[Federal Register Volume 69, Number 155 (Thursday, August 12, 2004)]
[Rules and Regulations]
[Pages 49960-50020]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-17699]
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Part II
Department of Commerce
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Patent and Control Office
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37 CFR Parts 1, 5, 10, 11, and 41
Rules of Practice Before the Board of Patent Appeals and Interferences;
Final Rule
Federal Register / Vol. 69, No. 155 / Thursday, August 12, 2004 /
Rules and Regulations
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, 10, 11, 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: Final rule.
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SUMMARY: The Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office consolidates
and simplifies the rules governing practice before the Board of Patent
Appeals and Interferences to reflect developments in case law,
legislation, and administrative practice.
DATES: Effective date: September 13, 2004.
FOR FURTHER INFORMATION CONTACT: Appeals: Jeffrey V. Nase or William F.
Smith, 703-308-9797.
Otherwise: Richard Torczon, 703-308-9797.
SUPPLEMENTARY INFORMATION:
Background
The Board of Patent Appeals and Interferences (Board) has
significantly overhauled its operations to address concerns about the
duration of proceedings before the Board. This final rule reflects
these new procedures. A notice of proposed rule making on this topic
was published in the Federal Register (68 FR 66648, Nov. 26, 2003) and
in the Official Gazette of the United States Patent and Trademark
Office (1277 OG 139, Dec. 23, 2003). Seventeen comments have been
received in response to that notice.
Explanation of changes
In keeping with long-standing patent practice, rules in title 37,
part 1, of the Code of Federal Regulations are denominated ``Rule x''
in this supplementary information.
Rules 1(a)(1)(iii), 5(e), and 8(a)(2)(i)(B), and subpart E of part
1, are removed to consolidate interference information in part 41,
subparts D and E.
Rules 1(a)(1)(ii); 4(a)(2); 6(d)(9); 8(a)(2)(i)(C); 9(g); 11(e);
17(b); 36; 59(a)(1); 103(g); 112; 113(a); 114(d); 131(a)(1); 136(a)(1)
and (a)(2); 181(a)(3); 191; 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); 959; and 993 are revised to change cross-references to Board
proceedings.
Rules 17(b)-(d) and (h) are revised to remove the Board fees, which
will be relocated to Sec. 41.20.
Rules 48(a)-(c) and (i) are 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) are revised to eliminate the
cross-references to Board rules.
Rule 116 is 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 Sec. 41.31 or Sec. 41.61. Amendments after appeal
currently treated under Rule 116 are moved to Sec. Sec. 41.33 and
41.63. Pursuant to Sec. 41.33(a), amendments filed after appeal and
prior to the filing of the appeal brief will be treated under the same
standard as Rule 116. The section title is revised to reflect the scope
of the rule more accurately.
Rule 116(d) is 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 Sec.
41.77(b)(1).
Rule 116(e) is 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 (Sec. 41.31 or Sec. 41.61). The 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 after appeal.
Rule 116(f) is 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 Sec. 41.77(b)(1).
Rule 191 is amended to direct appellants under 35 U.S.C. 134(a) or
(b) to part 41.
Rules 192-196 are removed and reserved.
Rule 197 is 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 paragraph (b) is moved to Sec.
41.52 and the subject matter of paragraph (c) is moved to paragraph (b)
of Rule 197. Paragraph (a) is amended to return of jurisdiction of the
involved application or patent under ex parte reexamination proceeding
to the examiner. Rule 41(d)(2), Fed. R. App. Procedure, controls when
the mandate of the Court of Appeals will issue in the event that a
party filed a petition for writ of certiorari to the United States
Supreme Court. Unless a party petitioning for a writ of certiorari
seeks and obtains a stay of the appellate court's mandate, proceedings
will be considered terminated with the issuance of the mandate, as
noted in Rule 197(b)(2).
Rule 198 is amended by changing its title to ``Reopening after a
final decision of the Board of Patent Appeals and Interferences'' to
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) are revised, and Rule 324(d) added, to
consolidate cross-references to correction of inventorship for patents
in contested cases before the Board.
Rule 959 is revised to direct inter partes reexamination
participants to part 41 for information about appeals in such
proceedings.
Rules 961-977 are removed to consolidate inter partes reexamination
appeal information in part 41.
Rule 979 is 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) is
moved to Sec. Sec. 41.79, 41.81 and 41.83. Paragraph (a) is 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
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decision of the Board of Patent Appeals and Interferences. Paragraph
(b) is amended to state that upon decision on the appeal before the
Board of Patent Appeals and Interferences, 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.
Rule 981 is 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.
Under 37 CFR 5.3, no interference will be declared with an
application under a national secrecy order.
In the enrollment and discipline rules, 37 CFR 10.23(c)(7) and
11.6(d) are amended to change the cross-references to the interference
rules.
A new part 41 consolidates rules relating to Board practice and
simplifies reference to such practices. The Board will continue the
practice used in part 1 of this title of citing sections without the
part number. In proceedings before the Board, a party may cite ``Sec.
41.x'' as ``Board Rule x''.
Subpart A states policies, practices, and definitions common to all
proceedings before the Board.
Section 41.1 sets forth general principles for part 41. Section
41.1(a) defines the scope of rules. Section 41.1(b) mandates 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. Section 41.1(c) explicitly
extends the requirement for decorum under Rule 3 to Board proceedings,
including dealings with opposing parties.
Section 41.2 sets forth definitions for Board proceedings under
part 41. The preamble to Sec. 41.2 is based on the preamble of Rule
601, which cautions that context may give a defined word a different
meaning.
The definition of ``Board'' covers three distinct situations.
First, for the purposes of a final agency action committed to a panel
of Board members, the definition is identical in scope to 35 U.S.C.
6(b). Second, the definition includes action by the Chief
Administrative Patent Judge in matters delegated in these rules to the
Chief Administrative Patent Judge. Third, the definition recognizes
that non-final actions are often performed by officials other than a
panel or the Chief Administrative Patent Judge.
The definition of ``Board member'' follows 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 Patents, and the
Commissioner for Trademarks are ex officio members of the Board.
The phrase ``contested case'' includes patent interferences (35
U.S.C. 135(a)) and proceedings with interference-based procedures (42
U.S.C. 2182 and 2457(d)).
The term ``final'' is defined pursuant to 5 U.S.C. 704 to assist
parties in determining when a Board action is ripe for judicial review.
The definition of ``hearing'' reflects 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'' reflects 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'' sets forth a generic term for entities acting in
a Board proceeding.
The delegation of petition authority to the Chief Administrative
Patent Judge in Sec. 41.3(a) is new as a rule, but follows a
delegation already published in the Manual of Patent Examining
Procedure (MPEP) at Sec. 1002.02(f).
Under Sec. 41.3(b)(1) decisions committed by statute to the Board
are not subject to petitions for supervisory review. Review of such
decisions come through a request for rehearing or through judicial
review. The provision in Sec. 41.3(b)(2) for petitions in contested
cases to be decided by other officials reflects 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).
Section 41.3(c) reflects current practice in requiring payment of a
standard petition fee.
Section 41.3(d) reflects the current practice of not staying any
action for a petition for supervisory review in Rule 181(f).
Section 41.3(e) sets times for filing petitions. As with Rule
181(f), failure to file a timely petition is sufficient basis for
dismissing or denying a motion.
Section 41.4(a) and (b) follow the requirements of Rules 136(b) and
645 in providing rules for extensions of time and for acceptance of
untimely papers. Section 41.4(c) points parties to timeliness rules
that are related to Board proceedings, but not within the scope of the
Board rules.
Section 41.5 provides 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. Section 41.5(b) delegates to the Board the authority to
conduct counsel disqualification proceedings while the Board has
jurisdiction over a proceeding.
Section 41.6(a) relocates into part 41 the portions of Rule 14(e)
that apply to the Board. Under Sec. 41.6(a)(1) publicly available
materials continue to be publicly available. Section 41.6(a)(2) sets
forth the basis for making a determination under 35 U.S.C. 122(a) that
special circumstances justify the publication of a Board action.
Section 41.6(b) generalizes 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.
Section 41.7 recodifies the current practice of Rule 618 regarding
duplicate papers and the expunging of papers, but generalizes it to all
Board proceedings.
Section 41.8(a) reflects the practice under Rules 192(c)(1) and 602
regarding disclosure of the real parties-in-interest. Section 41.8(b)
requires parties to provide notice of related proceedings.
Section 41.9 follows Rule 643 regarding action by an assignee to
the exclusion of an inventor, but generalizes it to all Board
proceedings.
Section 41.10 adds correspondence addresses for Board proceedings.
Section 41.11 codifies existing interference practice prohibiting
ex parte communications about a contested case with an official
actually conducting the proceeding, but generalizes the practice to
include inter partes reexamination appeals as well.
Section 41.12 codifies existing interference practice regarding the
citation of authority but generalizes the practice to all Board
proceedings.
Section 41.20 consolidates the rules on fees associated with Board
practice. Rules 22, 23, and 25-28, which govern fee practice before the
Office generally, continue to apply in Board proceedings. Section
41.20(a) sets forth the petition fee, while paragraph (b) sets forth
appeals-related fees.
Subpart B is added to set forth rules for the ex parte appeal under
35 U.S.C. 134 of a rejection in either a national
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application for a patent, an application for reissue of a patent, or an
ex parte reexamination proceeding to the Board.
Section 41.30 sets forth definitions for Board proceedings under
subpart B of part 41. The preamble to Sec. 41.30 is based on a similar
provision in the preamble of former Rule 601. The term ``proceeding''
sets 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'' sets 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'' sets
forth a shorthand reference to the owner of the patent undergoing ex
parte reexamination under Rule 510.
Section 41.31 is added to generally incorporate the requirements of
former Rule 191(a)-(d). Paragraph (a) is subdivided into three parts to
improve readability. Paragraph (d) is 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, formerly provided in Rule 191(e), is relocated to Sec. Sec.
41.37, 41.41, 41.47, 41.50 and 41.52.
Section 41.33 is added to replace the requirements of former Rules
116 and 195. Paragraph (a) provides that amendments filed after the
date of filing an appeal pursuant to Sec. 41.31(a)(1)-(a)(3) and prior
to the date a brief is filed pursuant to Sec. 41.37 may be admitted as
provided in Sec. 1.116. Thus, amendments after final but prior to
appeal and amendments filed after appeal but prior to the date the
brief is filed will be treated under the same standard (i.e, Sec.
1.116). Paragraph (b) provides that amendments filed on or after the
date of filing a brief pursuant to Sec. 41.37 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. 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.
Paragraph (c) provides that all other amendments filed after the date
of filing an appeal 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),
41.50(b)(1) and 41.50(c). Paragraph (d)(1) provides that affidavits or
other evidence filed after the date of filing an appeal pursuant to
Sec. 41.31(a)(1)-(a)(3) and prior to the date of filing a brief
pursuant to Sec. 41.37 may be admitted if the examiner determines that
the affidavits or other evidence overcomes all rejections under appeal
and that there is a showing of good and sufficient reasons why the
affidavit or other evidence is necessary and was not earlier presented.
Paragraph (d)(2) provides that all other affidavits or other evidence
filed after the date of filing an appeal 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). Paragraph (d) replaces the
former practice of permitting such evidence based on a showing of good
and sufficient reasons why such evidence was not earlier presented set
forth in former Rule 195. The Office believes that prosecution should
occur before the examiner prior to an appeal being filed, not after the
case has been appealed pursuant to Sec. 41.31(a)(1)-(a)(3).
Section 41.35 is added to generally incorporate the requirements of
former Rule 191(e). In addition, this section makes 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, the Board is permitted to take other appropriate action to
complete the file.
Section 41.37 is added to generally incorporate the requirements of
former Rule 192. In addition, the following changes have been made:
(1) The title of the section has been changed from ``Appellant's
brief'' to ``Appeal brief''.
(2) In paragraph (a), one copy of the brief is required rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(3) In paragraph (a), the brief is required to be filed within two
months from the date of the notice of appeal under 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), a statement is required 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 for complying with Sec.
41.8(a) in an appeal to the Board.
(5) In paragraph (c)(1)(ii), identification is required 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 Sec. 41.8(b) in an
appeal to the Board.
(6) In paragraph (c)(1)(iii), 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 is required.
(7) In paragraph (c)(1)(v), a concise explanation of the invention
is required for 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
independent claim involved in the appeal and for each dependent claim
argued separately under the provisions of paragraph (c)(1)(vii) of this
section, 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 be set forth with reference to
the specification by page and line number, and to the drawing, if any,
by reference characters. The former 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 was
not being followed in a great number of briefs before the Board.
(8) In paragraph (c)(1)(vi), a concise statement listing each
ground of rejection presented for review is required 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) The grouping of claims requirement set forth in former Rule
192(c)(7) is removed. The general purpose served by former Rule
192(c)(7) is addressed in 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
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states that claims 1-15 are grouped together); (ii) Claims being
grouped together but argued separately (e.g., claims 1-9 rejected under
35 U.S.C. 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), 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
(requirement found in former Rule 192(a)), and a separate heading is
required 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, 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 former
Rule 192(c)(7) to require separate treatment of separately rejected
claims). Any claim argued separately should be placed under a
subheading identifying the claim by number and 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) Paragraph (c)(1)(vii) states that ``Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable'', a statement in slightly different
form appeared in former Rule 192(c)(7).
(12) Paragraph (c)(1)(vii) eliminates subparagraphs (i) through (v)
of former Rule 192(c)(8) which related to the manner in which arguments
were to be made. Although they provided 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) Paragraph (c)(1)(ix) is added 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) Paragraph (c)(1)(x) is added 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) Paragraph (c)(2) is added to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in the
brief.
(16) Paragraph (d) is added to provide that appellants will be
notified of reasons for non-compliance and given a period of time to
file an amended brief.
(17) Paragraph (e) is added 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 appeared in former Rule 191(d).
Section 41.39 is added to generally incorporate requirements found
in former Rule 193(a).
Section 41.39(a)(2) is added to permit a new ground of rejection to
be included in an examiner's answer eliminating the former 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 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.
It is envisioned that new grounds of rejection in examiner's
answers would 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 personally approved by a Technology Center Director or
designee 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 is added to set forth the responses an
appellant may make when an examiner's answer sets forth a new ground of
rejection. Appellant is 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
[[Page 49964]]
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 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 sua sponte dismissed
(i.e., terminated) as to the claims subject to the new ground of
rejection.
Paragraph (c) of Sec. 41.39 is added to provide notice that the
period set forth in 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 appeared in
former Rule 191(d).
Section 41.41 is added to generally incorporate requirements found
in former Rule 193(b). In addition:
(1) Paragraph (a)(2) is added to make explicit that a reply brief
cannot include any new or non-admitted amendment, affidavit or other
evidence.
(2) Paragraph (b) is 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) is 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 appeared in former Rule
191(d).
Section 41.43 is 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. The MPEP will provide that each supplemental
examiner's answer must be approved by a Technology Center Director or
designee. A supplemental examiner's answer may not include a new ground
of rejection. If a supplemental examiner's answer is furnished by the
examiner, the appellant is permitted to file another reply brief under
Sec. 41.41 within two months from the date of the supplemental
examiner's answer.
The former prohibition against a supplemental examiner's answer in
other than a remand situation is 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 former Rule
193(b)(2) are removed.
Section 41.43(a)(1) permits 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
rule may petition for review of the decision under Rule 181. 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 Sec. 41.43 also sets 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 requires approval from
the supervisory patent examiner as currently set forth in MPEP 1208.02.
Paragraph (b) of Sec. 41.43 permits 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 Sec. 41.43(c).
Section 41.47 is added to generally incorporate the requirements of
former Rule 194. In addition:
(1) Paragraph (b) requires the separate paper requesting the oral
hearing to be captioned ``REQUEST FOR ORAL HEARING'' and sets forth
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 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, the requirement
for notice to the primary examiner has been 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)(1) is 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 except as permitted by
paragraph (e)(2) of this section; (ii) the primary examiner may only
rely on argument and evidence raised in the answer or a supplemental
answer except as permitted by paragraph (e)(2) of this section; 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) Paragraph (e)(2) is added to specifically provide that upon a
showing of good cause, appellant and/or the primary examiner may rely
on a new argument based upon a recent relevant decision of either the
Board or a Federal Court.
(5) Paragraph (f) is added to incorporate the substance found in
former 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
[[Page 49965]]
remanded for further consideration prior to evaluating the merits of
the appeal or that the examiner's position cannot be sustained in any
event.
(6) Paragraph (g) is 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 appeared in former Rule
191(d).
Section 41.50 is added to generally incorporate the requirements of
former Rule 196. In addition:
(1) Paragraph (a)(1) explicitly provides 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 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) Paragraph (a)(2) is 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 the claims subject to
the rejection for which the Board has remanded the proceeding.
Appellant must exercise one of the following two options to avoid such
sua sponte dismissal of the appeal as to the claims subject to the
rejection for which the Board has remanded the proceeding: (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, or (ii) 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 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.
(3) Paragraph (b)(2) eliminates the provision relating to requests
that the application or patent under ex parte reexamination be reheard,
since that provision is included in Sec. 41.52(a).
(4) Paragraph (c) provides 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) provides 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) is 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 appeared in former Rule
191(d).
Section 41.52 is added to generally incorporate the requirements of
former Rule 197(b). In addition, paragraph (a)(1) incorporates the
matter from former Rule 196(b)(2) relating to the request that the
application or patent under ex parte reexamination be reheard.
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 except as permitted by
paragraphs (a)(2) and (a)(3) of this section. In addition, the rule
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 (a)(2) provides that upon a
showing of good cause, appellant may present a new argument based upon
a recent relevant decision of either the Board or a Federal Court.
Paragraph (a)(3) provides that new arguments responding to a new ground
of rejection made pursuant to Sec. 41.50(b) are permitted. Paragraph
(b) is 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 appeared in former Rule 191(d).
Section 41.54 is added to generally incorporate the requirements of
former Rule 197(a).
Subpart C is added to provide 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 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.
Section 41.60 sets forth definitions for Board proceedings under
subpart C of part 41. The preamble to Sec. 41.60 is based on a similar
provision in the preamble of former 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 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 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. The terms ``appellant'' and
``respondent'' were defined in former Rule 962. The 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.
Section 41.61 is added to generally incorporate the requirements of
former Rule 959.
Sections 41.63(a) and (b) are added to replace the requirements of
former Rule 116 with a prohibition of amendments submitted after the
date the proceeding has been appealed pursuant to Sec. 41.61, except
for amendments permitted by 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. Section 41.63(c) replaces the
requirements of former Rule 975 with a prohibition on the admission of
affidavits and other evidence submitted after the case has been
appealed pursuant to Sec. 41.61 except as permitted by Sec.
41.77(b)(1). This replaces 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
Sec. 41.61.
[[Page 49966]]
Section 41.64 is added to generally incorporate the requirements of
former 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.
Section 41.66 is added to generally incorporate the requirements of
former Rule 963.
Section 41.67 is added to generally incorporate the requirements of
former Rule 965. In addition:
(1) In paragraph (a), one copy of the brief is required rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(2) In paragraph (c)(1)(i), a statement in the brief is required
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 Sec.
41.8(a) in an appeal to the Board;
(3) In paragraph (c)(1)(ii), clear identification is required 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 Sec.
41.8(b) in an appeal to the Board.
(4) In paragraph (c)(1)(iii), 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 is required.
(5) In paragraph (c)(1)(v), a concise explanation is required 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 independent claim involved in the appeal
and each dependent claim argued separately under the provisions of
paragraph (c)(1)(vii) of this section, 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 be set forth
with reference to the specification by page and line number, and to the
drawing, if any, by reference characters.
(6) In paragraph (c)(1)(vi), a concise statement is required
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) The grouping of claims requirement set forth in former Rule
965(c)(7) is removed. The general purpose served by former Rule
965(c)(7) is addressed in Sec. 41.67(c)(1)(viii). The existing
grouping of claims requirement has led to many problems as set forth
above in the discussion of Sec. 41.37.
(8) In paragraph (c)(1)(vii), any arguments or authorities not
included in a brief permitted in this section or filed pursuant to
Sec. Sec. 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown, and a separate heading is required 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, 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 former Rule
192(c)(7) to require separate treatment of separately rejected claims).
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) Paragraph (c)(1)(vii) states 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 appeared in former Rule 965(c)(7).
(10) Paragraph (c)(1)(vii) eliminates subparagraphs (i) through (v)
of former Rule 965(c)(8) which related to the manner in which arguments
were 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 former Rule 965(d).
(11) Paragraph (c)(1)(ix) is added 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 able to
reference such evidence easily during their consideration of the
appeal.
(12) Paragraph (c)(1)(x) is added 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 Sec.
41.67(c)(1)(ii) so that the Board can take into consideration such
decisions.
(13) Paragraph (c)(2) is added to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in an
appellant's brief.
Section 41.68 is added to generally incorporate requirements found
in former Rule 967 and changes similar to those in Sec. 41.67. In
addition, paragraph (b)(2) excludes any new or non-admitted amendment,
affidavit or other evidence from being included in a respondent's
brief.
Section 41.69 is added to generally incorporate requirements found
in former Rule 969.
Section 41.71 is added to generally incorporate requirements found
in former Rule 971.
Section 41.73 is added to generally incorporate the requirements of
former Rule 973. In addition:
(1) Paragraph (b) requires 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) is 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, the requirement
for notice to the primary examiner has been 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)(1) is 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 except as permitted by paragraph
(e)(2) of this section; (ii) the primary examiner may only rely on
argument and evidence relied upon in the answer except as permitted by
paragraph (e)(2) of this section; and (iii)
[[Page 49967]]
that the Board will determine the order of the arguments presented at
the oral hearing.
(4) Paragraph (e)(2) is added to specifically provide that upon a
showing of good cause, appellant, respondent and/or the primary
examiner may rely on a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
(5) Paragraph (f) is added to incorporate the substance found in
former 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.
Section 41.77 is added to generally incorporate the requirements of
former Rule 977.
Section 41.79 is added to generally incorporate the requirements of
former Rule 979 concerning rehearing before the Board. Paragraph (b)
generally incorporates the requirements of former Rule 979(d).
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 as permitted by paragraphs (b)(2) and (b)(3) of
this section. Paragraph (b)(2) provides that upon a showing of good
cause, appellant and/or respondent may present a new argument based
upon a recent relevant decision of either the Board or a Federal Court.
Paragraph (b)(3) provides that new arguments responding to a new ground
of rejection made pursuant to Sec. 41.77(b) are permitted. Paragraph
(c) generally incorporates the requirements of former Rule 979(b).
Paragraph (d) generally incorporates the requirements of former Rule
979(c). Paragraph (e) generally incorporates the requirements of former
Rule 979(g).
Section 41.81 is added to generally incorporate the requirements of
former Rule 979(e).
Subpart D provides rules for contested cases before the Board.
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).
Section 41.100 defines two terms. The term ``business day'' is
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 rule expressly defines ``involved'' as designating
any patent application, patent, or claim that is the subject of the
contested case.
Section 41.101 follows the practice in Rule 611(a) and (b) for
notifying parties of a contested case. As a courtesy, the Board will
make reasonable efforts to provide notice to all parties. Failure to
maintain a current correspondence address may result in adverse
consequences.
Section 41.102 requires completion of examination for most
applications (and of reexamination for most patents) before the Board
will institute a contested case.
Section 41.103 follows 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.
Section 41.104(a) follows the practice of Rule 610(e), which
permits an administrative patent judge wide latitude in administering
interferences. The decision to waive a procedural requirement is
committed to the discretion of the administrative patent judge.
Section 41.104(c) clarifies that any default times set by rule may
be changed by order. ``Times'' in paragraph (c) includes both dates and
durations.
Section 41.106 provides guidance for the filing and service of
papers. Under Sec. 41.106(a), papers to be filed are 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. Section 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. 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.
Section 41.106(b) provides guidance specific to papers other than
exhibits. Section 41.106(b)(1) codifies current practices for the cover
sheet of a paper. Section 41.106(b)(2) requires holes at the top of the
paper consistent with Local Civil Rule 5.1(f) (1999) of the United
States District Court for the District of Columbia to facilitate entry
of the paper in the administrative record. The bar in Sec.
41.106(b)(3) against incorporation by reference and combination of
papers minimizes the chance that an argument will be overlooked and
reduces abuses that arise from incorporation and combination.
Section 41.106(c) requires the filing of a working copy for the
Board official administering the proceeding.
Section 41.106(d) provides additional guidance for special modes of
filing. Section 41.106(d)(1) encourages the use of the EXPRESS
MAIL[reg] service of the United States Postal Service. Section
41.106(d)(2) permits other modes of filing.
Section 41.106(e)(1) requires papers to be served when they are
filed if they have not already been served. Section 41.106(e)(3)
provides for expedited service.
Section 41.106(f) provides rules for certificates of service.
Section 41.106(f)(1) requires the certificate to be incorporated into
each paper other than exhibits. When the exhibits are filed at the same
time, the certificate may be incorporated into the exhibit list. See
Sec. 41.154(d).
Section 41.108 requires each party to identify its counsel, if any.
The rule also follows Rule 613(a), which permitted the Board to require
the appointment of a lead counsel.
Section 41.109 follows Rule 612 in permitting parties to obtain
copies of certain Office files directly related to the contested case.
Section 41.109(c) requires a party that has not received copies of a
requested file to notify the Board of the problem promptly.
Section 41.110(a) requires a single clean set of the claims,
analogous to the requirement for amendments ``in clean form'' in Rule
121.
Section 41.120 provides for notice of requested relief and the
basis for that relief in contested cases.
Section 41.121(a)(1) redefines 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. Section 41.121(a)(1)(iii)
permits 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. Section 41.121(a)(2) and (a)(3) modifies the responsive
motion and miscellaneous motion practice under Rules 633(i) and (j),
634, and 635 to ensure that the proceeding remains focused. Section
41.121(a)(3) provides for miscellaneous motions, which would offer a
mechanism for requesting relief on procedural issues and other issues
tangential to patentability and priority.
[[Page 49968]]
Section 41.121(b) places the burden of proof on the moving party,
following Rule 637(a) (2003).
Section 41.121(c)(1) follows 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 numbered paragraphs
stating material facts in 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 Sec. 41.121(c)(1)(iii), sloppy motion
drafting is held against the moving party. Section 41.121(c)(2)
requires the movant to make showings ordinarily required for the
requested relief in other parts of the Office.
Section 41.121(d) allows the Board to raise questions of
patentability.
Section 41.122 codifies the present practice regarding new
arguments in replies.
Section 41.123(a) sets default times for filing motions. Section
41.123(b) provides requirements for miscellaneous motions.
A party may request an oral argument under Sec. 41.124(a), but
requests would not be automatically granted. Section 41.124(b),
requires the parties to file three working copies of the papers to be
considered for the panel if the hearing is set for a panel. Section
41.124(c) provides a default time of 20 minutes per party for oral
arguments at the Board because they are not evidentiary hearings.
Section 41.124(d) permits the use of demonstrative exhibits. Section
41.124(e) permits the transcription of the argument.
Section 41.125(a) maintains the discretion under current practice
to address issues in an order that is both fair and efficient. Section
41.125(b) clarifies the current practice that a decision short of
judgment is not final. Section 41.125(c) recodifies the time for
requesting rehearing from Rule 640(c) and the procedural requirements
of the last two sentences of Rule 655(a).
Section 41.126 recodifies the current arbitration practice.
Section 41.127(a)(1) recodifies the existing estoppel provision for
interferences. Section 41.127(a)(2) restates the final disposal
provision of Rule 663. Section 41.127(b) restates the conditions in
Rule 662 under which the Board infers a concession of the contest.
Section 41.127(c) restates the recommendation provision of Rule 659.
Section 41.127(d) provides a time for requesting a rehearing.
