Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 HUNTER ET AL.
Interference No. 101,047
April 12, 1990
Frederick M. Woodruff of Gravely, Lieder & Woodruff for Hunter et al.
Beveridge, DeGrande of Kline & Lunsford for Beissbarth
Ian A. Calvert
Acting pursuant to authority delegated by the Commissioner of Patents and
On March 13, 1990, Hunter et al filed a petition under 35 USC 135(c) (Paper No. 100), accompanied by a "Request for Review of Settlement Agreement Under 35 USC 135(c)"D' (Paper No. 98) and declaration of F.M. Woodruff (Paper No. 99). Hunter et al also filed a supplement to the petition (Paper No. 102) and a certificate of service (Paper No. 103) on March 21, 1990.
On July 11, 1986, Hunter et al filed a civil action under 35 USC 146 in the U.S. District Court for the District of Columbia, seeking reversal of an adverse decision of the Board of Patent Appeals and Interferences (Board). A paper entitled "Consent Order Constituting Final Judgment"D' (hereinafter "the judgment"D'), signed by the Judge and "Consented to"D' by counsel for both parties, was filed in the Court on June 27, 1989. The preamble and paragraph 6 of the order read:
Upon consideration of the various pleadings herein and the agreement of the parties to settle this litigation as evidenced by the signatures of their counsel to the stipulation annexed to this Consent Order:
IT IS HEREBY ORDERED, ADJUDGED, AND DECREED:
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6. Since the parties have represented to the Court that the defendant consents to reversal of the decision of the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office in view of the pretrial evidence which has established to the satisfaction of the defendants that the plaintiff's inventors, Mr. Lee Hunter and Mr. D. January, are entitled to priority of the subject matter of the counts in Interference No. 101,047, priority as to the counts as set forth in Exhibit A is hereby awarded to the plaintiff.
A certified copy of the judgment was filed with the Patent and Trademark Office (PTO) by Hunter et al on July 17, 1989, and by Beissbarth on October 13, 1989.
On January 22, 1990, Hunter et al filed under 35 USC 135(c) copies of three settlement agreements. These were returned by the Deputy Clerk of the Board on February 5, 1990 (Paper No. 96), for the following reasons:
This interference terminated on June 27, 1989, when the final judgment of the District Court was filed. MPEP § 2361. [FN1] Pursuant to 35 USC 135(c), a copy of any interference settlement agreement must be filed before the termination of the interference, or, if permitted by the Commissioner, during the six-month period subsequent to termination. Since the present paper was filed almost seven months after the termination of the interference, the agreement copies cannot be accepted.
*2 The present petition was then filed. Accompanying the petition are Exhibits 1, 2 and 3, which are copies of agreements between the parties' assignees. Two of the agreements were signed in August 1987, and the other in June 1989.
Petitioner asserts that Hunter et al complied with the requirements of 35 USC 135(c) by filing a certified copy of the judgment, which embodied a settlement agreement between the parties. It is not apparent, however, how the submission of the copy of the judgment is relevant to the timeliness of the filing of Exhibits 1, 2 and 3, which are copies of other agreements between the parties. The requirements of 35 USC 135(c) apply to every agreement between the parties "'made in connection with or in contemplation of the termination of the interference."D' Assuming arguendo that the judgment constituted such an agreement [FN2] and that it was timely filed, that does not relieve the parties from having to also timely file copies of any other settlement agreements (i.e., Exhibits 1, 2 and 3).
Petitioner also states in essence that the interference terminated in the PTO when the Notice of Allowability was issued by the primary examiner on July 31, 1989. However, the date on which an interference terminates is as specified in MPEP § 2361 and is not affected by any subsequent ex parte action of the examiner.
The Deputy Clerk's holding that the agreement copies were submitted more than six months after termination of the interference was fully in accordance with the established practice set forth in MPEP § 2361. It is noted, however, that effective August 20, 1989, 37 CFR 1.197(c) was amended to provide that, with regard to ex parte proceedings, "A civil action [under 35 USC 145] is terminated when the time to appeal the judgment expires."D' See 54 F.R. 29248, 29552 (July 13, 1989), 1105 O.G. 5, 9 (August 1, 1989). Since it is considered desirable that the same criterion be applied in determining the termination date of both ex parte cases under 35 USC 145 and inter partes cases under 35 USC 146, the last sentence of MPEP § 2361, quoted in note 1, supra, will no longer be followed. Instead, consistent with 37 CFR 1.197(c) as amended, if a civil action under 35 USC 146 is filed and the district court's decision is not appealed, the interference will be considered terminated as of the date that the time to appeal the decision expires.
In the present case, since the judgment was filed on June 27, 1989, the time to appeal expired on July 27, 1989, thirty days later. See 28 USC 2107. The filing of the copies of the three agreements on January 22, 1990, was therefore within six months after the termination of the interference. Since it is considered that petitioner has made a sufficient showing of good cause to satisfy the requirements of the statute, the petition is granted, and the agreement copies are accepted.
FN1. The last sentence of MPEP § 2361 provides:
If a civil action is filed, and the decision of the district court is not appealed, the interference terminates on the date of the court's decision.
FN2. The judgment is somewhat confusing in that its preamble refers to an "'annexed"D' stipulation, but no stipulation was attached to either of the certified copies filed by the parties.
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