prosecution. The owner may file a response requesting 
reopening of prosecution before the examiner. Such a response must be 
either an amendment of the claims so rejected, a showing of facts or 
new evidence relating to the claims so rejected, or both.
    (2) Request rehearing. The owner may request that the proceeding be 
reheard under Sec.  41.79 by the Board upon the same record. The 
request for rehearing must address any new ground of rejection and 
state with particularity the points believed to have been 
misapprehended or overlooked in entering the new ground of rejection 
and also state all other grounds upon which rehearing is sought.
    (c) Where the owner has filed a response requesting reopening of 
prosecution under paragraph (b)(1) of this section, any requester, 
within one month of the date of service of the owner's response, may 
once file comments on the response. Such written comments must be 
limited to the issues raised by the Board's opinion reflecting its 
decision and the owner's response. Any requester that had not 
previously filed an appeal or cross appeal and is seeking under this 
subsection to file comments or a reply to the comments is subject to 
the appeal and brief fees under Sec.  41.20(b)(1) and (2), 
respectively, which must accompany the comments or reply.
    (d) Following any response by the owner under paragraph (b)(1) of 
this section and any written comments from a requester under paragraph 
(c) of this section, the proceeding will be remanded to the examiner. 
The statement of the Board shall be binding upon the examiner unless an 
amendment or showing of facts not previously of record is made which, 
in the opinion of the examiner, overcomes the new ground of rejection 
stated in the decision. The examiner will consider any owner response 
under paragraph (b)(1) of this section and any written

[[Page 66683]]

comments by a requester under paragraph (c) of this section and issue a 
determination that the rejection is maintained or has been overcome.
    (e) Within one month of the examiner's determination pursuant to 
paragraph (d) of this section, the owner or any requester may once 
submit comments in response to the examiner's determination. Within one 
month of the date of service of comments in response to the examiner's 
determination, the owner and any requesters may file a reply to the 
comments. No requester reply may address the comments of any other 
requester reply. Any requester that had not previously filed an appeal 
or cross appeal and is seeking under this subsection to file comments 
or a reply to the comments is subject to the appeal and brief fees 
under Sec. Sec.  41.20(b)(1) and (2), respectively, which must 
accompany the comments or reply.
    (f) After submission of any comments and any reply pursuant to 
paragraph (e) of this section, or after time has expired, the 
proceeding will be returned to the Board which shall reconsider the 
matter and issue a new decision. The new decision is deemed to 
incorporate the earlier decision, except for those portions 
specifically withdrawn.
    (g) The time period set forth in paragraph (b) of this section is 
subject to the extension of time provisions of Sec.  1.956 of this 
title when the owner is responding under paragraph (b)(1) of this 
section. The time period set forth in paragraph (b) of this section may 
not be extended when the owner is responding under paragraph (b)(2) of 
this section. The time periods set forth in paragraphs (c) and (e) of 
this section may not be extended.


Sec.  41.79  Rehearing.

    (a) Parties to the appeal may file a request for rehearing of the 
decision within one month of the date of:
    (1) The original decision of the Board under Sec.  41.77(a),
    (2) the original Sec.  41.77(b) decision under the provisions of 
Sec.  41.77(b)(2),
    (3) the expiration of the time for the owner to take action under 
Sec.  41.77(b)(2), or
    (4) the new decision of the Board under Sec.  41.77(f).
    (b) The request for rehearing must state with particularity the 
points believed to have been misapprehended or overlooked in rendering 
the Board's opinion reflecting its decision. Arguments not raised in 
the briefs before the Board and evidence not previously relied upon in 
the briefs are not permitted in the request for rehearing except for 
arguments responding to a new ground of rejection made pursuant to 
Sec.  41.77(b).
    (c) Within one month of the date of service of any request for 
rehearing under paragraph (a) of this section, or any further request 
for rehearing under paragraph (d) of this section, the owner and all 
requesters may once file comments in opposition to the request for 
rehearing or the further request for rehearing. The comments in 
opposition must be limited to the issues raised in the request for 
rehearing or the further request for rehearing.
    (d) If a party to an appeal files a request for rehearing under 
paragraph (a) of this section, or a further request for rehearing under 
this section, the Board shall render a decision on the request for 
rehearing. The decision on the request for rehearing is deemed to 
incorporate the earlier opinion reflecting its decision for appeal, 
except for those portions specifically withdrawn on rehearing and is 
final for the purpose of judicial review, except when noted otherwise 
in the decision on rehearing. If the Board opinion reflecting its 
decision on rehearing becomes, in effect, a new decision, and the Board 
so indicates, then any party to the appeal may, within one month of the 
new decision, file a further request for rehearing of the new decision 
under this subsection. Such further request for rehearing must comply 
with paragraph (b) of this section.
    (e) The times for requesting rehearing under paragraph (a) of this 
section, for requesting further rehearing under paragraph (c) of this 
section, and for submitting comments under paragraph (b) of this 
section may not be extended.


Sec.  41.81  Action following decision.

    The parties to an appeal to the Board may not appeal to the U.S. 
Court of Appeals for the Federal Circuit under Sec.  1.983 of this 
title until all parties' rights to request rehearing have been 
exhausted, at which time the decision of the Board is final and 
appealable by any party to the appeal to the Board.


Sec.  41.83  Termination of appeal.

    An appeal to the Board by a party under this subpart is terminated 
by the dismissal of that party's appeal or when, after a final Board 
action:
    (a) A notice of appeal under 35 U.S.C. 141 is filed, or
    (b) The time for seeking judicial review (Sec.  1.983 of this 
title) has expired.

Subpart D--Contested Cases


Sec.  41.100  Definitions.

    In addition to the definitions in Sec.  41.2, the following 
definitions apply to proceedings under this subpart:
    Business day means a day other than a Saturday, Sunday, or Federal 
holiday within the District of Columbia.
    Involved means the Board has declared the patent application, 
patent, or claim so described to be a subject of the contested case.


Sec.  41.101  Notice of proceeding.

    (a) Notice of a contested case will be sent to every party to the 
proceeding. The entry of the notice initiates the proceeding.
    (b) When the Board is unable to provide actual notice of a 
contested case on a party through the correspondence address of record 
for the party, the Board may authorize other modes of notice, 
including:
    (1) Sending notice to another address associated with the party, or
    (2) Publishing the notice in the Official Gazette of the United 
States Patent and Trademark Office.