Section 41.128(a) restates Rule 616 on sanctions, but adds the
examples of misleading arguments and dilatory tactics to the list of
reasons for sanctions. Section 41.128(b) restates the list of sanctions
provided in Rule 616, but adds a terminal disclaimer requirement as a
sanction.
Section 41.150(a) restates the present policy of limited discovery,
consistent with the goal of providing contested proceedings that are
fast, inexpensive, and fair. Section 41.150(b) provides for automatic
discovery of materials cited in the specification of an involved or
benefit disclosure. Section 41.150(c) restates existing practice under
Rule 687 regarding additional testimony.
Section 41.151 continues the practice under Rule 671(i) of making
failure to comply with the rules a basis for challenging admissibility.
Section 41.152 continues the current practice of using the Federal
Rules of Evidence in contested cases. Section 41.152(d) permits
reliance on official notice and hearsay to determine the scope and
effect of foreign law.
Section 41.153 restates the practice under Rule 671(d) of admitting
Office records that are available to all parties without certification.
Under Sec. 41.154(a), each Office record cited as evidence would have
to be submitted as an exhibit.
Section 41.154(a) restates Rule 671(a), which sets the form of
evidence, and codifies the existing practice that all evidence must be
submitted as an exhibit. Section 41.154(b) restates Rule 647 regarding
translation of foreign language evidence. Section 41.154(c) sets forth
additional formal requirements for exhibits consistent with current
practice. An exhibit list is required under Sec. 41.154(d).
Section 41.155 sets forth rules for objecting to evidence and
responding to objections. Under Sec. 41.155(b)(1), the default time
for serving an objection to evidence other than testimony is five
business days. Section 41.155(b)(2) permits 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). Section
41.155(d) provides for a motion in limine for a ruling on
admissibility.
Section 41.156(a) requires a party seeking a subpoena to first
obtain authorization from the Board. Section 41.156(b) imposes
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.
Section 41.157 restates existing practice regarding the taking of
testimony. The time period for cross-examination set in Sec.
41.157(c)(2) follows the current practice and sets a norm for the
conference held under Sec. 41.157(c)(1). Section 41.157(c)(3)
clarifies 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 Sec.
41.157(c)(3) would apply should rarely occur apart from compelled
testimony. Section 41.157(d) codifies the existing requirement for a
conference before a deposition with an interpreter.
Section 41.157(e) adopts ``officer'', the term used in 35 U.S.C.
23, to refer to the person qualified to administer testimony. The
certification of Sec. 41.157(e)(6)(vi) substantially adopts the
standard of Rule 674 for disqualifying an officer from administering a
deposition. Section 41.157(e)(7) requires the proponent of the
testimony to file the transcript of the testimony.
Section 41.157(f) codifies 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.
Section 41.158 codifies the current practice regarding expert
testimony and scientific tests and data.
Subpart E provides rules specific to patent interferences. Section
41.200(a) would specifically identify patent interferences as contested
cases subject to the rules in subpart D.
Section 41.200(b) continues 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.
Section 41.200(c) sets forth the policy now found in Rule 610(c)
setting two years as the maximum normal pendency for patent
interferences.
Section 41.201 sets forth definitions specific to patent
interferences. The phrase ``accorded benefit'' is defined as the
Board's designation of an application as providing a proper
constructive reduction to practice for a party.
A definition is set forth for the phrase ``constructive reduction
to practice'' because this phrase is used in the rules instead of
``earliest effective filing date'' to explain more precisely how
benefit is accorded for the purpose of determining priority.
The term ``count'' is redefined to emphasize the relationship of
the count to admissible proofs of priority under Sec. 102(g).
[[Page 49969]]
The definition of ``involved claim'' is based on a similar
definition in Rule 601(f) and is consistent with the definition of
``involved'' for contested cases in 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.
The phrase ``threshold issue'' is defined to include three specific
issues that directly affect whether a party may participate in an
interference. The first identified threshold issue is no interference-
in-fact. 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),
are 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.
Section 41.202(a) restates the requirements of Rules 604, 607, and
608 for applicants provoking an interference. Section 41.202(a)(5)
continues 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.
Section 41.202(c) restates the practice under Rule 605 of requiring
an applicant to add a claim to provoke an interference, but adds
requirements for applicants copying claims from patents.
Section 41.202(d) sets forth the basis for a summary proceeding
when an applicant does not appear to be able to show it would prevail
on priority. Section 41.202(d)(1) restates Rule 608, but eliminates the
distinction between Rule 608(a) and Rule 608(b). Section 41.202(d)(2)
restates Rule 617 by providing a basis for a summary proceeding on
priority when the applicant fails to make a sufficient showing of
priority. Under Sec. 41.202(e), the showing must by itself, if
unrebutted, warrant a determination of priority favorable to the
applicant.
Section 41.203(a) states the standard for declaring a patent
interference. The Director uses a two-way unpatentability test to
determine whether claimed inventions interfere. Under Sec. 41.203(b)
an administrative patent judge declares the interference. Section
41.203(c) authorizes an administrative patent judge to redeclare the
interference sua sponte or in response to a decision on motions.
Section 41.203(d) permits a party to suggest that an administrative
patent judge exercise discretion to declare a new interference or to
redeclare the existing interference to accommodate such files.
Section 41.204 would define notices of requested relief in
interferences. Section 41.204(a) simplifies the formal requirements for
the principal notice on priority, the preliminary statement (which is
renamed a ``priority statement''). Section 41.204(b) codifies the
existing practice of requiring a list of motions, but under the rule a
party would ordinarily be limited to filing substantive motions
consistent with its notice of requested relief. No default times is set
for statements in Sec. 41.204(c).
Section 41.205 restates practice under Rule 666 regarding the
filing of settlement agreements and would implement the requirements of
35 U.S.C. 135(c). Section 205(a) incorporates Rule 661. In addition,
Sec. 41.205(a) provides that after a final decision is entered by the
Board, an interference is considered terminated when no appeal (35
U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or
had. If an appeal to the U.S. Court of Appeals for the Federal Circuit
(under 35 U.S.C. 141) or a civil action (under 35 U.S.C. 146) has been
filed the interference is considered terminated when the appeal or
civil action is terminated. A civil action is terminated when the time
to appeal the judgment expires. An appeal to the U.S. Court of Appeals
for the Federal Circuit, whether from a decision of the Board or a
judgment in a civil action, is terminated when the mandate is issued by
the Court. Rule 41(d)(2), Fed. R. App. Procedure, controls when the
mandate of the Court of Appeals will issue in the event that a party
filed a petition for writ of certiorari to the United States Supreme
Court. Unless a party petitioning for a writ of certiorari seeks and
obtains a stay of the appellate court's mandate, proceedings will be
considered terminated with the issuance of the mandate, as noted in
Sec. 41.205(a).
Section 41.206 revises practice regarding commonly owned patents
and applications in an interference to address cases involving a real
party-in-interest with the ability to control the conduct of more than
one party.
Section 41.207(a)(1) recodifies the presumption regarding order of
invention from Rule 657(a). Section 41.207(a)(2) recodifies the
evidentiary standards for proving priority stated in Rule 657(b) and
(c), but restates the standard of Rule 657(c) in terms of the date of
the earliest constructive reduction to practice.
Section 41.207(b) clarifies claim correspondence practice and
explicitly states the effect of claim correspondence. Section
41.207(b)(1) reflects current practice under which patentability must
be determined for claims, not counts. Under 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 presumption in Sec. 41.207(c) restates the presumption in Rule
637(a) that prior art cited against an opponent is presumed to apply
against the movant's claims.
Section 41.208(a) focuses substantive motions on the core questions
of priority.
Section 41.208(b) places the burden of proof on the movant and
provides guidance on how to satisfy the burden of going forward.
Section 41.208(c)(1) requires a movant seeking to add or amend a
claim to show that the added or amended claim is patentable. Section
41.208(c)(2) similarly requires a movant seeking to add or amend a
count to show that the count does not include unpatentable subject
matter.
Discussion of Comments
Generally
Unless otherwise indicated, rule references are to rules within
chapter I of title 37, Code of Federal Regulations. Comments directed
to formal errors in the proposed rule making have been gratefully
considered, but will not be separately discussed.
Comment 1: One comment suggests that the Board rules are confusing
because some of them apply to activities that take place before an
examiner rather than during the Board proceeding itself. The comment
suggests that such rules be restored to Part 1 rather than moved to
Part 41 as proposed.
Answer: The problem identified is common to any set of rules
covering transitions or interfaces between separate processes. For
instance, the Federal Rules of Appellate Procedure (FRAP) provide
directions to the clerk of the district court on what to do (FRAP 3)
before the appeal is docketed (FRAP 12(a)). A choice must be made
between keeping such rules with the patent prosecution rules, moving
them to the Board rules, or even creating an additional part.
The best choice is to keep such rules with the Board rules. At
least one such rule is triggered in relation to every Board proceeding.
For instance, Sec. 41.37
[[Page 49970]]
(appeal briefs) will be implicated in the majority of ex parte appeals
to the Board. By contrast, a Board proceeding occurs in only about 1%
of all applications. Consequently, the connection of the rules in
question to Board practice is much stronger than the connection to
prosecution. As a convenience to applicants and other users of the
rules, Sec. 1.191 and Sec. 1.959 direct attention to appropriate
subparts of Part 41.
Comment 2: One comment notes that Sec. 1.1(a)(1)(iii), which
provides an address for patent interference correspondence was removed
but was not replicated in Part 41.
Answer: The interference address was located in proposed Sec.
41.106(d). In view of the confusion that the proposed approach caused
for the person making the comment, both Sec. 1.1(a)(1)(ii) and Sec.
1.1(a)(1)(iii) (and the address portion of Sec. 41.106(d)) have been
moved to a new Sec. 41.10. Section 1.1(a)(1)(ii) has been rewritten to
direct readers to Sec. 41.10.
Comment 3: One comment notes that Sec. 1.6(d)(9) and Sec.
1.8(a)(2)(i)(B), which ban facsimiles and certificates of mailing in
interferences, are removed. The comment suggests that the removal means
these practices are now permitted.
Answer: Section 41.106 provides directions on filing papers with
the Board in contested cases, including interferences. Sections
1.6(d)(9) and 1.8(a)(2)(i)(B) have been revised to direct readers to
Sec. 41.106.
Comment 4: One comment opposes moving Sec. 1.14(e) to Sec. 41.6
because the comment urges that this important function should remain
under the control of the Director.
Answer: Several observations are in order. First, the rule is
limited to Board actions, not all patent related matters. Second, the
rule simply implements access that is already available under a variety
of statutes. Third, the Board's administration of this provision occurs
under a delegation from the Director and remains subject to the
Director's ultimate supervision. Indeed, Sec. 41.6(a)(2) expressly
reserves to the Director the determination of whether special
circumstances justify releasing information about an application
otherwise entitled to confidentiality under 35 U.S.C. 122(a). With the
advent of pre-grant publication under 35 U.S.C. 122(b), the vast
majority of final Board decisions are soon expected to be routinely
available at the time they are issued or shortly afterward. It is
impracticable for the Director to administer disclosure of all of these
decisions personally. The Board is the logical delegate to administer
disclosure of Board actions.
Section 1.11(e) has been amended to simplify the language of the
rule and to provide a cross reference to Sec. 41.6.
Comment 5: One comment opposes the additional discretion in Sec.
1.14(e)(2) to publish petition decisions.
Answer: The only changes to Sec. 1.14 intended in this rule making
were ministerial deletions of references to decisions of the Board.
Another rule making, 68 FR 38624, has changed Sec. 1.14 in a way that
appears to address the concerns of the comment.
Comment 6: One comment suggests that extension of time practice in
the proposed rules is confusing because it is not always clear whether
Sec. 1.136 or Sec. 41.4 would apply.
Answer: As proposed, Sec. 41.4(c) explained that Sec. 41.4
applied to Board proceedings, but not during prosecution or during the
time for judicial review. The rule has been amended to clarify that
Sec. 41.4 applies when a matter is actually pending before the Board.
For instance, an extension of time to file an appeal brief, which is
due before jurisdiction transfers to the Board, would be subject to
Sec. 1.136, while a request for additional time to file a request for
reconsideration of a Board decision would be subject to Sec. 41.4.
Comment 7: Two comments suggest that Sec. 1.292(a) be modified to
permit delegation of the conduct of public use proceedings to the Board
of Patent Appeals and Interferences.
Answer: This suggestion falls outside the scope of the present rule
making, in which Sec. 1.292(a) was included simply to change a cross
reference. The comments have been forwarded to the Deputy Commissioner
for Patent Examination Policy for further consideration. Note, however,
that Sec. 1.292(a) would permit such a delegation without amendment.
Comment 8: One comment suggests additional modifications to Sec.
1.292(a) as well as to subpart D of part 41 to authorize action by a
single Board member and to provide relief in proceedings under 42
U.S.C. 2182(4) and 2457(d).
Answer: Subpart D provides sufficient flexibility to permit such
actions without amendment.
Comment 9: Three comments suggest that the cross-reference to Sec.
41.121(a)(2) in Sec. Sec. 1.322-1.324 is too narrow because it would
only permit corrections in a responsive motion. The suggested cure is
to generalize the reference to Sec. 41.121(a) because the need to
correct can arise at various times and may not be in response to
anything filed in a contested case.
Answer: The comments' reasoning is consistent with the filing of a
miscellaneous motion (Sec. 41.121(a)(3)), but not with the filing of a
substantive motion (Sec. 41.121(a)(1)). Consequently, Rules 322 to 324
have been revised to refer to Sec. 41.121(a)(2) and (3).
Comment 10: One comment suggests that Sec. 1.565(e) be amended to
reflect the balance between the need for special dispatch in
reexaminations and the need for the Office to ensure orderly
proceedings, citing Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152
(Fed. Cir. 1988).
Answer: The proposed revision of Sec. 1.565(e) only changed the
cross-reference. The comment suggests a change that is outside the
scope of this rule making. Nevertheless, the Office is keenly aware of
the need for balance on this point.
Part 41, Subpart A--General Provisions
Comment 11: One comment suggests that the lack of paragraph
designations in Sec. 41.2 for each definition is confusing,
particularly since subparagraphs are numbered.
Answer: The rule conforms to the guidance the Office of the Federal
Register provides for drafting definitions. Federal Register Document
Drafting Handbook section 8.15. Given that the defined terms are listed
alphabetically and italicized, in practice the format should not be
confusing.
Comment 12: One comment suggests that the definition of ``Board of
Patent Appeals and Interferences'' in Sec. 41.2, which includes both
Board members and Board employees for non-final actions, is
inconsistent with an Office rule making published 4 December 2003 at 68
FR 67818. The comment prefers the approach taken in this final rule.
The comment is more relevant to the other rule making and has been
forwarded to the Deputy Commissioner for Patent Examination Policy.
Note that Board employees other than Board members are only defined as
the Board for the purposes of non-final actions.
Comment 13: Two comments urge that Sec. 41.3 creates confusion for
petitions relating to rules in part 41 but arising while the Board does
not have jurisdiction, for example, supervisory review of an examiner's
answer for failure to comply with a rule.
Answer: Section 41.3 is amended to include a scope provision that
limits its scope to actions by the Board or to proceedings pending
before the Board.
Comment 14: One comment suggests that Sec. 41.3(a) be amended to
bar the Chief Administrative Patent Judge from delegating authority to
enter a decision on a petition to a person who
[[Page 49971]]
participated in the matter being petitioned.
Answer: The suggestion involves matters of Board management, which
are better treated in management documents like standard operating
procedures.
Comment 15: One comment notes that proposed Sec. 41.4(a) sets a
``good cause'' standard for obtaining an extension of time, whereas
Sec. 1.136(b), relating to non-fee extensions of time, sets a
``sufficient cause'' standard. The comment suggests either the
commentary describe the differences, if any, between these two
standards or adopt the ``sufficient cause'' standard in proposed Sec.
41.4(a).
Answer: The ``good cause'' standard for obtaining an extension of
time under Sec. 41.4(a) will be maintained to distinguish it from the
``sufficient cause'' standard of Sec. 1.136(b). An extension of time
under Sec. 41.4(a) for ``good cause'' is decided by the Board while an
extension of time under Sec. 1.136(b) for ``sufficient cause'' is
decided outside of the Board. The ``good cause'' standard for obtaining
an extension of time has previously been used by the Board in former
Sec. 1.645 (2003) and will be maintained even though there is little,
if any, difference between the standards.
To establish good cause for a filing delay, a party must show that
the delay was excusable under the circumstances and that the appellant
exercised due diligence in attempting to meet the filing deadline. The
factors bearing on whether there is good cause for an untimely filing
include the length of the delay, knowledge of the time limit,
circumstances beyond the party's control that affected its ability to
comply with the deadline, the party's negligence, if any, and any
unavoidable harm that might have prevented timely filing. Zamot v.
MSPB, 332 F.3d 1374, 1377 (Fed. Cir. 2003).
Comment 16: One comment notes that extensions of time for certain
deadlines in interferences can generally be obtained by stipulation
according to the current Standing Order. The comment suggests changing
proposed Sec. 41.4(a) by adding at the end ``or Order of the Board''.
Answer: The practice of permitting stipulated changes is unaffected
by this provision (which existed under Sec. 1.645(a) (2003)). An
authorized, stipulated change in a deadline is not an extension of the
deadline. The suggested addition could create the misapprehension that
the standard itself can be changed by order. The suggestion will not be
adopted.
Comment 17: One comment states that proposed Sec. 41.4(b) is
particularly confusing in that it indicates that 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.'' Under current practice, when a notice of appeal or appeal
brief is filed late, an applicant has the option of petitioning to
revive that application under Sec. 1.137 by showing that the delay in
filing an appropriate paper or fee was unavoidable or unintentional.
The comment states that it is not clear from the proposed Sec. 41.4(b)
whether the provisions of Sec. 1.137 will be available for late
filings of papers and fees after a notice of appeal is filed, or in
what circumstances they will be available.
Answer: Section 41.4(b) has been revised to reflect that a late
filing that results in either an application becoming abandoned or a
reexamination proceeding becoming terminated under Sec. Sec. 1.550(d)
or 1.957(b) or (c) will be excused if the application or reexamination
proceeding is revived as set forth in Sec. 1.137. A late filing that
does not result in either an application becoming abandoned or a
reexamination proceeding becoming terminated under Sec. Sec. 1.550(d)
or 1.957(b) or (c) will be excused upon a showing of excusable neglect
or a Board determination that consideration on the merits would be in
the interest of justice.
Comment 18: One comment objects to the provision in Sec. 41.5(b)
of a disqualification proceeding before the Board as ill-defined and
beyond the Board's competence.
Answer: The disqualification proceeding already exists in contested
cases (see now-removed Sec. 1.613 (2003)) where it appears to have
worked well. The objection may be based on a misapprehension that this
provision governs suspension or exclusion from practice before the
Office generally rather than the special case of a suspension or
exclusion from a specific case before the Board. Disqualifications at
the Board typically arise out of conflicts of interest and,
consequently, are more of a feature of contested cases.
The advent of appeals in inter partes reexaminations makes this
provision relevant to appeals, too. Moreover, a disqualification might
be appropriate in an ex parte appeal, for instance, when a former
Office employee appears as counsel in a case in which he or she acted
while at the Office. Note that disqualification could be in addition to
other appropriate sanctions under 37 CFR part 10.
Although the comment suggests unease with the level of due process
the disqualification proceeding would provide, at least two checks
exist. A disqualification would not become final until the Chief
Administrative Patent Judge certified the result. Counsel could seek to
moot any disqualification by requesting to withdraw before the result
is certified. If the Chief Administrative Patent Judge certifies the
disqualification, the case becomes ripe for judicial review under 35
U.S.C. 32.
Comment 19: One comment opposes the requirement in Sec. 41.5(c)
that requires Board approval to withdraw as counsel in a Board
proceeding.
Answer: The rule should not create any practical difference for
counsel since approval is required for any withdrawal. The approval
should come from the part of the agency with jurisdiction over the
application or patent at the time of the withdrawal.
Comment 20: Two comments oppose Sec. 41.7(a), which permits the
Board to expunge unauthorized papers, because of the scope of the rule.
Answer: The rule has been clarified to state that it only applies
to papers filed as part of a proceeding before the Board (Sec.
41.1(a)) or while the Board has jurisdiction over the file and will not
be used to prune applications arbitrarily.
Comment 21: One comment suggests that expungement of papers under
Sec. 41.7(a) be limited to exceptional circumstances.
Answer: Violation of a rule or Board order, the triggers for
expungement, should be an exceptional circumstance in patent practice.
Comment 22: One comment expresses concern that Sec. 41.7(a) would
prevent the entry of evidence and would result in an incomplete record.
This, the comment suggests, would result in more judicial review being
sought in district court rather than through direct appeal to the
United States Court of Appeals for the Federal Circuit (Federal
Circuit). The comment suggests that such filings are useful as a way to
place papers in the record, knowing that they will not be considered by
the Office, simply to get them in front of a court.
Answer: Such filings are not proper. Two remedies exist for
expungement of a paper. In some cases, it may be appropriate to seek
entry of new evidence in a district court under 35 U.S.C. 145 or 146.
In most cases, however, the remedy would be to challenge the
expungement directly by petition showing either that the paper was
properly filed or that it should be retained in the interest of
justice.
Comment 23: One comment recommends that a definition of ``Board
proceeding'' be included in proposed Sec. 41.2, to avoid possible
inconsistencies
[[Page 49972]]
between the requirements of proposed Sec. 41.7(b) and those of
proposed Sec. 41.37(c)(1)(ix).
Answer: Section 41.7(b) has been changed to read ``A party may not
file a paper previously filed in the same Board proceeding, not even as
an exhibit or appendix, without Board authorization or as provided by
rule'' so as to avoid an inconsistency with the requirement of Sec.
41.37(c)(1)(ix) to provide an appendix containing copies of evidence
previously submitted and entered by the examiner.
Comment 24: One comment suggests that Sec. 41.7(b) creates a
burden by requiring a party to request entry of a duplicate paper that
the Board may wish to have.
Answer: Parties should assume that the Board does not want the
duplicate paper in the absence of a specific request or as provided by
rule as discussed above.
Comment 25: Two comments suggest that Sec. 41.8, which requires
prompt reporting of changes in real party-in-interest or in related
cases, is onerous as applied to appellants. In particular, they oppose
the requirement to advise the Board of any change in the real party-in-
interest or in related cases within 20 days of the change.
Answer: Section 41.8 has been reformatted so that the last clause
referring to judicial review is now its own subsection. Proposed
Sec. Sec. 41.8(a) and (b) are now Sec. Sec. 41.8(a)(1) and (a)(2),
respectively.
The Federal Circuit requires any change in the real party-in-
interest to be reported within seven days. Federal Circuit Rule (Fed.
Cir. R.) 47.4(c). Section 41.8(a)(1) provides nearly triple the time
the court provides in recognition of the greater number of appeals to
the Board than to the court, but the Board needs to know such
information just as much as the court does.
The burden to report changes in related cases is not onerous since
most such changes are entirely under the control of the affected party.
Such changes would include the filing of a continuation application
claiming benefit of an application on appeal or the filing of a reissue
application for a patent that is before the Board in a reexamination
appeal. The amount of due diligence involved should be small for any
party with an effective docketing system.
The last clause of Sec. 41.8(a)(2) is now Sec. 41.8(b) to raise
its profile, but has been limited to contested cases because it is in
that context, particularly in the case of judicial review under 35
U.S.C. 146, where the problems arise. Lack of adequate notice of
judicial review in contested cases can result in applications that
should be suspended pending the outcome of the judicial review being
held abandoned or being allowed and other administrative complications.
Comment 26: One comment requests clarification of what constitutes
a related case under Sec. 41.8.
Answer: The requirement is substantially the same in scope as the
requirement in Fed. Cir. R. 47.5. Now-removed Sec. 1.656(b)(2) (2003)
also imposed a similar requirement. The Board needs to know of related
cases for several reasons. First, awareness of related cases
facilitates scheduling and panel assignment, which can increase
efficiencies for both the Board and the party. Second, a decision in a
related judicial or administrative case may affect the outcome in the
case before the Board.
For instance, a definition of a claim term in a related case may
limit or expand the scope for the same term in a case before the Board.
See Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352,
1362, 60 USPQ2d 1482, 1501 (Fed. Cir. 2001) (claim limitations need not
be the same); Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d
1291, 1300, 50 USPQ2d 1900, 1907 (Fed. Cir. 2000) (holding that the
prosecution history of a parent application may limit the scope of a
later application using the same term); Elkay Mfg. Co. v. Ebco Mfg.
Co., 192 F.3d 973, 980, 52 USPQ2d 1007, 1107, 1114 (Fed. Cir. 1999)
(prosecution history can apply to claim in different subsequent
patent). Claims in the related case might be estopped by an adverse
judgment in the interference (Sec. 41.127(a)(1)). A party that is
aware of a related case, but nevertheless fails to disclose the case
may fall short of its duty of candor to the Office. If the facts of the
other case are materially different, then the related case might have
no material effect on the case before the Board. Georgia-Pacific Corp.
v. United States Gypsum Co., 195 F.3d 1322, 1333, 52 USPQ2d 1590, 1599
(Fed. Cir. 1999) (inconsistent positions did not affect outcome).
Comment 27: Five comments oppose Sec. 41.11 (which was proposed as
Sec. 41.105), the bar on ex parte communications, as too restrictive.
Answer: Proposed Sec. 41.105 has been moved to Sec. 41.11 in
subpart A and has been revised to refer to inter partes reexaminations
under subpart C and contested cases under subpart D because the concern
about ex parte communications in adversarial cases is common to both
types of proceedings.
The bar on ex parte communications in Sec. 41.11 is stricter than
the bar on ex parte interviews in Sec. 1.955. Section 1.955 allows ex
parte communications with an official acting on the merits as long as
the merits are not discussed during the ex parte communication. Section
41.11 bars all ex parte communications with all administrative patent
judges and with any Board employee acting on the merits. Non-merits ex
parte communications may take place with other Board employees who are
not acting on the merits of the case.
Section 41.11 is intended to be restrictive because experience has
shown that ex parte communications are easily abused and easily shift
from permissible topics to impermissible topics. The rule prohibits any
ex parte contact about a pending case with an administrative patent
judge because the administrative patent judge might be assigned to a
panel in the proceeding.
Comment 28: Three comments urge that ex parte communications with
Board staff can be helpful to practitioners without being injurious to
the integrity of the proceeding. One comment recommends the
establishment of a help desk. One of the comments suggested that the
phrase ``Board employee conducting the proceeding'' be clarified.
Answer: The prohibition regarding other Board employees in Sec.
41.11 has been clarified to say ``assigned to the proceeding'' to give
parties a measure of confidence in contacting Board officials, other
than administrative patent judges, that have not been expressly
assigned to the case. As a general rule, support staff are not assigned
to a proceeding. Other Board employees, like administrators, might be
assigned an interlocutory role in a proceeding, but the party would
have notice of the assignment. The Office agrees that informal contacts
with support staff can be of great benefit to the parties. The rule is
not intended to prohibit, and does not prohibit, such contacts.
Comment 29: Three comments note that the supplementary information
in the notice of proposed rule making provides examples that appear to
be more liberal than the rule. One of the comments recommended moving
the examples from the supplementary information into the rule.
Answer: The examples are not exceptions to the rule. For example,
when a party declines to participate in a hearing or conference, there
is not an exception to the rule. Instead, it is a waiver by the non-
participating party of the protections of the rule. A party cannot be
permitted a heckler's veto on
[[Page 49973]]
the opposing party's ability to communicate with the Board. Even so,
the Board will treat such one-sided communications with caution. For
instance, a transcript of the communication may be required.
In another example, informing the Board in one proceeding of a
related proceeding is not an ex parte communication about the contested
case as long as the information does not extend beyond identifying
information about the other proceeding. Such information is required
under Sec. 41.8.
