INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - USA
Patent Laws and Regulations
Regulations: Title 37, Chapter I (Subchapter A,
Parts 1, 3, 5, 7, 10, 15, and 15a and Subchapter B); Chapter IV and Chapter V,
Code of Federal Regulations
(Continuation)
37 C.F.R. § 1.602 Interest in applications and patents involved in an interference.
(a) Unless good cause is shown, an interference shall not be declared or continued between (1) applications owned by a single party or (2) applications and an unexpired patent owned by a single party.
(b) The parties, within 20 days after an interference is declared, shall notify the Board of any and all right, title, and interest in any application or patent involved or relied upon in the interference unless the right, title, and interest is set forth in the notice declaring the interference.
(c) If a change of any right, title, and interest in any application or patent involved or relied upon in the interference occurs after notice is given declaring the interference and before the time expires for seeking judicial review of a final decision of the Board, the parties shall notify the Board of the change within 20 days after the change.
[49 FR 48455, Dec. 12, 1984; 60 FR 14519, Mar. 17, 1995]
37 C.F.R. § 1.603 Interference between applications; subject matter of the interference.
Before an interference is declared between two or more applications, the examiner must be of the opinion that there is interfering subject matter claimed in the applications which is patentable to each applicant subject to a judgment in the interference. The interfering subject matter shall be defined by one or more counts. Each application must contain, or be amended to contain, at least one claim that is patentable over the prior art and corresponds to each count. All claims in the applications which define the same patentable invention as a count shall be designated to correspond to the count.
[49 FR 48455, Dec. 12, 1984; 60 FR 14519, Mar. 17, 1995]
37 C.F.R. § 1.604 Request for interference between applications by an applicant.
(a) An applicant may seek to have an interference declared with an application of another by,
(1) Suggesting a proposed count and presenting at least one claim corresponding to the proposed count or identifying at least one claim in its application that corresponds to the proposed count,
(2) Identifying the other application and, if known, a claim in the other application which corresponds to the proposed count, and
(3) Explaining why an interference should be declared.
(b) When an applicant presents a claim known to the applicant to define the same patentable invention claimed in a pending application of another, the applicant shall identify that pending application, unless the claim is presented in response to a suggestion by the examiner. The examiner shall notify the Commissioner of any instance where it appears an applicant may have failed to comply with the provisions of this paragraph.
[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 60 FR 14519, Mar. 17, 1995]
37 C.F.R. § 1.605 Suggestion of claim to applicant by examiner.
(a) If no claim in an application is drawn to the same patentable invention claimed in another application or patent, the examiner may suggest that an applicant present a claim drawn to an invention claimed in another application or patent for the purpose of an interference with another application or a patent. The applicant to whom the claim is suggested shall amend the application by presenting the suggested claim within a time specified by the examiner, not less than one month. Failure or refusal of an applicant to timely present the suggested claim shall be taken without further action as a disclaimer by the applicant of the invention defined by the suggested claim. At the time the suggested claim is presented, the applicant may also call the examiner's attention to other claims already in the application or presented with the suggested claim and explain why the other claims would be more appropriate to be designated to correspond to a count in any interference which may be declared.
(b) The suggestion of a claim by the examiner for the purpose of an interference will not stay the period for response to any outstanding Office action. When a suggested claim is timely presented, ex parte proceedings in the application will be stayed pending a determination of whether an interference will be declared.
[49 FR 48455, Dec. 12, 1984; 60 FR 14519, Mar. 17, 1995]
37 C.F.R. § 1.606 Interference between an application and a patent; subject matter of the interference.
Before an interference is declared between an application and an unexpired patent, an examiner must determine that there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in the interference. The interfering subject matter will be defined by one or more counts. The applications must contain, or be amended to contain, at least one claim that is patentable over the prior art and corresponds to each count. The claim in the application need not be, and most often will not be, identical to a claim in the patent. All claims in the application and patent which define the same patentable invention as a count shall be designated to correspond to the count. At the time an interference is initially declared (§ 1.611), a count shall not be narrower in scope than any application claim that is patentable over the prior art and designated to correspond to the count or any patent claim designated to correspond to the count. Any single patent claim designated to correspond to the count will be presumed, subject to a motion under § 1.633(c), not to contain separate patentable inventions.
