1.
|
What
is the effect of Trial Section binding precedent on the rest
of the Board and the rest of the United States Patent and Trademark
Office? |
|
2.
|
Is
the USPTO making effective use of its "PALM" docketing
system to uncover proposed interferences that are sitting in
the group? "Submarine" interferences are as publicly
harmful (if not more so) than all other "submarine"
patent applications having long delayed prosecutions. |
|
3. |
Part
One: |
What
is the Board policy on two-way unpatentability for declaration
of interferences? The Official Gazette notice published January
16, 2001,2 says the standard is that Winter v.
Fujita, 53 USPQ2d 1234 (Bd. Pat. App. & Int. 1999),
reconsideration denied, 53 USPQ2d 1478 (Bd. Pat. App.
& Int. 2000), but Winter says that patentability
or unpatentability in both directions must be "considered,"
not that there must be two-way unpatentability in all cases.
|
|
Part
Two: |
If,
for example, there is an issued patent with a generic claim,
and an applicant claims a species within the claimed genus,
but the species claim is believed to be patentable over the
generic claim, can the applicant have an interference declared
in order to invalidate the dominant patented generic claim?
|
|
Part
Three: |
In
provoking such interferences, does it matter if the applicant
is junior or senior in filing date, or by how much?
|
|
Part
Four: |
If
not, does the applicant need to establish patentability over
the issued patent, get his own patent issued, and then request
reexamination of the earlier-issued generic patent?
|
|
Part
Five: |
If
reexamination is ordered and the earlier-issued patentee with
a generic claim establishes, say through a 37 CFR § 1.131
antedating effort, that its generic invention was made before
the filing date of the later-issued species patent, would an
interference be declared to permit the owner of the later-issued
species patent to establish priority?
|
|
Part
Six: |
Is
the presentation of a narrow claim for purpose of interference
with a broad claim construed as an admission that the narrow
claim is unpatentable over the broad claim? (Is it essential
that an applicant have a claim designated as corresponding to
the count, or would presentation of a narrow claim within the
scope of an issued claim, but which is asserted to be patentable
over the count, suffice?)
|
|
Part
Seven: |
If
the presentation of a narrow claim for purpose of interference
with a broad claim is construed as an admission that the narrow
claim is unpatentable over the broad claim, is the admission
rebuttable or conclusive? |
|
4. |
A
recent rule change eliminated the following language from 37
CFR § 1.606:
At
the time an interference is initially declared ... a count
shall not be narrower in scope than any application claim
that is patentable over the prior art and designated as
corresponding to the count or any patent claim that is designated
as corresponding to the count,
A
party presenting a claim that is broader than the count might
only be able to establish an earlier date of invention for
a species of the invention that is within his broad claims,
but outside the scope of the count. (i.e."A" invents
a broad claim before "B" invents a narrow claim
totally within the scope of A's broad claim, but B invents
the narrow claim before A invents the narrow claim. If the
count is B's narrow claim, then A loses his broad claim that
he was first to invent.
If
the count is A's broad claim, A would not lose the broad claim
that A was first to invent.) Why was the part of 37 CFR §
1.606 quoted above removed, anyway? Why is a party to an interference
not automatically allowed to prove priority for any claim
designated as corresponding to the count, in order to establish
priority with respect to the count? What is the standard for
allowing a party to do so?
|
|
5.
|
What
is the duty of a patentee who is involved in an interference
to advise the APJ and his interference opponent of prior art
or other circumstances relevant to patentability of the patentee's
claims, that may have come to his attention after the patent
issued? Does a new USPTO Director have to be appointed before
any further action is taken on this question? |
|
6. |
Part
One: |
Is
any progress being made on any of the "black hole"
problems -
|
|
Part
Two: |
Does
an examiner receive credit for work on a post-interference application?
|
|
Part
Three: |
Since
the appointments of interference practice specialists in the
Technology Centers change over time, can lists of current interference
specialists for the various technical centers be published from
time to time in the Official Gazette, or on the USPTO web site? |
|
7. |
Part
One: |
What
are the current time-lags for decisions in ex parte appeals
in ordinary applications, and in reexaminations?