Finally, citing a pending case in support of a more general
proposition, again is not an ex parte communication about the contested
case as long as the focus is on the general proposition and not on the
merits of the cited case. For instance, citing a published opinion from
a pending case has never been considered an ex parte communication.
Similarly, a complaint to the Chief Administrative Patent Judge about
delays in interferences generally, with a list of examples, is
appropriate provided the complaint stays focused on the general problem
of delays rather than issues in a particular cited proceeding. Any
discussion of a particular aspect of a particular pending case must be
treated formally in accordance with Sec. 41.11.
Comment 30: One comment suggests that the rules were inconsistent
in requiring parallel citation to the West Reporter System (West) and
to the United States Patents Quarterly (USPQ) in contested cases, Sec.
41.106(b)(4)(ii)(B), but not in appeals.
Answer: Proposed Sec. 41.106(b)(4) has been relocated to new Sec.
41.12 in subpart A to eliminate the inconsistency.
Comment 31: Three comments note that the Federal Circuit has
changed its rules to eliminate the requirement for parallel citations
to a West reporter and the USPQ. Two of the comments object that
parallel citation imposes additional costs on parties. Two of the
comments express a preference for not using the USPQ. One of the
comments notes that Westlaw, the on-line West service provides much
more complete coverage of current Board decisions than does the USPQ.
The comments do not address the use of any other reporter or database
service.
Answer: None of the comments explain why the court made this change
or explain how it is applicable to Board practice. Of the printed
reporters, USPQ provides much better coverage of patent decisions
relevant to Board practice than West does. The Board cites to the West
system as a courtesy to its reviewing courts, but principally uses the
USPQ because of its greater relevance to Board practice.
If the Board were to eliminate the requirement for parallel
citation, it would make more sense to eliminate the requirement to cite
to the West system reporters. If citation to the USPQ were eliminated,
the alternative would not be citation to West's printed reporters but
to one of the on-line services, which would also raise issues of access
and expense.
No reporter system is authoritative. Hallco Mfg. Co. v. Foster, 256
F.3d 1290, 1297 n.4, 59 USPQ2d 1346, 1350 n.4 (Fed. Cir. 2001)
(relating an instance where the West reporter misprinted a paragraph,
while the USPQ printed the decision correctly, and noting that only the
court's print of the opinion is authoritative). Parallel citation thus
also serves as a useful check on privately compiled reporters.
Comment 32: One comment notes that USPQ no longer provides very
good coverage of Office decisions while many Board decisions are
available through on-line services.
Answer: Most of the large volume of Board decisions that are
available on-line are not properly citable as precedent. Consequently,
the practical differences in coverage between Westlaw and the USPQ are
less than the comment purports.
There is no ideal solution for which reporter system or systems
should be required. This is a problem that confronts many adjudicative
bodies. The Board has imposed a requirement on itself to cite both West
reporters and the USPQ: the former to be responsive to the courts, the
latter to address its own needs. The citation format used by parties
before the Board must be consistent with Board practice.
Comment 33: One comment interprets proposed Sec. 41.106(b)(4)(ii),
now Sec. 41.12(b), to bar citation to the Manual of Patent Examining
Procedure (MPEP). The comment suggests that instead great weight should
be given to the MPEP.
Answer: The rule does not bar citation to the MPEP. Rather the rule
discourages the citation of authority that is not binding. Primary
authority should be cited for legal issues in papers directed to the
Board. Unless primary authority is unavailable, primary authority is
always preferable to, and more persuasive than, any secondary
authority.
Comment 34: One comment requested that the fee information in Sec.
41.20 be restored to Sec. 1.17, particularly since some of the Sec.
41.20 fees must be paid before jurisdiction passes to the Board.
Answer: The fees were moved to part 41 to locate them with the
rules that require the fees. Note that trademark-specific fees are
located with the trademark rules in part 2. Cross-references to Sec.
41.20 in the Board rules that require the fees should prevent confusion
about where the fees are located. A cross-reference has been added at
Sec. 1.17(b) to offer further guidance.
Part 41, Subpart B--Ex Parte Appeals
Comment 35: One comment suggests that since appeals are a fairly
common procedure, a notice of the changes to the appeal procedures
should be mailed to each practitioner warning him or her of these
changes.
Answer: The comment will not be adopted. A mailing of a notice of
the changes to the appeal procedures to each practitioner is not
required since it is each practitioner's responsibility under 37 CFR
Part 10 to stay up-to-date on patent procedures. Nevertheless, the
Board will attempt to mail a notice of the final rule making to every
appellant with the docketing notice (see the Notice of revised appeal
docketing procedures published in the July 2, 2002 OG) for several
months.
Comment 36: One comment suggests that Sec. Sec. 41.31(a)(1),
(a)(2) and (a)(3) be amended to provide for appeal at any time after
being twice or finally rejected, as appropriate, during pendency of the
proceeding where no time period under Sec. 1.134 is running. The
comment states that the suggested change would ensure that Sec. 41.31
would not be interpreted more restrictively than 35 U.S.C. 134, which
sets forth no condition regarding when an appeal can be filed, apart
from the requirements for claims being twice rejected (as in 35 U.S.C.
134(a)) or finally rejected (as in 35 U.S.C.134(b) and (c)). The
comment also states that this amendment would prevent any potential
inconsistency of the rules with the Board's precedential opinion, Ex
parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994).
Answer: The suggestion will not be adopted. Sections 41.31(a)(1),
(a)(2) and (a)(3) were proposed to generally incorporate the
requirements of former Sec. 1.191(a) (2003) and to subdivide Sec.
1.191(a) into three parts to improve readability. Both former Sec.
1.191(a) (2003) and Sec. Sec. 41.31(a)(1), (a)(2) and (a)(3) are more
restrictive than 35 U.S.C. 134 in that an appeal must be filed within
the time period provided under Sec. 1.134 for response to either a
final rejection or a non-final rejection which rejects the claims for a
second time, as appropriate. For example, an applicant for a patent
whose claims have been twice rejected but not finally rejected, may
appeal from the decision of the
[[Page 49974]]
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. However, if such an applicant files an amendment
within the time period provided under Sec. 1.134, the applicant may
not file an appeal outside the time period provided under Sec. 1.134.
In such a situation, the applicant must wait for a new rejection by the
examiner before an appeal can be filed.
Comment 37: One comment suggests that paragraphs (a)(1) and (a)(2)
of Sec. 41.31 be amended to remove the alternative clause (i.e., ``or
finally'') since this would make it clear that once the examiner
rejects a claim for the second time (in the same application or in a
continuing application), the decision as to whether to appeal the
rejection or continue proceedings before the examiner will rest with
the applicant. The comment notes that since a final rejection will
never be made in a first rejection of a claim, the alternative language
is not necessary and that the change is being suggested to reduce the
periodic disputes between examiners and applicants as to whether an
application under a non-final rejection was ripe for appeal.
Answer: The suggestion has been adopted. The Board's precedential
opinion in Ex parte Lemoine, 46 USPQ2d at 1423, interpreted the
language of 35 U.S.C. 134 that gives applicants the statutory right to
an administrative appeal to mean that ``so long as the applicant has
twice been denied a patent, an appeal may be filed.'' Thus, the
alternative language of the proposed rule (i.e., ``or finally (Sec.
1.113 of this title)'' is not necessary.
Comment 38: One comment suggests that Sec. 41.31(a)(3) be deleted.
The comment states that this would eliminate the requirement that the
patent owner wait until an examiner makes a second or subsequent
rejection final, before being permitted to file an appeal in a
reexamination proceeding filed on or after November 29, 1999 and thus
would restore to patentee the decision as to when to file an appeal in
a reexamination proceeding that is subject to repeated rejections. The
comment also notes that the deletion of Sec. 41.31(a)(3) would
simplify the regulations as there would no longer be a need to
determine filing dates of reexamination proceedings under this section.
Answer: The suggestion will not be adopted. 35 U.S.C. 134(b)
provides that ``[a] patent owner in any reexamination proceeding may
appeal from the final rejection of any claim by the primary examiner to
the Board of Patent Appeals and Interferences, having once paid the fee
for such appeal.'' According to the effective date provisions of Public
Law 106-113, the provisions of 35 U.S.C. 134(b) apply to any
reexamination proceeding filed on or after November 29, 1999.
Accordingly, by law, the patent owner must wait until an examiner makes
a second or subsequent rejection final, before being permitted to file
an appeal in a reexamination proceeding and therefore both Sec. Sec.
41.31(a)(2) and (a)(3) are necessary to inform a patent owner when an
appeal in a reexamination proceeding may be taken.
Comment 39: One comment suggests that proposed Sec. 41.33 be
amended to refer to the ``date of filing an Appeal'' as opposed to
referring to ``after the date the proceeding has been appealed.'' This
change would ensure consistency with Office language used in other
regulations relative to ``filing dates.'' The original language is
confusing as it is not clear whether the date the ``proceeding has been
appealed'' is the date typed by the Applicant on the Notice of Appeal,
the date of the Certificate of Mailing affixed on a Notice of Appeal,
or the date of filing accorded by the Office to the Notice of Appeal.
Similarly, it is not clear what the date is that an amendment was
``submitted.'' Do certificates of mailing or certificates of facsimile
transmission, impact on the date of ``submission'' or the date that
``the proceeding has been appealed''? A well accepted term like ``date
of filing'' used consistently throughout the paragraph would avoid any
possible confusion.
Answer: The suggestions have been adopted in Sec. 41.33 and Sec.
41.63.
Comment 40: One comment suggests that the word ``may'' be replaced
with the word ``will'' in Sec. 41.33. The comment states that this
suggestion is made to avoid any possible confusion or abuse of the
regulations by examiners and that there should be no flexibility given
to examiners in entering minor cosmetic amendments as envisioned in
this portion of the paragraph.
Answer: The suggestion will not be adopted. The use of the word
``may'' in Sec. 41.33 rather then the word ``will'' is appropriate
since it (1) is consistent with the current use of the word ``may'' in
Sec. 1.116; and (2) connotes that entry of amendments and evidence
filed after appeal is not a matter of right but that such amendments
and evidence filed after appeal may be admitted under certain
circumstances set forth in the rule.
Comment 41: One comment notes that Sec. 41.33(b) should also
include a reference to Sec. 41.50(c) as to permitted amendments.
Answer: The suggestion has been adopted.
Comment 42: One comment suggests incorporating Sec. 41.33(c) into
Sec. 41.33(b), and having Sec. 41.33(b) refer both to ``amendments''
and ``affidavits or other evidence'' submitted after filing an appeal.
The comment states that this change would avoid separate discussion of
amendments, affidavits and other evidence.
Answer: The suggestion will not be adopted since the prohibition
against these filings is no longer the same. See Comment 41.
Comment 43: Five comments assert that proposed Sec. 41.33 would
unduly restrict the types of amendments and evidence that can be made
after a Notice of Appeal is filed. One suggested solution was to remove
paragraphs (b) and (c) of Sec. 41.33 and instead rely upon (or
substitute) the provisions of Sec. 1.116. A second suggested solution
was to amend paragraphs (b) and (c) of Sec. 41.33 to take effect once
the appeal brief is filed. A third suggested solution was that
amendments making claim(s) allowable be permitted thus resolving issues
that would otherwise be appealed.
Answer: The comments have been adopted to the following extent.
Amendments submitted on or after the date the proceeding has been
appealed may be admitted as provided in Sec. 1.116. Thus, amendments
after final but prior to appeal and amendments filed after appeal but
prior to the date the brief is filed will be treated under the same
standard (i.e, Sec. 1.116). Amendments filed on or after the date of
filing a brief may be admitted only to cancel claims, where such
cancellation does not affect the scope of any other pending claim in
the proceeding, or to rewrite dependent claims into independent form.
All other amendments submitted after the date the proceeding has been
appealed will not be admitted except as permitted by Sec. Sec.
41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c). Affidavits or
other evidence submitted after the date the proceeding has been
appealed and prior to the date a brief is filed overcoming all
rejections under appeal may be admitted if the examiner determines that
the affidavits or other evidence overcomes all rejections under appeal
and a showing of good and sufficient reasons why the affidavit or other
evidence is necessary and was not earlier presented. All other
affidavits or other evidence submitted on or after the date the
proceeding has been appealed will not be admitted except as permitted
[[Page 49975]]
by Sec. Sec. 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
Comment 44: Two comments state that the proposed rules are unclear
as to subsequent appeal procedures after prosecution is reopened
subsequent to the filing of a first Notice of Appeal and Appeal Brief.
Specifically, the comments question if prosecution is reopened under
either Sec. 41.39(b)(1), Sec. 41.50(a)(2)(i) or Sec. 41.50(b)(1),
and a subsequent appeal is taken, would applicant be required to again
pay the Notice of Appeal and Appeal Brief fees. The comments believe
that this extra cost is unfair and burdensome to applicants because the
reopening of prosecution would be the result of action by the examiner
or the Board, not action by applicants. Accordingly, the comments
suggest that provision should be made in the proposed rules that
applicants need not twice pay the Notice of Appeal and Appeal Brief
Fees in an application where those fees have already been paid but
prosecution was then reopened.
Answer: The comment will not be adopted. The rule making did not
propose to change the current procedures in this area. Currently, once
a Notice of Appeal and Appeal Brief fee has been paid in a proceeding,
a second Notice of Appeal and Appeal Brief fee will not be required
except if a final Board decision has been made on the first appeal. For
example, in an application for patent, a Notice of Appeal and Appeal
Brief fees have been paid and the examiner reopens prosecution in a new
Office action, new fees are not required for an applicant to appeal
from that new Office action. Another example is in an application for
patent, a Notice of Appeal and Appeal Brief fees have been paid and the
Board in its decision makes a new ground of rejection and the applicant
elects to reopen prosecution before the examiner, then new fees are
required for an applicant to appeal from any new Office action by the
examiner. The same procedures apply under the rules as implemented in
this rule making.
Comment 45: One comment suggests that it ought to be made clear
that the words of Sec. 41.33, ``rewrite dependent claims into
independent form,'' includes both of the following two situations: (1)
In conjunction with the rewriting of a dependent claim in independent
form, amendment(s) would be allowed changing the dependency of claims
which had depended from the independent claim being canceled, and (2)
rather than rewriting a dependent claim in independent form, an
independent claim can be amended to incorporate therein the subject
matter of a dependent claim that has been identified by the examiner as
being allowable.
Answer: The suggestion is adopted to the extent that the Manual of
Patent Examining Procedure will provide that rewriting dependent claims
into independent form as permitted under Sec. 41.33 includes the
following situations: (1) Rewriting a dependent claim in independent
form by adding thereto the limitations of the parent claim(s); and (2)
rewriting an independent claim to incorporate therein all the subject
matter of a dependent claim, canceling the dependent claim and in
conjunction therewith changing the dependency of claims which had
depended from the dependent claim being canceled to the amended
independent claim that incorporate therein all the subject matter of
the now canceled dependent claim.
Comment 46: One comment suggests that Sec. 41.37(a)(1) be amended,
as suggested for Sec. 41.33, to reference the ``date of filing the
notice of appeal,'' rather than the uncertainty that might be
introduced by the phrase ``the date of the notice of appeal.''
Answer: The suggestion has been adopted.
Comment 47: One comment inquires if the ``date of the notice of
appeal'' referred to in Sec. 41.37(a) is the date the notice of appeal
is signed, is filed, or is received by the Office.
Answer: As under current practice, the date of filing the notice of
appeal is either (1) the date of deposit with the United States Postal
Service if the provisions of 37 CFR Sec. 1.10 are followed; or (2) the
date of receipt by the Office.
Comment 48: One comment suggests that the clause ``or within the
time allowed for reply to the action from which the appeal was taken,
if such time is later'' be added at the end of paragraph 41.37(a)(1).
The comment notes that this language currently appears in former Sec.
1.192(a) (2003), and this additional time is a valuable option to
applicants who file a notice of appeal with no intention of filing an
appeal brief, but are filing the appeal simply to buy some additional
time to permit the examiner to rule on an amendment filed under Sec.
1.116. The comment states that any docketing benefits gained by the
proposed change in this paragraph, as discussed by the proposed rule
drafters, is far outweighed by the disadvantage to both applicants and
the Office in having applicants file a brief simply as a strategy to
maintain pendency, while the examiner renders a decision on an
amendment filed under Sec. 1.116.
Answer: The suggestion will not be adopted. The suggestion is based
on the belief that the two-month period for filing an appeal brief that
runs from the date of filing of the notice of appeal would expire
before applicants have received a decision from the examiner on an
amendment filed under Sec. 1.116 (i.e., an amendment filed after a
final rejection but before or with the filing of a notice of appeal).
It is expected that such a situation would be rare. In that rare
situation, applicants can obtain an extension of time as provided in
Sec. 41.37(e). In addition, applicants can delay filing the notice of
appeal until they have received a decision from the examiner on the
amendment filed under Sec. 1.116 especially if the amendment filed
under Sec. 1.116 is filed within two months from the date of mailing
of any final rejection setting a three-month shortened statutory period
for reply since it is Office policy (see MPEP 714.13) that if the
advisory action is not mailed until after the end of the three-month
shortened statutory period, the period for reply to the final rejection
for purposes of determining the amount of any extension fee will be the
date on which the Office mails the advisory action advising applicant
of the status of the application, but in no event can the period for
reply to the final rejection extend beyond six months from the date of
the final rejection.
Comment 49: One comment inquires how the real party in interest
should be identified in the appeal brief when the application involved
in the appeal is assigned to a subsidiary corporation which corporation
is owned by either a parent corporation or a joint venture between
corporations.
Answer: When an application is assigned to a subsidiary
corporation, the real party in interest is both the assignee and either
the parent corporation or corporations, in the case of joint ventures.
One example of a statement identifying the real party in interest is:
The real party in interest is XXXX corporation, the assignee of record,
which is a subsidiary of a joint venture between YYYY corporation and
ZZZZ corporation.
Comment 50: One comment suggests that a requirement to identify the
real party in interest should be made in contested cases, perhaps as
part of a re-named Sec. 41.108.
Answer: Section 41.8 entitled ``Mandatory notices'' already
requires that at the initiation of a contested case (Sec. 41.101), and
within 20 days of any change during the proceeding, a party must
identify its real party-in-interest.
Comment 51: One comment suggests that the requirement in Sec.
41.37(c)(1)(ii)
[[Page 49976]]
to identify related proceedings is ambiguous with respect to its scope.
The comment believes that read broadly, it would require an appellant
to identify every precedential decision that might bear on the issues
on appeal and could expose an appellant to unreasonable allegations of
inequitable conduct.
Answer: The requirement in Sec. 41.37(c)(1)(ii) to identify
related proceedings does not require an appellant to identify prior
proceedings involving unrelated parties including precedential
decisions that might bear on the issues on appeal. The requirement in
Sec. 41.37(c)(1)(ii) to identify related proceedings does require an
appellant to identify every related proceeding (e.g., commonly owned
applications having common subject matter, claim to a common priority
application).
Comment 52: One comment suggests that Sec. 41.37(c)(1)(iii) be
deleted in its entirety, as it introduces an unnecessary additional
burden on appellants with no discernible benefit to the Office. The
comment states that since only rejected claims are subject to an
appeal, there seems to be no benefit in identifying the status of
claims that are not subject to appeal and that asking appellants to
make this type of listing for claims that are not rejected and thus are
not subject to appeal, would introduce a risk of inadvertent error by
appellants and in any event, would likely be ignored by the examiner
and the Board.
Answer: The suggestion will not be adopted. Section
41.37(c)(1)(iii) generally incorporates only the requirements of former
Sec. 1.192(c)(3) (2003) that a statement of the status of all the
claims be presented and an identification of those claims that are
being appealed. As such it does not introduce an unnecessary additional
burden on appellants. Moreover, the benefit to the Office of this
requirement is that the Board is directly informed as to the status of
all the claims in the proceeding (e.g., rejected, allowed or confirmed,
withdrawn, objected to, canceled) and which of those claims that are
being appealed. For example, should the Board have knowledge of any
grounds not involved in the appeal for rejecting any pending claim, the
Board under the authority of Sec. 41.50(b) may make a new ground of
rejection.
Comment 53: One comment expresses concern in regard to the
requirement of proposed Sec. 41.37(c)(1)(v) that a concise explanation
of the subject matter defined in each of the independent claims
involved in the appeal be provided. Specifically the comment asks what
is a concise statement, what is required, does the explanation have to
show how each claim is different, does the requirement apply to all
drawings and embodiments, or only a representative drawing? The comment
states that the Office deleted a similar requirement in 1992 relating
to documents submitted in an IDS because ``concise explanation''
descriptions rarely communicated any useful information, improved the
quality of patent examination but provided an opportunity to attack the
patent on the grounds of inequitable conduct. The comment suggests that
the requirement be clarified or dropped.
Answer: A patentability determination must be performed on a claim-
by-claim basis. The first step in a patentability determination is to
construe a given claim and determine its metes and bounds. ``Analysis
begins with a key legal question--what is the invention claimed?''
since ``[c]laim interpretation * * * will normally control the
remainder of the decisional process.'' Panduit Corp. v. Dennison
Manufacturing Co., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed.
Cir.), cert. denied, 481 U.S. 1052 (1987). The existing provisions of
37 CFR Sec. 1.192(c)(5) (2003) are directed to providing a summary of
the ``invention,'' not the claims. See In re Hiniker Co., 47 USPQ2d
1523 (Fed. Cir. 1998): ``The invention disclosed in Hiniker's written
description may be outstanding in its field, but the name of the game
is the claim. See Giles Sutherland Rich, Extent of Protection and
Interpretation of Claims--American Perspectives, 21 Int'l Rev. Indus.
Prop.'' By statute, the Board reviews ``adverse decisions of examiners
upon applications for patents.'' 35 U.S.C. 6(b). For the Board to reach
an informed decision on the merits of a rejection presented for review,
the record should reflect the respective positions of the examiner and
appellant as to the scope of the claims. It is the experience of the
Board that the prosecution and examination in a significant number of
appeals forwarded for decision on appeal has taken place in the context
of ``applicant's invention,'' not on a claim-by-claim basis. Thus, the
Board is oftentimes confronted with a record in which no significant
claim construction has occurred. Those records are not susceptible to
meaningful review and result in an inordinate number of remands.
The determination of how ``concise'' the explanation must be will
need to be determined on a case-by-case basis. If the prosecution and
examination has been based upon a discussion of the patentability of
individual claims instead of the ``invention,'' it is expected the
explanation will be more ``concise'' than if the prosecution and
examination has been conducted on the basis of the ``invention.'' As to
what is required, the proposed rule states that reference to the
specification by page and line number, and to the drawing, if any, by
reference characters is required. Appellant may include any other
information of record which will aid the Board in considering the
subject matter of each independent claim. The explanation does not have
to show how each claim is different. The purpose of the requirement is
to aid the Board in considering the subject matter of the independent
claims so that an informed review of the examiner's adverse
determination of patentability can be made. Whether the explanation is
limited to a single drawing or embodiment or is extended to all
drawings and embodiments is a decision appellant will need to make.
The proposed concise explanation of the subject matter defined in
each independent claim is different from a concise explanation of a
reference. It is the applicant who is responsible for drafting claims
and choosing the language and terms used to define the claimed
invention. 35 U.S.C. 112(2) (``The specification shall conclude with
one or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.'') As
the originator of the claim language, applicant should know what is
intended by the various words and phrases used to define the claimed
subject matter and thus, providing a concise explanation of the subject
matter of each independent claim as proposed should not be an undue
burden. This is in contrast to explaining the possible relevance of a
document that may not have originated from applicant. Another
difference is that the number of independent claims presented for
review in an appeal is a matter directly within appellant's control,
while appellant does not have control over the number of documents that
should be cited to the Office.
The subject matter of each independent claim needs to be concisely
explained for a number of reasons. For example, if the Board decides
that a rejection is to be reversed for a given independent claim, the
remaining independent claims must be reviewed to determine if the
reasons for reversing the rejection of the first independent claim
apply to the remaining independent claims. Furthermore, if appellant
chooses to argue a group of claims which includes more than one
independent claim, the
[[Page 49977]]
Board will need to review, at the least, each independent claim to
determine which claim will be selected as representative of the group.
Apart from reviewing the examiner's adverse decision on patentability,
the Board may also make new grounds of rejection pursuant to former
Sec. 1.196(b) (2003) or make an explicit statement that a claim would
be allowable if amended under former Sec. 1.196(c) (2003). The concise
explanation of the subject matter of each independent claim will aid
the Board in making these determinations.
Comment 54: Several comments address the provision of proposed
Sec. 41.37(c)(1)(v) that every means plus function and step plus
function as permitted by 35 U.S.C. 112(6) used in the claims be
identified and 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. A number of comments express
concern that this requirement may result in a limiting claim
construction or create prosecution history estoppel. The comments also
take the position that the requirement would be unduly burdensome in
that appellant would need to provide this analysis whether a claim
limitation was in ``issue'' in the appeal. Another comment indicates
that the proposed rule is not clear as to whether it applies to ``all
drawings and embodiments, or only a representative drawing.'' Another
comment expresses concern that the proposed rule may be subject to
abuse, as where an examiner takes the position that claims that are not
couched in means-plus-function terminology of 35 U.S.C. 112(6) are
nevertheless subject to the provisions of that section and this
proposed rule. Suggested changes include using the rule as a procedural
tool rather than a substantive requirement or to require only the
identification of one or more examples of the support for each
independent or separately argued claim, rather than all examples of
support for every claim. Another suggested change is that any issues in
regard to the Board's need for such an identification in order to reach
a reasoned decision be addressed by way of an order under the existing
provisions of Sec. 1.196(d) (2003).
Answer: The suggestion is adopted to the extent that every means
plus function and step plus function as permitted by 35 U.S.C. 112(6)
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 only for each
independent claim involved in the appeal and for each dependent claim
argued separately under the provisions of Sec. 41.37(c)(1)(vii).
Whether a statement made by an applicant during procurement of the
patent from the Office results in an estoppel is a matter that is
ultimately decided during proceedings outside the Office. The decision
to grant the patent by the Office must be based upon a firm and clear
understanding of the scope of the individual claims. If the prosecution
and examination of claims involving issues under 35 U.S.C. 112(6) has
been based upon individual claims and in accordance with the procedures
set forth in MPEP 2181 for claim language involving issues under this
section of the statute, it is anticipated that this aspect of the rule
will be based upon the statements and determinations already of record
and thus does not constitute a significant burden. See MPEP 2181
(explaining that the Office must apply 35 U.S.C. 112(6) in appropriate
cases, and give claims their broadest reasonable interpretation, in
light of and consistent with the written description of the invention
in the application, citing In re Donaldson, 16 F.3d 1189, 1194, 29
USPQ2d 1845, 1850 (Fed. Cir.1994)). However, if the prosecution and
examination has been based upon the ``invention'' and not individual
claims, it may be that appellant will be making statements regarding
claim scope for the first time during the appeal proceeding. To the
extent this is seen as a burden or creating a possible estoppel, it may
be that this is an indication that the case, while eligible for an
appeal under the statute and the rules, may not be ready for an appeal.
The comments expressing concern that the proposed rule extends to
35 U.S.C. 112(6) limitations which are not in ``issue'' are presumably
based upon the perspective that appellant and the examiner have agreed
upon the correct construction of such characterized limitations during
the prosecution and examination of the application up to the appeal
stage, not that such characterized limitations have been ignored or not
commented upon during the pre-appeal proceedings. If the former has
occurred, it should not be an undue burden to provide the needed
analysis. If the latter applies, appellant will need to directly
address each limitation so that the record is clear as to where the
underlying structure, steps or materials are described in the written
description of the application so that the Board can understand the
subject matter of the individual claims presented for review. The
suggestion that this provision apply only to the independent claims or
claims that are separately argued is adopted.