Sec.  41.102  Completion of examination.

    Except as the Board may otherwise authorize, before a contested 
case is initiated:
    (a) Examination of each involved application and any pending 
reexamination of each involved patent must be completed, and
    (b) Each involved application and patent must have at least one 
claim that:
    (1) Is patentable, and
    (2) Would be involved in the contested case.


Sec.  41.103  Jurisdiction over involved files.

    The Board has jurisdiction over any involved file from the time the 
Board initiates a contested case until the termination of the contested 
case. Other proceedings for the involved file within the Office are 
suspended except as the Board may order.


Sec.  41.104  Conduct of contested case.

    (a) The Board may determine a proper course of conduct in a 
proceeding for any situation not specifically covered by this part and 
may enter non-final orders to administer the proceeding.
    (b) An administrative patent judge may waive or suspend in a 
proceeding the application of any rule in this subpart, subject to such 
conditions as the administrative patent judge may impose.
    (c) Times set in this subpart are defaults. In the event of a 
conflict between a time set by rule and a time set by order, the time 
set by order is controlling. Action due on a day other than a business 
day may be completed on the next business day unless the Board 
expressly states otherwise.

[[Page 66684]]

Sec.  41.105  Ex parte communications.

    An ex parte communication about a contested case with a Board 
member or a Board employee conducting the proceeding is not permitted.


Sec.  41.106  Filing and service.

    (a) General format requirements. (1) The paper used for filings 
must be durable and white. A party must choose to file on either A4-
sized paper or 8\1/2\ inch x 11 inch paper except in the case of 
exhibits that require a larger size in order to preserve details of the 
original. A party may not switch between paper sizes in a single 
proceeding. Only one side of the paper may be used.
    (2) In papers, including affidavits, created for the proceeding:
    (i) The ink must be black or must otherwise provide an equivalently 
permanent, dark, high-contrast image on the paper. The quality of the 
printing must be equivalent to the quality produced by a laser printer. 
Either a proportional or monospaced font may be used, but the 
proportional font must be 12-point or larger and a monospaced font must 
not contain more than 4 characters per centimeter (10 characters per 
inch). Case names must be underlined or italicized.
    (ii) Double spacing must be used except in headings, signature 
blocks, and certificates of service. Block quotations may be single-
spaced and must be indented. Margins must be at least 2.5 centimeters 
(1 inch) on all sides.
    (b) Papers other than exhibits.--(1) Cover sheet. (i) The cover 
sheet must include the caption the Board specifies for the proceeding, 
a header indicating the party and contact information for the party, 
and a title indicating the sequence and subject of the paper. For 
example, ``JONES MOTION 2, For benefit of an earlier application''.
    (ii) If the Board specifies a color other than white for the cover 
sheet, the cover sheet must be that color.
    (2) Papers must have two 0.5 cm (\1/4\inch) holes with centers 1 cm 
(\1/2\ inch) from the top of the page and 7 cm (2\3/4\ inch) apart, 
centered horizontally on the page.
    (3) Incorporation by reference; combined papers. Arguments must not 
be incorporated by reference from one paper into another paper. 
Combined motions, oppositions, replies, or other combined papers are 
not permitted.
    (4) Citation of authority.
    (i) Citations to authority must include:
    (A) A United States Reports citation for any Supreme Court case.
    (B) Parallel citation of cases to both the West Reporter System and 
to the United States Patents Quarterly whenever a case is published in 
both. Other parallel citations are discouraged.
    (C) Pinpoint citations whenever a specific holding or portion of an 
authority is invoked.
    (ii) Non-binding authority should be used sparingly. If the 
authority is not an authority of the Office and is not reproduced in 
one of the reporters listed in paragraph (c)(4)(i) of this section, a 
copy of the authority should be filed with the first paper in which it 
is cited.
    (5) Exhibits. Additional requirements for exhibits appear in Sec.  
41.154(c).
    (c) Working copy. Every paper filed must be accompanied by a 
working copy marked ``APJ Copy''.
    (d) Specific filing forms.--(1) Filing by mail. A paper filed by 
mail must be addressed to Mail Stop INTERFERENCE, Board of Patent 
Appeals and Interferences, United States Patent and Trademark Office, 
PO Box 1450, Alexandria, Virginia 22313-1450. A paper filed using the 
EXPRESS MAIL[reg] service of the United States Postal Service will be 
deemed to be filed as of ``date-in'' on the EXPRESS MAIL[reg] mailing 
label; otherwise, mail will be deemed to be filed as of the stamped 
date of receipt at the Board.
    (2) Other modes of filing. The Board may authorize other modes of 
filing, including electronic filing, and may set conditions for the use 
of such other modes.
    (e) Service. (1) Papers filed with the Board, if not previously 
served, must be served simultaneously on every opposing party except as 
the Board expressly directs.
    (2) If a party is represented by counsel, service must be on 
counsel.
    (3) Service must be by EXPRESS MAIL[reg] (an expedited-delivery 
service of the United States Postal Service) or by means at least as 
fast and reliable as EXPRESS MAIL[reg]. Electronic service is not 
permitted without Board authorization.
    (4) The date service is received does not count in computing the 
time for responding.
    (f) Certificate of service.
    (1) Papers other than exhibits must include a certificate of 
service as a separate page at the end of each paper that must be served 
on an opposing party.
    (2) Exhibits must be accompanied by a certificate of service, but a 
single certificate may accompany any group of exhibits submitted 
together.
    (3) A certificate of service must state:
    (i) The name of each paper served,
    (ii) The date and manner of service, and
    (iii) The name and address of every person served.
    (4) A certificate made by a person other than a registered patent 
practitioner must be in the form of an affidavit.


Sec.  41.107  [Reserved]


Sec.  41.108  Lead counsel.

    (a) A party may be represented by counsel. The Board may require a 
party to appoint a lead counsel. If counsel is not of record in a 
party's involved application or patent, then a power of attorney for 
that counsel for the party's involved application or patent must be 
filed with the notice required in paragraph (b) of this section.
    (b) Within 14 days of the initiation of each contested case, each 
party must file a separate notice identifying its counsel, if any, and 
providing contact information for each counsel identified or, if the 
party has no counsel, then for the party. Contact information must, at 
a minimum, include:
    (1) A mailing address;
    (2) An address for courier delivery when the mailing address is not 
available for such delivery (for example, when the mailing address is a 
Post Office box);
    (3) A telephone number;
    (4) A facsimile number; and
    (5) An electronic mail address.
    (c) A party must promptly notify the Board of any change in the 
contact information required in paragraph (b).


