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2308.02 Showing Under 37 CFR 1.608(b) - 2300 Interference Proceedings
2308.02 Showing Under 37 CFR 1.608(b)
The showing under 37 CFR 1.608(b) must be such as to show that the applicant is prima facie entitled to a judgment relative to the patentee. 35 U.S.C. 135(a) gives the Board jurisdiction in an interference proceeding over questions of both priority and patentability. Therefore, the 37 CFR 1.608(b) showing need not attempt to show prior invention by the applicant. Instead, it may demonstrate that the applicant would be entitled to a judgment against the patentee on a ground of unpatentability which does not apply to applicant's claims (as, for example, that the claims of the patent which will correspond to the count or counts are unpatentable over prior art or prior public use, or that the patent does not comply with 35 U.S.C. 112). Note, however, the last paragraph of this section.
An applicant in preparing affidavits or declarations under 37 CFR 1.608(b) to provoke an interference with a patentee whose effective U.S. filing date antedates the applicant's by more than 3 months, should have in mind the provisions of 37 CFR 1.617, and especially the following:
(A) After these affidavits or declarations are forwarded by the primary examiner for the declaration of an interference, they will be examined by an administrative patent judge.
(B) If the affidavits or declarations fail to establish that applicant would prima facie be entitled to a judgment relative to the patentee, an order will be issued concurrently with the notice of interference, requiring applicant to show cause why summary judgment should not be entered against the applicant.
(C) Additional evidence in response to such order will not be considered unless justified by a showing under the provisions of 37 CFR 1.617(b). If the applicant responds, the applicant must serve the patentee and any other opponents with a copy of the original showing under 37 CFR 1.608(b) and of the response, and they will be entitled to present their views with respect thereto ( 37 CFR 1.617(d)).
(D) All affidavits or declarations submitted must describe acts which the affiants performed or observed, or circumstances observed, such as structure used and results of use or test, except on a proper showing as provided in 37 CFR 1.608(b). Statements of conclusion, for example, that the invention of the counts was reduced to practice, are generally considered to be not acceptable. It should also be kept in mind that documentary exhibits which are not self-authenticated must be authenticated and discussed with particularity by an affiant having direct knowledge of the matters involved. However, it is not necessary that the exact date of conception or reduction to practice be revealed in the affidavits, declarations, or exhibits if the affidavits or declarations aver observation of the necessary acts and facts, including documentation when available, before the patentee's effective filing date. On the other hand, where reliance is placed upon diligence, the affidavits or declarations and documentation should be precise as to dates from a date just prior to patentee's effective filing date. The showing should relate to the essential factors in the determination of the question of priority of invention as set out in 35 U.S.C. 102(g).
(E) The explanation required by 37 CFR 1.608(b) should be in the nature of a brief or of explanatory remarks accompanying an amendment. The explanation should set forth the manner in which the requirements of the counts are satisfied and how the requirements for conception, reduction to practice, or diligence are met, or otherwise explain the basis on which the applicant is prima facie entitled to a judgment.
(F) Published decisions of the Court of Appeals for the Federal Circuit, Court of Customs and Patent Appeals and the Board of Patent Interferences concerning the quantum of proof required by an applicant to make out a prima facie showing entitling the applicant to an award of priority with respect to the filing date of a patent so as to allow the interference to proceed, 37 CFR 1.617(a), second sentence, include Schendel v. Curtis, 83 F.3d 1399, 38 USPQ2d 1743 (Fed. Cir. 1996); Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989); Wetmore v. Quick, 536 F.2d 937, 190 USPQ 223 (CCPA 1976); Golota v. Strom, 489 F.2d 1287, 180 USPQ 396 (CCPA 1974); Schwab v. Pittman, 451 F.2d 637, 172 USPQ 69 (CCPA 1971); Kistler v. Weber, 412 F.2d 280, 162 USPQ 214 (CCPA 1969); Azar v. Burns, 188 USPQ 601 (Bd. Pat. Int. 1975); Horvitz v. Pritchard, 182 USPQ 505 (Bd. Pat. Int. 1974); and Murphy v. Eiseman, 166 USPQ 149 (Bd. Pat. Int. 1970).
As noted above, the evaluation of a showing under 37 CFR 1.608(b) is made by an administrative patent judge. However, when a showing under 37 CFR 1.608(b) is filed, the examiner must inspect it to determine whether the applicant is relying upon prior invention or unpatentability as a basis for the showing. If the applicant alleges prior invention, the examiner should merely determine that (A) at least one date prior to the effective filing date of the patent is alleged and (B) the showing contains at least one affidavit or declaration by a corroborating witness, i.e., by someone other than a named inventor. If these conditions are met the examiner should proceed to propose the interference as described in MPEP § 2309. If the showing is based on alleged unpatentability of the patent claim or claims, the examiner should determine whether any ground of unpatentability alleged is such that it would also apply to the applicant; for example, if the applicant alleges that the claims of the patent are statutorily barred by a reference which would also be a bar to the applicant. If the examiner finds that an alleged ground of unpatentability would also apply to the applicant, the interference should not be proposed and the applicant's claims which are drawn to the same invention as the claims of the patent should be rejected on this admission of unpatentability, without regard to the merits of the matter. Compare Ex parte Grall, 202 USPQ 701 (Bd. App. 1978). Although the applicant may wish to contest the question of whether the common invention is patentable to the patentee, an interference cannot be declared unless the common invention is patentable to the applicant. Hilborn v. Dann, 546 F.2d 401, 192 USPQ 132 (CCPA 1976). If the alleged unpatentability is based on patents or printed publications, the applicant may still be able to file a request for reexamination of the patent under 35 U.S.C. 302.
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