[49 FR 48455, Dec. 12, 1984; 60 FR 14520, Mar. 17, 1995]
37 C.F.R. § 1.607 Request by applicant for interference with patent.
(a) An applicant may seek to have an interference declared between an application and an unexpired patent by,
(1) Identifying the patent,
(2) Presenting a proposed count,
(3) Identifying at least one claim in the patent corresponding to the proposed count,
(4) Presenting at least one claim corresponding to the proposed count or identifying at least one claim already pending in its application that corresponds to the proposed count, and, if any claim of the patent or application identified as corresponding to the proposed count does not correspond exactly to the proposed count, explaining why each such claim corresponds to the proposed count, and
(5) Applying the terms of any application claim,
(i) Identified as corresponding to the count, and
(ii) Not previously in the application to the disclosure of the application.
(6) Explaining how the requirements of 35 U.S.C. 135(b) are met, if the claim presented or identified under paragraph (a)(4) of this section was not present in the application until more than one year after the issue date of the patent.
(b) When an applicant seeks an interference with a patent, examination of the application, including any appeal to the Board, shall be conducted with special dispatch within the Patent and Trademark Office. The examiner shall determine whether there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in an interference. If the examiner determines that there is any interfering subject matter, an interference will be declared. If the examiner determines that there is no interfering subject matter, the examiner shall state the reasons why an interference is not being declared and otherwise act on the application.
(c) When an applicant presents a claim which corresponds exactly or substantially to a claim of a patent, the applicant shall identify the patent and the number of the patent claim, unless the claim is presented in response to a suggestion by the examiner. The examiner shall notify the Commissioner of any instance where an applicant fails to identify the patent.
(d) A notice that an applicant is seeking to provoke an interference with a patent will be placed in the file of the patent and a copy of the notice will be sent to the patentee. The identity of the applicant will not be disclosed unless an interference is declared. If a final decision is made not to declare an interference, a notice to that effect will be placed in the patent file and will be sent to the patentee.
[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 58 FR 54511, Oct. 22, 1993, as corrected at 58 FR 64155, Dec. 6, 1993; 60 FR 14520, Mar. 17, 1995]
37 C.F.R. § 1.608 Interference between an application and a patent; prima facie showing by applicant.
(a) When the effective filing date of an application is three months or less after the effective filing date of a patent, before an interference will be declared, either the applicant or the applicant's attorney or agent of record shall file a statement alleging that there is a basis upon which the applicant is entitled to a judgment relative to the patentee.
(b) When the effective filing date of an application is more than three months after the effective filing date of a patent, the applicant, before an interference will be declared, shall file evidence which may consist of patents or printed publications, other documents, and one or more affidavits which demonstrate that applicant is prima facie entitled to a judgment relative to the patentee and an explanation stating with particularity the basis upon which the applicant is prima facie entitled to the judgment. Where the basis upon which an applicant is entitled to judgment relative to a patentee is priority of invention, the evidence shall include affidavits by the applicant, if possible, and one or more corroborating witnesses, supported by documentary evidence, if available, each setting out a factual description of acts and circumstances performed or observed by the affiant, which collectively would prima facie entitle the applicant to judgment on priority with respect to the effective filing date of the patent. To facilitate preparation of a record (§ 1.653(g)) for final hearing, an applicant should file affidavits on paper which is 21.8 by 27.9 cm. (8 1/2 x 11 inches). The significance of any printed publication or other document which is self-authenticating within the meaning of Rule 902 of the Federal Rules of Evidence or § 1.671(d) and any patent shall be discussed in an affidavit or the explanation. Any printed publication or other document which is not self-authenticating shall be authenticated and discussed with particularity in an affidavit. Upon a showing of good cause, an affidavit may be based on information and belief. If an examiner finds an application to be in condition for declaration of an interference, the examiner will consider the evidence and explanation only to the extent of determining whether a basis upon which the application would be entitled to a judgment relative to the patentee is alleged and, if a basis is alleged, an interference may be declared.