|
|
Part
Two: |
Is
this information published periodically in the Official Gazette
or on the USPTO web site, so that appeal attorneys can advise
their clients about when to expect a decision in an appealed
application? If not, could it be?
|
|
Part
Three: |
Do
reexaminations move to the head of the line when they arrive
at the Board for ex parte appeals, or are all appeals
"special" so that reexaminations take their turn like
other appeals? |
|
8. |
Part
One: |
When
an ex parte appeal is remanded to the examiner for further consideration
of some item, before the Board acts on the appeal, does the
Board check periodically to see if the examiner has acted on
the case?
|
|
Part
Two: |
Is
the applicant notified when an application is remanded prior
to consideration of an appeal?
|
|
Part
Three: |
What
mechanism prevents remanded cases from falling into an "ex
parte black hole"? |
|
9. |
Part
One: |
What
is the scope and purpose of the "observations on cross-examination"
that must be filed concurrently with motions to suppress evidence?
|
|
Part
Two: |
What
happens if the observations exceed the intended scope (are they
ignored)? |
1. What is the effect of Trial Section binding precedent
on the rest of the Board and the rest of the United States Patent
and Trademark Office?
A decision supported
by an opinion that is determined by the Trial Section to be binding
precedent of the Trial Section normally will contain the following
caption at the top of the first page of the opinion:
The
opinion in support of the decision being entered today is binding
precedent of the Interference Trial Section of the Board of Patent
Appeals and Interferences. The opinion is otherwise not
binding precedent of the Board.
The significance
of the caption is that the opinion has been read and agreed to by
all eight administrative patent judges assigned to the Trial Section
and is precedent which all eight will apply in interferences which
come before them, as individual judges or as members of panels assigned
to handle a particular interference.
As of June 1,
2001, sixty-one administrative patent judges are members of the
Board of Patent Appeals and Interferences.1
In ex parte matters, the judges decide matters almost exclusively
in panels of three judges. In interference matters, non-final orders
may be entered by a single judge or, at the election of the single
judge in panels of two or more judges (37 CFR § 1.610(b)).
Presently, most decisions on preliminary and other significant motions
entered by judges assigned to the Trial Section are entered by a
panel of at least three judges, unless an important issue is deemed
to be presented, in which case the decision may be entered by a
panel consisting of all eight judges assigned to the Trial Section.
A three-judge decision entered in the Trial Section governs further
proceedings in the interference.
It is not practical
for the board to enter a decision en banc. Nor is it practical
to circulate each opinion to be entered by a single judge or a panel
to all sixty-one judges for comment.
Precedent adopted
as binding precedent by the Trial Section is not binding on non-Trial
Section judges, but neither are ordinary decisions entered by panels
consisting of other judges in other ex parte or interference
cases. With few exceptions, all interferences declared since October
1, 1998, have been declared by the Trial Section and all non-final
orders entered in those interferences generally have been entered
by judges assigned to the Trial Section. Furthermore, and perhaps
more important, opinions that are determined by the Trial Section
to be binding precedent of the Trial Section generally involve procedural
issues applicable only in Trial Section proceedings. The benefit
of binding precedent, particularly precedent involving procedural
issues or interpreting interference rules, is that it can be published
thereby notifying the bar of current practice before the Trial Section.
The bar can then expect that similar issues in other interferences
will be handled by the Trial Section in a similar fashion. The notion
of having binding precedent of the Trial Section is believed to
be consistent with one of the objectives for creating a Trial Section,
namely, a pre-Trial Section observation from the bar that individual
judges handled interferences in different ways.
Finally, to
the extent that a judge disagrees with a decision entered by any
other judge or by a panel, including a decision entered by judges
assigned to the Trial Section, the board has a mechanism (Standard
Operating Procedure 2, rev. 4) whereby the judge may notify the
Chief Administrative Patent Judge of the disagreement and a panel
of 11 judges, including the Chief Administrative Patent Judge, may
be designated to settle the disagreement.
2.
