(120) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 910514-1195]
[RIN: 0651-AA49]
Patent Interference Proceedings
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule
Summary: The Patent and Trademark Office (PTO) is amending its rules of
practice in patent interference cases. The U.S. District Court for the
District of Columbia recently decided Kochler v. Mustonen, Civil Action
No. 90-1074 (D.D.C. Apr. 23, 1991). The District Court held that PTO
practice regarding taking of testimony abroad was not clear. PTO rules
require that a testimony period be set. The rules also require that
testimony be taken during the testimony period. Rule 684 authorizes
testimony to be taken abroad. However, rule 684 requires that a motion
be filed for leave to take testimony abroad and that the motion be filed
before the close of a party's testimony period. The District Court
suggested that a motion to take testimony abroad, filed in PTO on the
last day of the testimony period, could be considered timely even though
taking of the testimony might occur after the testimony period. By this
amendment, PTO will continue to authorize the filing of a motion to take
testimony abroad. However, a party will have to file the motion within a
time such that the testimony can be taken during the testimony period
set under PTO rule 651.
Effective Date: Sept. 27, 1991
For Further Information Contact: Fred E. McKelvey by telephone at (703)
557-4035 or by mail marked to his attention and addressed to Box 8,
Commissioner of Patents and Trademarks, Washington, DC 20231.
Supplementary Information: The PTO conducts interference proceedings to
determine who as between two or more applicants for patent or one or
more applicants and one or more patentees is the first inventor of a
patentable invention. As part of its proofs in an interference, a party
may request leave to take testimony abroad. 37 CFR 1.684 (1990).
The U.S. District Court for the District of Columbia recently decided
Kochler V. Mustonen, Civil Action No. 90-1074 (D.D.C. Apr. 23, 1991).
The District Court held that PTO practice regarding taking of testimony
abroad was not clear. PTO rule 651 (37 CFR 1.651 (1990)) requires
that a testimony period be set. Rule 651 also requires that testimony be
taken during the testimony period. Rule 684 (37 CFR 1.684 (1990))
authorizes testimony to be taken abroad. However, rule 684 requires that
a motion be filed for leave to take testimony abroad and that the motion
be filed before the close of a party's testimony period. The District
Court suggested that a motion to take testimony abroad, filed in PTO on
the last day of the testimony period, could be considered timely even
though taking of the testimony might occur after the testimony period.
In a notice of proposed rule making published in the FEDERAL REGISTER
on June 12, 1991 56 FR 26949, paragraphs (a) and (d) of rule 651 and
rule 684 were proposed to be revised to require a party to file the
motion to take testimony abroad within a time such that the testimony
could be taken during the testimony period set under PTO rule 651.
One written comment was submitted by a Chief Executive Officer who
stated his support of the proposed amendment. An attorney commented that
the proposed amendment of 1.684 appeared to foreclose the taking of
testimony beyond any original time set under 1.651. The attorney
suggested language be added to paragraph (c) stating the alternative
that testimony abroad must be completed within the time set under
1.651 or by the Examiner-in-Chief. This suggestion has been adopted.
Other Considerations: The rule changes are in conformity with the
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et. seq.),
Executive Orders 12291 and 12612 and the Paperwork Reduction Act of
1980, 44 U.S.C. 3501 et. seq.
The General Counsel of the Department of Commerce has certified to
the Chief Counsel for Advocacy, Small Business Administration, that
these rule changes will not have a significant adverse economic impact
on a substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)). The principal impact of these changes is to clarify the
need for taking testimony abroad during the testimony period. The rule
changes include no additional or increased fees. Substantive rights are
not adversely affected.
The Office has determined that these rule changes are not a major
rule under Executive Order 12291. The annual effect on the economy will
be less than $100 million. Because most of the changes do not change
burdens, there will be no major increase in costs or prices for
consumers; individual industries; Federal, state or local government
agencies; or geographic regions. There will be no significant adverse
effects on competition, employment, investment, productivity or
innovation, or on the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic or export markets.
The rule change will not impose any additional burden under the
paperwork Reduction Act of 1980, 44 U.S.C. 3501et seq.
The Office has also determined that this rule change has no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Inventions and patents.
For the reasons set forth in the preamble and pursuant to the authority
granted to the Commissioner of Patents and Trademarks by 35 U.S.C. 6 and
135, the PTO is amending 37 CFR part 1 as follows:
Part 1 --Rules of Practice in Patent Cases
1. The authority citation for 37 CFR part 1, Suspart E, continues to
read as follows:
Authority: 35. U.S.C. 6, 23, 41 and 135.