Issues regarding whether the language chosen by applicant to define
a claim limitation falls within 35 U.S.C. 112(6) are discussed in MPEP
2181. Whether specific claim language invokes the provisions of 35
U.S.C. 112(6) is a merits issue to the extent it involves the
determination of claim scope. If an applicant believes that an examiner
has not followed proper procedure, relief may be had by way of a
petition under Sec. 1.181.
The proposal to make this requirement a procedural tool instead of
a substantive requirement is not adopted. Claim construction during any
stage of a patentability determination is a substantive matter, not a
procedural tool, as it controls the substantive application of the law
and facts to the claim language under review.
Comment 55: A comment was made in regard to proposed Sec.
41.37(c)(1)(vii) that examiners will sometimes only reject the
independent claims or make a ``jumbled'' rejection where it is not
clear what arguments apply to which claims. Under these circumstances
the comment believes that it is a burden to require appellant to
provide separate argument for each and every dependent claim. The
comment also states that ``it [the rule or the rejection?] pushes
Applicants into the position of having to make potentially prejudicial
statements regarding claims, where the Examiner has not initially met
the burden of providing a prima facie case of obviousness. Where the
grounds of rejection are of the nature that the Examiner has failed to
indicate what grounds of rejection apply to a group of claims,
Applicants should simply be able to say this, without thereby risking
that the group of claims stands or falls together.'' A second comment
expresses concern that 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 may impact the ultimate presumption of each claim in
an issued patent under 35 U.S.C. 282, noting that the current rule does
not contain any waiver provision.
Answer: Patentability must be decided on a claim-by-claim basis.
Merits decisions of the Board in ex parte appeals must determine the
patentability of individual claims, not whether an ``invention'' is
patentable or a group of claims is patentable. Thus, the arguments in
the Appeal Brief are
[[Page 49978]]
preferably directed to individual claims. If appellant chooses to argue
claims as a group as permitted, the Board will pick a single claim to
decide the appeal to the group of claims as to that ground of
rejection. If the prosecution and examination of a case has proceeded
to the point of an appeal without applicant and the examiner discussing
the merits of individual claims, that is an indication that the case is
not ready for an appeal. If applicant believes that a rejection set
forth in an Office action is ``jumbled'' or in any other manner does
not clearly communicate the facts and reasons why the individual claims
subject to the rejection are unpatentable, relief may be available by
way of a petition under Sec. 1.181.
The waiver provision of the proposed rule reflects the view
expressed in In re McDaniel 63 USPQ2d 1462, 1468 (Fed. Cir. 2002)
(Mayer, C.J. dissenting-in-part) that ``in stating that claims 53-64
stand or fall together, [McDaniel] has waived any argument that claims
55-57 are patentable for reasons independent of claim 53.''
Comment 56: One comment notes that each appeal is unique and that
there ``is no good reason for making detailed requirements as to the
form of presentation of explanations and arguments in an appeal brief''
as proposed in Sec. 41.37(c)(1)(vii). The comment observes that the
``Office properly assumes that an examiner is capable of responding to
any appeal brief under either the existing rule or the proposed rule
each of which simply requires a written statement in answer to
appellant's brief including such explanation of the invention claimed
and of the references and grounds of rejection as may be necessary. The
comment asks the questions ``Should not the same simple requirements be
in effect as to the appeal brief? What's sauce for the goose should be
sauce for the gander?''
Answer: The structure provided for by the requirements of Sec.
41.37 ensures that Appeal Briefs will provide the information the Board
needs to render an informed decision on the issues presented for
review. While each appeal is unique in regard to the issues and
arguments presented, there is certain information common to each appeal
which is amenable to being provided by way of a prescribed format. The
view expressed in the comment that examiners are under ``simpler
requirements in preparing an Examiner's Answer than appellant is in
preparing the Appeal Brief'' is misplaced. Detailed guidance to
examiners as to procedural requirements in performing their duties and
preparing Office actions is typically contained in the MPEP, not the
rules. The procedural requirements examiners must follow in preparing
an Examiner's Answer are found in MPEP 1208.
Comment 57: One comment suggests that Sec. 41.37(c)(1)(vii) be
amended to add the word ``separate'' prior to ``patentability'' in the
last sentence. The comment states that this would clarify that pointing
out what a claim recites will not be considered an argument for
``separate'' patentability of a claim, since such an argument could in
fact establish patentability of that claim without establishing
``separate'' patentability of the claim.
Answer: The suggestion to add the word ``separate'' prior to
``patentability'' in the last sentence has been adopted in Sec.
41.37(c)(1)(vii) and Sec. 41.67(c)(1)(vii).
Comment 58: One comment inquires if the requirement in Sec.
41.37(c)(1)(ix) for an evidence appendix containing copies of any
evidence submitted to the examiner and relied upon by the appellant in
the appeal was inconsistent with the provision in Sec. 41.7(b) that
precludes a party from filing a paper previously filed in the same
Board proceeding without Board authorization.
Answer: Section 41.7(b) has been amended so that the requirement in
Sec. 41.37(c)(1)(ix) for an evidence appendix containing copies of any
evidence submitted to the examiner and relied upon by the appellant in
the appeal is consistent with the provisions of Sec. 41.7(b).
Comment 59: One comment suggests that Sec. 41.37(c)(1)(ix) be
amended to require identification of ``when the evidence was submitted
into the record by Applicants or where in the record that evidence was
entered in the record by the Examiner.'' The comment states that this
suggestion was made since examiners will frequently not make a positive
statement indicating approval of entry into the record of evidence
presented by applicants. The comment states that absent specific
indication by the examiner that any evidence submitted was refused
entry, the evidence is presumed to have been entered as of the
submission date. Thus, the suggested change would remove any ambiguity
regarding how to comply with this requirement should the examiner not
make an affirmative entry of the evidence.
Answer: The suggestion is not adopted. Evidence submitted after
final rejection is not presumed to have been entered and must be
specifically admitted by the examiner as set forth in Sec. 1.116 as
amended by this rule making. Evidence submitted either before the first
Office action or after a non-final rejection may be presumed to have
been entered only when treated by an examiner in an Office action.
Accordingly, the requirement of Sec. 41.37(c)(1)(ix) of a statement
setting forth where in the record the evidence was entered in the
record by the examiner is met by an explicit statement entering the
evidence or implicitly by an Office action weighing the evidence. Prior
to filing an appeal brief, if applicants have submitted evidence to the
examiner and it is not clear if this evidence has been entered or not
entered, appellants should contact the examiner to inquire as to the
status of that evidence. For example, if a Sec. 1.132 declaration is
timely filed in response to non-final Office action and the next action
by the examiner is a final rejection which does not mention the Sec.
1.132 declaration, applicants should contact the examiner to inquire as
to the status of the Sec. 1.132 declaration before filing an appeal
since a brief arguing that evidence is not permitted by Sec.
41.37(c)(1)(ix). The likely result of such an inquiry would be a new
Office action treating the Sec. 1.132 declaration or being informed
that the Office has no record of the Sec. 1.132 declaration.
Comment 60: One comment requests clarification as to whether
appendixes as required by Sec. Sec. 41.37(c)(ix-x) are necessary at
all when no evidence or related proceedings exist, or whether an
appendix must be included with the indication ``none.''
Answer: Sections 41.37(c)(ix-x) require the appeal to contain an
evidence appendix and a related proceedings appendix. If no evidence or
related proceedings exist, an evidence appendix should be included with
the indication ``none'' and a related proceedings appendix should be
included with the indication ``none.'' In addition, a brief containing
a Table of Contents indicating that no evidence appendix is part of the
brief or that no related proceedings appendix is part of the brief
would be acceptable under the Rule since it would clearly indicate that
no evidence is being relied upon by the appellant in the appeal or that
no related proceedings having decisions rendered by a court or the
Board exist.
Comment 61: One comment states that it would be useful to have an
example of a format and content for an appeal brief that would comply
with the new regulations published with the notice of final rule making
and ultimately incorporated into the Manual of Patent Examining
Procedure.
Answer: An example of a format and content for an appeal brief is a
brief
[[Page 49979]]
containing the following items, with each item starting on a separate
page:
(1) Identification page setting forth the applicant's name(s), the
application number, the filing date of the application, the title of
the invention, the name of the examiner, the art unit of the examiner
and the title of the paper (i.e., Appeal Brief)
(2) Table of Contents page(s)
(3) Real party in interest page(s)
(4) Related appeals and interferences page(s)
(5) Status of claims page(s)
(6) Status of amendments page(s)
(7) Summary of claimed subject matter page(s)
(8) Grounds of rejection to be reviewed on appeal page(s)
(9) Argument page(s)
(10) Claims appendix page(s)
(11) Evidence appendix page(s)
(12) Related proceedings appendix page(s).
Comment 62: One comment suggests that the reference to Sec. Sec.
41.31-41.37 in Sec. 41.39(a)(1) be changed to refer to Sec. 41.31 or
Sec. 41.37.
Answer: The suggestion has been adopted. In addition, a similar
change has been made to Sec. 41.69(a)(1).
Comment 63: One comment recommends that Sec. 41.39(a)(1) be
amended to clarify the manner in which the Director will notify the
public as to the time within which the primary examiner will be
required to furnish a written answer to the appeal brief.
Answer: The comment will not be adopted. The Director currently
notifies the public as to the time within which the primary examiner is
expected to furnish a written answer to the appeal brief in the MPEP.
Section 1208 of the MPEP provides that ``[t]he examiner should furnish
the appellant with a written statement in answer to the appellant's
brief within 2 months after the receipt of the brief by the examiner.''
Comment 64: Several comments suggest that any new ground of
rejection be approved by the appeal conference in the Technology Center
or by a Technology Center Director.
Answer: The suggestion is adopted to the extent that the MPEP will
provide that each examiner's answer containing a new ground of
rejection must be approved by a Technology Center Director or designee.
An appeal conference is mandatory in all cases in which an acceptable
appeal brief has been filed. The participants of the appeal conference
should include (1) the examiner charged with the preparation of the
examiner's answer, (2) a supervisory patent examiner (SPE), and (3)
another examiner, known as conferee, having sufficient experience to be
of assistance in the consideration of the merits of the issues on
appeal. During the appeal conference, the participants of the appeal
conference will decide whether a new ground of appeal is appropriate.
On the examiner's answer, the word ``conferees'' should be included,
followed by the typed or printed names of the other appeal conference
participants. The appeal conference participants will place their
initials next to their name to make clear that the appeal conference
has been held. A Technology Center Director or designee must also
initial/approve an examiner's answer containing a new ground of
rejection.
Comment 65: One comment suggests that allowing the examiner to
institute a new ground of rejection in the examiner's answer is unfair
to the appellant and the examiner should be required to reopen
prosecution.
Answer: If the examiner institutes a new ground of rejection in the
examiner's answer, then the appellant has two months to either request
that prosecution be reopened by filing a reply under Sec. 1.111 or
file a reply brief under Sec. 41.41, which would act as a request that
the appeal be maintained. Accordingly, although the examiner may in
limited situations institute a new ground of rejection on appeal, the
appellant has the right to request that prosecution be reopened. An
appellant may not wish to have prosecution reopened if the new ground
of rejection is similar to a prior rejection or if the evidence of
record is sufficient to address the rejection. Moreover, reopening
prosecution may prolong examination without any benefit to the
appellant.
Comment 66: One comment suggests that the new arguments are
necessary in the appeal brief because the conferees and supervisors are
more experienced than the examiner and if the case proceeds to the
Board, the audience is an APJ, who has quite different qualifications
than either the conferee or the supervisor. Moreover, the comment
suggests that the rule is unnecessary because nothing in the rule
prevents the examiner from responding to new arguments raised in the
appeal brief.
Answer: Former Sec. 1.193(a)(2) (2003) prohibited an examiner's
answer from including a new ground of rejection except under very
limited circumstances. Accordingly, an examiner could not respond to a
new argument raised in an appeal brief by adding a new ground of
rejection in the examiner's answer. Because the former appeal rules
only allowed the examiner to make a new ground of rejection by
reopening prosecution, some examiners have allowed cases to go forward
to the Board without addressing the new argument. Section 41.39(a)(2)
will improve the quality of examination and possibly reduce pendency by
providing for the inclusion of a new ground of rejection in an
examiner's answer.
Comment 67: One comment suggests that the Office should require the
examiner making a new ground of rejection to acknowledge any mistakes
the examiner may have made, explain the time and circumstances in which
the new ground of rejection became known to the examiner, and
explicitly point out to which arguments in the brief the new ground of
rejection is responsive.
Answer: The suggestion will not be adopted. The making of a new
ground of rejection in an examiner's answer is in itself an
acknowledgment of an error made in the rejection under appeal.
Requiring the examiner to explain the time and circumstances in which
the new ground of rejection became known to the examiner and to
explicitly point out to which argument in the brief the new ground of
rejection is responsive would delay prosecution and be of little or no
value in determining the appropriateness of the new ground of
rejection. As set forth above, a Technology Center Director or designee
must initial/approve an examiner's answer containing a new ground of
rejection. The Technology Center Director or designee will be aware
that allowing a new ground of rejection in an examiner's answer is not
open-ended but is envisioned to be rare rather than a routine
occurrence. In addition, the Office plans to issue instructions that
will be incorporated into the MPEP as to what circumstances would be
appropriate for entry of a new ground of rejection in an examiner's
answer rather than reopening of prosecution.
Comment 68: One comment suggests that any new grounds of rejection
be limited to new rejections made in response to an argument presented
for the first time in an appeal brief.
Answer: The comment is not adopted. As set forth above, the Office
plans to issue instructions that will be incorporated into the MPEP as
to what circumstances would be appropriate for entry of a new ground of
rejection in an examiner's answer rather than reopening of prosecution.
An examiner will be permitted to make a new ground of rejection in an
examiner's answer in the situation where an 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
[[Page 49980]]
U.S. Patent No. Y. Claim 27 depended upon claim 22 which depended upon
claim 13 which depended upon claim 1. No rejection of claim 22 was set
forth in the final rejection; however, the summary sheet of the final
rejection indicated claims 1, 13, 22 and 27 as being rejected. In this
situation, the examiner would be permitted to reject claim 22 under 35
U.S.C. 102(b) as being anticipated by U.S. Patent Y as a new ground of
rejection in the examiner's answer. Accordingly, it would not be
appropriate to limit new grounds of rejection to only a rejection made
in response to an argument presented for the first time in an appeal
brief.
Nevertheless, it will be the policy of the Office that, in general,
if an appellant has previously submitted an argument during prosecution
of the application and the examiner has ignored that argument, the
examiner will not be permitted to add a new ground of rejection in the
examiner's answer to respond to that argument but would be permitted to
reopen prosecution, if appropriate.
Comment 69: Two comments suggests that if the Office introduces a
new ground of rejection, then the appellant should have a full range of
prosecution options available and not be limited to amendments and/or
evidence responding to the new ground of rejection.
Answer: The options provided by Sec. 41.39(b) to respond to a new
ground of rejection in an examiner's answer give the appellant the
choice of maintaining the appeal or reopening prosecution before the
primary examiner. Moreover, if prosecution is reopened, it is
reasonable to require that any amendment and/or evidence be responsive
to the new ground of rejection. Any such responsive amendment and/or
evidence may also be directed to claims not subject to the new ground
of rejection. Furthermore, it is noted that the appellant can file a
request for continued prosecution pursuant to Sec. 1.114 and then the
appellant would be able to submit an amendment and/or evidence directed
only to claims unrelated to the new ground of rejection and have such
considered by the examiner. Therefore, the appellant does have a full
range of prosecution options.
Comment 70: Several comments suggest that although there may be
circumstances where the introduction of a new ground of rejection is
desirable, the situations where such new ground is introduced should be
infrequent.
Answer: As noted in the proposed rule making, the change to permit
new grounds of rejection in the examiner's answer is envisioned to be a
rare, rather than routine, occurrence. The Office will provide guidance
to the examiners in the MPEP as to what circumstances would be
appropriate for entry of a new ground of rejection in an examiner's
answer rather than reopening prosecution.
Comment 71: One comment suggests that Sec. 41.39(c) be changed to
state that extensions under Sec. 1.136(a) are not applicable only to
the time period for filing a reply brief under Sec. 41.39(b)(2),
thereby permitting an appellant to obtain an appropriate extension of
time under Sec. 1.136(a) for filing of a response when re-opening
prosecution under Sec. 41.39(b)(1).
Answer: The comment will not be adopted. It is believed to be
beneficial to applicant to provide a single mechanism to extend the
two-month time period to respond to an examiner's answer containing a
new ground of rejection. Having one extension of time provision if the
applicant elects to reopen prosecution before the primary examiner and
another extension of time provision if the applicant elects to maintain
the appeal by filing a reply brief can easily cause problems especially
when the applicant has not yet decided which course of action to
follow.
Comment 72: One comment asks whether a reply brief filed in
response to a new ground of rejection in accordance with Sec.
41.39(b)(2) has to address only the new ground of rejection or all
remaining grounds of rejection including those covered in the original
appeal brief. The comment also states that it is not clear what is
intended by the requirement that the appeal brief should follow the
other requirements of a brief as set forth in Sec. 41.37(c).
Answer: A reply brief filed in response to a new ground of
rejection in accordance with Sec. 41.39(b)(2) only has to address the
new ground of rejection. In such an instance, the reply brief should
include the following items, with each item starting on a separate
page, so as to follow the other requirements of a brief as set forth in
Sec. 41.37(c):
(1) Identification page setting forth the applicant's name(s), the
application number, the filing date of the application, the title of
the invention, the name of the examiner, the art unit of the examiner
and the title of the paper (i.e., Reply Brief)
(2) Status of claims page(s)
(3) Grounds of rejection to be reviewed on appeal page(s)
(4) Argument page(s)
However, a reply brief filed in response to a new ground of
rejection in accordance with Sec. 41.39(b)(2) can be a substitute
brief replacing the original brief by responding to both the new ground
of rejection and all remaining grounds of rejection covered in the
original appeal brief. In such an instance, the reply brief must meet
all the requirements of a brief as set forth in Sec. 41.37(c).
Comment 73: One comment suggests that proposed Sec. 41.41 be
amended to allow a reply brief to include a new or non-admitted
amendment, affidavit or other evidence upon a showing of good and
sufficient reasons why they are necessary and were not earlier
presented.
Answer: The suggestion is not adopted. An appeal should be decided
upon a fixed record, not an ever-changing one. While it is proposed to
allow examiners to make a new ground of rejection once again, the
appellant may request prosecution be reopened under proposed Sec.
41.39(b)(1) to supplement the record. Absent a new ground of rejection
in the Examiner's Answer, the record before the Board should remain
fixed as of the date the appeal brief is filed so that a reasoned
review of the record may efficiently take place.
Comment 74: Two comments express concern that the option of
permitting a supplemental examiner's answer to respond to a new issue
raised in a reply brief could be construed as to permit a supplemental
answer in almost any case and lead to a repeated exchange between the
examiner and the appellant that would not promote a just, speedy, or
inexpensive resolution of the proceeding. One comment notes that there
may be rare circumstances when such a supplemental examiner's answer is
appropriate. That comment suggests that the number of supplemental
examiner's answers be limited to one unless personally approved by the
Commissioner for Patents or one of his deputies.
Answer: The suggestion is adopted to the extent that the MPEP will
provide that each supplemental examiner's answer must be approved by a
Technology Center Director or designee.
Comment 75: One comment suggests that the comments made in the
background discussion of proposed Sec. 41.43(a)(1) be changed to
remove any prohibition on the right by the appellant to file a reply
brief. The comment states that appellants should have the right to file
a reply brief in any situation. The comment notes that the Office had
an earlier procedure that specified situations in which reply briefs
could be
[[Page 49981]]
filed and that this resulted in disputes and petition filings, where
the examiner and the appellant disagreed as to whether the filing of a
reply brief was permissible. The comment observes that the now-
superseded rules no longer prohibited the filing of a reply brief and
suggests that this practice should continue and that appellants should
always be permitted to have the last word.
Answer: Former Sec. 1.193(b) (2003) provided that an appellant may
file a reply brief to an examiner's answer or a supplemental examiner's
answer within two months from the date of such examiner's answer or
supplemental examiner's answer. Section 41.41(a)(1) provides that an
appellant may file a reply brief to an examiner's answer within two
months from the date of the examiner's answer and Sec. 41.43(b)
provides that if a supplemental examiner's answer is furnished by the
examiner the 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. Thus, the rules continue to
permit the appellant to always have the last word. That is, the
appellant may always file a reply brief to an examiner's answer or a
supplemental examiner's answer within two months from the date of such
examiner's answer or supplemental examiner's answer. The background
discussion of proposed Sec. 41.43(a)(1) 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 the appellant the right
to file a reply brief. This is not a change from current practice where
an examiner is permitted to respond to a reply brief by indicating a
change in status of claims (e.g., that certain rejections have been
withdrawn as a result of a reply brief) on form PTOL-90. This
indication of a change of status is not a supplemental examiner's
answer and therefore the appellant has no right to file a further reply
brief.
Comment 76: One comment suggests that the second sentence (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) of Sec. 41.47(a) be deleted. The comment believes that the
statement that an appeal without an oral hearing will be decided the
same way as an appeal with an oral hearing denies the fact oral and
written presentations differ in many respects and the fact that oral
presentations are not cut and dried like many written briefs.
Answer: The comment will not be adopted. While oral and written
presentations do differ in many respects, an appeal decided on the
briefs without an oral hearing does receive the same consideration by
the Board as appeals decided after an oral hearing.
Comment 77: Four comments state that the proposed requirement of
Sec. 41.47(e) that at the oral hearing, the 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 was too rigid. Most of the comments believe that an
appellant should be able to make an argument not present in the briefs
if good cause is shown such as new law or facts. One comment submits
that demonstrative exhibits should not be precluded by this
requirement.
Answer: Section 41.47(e) has been amended to permit the appellant
and/or the primary examiner, upon a showing of good cause, to rely on a
new argument based upon a recent relevant decision of either the Board
or a Federal Court. In addition, a demonstrative exhibit (e.g., a
sample of the invention as shown in the application's drawings) solely
directed to information of record that is not being relied upon to
establish patentability is not precluded by this rule.
Comment 78: One comment states that there does not appear to be any
limitation on the authority to cancel requested Oral Hearings as set
forth in proposed Sec. 41.47(f). The comment notes that the commentary
to the proposed rule indicates that the rule would be applied where a
remand to the Examiner is necessary or where the Examiner's position
could not be sustained. The comment suggests that the rule could be
clarified by adding, for example, ``in order to remand to the Examiner
or to grant the requested relief'' after ``if the Board decides that a
hearing is not necessary'' but before the comma. Another comment
suggests that Sec. 41.47(f) be amended after ``notify appellant'' to
state ``and provide the appellant an opportunity to indicate whether or
not to hold an oral hearing'' to make it clear that a party is entitled
to an oral hearing if the party notifies the Board timely and pays the
fee for an oral hearing.
Answer: The suggestions will not be adopted. The substance of Sec.
41.47(f) is found in former Sec. 1.194 (2003) and therefore no
substantive change was proposed. Moreover, in a situation where the
Board has decided that no hearing is necessary because the Board has
become convinced, prior to hearing, that the examiner's position will
be reversed or the proceeding needs to be remanded, there is no reason
to provide the appellant with an opportunity to nevertheless hold an
oral hearing. The Manual of Patent Examining Procedure will provide
examples as to when it would be appropriate for the Board to decide
that an oral hearing is not necessary. Currently, those examples
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.
Comment 79: Three comments note that Sec. 41.50(a)(2) did not set
any time limit for taking action to respond to a supplemental
examiner's answer written in response to a remand by the Board for
further consideration of a rejection.
Answer: The comment has been adopted. Section 41.50(a)(2) has been
amended to provide a two-month period for response.
Comment 80: One comment requests that each action and decision of
the Board should explicitly set forth the options, time limits, and
extension of time practice available for taking further action.
Answer: The Board will consider including options, time limits, and
extension of time practice in its decision.
Comment 81: Two comments inquire as to the justification for
dismissal of an appeal of all claims (proposed Sec. Sec. 41.50(a)(2)
and 41.50(d)) rather than those that may be subject to a new rejection
as in proposed Sec. 41.39(b). One comment urged that in the absence of
a compelling reason to treat these situations in a different manner
that the Office adopt the practice that results in the dismissal of the
appeal only as to the claims affected by the Office action. The other
comment urged with respect to Sec. 41.50(d) that the dismissal penalty
for non-response be removed and that the Board be permitted to make any
appropriate presumptions in view of the non-response.
Answer: We will adopt the suggestion to the following extent.
Section 41.50(a)(2) has been amended to provide that if a supplemental
examiner's answer is written in response to a remand by the Board for
further consideration of a rejection pursuant to Sec. 41.50(a)(1), the
appellant must exercise one of two options to avoid sua sponte
dismissal of the appeal as to the claims subject to the rejection for
which the Board has remanded the proceeding.
[[Page 49982]]
Section 41.50(d) has not been amended since it provides that failure to
timely comply with an order of the Board may result in the sua sponte
dismissal of the appeal. Thus, the Board may take the action that is
appropriate under the facts of each proceeding.
Comment 82: One comment notes that proposed Sec. Sec. 41.35(c) and
41.50(a)(1) provide for remand of an application to the examiner. The
comment urges the Board to exercise the remand authority in a manner
that takes into appropriate account the possible patent term extension/
adjustment consequences of a remand that is tantamount to a reversal of
the rejections of at least one claim in an appeal. In taking actions to
dispose of appeals, the comment states that the Board needs to be aware
of and take into appropriate account the possible implications of its
actions on eligibility for patent term extension/adjustment and seek to
avoid taking action that would possibly deny some applicants
potentially very valuable rights under 35 U.S.C. 154(b). As one
example, the comment asserts that the Board should not remand an appeal
to the examiner when the examiner has failed to establish a prima facie
case of unpatentability, but instead the Board should reverse the
rejection(s) and permit the examiner to take appropriate action when
the file is returned to the jurisdiction of the examining group.
Another comment suggests that the examples of situations where the
Board may remand an appeal to the examiner made in the background
discussion of proposed Sec. 41.50(a)(2) be deleted and that the Board
in fact discontinue the practice covered by the examples. The comment
states that the Board is an impartial panel resolving disputes between
appellants and examiners and that no special consideration should be
given by the Board to an examiner's position. The comment states that
the examiner must establish a prima facie case of anticipation or
obviousness, which the appellant must persuasively demonstrate to be in
error. The comment asserts that just as the Board would not give the
appellant an opportunity to present a more persuasive traversal, the
Board should not give an opportunity to the examiner to more clearly
meet his or her burden. The comment expresses the view that if a prima
facie case of unpatentability was not adequately made by the examiner,
the rejection should be reversed.
Answer: The comments are not adopted. It is within the discretion
of the panel of the Board deciding the appeal to determine the best
course of action. A panel may conclude that the best course of action
in deciding a rejection is to either (1) remand to the examiner for
further consideration of the rejection; (2) order the appellant to
brief additionally a matter concerning the rejection; (3) reverse or
vacate the rejection (with or without a remand to the examiner for
further action); or (4) affirm the rejection. While the examples of
situations where the Board may remand an appeal to the examiner made in
the background discussion of proposed Sec. 41.50(a)(2) could also be
examples of situations where the Board may reverse the rejection, the
Office believes that appellants' rights are protected in such a
situation since appellants under the provisions of Sec. 41.50(a)(2)
can choose to respond to any supplemental examiner's answer written in
response to a remand by the Board for further consideration of a
rejection by either (1) requesting 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; or (2) requesting that the
appeal be maintained by filing a reply brief as provided in Sec.