Is the USPTO making effective use of its "PALM" docketing
system to uncover proposed interferences that are sitting in the
group? "Submarine" interferences are as publicly harmful
(if not more so) than all other "submarine" patent applications
having long delayed prosecutions.
Questions regarding
the USPTO's use of the PALM system are best directed to the Office
of the Commissioner for Patents.
The following
observations may be useful to the bar.
First, before
an interference is declared, there is a meeting between individuals
in the relevant Technology Center (Interference Practice Specialists)
and at least one administrative patent judge to determine whether
there is an interference and, if so, what documentation might be
necessary (e.g., a PTO Form 850 or a statement similar to the statement
required by former 37 CFR § 1.609(b)). Experience shows that
the meeting helps to expedite declaration of interferences or a
decision that an interference is not appropriate.
Second, it is
appropriate for a practitioner, after contacting an examiner and
the examiner's supervisor (SPE), to contact a Group Director to
report inaction on a request for an interference filed in connection
with a particular patent application.
Third, individual
applicants and patentees are able to track the whereabouts of their
own applications and patents through the use of the Patent Application
Information Retrieval or PAIR system which may be accessed at the
following site: http://pair.uspto.gov/cgi-bin/final/home.pl.
3.
Part One:
What is the Board policy on two-way unpatentability for declaration
of interferences? The Official Gazette notice published January
16, 2001, 2says the standard is
that Winter v. Fujita, 53 USPQ2d 1234 (Bd. Pat. App. &
Int. 1999), reconsideration denied, 53 USPQ2d 1478 (Bd. Pat.
App. & Int. 2000), but Winter says that patentability
or unpatentability in both directions must be "considered,"
not that there must be two-way unpatentability in all cases.
The notice and
the Winter decision speak for themselves. Although
Winter leaves open the possibility of an interference being
declared (or continued) where only one-way unpatentability has been
shown, as a practical matter it is not clear when an exception could
or should be made to the two-way test. Since that very question
was the subject of extensive comments in response to the notice,
any change in policy is best left to any follow up notice on the
topic. For the purposes of clarification, however, some considerations
relevant to the
remaining questions is offered below.
3.
Part Two: If,
for example, there is an issued patent with a generic claim, and
an applicant claims a species within the claimed genus, but the
species claim is believed to be patentable over the generic claim,
can the applicant have an interference declared in order to invalidate
the dominant patented generic claim?
In the situation
described, an interference does not appear to be necessary, unless
two conditions exists: (1) the applicant's species renders the patent's
genus unpatentable and (2) the patent's genus renders the applicant's
species unpatentable, in which case there is an interference-in-fact.
The question
does not indicate who is the senior party. If it is assumed that
the applicant is the junior party, and the applicant's species is
patentably distinct from the patent's genus, then a patent lawfully
may be issued to the applicant.
The question
suggests a belief that there is a right before the USPTO "to
invalidate the dominant patented generic claim." An applicant
receives all the relief to which it is entitled under the Patent
Law when a patent is issued containing claims that it requests in
its application. There is no "right" under the Patent
Law "to invalidate" another's patent as part of the process
of filing a patent application and obtaining a patent thereon.
Accord Ewing v. Fowler Car Co., 244 U.S. 1, 10-11 (1917) (explicitly
rejecting the assertion of an applicant's right to an interference).
The applicant and its real party in interest, if any, have a remedy
by way of a defense of invalidity under 35 U.S.C. § 102(g)
in the event a civil action alleging infringement is filed against
the applicant or its real party in interest. An interference is
a proceeding designed to assist the Director, acting through a patent
examiner, in a determination of whether a patent should issue to
an applicant, not whether a patent should be cancelled--albeit cancellation
of a patent is a consequence of a patentee losing an application
versus patent interference. If the applicant's species is patentable
over the prior art genus, there would be no basis for rejecting
the applicant's claims and an interference would not be necessary
to assist the Director, acting through an examiner, in determining
whether to issue a patent to the applicant.
