or a civil action (§ 1.304) except: (1) Where claims stand allowed in an application or (2) where the nature of the decision requires further action by the examiner. In such cases, the date of termination of proceedings is the date on which the appeal is dismissed or the date on which the time for appeal to the court or review by civil action (§ 1.304) expires. If an appeal to the court or a civil action has been filed, proceedings are similarly considered terminated when the appeal or civil action is terminated.

[41 FR 757, Jan. 5, 1976, 44 FR 29184, May 29, 1981 and 47 FR 33086, July 30, 1982, effective Oct. 1, 1982]

§ 1.198 Reopening after decision.

Cases which have been decided by the Board of Appeals will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.196 without the written authority of the Commissioner, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

INTERFERENCES: DEFINITION, PREPARATION, DECLARATION AUTHORITY: Secs. 1.201 to 1.212 also issued under 35 U.S.C. 135.

§ 1.201 Definition, when declared.

(a) An interference is a proceeding instituted for the purpose of determining the question of priority of invention between two or more parties claiming substantially the same patentable invention and may be instituted as soon as it is determined that common patentable subject matter is claimed in a plurality of applications or in an application and a patent.

(b) An interference will be declared between pending applications for patent, or for reissue, of different parties when such applications contain claims for substantially the same invention, which are allowable in the application of each party, and interferences will also be declared between pending applications for patent, or for reissue, and unexpired original or reissued patents, of different parties, when such applications and patents contain claims for substantially the same invention which are allowable in all of the applications involved, in accordance with the provisions of the regulations in this part.

(c) Interferences will not be declared nor continued, between applications or applications and patents owned by the same party unless good cause is shown therefor. The parties shall make known any and all right, title, and interest affecting the ownership of any application or patent involved or essential to the proceedings, not recorded in the Patent and Trademark Office, when an interference is declared, and of changes in such right, title, or interest, made after the declaration of the interference and before the ex

piration of the time prescribed for seeking review of the decision in the interference.

§ 1.202 Preparation for interference between applications; preliminary inquiry of junior applicant.

In order to ascertain whether any question of priority arises between applications which appear to interfere and are otherwise ready to be prepared for interference, any junior applicant may be called upon to state in writing under oath or declaration the date and the character of the earliest fact or act, susceptible of proof, which can be relied upon to establish conception of the invention under consideration for the purpose of establishing priority of invention. The statement filed in compliance with this section will be retained by the Patent and Trademark Office separate from the application file and if an interference is declared will be opened simultaneously with the preliminary statement of the party filing the same. In case the junior applicant makes no reply within the time specified, not less than thirty days, or if the earliest date alleged is subsequent to the filing date of the senior party, the interference ordinarily will not be declared.

[24 FR 10332, Dec. 22, 1959, and 34 FR 18858, Nov. 26, 1969]

§ 1.203 Preparation for interference between applications; suggestion of claims for interference.

(a) Before the declaration of interference it must be determined by the examiner that there is common subject matter in the cases of the respective parties, patentable to each of the respective parties, subject to the determination of the question of priority. Claims in the same language, to form the counts of the interference, must be present or be presented, in each application; except that, in cases where, owing to the nature of the disclosures in the respective applications, it is not possible for all applications to properly include a claim in identical phraseology to define the common invention, an interference may be declared, with the approval of the Commissioner, using as a count representing the interfering subject matter a claim differing from the corresponding claims of one or more of the interfering applications, by an immaterial limitation or variation.

(b) When the claims of two or more applications differ in phraseology, but relate to substantially the same patentable subject matter, the examiner shall, if it has been determined that an interference should be declared, suggest to the parties such claims as are necessary to cover the common invention in the same language. The parties to whom the claims are suggested will be required to make those claims (i.e., present the suggested claims in their applications by amendment) within a specified time, not less than 30 days,

in order that an interference may be declared. The failure or refusal of any applicant to make any claim suggested within the time specified shall be taken without further action as a disclaimer of the invention covered by that claim unless the time be extended.

(c) The suggestion of claims for purpose of interference will not stay the period for response to an Office action which may be running against an application, unless the claims are made by the applicant within the time specified for making the claims.

(d) When an applicant presents a claim in his application (not suggested by the examiner as specified in this section) which is copied from some other application, either for purpose of interference or otherwise, he must so state, at the time he presents the claim and identify the other application.

[24 FR 10332, Dec. 22, 1959, and 30 FR 6645, May 14, 1965]

§ 1.204 Interference with a patent; affidavit or declaration by junior applicant. (a) The fact that one of the parties has already obtained a patent will not prevent an interference. Although the Commissioner has no power to cancel a patent, he may grant another patent for the same invention to a person who, in the interference, proves himself to be the prior inventor.

(b) When the effective filing date of an applicant is three months or less subsequent to the effective filing date of a patentee, the applicant, before the interference will be declared, shall file an affidavit or declaration that he made the invention in controversy in this country before the effective filing date of the patentee, or that his acts in this country with respect to the invention were sufficient to establish priority of invention relative to the effective filing date of the patentee.