Sec.  41.109  Access to and copies of Office records.

    (a) Request for access or copies. Any request from a party for 
access to or copies of Office records directly related to a contested 
case must be filed with the Board. The request must precisely identify 
the records and in the case of copies include the appropriate fee set 
under Sec.  1.19(b) of this title.
    (b) Authorization of access and copies. Access and copies will 
ordinarily only be authorized for the following records:
    (1) The application file for an involved patent;
    (2) An involved application; and
    (3) An application for which a party has been accorded benefit 
under subpart E of this part.
    (c) Missing or incomplete copies. If a party does not receive a 
complete copy of a record within 21 days of the authorization, the 
party must promptly notify the Board.


Sec.  41.110  Filing claim information.

    (a) Clean copy of claims. Within 14 days of the initiation of the 
proceeding, each party must file a clean copy of its involved claims 
and, if a biotechnology material sequence is a limitation, a clean copy 
of the sequence.

[[Page 66685]]

    (b) Annotated copy of claims. Within 28 days of the initiation of 
the proceeding, each party must:
    (1) For each involved claim having a limitation that is illustrated 
in a drawing or biotechnology material sequence, file an annotated copy 
of the claim indicating in bold face between braces ({ {time} ) where 
each limitation is shown in the drawing or sequence.
    (2) For each involved claim that contains a means-plus-function or 
step-plus-function limitation in the form permitted under 35 U.S.C. 
112[6], file an annotated copy of the claim indicating in bold face 
between braces ({ {time} ) the specific portions of the specification 
that describe the structure, material, or acts corresponding to each 
claimed function.
    (c) Any motion to amend a claim or add a reissue claim must include 
an addendum containing a clean set of the claims and, where applicable, 
an addendum containing claims annotated according to paragraph (b) of 
this section.


Sec.  41.120  Notice of basis for relief.

    (a) The Board may require a party to provide a notice stating the 
relief it requests and the basis for its entitlement to relief. The 
Board may provide for the notice to be maintained in confidence for a 
limited time.
    (b) Effect. If a notice under paragraph (a) is required, a party 
will be limited to filing substantive motions consistent with the 
notice. Ambiguities in the notice will be construed against the party. 
A notice is not evidence except as an admission by a party-opponent.
    (c) Correction. A party may move to correct its notice. The motion 
should be filed promptly after the party becomes aware of the basis for 
the correction. A correction filed after the time set for filing 
notices will only be entered if entry would serve the interests of 
justice.


Sec.  41.121  Motions.

    (a) Types of motions.--(1) Substantive motions. Consistent with the 
notice of requested relief, if any, and to the extent the Board 
authorizes, a party may file a motion:
    (i) To redefine the scope of the contested case,
    (ii) To change benefit accorded for the contested subject matter, 
or
    (iii) For judgment in the contested case.
    (2) Responsive motions. The Board may authorize a party to file a 
motion to amend, add, or cancel a claim, to change inventorship, or 
otherwise to cure a defect raised in a notice of requested relief or in 
a substantive motion.
    (3) Miscellaneous motions. Any request for relief other than a 
substantive or responsive motion must be filed as a miscellaneous 
motion.
    (b) Burden of proof. The party filing the motion has the burden of 
proof to establish that it is entitled to the requested relief.
    (c) Content of motions; oppositions and replies. (1) Each motion 
must be filed as a separate paper and must include:
    (i) A statement of the precise relief requested,
    (ii) A statement of material facts in support of the motion in 
short numbered paragraphs, with specific citations to the portions of 
the record that support each fact, and
    (iii) A full statement of the reasons for the relief requested, 
including a detailed explanation of the significance of the evidence 
and the governing law, rules, and precedent.
    (2) Compliance with rules. Where a rule in part 1 of this title 
ordinarily governs the relief sought, the motion must make any showings 
required under that rule in addition to any showings required in this 
part.
    (3) The Board may order additional showings or explanations as a 
condition for filing a motion.
    (4) Oppositions and replies must comply with the content 
requirements for motions and must include a statement identifying 
material facts in dispute. Any material fact not specifically denied 
will be considered admitted.
    (d) Board-ordering briefings. The Board may order briefing on any 
issue that could be raised by motion.


Sec.  41.122  New arguments in opposition or reply.

    All arguments for the relief requested must be made in a motion. An 
opposition may raise new arguments, but only in response to arguments 
made in the corresponding motion. A reply may only respond to arguments 
raised in the corresponding opposition.


Sec.  41.123  Time for acting on motions.

    (a) A motion, other than a miscellaneous motion, may only be filed 
according to a schedule the Board sets. The default times for acting 
are:
    (1) An opposition is due 30 days after service of the motion.
    (2) A reply is due 30 days after service of the opposition.
    (3) A responsive motion is due within 30 days of the service of the 
motion.
    (b) Miscellaneous motions. (1) If no time for filing a specific 
miscellaneous motion is provided in this part or in a Board order:
    (i) The opposing party must be consulted prior to filing the 
miscellaneous motion, and
    (ii) If an opposing party plans to oppose the miscellaneous motion, 
the movant may not file the motion without Board authorization. Such 
authorization should ordinarily be obtained through a telephone 
conference including the Board and every other party to the proceeding. 
Delay in seeking relief may justify a denial of the motion.
    (2) An opposition may not be filed without authorization. The 
default times for acting are:
    (i) An opposition to a miscellaneous motion is due five business 
days after service of the motion.
    (ii) A reply to a miscellaneous motion opposition is due three 
business days after service of the opposition.


Sec.  41.124  Oral argument.

