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2358 Final Decision - 2300 Interference Proceedings
2358 Final Decision
37 CFR 1.658 Final decision.
(a) After final hearing, the Board shall enter a decision resolving the issues raised at final hearing. The decision may enter judgment, in whole or in part, remand the interference to an administrative patent judge for further proceedings, or take further action not inconsistent with law. A judgment as to a count shall state whether or not each party is entitled to a patent containing the claims in the party's patent or application which correspond to the count. When the Board enters a decision awarding judgment as to all counts, the decision shall be regarded as a final decision for the purpose of judicial review ( 35 U.S.C. 141- 144, 146) unless a request for reconsideration under paragraph (b) of this section is timely filed.
(b) Any request for reconsideration of a decision under paragraph (a) of this section shall be filed within one month after the date of the decision. The request for reconsideration shall specify with particularity the points believed to have been misapprehended or overlooked in rendering the decision. Any opposition to a request for reconsideration shall be filed within 14 days of the date of service of the request for reconsideration. Service of the request for reconsideration shall be by hand or Express Mail. The Board shall enter a decision on the request for reconsideration. If the Board shall be of the opinion that the decision on the request for reconsideration significantly modifies its original decision under paragraph (a) of this section, the Board may designate the decision on the request for reconsideration as a new decision. A decision on reconsideration is a final decision for the purpose of judicial review ( 35 U.S.C. 141- 144, 146).
(c) A judgment in an interference settles all issues which (1) were raised and decided in the interference, (2) could have been properly raised and decided in the interference by a motion under § 1.633 (a) through (d) and (f) through (j) or § 1.634, and (3) could have been properly raised and decided in an additional interference with a motion under § 1.633(e). A losing party who could have properly moved, but failed to move, under § 1.633 or 1.634, shall be estopped to take ex parte or inter partes action in the Patent and Trademark Office after the interference which is inconsistent with that party's failure to properly move, except that a losing party shall not be estopped with respect to any claims which correspond, or properly could have corresponded, to a count as to which that party was awarded a favorable judgment.
In its final decision, the Board can (A) enter judgment, in whole or in part, (B) remand the interference to an administrative patent judge or (C) take further action not inconsistent with law.
A judgment as to a count will state whether or not each party is entitled to a patent containing claims which correspond to the count. When judgment is entered as to all counts, the decision of the Board is considered final for the purpose of judicial review. A judgment that does not resolve all counts or that remands the interference for further proceedings is not final for purposes of judicial review and not immediately appealable to the courts. 37 CFR 1.658(c) defines the doctrine of interference estoppel as it is to be applied in the USPTO after an interference is terminated. See MPEP § 2363.03. The definition of interference estoppel is designed to encourage parties in interference cases to settle as many issues as possible in one proceeding. 37 CFR 1.658(c) creates an estoppel both as to senior and junior parties. An estoppel will not apply with respect to any claims which correspond, or which properly could have corresponded, to a count as to which the party is awarded a favorable judgment.
After the Board has rendered a final decision in an interference, the losing party may either appeal to the Court of Appeals for the Federal Circuit, under 35 U.S.C. 141, or file a civil action in a United States district court, under 35 U.S.C. 146. Upon the filing of an appeal to the Court of Appeals for the Federal Circuit, the opposing party may elect to have the proceeding conducted in a district court. (The USPTO may, but normally does not, issue the application of a winning party in an interference involving only applications, notwithstanding the filing of a civil action under 35 U.S.C. 146 by the losing party. See Monaco v. Watson, 270 F.2d 335, 122 USPQ 564 (D.C. Cir. 1959).) See MPEP § 1216.
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