[49 FR 48455, Dec. 12, 1984; 60 FR 14520, Mar. 17, 1995]
37 C.F.R. § 1.609 Preparation of interference papers by examiner.
When the examiner determines that an interference should be declared, the examiner shall forward to the Board:
(a) All relevant application and patent files and
(b) A statement identifying:
(1) The proposed count or counts and, if there is more than one count proposed, explaining why the counts define different patentable inventions;
(2) The claims of any application or patent which correspond to each count, explaining why each claim designated as corresponding to a count is directed to the same patentable invention as the count;
(3) The claims in any application or patent which do not correspond to each count and explaining why each claim designated as not corresponding to any count is not directed to the same patentable invention as any count; and
(4) Whether an applicant or patentee is entitled to the benefit of the filing date of an earlier application and, if so, sufficient information to identify the earlier application.
[49 FR 48455, Dec. 12, 1984; 60 FR 14520, Mar. 17, 1995]
37 C.F.R. § 1.610 Assignment of interference to administrative patent judge, time period for completing interference.
(a) Each interference will be declared by an administrative patent judge who may enter all interlocutory orders in the interference, except that only the Board shall hear oral argument at final hearing, enter a decision under §§ 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter any other order which terminates the interference.
(b) As necessary, another administrative patent judge may act in place of the one who declared the interference. At the discretion of the administrative patent judge assigned to the interference, a panel consisting of two or more members of the Board may enter interlocutory orders.
(c) Unless otherwise provided in this subpart, times for taking action by a party in the interference will be set on a case-by-case basis by the administrative patent judge assigned to the interference. Times for taking action shall be set and the administrative patent judge shall exercise control over the interference such that the pendency of the interference before the Board does not normally exceed two years.
(d) An administrative patent judge may hold a conference with the parties to consider simplification of any issues, the necessity or desirability of amendments to counts, the possibility of obtaining admissions of fact and genuineness of documents which will avoid unnecessary proof, any limitations on the number of expert witnesses, the time and place for conducting a deposition (§ 1.673(g)), and any other matter as may aid in the disposition of the interference. After a conference, the administrative patent judge may enter any order which may be appropriate.
(e) The administrative patent judge may determine a proper course of conduct in an interference for any situation not specifically covered by this part.
[49 FR 48455, Dec. 12, 1984; 60 FR 14520, Mar. 17, 1995]
37 C.F.R. § 1.611 Declaration of interference.
(a) Notice of declaration of an interference will be sent to each party.
(b) When a notice of declaration is returned to the Patent and Trademark Office undelivered, or in any other circumstance where appropriate, an administrative patent judge may send a copy of the notice to a patentee named in a patent involved in an interference or the patentee's assignee of record in the Patent and Trademark Office or order publication of an appropriate notice in the Official Gazette.
(c) The notice of declaration shall specify:
(1) The name and residence of each party involved in the interference;
(2) The name and address of record of any attorney or agent of record in any application or patent involved in the interference;
(3) The name of any assignee of record in the Patent and Trademark Office;
(4) The identity of any application or patent involved in the interference;
(5) Where a party is accorded the benefit of the filing date of an earlier application, the identity of the earlier application;
(6) The count or counts and, if there is more than one count, the examiner's explanation why the counts define different patentable inventions;
(7) The claim or claims of any application or any patent which correspond to each count;
(8) The examiner's explanation as to why each claim designated as corresponding to a count is directed to the same patentable invention as the count and why each claim designated as not corresponding to any count is not directed to the same patentable invention as any count; and
(9) The order of the parties.
(d) The notice of declaration may also specify the time for:
(1) Filing a preliminary statement as provided in § 1.621(a);
(2) Serving notice that a preliminary statement has been filed as provided in § 1.621(b); and
(3) Filing preliminary motions authorized by § 1.633.
(e) Notice may be given in the Official Gazette that an interference has been declared involving a patent.
[49 FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985; 60 FR 14521 Mar. 17, 1995]
37 C.F.R. § 1.612 Access to applications.
(a) After an interference is declared, each party shall have access to and may obtain copies of the files of any application set out in the notice declaring the interference, except for affidavits filed under § 1.131 and any evidence and explanation under § 1.608 filed separate from an amendment. A party seeking access to any abandoned or pending application referred to in the opponent's involved application or access to any pending application referred to in the opponent's patent must file a motion under § 1.635. See § 1.11(e) concerning public access to interference files.