    (a) Request for oral argument. A party may request an oral argument 
on an issue raised in a paper within five business days of the filing 
of the paper. The request must be filed as a separate paper and must 
specify the issues to be considered.
    (b) Copies for panel. If a hearing is set for a panel, the movant 
on any issue to be heard must provide three working copies of the 
motion, the opposition, and the reply. Each party is responsible for 
providing three working copies of its exhibits relating to the motion.
    (c) Length of argument. If the request is granted, each party will 
have 20 minutes to present its argument, including any time for 
rebuttal.
    (d) Demonstrative exhibits must be served at least five business 
days before the oral argument and filed no later than the time of the 
oral argument.
    (e) Transcription. The Board encourages the use of a transcription 
service at oral arguments but, if such a service is to be used, the 
Board must be notified in advance to ensure adequate facilities are 
available and a transcript must be filed with the Board promptly after 
the oral argument.


Sec.  41.125  Decision on motions.

    (a) Order of consideration. The Board may take up motions for 
decisions in any order, may grant, deny, or dismiss any motion, and may 
take such other action appropriate to secure the just, speedy, and 
inexpensive determination of the proceeding. A decision on a motion may 
include deferral of action on an issue until a later point in the 
proceeding.
    (b) Interlocutory decisions. A decision on motions without a 
judgment terminating the proceeding is not final for the purposes of 
judicial review. A

[[Page 66686]]

panel decision on an issue will govern further proceedings in the 
contested case.
    (c) Rehearing.--(1) Time for request. A request for rehearing of a 
decision must be filed within fourteen days of the decision.
    (2) No tolling. The filing of a request for rehearing does not toll 
times for taking action.
    (3) Burden on rehearing. The burden of showing a decision should be 
modified lies with the party attacking the decision. The request must 
specifically identify:
    (i) All matters the party believes to have been misapprehended or 
overlooked, and
    (ii) The place where the matter was previously addressed in a 
motion, opposition, or reply.
    (4) Opposition; reply. Neither an opposition nor a reply to a 
request for rehearing may be filed without Board authorization.
    (5) Panel rehearing. If a decision is not a panel decision, the 
party requesting rehearing may request that a panel rehear the 
decision. A panel rehearing a procedural decision will review the 
decision for an abuse of discretion.


Sec.  41.126  Arbitration.

    (a) Parties to a contested case may resort to binding arbitration 
to determine any issue in a contested case. The Office is not a party 
to the arbitration. The Board is not bound and may independently 
determine questions of patentability, jurisdiction, and Office 
practice.
    (b) The Board will not authorize arbitration unless:
    (1) It is to be conducted according to Title 9 of the United States 
Code.
    (2) The parties notify the Board in writing of their intention to 
arbitrate.
    (3) The agreement to arbitrate:
    (i) Is in writing,
    (ii) Specifies the issues to be arbitrated,
    (iii) Names the arbitrator, or provides a date not more than 30 
days after the execution of the agreement for the selection of the 
arbitrator, and
    (iv) Provides that the arbitrator's award shall be binding on the 
parties and that judgment thereon can be entered by the Board.
    (4) A copy of the agreement is filed within 20 days after its 
execution.
    (5) The arbitration is completed within the time the Board sets.
    (c) The parties are solely responsible for the selection of the 
arbitrator and the conduct of proceedings before the arbitrator.
    (d) Issues not disposed of by the arbitration will be resolved in 
accordance with the procedures established in this subpart.
    (e) The Board will not consider the arbitration award unless it:
    (1) Is binding on the parties,
    (2) Is in writing,
    (3) States in a clear and definite manner each issue arbitrated and 
the disposition of each issue, and
    (4) Is filed within 20 days of the date of the award.
    (f) Once the award is filed, the parties to the award may not take 
actions inconsistent with the award. If the award is dispositive of the 
contested subject matter for a party, the Board may enter judgment as 
to that party.


Sec.  41.127  Judgment.

    (a) Effect within Office.--(1) Estoppel. A judgment disposes of all 
issues that were, or by motion could have properly been, raised and 
decided. A losing party who could have properly moved for relief on an 
issue, but did not so move, may not take action in the Office after the 
judgment that is inconsistent with that party's failure to move, except 
that a losing party shall not be estopped with respect to any contested 
subject matter for which that party was awarded a favorable judgment.
    (2) Final disposal of claim. Adverse judgment against a claim is a 
final action of the Office requiring no further action by the Office to 
dispose of the claim permanently.
    (b) Request for adverse judgment. A party may at any time in the 
proceeding request judgment against itself. Actions construed to be a 
request for adverse judgment include:
    (1) Abandonment of an involved application such that the party no 
longer has an application or patent involved in the proceeding,
    (2) Cancellation or disclaiming of a claim such that the party no 
longer has a claim involved in the proceeding,
    (3) Concession of priority or unpatentability of the contested 
subject matter, and
    (4) Abandonment of the contest.
    (c) Recommendation. The judgment may include a recommendation for 
further action by the examiner or by the Director. If the Board 
recommends rejection of a claim of an involved application, the 
examiner must enter and maintain the recommended rejection unless an 
amendment or showing of facts not previously of record is filed which, 
in the opinion of the examiner, overcomes the recommended rejection.
    (d) Rehearing. A party dissatisfied with the judgment may request 
rehearing within 30 calendar days of the entry of the judgment. The 
request must specifically identify all matters the party believes to 
have been misapprehended or overlooked, and the place where the matter 
was previously addressed in a motion, opposition, or reply. The Board 
may toll the time for seeking judicial review (35 U.S.C. 142 and 
146[1]) for the pendency of the rehearing.


Sec.  41.128  Termination.

    A contested case is terminated after a final Board action, as soon 
as any of the following occur:
    (a) A notice of appeal under 35 U.S.C. 141 is filed,
    (b) A civil action under 35 U.S.C. 146 is commenced, or
    (c) The time for seeking judicial review has expired.


Sec.  41.128  Sanctions.

    (a) The Board may impose a sanction against a party for misconduct, 
including:
    (1) Failure to comply with an applicable rule or order in the 
proceeding;
    (2) Advancing a misleading or frivolous request for relief or 
argument; or
    (3) Engaging in dilatory tactics.
    (b) Sanctions include entry of:
    (1) An order holding certain facts to have been established in the 
proceeding;
    (2) An order expunging, or precluding a party from filing, a paper;
    (3) An order precluding a party from presenting or contesting a 
particular issue;
    (4) An order precluding a party from requesting, obtaining, or 
opposing discovery;
    (5) An order excluding evidence;
    (6) An order awarding compensatory expenses, including attorney 
fees;
    (7) An order requiring terminal disclaimer of patent term; or
    (8) Judgment in the contested case.


