Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Interference No. 101,100
February 18, 1992
Pendegrass and Sofocleous
The following papers were filed by the parties subsequent to the final hearing in this "old" rule interference.:
1. Motion of Junior Party GB to Renew GB's Motion to Dissolve [etc.], filed November 26, 1991 (Paper No. 249);
2. Letter, filed by CR on December 12, 1991 (Paper No. 250);
3. CR opposition to item 1, filed December 12, 1991 (Paper No. 251);
4. GB reply to item 3, filed January 6, 1992 (Paper No. 252);
5. CR Opposition to GB Request for Board to Consider GB's Unauthorized Paper, filed January 10, 1992 (Paper No. 253).
On October 19, 1988, during the testimony stage of the proceeding, GB filed a motion under 37 CFR 1.231(a) (1984) (Paper No. 116) to dissolve the interference on the ground of inequitable conduct allegedly committed during the prosecution of the CR application, asserting that the evidentiary basis therefor did not arise until Dr. K's testimony. The motion was accompanied by a renewed motion for additional discovery (Paper No. 114), and both motions were supplemented by a paper filed on October 25, 1988 (Paper No. 118).
These two GB motions were dismissed by the Examiner-in-Chief on October 28, 1988 (Paper No. 119), in view of the Commissioner's Notices of September 8 and October 17, 1988 (1095 O.G. 16, Oct. 11, 1988, and 1096 O.G. 19, Nov. 8, 1988). In the latter notice, the Commissioner stated that this Office would not consider duty of disclosure issues in interferences.
In the instant motion under consideration (item 1), GB, notes the Commissioner's Notice of October 24, 1991 (1132 O.G. 33, Nov. 19, 1991), which provides that "Effective immediately, fraud and inequitable conduct issues will be considered when properly raised inter partes in patent interference cases." GB asks that in view of this notice, the issue of inequitable conduct raised in his dismissed motion to dissolve be considered, and that he be permitted to renew the motion to dissolve and motion for additional discovery, and to take additional testimony on the issue. CR opposes the motion, but in his letter (item 2) reserves the right to pursue his dismissed motion to dissolve (Paper No. 14), if GB's request to renew his motions is granted.
GB's reply (item 4) calls attention to the Chairman's Notice of November 14, 1991 (1133 O.G. 21, Dec. 10, 1991). In opposition (item 5), CR asserts that the reply is unauthorized under 37 CFR 1.243, (1984) and is belated with no excuse for its belatedness.
The GB reply (item 4) is in effect a supplemental motion, and is considered justified by the publication of the Chairman's Notice subsequent to the Commissioner's Notice. It will therefore be given consideration.
*2 The Chairman's Notice sets forth the policy applied by this Board in determining whether issues of fraud and/or inequitable conduct raised in a pending interference proceeding will be given consideration. It provides, inter alia:
Issues of fraud and/or inequitable conduct in an interference will be considered by the Board if:
1. They are raised by way of preliminary motion for judgment under 37 CFR 1.633(a). The motion must be filed during the period set for filing preliminary motions (37 CFR 1.636(a), or good cause (37 CFR 1.655(b)(3)) must be shown as to why the issues of fraud and/or inequitable conduct were not timely raised during the preliminary motion period.
Issues of fraud and/or inequitable conduct will not be considered in any interference in which the times for taking testimony or the times for filing briefs for final hearing have already been set, unless "good cause" is shown under 37 CFR 1.655(b)(3). See item 1 above. An example of good cause would be where fraud or inequitable conduct is first discovered during taking of testimony.
GB contends that he has met the above-quoted criteria for consideration of his charge of inequitable conduct. We do not agree.
The Chairman's Notice operates prospectively, not retrospectively. In the present case, the GB motions to dissolve and for additional discovery are not currently pending, but rather were dismissed shortly after promulgation of the Commissioner's Notices, supra, in 1988. Having been thus dismissed, they cannot now be revived or renewed.
The GB motion (item 1) is denied.
BOARD OF PATENT APPEALS AND INTERFERENCES
FN1. At the direction of the Commissioner of Patents and Trademarks, the names of the parties and the names of all individuals mentioned in the opinion have been changed to pseudonyms.
a. An incorrect version of this notice was previously published at 1132 O.G. 48, Nov. 26, 1991. See 1133 O.G. 117, Dec. 31, 1991.
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