The result is
not different if it is assumed that the applicant is the senior
party. A junior party patent claiming a genus facially would not
be prior art as to the applicant. Accordingly, there is no basis
for declining to issue a patent to the applicant. As in the case
where the applicant is the junior party, the applicant has no "right"
as part of the examination process "to invalidate" the
patent claiming the genus. There are, however, remedies available
to the applicant.
First, after
its patent issues, the applicant (now patentee) can request the
Director to reexamine the patent on the basis of its newly issued
patent to the species. If during the course of the reexamination,
it turns out that an interference may be necessary, an application
to reissue the patent being reexamined may be filed and the Director,
at that time, can determine whether an interference should be declared.
Some have said that reexamination is not a realistic remedy because
of its ex parte nature. It is important to remember that
an interference under 35 U.S.C. § 135(a) is not a pre-grant
opposition or a post-grant cancellation. At this time, the sole
statutory means for seeking cancellation of the claims of a patent
before the USPTO is through a reexamination proceeding.
Second, in the
event of a civil action against the applicant and its real party
in interest, a defense may be asserted that the patent to the genus
is unpatentable over the applicant's patent to the species.
3.
Part Three: In provoking such interferences, does it matter if the
applicant is junior or senior in filing date, or by how much?
As noted in
the Answer to Question 3, Part 2, there is no apparent reason why
it should matter whether the applicant is junior party or senior
party, or by how much.
3.
Part Four: If
not, does the applicant need to establish patentability over the
issued patent, get his own patent issued, and then request reexamination
of the earlier-issued generic patent?
Yes.
3.
Part Five: If reexamination is ordered and the earlier-issued patentee
with a generic claim establishes, say through a 37 CFR § 1.131
antedating effort, that its generic invention was made before the
filing date of the later-issued species patent, would an interference
be declared to permit the owner of the later-issued species patent
to establish priority?
Under 35 U.S.C.
§§ 301-318, the only prior art that may be considered
in a reexamination consists of patents and printed publications.
It is not apparent how the patentee of the later-issued species
would be permitted, in a reexamination, to establish priority. Moreover,
the USPTO does not have authority to declare an interference between
two patents.
3.
Part Six: Is the presentation of a narrow claim for purpose of interference
with a broad claim construed as an admission that the narrow claim
is unpatentable over the broad claim? (Is it essential that an applicant
have a claim designated as corresponding to the count, or would
presentation of a narrow claim within the scope of an issued claim,
but which is asserted to be patentable over the count, suffice?)
Under present
practice, each party in an interference must have at least one claim
designated as corresponding to each count in the interference. Hence,
if there is one count, each party must have at least one claim corresponding
to the count.
Ordinarily,
if an applicant presents a species claim and maintains that it interferes
with a patentee's generic claim, the applicant will have to establish
two-way unpatentability before an interference will be declared.
If the applicant is unwilling to concede that a genus renders its
species unpatentable (i.e., asserts that its species is patentable
over the genus), and if the examiner agrees, there is no impediment
to issuing a patent to the applicant on its species. An interference
is not necessary.
If there is
to be an interference between the species and the genus, the applicant,
of course, would like a count limited to the species. The patentee,
on the other hand, would like a count to the genus so that it can
take advantage of more evidence on the issue of priority. To date,
those who have commented on the two-way patentability standard have
not provided a satisfactory answer to the question of what the scope
of the count should be in such cases.
3.
Part Seven: If
the presentation of a narrow claim for purpose of interference with
a broad claim is construed as an admission that the narrow claim
is unpatentable over the broad claim, is the admission rebuttable
or conclusive?
The answer to
the question is best resolved in a live case where the question
is presented.
4.
A recent rule change eliminated the following language from 37 CFR
§ 1.606:
At
the time an interference is initially declared ... a count shall
not be narrower in scope than any application claim that is patentable
over the prior art and designated as corresponding to the count
or any patent claim that is designated as corresponding to the
count,
A party presenting
a claim that is broader than the count might only be able to establish
an earlier date of invention for a species of the invention that
is within his broad claims, but outside the scope of the count.
(i.e. "A" invents a broad claim before "B" invents
a narrow claim totally within the scope of A's broad claim, but
B invents the narrow claim before A invents the narrow claim. If
the count is B's narrow claim, then A loses his broad claim that
he was first to invent.