Sec.  41.150  Discovery.

    (a) Limited discovery. A party is not entitled to discovery except 
as authorized in this subpart. The parties may agree to discovery among 
themselves at any time.
    (b) Automatic discovery.
    (1) Within 21 days of a request by an opposing party, a party must:
    (i) Serve a legible copy of every requested patent, literature 
reference, and test standard mentioned in the specification of the 
party's involved patent or application, or application upon which the 
party will rely for benefit, and, if the requested material is in a 
language other than English, a translation, if available, and
    (ii) File with the Board a notice (without copies of the requested

[[Page 66687]]

materials) of service of the requested materials.
    (2) Unless previously served, or the Board orders otherwise, any 
exhibit cited in a motion or in testimony must be served with the 
citing motion or testimony.
    (c) Additional discovery. A party may request additional discovery. 
The requesting party must show that such additional discovery is in the 
interests of justice. The Board may specify conditions for such 
additional discovery.


Sec.  41.151  Admissibility.

    Evidence that is not taken, sought, or filed in accordance with 
this subpart shall not be admissible.


Sec.  41.152  Applicability of the Federal Rules of Evidence.

    (a) Generally. Except as otherwise provided in this subpart, the 
Federal Rules of Evidence shall apply to contested cases.
    (b) Exclusions. Those portions of the Federal Rules of Evidence 
relating to criminal proceedings, juries, and other matters not 
relevant to proceedings under this subpart shall not apply.
    (c) Modifications in terminology. Unless otherwise clear from 
context, the following terms of the Federal Rules of Evidence shall be 
construed as indicated:
    Appellate court means United States Court of Appeals for the 
Federal Circuit or a United States district court when judicial review 
is under 35 U.S.C. 146.
    Civil action, civil proceeding, action, and trial mean contested 
case.
    Courts of the United States, U.S. Magistrate, court, trial court, 
and trier of fact mean Board.
    Hearing means:
    (i) In Federal Rule of Evidence 703, the time when the expert 
testifies.
    (ii) In Federal Rule of Evidence 804(a)(5), the time for taking 
testimony.
    Judge means the Board.
    Judicial notice means official notice.
    Trial or hearing means, in Federal Rule of Evidence 807, the time 
for taking testimony.


Sec.  41.153  Records of the United States Patent and Trademark Office.

    Certification is not necessary as a condition to admissibility when 
the evidence to be submitted is a record of the Office to which all 
parties have access.


Sec.  41.154  Form of evidence.

    (a) Evidence consists of affidavits, transcripts of depositions, 
documents, and objects. All evidence must be submitted in the form of 
an exhibit.
    (b) Translation required. 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 must be filed with the document.
    (c) An exhibit must conform with the requirements for papers in 
Sec.  41.106 of this subpart and the requirements of this paragraph.
    (1) Each exhibit must have an exhibit label with a unique number in 
a range assigned by the Board, the names of the parties, and the 
proceeding number in the following format: JONES EXHIBIT 2001, Jones v. 
Smith, Interference 104,999
    (2) When the exhibit is a paper:
    (i) Each page must be uniquely numbered in sequence, and
    (ii) The exhibit label must be affixed to the lower right corner of 
the first page of the exhibit without obscuring information on the 
first page or, if obscuring is unavoidable, affixed to a duplicate 
first page.
    (d) Exhibit list. Each party must maintain an exhibit list with the 
exhibit number and a brief description of each exhibit. If the exhibit 
is not filed, the exhibit list should note that fact. The Board may 
require the filing of a current exhibit list prior to acting on a 
motion.


Sec.  1.155  Objection; motion to exclude; motion in limine.

    (a) Deposition. Objections to deposition evidence must be made 
during the deposition. Evidence to cure the objection must be provided 
during the deposition unless the parties to the deposition stipulate 
otherwise on the deposition record.
    (b) Other than deposition. For evidence other than deposition 
evidence:
    (1) Objection. Any objection must be filed within five business 
days of service of evidence, other than deposition evidence, to which 
the objection is directed. The objection must identify the grounds for 
the objection with sufficient particularity to allow correction in the 
form of supplemental evidence.
    (2) Supplemental evidence. The party relying on evidence to which 
an objection is timely filed may respond to the objection by filing 
supplemental evidence within ten business days of service of the 
objection.
    (c) Motion to exclude. A miscellaneous motion to exclude evidence 
must be filed to preserve any objection. The motion must identify the 
objections in the record in order and must explain the objections.
    (d) Motion in limine. A party may file a miscellaneous motion in 
limine for a ruling on the admissibility of evidence.


Sec.  41.156  Compelling testimony and production.

    (a) Authorization required. A party seeking to compel testimony or 
production of documents or things must file a miscellaneous motion for 
authorization. The miscellaneous motion must describe the general 
relevance of the testimony, document, or thing and must:
    (1) In the case of testimony, identify the witness by name or 
title, and
    (2) In the case of a document or thing, the general nature of the 
document or thing.
    (b) Outside the United States. For testimony or production sought 
outside the United States, the motion must also:
    (1) In the case of testimony.
    (i) Identify the foreign country and explain why the party believes 
the witness can be compelled to testify in the foreign country, 
including a description of the procedures that will be used to compel 
the testimony in the foreign country and an estimate of the time it is 
expected to take to obtain the testimony; and
    (ii) Demonstrate that the party has made reasonable efforts to 
secure the agreement of the witness to testify in the United States but 
has been unsuccessful in obtaining the agreement, even though the party 
has offered to pay the expenses of the witness to travel to and testify 
in the United States.
    (2) In the case of production of a document or thing. (i) Identify 
the foreign country and explain why the party believes production of 
the document or thing can be compelled in the foreign country, 
including a description of the procedures that will be used to compel 
production of the document or thing in the foreign country and an 
estimate of the time it is expected to take to obtain production of the 
document or thing; and
    (ii) Demonstrate that the party has made reasonable efforts to 
obtain the agreement of the individual or entity having possession, 
custody, or control of the document to produce the document or thing in 
the United States but has been unsuccessful in obtaining that 
agreement, even though the party has offered to pay the expenses of 
producing the document or thing in the United States.
    (c) The Board, in determining foreign law, may consider any 
relevant material or source, including testimony, whether or not 
submitted by a party or admissible under the Federal Rules of Evidence.