41.41. The panel of Administrative Patent Judges deciding the appeal
will determine if and when a remand is appropriate. A final decision on
appeal can only be reached when the record is susceptible to meaningful
review. A significant number of remands result from cases that have
been assigned to a merits panel for final decision where the record is
unclear. For example, it has been the Board's experience that cases in
which amendments and additional evidence have been filed during the
appeal process including with the Reply Brief oftentimes have a
confusing record. Sometimes the record does not indicate that the
examiner considered the amendment and/or additional evidence or the
record indicates that the amendment and/or additional evidence has been
``entered'' by the examiner without comment. Such cases need to be
remanded/returned to the examiner to clarify the record as to the
status of the amendment and/or additional evidence and if the material
is entered have the examiner enter a substantive response. It may be
that upon remand the examiner will determine upon a clarified record
that the claims are patentable and pass the case to issue. It is
expected that the proposed limits on the presentation of amendments
and/or evidence after the notice of appeal (see Sec. 41.33) has been
filed will minimize such occurrences.
Comment 83: Two comments state that the proposed requirement of
Sec. 41.52(a) that in a request for rehearing the 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 was too rigid. The comments believe that an
appellant should be able to make an argument not present in the briefs
if good cause is shown such as new law or facts.
Answer: Section 41.52(a) has been amended to permit the appellant,
upon a showing of good cause, to rely on a new argument based upon a
recent relevant decision of either the Board or a Federal Court.
Part 41, Subpart C--Inter Partes Appeals
Comment 84: One comment points out that the recitation in proposed
Sec. 41.66(a) that, ``if any party to the proceeding is entitled to
file an appeal or cross appeal but fails to timely do so,'' appellants
brief will be due upon ``the expiration of time for filing (by the last
party entitled to do so) such notice of appeal or cross appeal'' is
confusing. The comment points out that it is not clear how an appellant
A can know whether another party B will file a notice of appeal or
cross appeal on the last day of the time period for filing same. If
such a notice of appeal is then filed by party B, party A's appellant
brief would be due two months from the date the notice of appeal is
filed by party B, whereas if party B does not file it, party A's
appellant brief would be due by party A's ``original'' last day for
filing the appellant brief.
Answer: The comment has been adopted. The comment suggests that the
rule, as proposed, was open to more than one interpretation, because it
can be read to suggest that the brief is due upon ``the expiration of
time for filing (by the last party entitled to do so) such notice of
appeal or cross appeal.'' While a fair reading of the rule as proposed
would be that the brief must be filed within two months from the latest
filing of the last-filed notice of appeal or cross appeal, or within
two months from the expiration of time for filing such notice of appeal
or cross-appeal, the comment's interpretation is also tenable.
Accordingly, in the interest of clarity the rule has been amended to
more clearly state that the brief is due within two months from the
latest filed notice of appeal or cross appeal or within two months from
the expiration of the time for filing a notice of appeal or cross
appeal, whichever is later.
[[Page 49983]]
Comment 85: One comment suggests that Sec. 41.68(a)(4) be amended
by adding the word ``other'' to indicate that ``[a] requester's
respondent brief may not address any brief of any other requester.''
The comment states that the requester should be able to refer to any
arguments made in a previously filed brief by that same requester.
Answer: The comment has been adopted. The last sentence of former
Sec. 1.967(a) (2003) provided that ``a third party respondent brief
may not address any brief of any other third party.'' This prohibition
was to prevent multiple requesters from addressing the briefs of other
requesters which would make the proceeding unmanageable. Former Sec.
1.967 (2003) contained no prohibition preventing a requester from
referring to its own previously filed brief. The word ``other'' was
inadvertently omitted from the proposed Sec. 41.68. Accordingly, the
comment is adopted and the word ``other'' has been inserted in the rule
as suggested.
Comment 86: One comment suggests that paragraphs (b) and (c) of
Sec. 41.69 be eliminated from the rule. The comment urges that the
examiner should not be required to reopen prosecution if he or she is
persuaded by the brief filed that a rejected claim is in fact
patentable or that a claim found patentable is in fact unpatentable.
The comment further suggests that proposed Sec. 41.69(d) should be
amended to require that ``any proposed new ground of rejection, or any
proposed new determination not to make a proposed rejection, shall be
stated by the examiner in a separate section of the examiner's Answer,
and shall include reasons why the examiner has been persuaded to
propose such new ground of rejection or new determination not to make a
proposed rejection, referring to the corresponding arguments in the
requester's or owner's briefs.''
Answer: The comment has not been adopted. Section 41.69 was
proposed to generally incorporate the requirements of former Sec.
1.969 (2003) which relate to the examiner's Answer. The rule making did
not propose to change the current practice set forth in paragraphs (b)
and (c) of Sec. 41.69 and paragraphs (b) and (c) of former Sec. 1.969
(2003). The comment has been forwarded to the Deputy Commissioner for
Patent Examination Policy for further consideration.
Part 41, Subpart D--Contested Cases
Comment 87: One comment suggests that subpart D be modified to take
title proceedings under 42 U.S.C. 2182(4) and 2457(d) into
consideration. The comment does not suggest specific modification.
Answer: Subpart D is designed to address all contested proceedings
that currently occur before the Board, including title proceedings
under 42 U.S.C. 2182(4) and 2457(d). Title proceedings constitute a
very small percentage of the overall number of contested cases (about
1%). If a need arises for special rules specific to the title cases,
they would most likely be placed in a new subpart, just as subpart E
addresses specific issues arising in patent interferences.
Comment 88: One comment suggests that Sec. 41.102(a) is confusing
since it suggests that examination must be complete before a contested
case will be initiated, but that the declaration of an interference
means that the question of priority has yet to be resolved. The comment
urges that the phrase ``interfering subject matter * * * which is
patentable to the applicant subject to a judgment in an interference''
from Sec. 1.607(b) (2003) be included in Sec. 41.102(a).
Answer: Section 41.102(a) has been amended to include similar
language to that suggested, but it has been generalized since subpart D
is not limited to interferences. For instance, patentability might not
be an issue in a title proceeding under 42 U.S.C. 2182(4) and 2457(d).
Comment 89: Two comments express concern that the filing of a
reexamination could delay the initiation of a contested case.
Answer: A simultaneously pending reexamination and interference
involving the same patent has been very rare. Section 41.102 provides
the Board with the flexibility to tailor a specific solution to such
occurrences as they arise. See also Sec. 1.565(e) and Sec. 1.993. The
requirement under 35 U.S.C. 305 and 314(c) for special dispatch in
reexaminations will inform any solution that the Board may craft.
Comment 90: Section 41.103 suspends action in any case involved in
a contested case before the Board except as the Board may order. Two
comments request that Sec. 41.103 be modified to require the Board to
provide notice of when the suspension is lifted.
Answer: The judgment in the involved case will constitute adequate
notice that the suspension is no longer in effect. Moreover, the
suspension only applies to involved files, not to ancillary files like
benefit files, which may still be pending. A response to any
outstanding Office action in an ancillary file should be timely filed
to avoid abandonment.
Comment 91: Two comments oppose Sec. 41.104(b), which allows an
administrative patent judge to waive or suspend a rule in subpart D
subject to such conditions as the administrative patent judge may
impose. Both comments fear that the rule will permit arbitrariness.
Answer: The rule does not authorize arbitrariness, which if it were
to occur would be subject to correction. See Sec. 41.125(c)(5).
Moreover, the rule reflects current practice under the Standing Order
at ] 21, under which an administrative patent judge may modify the
Standing Order. The present rules incorporate many portions of the
Standing Order and, consequently, incorporate the provision of the
Standing Order that permits their modification.
There is a tension between adding so much detail in the rules that
they become too constrictive and including so little that parties lack
guidance about what is required. Section 41.104(b) is intended to
strike a balance by letting the rules include more detail, and thus
provide a basis for counseling clients, but also provide a remedy for
when a rule does not facilitate the goal of an inexpensive, fast, and
fair proceeding. See Sec. 41.1(b). The responses that the Board has
received regarding increased flexibility in interferences have been
generally good. Rather than eliminate the flexibility provided in Sec.
41.104, lest it be abused, it is better to address any abuse as it
arises. No comment objected to Sec. 41.104(c), which provides similar
flexibility for the setting of times.
Comment 92: One comment discusses an instance under the previous
rules in which, the comment suggests, a waiver occurred that was not
fair.
Answer: Too few details were provided to make discussion of the
example feasible. However, if a waiver is arbitrary or unfair, the
injured party has a remedy before the Board, Sec. 41.125(c)(5), and
during subsequent judicial review. It is up to the party to preserve
the issue and to pursue its remedies.
Comment 93: One comment is concerned that such waivers could change
the substantive requirements for motions.
Answer: The Board has cautioned against confusing procedural
requirements for motions set in the rules with the substantive
requirements of the patent statutes and case law necessary to prevail
in a motion. Hillman v. Shyamala, 55 USPQ2d 1220, 1221 (BPAI 2000).
Moreover, only the general contested case rules in subpart D are
subject to a Sec. 41.104(b) waiver. The presumptions and showings
required in subpart E are outside the scope of Sec. 41.104(b).
Comment 94: One comment urges that a waiver provision in the rules
is
[[Page 49984]]
contrary to administrative law, citing United States v. Nixon, 418 U.S.
683, 686 (1974).
Answer: The cited page has no bearing on waiver of rules. The case
read as a whole supports the rule. At page 696, the Court explained
that the Attorney General must comply with his own rule precisely
because he had not reserved the power to act otherwise without changing
the rule. In Sec. 41.104(b), the rule specifically authorizes the
Board to change a rule within subpart D. The rule is consistent with
statute as well since a procedural requirement can be changed without
notice and comment rule making. 5 U.S.C. 553.
Comment 95: One comment urges modification of Sec. 41.106(a)(1),
which requires all papers from a party to be the same size absent some
compelling reason for a larger paper size. The comment suggests saying
``different'' rather than ``larger''.
Answer: Larger in this context means larger in any dimension that
prevents reproduction without loss of detail. A smaller exhibit can be
reproduced on standard (A4 or 8\1/2\ x 11'') paper without loss of
detail. Indeed, it may sometimes be advisable to enlarge a small
exhibit to take advantage of the additional space. Many larger exhibits
can be effectively reduced to a standard paper size without loss of
detail. The rule recognizes, however, that many exhibits will not be
readily reduced to a standard paper size. Consequently, the rule
provides parties with the flexibility to use a larger paper size when
it is truly necessary.
Comment 96: Section 41.106(a)(2)(ii) requires papers to be double-
spaced except for headings, signature blocks and certificates of
service. One comment suggests that tables of contents should be added
to the list of exceptions.
Answer: Section 41.106(a)(2)(ii) has been modified to include
tables of contents, tables of authorities, and indices.
Comment 97: A second comment suggests additional formatting
requirements, particularly a page limit or word count along the lines
of Federal Rule of Appellate Procedure 32(a)(7).
Answer: The suggestion is outside the scope of what was proposed,
but may be addressed in a pilot program or in a future rule making. For
instance, in the electronic filing pilot program for interferences,
word counts might be permitted as an incentive to parties to file text-
searchable papers.
Comment 98: One comment opposes the requirement in Sec.
41.106(b)(1)(ii) and (b)(2) for a distinctive cover sheet and two-hole
punched paper, respectively. The comment suggests that the Board
provide these formalities on its own.
Answer: These requirements were introduced to facilitate
interference paper handling within the Board. Experience over the past
five years, since these requirements were introduced, show a vast
improvement over past practice. All of that improvement would be lost
if the comment were adopted. As the supplementary information
explained, these formalities are based on the practices of courts that
regularly review Board decisions.
These requirements do not apply to interferences in the electronic
filing pilot program and would not likely apply in any permanent
electronic filing system. The Office expects to develop an electronic
filing system for contested cases over the next several years. In the
meantime, participation in the pilot program will permit a party to
avoid these two formalities.
Comment 99: One comment opposes the prohibition in Sec.
41.106(b)(3) on incorporation by reference from other papers and on
combined papers.
Answer: Incorporation by reference and combination of papers are
short-sighted remedies for a party. While they may reduce the length of
a paper, they do so at the cost of obscuring the flow of the party's
argument and often result in disjointed presentations lacking
sufficient connecting explanation. Frustrating and confusing the
decision-maker is never a wise strategy. The rule prohibits a practice
that parties would be well-advised to avoid in any case.
Comment 100: One comment urges that a rule is not the appropriate
place for Sec. 41.106(b) formalities because a petition would be
required for relief.
Answer: The formal requirements in Sec. 41.106(b) had previously
been promulgated through the Standing Order. Whether in the Standing
Order or in a rule in subpart D, the remedy would be the same: A
miscellaneous motion (Sec. 41.121(a)(3)) for relief from the
requirement rather than a petition. Note that under Sec. 41.104(a)
waiver of a rule in subpart D can be granted on a motion. The reason
for placing these requirements in the rule is to reflect the fact that
they are presently required for nearly every paper in every case.
Comment 101: One comment seeks clarification of whether the extra
copy required under Sec. 41.106(c) applies to papers filed
electronically.
Answer: Electronic filing is currently a pilot program and is
administered under an additional order that waives the extra copy
requirement. As noted above, electronic filing will likely eliminate
many of the formalities now associated with filing in paper. Once an
electronic filing system for contested cases has been developed, it is
expected that a rule will be proposed to address the separate
requirements for such filings.
Comment 102: Two comments call for Sec. 41.106(d) to address hand
filing expressly. One of the comments requests adoption of the current
practice permitting hand filing at the Board by 10 a.m. the next
business day after the due date. The other comment recommends
addressing hand filing with the Office mail room and overnight delivery
services.
Answer: Section 41.106(d)(2) has been amended to list hand filing
expressly along with electronic filing as a filing mode that the Board
may authorize by order. Hand filing with the Office mail room is not
equivalent to hand filing with the Board since even subtle mistakes in
the way the paper is addressed can result in its being misdirected
within the Office for long periods of time.
As a matter of policy, the Office has accepted the EXPRESS
MAIL[reg] service of the United States Postal Service as equivalent to
hand filing with the Office. A properly addressed EXPRESS MAIL[reg]
filing is also likely to arrive promptly. Use of overnight delivery
services and other forms of hand delivery to the Board will continue to
be treated by order. Although the current practice of hand filing at
the Board is popular, uncertainties regarding security and access to
the new Board facilities in Alexandria, Virginia, counsel against
codifying this practice at this time despite its present success.
Comment 103: One comment suggests clarifying Sec. 41.106(e)(3) to
state that overnight delivery is required as the alternative to EXPRESS
MAIL[reg].
Answer: Other forms of prompt delivery might also be appropriate,
including facsimile service or electronic service (with Board
authorization). The purpose of the rule is to provide parties with some
latitude in meeting the service requirement, while still requiring
promptness. In any case, a party whose mode of service takes much more
than a day may find its options limited by order.
Comment 104: Four comments request clarification of Sec.
41.106(e)(4) about whether the date to be excluded from calculating
response periods is the date of service or the date that service is
received.
Answer: The rule has been amended to ``The date of service'' to be
consistent with Sec. 41.123 and Sec. 41.155.
Comment 105: Section 41.106(f)(3)(i) requires a certificate of
service to name
[[Page 49985]]
each paper served. The comments suggest that the use of ``each'' is
confusing since the paper named is the same paper that incorporates the
certificate of service under Sec. 41.106(f)(1).
Answer: The proposed rule referred to exhibits, which can be served
as a group. To address the concern raised by the comments, Sec.
41.106(f)(3)(i)-(iii) have been reordered to place paragraph (i) last.
Moreover, the paragraph in question has been revised to say ``for
exhibits filed as a group, the name and number of each exhibit
served.''
Comment 106: One comment suggests that Sec. 41.108, which
addresses identification of counsel, include a reference to registered
patent agents who are not attorneys.
Answer: Section 41.108 uses ``counsel'' to be consistent with Sec.
41.5. Both rules are intended to include, not exclude, registered
patent practitioners and any person recognized to act pro hac vice.
Comment 107: Section 41.109(a) does not retain the practice of
Sec. 1.612(a) (2003) of withholding access to Sec. 1.131 and Sec.
1.608 (2003) (now Sec. 41.202(d)) declarations in involved
applications. Three comments request that the practice be restored. Two
of the comments suggest that the practice be restored for all
unpublished applications, or equivalently that pre-29 November 2000
applications be grandfathered out of the rule. One comment suggests
that the practice be restored for Sec. 41.202(d) showings because,
unlike Sec. 1.131 declarations, they relate directly to the junior
party's priority case without otherwise reflecting on patentability and
thus, according to the comment, only serve to expose the junior party's
priority case.
Answer: Part of the original intent of the rule change was to
balance the playing field between applicants and patentees since any
Sec. 1.131 or Sec. 1.608 (2003) declaration in a patent would be
publicly available. In many cases, the junior party is a patentee so no
showing will have been filed or it will already be publicly available.
Moreover, while the declarations were removed under Sec. 1.612(a)
(2003), other papers that discussed the declarations were not, so the
protection offered under the rule was not very extensive.
The difference suggested in one comment between declarations under
Sec. 1.131 and Sec. 1.608 (2003) is not so great since in both cases
the Office will have relied on the declaration to reach the conclusion
that all patentability issues in the application other than priority
have been resolved. The showing under Sec. 41.202(d) does not require
the applicant to put on its entire priority case. It only need put on
enough of a case to show priority assuming the opposing party puts on
no case at all. Often this will be much less than the applicant could
or ultimately will prove. For instance, if the applicant has a filing
date of August 15, while the patentee's application was filed on August
7 with an inventor's declaration dated August 5, then a proof of
conception before August 5 and diligence from at least August 4 will
generally suffice.
In any case, starting later this year, these papers will be
available over the internet in published applications with an image
file wrapper. Soon it will not make sense to try to withhold a Sec.
1.131 declaration or a Sec. 41.202(d) showing in most cases because it
will have already been publicly available.
There may be some instances when the paper has not been made public
and an applicant could show undue prejudice if the paper were made
available to its opponent. Such cases are best left to case-by-case
development. An applicant may promptly move (Sec. 41.121(a)(3)) as
soon as the interference is declared to have its Sec. 41.202 showing
withheld. If the Board grants a motion to withhold a Sec. 41.202(d)
showing, it will advise the Office of Public Records, which may then
remove the showing from the file after it has been printed.
Comment 108: One comment suggests that Sec. 41.109(a) permit the
requesting of certified copies. According to the comment, the Office of
Public Records currently fills requests for certified copies in
interferences by sending uncertified copies, which the comment asserts
are more likely to have missing pages.
Answer: Nothing in Sec. 41.109(a) prevents a party from requesting
a certified copy. The rest of the comment is directed to operation of
the Office of Public Records, a matter outside the scope of this rule
making, and would not be solved by changing the rule as requested.
Instead, the comment has been referred to the Office of Public Records.
The image file wrapper, which is now the official record of the
application within the Office, should be much less prone to copying
mistakes. Consequently, if pages appear to be missing, the absence of
those pages accurately reflects the official contents of the file.
Comment 109: Section 41.110(a) requires each party to file a clean
copy of its involved claims. One comment suggests that the requirement
include uninvolved claims in the involved application or patent in case
a party subsequently moves to add, or designate as corresponding to a
count, one or more uninvolved claims.
Answer: The present rule strikes a balance between having a clear
statement of the claims and imposing costs on parties by making a party
responsible for its own involved claims. A clean copy of any claim to
be added should be included with any motion to add the claim, Sec.
41.110(c). Imposing the additional cost of providing clean copies for
uninvolved claims against the possibility that one might be added would
typically be an unnecessary added expense. Nothing in the rule bars a
party from filing a clean copy of uninvolved claims as well if doing so
would be easier for the party filing the clean copy.
Comment 110: One comment urges that annotated claims should not be
required until preliminary motions, oppositions, and replies have been
filed. A second comment suggests that annotated claims not be required
until after preliminary motions have been decided. Four comments
express concern about the potential estoppel effect of filing annotated
claims.
Answer: Notice is a core function of a patent claim. In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997). An
applicant has wide latitude to claim its invention as it sees fit, but
the vital notice function of claims imposes a corresponding duty to
claim clearly and distinctly. Id., 127 F.3d at 1056, 44 USPQ2d at 1029.
An attempt to avoid prosecution estoppel is never a valid reason for an
applicant to evade a clear indication of what its claim means. Id., 127
F.3d at 1056, 44 USPQ2d at 1030. The suggestion that a party should not
be accountable for the meaning of its claims is utterly inconsistent
with the purpose and sound functioning of the patent system.
Claim annotation is vital to the efficient administration of
contested cases because it provides the Board and opposing parties with
a starting point for understanding how the party intends its claim to
be read. It also serves as a stimulus for the parties to take a close
look at their claims to see if there are latent problems that need to
be addressed before motions are filed.
The Board expects the claim annotation to be complete and accurate.
As a practical matter, the Board has permitted parties to point out
additional support consistent with their claim annotation. In the event
that a party makes a mistake, it can seek correction through a
miscellaneous motion (Sec. 41.121(a)(3)). Parties moving to correct,
and parties opposing such
[[Page 49986]]
motions, should note that prejudice to the opposing party will be an
important element in deciding whether to grant relief.
Comment 111: One comment opposes what it contends is a requirement
to submit annotated claims more than once.
Answer: The rule does not require more than one annotation for each
claim. No additional annotations are required unless a claim is added
or amended (Sec. 41.110(c)(3)). If a claim is added or amended, it is
a new claim and requires annotation. Note that the requirement could be
waived at a conference call discussing the motion; for instance, a
minor grammatical amendment to a claim that has otherwise been properly
annotated might not require a new annotation.
Comment 112: Three comments suggest that the phrase ``add a reissue
claim'' in Sec. 41.110(c) is either a mistake or too narrow.
Answer: Section 41.110(c) is amended to delete the word reissue.
The intent of the rule is to require a clean copy, a claim chart
showing written description, and an annotated copy (when applicable) of
any added claim, including added claims in a reissue application.
Comment 113: One comment urges that the requirements of Sec.
41.120(a), regarding the notice of bases for relief, is too vague,
particularly given the consequences that attend such notices in Sec.
41.120(b) and (c). The comment suggests that the current motions list
practice be adopted instead.
Answer: Section 41.120 authorizes the Board to require a notice
outlining how a party intends to litigate a contested case. Since the
type of notice will vary with the type of case, greater detail in the
rule is not possible. Moreover, the notice is not automatically
required except in the case of a priority statement under 41.204(a).
Hence, when the Board requires such notice, it will also specify what
must be shown.
Comment 114: One comment opposes Sec. 41.120(b), which requires a
party filing a notice of basis for relief to file only motions
consistent with the notice. The comment considers the rule to be a trap
for the unwary and particularly objects to the word ``ambiguities'',
which may be construed against a party.
Answer: Under existing practice for preliminary statements, which
are the closest present analog of the notices under Sec. 41.120, a
party would be strictly held to its alleged dates with ``[d]oubts as to
definiteness or sufficiency of any allegation * * * resolved against
the party filing the statement'', Sec. 1.629(a) (2003). Similarly,
Sec. 1.629(e) (2003) noted that a preliminary statement was not
evidence for a party, but left open the possibility that a party would
be estopped from denying an allegation in its preliminary statement.
Preliminary statements have been routinely used as admissions, for
instance in the context of an order to show cause under Sec.
1.640(d)(3) (2003). A comparable practice has existed with regard to
Sec. 1.608 (2003) declarations and summary judgment under Sec. 1.617
(2003).
Section 41.120(b) does not change the requirements for finding an
admission, but simply places a party on notice that its statements
could be used as an admission.
Comment 115: One comment cites cases for the proposition that the
standard for finding an admission is high. Harner v. Barron, 215 USPQ
743 (Comm'r Pats. 1981); Flehmig v. Giesa, 13 USPQ2d 1052 (BPAI 1989);
Suh v. Hoefle, 23 USPQ2d 1321 (BPAI 1991); Issidorides v. Ley, 4 USPQ2d
1854 (BPAI 1985); Ex parte McGaughey, 6 USPQ2d 1334 (BPAI 1988). The
comment does not, however, point to the parts of the cases that the
comment considers to be inconsistent with the rule.
Answer: The cases provide examples where Board panels, or in one
case a Commissioner reviewing the action of a Board employee, found a
lack of an admission of the facts of the particular case. None creates
a bar against finding admissions. The only effect that Sec. 41.120(b)
might have on these precedents is that, by placing the party explicitly
on notice that its statements might be treated as an admission, it
might make the showing of an admission somewhat easier.
Comment 116: One comment urges that the standard for correcting a
notice of basis for relief in Sec. 41.120(c) is like the standard for
correcting a preliminary statement, and thus too strict for correcting
motions lists.
Answer: Under Sec. 41.204(a), the priority statement is a kind of
notice of basis for relief, so the preliminary statement correction
practice is appropriate in such cases. In other cases where the Board
has required such notice and specified what must be shown, the strict
interests-of-justice standard is also appropriate because the party has
actual notice that it will be strictly bound. The rule does not prevent
the Board from requiring other notices that are easier to correct.
Comment 117: One comment opposes Sec. 41.121(a) because it views
simultaneous filing of preliminary motions and priority motions as
onerous and as unfair to the target of a provoked interference. A
second comment applauds the removal of the prohibition on simultaneous
filing of preliminary and priority motions.
Answer: The rule does not require a change in current practice and
ordinarily will not result in simultaneous filing of such motions. The
Board will continue to set the times for filing motions (Sec.
41.123(a)), including setting different times for different motions.
Preliminary motions--those affecting threshold issues, count scope,
and benefit--will generally precede any priority motion since a
decision on such motions will affect the scope and complexity of any
priority case that must be presented. The main effect of the rule is to
have the priority case presented as a motion whenever it is filed. The
Board will have the authority to advance consideration of priority
issues in an appropriate case, but such cases are expected to be
exceptional.
Comment 118: One comment views Sec. 41.121(a)(1) as unduly
circumscribing the Board's authority under 35 U.S.C. 135(a) to reach
patentability questions in an interference. The comment suggests that a
``when justice requires'' test for reaching extrinsic patentability
issues would be desirable.
Answer: The rule does not limit the Board's authority to address
patentability questions as long as they relate to a change in the scope
of the interference or to a change in the accorded benefit, or are
otherwise likely to lead to judgment in the case. It does not seem
likely that justice would require the Board to address a patentability
issue that cannot otherwise be plausibly related to the issues in the
contested case. If a patentability issue arises that cannot be reached
under Sec. 41.121, but should be reached in the interest of justice
and is otherwise within the scope of the Board's authority, a party
could seek relief under Sec. 41.104 by filing a miscellaneous motion
(Sec. 41.121(a)(3)).
Comment 119: One comment suggests that Sec. 41.121(a)(2) be
amended to remove the authority to cancel a claim. The comment suggests
that Sec. 41.121(a)(2) is unfair because a patentee cannot cancel a
claim. The comment indicates that the option of canceling a claim might
be misunderstood by a party as being without cost.
Answer: A patentee can disclaim a claim under 35 U.S.C. 253.
Authorization to cancel a claim does not mean that no consequence
would attach to the cancellation. For instance, cancellation of all
involved claims would result in judgment against the
[[Page 49987]]
canceling party (Sec. 41.127(b)(2)). Cancellation of a claim in
response to a motion attacking the claim would be a concession of the
issue with respect to that claim and would create an estoppel (Sec.
41.127(a)), just as amending a claim can create an estoppel. Section
41.121(a)(2) is amended to remove claim cancelling as an express option
to avoid its being requested too casually, although cancellation and
disclaiming remain options under the ``otherwise cure a defect''
provision of Sec. 41.121(a)(2).
Comment 120: Three comments suggest that a preponderance of the
evidence standard be added to Sec. 41.121(b).