If the count is A's broad claim, A would not lose the broad claim
that A was first to invent.) Why was the part of 37 CFR § 1.606
quoted above removed, anyway? Why is a party to an interference
not automatically allowed to prove priority for any claim designated
as corresponding to the count, in order to establish priority with
respect to the count? What is the standard for allowing a party
to do so?
37 CFR §
1.606 was amended on October 20, 2000. 3The
notice amending 37 CFR § 1.606 observes that "[t]he USPTO
is amending 37 CFR §§ *** 1.606 *** because the requirements
being eliminated presented obstacles to the efficient declaration
of interferences without corresponding benefits. Also eliminated
was a requirement of 37 CFR § 1.609(b) that an examiner present
an explanation as to why each claim should correspond or not correspond
to each count.
As a general
proposition, a count should be limited to a single patentable invention.
The claims that are designated as corresponding to the count should
also cover the single patentable invention, although the claim may
also cover a different patentable invention. To the extent a party
loses on the issue of priority, its claims that cover the single
patentable invention (presumably having been designated as corresponding
to the count) become unpatentable to that party. The party may well
be entitled to a patent containing a narrower claim limited to the
different patentable invention.
In 1984, when
the new interferences rules were promulgated, it was believed, particularly
in the case of a patent, that a count should not be narrower than
the broadest patent claim designated as corresponding to the count.
In other words, a procedural presumption was created in the rules
that any single patent claim defines a single patentable invention.
The presumption could be overcome through a preliminary motion to
narrow the count. The moving party seeking to narrow the count had
the burden of proof to establish that a count (and therefore a patent
claim) covered two patentable inventions and that the count should
be narrowed to a single patentable invention.
The board's
experience has established that the presumption thought to be appropriate
in 1984 is not viable today. All one need do is consult chemical
compound patents containing claims to multiple compounds to understand
that the USPTO properly issues patents containing claims which cover
separate patentable inventions. In an ex parte context, there
is nothing inappropriate or questionable about issuing a claim that
covers more than one patentable invention. There is, however, something
inappropriate or questionable about permitting one party to defeat
another party on the basis of priority proofs to an invention which
is patentably distinct from the invention claimed by an opponent.
Cf. Godtfredsen v. Banner, 598 F.2d 589, 592, 202 USPQ 7,
10 (CCPA 1979)4.
The change in
37 CFR § 1.606 boils down to a question of who should have
the burden of proof with respect to an attempt to change a count.
Consider the case where claim 1 of a patent covers patentably distinct
inventions A and B and claim 1 of an application covers only invention
A. Under 37 CFR § 1.606 prior to its amendment, the count would
have covered both inventions A and B. If the applicant sought to
limit the count to invention A, then the applicant would have been
under a burden to establish that invention B (the invention being
taken out) is patentably distinct from invention A). That is, the
applicant would have been under a "negative" burden of
proof, needing to prove that something is not true. It is difficult
to cite and apply prior art to establish that two inventions are
patentably distinct.
After the change
to 37 CFR § 1.606, the interference can be declared with a
count limited to invention A. Claim 1 of the patent and claim 1
of the application would be designated as corresponding to the count.
If the applicant wins on the issue of priority, the patentee is
not entitled to claim 1 because it covers invention A even though
it also covers invention B. If the patentee believes that the count
should be changed to cover inventions A and B, the patentee is in
a position to cite prior art which when combined with invention
A (which would be presumed to be prior art) would render obvious
invention B. The patentee, unlike the applicant prior to the amendment
to 37 CFR § 1.606, is under a "positive" burden of
proof, i.e., to prove that something is true. Since it is often
impossible to adequately sustain a negative burden of proof, it
is generally faster, fairer, and more cost-effective to place the
initial burden on the party able to present positive proofs.
The change in
37 CFR § 1.606 now permits an interference to be declared on
the basis of a count directed to common subject matter, leaving
it to a party to file a preliminary motion to broaden the count
having a "positive" as opposed to a "negative"
burden of proof.