Sec.  41.157  Taking testimony.

    (a) Form. Direct testimony must be submitted in the form of an 
affidavit

[[Page 66688]]

except when the testimony is compelled under 35 U.S.C. 24, in which 
case it may be in the form of a deposition transcript.
    (b) Time and location.--(1) Uncompelled direct testimony may be 
taken at any time; otherwise, testimony may only be taken during such 
time period as the Board may authorize.
    (2) Other testimony. (i) Except as the Board otherwise orders, 
authorized testimony may be taken at any reasonable time and location 
within the United States before any disinterested official authorized 
to administer oaths at that location.
    (ii) Testimony outside the United States may only be taken as the 
Board specifically directs.
    (c) Notice of deposition. (1) Prior to the taking of testimony, all 
parties to the proceeding must agree on the time and place for taking 
testimony. If the parties cannot agree, the party seeking the testimony 
must initiate a conference with the Board to set a time and place.
    (2) Cross-examination should ordinarily take place after any 
supplemental evidence relating to the direct testimony has been filed 
and more than a week before the filing date for any paper in which the 
cross-examination testimony is expected to be used. A party requesting 
cross-examination testimony of more than one witness may choose the 
order in which the witnesses are to be cross-examined.
    (3) In the case of direct testimony, at least three business days 
prior to the conference in paragraph (c)(1) of this section, the party 
seeking the direct testimony must serve:
    (i) A list and copy of each document under the party's control and 
on which the party intends to rely, and
    (ii) A list of, and proffer of reasonable access to, any thing 
other than a document under the party's control and on which the party 
intends to rely.
    (4) Notice of the deposition must be filed at least two business 
days before a deposition. The notice limits the scope of the testimony 
and must list:
    (i) The time and place of the deposition,
    (ii) The name and address of the witness,
    (iii) A list of the exhibits to be relied upon during the 
deposition, and
    (iv) A general description of the scope and nature of the testimony 
to be elicited.
    (5) Motion to quash. Objection to a defect in the notice is waived 
unless a miscellaneous motion to quash is promptly filed.
    (d) Deposition in a foreign language. If an interpreter will be 
used during the deposition, the party calling the witness must initiate 
a conference with the Board at least five business days before the 
deposition.
    (e) Manner of taking testimony. (1) Each witness before giving a 
deposition shall be duly sworn according to law by the officer before 
whom the deposition is to be taken. The officer must be authorized to 
take testimony under 35 U.S.C. 23.
    (2) The testimony shall be taken in answer to interrogatories with 
any questions and answers recorded in their regular order by the 
officer, or by some other disinterested person in the presence of the 
officer, unless the presence of the officer is waived on the record by 
agreement of all parties.
    (3) Any exhibits relied upon must be numbered according to the 
numbering scheme assigned for the contested case and must, if not 
previously served, be served at the deposition.
    (4) All objections made at the time of the deposition to the 
qualifications of the officer taking the deposition, the manner of 
taking it, the evidence presented, the conduct of any party, and any 
other objection to the proceeding shall be noted on the record by the 
officer. Evidence objected to shall be taken subject to a ruling on the 
objection.
    (5) When the testimony has been transcribed, the witness shall read 
and sign (in the form of an affidavit) a transcript of the deposition 
unless:
    (i) The parties otherwise agree in writing,
    (ii) The parties waive reading and signature by the witness on the 
record at the deposition, or
    (iii) The witness refuses to read or sign the transcript of the 
deposition.
    (6) The officer shall prepare a certified transcript by attaching 
to the transcript of the deposition a certificate in the form of an 
affidavit signed and sealed by the officer. Unless the parties waive 
any of the following requirements, in which case the certificate shall 
so state, the certificate must state:
    (i) The witness was duly sworn by the officer before commencement 
of testimony by the witness;
    (ii) The transcript is a true record of the testimony given by the 
witness;
    (iii) The name of the person who recorded the testimony and, if the 
officer did not record it, whether the testimony was recorded in the 
presence of the officer;
    (iv) The presence or absence of any opponent;
    (v) The place where the deposition was taken and the day and hour 
when the deposition began and ended;
    (vi) The officer has no disqualifying interest, personal or 
financial, in a party; and
    (vii) If a witness refuses to read or sign the transcript, the 
circumstances under which the witness refused.
    (7) The officer must promptly provide a copy of the transcript to 
all parties. The proponent of the testimony must file the original as 
an exhibit.
    (8) Any objection to the content, form, or manner of taking the 
deposition, including the qualifications of the officer, is waived 
unless made on the record during the deposition and preserved in a 
timely filed miscellaneous motion to exclude.
    (f) Costs. Except as the Board may order or the parties may agree 
in writing, the proponent of the testimony shall bear all costs 
associated with the testimony, including the reasonable costs 
associated with making the witness available for the cross-examination.


Sec.  41.158  Expert testimony; tests and data.

    (a) Expert testimony that does not disclose the underlying facts or 
data on which the opinion is based is entitled to little or no weight. 
Testimony on United States patent law will not be admitted.
    (b) If a party relies on a technical test or data from such a test, 
the party must provide an affidavit explaining:
    (1) Why the test or data is being used,
    (2) How the test was performed and the data was generated,
    (3) How the data is used to determine a value,
    (4) How the test is regarded in the relevant art, and
    (5) Any other information necessary for the Board to evaluate the 
test and data.

Subpart E--Patent Interferences


Sec.  41.200  Procedure; pendency.

    (a) A patent interference is a contested case subject to the 
procedures set forth in subpart C of this part.
    (b) A claim shall be given its broadest reasonable construction in 
light of the specification of the application or patent in which it 
appears.
    (c) Patent interferences shall be administered such that pendency 
before the Board is normally no more than two years.


Sec.  41.201  Definitions.

