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(254) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AB15
Simplification of Certain Requirements in
Patent Interference Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office amends its rules of
practice in patent interferences to simplify certain requirements relating
to the declaration of interferences and the presentation of evidence.
EFFECTIVE DATE: December 26, 2000.
FOR FURTHER INFORMATION CONTACT: Fred McKelvey or Richard Torczon at
703-308-9797.
SUPPLEMENTARY INFORMATION:
Background
An interim final version of this rulemaking was published at 65
FR 56792, Sept. 20, 2000, and also at U.S. Patent and Trademark Office,
1239 Off. Gaz. 125 (Oct. 17, 2000). The rationale for the rulemaking
appears with the interim rule.
Comments
The interim rule elicited two comments. One comment notes a
reference in 37 CFR 1.671(e) to a rule that was deleted. That reference
is eliminated in this final rule. Any other references to deleted rules
in subpart E of this title should be considered obsolete. They will be
eliminated in a future rulemaking.
A second comment raised a concern as to whether exhibits should be
numbered, noting that there is no patent interference rule requiring
that exhibits be numbered. Each exhibit needs to be identified in some
unique manner. All interferences declared by the Board of Patent
Appeals and Interferences (Board) at this time are subject to a
"Standing Order" that requires that exhibits be numbered.
The same comment noted that former 37 CFR 1.682 authorized placing a
publication in evidence without the need for an affidavit. According to
the comment, affidavits will now be necessary. Publications generally
may be placed in evidence in interference cases without an affidavit.
If an objection is made by an opponent, e.g., for lack of authenticity,
then under the Board's practice the party has a period of time within
which to supplement its evidence by properly authenticating the
publication. The Board expects few, if any, problems with the
admissibility of most printed publications given that most parties will
have no reason to question the authenticity of most printed publications.
Regulatory Flexibility Act
This rulemaking is procedural and is not subject to the requirements of
5 U.S.C. 553 so no initial regulatory flexibility analysis is required
under 5 U.S.C. 603.
Executive Order 13132: Federalism Assessment
This rulemaking does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (August 4, 1999).
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Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This interim rule creates no information collection requirements
subject to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Inventions and patents.
For the reasons stated in the preamble, the United States Patent and
Trademark Office amends 37 CFR Part 1 as follows:
PART 1 RULES OF PRACTICE IN PATENT CASES
1. Amend the authority citation for 37 CFR Part 1 to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Amend Sec. 1.601(f) to revise paragraph (f) to read as follows:
Sec. 1.601 Scope of rules, definitions.
* * * * *
(f) A count defines the interfering subject matter between two or more
applications or between one or more applications and one or more patents.
When there is more than one count, each count shall define a separate
patentable invention. Any claim of an application or patent that is
designated to correspond to a count is a claim involved in the interference
within the meaning of 35 U.S.C. 135(a). A claim of a patent or application
that is designated to correspond to a count and is identical to the count
is said to correspond exactly to the count. A claim of a patent or
application that is designated to correspond to a count but is not
identical to the count is said to correspond substantially to the count.
When a count is broader in scope than all claims which correspond to the
count, the count is a phantom count.
* * * * *
3. Revise Sec. 1.606 to read as follows:
Sec. 1.606 Interference between an application and a patent; subject matter
of the interference.
Before an interference is declared between an application and an
unexpired patent, an examiner must determine that there is interfering
subject matter claimed in the application and the patent which is
patentable to the applicant subject to a judgment in the interference. The
interfering subject matter will be defined by one or more counts. The
application must contain, or be amended to contain, at least one claim that
is patentable over the prior art and corresponds to each count. The claim
in the application need not be, and most often will not be, identical to a
claim in the patent. All claims in the application and patent which define
the same patentable invention as a count shall be designated to correspond
to the count.
4. Amend Sec. 1.671 to revise paragraphs (a) and (e) to read as follows:
Sec. 1.671 Evidence must comply with rules.
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(a) Evidence consists of affidavits, transcripts of depositions,
documents and things.
* * * * *
(e) A party may not rely on an affidavit (including exhibits), patent,
or printed publication previously submitted by the party under Sec.
1.639(b) unless a copy of the affidavit, patent, or printed publication
has been served and a written notice is filed prior to the close of the
party's relevant testimony period stating that the party intends to rely on
the affidavit, patent, or printed publication. When proper notice is given
under this paragraph, the affidavit, patent, or printed publication shall
be deemed as filed under Sec. 1.640(b), Sec. 1.640(e)(3), or Sec. 1.672, as
appropriate.
* * * * *
November 9, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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