A party is "not
automatically allowed to prove priority" with proofs within
the scope of its broad claim for the reasons quoted in the Godtfredsen
case, supra.
5.
What is the duty of a patentee who is involved in an interference
to advise the APJ and his interference opponent of prior art or
other circumstances relevant to patentability of the patentee's
claims, that may have come to his attention after the patent issued?
Does a new USPTO Director have to be appointed before any further
action is taken on this question?
Unless an order
is entered in a particular interference there currently is no regulation
which requires a patentee in an interference to advise the board
or its opponent of prior art falling within the scope of 37 CFR
§ 1.56.
The board is
currently in the process of drafting revisions to the interference
rule. An individual with views on whether the provisions of 37 CFR
§ 1.56, or similar provisions, should apply to patentees in
an interference, may submit those views to Administrative Patent
Judge Richard Torczon by letter or to his e-mail address:
richard.torczon@uspto.gov
6.
Part One: Is any progress being made on any of the "black hole"
problems -
(a) |
the
prompt declaration of interferences for which files have been
forwarded to the Board,
|
(b) |
getting
examiners to forward files to the Board for declaration of interferences
(in proper cases), and
|
(c) |
getting
examiners to act on post-interference applications? |
Upon receipt
of files forwarded to the board for consideration of whether an
interference should be declared, the Trial Section takes the following
action. If the files are not in order (e.g., a file is missing or
paperwork required to be completed has not been completed), then
within seven (7) days the Trial Section will return the files to
the examiner for appropriate action and the attorneys for all parties
are notified by the Trial Section that the papers have been returned.
The Trial Section does not set a time for an examiner to take appropriate
action. If the files are in order, the Trial Section will declare
an interference within thirty (30) days of receipt of the files.
As noted earlier,
if a party has requested an interference and, in the opinion of
the applicant, timely action has not taken place respect to the
request, the applicant should contact the examiner. If there is
still no timely action, the applicant should contact the examiner's
supervisor, i.e., the examiner's SPE. If there is still no timely
action, it is appropriate to contact the Group Director in the Technology
Center.
Following entry
of a final decision in an interference an examiner takes up an application
for such further action as may be appropriate. If, in the opinion
of an applicant, the action is not deemed timely, or no action is
taking place, the applicant should contact the examiner's supervisor,
etc.
6.
Part Two: Does an examiner receive credit for work on a post-interference
application?
Examiner credits
are administered by the patent examining operation, so detailed
questions about examiner credits should be directed there.
6.
Part Three: Since the appointments of interference practice specialists
in the Technology Centers change over time, can lists of current
interference specialists for the various technical centers be published
from time to time in the Official Gazette, or on the USPTO web site?
Yes. Please
see http://www.uspto.gov/web/offices/dcom/bpai/ips-list.html.
7.
Part One: What are the current time-lags for decisions in ex
parte appeals in ordinary applications, and in reexaminations?
All appeals
in reexamination proceedings are handled as "special"
cases at the Board. That is, they are reviewed and docketed ahead
of other appeals and are marked as special on the docket listings
sent monthly to each APJ. The most recent reports indicate that
there are presently seventeen appeals in reexamination proceedings
at the Board awaiting decision.
With regard
to ex parte appeals generally, the answer depends, in part,
on whether the subject matter of the involved application is from
the mechanical, electrical, chemical or biotechnology Technology
Centers. The board is most current for cases coming from the mechanical
areas (TCs 3600 and 3700) and least current in the chemical area
(TC 1700) and biotechnology area (TC 1600), although rapid strides
are being made on biotechnology appeals. As of the beginning of
June 2001, the great majority of chemical appeals now at the board
arrived at the board in FY 1998 or later. As of the beginning of
June 2001, the great majority of biotechnology appeals (TC 1600)
, and electrical appeals (TCs 2100, 2600 and 2800) now at the board
arrived at the board in FY 1999 or later. The great majority of
mechanical appeals now at the board arrived at the board in FY 2000
or later. Design appeals, like reexamination proceedings, are docketed
ahead of ordinary appeals. There are presently 31 design appeals
pending at the board.