    In addition to the definitions in Sec. Sec.  41.2 and 41.100, the 
following definitions apply to proceedings under this subpart:
    Accord benefit means Board recognition that a patent application 
provides a proper constructive

[[Page 66689]]

reduction to practice under 35 U.S.C. 102(g).
    Constructive reduction to practice means description and enablement 
of an embodiment within the scope of the interfering subject matter in 
a patent application.
    Count means the Board's description of the interfering subject 
matter that sets the scope of admissible proofs on priority. Where 
there is more than one count, each count must describe a patentably 
distinct invention.
    Earliest constructive reduction to practice means the first 
constructive reduction to practice that has been continuously disclosed 
through a chain of patent applications culminating in the involved 
application or patent. For the chain to be continuous, each subsequent 
application must have been co-pending under 35 U.S.C. 120 or 121, or 
timely filed under 35 U.S.C. 119 or 365(a).
    Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim 
that has been designated as corresponding to the count.
    Senior party means the party entitled to the presumption under 
Sec.  41.207(a)(1) that it is the prior inventor. Any other party is a 
junior party.
    Threshold issue means an issue that, if resolved in favor of the 
movant, would deprive the opponent of standing in the interference. 
Threshold issues may include:
    (1) No interference-in-fact, and
    (2) In the case of an involved application claim first made after 
the publication of the movant's application or issuance of the movant's 
patent:
    (i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or 
published application, or
    (ii) Unpatentability for lack of written description under 35 
U.S.C. 112[1] of an involved application claim.


Sec.  41.202  Suggesting an interference.

    (a) Applicant. An applicant, including a reissue applicant, may 
suggest an interference with another application or a patent. The 
suggestion must:
    (1) Provide sufficient information to identify the application or 
patent with which the applicant seeks an interference,
    (2) Identify all claims the applicant believes interfere and show 
how they should correspond to one or more counts,
    (3) For each count, provide a claim chart comparing at least one 
claim of each party corresponding to the count and show why the claims 
interfere within the meaning of Sec.  41.203(a),
    (4) Explain in detail why the applicant will prevail on priority,
    (5) If a claim has been added or amended to provoke an 
interference, provide a claim chart showing the written description for 
each claim in the applicant's specification, and
    (6) For each constructive reduction to practice for which the 
applicant wishes to be accorded benefit, provide a chart showing where 
the disclosure provides enabling description of an embodiment within 
the scope of the interfering subject matter.
    (b) Patentee. A patentee cannot suggest an interference under this 
section, but may file a protest to the extent permitted under Sec.  
1.291 of this title to draw the examiner's attention to a potential 
interference.
    (c) Examiner. An examiner may require an applicant to add a claim 
to provoke an interference. Failure to satisfy the requirement within a 
period (not less than one month) the examiner sets will operate as a 
concession of priority for the subject matter of the claim. The claim 
the examiner proposes to have added must, apart from the question of 
priority under 35 U.S.C. 102(g):
    (1) Be patentable to the applicant and
    (2) Be drawn to patentable subject matter claimed by another 
applicant or patentee.
    (d) Requirement to show priority under 35 U.S.C. 102(g). (1) When 
an applicant has an earliest constructive reduction to practice that is 
later than the apparent earliest constructive reduction to practice for 
a patent or published application claiming interfering subject matter, 
the applicant must show why it would prevail on priority.
    (2) If an applicant fails to show priority under paragraph (d)(1) 
of this section, an administrative patent judge may nevertheless 
declare an interference to place the applicant under an order to show 
cause why judgment should not be entered against the applicant on 
priority. New evidence in support of priority will not be admitted 
except on a showing of good cause. The Board may authorize the filing 
of motions to redefine the interfering subject matter or to change the 
benefit accorded to the parties.
    (e) Sufficiency of showing. A showing of priority under this 
section is not sufficient unless it would, if unrebutted, support with 
adequate evidence a determination of priority in favor of the party 
making the showing.


Sec.  41. 203  Declaration.

    (a) Interfering subject matter. An interference exists if the 
subject matter of a claim of one party would, if prior art, have 
anticipated or rendered obvious the subject matter of a claim of the 
opposing party and vice versa.
    (b) Notice of declaration. An administrative patent judge declares 
the patent interference on behalf of the Director. A notice declaring 
an interference identifies:
    (1) The interfering subject matter;
    (2) The involved applications, patents, and claims;
    (3) The accorded benefit for each count; and
    (4) The claims corresponding to each count.
    (c) Redeclaration. An administrative patent judge may redeclare a 
patent interference on behalf of the Director to change the declaration 
made under paragraph (b) of this section.
    (d) Additional patent, application, or interference. A party may 
suggest the addition of a patent or application to the interference or 
the declaration of an additional interference. The suggestion should 
make the showings required under Sec.  41.202(a).


Sec.  41.204  Notice of basis for relief.

    (a) Priority statement. Each party that will submit evidence of its 
priority apart from its accorded benefit must file a statement alleging 
with particularity facts that, if proved, would be sufficient for it to 
establish an earlier date of conception or an earlier actual reduction 
to practice. The statement must include all bases on which the party 
intends to establish its entitlement to a judgment on priority and must 
include documentary support for each basis when the documentary support 
is a unique record under the control of the party or its real party-in-
interest. Failure of a junior party to file a sufficient priority 
statement will be treated as an abandonment of contest absent a showing 
of good cause.
    (b) Other substantive motions. For each substantive motion that a 
party will file, the Board may require a statement of basis for the 
relief the party seeks.
    (c) Filing and service. The Board will set the times for filing and 
serving statements required under this section.


Sec.  41.205  Settlement agreements.

    (a) Constructive notice; time for filing. Pursuant to 35 U.S.C. 
135(c), an agreement or understanding, including collateral agreements 
referred to therein, made in connection with or in contemplation of the 
termination of an interference must be filed prior to the termination 
(Sec.  41.128) of the interference between the parties to the 
agreement.
    (b) Untimely filing. The Chief Administrative Patent Judge may 
permit

[[Page 66690]]

the filing of an agreement under paragraph (a) of this section up to 
six months after termination upon petition and a showing of good cause 
for the failure to file prior to termination.
    (c) Request to keep separate. Any party to an agreement under 
paragraph (a) of this section may request that the agreement be kept 
separate from the interference file. The request must be filed with or 
promptly after the agreement is filed.
    (d) Access to agreement. Any person, other than a representative of 
a Government agency, may have access to an agreement kept separate 
under paragraph (c) of this section only upon petition and on a showing 
of good cause. The agreement will be available to Government agencies 
on written request.


Sec.  41.206  Common interests in the invention.