Answer: Not all issues arising by motion are subject to a
preponderance of the evidence standard. For instance, a junior party
that filed its application after a patent issued to the senior party
would have to prove priority under the clear and convincing evidence
standard (Sec. 41.207(a)(2)). The default evidentiary standard in
civil proceedings is the preponderance of the evidence standard. Price
v. Symsek, 988 F.2d 1187, 1193, 26 USPQ2d 1031, 1035 (Fed. Cir. 1993).
Codifying the default standard, would require the rules to list every
exception. Consequently, the suggestion is more likely to cause
confusion than to resolve it.
Comment 121: One comment notes the elimination from Sec. 41.121(c)
of precise directions for specific kinds of motions like those found in
Sec. 1.637 (2003). The comment expresses the hope that the
requirements of Sec. 1.637 (2003) not linger as an unwritten
requirement.
Answer: Section 41.121(c) contains general requirements for the
contents of motions. Some Sec. 1.637-like requirements were proposed
in Sec. 41.208, but most have not been adopted in this final rule.
Section 1.637 (2003) attempted to provide movants with enough
detail to avoid summary dismissal or denial. In practice, however, the
rule often proved to be either over-inclusive, adding unnecessary cost,
or under-inclusive, leading to dismissal or denial anyway. See Hillman,
55 USPQ2d at 1221 (denying motion despite compliance with Sec. 1.637
(2003) for failure to carry its burden of proof). Ultimately, a movant
must prove its case substantively whether a rule like Sec. 1.637
(2003) exists or not. The Board may develop practice notes as its
experience with the new rules increases, in which case parties would be
given notice of the practice notes.
Comment 122: One comment suggests that Sec. 41.121(c)(1)(ii)
require that each material fact be stated in a single sentence.
Answer: Material facts should be stated in a manner that permits
the opposing party to admit or deny the fact readily. Multi-sentence
facts place a burden on the opposing party to parse the stated fact for
portions that can be admitted or denied. The result is a complex tangle
that does not facilitate decision-making. Even long, compound sentences
are abusive. Section 41.121(c)(1)(ii) has been amended to require a
statement of facts.
Section 41.121(d) has been renumbered as Sec. 41.121(f) and a new
Sec. 41.121(d) has been inserted to address the form and content of
the statement of material facts. A single-sentence requirement for
material facts is added at Sec. 41.121(d)(1).
Comment 123: One comment suggests an amendment to Sec.
41.121(c)(1)(iii) to limit what it sees as the open-ended obligation of
a party adding a claim in a contested case to address every rejection
that could conceivably be made based on the prosecution history.
Answer: No such unlimited obligation exists. Generally, the
obligation to ``prove patentability'' has been limited to showing
compliance with the written description requirement of 35 U.S.C. 112(1)
except where the party reasonably has actual notice that other
patentability problems exist. Typically, such notice is provided by a
prior rejection in the prosecution history of the involved application
or patent or by a substantive motion by the opposing party.
If an opponent believes the movant has not met this burden, it
should raise and explain the issue in its opposition. The Board views
with disfavor oppositions that merely point out the problem and then do
not explain it, hoping to enlist the Board's help in making the
rejection. Finally, if a party believes that it did not have adequate
notice of the problem, it should explain the lack of notice in its
reply and then address the problem on the merits. In any case, it would
be difficult to craft a rule that would cover all or even most of the
possibilities that will arise.
Comment 124: Another comment suggests that the requirement in Sec.
41.121(c)(1)(iii) for ``a detailed explanation of the significance of
the evidence'' be met by citation to the specific numbered material
fact or by citation to the specific portion of an exhibit.
Answer: The rule permits a party to cite to a particular material
fact or portion of an exhibit, but mere citation to a fact is not an
explanation of the fact. One purpose of an argument is to provide
context and meaning to the relevant facts. A party that simply cites to
facts without explaining them is effectively recruiting the opposing
party and the Board to make out its case. The burden for explaining
what the evidence means and how it justifies the relief sought in the
paper remains with the party filing the paper.
Comment 125: Section 41.121(c)(2) requires compliance with any rule
in 37 CFR part 1 that would ordinarily govern the relief sought if it
were sought outside the context of a contested case within the Board's
jurisdiction. One comment suggests requiring that a party moving to add
a reissue claim also file a reissue declaration or supplemental reissue
declaration addressing the claim.
Answer: One problem with the suggestion is that the movant might
not be the reissue applicant. Rules cannot address every possible
contingency. A party that believes it is harmed by the opponent's
inadequate reissue declaration can address the problem in its
opposition or can move for relief in a miscellaneous motion (Sec.
41.121(a)(3)) prior to filing its opposition.
Comment 126: Section 41.121(c)(4) provides that any material fact
not denied will be considered admitted. One comment suggests that a
fact only be considered admitted if it is not denied and it is ``placed
in issue by the parties or the Board''.
Answer: The first comment is not adopted because the mere inclusion
of the stated fact in a paper places the fact in issue. Any other
approach would lead to fruitless argument about whether a fact was
placed in issue or not. If the comment is hinting that a party might
use a statement of material fact to obtain an admission on an
extraneous fact for ulterior purposes, the Board would like to be
informed of such abuses as they occur.
Comment 127: One comment expresses concern about Sec. 41.121(c)(4)
because a party not otherwise obliged to respond to a statement of
material fact (for instance, because it does not oppose the relief
sought), might nevertheless feel obliged to file a paper in order to
deny a stated fact it believes is wrong. The comment suggests that a
party be permitted to respond ``not admitted'' to a fact that is not
supported by the exhibits.
Answer: The comment is not adopted because a denial standing by
itself can be helpful to the Board. The burden on a party to deny
stated facts it believes are wrong is not very great. Moreover, a ``not
admitted'' response is not helpful. If the party agrees with the fact
despite the inadequacy of the exhibits,
[[Page 49988]]
then the proper course is to admit the fact or remain silent and let it
be deemed admitted; otherwise, the party should deny the fact, if only
to direct the Board's attention to the issue. Perhaps best of all, the
party could alert the opposing party to the defect so that any flaw in
the statement could be corrected before any response is due.
Comment 128: A new Sec. 41.121(e) has been inserted to relocate
the claim chart requirement of proposed Sec. 41.208(d) into subpart D.
Two comments address proposed Sec. 41.208(d). One comment requests
greater guidance on the form and content of the claim charts and on
whether they count against any page limit. The other comment opposes
the requirement as costly and of questionable use.
Answer: Claim charts permit a party to explain clearly and
succinctly what it thinks a claim means in comparison to something
else, such as another claim, a reference, or a specification. No form
is specified in the rule because each party has an incentive to produce
a clear claim chart that illustrates its point. The question about page
limits is moot since the rules set no page limits.
Comment 129: Section 41.122 has been retitled ``Oppositions and
replies'' and the content requirements of Sec. 41.121(c)(4) have been
moved to a new Sec. 41.122(a). Proposed Sec. 41.122 is now Sec.
41.122(b). As proposed, Sec. 41.122 addressed new arguments in
oppositions and replies. One comment objects to the second and third
sentences of Sec. 41.122 regarding new arguments in oppositions and
replies. The comment expresses concern that the second sentence limits
the scope of opposition argument, but the comment does not give an
example of its concern.
Answer: The second sentence of what is now Sec. 41.122(b) was
confusing and not necessary. It has been deleted.
Comment 130: One comment expresses concern that the third sentence
of what is now Sec. 41.122(b), which addresses replies, actually
permits new arguments in the reply because a movant could use the reply
to cure defects in the motion first noted in the opposition. The
comment prefers the wording in Sec. 1.638(b) (2003).
Answer: Section 1.638(b) (2003) is susceptible to the same
misreading the comment proposes for Sec. 41.122(b). Under either rule,
an argument first made in a reply would not be attributed to the
motion, and thus would not cure the deficiency of the motion.
Comment 131: One comment proposes that replies should not be
automatic, but rather should require separate Board authorization or
other additional regulation to prevent abuse.
Answer: As a broad proposition, the Board has considerable
authority in setting times and determining the course of the proceeding
and thus authority to file an opposition or reply should be viewed as a
default rather than a right. Indeed, Sec. 41.123(b)(2) makes clear
that oppositions are not automatic for miscellaneous motions. It is
fairly common for a party to be advised that no opposition or reply
will be authorized in cases where such filings would be moot.
Nevertheless, the filing of oppositions and replies is the default
practice in contested cases before the Board. The rule has been written
to reflect the default practice.
Comment 132: One comment objects to the default times in Sec.
41.123(a) for filing oppositions and responsive motions. The comment
expresses concern that the default times are too short and may
otherwise not be appropriate in many cases.
Answer: The default times are set as defaults in the event that no
times are set by order. See Sec. 41.104(c). The expectation is that
the Board official assigned to administer a case will tailor times
appropriate to each case. As in the current practice, responsive
motions will typically be filed before any oppositions are required.
Comment 133: Three comments oppose Sec. 41.123(b)(2), regarding
default times for oppositions and replies for miscellaneous motions,
which all three agree are too short and are unnecessary.
Answer: The default times in Sec. 41.123(b)(2) are the same as the
default times in Standing Order ] 13.10.2. In practice, there has not
been a problem because most miscellaneous motions are unopposed or are
resolved in a telephone conference. An opposed motion must be
authorized, Sec. 41.123(b)(1)(ii), in which case the parties can
suggest that different times for the opposition and reply be set in the
order authorizing the motion.
Comment 134: One comment suggests that a rule analogous to Sec.
1.639 (2003) be added to require exhibits be filed and served with the
paper relying on the exhibit.
Answer: A new Sec. 41.123(c) has been added to provide as a
default that an exhibit must be filed and served with the first paper
citing the exhibit. An exhibit that has already been filed should not
be filed again (Sec. 41.7(b)) and one that has been served need not be
served again. The current practice is to defer the filing of most
exhibits until a time shortly before the motions will be decided.
Comment 135: Two comments suggest that Sec. 41.124(c) is unclear
regarding whether a party has twenty minutes of argument time for each
issue or for all issues. The comments also suggest a mechanism for
requesting additional time.
Answer: The default total time for oral argument for each party is
twenty minutes regardless of the number of issues for which the
argument has been granted. The Board may, however, authorize a
different amount of time (Sec. 41.104(c)). As a practical matter, if
questioning from the bench is active, then more time is accorded at the
discretion of the presiding administrative patent judge. A party that
knows in advance that it will need more time can seek more time by
filing a miscellaneous motion (Sec. 41.121(a)(3)).
Comment 136: Two comments recommend that Sec. 41.124(e) be amended
to state that an oral argument transcript filed with the Board becomes
part of the record.
Answer: Any paper that is properly filed becomes part of the
record. Cf. Sec. 41.7(a) providing for expungement from the record of
improperly filed papers.
Comment 137: Two comments address Sec. 41.125(a) regarding the
order in which the Board addresses motions. One comment requests an
opportunity for the parties to opine on the best order for
consideration or to explain why deferral would make sense (or not).
Answer: At present, there are several mechanisms for expressing
such opinions. Parties routinely mark papers as contingent on another
motion, which implies an order for consideration. Moreover, the
conferences for setting times often result in a discussion of whether
the order for consideration of issues should be specified. For
instance, threshold issues are often advanced to the point where
briefing on threshold issues is completed before other motions are even
filed. By contrast, antedating proofs related to patentability attacks
under 35 U.S.C. 102(a) or (e), inventorship issues, and
unenforceability issues are often deferred until the priority phase.
Nothing in the rule bars or should even be viewed as discouraging
parties from letting the Board know of a party's opinion on the order
in which issues should be considered, provided that the parties keep in
mind that the order is ultimately discretionary with the Board.
Comment 138: One comment suggests explicitly requiring the order to
be ``reasonable''.
Answer: In this context, ``reasonable'' simply means no abuse of
discretion. All Board discretionary actions are either reasonable or
are subject to attack for abuse of discretion. Consequently, the
amendment is superfluous.
[[Page 49989]]
Comment 139: One party suggests modifying Sec. 41.125(c)(3)(ii)
regarding the requirement that a rehearing request point specifically
to ``the place where the matter was previously addressed in a motion,
opposition, or reply''. According to the comment, the rule does not
address instances where the Board reaches an issue sua sponte.
Answer: If a party believes that the Board improperly reached an
issue sua sponte, then pointing out that the issue was not previously
addressed in a motion, opposition, or reply would comply with Sec.
41.125(c)(3)(ii). The party would still need to identify what the Board
misapprehended or overlooked in reaching its decision (Sec.
41.125(c)(3)(i)).
Comment 140: One comment seeks clarification on whether the
estoppel in Sec. 41.127(a) applies to a party that ``prevails'' on
priority, but is held to have unpatentable claims.
Answer: A party that loses on patentability for an involved claim
will receive an adverse judgment (that is, lose) on patentability for
that claim and consequently will be estopped with regard to the
patentability of the subject matter of that claim. Note that since
priority is effectively a question of unpatentability under 35 U.S.C.
102(g)(1), one never prevails on priority in any absolute sense: one
can only lose on the issue of priority. In re Kyrides, 159 F.2d 1019,
1022, 73 USPQ 61, 63 (CCPA 1947).
Comment 141: Two comments note that abandonment or disclaimer of
the invention of the count, both grounds for adverse judgment under
Sec. 1.662 (2003), are omitted from Sec. 41.127(b). One comment seeks
clarification of the practical effect of the omission. The other
comment suggests that the abandonment ground be restored.
Answer: The abandonment and disclaimer of the invention grounds
were omitted as redundant with other grounds listed in Sec. 41.127(b).
Hence, their omission should have no practical effect beyond making the
rule shorter.
Comment 142: One comment makes two suggestions regarding requests
for reconsideration under Sec. 41.127(d). The first parallels the
comment on sua sponte Board action under Sec. 41.125(c)(3)(ii).
Answer: As with Sec. 41.125(c)(3)(ii), if the problem asserted is
that the Board reached an issue that was not raised, then pointing out
that it was not raised complies with Sec. 41.127(d).
Comment 143: The second suggestion is that the tolling of the time
for seeking judicial review be automatic rather than discretionary with
the Board.
Answer: The last sentence regarding tolling has been removed
because it is unnecessary under current case law. A timely request for
reconsideration automatically tolls the time for seeking judicial
review. In re Graves, 69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed.
Cir. 1995). Since the decision on rehearing on the judgment is itself a
final decision from which judicial review may be sought, 35 U.S.C. 141,
the decision on rehearing effectively resets the time for seeking
judicial review.
Comment 144: One comment recommends that proposed Sec. 41.128
regarding termination be restated to hold interferences to be merely
suspended during the period of any judicial review. The comment opposes
the rule as written because it places settlements during subsequent
judicial review outside the purview of 35 U.S.C. 135(c). The comment is
concerned that the rule creates a trap for parties settling during
judicial review if a court subsequently disagrees with the Office's
construction of 35 U.S.C. 135(c) and recommends that current Rule 661
be retained.
Answer: The Office has decided that, since termination has a
meaning in 37 CFR part 1, subparts D and H, and in Sec. 1.197, that
differs from the meaning proposed in Sec. Sec. 41.56, 41.83, and
41.128, confusion may result. Consequently, proposed Sec. Sec. 41.56,
41.83, and 41.128 are deleted and Sec. 41.129 is renumbered as Sec.
41.128. Further, the text of former Rule 661 has been modified and
incorporated into Sec. 41.205(a) to define termination of an
interference proceeding for purposes of 35 U.S.C. 135(c). Rule
41(d)(2), Fed. R. App. Procedure, controls when the mandate of the
Court of Appeals will issue in the event that a party filed a petition
for writ of certiorari to the United States Supreme Court. Unless a
party petitioning for a writ of certiorari seeks and obtains a stay of
the appellate court's mandate, proceedings will be considered
terminated with the issuance of the mandate, as noted in Rule 197(b)(2)
and 41.205(a).
Comment 145: One comment, while applauding the intent of now
renumbered Sec. 41.128(a) regarding sanctions, expresses concern that
the word ``misleading'' in paragraph (a)(2) is too subjective and that
the provision regarding dilatory tactics in paragraph (a)(3) is
redundant with the other provisions of Sec. 41.128(a).
Answer: While the word ``misleading'' calls for the exercise of
judgment, it is no more subjective than ``frivolous'', which also
occurs in paragraph (a)(2). Moreover, the sanction for misleading
arguments addresses a problem distinct from frivolous arguments. The
history of the use of sanctions at the Board suggests that parties are
appropriately restrained in requesting sanctions and that the Board is
similarly restrained in applying them. Note that a frivolous charge
that an opponent's argument is misleading would be sanctionable.
Consequently, the inclusion of misleading arguments as a basis for
sanctions is both necessary and unlikely to result in significant
abuse.
The provision in paragraph (a)(3) for sanctioning dilatory tactics
is not necessarily redundant. For instance, if a party requests and is
granted a delay in good faith, but subsequently abuses the delay, there
might not be a violation of paragraphs (a)(1) or (a)(2). In any case,
the inclusion of a sanction for dilatory tactics emphasizes the Board's
commitment to avoiding undue delays in light of the availability of
patent term adjustments under 35 U.S.C. 154(b)(1)(C)(i).
Comment 146: One comment recommends that Sec. 41.150(b)(1)(i) be
modified to add patent applications incorporated by reference into an
involved patent or application to the list of materials that must be
automatically served upon request.
Answer: The comment is adopted.
Comment 147: One comment suggests that Sec. 41.150(c) regarding
additional discovery expressly state that the ``interests of justice''
must include (1) a showing that the evidence requested in discovery is
not available to the movant and (2) a showing as to why the evidence
requested in discovery is necessary to establish a prima facie basis
for relief, so as to preclude discovery fishing expeditions.
Answer: As in the current practice, requests for additional
discovery under Sec. 41.150(c) must be authorized (usually in the form
of a miscellaneous motion under Sec. 41.121(a)(3)), which has long
offered sufficient protection against fishing expeditions.
Section 41.150(c) has been divided into two parts, with the
addition of a paragraph (2) to restore the production of documents and
things currently available under Sec. 1.687(b) (2003).
Section 41.152 addresses when and how the Federal Rules of Evidence
are applied. Section 41.156(c), regarding the determination of foreign
law, has been relocated to Sec. 41.152(d) because it can be an
exception to the use of the Federal Rules of Evidence. Moreover, it is
relevant to Sec. 41.157 as well as Sec. 41.156.
Comment 148: Four comments oppose the requirement in Sec.
41.155(b)(1) for objections to be filed within five business days of
service of evidence.
Answer: The time period is a default and can be extended on request
(Sec. Sec. 41.104(c) and 41.121(a)(3)). The five-
[[Page 49990]]
day period has been part of the Standing Order (] 14.1.1) for five
years. In that time, very few problems have arisen with the
requirement.
Comment 149: One comment requested that the provision in Standing
Order ] 14.1.2 that an objection not made on the record is deemed
waived be included in Sec. 41.155(b)(1).
Answer: The requirement is preserved in Sec. 41.155(c), which
requires a party filing a motion to exclude to point to where the
objection was made in the record. An objection first raised in a motion
to exclude would be untimely (Sec. 41.4(b)).
Comment 150: One comment requests that Sec. 41.155(b)(2),
regarding the filing of supplemental evidence, be amended to clarify
that additional supplementation is not permitted in response to an
objection to the supplemental evidence.
Answer: The rules do not authorize a second objection. The party
objecting should timely make all objections to the first evidence. The
supplemental evidence will either cure the objections or it will fail
to do so. If the party objecting believes the supplemental evidence
does not cure the objection, then rather than file a second objection
it should pursue its initial objection with a motion to exclude,
explaining how the supplemental evidence failed to cure the defect.
Comment 151: One comment requested clarification of the
relationship between Sec. 41.156, which deals with compelled testimony
and production, and Sec. 41.150, which deals with discovery generally.
Answer: Since compelled testimony involves the issuance of a
subpoena under 35 U.S.C. 24, it involves different considerations than
other discovery and testimony.
Comment 152: One comment suggests that Sec. 41.157(b)(2)(ii),
regarding testimony outside the United States, permit parties to
stipulate to the taking of such testimony.
Answer: The agreement of the parties to take testimony in a foreign
country is only one of many factors that influence whether such
testimony might be authorized.
Comment 153: One comment states that some practitioners abuse the
opportunity to note errata in testimony. The comment suggests modifying
Sec. 41.157 to require that any correction must accurately reflect the
questions posed and the answers provided.
Answer: Modifying the rule will not make it so. If a correction
materially alters testimony, it may be a falsification of the testimony
and may expose the party or the counsel to sanctions. A party who
believes that an opponent's correction substantively changes the
testimony should promptly bring the matter to the attention of the
Board.
Part 41, Subpart E--Patent Interferences
Comment 154: Section 41.200(b) provides a rule of construction for
claims in interferences. One comment suggests a rule for interpreting
counts in light of the involved specifications.
Answer: The count defines the interfering subject matter, which in
turn depends on what the parties are claiming. Consequently, as with
claims, the primary meaning of the count must be based on the plain
language of the count, but the corresponding claims can set bounds on
what the count reasonably means, particularly when the count is defined
in terms of a party's claim. Since Sec. 41.200(b) provides for
reference to the specification in interpreting claims, by extension the
involved specifications can influence the broadest reasonable
construction of the count via the claim defining the count.
Comment 155: One comment suggests that definitions in Sec. 41.201
be numbered as subsections.
Answer: As noted with regard to Sec. 41.2, the Office of the
Federal Register discourages numbering definitions.
Comment 156: Section 41.201 defines ``accorded benefit''. One
comment inquires whether the definition of ``accorded benefit'' is
intended to cover applications filed in foreign countries, particularly
prior to the critical dates for the North American Free Trade Agreement
and the Uruguay Round Agreement Amendments. As the comment notes, the
definition is based on 35 U.S.C. 102(g).
Answer: The definition is limited to what would constitute a
constructive reduction to practice under 35 U.S.C. 102(g)(1), taking
into account other relevant statutes like 35 U.S.C. 104, as well as
relevant case law. The point of the revised rule is to focus on
priority proofs rather than the less relevant right to benefit under 35
U.S.C. 120 and related statutes.
Comment 157: Section 41.201 also defines ``constructive reduction
to practice''. Five comments address this definition. They broke into
three overlapping groups. One group expresses concern that the phrase
``constructive reduction to practice'' has come to have other meanings,
which could lead to confusion.
Answer: The problem the first group identifies pervades patent law,
where concepts are tightly, but not always smoothly, integrated. The
new rules shifted away from discussing constructive reduction to
practice in terms of ``benefit'' because that term was causing
confusion. The term ``benefit'' occurs much more commonly in the 35
U.S.C. 120 sense than in the interference sense. Unfortunately, all of
the other candidates for succinctly expressing the key idea, like
``anticipation'', are also freighted with considerable non-interference
implications. While ``reduction to practice'' is occasionally used in
other contexts, its primary use has been associated with priority
proofs. Hence the phrase ``constructive reduction to practice'' is the
best choice, but the definition has been revised to tie it more closely
with the idea of anticipation under 35 U.S.C. 102(g)(1). This change
represents a clarification of, rather than a change to, the current
practice.
Comment 158: A second group expresses concern that the scope of the
rule could be read too narrowly, for instance, to exclude an express
disclosure and enablement of a genus without any disclosure of a
particular species within the genus when the subject matter of the
count is generic.
Answer: This concern should also be resolved by refocusing the rule
on anticipation. As with other forms of anticipation directed to
claims, a constructive reduction to practice can be satisfied with a
disclosure and enablement of the full scope of the count or with
disclosure and enablement of a something within the scope of the count.
Comment 159: The final group suggests clarification of whether co-
pendency in a chain of applications is required or that a requirement
of co-pendency be included in the definition.
Answer: The requirement of co-pendency appears to be implicit in
the law both by the exception for abandoned, suppressed, and concealed
subject matter, and by the analogy to In re Costello, 717 F.2d 1346,
1350, 219 USPQ 389, 391 (Fed. Cir. 1983) (a 35 U.S.C. 102(e) case). The
definition provided for ``earliest constructive reduction to practice''
makes clear that continuity is required. To clarify this point, the
definition of ``earliest constructive reduction to practice'' has been
relocated into, and amended to be consistent with, the revised
definition of ``constructive reduction to practice''.
Comment 160: One comment suggests that the use of the phrase
``patentably distinct'' in the definition of ``count'' under Sec.
41.201 could be confusing. The comment proposes a definition based on
the test for interfering subject matter in Sec. 41.203(a).
Answer: Two counts must be patentably distinct; if not, they define
[[Page 49991]]
the same invention and can only support a single count. The phrase
patentably distinct comes from the case law dealing with separate
counts in an interference. Hester v. Allgeier, 687 F.2d 464, 466, 215
USPQ 481, 482 (CCPA 1981). The phrase has an established meaning as a
difference between subject matter that would have been neither
anticipated nor obvious. Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ
486, 490 (CCPA 1977). Patentable distinctness is a one-way test. It is
sufficient if the subject matter of either count, treated as prior art,
would not have anticipated or rendered obvious the subject matter of
the other count. Two-way distinctness would also justify two counts,
but is not required: it is more than what is required.
Comment 161: The comment further requests clarification on what
date would apply for determining whether an additional reference was
available to show obviousness.
Answer: Such a determination is outside the scope of this rule
making and is better left to development through adjudication. Note
that since a count controls what proofs are admissible, it will often
be advisable to permit a second count at least until the facts
surrounding priority are in the record.
Comment 162: One comment addresses the definition of ``threshold
issue'' under Sec. 41.201. It criticizes the narrowed application of
35 U.S.C. 135(b) as a threshold issue.
Answer: The 35 U.S.C. 135(b) bar and written description issues
were defined as threshold issues to address perceived abuses of
interference practice and, given their standing-like ability to end an
interference quickly, have been defined narrowly for the purpose of
threshold issues, without any intent to narrow them for the purposes of
proving unpatentability generally.
In the case of a provoked interference, the 35 U.S.C. 135(b) bar
and written description serve complementary functions. The 35 U.S.C.
135(b) bar is intended to provide a patentee (or published applicant)
repose from any attack more than one year after issuance or publication
of the interfering claim. In short, it bars a claim that an applicant
might otherwise be entitled to receive had it been entered earlier.
The use of the 35 U.S.C. 135(b) bar as a threshold issue is limited
to patents or applications of the movant because the entitlement to
repose is personal to the patentee or published applicant. There is no
third-party entitlement to repose, particularly since the movant
asserting the bar may also believe it is also entitled to an
interference with the third-party patent or published application that
triggers the bar. Nothing in the definition of ``threshold issue''
prevents the movant from raising the bar as an ordinary attack on
patentability. The suggested clarification is unnecessary because the
rule does not change the requirements for proving the bar, but rather
limits the instances in which the bar will be treated as a threshold
issue.
Comment 163: The comment questions the inclusion of written
description as a threshold issue under Sec. 41.201.
Answer: Written description addresses the problem complementary to
repose under 35 U.S.C. 135(b): the claim was timely, but lacks an
adequate written description. The use of written description as a
threshold issue responds to the perception that some applicants would
copy a claim simply to provoke interferences to obtain an inter partes
administrative challenge to a patent, regardless of whether the
applicant had actually invented the same subject matter as the patentee
had claimed. See Snitzer v. Etzel, 531 F.2d 1062, 1065, 189 USPQ 415,
417 (CCPA 1976) (noting the great scrutiny under which copied claims
have historically been placed).
The Office has been firm in its position that patent interferences
are not generalized patent cancellation proceedings. The Office has
proposed an enhanced post-grant review proceeding to fill the perceived
need for such a proceeding. United States Patent and Trademark Office,
The 21st Century Strategic Plan at 11 (updated 3 February 2003).
The provision for written description as a threshold issue has been
amended to narrow it to provoked interferences since that is where the
concern lies. The lack of an express suggestion of an interference
under Sec. 41.202(a) will not necessarily shield an applicant from a
threshold motion. There will be no examination of an applicant's intent
to provoke an interference where the opportunity to have done so is
clear. Any other practice would open the practice to abuse and
misconduct.