It is expected
that the board will decide about 5000 appeals in FY 2001 and receive
3500 to 4000 new appeals in FY 2001. By the end of FY 2001, it is
expected that the board will have an undecided inventory of around
5000 new appeals, roughly the number the board is capable of deciding
in a single year.
7.
Part Two: Is this information published periodically in the Official
Gazette or on the USPTO web site, so that appeal attorneys can advise
their clients about when to expect a decision in an appealed application?
If not, could it be?
Ex parte
appeal statistics are published monthly in the Official Gazette.
Additionally, the same statistics appear on the USPTO website and
can be retrieved by clicking on the "Board Statistics"
text at the following address:
http://www.uspto.gov/web/offices/dcom/bpai/index.html
7.
Part Three: Do reexaminations move to the head of the line when
they arrive at the Board for ex parte appeals, or are all
appeals "special" so that reexaminations take their turn
like other appeals?
Appeals involving
reexamination and reissue applications are considered "special"
at the board and are taken up ahead of other appeals before the
board.
8.
Part One: When an ex parte appeal is remanded to the examiner for
further consideration of some item, before the Board acts on the
appeal, does the Board check periodically to see if the examiner
has acted on the case?
No. The board
does not exercise supervisory authority over examiners. If, in the
opinion of an applicant, action on a remand is not deemed timely,
or if no action is taking place, then the applicant should contact
the examiner and the examiner's supervisor, etc.
8.
Part Two: Is the applicant notified when an application is remanded
prior to consideration of an appeal?
Yes. When an
application is remanded to an examiner, the board enters a remand
order and that order is mailed to the applicant.
8.
Part Three: What mechanism prevents remanded cases from falling
into an "ex parte black hole"?
The board mails
a copy of its remand order to applicant.
9.
Part One: What is the scope and purpose of the "observations
on cross-examination" that must be filed concurrently with
motions to suppress evidence?
First, there
is no requirement that any comment be filed.
Second, while
it should be unusual, it is possible that a party may rely on a
witness in filing a reply to an opposition to a preliminary motion.
The opponent has a right to cross-examine the witness. Accordingly,
the Trial Section authorizes the opponent to file a paper making
such observations with respect to cross-examination as may be appropriate.
The party relying on the witness may then respond to the opponent's
observations. Absent observations and a response, the board would
have no guidance on what weight to give cross-examination.
9.
Part Two: What happens if the observations exceed the intended scope
(are they ignored)?
Observations
and responses to observations obviously should not raise new issues.
If a party believes that an observation or a reply to an observation
is not appropriate or exceeds the intended scope, the party should
arrange for an inter partes conference call with the administrative
patent judge handling the interference and a decision will be made
on a case-by-case basis as to what, if anything, should take place.
1 |
The
Director (formerly Commissioner of Patents and Trademarks),
the Commissioner for Patents (formerly Assistant Commissioner
for Patents) and the Commissioner for Trademarks (formerly Assistant
Commissioner for Trademarks) are also members of the board,
but rarely participate in deciding cases.
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2 |
Notice
and request for comments, Standard for Declaring a Patent Interference,
65 Fed. Reg. 79809 (Dec. 20, 2000), reprinted in 1242
Off. Gaz. Pat. & Tm. Office 113 (Jan. 16, 2001).
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3 |
Interim
rule with request for comments, Simplification of Certain Requirements
in Patent Interference Practice, 65 Fed. Reg. 56792 (Sept. 20,
2000).
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4 |
Quoting
the Commissioner, who said:
Where,
as here, the parties both disclose the same three species,
that fact does not justify including those species in a
single count as members of a Markush group if the Examiner
has determined that the three species are patentably distinct
inventions. If such a count were permitted, then the party
who proved the earliest date of invention as to any one
of the members of the group would be awarded priority as
to the entire count, i.e., as to all three members. It is
not considered that such a result would be consonant with
the primary purpose of an interference or with the intent
of 35 U.S.C. 135, since there would be no determination
of priority as to each of the common [patentably
distinct] inventions claimed by the parties [emphasis in
original].
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