    An administrative patent judge may decline to declare, or if 
already declared the Board may terminate, an interference between an 
application and another application or patent that are commonly owned.


Sec.  41.207  Presumptions.

    (a) Priority.--(1) Order of invention. Parties are presumed to have 
invented interfering subject matter in the order of the dates of their 
accorded benefit for each count. If two parties are accorded the 
benefit of the same earliest date of constructive reduction to 
practice, then neither party is entitled to a presumption of priority 
with respect to the other such party.
    (2) Evidentiary standard. Priority may be proved by a preponderance 
of the evidence except a party must prove priority by clear and 
convincing evidence if the date of its earliest constructive reduction 
to practice is after the issue date of an involved patent or the 
publication date under 35 U.S.C. 122(b) of an involved application or 
patent.
    (b) Claim correspondence. (1) For the purposes of determining 
priority and derivation, all claims of a party corresponding to the 
count are presumed to stand or fall together. To challenge this 
presumption, a party must file a timely substantive motion to have a 
corresponding claim designated as not corresponding to the count. No 
presumption based on claim correspondence regarding the grouping of 
claims exists for other grounds of unpatentability.
    (2) A claim corresponds to a count if the subject matter of the 
count, treated as prior art to the claim, would have anticipated or 
rendered obvious the subject matter of the claim.
    (c) Cross-applicability of prior art. When a motion for judgment of 
unpatentability against an opponent's claim on the basis of prior art 
is granted, each of the movant's claims corresponding to the same count 
as the opponent's claim will be presumed to be unpatentable in view of 
the same prior art unless the movant in its motion rebuts this 
presumption with supporting evidence.
    (d) Abandonment, suppression, or concealment. A party is presumed 
to have abandoned, suppressed, or concealed the interfering subject 
matter if the accorded date of the party's earliest constructive 
reduction to practice is more than one year after the party's actual 
reduction to practice. A party subject to this presumption must show in 
its motion for priority that it did not abandon, suppress, or conceal 
its invention.


Sec.  41.208  Content of substantive and responsive motions.

    The general requirements for motions in contested cases are stated 
at Sec.  41.121(c).
    (a) In an interference, substantive motions must:
    (1) Raise a threshold issue,
    (2) Seek to change the scope of the count or the correspondence of 
claims to the count,
    (3) Seek to change the benefit accorded for the count, or
    (4) Seek judgment on derivation or on priority.
    (b) To be sufficient, a motion must provide a showing, supported 
with appropriate evidence, such that, if unrebutted, it would justify 
the relief sought. The burden of proof is on the movant.
    (c) Specific motions that may be authorized, along with necessary 
content for each, include:
    (1) No interference-in-fact. A party moving for judgment because 
the involved claims do not, in fact, claim interfering subject matter 
must, for each of its involved claims, show that the subject matter of 
the claim does not interfere within the meaning of Sec.  41.203(a) with 
the subject matter of any involved claim of an opponent.
    (2) Repose under 35 U.S.C. 135(b). A party moving for repose under 
35 U.S.C. 135(b) must:
    (i) Identify the claims of the movant's United States patent or 
published application claiming the same or substantially the same 
invention as is claimed in an opponent's involved claim, and
    (ii) Show the opponent did not make such a claim prior to one year 
from the grant of the patent or the publication of the application.
    (3) Unpatentability of a claim. A party moving for a decision that 
an opponent's claim is not patentable to the opponent must:
    (i) Identify the legal basis for unpatentability,
    (ii) Show why each claim alleged to be unpatentable fails to 
satisfy the substantive requirements of the legal basis identified, and
    (iii) For arguments involving prior art, explain why the movant's 
claims corresponding to the same count as the opponent's claim are not 
unpatentable in view of the prior art.
    (4) Adding or substituting a count. (i) The movant must show why 
the proposed count does not define the same invention within the 
meaning of Sec.  41.203(a) as any other count, including the count it 
would replace.
    (ii) To broaden a count to include subject matter not in the 
current count, the movant must:
    (A) Show that the proposed count does not include prior art subject 
matter,
    (B) Show that the additional subject matter interferes within the 
meaning of Sec.  41.203(a) with subject matter in an opponent's 
involved claim, and
    (C) Show why the change is necessary to a priority determination. 
If the change is necessary to include the movant's best proof of 
priority, the movant must proffer that proof with an explanation of why 
it does not fall within the scope of the current count.
    (5) Changing claim correspondence.--(i) To add a claim. A party 
moving to add a claim to an involved patent or application must show 
that the subject matter of the count would have anticipated or rendered 
obvious the subject matter of the added claim and that the added claim 
would be patentable in the patent or application. The showing of 
patentability must include a showing of where the disclosure of the 
patent or application provides written description of the subject 
matter of the claim.
    (ii) To designate a claim as corresponding to a count. A party 
moving to have a claim designated as corresponding to a count must show 
that the subject matter of the count would have anticipated or rendered 
obvious the subject matter of the claim.
    (iii) To designate a claim as not corresponding to a count. A party 
moving to have a claim designated as not corresponding to a count must 
show that:
    (A) The subject matter of the count would not have anticipated or 
rendered

[[Page 66691]]

obvious the subject matter of the claim, and
    (B) The claim to be designated as not corresponding to the count 
does not interfere within the meaning of Sec.  41.203(a) with any claim 
of an opponent's involved patent or application.
    (6) Changing the accorded benefit. A party moving:
    (i) To be accorded the benefit of another constructive reduction to 
practice date must show that the application for which benefit is 
sought provided a constructive reduction to practice of an embodiment 
within the scope of the count.
    (ii) To attack the accorded benefit of a constructive reduction to 
practice date accorded to an opponent must show that the application 
for which benefit has been accorded does not provide a constructive 
reduction to practice of an embodiment within the scope of the count or 
that the disclosure of the embodiment has not been continuous.
    (7) Other requirements. The Board may specify additional 
requirements for a motion.
    (d) Claim charts. Claim charts must be used in support of any paper 
requiring the comparison of a claim to something else, such as another 
claim, prior art, or a specification. Claim charts must accompany the 
paper as an appendix. Claim charts are not a substitute for appropriate 
argument and explanation in the paper.

    Dated: November 12, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-29154 Filed 11-25-03; 8:45 am]
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