(c) When the effective filing date of an applicant is more than 3 months subsequent to the effective filing date of the patentee, the applicant, before the interference will be declared, shall file two copies of affidavits or declarations by himself, if possible, and by one or more corroborating witnesses, supported by documentary evidence if available, each setting out a factual description of acts and circumstances performed or observed by the affiant, which collectively would prima facie entitle him to an award of priority with respect to the effective filing date of the patent. This showing must be accompanied by an explanation of the basis on which he believes that the facts set forth would overcome the effective filing date of the patent. Failure to satisfy the provisions of this section may result in summary judgment against the applicant under § 1.228. Upon a showing of sufficient cause, an affidavit or declaration on information and belief as to the expected

testimony of a witness whose testimony is necessary to overcome the filing date of the patent may be accepted in lieu of an affidavit or declaration by such witness. If the examiner finds the case to be otherwise in condition for the declaration of an interference he will consider this material only to the extent of determining whether a date prior to the effective filing date of the patent is alleged, and if so, the interference will be declared. (See also § 1.228.)

[24 FR 10332, Dec. 22, 1959, 29 FR 15866, Nov. 26, 1964; 34 FR 12629, Aug. 2, 1969; and 34 FR 18858, Nov. 26, 1969]

§ 1.205 Interference with a patent; copying claims from patent.

(a) Before an interference will be declared with a patent, the applicant must present in his application, copies of all of the claims of the patent which also define his invention and such claims must be patentable in the application. However, an interference may be declared after copying the claims excluding an immaterial limitation or variation if such immaterial limitation or variation is not clearly supported in the application or if the applicant otherwise makes a statisfactory showing in justification thereof.

(b) Where an applicant presents a claim copied or substantially copied from a patent, he must, at the time he presents the claim, identify the patent, give the number of the patented claim, and specifically apply the terms of the copied claim to his own disclosure, unless the claim is copied in response to a suggestion by the Office. The examiner will call to the Commissioner's attention any instance of the filing of an application or the presentation of an amendment copying or substantially copying claims from a patent without calling attention to that fact and identifying the patent.

(c) A notice that one or more claims of a patent have been copied or substantially copied by an applicant will be placed in the file of the patent, and a copy of said notice will be sent to the patentee. However, the identity of the applicant will not be disclosed to the patentee unless an interference is declared. If a final decision is made not to declare an interference, a notice to that effect will also be placed in the file of the patent and sent to the pat

entee.

[24 FR 10332, Dec. 22, 1959, 30 FR 6645, May 14, 1965; and 43 FR 28478, June 30, 1978]

§ 1.206 Interference with a patent; claims improperly copied.

(a) Where claims are copied from a patent and the examiner is of the opinion that the applicant can make only some of the claims so copied, he shall notify the applicant to that effect, state why he is of the opinion the applicant cannot make the other claims and state further that the in

terference will be promptly declared. The applicant may proceed under § 1.231 if he desires to further contest his right to make the claims not included in the declaration of the interference.

(b) Where the examiner is of the opinion that none of the claims can be made, he shall reject the copied claims stating in his action why the applicant cannot make the claims and set a time limit, not less than 30 days, for reply. If, after response by the applicant, the rejection is made final, a similar time limit shall be set for appeal. Failure to respond or appeal, as the case may be, within the time fixed will, in the absence of a satisfactory showing, be deemed a disclaimer of the invention claimed.

[30 FR 6645, May 14, 1965]

§ 1.207 Preparation of interference papers and declaration of interference.

(a) When an interference is found to exist and the applications are in condition therefor, the primary examiner shall forward the files to the Board of Patent Interferences together with a statement indicating the claims of each applicant or patentee which are to form the respective counts of the interference and also indicating whether any party is entitled to the benefit of the filing date of any prior application as to the subject matter in issue, and, if so, identifying such application.

(b) A patent interference examiner will institute and declare the interference by forwarding notices to the several parties to the proceeding. Each notice shall include the name and residence of each of the other parties and those of his attorney or agent, and of any assignee, and will identify the application of each opposing party by serial number and filing date, or in the case of a patentee by the number and date of the patent. The notices shall also specify the issue of the interference, which shall be clearly and concisely defined in only as many counts as may be necessary to define the interfering subject matter (but in the case of an interference with a patent all the claims of the patent which can be made by the applicant should constitute the counts), and shall indicate the claim or claims of the respective cases corresponding to the count or counts. If the primary examiner has indicated that the patent or application of any party included in the interference is entitled to the benefit of the filing date of any prior applications as to the subject matter in issue, the notices shall so state and shall specify such prior applications. Except as noted in paragraph (e) of this section, the notices shall also set a schedule of times for taking various actions as follows:

(1) For filing the preliminary statements required by § 1.215 and serving notice of such filing, not less than 2 months from the date of declaration.

(2) For each party who files a prelimi

nary statement to serve a copy thereof on each opposing party who also files a preliminary statement as required by § 1.215(b), not less that 15 days after the expiration of the time for filing preliminary statements.

