Patent cases: Interference proceedings; consideration of interlocutory rulings,

[Federal Register: March 16, 1999 (Volume 64, Number 50)]

[Rules and Regulations]

[Page 12900-12902]

From the Federal Register Online via GPO Access [wais.access.gpo.gov]

[DOCID:fr16mr99-8]

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket #: 990204043-9043-01]

RIN 0651-AB03

Consideration of Interlocutory Rulings at Final Hearing in Interference Proceedings

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Interim rule with request for comments.

SUMMARY: The Patent and Trademark Office (Office) is amending its interference regulations to clarify the standard under which the Board of Patent Appeals and Interferences (Board) considers interlocutory decisions entered by a single administrative patent judge (APJ) at the time of the final hearing.

DATES: Effective Date: March 16, 1999.

Comment Deadline Date: Written comments must be received on or before

[[Page 12901]]

May 17, 1999. No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail over the Internet to ``Interference.Rules@uspto.gov'' and should include ``Rule 655(a)'' in the subject line. Comments may also be submitted by mail addressed to BOX INTERFERENCE, Commissioner of Patents and Trademarks, Washington, DC 20231, or by facsimile to (703) 305-0942, marked to the attention of Fred McKelvey or Richard Torczon. The Office prefers to receive comments by electronic mail via the Internet. Where comments are submitted by mail, please include an electronic copy of the comments on a DOS-formatted 3\1/2\ inch diskette in addition to a paper copy.

The comments will be available for public inspection in Room 10C10 of Crystal Gateway, 1225 Jefferson Davis Highway, Arlington, Virginia, and will be available through anonymous file transfer protocol (ftp) via the Internet (address: ftp.uspto.gov). Since comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Fred McKelvey or Richard Torczon by telephone at (703) 308-9797, or by mail addressed to: BOX INTERFERENCE, Commissioner of Patents and Trademarks, Washington, DC 20231, or by facsimile to (703) 305-0942, marked to the attention of Mr. McKelvey or Mr. Torczon.

SUPPLEMENTARY INFORMATION: The Patent and Trademark Office has for some time received inquiries from members of the bar with respect to the meaning of Rule 655(a). In particular, the Patent and Trademark Office has received inquiries concerning the application of the abuse of discretion standard by a merits panel of the Board when considering an interlocutory order entered by a single administrative patent judge during the interlocutory phase of an interference. The purpose of this notice of interim rule is to clarify Rule 655(a). This clarification should eliminate unnecessary issues from arising in interference cases and should provide the public with more certainty as to how matters will be considered. The notice will also make practice within the Board more uniform.

Any final decision in an interference is entered by a panel of at least three members of the Board. Rule 655(a), as currently worded, gives the impression that the abuse of discretion standard is to be applied by a merits panel for all interlocutory orders, including those involving the merits of the interference, e.g., patentability or attempts to obtain benefit of an earlier filedapplication. The rule is amended to emphasize that a panel of the Board will resolve the merits of an interference as a panel without deference to any interlocutory order. Panels will, however, continue to apply the abuse of discretion standard, but only with respect to procedural orders. No list could completely detail which issues are procedural, but examples would include granting or denying an extension of time, granting or denying additional discovery under 37 CFR 1.687(c), dismissing a motion for failure to comply with the rules and setting of times to take action in an interference, and determining the dates for conference calls.

For the convenience of the reader, the precise changes being made to Sec. 1.655(a) are reproduced in the following paragraph, with deleted text in brackets and added text underlined:

(a) In rendering a final decision, the Board may consider any properly raised issue, including priority of invention, derivation by an opponent from a party who fileda preliminary statement under Sec. 1.625 of this title, patentability of the invention, admissibility of evidence, any interlocutory matter deferred to final hearing, and any other matter necessary to resolve the interference. The Board may also consider whether [entry of any] an interlocutory order [was an abuse of discretion] should be modified.

[All interlocutory orders shall be presumed to have been correct, and the] The burden of showing [an abuse of discretion] that an interlocutory order should be modified shall be on the party attacking the order. [When two or more interlocutory orders involve the same issue, the last entered order shall be presumed to have been correct.] The abuse of discretion standard shall apply only to procedural matters.

Interested members of the public are invited to present written comments on the change to Sec. 1.655(a) contained in this Interim Rule.

Other Considerations

An interim final rule is appropriate under the present circumstances for at least two reasons. First, the rulemaking is procedural within the meaning of 5 U.S.C. 553(b)(A). Second, the Commissioner of Patents and Trademarks for good cause finds that notice and public procedure would be contrary to the public interest within the meaning of 5 U.S.C. 553(b)(B) because delay in the promulgation of this rule would perpetuate the burdens on parties seeking full consideration of interlocutory decisions at the time of the final hearing.

As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553, or any other law, the analytical requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., are inapplicable.

This rule involves no collection of information subject to the Paperwork Reduction Act, 44 U.S.C. ch. 35. Notwithstanding any other provision of law, no person is required to respond 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.

This rule does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 12612 (October 26, 1987).

This rule has been determined to be not significant for purposes of Executive Order 12866 (September 30, 1993).

List of Subjects in 37 CFR Part 1

Administrative practice and procedure, Courts, Freedom of Information, Inventions and patents, Reporting and record keeping requirements, Small Businesses.

For the reasons set forth in the preamble, 37 CFR part 1 is amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR part 1 continues to read as follows:

   Authority: 35 U.S.C. 6, unless otherwise noted.

2. Section 1.655 is amended by revising paragraph (a) to read as follows:

   Sec. 1.655 Matters considered in rendering a final decision.

   (a) In rendering a final decision, the Board may consider any properly raised issue, including priority of invention, derivation by an opponent from a party who fileda preliminary statement under Sec. 1.625, patentability of the invention, admissibility of evidence, any interlocutory matter deferred to final hearing, and any other matter necessary to resolve the interference. The Board may also consider whether an interlocutory order should be modified. The burden of showing that an interlocutory order should be modified shall be on the party attacking the order. The abuse of discretion standard shall apply only to procedural matters. * * * * *

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   Dated: March 10, 1999. Q. Todd Dickinson, Acting Assistant Secretary of Commerce and Acting Commissioner of Patents and Trademarks.

   [FR Doc. 99-6346Filed3-15-99; 8:45 am]

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