2. Section 1.651 is revised as follows:
1.651 Setting times for discovery and taking testimony, parties
entitled to take testimony.
(a) At an appropriate stage in an interference, an examiner-in-chief
shall set (1) a time for filing motions ( 1.635) for additional
discovery under 1.687(c) and (2) testimony periods for taking any
necessary testimony (testimony includes testimony to be taken abroad
under 1.684).
(b) Where appropriate, testimony periods will be set to permit a
party to:
(1) Present its case-in-chief and/or case-in-rebuttal and/or
(2) Cross-examine an opponent's case-in-chief and/or a
case-in-rebuttal.
(c) A party is not entitled to take testimony to present a
case-in-chief unless:
(1) The examiner-in-chief orders the taking of testimony under
1.639(c);
(2) The party alleges in its preliminary statement a date of
invention prior to the earlier of the filing date or effective filing
date of the senior party;
(3) A testimony period has been set to permit an opponent to prove a
date of the invention prior to the earlier of the filing date or
effective filing date of the party and the party has filed a preliminary
statement alleging a date of invention prior to the date; or
(4) A motion ( 1.635) is filed showing good cause why a testimony
period should be set.
(d) Testimony, including any testimony to be taken abroad under
1.684, shall be taken and completed during the testimony periods set
under paragraph (a) of this section. A party seeking to extend the
period for taking testimony must comply with 1.635 and 1.645(a).
3. Section 1.684 is revised as follows:
1.684 Testimony in a foreign country.
(a) An examiner-in-chief may authorize testimony of a witness to be
taken in a foreign country. A party seeking to take testimony in a
foreign country shall, promptly after the testimony period is set, file
a motion ( 1.635):
(1) Naming the witness
(2) Describing the particular facts to which it is expected that the
witness will testify.
(3) Stating the grounds on which the moving party believes that the
witness will testify.
(4) Demonstrating that the expected testimony is relevant.
(5) Demonstrating that the testimony cannot be taken in this country
at all or cannot be taken in this country without hardship to the moving
party greatly exceeding the hardship to which all opposing parties will
be exposed by the taking of the testimony in a foreign country.
(6) Accompanied by an affidavit stating that the motion is made in
good faith and not for the purpose of delay or harassing any party.
(7) Accompanied by written interrogatories to be asked of the witness.
(b) Any opposition under 1.638(a) shall state any objection
to the written interrogatories and shall include any
cross-interrogatories to be asked of the witness. A reply under
1.638(b) may be filed and shall be limited to stating any objection to
any cross-interrogatories proposed in the opposition.
(c) If the motion is granted, taking of the testimony abroad must be
completed within the testimony period set under 1.651 or within such
time as may be set by the Examiner-in-Chief. The moving party shall be
responsible for obtaining answers to the interrogatories and
cross-interrogatories before an officer qualified to administer oaths in
the foreign country under the laws of the United States or the foreign
country. The officer shall prepare a transcript of the interrogatories,
cross-interrogatories, and recorded answers to the interrogatories and
cross-interrogatories and shall transmit the transcript to BOX
INTERFERENCE, Commissioner of Patents and Trademarks, Washington, DC
20231, with a certificate signed and sealed by the officer and showing:
(1) The witness was duly sworn by the officer before answering
the interrogatories and cross-interrogatories.
(2) The recorded answers are a true record of the answers given by
the witness to the interrogatories and cross-interrogatories.
(3) The name of the person by whom the answers were recorded and, if
not recorded by the officer, whether the answers were recorded in the
presence of the officer.
(4) The presence or absence of any party.
(5) The place, day, and hour that the answers were recorded.
(6) A copy of the recorded answers was read by or to the witness
before the witness signed the recorded answers and that the witness
signed the recorded answers in the presence of the officer. The officer
shall state the circumstances under which a witness refuses to read or
sign recorded answers.
(7) The officer is not disqualified under 1.674.
(d) If the parties agree in writing, the testimony may be taken
before the officer on oral deposition.
(e) A party taking testimony in a foreign country shall have the
burden of proving that false swearing in the giving of testimony is
punishable as perjury under the laws of the foreign country. Unless
false swearing in the giving of testimony before the officer shall be
punishable as perjury under the laws of the foreign country where
testimony is taken, the testimony shall be entitled to the same weight
as testimony taken in the United States. The weight of the testimony
shall be determined in each case.
Aug. 22, 1991 HARRY F. MANBECK, JR.
Assistant Secretary and
Commissioner
of Patents and Trademarks
[1136 OG 40]