Comment 164: The comment questions whether enablement should also
be a threshold issue.
Answer: Since the list of threshold issues is inclusive, it would
permit additional issues to be treated as standing issues. Whether
enablement is routinely such an issue is left to further development
through adjudication. The current impression is that the enablement
requirement appears to be less frequently abused, in the absence of a
lack of written description, when provoking an interference.
Section 41.202(a)(2) has been modified to clarify that an applicant
suggesting an interference must also propose at least one count (as
defined in Sec. 41.201) since an explanation of correspondence to the
count is required in Sec. 41.202(a)(3).
Section 41.202(a)(3) requires an applicant suggesting an
interference to identify the claims that interfere and explain how they
correspond to the suggested count. When the suggestion is made on the
basis of a published application, the decision to declare an
interference will be based on the claims pending in the published
application at the time of the decision, which may differ from the
published claims. Note that no interference will be declared until both
applications have allowable claims that still interfere.
Comment 165: Section 41.202(a)(4) requires an applicant suggesting
an interference provide a detailed explanation of why it will prevail
on priority, while Sec. 41.202(d) requires an actual showing of
priority. One comment suggests that these two sections are
inconsistent.
Answer: There is no inconsistency between the rules. Section
41.202(a)(4) is a general requirement that any applicant suggesting an
interference provide an explanation of why it will prevail. If the
applicant has the earliest effective filing date, the explanation
should ordinarily be fairly simple. Section 41.202(d) addresses the
case in which the applicant does not have the earlier effective filing
date. In such a case, a more thorough showing is required because
otherwise on the face of the record no interference is necessary to
dispose of the interfering claim.
Comment 166: One comment suggests that Sec. 41.202(a)(6)'s
requirement for a chart showing supporting disclosure for an embodiment
within the scope of the interfering subject matter is too narrow since
it does not address instances where there is disclosure of the entire
interfering subject matter, but not of a specific embodiment.
Answer: The rule is modified to refer to a constructive reduction
to practice within the scope of the interfering subject matter. Since
the definition of constructive reduction to practice in Sec. 41.201
has been clarified to reflect anticipation under 35 U.S.C. 102(g)(1),
this change should also address the suggestion in this comment.
Comment 167: Three comments suggest that Sec. 41.202(b), regarding
patentees seeking interferences, include a reference to Sec. 1.99. One
suggests that
[[Page 49992]]
Sec. 41.202(b) is too restrictive, while two of the comments suggest
it might be inconsistent with the more restrictive Sec. 1.99.
Answer: The rule is not intended to create, eliminate, or modify a
remedy available under Sec. 1.99 or Sec. 1.291. The rule simply
observes that the process for suggesting an interference is not
available to a patentee and points to an alternative remedy. Section
41.202(b) is revised to clarify this intent and to point patentees to
both Sec. 1.99 and Sec. 1.291.
Comment 168: One comment expresses concern about Sec. 41.202(c),
under which an examiner may require an applicant to add an interfering
claim. The comment worries that the applicant is placed in an awkward
position if an examiner suggests an interfering claim that the
applicant believes is improper because it is not supported or because
the examiner's reasoning is unclear.
Answer: The applicant's remedy in such a situation is to comply
with the requirement, but also to add a better claim or to contest the
requirement. See In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235
(CCPA 1975) (holding that refusal to copy a claim for which the
applicant had support results in disclaimer). The requirement that an
applicant either comply by adding the proposed claim or concede
priority of the proposed subject matter is not new, see 37 CFR 1.605
(2003) and MPEP Sec. 2305. Section 41.202(c) has been further modified
to require showings like those under Sec. 41.202(a)(2)-(a)(6) when the
interference would be with a patent. Any dispute arising as to
satisfaction of these added procedural requirements may be petitioned.
Comment 169: Three comments address the requirement under Sec.
41.202(d) to show priority. Two of the comments suggest restoring some
version of the reduced showing required under Sec. 1.608(a) (2003) for
an application with an effective filing date within three months of an
interfering patent's effective filing date. A third comment suggests
that a similar requirement be made of all junior patentees.
Answer: The three-month practice under Sec. 1.608 (2003) was
eliminated because it makes little sense in many circumstances. The
comments assume that a fairly common practice prevails to spend a few
months preparing applications. The argument fails for two reasons.
First, while it may be common generally, it does not appear to be
common in all technologies and may be meaningless in the context of a
particular case. Second, if we are to assume that the applicant spent
three months preparing an application, then we should also be able to
make the same assumption about the earlier-filing interfering patent,
in which case the assumption does little to address whether the
applicant was the first to invent. See Paulik v. Rizkalla, 760 F.2d
1270, 1282, 226 USPQ 224, 232-33 (Fed. Cir. 1985) (Rich, J.,
concurring; making a similar point).
Comment 170: One comment suggests distinguishing between complex
and simple technologies in Sec. 41.202(d). The comment does not offer
a definition of simple or complex technology.
Answer: Such a distinction would be unworkable in practice.
Comment 171: Another comment suggests waiting until the
interference is initiated to require the showing under Sec. 41.202(d).
Answer: A practice of waiting would require the declaration of an
interference, with all of the costs associated with the declaration of
an interference, that the applicant might not want to contest.
Moreover, since an inadequate showing under Sec. 41.202(d) is the
trigger for a summary disposition under Sec. 41.202(d)(2), delay in
making the showing would drag out the pendency of the interference.
Comment 172: One comment suggests requiring a showing under Sec.
41.202(d) from junior patentees as well.
Answer: In an interference, the Office does not have jurisdiction
over the patent until after the interference is declared. Once the
Board declares an interference, a junior party must make a priority
statement under Sec. 41.204(a). Normally, the priority statement is
required early in the interference. Nothing in the rules prevents a
summary proceeding for a patentee that cannot show an adequate date of
priority in its priority statement. Moreover, nothing prevents the
Board from expediting consideration of priority in such circumstances.
Section 41.202(e) addresses what evidence is sufficient to show
priority. Paragraph (2) has been added to address a situation in which
a showing cannot be made because the necessary evidence is not
available without a subpoena. In such cases, a detailed proffer of the
expected testimony or production may suffice.
Comment 173: Eight comments address Sec. 41.203(a)'s definition
for interfering subject matter. Seven oppose the rule, while one seeks
clarification.
The seven that oppose would all prefer that the Board use a one-way
test for interfering subject matter.
Answer: A one-way test is not workable since it would turn a large
portion of rejections under 35 U.S.C. 102(a), 102(e), and 103(a) into
interferences simply because the subject matter claimed in the prior
art anticipated or rendered obvious the subject matter subsequently
claimed.
The one-way practice has never been the standard for interfering
subject matter. Although some comments suggest that the two-way test of
Sec. 41.203(a) originated with Winter v. Fujita, 53 USPQ2d 1234 (BPAI
1999), that decision only originated the use of the term ``two-way'' in
the context of interfering subject matter. The two-way test itself has
long been implicit in the test for no interference-in-fact: one-way
patentable distinctness. See, e.g., Aelony v. Arni, 547 F.2d 566, 570,
192 USPQ 486, 490 (CCPA 1977). It is worth noting that the test for
interfering patents under 35 U.S.C. 291 had been framed in, if
anything, even narrower terms than the test under Sec. 41.203(a). See
e.g., Slip Track Sys. v. Metal Lite, Inc., 159 F.3d 1337, 1341, 48
USPQ2d 1055, 1058 (Fed. Cir. 1998) (``patents that claim identical
subject matter'').
Comment 174: One comment suggests that the paradox of having a one-
way test for both starting and ending an interference could be resolved
if the test for no interference-in-fact only worked in one direction.
That is, the movant must show that its claim is patentably distinct
from the opponent's claim rather than showing that the opponent's claim
is patentably distinct from the movant's claim. The example given is a
genus claim that is anticipated by, but does not anticipate, another
party's species claim.
Answer: The problem with this suggestion is that it cedes control
over the interference to the party with the species claim, who can
decide unilaterally whether to file for no interference-in-fact or not.
The suggested directional test also ignores the Director's role under
35 U.S.C. 135(a) in deciding whether an interference exists or not.
Under the directional test, an interference would both exist and
not exist. If the Director turns a blind eye to the fact that there is
no interference-in-fact from one perspective, the Director has
effectively enlisted on the species claimant's side. Such a result
would, at a minimum, appear to be unfair.
Comment 175: Six comments urge that a one-way test is necessary so
that a senior party applicant may attack a junior party patentee with a
dominating claim.
Answer: The problem the comments identify as appropriate for an
interference is instead a case of claim dominance. The remedy
consequently is not an interference, but may be a
[[Page 49993]]
reexamination or some other patentability or validity contest. The
Office has proposed a post-grant review process that would provide an
appropriate forum for addressing such concerns. United States Patent
and Trademark Office, The 21st Century Strategic Plan at 11 (updated 3
February 2003). The Office remains steadfast in its position that an
interference is not a post-grant cancellation proceeding.
Comment 176: One comment notes that foreign priority proofs are
treated differently under 35 U.S.C. 102(g)(1) and (g)(2). According to
the comment, this difference violates treaty obligations by placing the
foreign patentee at a disadvantage under 35 U.S.C. 102(g)(2). The
comment urges that the Office has the initial responsibility to provide
a remedy by extending the jurisdiction for interferences to cover
situations that otherwise only fall within 35 U.S.C. 102(g)(2).
Answer: Even assuming the comment is correct, the problem lies in
the legislative decision to treat outcomes based on 35 U.S.C. 102(g)(1)
and (g)(2) differently. The effect of following the comment's
suggestion would be to eliminate a distinction that the statute was
only recently amended to create. The only plausible reading of 35
U.S.C. 102(g) is that Congress intended foreign priority proofs to be
treated differently depending on the situation in which the issue
arises. Consequently, the comment would be more appropriately directed
to Congress.
Comment 177: One comment seeks clarification about whether
unpatentable claims, particularly claims that are unpatentable as the
result of a threshold motion, would be taken into consideration in
determining whether there are interfering claims.
Answer: Ordinarily, claims that are unpatentable would not be
placed into an interference. See Sec. 41.102; Brenner v. Manson, 383
U.S. 519, 528 n.12 (1966) (observing that when a claim is unpatentable
on its face, a priority contest need not ``inexorably take place'').
Similarly, if all interfering claims become unpatentable as a result of
a threshold motion, judgment in the interference is justified. See
Berman v. Housey, 291 F.3d 1345, 1351, 63 USPQ2d 1023, 1027 (Fed. Cir.
2002) (affirming a judgment against a party with claims barred by 35
U.S.C. 135(b)).
Comment 178: One comment suggests that Sec. 41.203(b) be modified
to have the notice of declaration set forth the basis for any claim
correspondence or accorded benefit.
Answer: A similar effort was made in former Sec. 1.609 (1998) to
have the examiner explain the basis for correspondence. The rule was
subsequently withdrawn in the face of public complaints that it was
delaying the declaration of interferences without providing much real
benefit to the parties. While some explanation is required before a
claim can be finally rejected, the declaration simply creates
presumptions that are developed through motions. No party is subject to
a rejection or cancellation of its claims without having had an
opportunity to address the presumptions in the declaration.
Comment 179: Two comments address Sec. 41.203(d) regarding the
addition of a patent or application to the interference. One comment
questions what happened to substituting applications under Sec.
1.633(d) (2003) and also seeks guidance on when a motion to add a
patent or an application would be timely.
Answer: The suggestion to add an application or a patent under
Sec. 41.203(d) could be raised any time, but is more likely to be
granted if it is raised early in an interference. The intent of the
rule is that it work like the decision to declare an interference,
hence it only addresses the addition of a patent or application. A
substitution of an application could be accomplished by moving to add a
second application with an interfering claim and by cancelling the
involved claims in the first application contingent on the addition of
the second application to the interference.
Comment 180: A second comment notes that Sec. 41.203(d) permits
the addition of non-party applications or patents. While the comment
approves, it suggests requiring the movant to show that the claims of
the added patent or application are patentable.
Answer: The suggestion is not adopted. A proceeding in which the
third party is not a participant is not a good place to explore the
patentability of the third party's claims.
Comment 181: Five comments address Sec. 41.204(a) regarding
priority statements. Four of the comments urge that the rule would
require too much information to be provided too early in the proceeding
and suggest a return to current practice under Sec. Sec. 1.621-1.628
(2003). One comment requests clarification about the nature and amount
of documentary support required for the priority statement.
Answer: Section 41.204(a) is amended to clarify that any party that
will put on a priority case must file a priority statement. It has also
been amended to list specific requirements for the priority statement.
Section 41.204(a) still requires the party to state the bases on which
it believes that it is entitled to relief. Such bases might include an
intent to prove derivation or to move to be accorded benefit of an
additional constructive reduction to practice.
Comment 182: One comment expresses concern that senior parties must
file a priority statement and suggests that parties be bound by their
preliminary statements.
Answer: Parties are bound by their preliminary statements (Sec.
41.120(b)). Senior parties do not have to file a priority statement if
they do not intend to put on a priority case.
Comment 183: One comment suggests that Sec. 41.204(b) regarding
the statement of the basis for relief for substantive motions is
redundant with Sec. 41.121(c)(1). It recommends replacing the notice
with a list of motions intended to be filed with the basis for each
motion as is required under current practice.
Answer: The rule has been restated in terms of a motions list,
although the list will require more detail than is often provided on
current lists. The list is not a substitute for a motion, but it must
provide sufficient detail to place the Board and the opponent on notice
of the precise relief sought. The Board needs adequate notice to
facilitate scheduling. Moreover, detailed motions lists can lead to
other efficiencies, such as stipulations from the opponent.
Comment 184: One comment opposes Sec. 41.207(a)(1) regarding the
presumption of the order of invention for priority. According to the
comment, if two parties have identical dates for constructive reduction
to practice and neither elects to put on a priority case, then the rule
suggests that both would lose, while the comment believes that a patent
should issue to both.
Answer: The rule codifies case law that establishes that when both
parties have the same date of constructive reduction to practice,
neither party is entitled to a presumption of priority. Van Otteren v.
Hafner, 278 F.2d 738, 740, 126 USPQ 151, 152 (CCPA 1960) (question of
joint invention); Lassman v. Brossi, 159 USPQ 182, 184 (Bd. Int. 1967)
(in which both parties lost when neither established priority).
Comment 185: One comment opposes the extension under Sec.
41.207(a)(2) of the clear and convincing evidence standard to instances
where the junior party applicant first files after the publication of
the senior party's application. According to the comment, the use of a
higher evidentiary standard is tied to the presumption of patent
validity under 35 U.S.C. 282.
Answer: The evidentiary standard for the priority case of an
applicant that
[[Page 49994]]
filed after the opponent's patent issued is the clear and convincing
evidence standard. Price v. Symsek, 988 F.2d 1187, 1190-91, 26 USPQ2d
1031, 1033 (Fed. Cir. 1993). In Price, the court rejected the
previously applied beyond a reasonable doubt standard as inconsistent
with intervening Supreme Court precedent. The court cited the
presumption of validity as the reason for using a higher standard. The
Price decision did not purport to be instituting the use of a higher
standard in such cases; rather, it was following older precedent. 988
F.2d at 1192 n.2, 26 USPQ2d at 1035 n.2. The older precedent provides
reason to believe that the presumption of validity is not the only, or
even the primary, reason for using a higher evidentiary standard.
The best reason for believing that the presumption of validity is
not the primary basis for the higher evidentiary standard is that not
all patents in interferences benefit from the higher standard. Indeed,
the higher standard is the exception and not the rule. ``It is
important to bear in mind that merely because one of the parties has an
issued patent does not mean that the other party must prove his case by
[a higher evidentiary standard].'' C.W. Rivise & A.D. Caesar, 3
Interference Law & Practice at section 467 (1947); accord Bosies v.
Benedict, 27 F.3d 539, 541-42, 30 USPQ2d 1862, 1864(Fed. Cir. 1994)
(distinguishing Price). Moreover, the higher standard does not apply to
questions that do not bear directly on priority. 3 Interference Law &
Practice at Sec. 471; see also In re Etter, 756 F.2d 856, 857, 225
USPQ 1, 4 (Fed. Cir. 1985) (in banc) (clear and convincing evidence
standard does not apply to patent claims under reexamination).
While Price rejected the older evidentiary standard, it did not
reject the reasons the older precedent gave for using a higher
standard. 988 F.2d at 1192 n.2 & text, 26 USPQ2d at 1035 n.2 & text.
That precedent recognized various reasons for the higher standard.
Walker v. Altorfer, 111 F.2d 164, 167, 45 USPQ 317, 320 (CCPA 1940)
(one of the cases Price cites in n.2). Among the reasons discussed were
concerns about spurring and the degradation of evidence after a long
delay, 111 F.2d at 168, 45 USPQ at 320. Both of these factors apply in
the case of published applications as well.
Typically applications are published 18 months after their earliest
claimed benefit date, 35 U.S.C. 122(b)(1), so most late filers would
have to have delayed at least 18 months. As the Court of Customs and
Patent Appeals cautioned in Horwath v. Lee, 564 F.2d 948, 950, 195 USPQ
701, 704 (CCPA 1977) (also cited in Price at n.2), an inventor should
file promptly because a delay in filing raises the risk that
intervening actions by another may deprive the inventor of a property
right. See also 35 U.S.C. 102(e) (extending the definition of prior art
to include published applications) and 35 U.S.C. 135(b) (extending the
bar to include published applications).
Section 41.207(a)(2) is consistent with the patent statutes in
treating published applications like patents. Unlike the statutes,
however, Sec. 41.207(a)(2) does not create a bar to patentability, but
simply extends the existing heightened scrutiny for late filers so that
it is triggered by publication of an application as well as issuance of
a patent. Use of the clear and convincing evidence standard also
furthers the important policy goal of encouraging prompt filing.
Comment 186: One comment opposes Sec. 41.207(b) with regard to
claim correspondence. The comment gives the example of a generic claim
that corresponds to both a generic count and a specific count in which
there is a split award. In such a case, the generic claim would be
unpatentable based on its correspondence to the species count, even
though the party ``won'' the generic count. The comment distinguishes
In re Saunders, 219 F.2d 455, 104 USPQ 394 (CCPA 1955), which was
discussed in the notice of proposed rule making, because it was an ex
parte appeal. The comment also points to Ex parte Hardman, 142 USPQ 329
(BPAI 1964) for the proposition that Saunders does not create a per se
rule of unpatentability for generic claims in such cases.
Answer: Although the comment urges that the rule represents a
change from current practice, the rule simply formalizes the effect of
the estoppel arising out of cases like In re Deckler, 977 F.2d 1449,
1452, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992), in which a party could not
subsequently seek claims that were patentably indistinct from the
subject matter of the count lost in the interference. As earlier
discussed, no one ``wins'' a count because surviving a priority contest
for one count does not mean that one is thereby entitled to a claim.
Kyrides, 159 F.2d at 1022, 73 USPQ at 63.
In Saunders, a junior party could not claim a generic invention
after losing a species count. Although the case was an ex parte appeal,
it arose because Saunders was a junior party who had lost a species
count, but not the generic count, making the Saunders case directly
relevant. The case law has many examples of parties who having lost
interferences try, with varying degrees of success to either claim
around (e.g., In re Johnson, 558 F.2d 1008, 194 USPQ 187 (CCPA 1977))
or to antedate (e.g., In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed.
Cir. 1989)) the subject matter of the lost count. Hardman was correct
that Saunders did not create a per se rule of unpatentability for
generic claims, but neither does Sec. 41.207(b). It simply creates a
presumption that must be addressed.
If a party with a generic claim that corresponds to a species count
is concerned about the designation, its remedy is to move to have the
generic claim designated as not corresponding to the species count.
Often, the motion would be deferred until the priority phase and
dismissed unless there were a split award on priority, in which case
proof that the generic invention antedates the priority proofs for the
lost species count would likely justify relief.
Comment 187: Nine comments oppose at least some aspect of the
proposed presumption under Sec. 41.207(d) of abandonment, suppression,
or concealment when the party's effective filing date is more than one
year after the party's actual reduction to practice.
Answer: The presumption has been deleted as unnecessary. Delays
longer than 18 months will often result in a bar to patentability or
heightened scrutiny (Sec. 41.207(a)(2)) anyway so the proposed rule
would not have been likely to change the outcome in many interferences.
Under a priority motions practice, abandonment, suppression, or
concealment can be raised in the opposition to a priority motion. Any
request for additional discovery (Sec. 41.150(c)) or motion for
compelled testimony or production (Sec. 41.156(a)) should be filed
promptly to ensure that it is reflected in the opposition.
Comment 188: One comment suggests adding a provision to Sec.
41.208(a)(2) to address adding counts.
Answer: Section 41.208(a)(2) has been reworded to substitute
``definition of the interfering subject matter'' for the first
occurrence of ``count''. The point of the rule is to focus parties on
using substantive motions to define the range of admissible proofs for
priority before the priority phase begins.
Comment 189: Three comments express alarm that priority is
addressed as a motion under Sec. 41.208(a)(4). The principal concern
appears to be that priority will routinely be decided at the same time
as the preliminary motions.
Answer: The rules do not require priority to be decided
simultaneously with the preliminary motions. Indeed,
[[Page 49995]]
the point of preliminary motions is to simplify the issues for
consideration during the priority contest, for instance by better
defining the patentable subject matter. Instead, the rules provide for
contesting priority in the form of motions. On the other hand, the
rules would permit priority to be taken up with, or instead of,
preliminary motions in an appropriate case. The Board works out the
details of how a given priority case will proceed on a case-by-case
basis.
Motions practice is much more efficient than the current briefing
practice since each movant must explain the evidence on which it relies
rather than simply dumping it on the opposing party and waiting to see
what can be made of it. Several interferences have already had priority
contests in motions form. Typically, the junior party presents its
motion along with its evidence of priority. The motion explains the
evidence and gives the senior party an opportunity to see how the
junior party is relying on the evidence. Next, the senior party
presents its motion if it elects to present a case. Both parties then
file oppositions and replies. A motions process eliminates the need for
briefing after the evidence is served.
Comment 190: As noted previously, most of Sec. 41.208(c) has not
been adopted in the final rule. Like Sec. 1.637 (2003), Sec.
41.208(c) was plagued with problems of over- and under-inclusiveness.
See Hillman, 55 USPQ2d at 1221. Section 41.208(c) is now limited to
requiring a showing of patentability whenever a claim is proposed to be
added or amended. Consequently, most of the comments on Sec. 41.208(c)
are moot.
Five comments address proposed Sec. 41.208(c)(4)(ii), now part of
Sec. 41.208(c)(2), in which a party broadening the count must show the
proposed count does not include prior art. Four comments address
proposed Sec. 41.208(c)(5)(i), now Sec. 41.208(c)(1), in which a
party adding a claim must show the patentability of the claim. One
comment urges that the showing be limited to overcoming contrary
positions taken during prosecution. The other comments oppose the rule
as requiring the movant to prove a negative.
Answer: Section 41.208(c) is now limited to the requirement to show
patentability. Any time a claim or count is added or amended, the
movant must show that the claim or count does not run afoul of any
known patentability problem. The comments are correct that the
requirement often obliges the movant to prove a negative, but the
alternative is to permit a movant to create a patentability issue
without addressing it until the reply brief. While a requirement to
prove a negative should generally be avoided, sandbagging an opponent
is never acceptable. Moreover, the rule is consistent with the duty of
candor to the Office, particularly since the opposing party might not
oppose the motion.
Not all showings of patentability require the proof of a negative.
For instance, a movant adding a claim must show where the written
description for the claim can be found (Sec. 41.110(c)(2)). Where a
negative showing is required, a party may show that it is unaware of a
basis for unpatentability. When an applicable patentability question
has been raised during prosecution or in an opponent's motion, however,
it is not onerous for the movant to address that specific question.
This is particularly true for a responsive motion seeking to address an
opponent's motion alleging unpatentability. The responsive motion
cannot truly be responsive without explaining how it avoids the
unpatentability.
For counts, the main concern arises when a count is broadened to
include additional subject matter. Since a count defines the scope of
proofs admissible to prove priority, it is necessary for the count to
be patentable over the prior art. Otherwise, embodiments unpatentable
over the prior art could be used to prove priority. As with claims, a
party may show that it is unaware of prior art that would anticipate or
render obvious the subject matter of the count.
Comment 191: One comment suggests that there be a rule in
interferences comparable to Sec. 1.56 and Sec. 1.555 requiring candor
toward the Office.
Answer: Such a rule falls outside the scope of this rule making and
is, in any case, unnecessary. Litigants and their counsel always have a
duty of candor toward a tribunal. This is particularly true when the
litigant appears before the tribunal ex parte. American Bar
Association, Model Rules of Professional Conduct 3.3(d). Since the
Board can independently explore questions of patentability, Sec.
41.121(f), even parties in a contested case stand before the Board in
an ex parte capacity. Cf. SmithKline Beecham Corp. v. Apotex Corp., 365
F.3d 1306, 1321, 70 USPQ2d 1737, 1748 (Fed. Cir. 2004) (Gajarsa, J.,
concurring) (patentability can always be raised sua sponte). Moreover,
the limited discovery in Board proceedings reduces the check usually
available in adversarial proceedings, thus further increasing the duty
of candor owed to the Office. Consequently, there is a duty of candor
with or without a rule, and the duty is high because of the nature of
the proceeding.
The Office has proposed a disciplinary rule that is not as limited
in scope as Sec. 1.56 or Sec. 1.555 as a basis for disciplining
patent practitioners. 68 FR 69442, 69555, Sec. 11.303(d). Rather than
codify the existing duty of candor in yet another narrow context, the
Board will rely on its authority to sanction misconduct (Sec.
41.128(a)) and to regulate counsel (Sec. 41.5) to address violations
of the duty of candor that may arise in a contested case.
Administrative Procedure Act: The notable changes in this final
rule are: (1) Consolidating ex parte appeal rules, inter partes
reexamination appeal rules, and patent interference rules in a new part
41 of 37 CFR; (2) providing Subpart A of new part 41 to consolidate
general provisions relating to the Board of Patent Appeals and
Interferences and make them consistent across different proceedings;
(3) providing an express delegation from the Director of the United
States Patent and Trademark Office to the Chief Administrative Patent
Judge to decide petitions arising in Board proceedings; (4) providing a
delegation of limited authority to handle disqualifications under 35
U.S.C. 32 from the Director to the Chief Administrative Patent Judge;
(5) providing Subpart B of new part 41 setting forth the rules of
practice for ex parte appeals; (6) limiting amendments filed on or
after the date of filing a brief; (7) changing the format and content
of the appeal brief; (8) providing Subpart C of new part 41 setting
forth the rules of practice for inter partes reexamination appeals; (9)
providing Subpart D of new part 41 setting forth general rules of
practice for contested cases, which currently are patent interferences
(35 U.S.C. 135) and ownership (42 U.S.C. 2182 and 2457(d)); (10)
providing Subpart E of new part 41 setting forth rules of practice
specific to patent interferences; (11) clarifying issues regarding when
there is an interference-in-fact, how claims correspond to a count, and
how benefit of earlier applications is accorded; (12) providing that an
applicant adding a claim to provoke an interference with a patent
pursuant to a requirement by an examiner must provide additional
details about the count, accorded benefit, and claim correspondence for
the proposed interference, and (13) clarifying that a two-way
unpatentability test is used to determine whether claimed inventions
interfere.
The changes in this final rule relate solely to the procedure to be
followed in filing and prosecuting a patent application, filing and
prosecuting an
[[Page 49996]]
appeal to the Board, and contested cases. Therefore, these rule changes
involve interpretive rules, or rules of agency practice and procedure
under 5 U.S.C. 553(b)(A), and prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any
other law). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are ``rules of
agency organization, procedure, or practice'' and exempt from the
Administrative Procedure Act's notice and comment requirement); Merck &
Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed.