(b) After preliminary motions under § 1.633 are decided (§ 1.640(b)), each party shall have access to and may obtain copies of any affidavit filed under § 1.131 and any evidence and explanation filed under § 1.608 in any application set out in the notice declaring the interference.
(c) Any evidence and explanation filed under § 1.608 in the file of any application identified in the notice declaring the interference shall be served when required by § 1.617(b).
(d) The parties at any time may agree to exchange copies of papers in the files of any application identified in the notice declaring the interference.
[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 53 FR 23735, June 23, 1988; 60 FR 14521, Mar. 17, 1995]
37 C.F.R. § 1.613 Lead attorney, same attorney representing different parties in an interference, withdrawal of attorney or agent.
(a) Each party may be required to designate one attorney or agent of record as the lead attorney or agent.
(b) The same attorney or agent or members of the same firm of attorneys or agents may not represent two or more parties in an interference except as may be permitted under this Chapter.
(c) An administrative patent judge may make necessary inquiry to determine whether an attorney or agent should be disqualified from representing a party in an interference. If an administrative patent judge is of the opinion that an attorney or agent should be disqualified, the administrative patent judge shall refer the matter to the Commissioner. The Commissioner will make a final decision as to whether any attorney or agent should be disqualified.
(d) No attorney or agent of record in an interference may withdraw as attorney or agent of record except with the approval of an administrative patent judge and after reasonable notice to the party on whose behalf the attorney or agent has appeared. A request to withdraw as attorney or agent of record in an interference shall be made by motion (§ 1.635).
[49 FR 48455, Dec. 12, 1984; 60 FR 14521, Mar. 17, 1995]
37 C.F.R. § 1.614 Jurisdiction over interference.
(a) The Board acquires jurisdiction over an interference when the interference is declared under § 1.611.
(b) When the interference is declared the interference is a contested case within the meaning of 35 U.S.C. 24.
(c) The examiner shall have jurisdiction over any pending application until the interference is declared. An administrative patent judge may for a limited purpose restore jurisdiction to the examiner over any application involved in the interference.
[49 FR 48455, Dec. 12, 1984; 60 FR 14521, Mar. 17, 1995]
37 C.F.R. § 1.615 Suspension of ex parte prosecution.
(a) When an interference is declared, ex parte prosecution of an application involved in the interference is suspended. Amendments and other papers related to the application received during pendency of the interference will not be entered or considered in the interference without the consent of an administrative patent judge.
(b) Ex parte prosecution as to specified matters may be continued concurrently with the interference with the consent of the administrative patent judge.
[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985; 60 FR 14521, Mar. 17, 1995]
37 C.F.R. § 1.616 Sanctions for failure to comply with rules or order or for taking and maintaining a frivolous position.
(a) An administrative patent judge or the Board may impose an appropriate sanction against a party who fails to comply with the regulations of this part or any order entered by an administrative patent judge or the Board. An appropriate sanction may include among others entry of an order:
(1) Holding certain facts to have been established in the interference;
(2) Precluding a party from filing a paper;
(3) Precluding a party from presenting or contesting a particular issue;
(4) Precluding a party from requesting, obtaining, or opposing discovery;
(5) Awarding compensatory expenses and/or compensatory attorney fees; or
(6) Granting judgment in the interference.
(b) An administrative patent judge or the Board may impose a sanction, including a sanction in the form of compensatory expenses and/or compensatory attorney fees, against a party for taking and maintaining a frivolous position in papers filed in the interference.
(c) To the extent that an administrative patent judge or the Board has authorized a party to compel the taking of testimony or the production of documents or things from an individual or entity located in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention (§ 1.671(h)), but the testimony, documents or things have not been produced for use in the interference to the same extent as such information could be made available in the United States, the administrative patent judge or the Board shall draw such adverse inferences as may be appropriate under the circumstances, or take such other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the interference, including imposition of appropriate sanctions under paragraph (a) of this section.
