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Simplification of Certain Requirements in Patent Interference Practice

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United States Patent and Trademark Office, Commerce.


Final rule.


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.


December 26, 2000.

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Fred McKelvey or Richard Torczon at 703-308-9797.

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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.


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. Start Printed Page 70490

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).

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.).

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List of Subjects in 37 CFR Part 1

  • Administrative practice and procedure
  • Inventions and patents
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For the reasons stated in the preamble, the United States Patent and Trademark Office amends 37 CFR Part 1 as follows:

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1. Amend the authority citation for 37 CFR Part 1 to read as follows:

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Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

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2. Amend § 1.601(f) to revise paragraph (f) to read as follows:

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Scope of rules, definitions.
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(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.

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3. Revise § 1.606 to read as follows:

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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.

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4. Amend § 1.671 to revise paragraphs (a) and (e) to read as follows:

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Evidence must comply with rules.

(a) Evidence consists of affidavits, transcripts of depositions, documents and things.

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(e) A party may not rely on an affidavit (including exhibits), patent, or printed publication previously submitted by the party under § 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 § 1.640(b), § 1.640(e)(3), or § 1.672, as appropriate.

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Dated: 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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[FR Doc. 00-30015 Filed 11-22-00; 8:45 am]