Cir. 1996) (the rules of practice promulgated under the authority of
former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not substantive
rules (to which the notice and comment requirements of the
Administrative Procedure Act apply)); Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) (``it is doubtful whether any of the rules
formulated to govern patent and trade-mark practice are other than
`interpretative rules, general statements of policy, * * * procedure,
or practice' '' (quoting C.W. Ooms, The United States Patent Office and
the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948).
Regulatory Flexibility Act: As previously discussed, the changes in
this final rule involve interpretive rules, or rules of agency practice
and procedure, and prior notice and an opportunity for public comment
were not required pursuant to 5 U.S.C. 553(b)(A) (or any other law).
Because prior notice and an opportunity for public comment were not
required for the changes in this final rule, a final Regulatory
Flexibility Act analysis is also not required for the changes in this
final rule. See 5 U.S.C. 603.
Nevertheless, the Office published a notice of proposed rule making
in the Federal Register, 68 FR 66648 (Nov. 26, 2003), and in the
Official Gazette of the United States Patent Office, 1277 OG 139 (Dec.
23, 2003), in order to solicit public participation with regard to this
rule package. Pursuant to the notice of proposed rule making, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office 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 the proposed rule would not have a
significant economic impact on a substantial number of small entities.
No comments were received which referenced any impact the proposed
rules would have on small entities.
The Office receives approximately 350,000 patent applications
annually. The final rules contained in this rule package apply to those
applications where an appeal brief is filed with the Board and to those
applications where an interference is suggested.
Approximately 7,300 appeal briefs are filed in the Office each
year. Of this number, small entities file, on average, approximately
1,552 appeal briefs annually. For example, in Fiscal Year 2003, 1,717
small entities filed appeal briefs; in Fiscal Year 2002, 1,442 small
entities filed appeal briefs; and in Fiscal Year 2001, 1,497 small
entities filed appeal briefs. The average number of small entities
affected by these rule changes is a very small percentage of the total
number of applications processed by the Office (approximately 0.4%).
These final rules do not impact a substantial number of small entities.
Moreover, the fees associated with filing an appeal with the Board are
set by statute and by previous rule makings, and have not been adjusted
in any manner in the current rule making. The procedural rules
contained in this rule making package do not increase the cost of
filing or processing an appeal before the Board. Thus, these rules have
no significant economic impact on small entities.
On average, about 109 interferences are declared in the Office each
year. For example, in Fiscal Year 2003, 95 interferences were declared;
in Fiscal Year 2002, 109 interferences were declared; and in Fiscal
Year 2001, 124 interferences were declared. The Office does not
maintain statistics to show the number of small entities that
participate in interferences before the Office annually. Each
interference involves two parties. Even assuming that every participant
in an interference proceeding is a small entity (double the average
number of interferences--about 218 per year), the average number of
small entities possibly affected by these rule changes is a very small
percentage of the total number of applications processed by the Office
(approximately 0.0006%). These final rules do not impact a substantial
number of small entities. Moreover, the fees associated with filing an
interference with the Board are set by statute and by previous rule
makings, and have not been adjusted in any manner in the current rule
making. The procedural rules contained in this rule making package do
not increase the cost of filing or processing an interference before
the Board. Thus, these rules have no significant economic impact on
small entities.
Accordingly, 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 that changes
contained in this final rule will not have a significant economic
impact on a substantial number of small entities.
Executive Order 13132: This final rule 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 final rule has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This final rule involves information
collection requirements 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 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
[[Page 49997]]
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
0
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 amends 37 CFR chapter I as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Amend Sec. 1.1 to remove paragraph (a)(1)(iii) and to revise
paragraph (a)(1)(ii) to read as follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
(a) * * *
(1) * * *
(ii) Board of Patent Appeals and Interferences. See Sec. 41.10 of
this title. Notices of appeal, appeal briefs, reply briefs, requests
for oral hearing, as well as all other correspondence in an application
or a patent involved in an appeal to the Board for which an address is
not otherwise specified, should be addressed as set out in paragraph
(a)(1)(i) of this section.
* * * * *
0
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]
0
4. Remove and reserve Sec. 1.5(e).
0
5. Amend Sec. 1.6 by revising paragraph (d)(9) to read as follows:
Sec. 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(9) In contested cases before the Board of Patent Appeals and
Interferences except as the Board may expressly authorize.
* * * * *
0
6. Amend Sec. 1.8 by removing and reserving paragraph (a)(2)(i)(B) and
by revising paragraph (a)(2)(i)(C) to read as follows:
Sec. 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(C) Papers filed in contested cases before the Board of Patent
Appeals and Interferences, which are governed by Sec. 41.106(f) of
this title;
* * * * *
0
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.
* * * * *
0
8. In Sec. 1.11, revise paragraph (e) to read as follows:
Sec. 1.11 Files open to the public.
* * * * *
(e) Except as prohibited in Sec. 41.6(b), the file of any
interference is open to public inspection and copies of the file may be
obtained upon payment of the fee therefor.
* * * * *
0
9. Amend Sec. 1.14 by revising paragraph (e) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(e) Decisions by the Director. Any decision by the Director that
would not otherwise be open to public inspection may be published or
made available for public inspection if:
(1) The Director believes the decision involves an interpretation
of patent laws or regulations that would be of precedential value; and
(2) The applicant is given notice and an opportunity to object in
writing within two months on the ground that the decision discloses a
trade secret or other confidential information. Any objection must
identify the deletions in the text of the decision considered necessary
to protect the information, or explain why the entire decision must be
withheld from the public to protect such information. An applicant or
party will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of a decision
are made public under this paragraph over his or her objection.
* * * * *
0
10. In Sec. 1.17, remove and reserve paragraphs (c) and (d), and
revise paragraphs (b) and (h) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(b) For fees in proceedings before the Board of Patent Appeals and
Interferences, see Sec. 41.20 of this title.
* * * * *
(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 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.
* * * * *
0
11. Revise Sec. 1.36 to read as follows:
[[Page 49998]]
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 an applicant for patent
(Sec. 1.41(b)) or an assignee of the entire interest of the applicant.
A power of attorney to the patent practitioners associated with a
Customer Number will be treated as a request to revoke any powers of
attorney previously given. Fewer than all of the applicants (or by
fewer than the assignee of the entire interest of the applicant) may
only revoke the power of attorney upon a showing of sufficient cause,
and payment of the petition fee set forth in Sec. 1.17(h). A
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(c)(2)), the practitioners so appointed will also be notified of
the revocation of the power of attorney when the power of attorney to
all of 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 of
the applicant may revoke previous powers of attorney and give another
power of attorney of the assignee's own selection as provided in Sec.
1.32(b).
(b) A registered patent attorney or patent agent who has been given
a power of attorney pursuant to Sec. 1.32(b) may withdraw as attorney
or agent of record 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 in an application that has an Office action to which a reply is
due, but insufficient time remains for the applicant to file a reply.
See Sec. 41.5 of this title for withdrawal during proceedings before
the Board of Patent Appeals and Interferences.
0
12. Amend Sec. 1.48 by revising paragraphs (a), (b), (c) and (i), and
adding 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.
0
13. 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
[[Page 49999]]
with a statement that the translation of the certified copy is
accurate.
* * * * *
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14. 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, except
as provided in paragraph (b) of this section or Sec. 41.7(a) of this
title.
* * * * *
0
15. 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 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.
0
16. 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).
0
17. 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
applicant's, 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.
* * * * *
0
18. 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.
* * * * *
0
19. Revise Sec. 1.116 to read as follows:
Sec. 1.116 Amendments and affidavits or other evidence after final
action and prior to appeal.
(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 on the same date
of filing an appeal (Sec. 41.31 or Sec. 41.61 of this title):
(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; or
(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) of this title.
(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) of this title.
(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 on the same date of filing an appeal (Sec.
41.31 or Sec. 41.61 of this title), 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) of this title.
(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) of this
title.
0
20. 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 which claims the same patentable invention as defined in
Sec. 41.203(a) of this title, in
[[Page 50000]]
which case an applicant may suggest an interference pursuant to Sec.
41.202(a) of this title; or
* * * * *
0
21. 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;
(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.
* * * * *
0
22. 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.
* * * * *
0
23. 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 of this title.
Sec. Sec. 1.192, 1.193, 1.194, 1.195, and 1.196 [Removed and
reserved].
0
24. Remove and reserve Sec. Sec. 1.192 through 1.196.
0
25. 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) Return of jurisdiction from the Board of Patent Appeals and
Interferences. 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) Termination of proceedings. (1) 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:
(i) Where claims stand allowed in an application; or
(ii) Where the nature of the decision requires further action by
the examiner.
(2) 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 U.S. Court of Appeals for the Federal Circuit or review
by civil action (Sec. 1.304) expires in the absence of further appeal
or review. If an appeal to the U.S. Court of Appeals for the Federal
Circuit or a civil action has been filed, proceedings on an application
are considered terminated when the appeal or civil action is
terminated. A civil action is terminated when the time to appeal the
judgment expires. An appeal to the U.S. Court of Appeals for the
Federal Circuit, whether from a decision of the Board or a judgment in
a civil action, is terminated when the mandate is issued by the Court.
0
26. 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 of this title without the written authority
of the Director, and then only for the consideration of matters not
already adjudicated, sufficient cause being shown.
0
27. 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 other than interferences.
* * * * *
(c) See Sec. 41.105(f) of this title for service of papers in
contested cases before the Board of Patent Appeals and Interferences.
0
28. 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,
[[Page 50001]]
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.
* * * * *
0
29. 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.
* * * * *
0
30. 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.
* * * * *
0
31. 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.
* * * * *
0
32. 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.
* * * * *
0
33. 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) or Sec. 41.121(a)(3)
of this title.
* * * * *
0
34. 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) or
Sec. 41.121(a)(3) of this title.
0
35. Amend Sec. 1.324 to revise paragraphs (a) and (c), and to 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) or Sec. 41.121(a)(3) of this title.
* * * * *
(c) For correction of inventorship in an application, see
Sec. Sec. 1.48 and 1.497.
(d) In a contested case before the Board of Patent Appeals and
Interferences 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) or Sec. 41.121(a)(3) of this title.
0
36. 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 through 1.690 (Subpart E) [Removed]
0
37. Remove and reserve subpart E of part 1.
0
38. 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;
* * * * *
0
39. In Sec. 1.703, revise paragraphs (a)(4), (b)(3)(ii), (b)(4),
(d)(2), and (e) to read as follows:
[[Page 50002]]
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 filed 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 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.
* * * * *
0
40. 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;
* * * * *
0
41. 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 of this title.
Sec. Sec. 1.961, 1.962, 1.963, 1.965, 1.967, 1.969, 1.971, 1.973,
1.975, and 1.977 [Removed and reserved]
0
42. Remove and reserve Sec. Sec. 1.961 through 1.977.
0
43. 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 judgment in the appeal before the Board of Patent Appeals
and Interferences, 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.
0
44. 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 of this
title without the written authority of the Director, and then only for
the consideration of matters not already adjudicated, sufficient cause
being shown.
0
45. 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
0
45a. 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.
2571 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C.
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 to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR
810.7).
0
46. 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) of
this title), but the Office will not act on the request
[[Page 50003]]
while the application remains under a secrecy order.
* * * * *
PART 10--REPRESENTATIVE OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE
0
46a. 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.
0
47. 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.
* * * * *
PART 11--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE
0
47a. The authority citation for part 11 continues to read as follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2)(D),
32.
0
48. In Sec. 11.6, revise paragraph (d) to read as follows:
Sec. 11.6 Registration of attorneys and agents.
* * * * *
(d) Board of Patent Appeals and Interferences matters. For action
by a person who is not registered in a proceeding before the Board of
Patent Appeals and Interferences, see Sec. 41.5(a) of this title.
0
49. Add part 41 to subchapter A to read as follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135.
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.
41.7 Management of the record.
41.8 Mandatory notices.
41.9 Action by owner.
41.10 Correspondence addresses.
41.11 Ex parte communications in inter partes proceedings.
41.12 Citation of authority.
41.20 Fees.
Subpart B--Ex Parte Appeals
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.
Subpart C--Inter Partes Appeals
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.
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.
41.106 Filing and service.
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 Oppositions and replies.
41.123 Default filing times.
41.124 Oral argument.
41.125 Decision on motions.
41.126 Arbitration.
41.127 Judgment.
41.128 Sanctions.
41.150 Discovery.
41.151 Admissibility.
41.152 Applicability of the Federal Rules of Evidence.
41.153 Records of the 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.
Subpart A--General Provisions
Sec. 41.1 Policy.
(a) Scope. 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 incorporated by reference
into part 41.
(b) Construction. The provisions of 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 action:
(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,
[[Page 50004]]
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 a 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) Scope. This section covers petitions on matters pending before
the Board (Sec. Sec. 41.35, 41.64, 41.103, and 41.205); otherwise, see
Sec. Sec. 1.181 to 1.183 of this title. 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. (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. (1) A late filing that results in either an
application becoming abandoned or a reexamination proceeding becoming
terminated under Sec. Sec. 1.550(d) or 1.957(b) or (c) of this title
may be revived as set forth in Sec. 1.137 of this title.
(2) A late filing that does not result in either an application
becoming abandoned or a reexamination proceeding becoming terminated
under Sec. Sec. 1.550(d) or 1.957(b) or (c) of this title will be
excused upon 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 filings related to Board proceedings before or
after the Board has jurisdiction, such as:
(1) Extensions during prosecution (see Sec. 1.136 of this title),
(2) Filing of a brief or request for oral hearing (see Sec. Sec.
41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or
(3) Seeking judicial review (see Sec. Sec. 1.301 to 1.304 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 registered 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. See Sec. 10.40
of this title regarding conditions for 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. Possible
violations of the disciplinary rules in part 10 of this title may be
referred to the Office of Enrollment and Discipline for investigation.
See Sec. 10.131 of this title.
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
to 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 judgment in 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
to 1.221 of this title.
Sec. 41.7 Management of the record.
(a) The Board may expunge any paper directed to a Board proceeding,
or filed while an application or patent is under the jurisdiction of
the Board, 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
[[Page 50005]]
appendix, without Board authorization or as required by rule.
Sec. 41.8 Mandatory notices.
(a) In an appeal brief (Sec. Sec. 41.37, 41.67, or 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:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could affect,
or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of a Board
proceeding must file a notice with the Board of the judicial review
within 20 days of the filing of the complaint or the notice of appeal.
The notice to the Board must include a copy of the complaint or notice
of appeal. See also Sec. Sec. 1.301 to 1.304 of this title.
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. 41.10 Correspondence addresses.
Except as the Board may otherwise direct,
(a) Appeals. Correspondence in an application or a patent involved
in an appeal (subparts B and C of this part) during the period
beginning when an appeal docketing notice is issued and ending when a
decision has been rendered by the Board, as well as any request for
rehearing of a decision by the Board, shall be mailed to: Board of
Patent Appeals and Interferences, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450. Notices of
appeal, appeal briefs, reply briefs, requests for oral hearing, as well
as all other correspondence in an application or a patent involved in
an appeal to the Board for which an address is not otherwise specified,
should be addressed as set out in Sec. 1.1(a)(1)(i) of this title.
(b) Contested cases. Mailed correspondence in contested cases
(subpart D of this part) shall be sent to Mail Stop INTERFERENCE, Board
of Patent Appeals and Interferences, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
Sec. 41.11 Ex Parte communications in inter partes proceedings.
An ex parte communication about an inter partes reexamination
(subpart C of this part) or about a contested case (subparts D and E of
this part) with a Board member, or with a Board employee assigned to
the proceeding, is not permitted.
Sec. 41.12 Citation of authority.
(a) Citations to authority must include:
(1) For any United States Supreme Court decision, a United States
Reports citation.
(2) For any decision other than a United States Supreme Court
decision, parallel citation to both the West Reporter System and to the
United States Patents Quarterly whenever the case is published in both.
Other parallel citations are discouraged.
(3) Pinpoint citations whenever a specific holding or portion of an
authority is invoked.
(b) 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 (a) of this section, a copy of
the authority should be filed with the first paper in which it is
cited.
Sec. 41.20 Fees.
------------------------------------------------------------------------
------------------------------------------------------------------------
(a) Petition fee. The fee for filing a petition under this $130.00
part is...................................................
(b) Appeal fees. (1) For filing a notice of appeal from the
examiner to the Board:
By a small entity (Sec. 1.27(a) of this title)........... 165.00
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:
By a small entity (Sec. 1.27(a) of this title)........... 165.00
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:
By a small entity (Sec. 1.27(a) of this title)........... 145.00
By other than a small entity............................... 290.00
------------------------------------------------------------------------
Subpart B--Ex Parte Appeals
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:
Applicant means either the applicant in a national application for
a patent or the applicant in an application for reissue of a patent.
Owner means the owner of the patent undergoing ex parte
reexamination under Sec. 1.510 of this title.
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.
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 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.
(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 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.
[[Page 50006]]
(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) through (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 filed after the date of filing an appeal pursuant to
Sec. 41.31(a)(1) through (a)(3) and prior to the date a brief is filed
pursuant to Sec. 41.37 may be admitted as provided in Sec. 1.116 of
this title.
(b) Amendments filed on or after the date of filing a brief
pursuant to Sec. 41.37 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.
(c) All other amendments filed after the date of filing an appeal
pursuant to Sec. 41.31(a)(1) through (a)(3) will not be admitted
except as permitted by Sec. Sec. 41.39(b)(1), 41.50(a)(2)(i),
41.50(b)(1) and 41.50(c).
(d)(1) An affidavit or other evidence filed after the date of
filing an appeal pursuant to Sec. 41.31(a)(1) through (a)(3) and prior
to the date of filing a brief pursuant to Sec. 41.37 may be admitted
if the examiner determines that the affidavit or other evidence
overcomes all rejections under appeal and that a showing of good and
sufficient reasons why the affidavit or other evidence is necessary and
was not earlier presented has been made.
(2) All other affidavits or other evidence filed after the date of
filing an appeal pursuant to Sec. 41.31(a)(1) through (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 file.
(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 filing 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
independent claim involved in the appeal and for each dependent claim
argued separately under the provisions of paragraph (c)(1)(vii) of this
section, 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 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 separate 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, or 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
[[Page 50007]]
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 on the same date of filing an appeal and
Sec. 41.33 for amendments, affidavits or other evidence filed after
the date of filing 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 and
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 rejection designated as 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 on the same date of filing an
appeal and Sec. 41.33 for amendments, affidavits or other evidence
filed after the date of filing 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 responding to a reply brief
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.
(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.
[[Page 50008]]
(e)(1) 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
except as permitted by paragraph (e)(2) of this section. The primary
examiner may only rely on argument and evidence relied upon in an
answer or a supplemental answer except as permitted by paragraph (e)(2)
of this section.
(2) Upon a showing of good cause, appellant and/or the primary
examiner may rely on a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
(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 within two
months from the date of the supplemental 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 rejection for which the Board
has remanded the proceeding:
(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 as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence 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 new
evidence 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 this subpart.
(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 of
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)(1) Appellant may file a single request for rehearing within two
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. 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 except as
permitted by paragraphs (a)(2) and (a)(3) of this section. 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 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.
(2) Upon a showing of good cause, appellant may present a new
argument based upon a recent relevant decision of either the Board or a
Federal Court.
[[Page 50009]]
(3) New arguments responding to a new ground of rejection made
pursuant to Sec. 41.50(b) are permitted.
(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.
Subpart C--Inter Partes Appeals
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:
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.
Filing means filing with a certificate indicating service of the
document under Sec. 1.903 of this title.
Owner means the owner of the patent undergoing inter partes
reexamination under Sec. 1.915 of this title.
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.
Requester means each party, other than the owner, who requested
that the patent undergo inter partes reexamination under Sec. 1.915 of
this title.
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.
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 filed after the date of filing an appeal 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 filed after the date of filing an appeal
pursuant to Sec. 41.61 will not be admitted except as permitted by
Sec. 41.77(b)(1).
(c) Affidavits or other evidence filed after the date of filing an
appeal 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 file.
(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 do so, no later than two months
from the expiration of the 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
[[Page 50010]]
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) An appellant's appeal shall stand dismissed upon failure of
that appellant 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 independent claim involved in the appeal and for each dependent
claim argued separately under the provisions of paragraph (c)(1)(vii)
of this section, 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
separate 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, or 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 on the same date of filing an appeal and
Sec. 41.63 for amendments, affidavits or other evidence after the date
of filing 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 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
[[Page 50011]]
brief to which the respondent brief is directed.
(4) A requester's respondent brief may not address any brief of any
other 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, or 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 on the same date of filing an
appeal and Sec. 41.63 for amendments, affidavits or other evidence
filed after the date of filing 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, 41.66, 41.67 and 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 on the same date of filing an appeal
and Sec. 41.63 for amendments, affidavits or other evidence filed
after the date of filing 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-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 on the same date of filing an appeal and Sec. 41.63(c) for
affidavits or other evidence filed after the date of filing 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
[[Page 50012]]
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)
through (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 or 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)(1) 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 except as permitted by paragraph (e)(2) of this section. The
primary examiner may only rely on argument and evidence relied upon in
an answer except as permitted by paragraph (e)(2) of this section. The
Board will determine the order of the arguments presented at the oral
hearing.
(2) Upon a showing of good cause, appellant, respondent and/or the
primary examiner may rely on a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(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 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 new evidence 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 comments by a
requester under paragraph (c) of this section and issue
[[Page 50013]]
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. 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)(1) 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 as
permitted by paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or respondent may
present a new argument based upon a recent relevant decision of either
the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection made
pursuant to Sec. 41.77(b) are permitted.
(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.
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.
Before a contested case is initiated, except as the Board may
otherwise authorize, for each involved application and patent:
(a) Examination or reexamination must be completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested case, and
(2) Would be involved in the contested case.
Sec. 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the
Board initiates a 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.
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\
[[Page 50014]]
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) Markings must be in black ink or must otherwise provide an
equivalently permanent, dark, high-contrast image on the paper. The
quality of 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, tables of
contents, tables of authorities, indices, 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) 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 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 hand 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] or by means at least as
fast and reliable as EXPRESS MAIL [reg]. Electronic service is not
permitted without Board authorization.
(4) The date of service 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 date and manner of service,
(ii) The name and address of every person served, and
(iii) For exhibits filed as a group, the name and number of each
exhibit served.
(4) A certificate made by a person other than a registered patent
practitioner must be in the form of an affidavit.
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) of this section.
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.
(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 add or amend a claim must include:
(1) A clean copy of the claim,
(2) A claim chart showing where the disclosure of the patent or
application provides written description of the subject matter of the
claim, and
(3) Where applicable, a copy of the 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
[[Page 50015]]
notice to be maintained in confidence for a limited time.
(b) Effect. If a notice under paragraph (a) of this section 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 or add 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 (see paragraph (d) of this
section), 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.
(d) Statement of material facts. (1) Each material fact shall be
set forth as a separate numbered sentence with specific citations to
the portions of the record that support the fact.
(2) The Board may require that the statement of material facts be
submitted as a separate paper.
(e) 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.
(f) The Board may order briefing on any issue that could be raised
by motion.
Sec. 41.122 Oppositions and replies.
(a) 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
shall be considered admitted.
(b) All arguments for the relief requested in a motion must be made
in the motion. A reply may only respond to arguments raised in the
corresponding opposition.
Sec. 41.123 Default filing times.
(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 30 days after 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.
(c) Exhibits. Each exhibit must be filed and served with the first
paper in which it is cited except as the Board may otherwise order.
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 an oral argument is set for a panel, the
movant on any issue to be argued 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 a request for oral argument is granted,
each party will have a total of 20 minutes to present its arguments,
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 is not final for the purposes of judicial review. A 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 on a motion 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:
[[Page 50016]]
(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 file a
request for 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.
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, patent
application, 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
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. (1) 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.
(2) When appropriate, a party may obtain production of documents
and things during cross examination of an opponent's witness or during
testimony authorized under Sec. 41.156.
Sec. 41.151 Admissibility.
Evidence that is not taken, sought, or filed in accordance with
this subpart shall not be admissible.
[[Page 50017]]
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.
(d) 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. 41.153 Records of the 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 things. 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. 41.155 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.
Sec. 41.157 Taking testimony.
(a) Form. Direct testimony must be submitted in the form of an
affidavit 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.
[[Page 50018]]
(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 D 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 reduction to practice under 35 U.S.C.
102(g)(1).
Constructive reduction to practice means a described and enabled
anticipation under 35 U.S.C. 102(g)(1) in a patent application of the
subject matter of a count. Earliest constructive reduction to practice
means the first constructive reduction to practice that has been
continuously disclosed through a chain of patent applications including
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).
Count means the Board's description of the interfering subject
matter that sets
[[Page 50019]]
the scope of admissible proofs on priority. Where there is more than
one count, each count must describe a patentably distinct invention.
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 where the applicant
suggested, or could have suggested, an interference under Sec.
41.202(a).
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, propose
one or more counts, and show how the claims 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 a constructive reduction to practice within the
scope of the interfering subject matter.
(b) Patentee. A patentee cannot suggest an interference under this
section but may, to the extent permitted under Sec. 1.99 and Sec.
1.291 of this title, alert the examiner of an application claiming
interfering subject matter to the possibility of an 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. If the
interference would be with a patent, the applicant must also comply
with paragraphs (a)(2) through (a)(6) of this section. 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. (1) A showing of priority under this
section is not sufficient unless it would, if unrebutted, support a
determination of priority in favor of the party making the showing.
(2) When testimony or production necessary to show priority is not
available without authorization under Sec. 41.150(c) or Sec.
41.156(a), the showing shall include:
(i) Any necessary interrogatory, request for admission, request for
production, or deposition request, and
(ii) A detailed proffer of what the response to the interrogatory
or request would be expected to be and an explanation of the relevance
of the response to the question of priority.
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) 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) of
this part.
Sec. 41.204 Notice of basis for relief.
(a) Priority statement. (1) A party may not submit evidence of its
priority in addition to its accorded benefit unless it files a
statement setting forth all bases on which the party intends to
establish its entitlement to judgment on priority.
(2) The priority statement must:
(i) State the date and location of the party's earliest
corroborated conception,
(ii) State the date and location of the party's earliest
corroborated actual reduction to practice,
(iii) State the earliest corroborated date on which the party's
diligence began, and
(iv) Provide a copy of the earliest document upon which the party
will rely to show conception.
(3) If a junior party fails to file a priority statement overcoming
a senior party's accorded benefit, judgment shall be entered against
the junior party absent a showing of good cause.
(b) Other substantive motions. The Board may require a party to
list the motions it intends to file, including sufficient detail to
place the Board and the opponent on notice of the precise relief
sought.
(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
of the interference between
[[Page 50020]]
the parties to the agreement. After a final decision is entered by the
Board, an interference is considered terminated when no appeal (35
U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or
had. If an appeal to the U.S. Court of Appeals for the Federal Circuit
(under 35 U.S.C. 141) or a civil action (under 35 U.S.C. 146) has been
filed the interference is considered terminated when the appeal or
civil action is terminated. A civil action is terminated when the time
to appeal the judgment expires. An appeal to the U.S. Court of Appeals
for the Federal Circuit, whether from a decision of the Board or a
judgment in a civil action, is terminated when the mandate is issued by
the Court.
(b) Untimely filing. The Chief Administrative Patent Judge may
permit 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 issue judgment in, 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.
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 definition of the interfering
subject matter 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) Showing patentability. (1) A party moving to add or amend a
claim must show the claim is patentable.
(2) A party moving to add or amend a count must show the count is
patentable over prior art.
Dated: July 28, 2004.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 04-17699 Filed 8-11-04; 8:45 am]
BILLING CODE 3510-16-P