(d) A party may file a motion (§ 1.635) for entry of an order imposing sanctions, the drawing of adverse inferences or other action under paragraph (a), (b) or (c) of this section. Where an administrative patent judge or the Board on its own initiative determines that a sanction, adverse inference or other action against a party may be appropriate under paragraph (a), (b) or (c) of this section, the administrative patent judge or the Board shall enter an order for the party to show cause why the sanction, adverse inference or other action is not appropriate. The Board shall take action in accordance with the order unless, within 20 days after the date of the order, the party files a paper which shows good cause why the sanction, adverse inference or other action would not be appropriate.
[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985; 60 FR 14521, Mar. 17, 1995]
37 C.F.R. § 1.617 Summary judgment against applicant.
(a) An administrative patent judge shall review any evidence filed by an applicant under § 1.608(b) to determine if the applicant is prima facie entitled to a judgment relative to the patentee. If the administrative patent judge determines that the evidence shows the applicant is prima facie entitled to a judgment relative to the patentee, the interference shall proceed in the normal manner under the regulations of this part. If in the opinion of the administrative patent judge the evidence fails to show that the applicant is prima facie entitled to a judgment relative to the patentee, the administrative patent judge shall, concurrently with the notice declaring the interference, enter an order stating the reasons for the opinion and directing the applicant, within a time set in the order, to show cause why summary judgment should not be entered against the applicant.
(b) The applicant may file a response to the order, which may include an appropriate preliminary motion under § 1.633 (c), (f) or (g), and state any reasons why summary judgment should not be entered. Any request by the applicant for a hearing before the Board shall be made in the response. Additional evidence shall not be presented by the applicant or considered by the Board unless the applicant shows good cause why any additional evidence was not initially presented with the evidence filed under § 1.608(b). At the time an applicant files a response, the applicant shall serve a copy of any evidence filed under § 1.608(b) and this paragraph.
(c) If a response is not timely filed by the applicant, the Board shall enter a final decision granting summary judgment against the applicant.
(d) If a response is timely filed by the applicant, all opponents may file a statement and may oppose any preliminary motion filed under § 1.633 (c), (f) or (g) by the applicant within a time set by the administrative patent judge. The statement may set forth views as to why summary judgment should be granted against the applicant, but the statement shall be limited to discussing why all the evidence presented by the applicant does not overcome the reasons given by the administrative patent judge for issuing the order to show cause. Except as required to oppose a motion under § 1.633 (c), (f) or (g) by the applicant, evidence shall not be filed by any opponent. An opponent may not request a hearing.
(e) Within a time authorized by the administrative patent judge, an applicant may file a reply to any statement or opposition filed by any opponent.
(f) When more than two parties are involved in an interference, all parties may participate in summary judgment proceedings under this section.
(g) If a response by the applicant is timely filed, the administrative patent judge or the Board shall decide whether the evidence submitted under § 1.608(b) and any additional evidence properly submitted under paragraphs (b) and (e) of this section shows that the applicant is prima facie entitled to a judgment relative to the patentee. If the applicant is not prima facie entitled to a judgment relative to the patentee, the Board shall enter a final decision granting summary judgment against the applicant. Otherwise, an interlocutory order shall be entered authorizing the interference to proceed in the normal manner under the regulations of this subpart.
(h) Only an applicant who filed evidence under § 1.608(b) may request a hearing. If that applicant requests a hearing, the Board may hold a hearing prior to entry of a decision under paragraph (g) of this section. The administrative patent judge shall set a date and time for the hearing. Unless otherwise ordered by the administrative patent judge or the Board, the applicant and any opponent will each be entitled to no more than 30 minutes of oral argument at the hearing.
[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985; 60 FR 14522, Mar. 17, 1995]
37 C.F.R. § 1.618 Return of unauthorized papers.
(a) An administrative patent judge or the Board shall return to a party any paper presented by the party when the filing of the paper is not authorized by, or is not in compliance with the requirements of, this subpart. Any paper returned will not thereafter be considered in the interference. A party may be permitted to file a corrected paper under such conditions as may be deemed appropriate by an administrative patent judge or the Board.
(b) When presenting a paper in an interference, a party shall not submit with the paper a copy of a paper previously filed in the interference.
[49 FR 48455, Dec. 12, 1984; 60 FR 14522, Mar. 17, 1995]
Continuation: 37 C.F.R. § 1.621 Preliminary statement, time for
filing, notice of filing.
