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720.04 Public Use Proceeding Testimony [R-2] - 700 Examination of Applications
720.04 Public Use Proceeding Testimony [R-2]
When the **>Office of Patent Legal Administration (OPLA) staff member< decides to institute public use proceedings, the application is referred to the examiner who will conduct all further proceedings. The fact that the affidavits or declarations and exhibits presented with the petition for institution of the public use proceedings have been held to make out a prima facie case does not mean that the statutory bar has been conclusively established. The statutory bar can only be established by testimony taken in accordance with normal rules of evidence, including the right of cross-examination. The affidavits or declarations are not to be considered part of the testimony and in no case can they be used as evidence on behalf of the party submitting them unless the affidavits or declarations are submitted as a part of the petitioner's testimony.
The procedure for taking testimony in a public use proceeding is similar to that for taking testimony in an interference. Normally, no representative of the *>Director of the USPTO< need be present at the taking of the testimony. Note that 37 CFR 1.672(a) limits noncompelled direct testimony to affidavits. See 37 CFR 1.601(b) for the meaning of affidavit.
The examiner will set a schedule of times for taking testimony and for filing the record and briefs on the basis of the following:
> I. < SCHEDULE FOR TESTIMONY
(A) Testimony for petitioner to close . . . . . . . . [specify a date, e.g., January 10, 1997, which is approximately 60 days after the letter]
(B) Time for the applicant to file objections to admissibility of petitioner's evidence to close . . . . . . . [specify a date which is approximately 20 days after date (A)]
(C) Time for the petitioner to file supplemental evidence to overcome objections to close 20 days from above date, i.e., . . . . . . . . . . . . . . . . . . . . . . . . . . . [specify a date which is exactly 20 days after date (B), unless the date is a Saturday, Sunday or federal holiday, in which case use the next business day]
(D) Time for the applicant to request cross-examination of the petitioner's affiants to close . . . . . . . . . [specify a date which is approximately 20 days after date (C)]
(E) Time for cross-examination of the petitioner's affiants to close . . . . . . . . . . . . . . . . . . . . . [specify a date which is approximately 30 days after date (D)]
(F) Rebuttal testimony by applicant to close . . . . . [specify a date which is approximately 20 days after date (E)]
> II. < SCHEDULE FOR FILING AND SERVING COPIES OF RECORD AND BRIEFS
One copy of each of the petitioner's and the applicant's record and exhibits (see 37 CFR 1.653) is due . . . . [specify a date which is approximately 30 days after date (F)]
Petitioner's brief is due . . . . . . . . . . . . . . . . . [specify a date which is approximately 30 days after previous date]
Applicant's brief is due . . . . . . . . . . . . . . . . [specify a date which is approximately 20 days after previous date]
Applicant and petitioner may agree on a different schedule for testimony, records, and briefs, provided the last brief is due no later than the date set forth above and provided a copy of the new schedule is filed by either applicant or petitioner. No extension of time will be permitted under 37 CFR 1.136(a). Any petition to extend the time for filing the last brief must be filed under 37 CFR 1.136(b).
A certified transcript of a deposition must be filed in the U.S. Patent and Trademark Office within one month after the date of deposition. 37 CFR 1.678.
All papers in the public use proceeding shall be served in accordance with 37 CFR 1.248.
It is understood from the above scheduling of times that a given time period begins with the close of the previous period, and that the completion of testimony or the filing of the record or a brief before the close of the corresponding period does not change its closing date. To avoid confusion, the examiner should indicate specific dates for the close of each period.
In ex parte cases and in inter partes cases where the pending application is a reissue, an oral hearing is ordinarily not held.
In all public use proceedings, whether the ultimate issue is anticipation under 35 U.S.C. 102(b) or obviousness over 35 U.S.C. 103, testimony will be limited to the issues of public use or on sale. No testimony will be received on whether the claimed subject matter would have been obvious over subject matter asserted to be in public use or on sale.
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