(3) For filing motions under § 1.231, not less than 4 months from declaration.

(c) The notices of interference shall be forwarded by the patent interference examiner to all the parties, in care of their attorneys or agents; a copy of the notices will also be sent the patentees in person and, if the patent in interference has been assigned, to the assignees.

(d) When the notices sent in the interest of a patent are returned to the Office undelivered, or when one of the parties resides abroad and his agent in the United States is unknown, additional notice may be given by publication in the Official Gazette for such period of time as the Commissioner may direct.

(e) In a case where the showing required by § 1.204(c) is deemed insufficient (§ 1.228) the notice of interference will not set the time schedule specified in paragraph (b) of this section but will be accompanied by an order to show cause by the Board of Patent Interferences as provided by § 1.228.

[30 FR 6645, May 14, 1965, and 43 FR 28478, June 30, 1978]

§ 1.208 Conflicting parties having same attorney.

Whenever it shall be found that two or more parties whose interests appear to be in conflict are represented by the same attorney or agent, the examiner shall notify each of said principal parties and the attorney or agent of this fact, and shall also call the matter to the attention of the Commissioner. If conflicting interests exist, the same attorney or agent or his associates will not be recognized to represent either of the parties whose interests are in conflict without the consent of the other party or in the absence of special circumstances requiring such representation, in further proceedings before the Patent and Trademark Office involving the matter or application or patent in which the conflicting interests exist.

§ 1.211 Jurisdiction of interference.

(a) Upon the institution and declaration of the interference, as provided in § 1.207, the Board of Patent Interferences will take jurisdiction of the same, which will then become a contested case.

(b) The primary examiner will retain jurisdiction of the case until the declaration of interference is made.

[30 FR 6645, May 14, 1965]

§ 1.212 Suspension of ex parte prosecution.

On declaration of the interference, ex parte prosecution of an application is sus

pended, and amendments and other papers received during the pendency of the interference will not be entered or considered without the consent of the Commissioner, except as provided by the regulations in this part. Proposed amendments directed toward the declaration of an interference with another party will be considered to the extent necessary. Ex parte prosecution as to specified matters may be continued concurrently with the interference, on order from or with the consent of the Commissioner.

INTERFERENCES: PRELIMINARY

STATEMENT

AUTHORITY: Secs. 1.215 to 1.228 also issued under 35 U.S.C. 135.

§ 1.215 Preliminary statement required. (a) Each party to the interference will be required to file a concise preliminary statement giving certain facts and dates, on or before a date fixed by the Office. The preliminary statement must be signed and sworn to or made in the form of a declaration, by the inventor but in appropriate circumstances, as when the inventor is dead or a showing is made of inability to obtain a statement from the inventor, the preliminary statement may be made by the personal representative or assignee or by someone authorized or entitled to make the statement and having knowledge of the facts.

(b) A party who files a preliminary statement shall at the same time notify all opposing parties of that fact and by the time set for that purpose he shall serve a copy of his preliminary statement and all attached documents on every opposing party from whom he has received notification of the filing of a statement.

(c) A party who fails to serve a copy of his preliminary statement as required in paragraph (b) of this section will be restricted to his effective filing date. (See § 1.223(c).)

[30 FR 6645, May 14, 1965, 34 FR 12630, Aug. 2, 1969; and 34 FR 18858, Nov. 26, 1969]

§ 1.216 Contents of the preliminary state

ment.

(a) The preliminary statement must state that the party made the invention set forth by each count of the interference, and whether the invention was made in the United States or abroad. When the invention was made in the United States the preliminary statement must set forth as to the invention defined by each count the following facts:

(1) The date upon which the first drawing of the invention was made; if a drawing of the invention has not been made prior to the filing date of the application, it must be so stated.

(2) The date upon which the first written description of the invention was made; if a written description of the in

vention has not been made prior to the filing date of the application, it must be so stated.

(3) The date upon which the invention was first disclosed to another person; if the invention was not disclosed to another person prior to the filing date of the application, it must be so stated.

(4) The date of the first act or acts susceptible of proof (other than making a drawing or written description or disclosing the invention to another person) which, if proven, would establish conception of the invention, and a brief description of such act or acts; if there have been no such acts, it must be so stated.

(5) The date of the actual reduction to practice of the invention; if the invention has not been actually reduced to practice before the filing date of the application, it must be so stated.

(6) The date after conception of the invention when active exercise of reasonable diligence toward reducing the invention to practice began.

(b) When an allegation as to the first drawing (paragraph (a)(1) of this section) and/or as to the first written description (paragraph (a)(2) of this section) is made, a copy of such drawing and/or written description must be attached to the statement. (See § 1.223(c).)

(c) If a party intends to rely solely on a prior application, domestic or foreign, and on no other evidence, the preliminary statement may so state and need not be signed or sworn to or declaration made by the inventor.

[30 FR 6646, May 14, 1965, 34 FR 12630, Aug. 2, 1969; and 34 FR 18858, Nov. 26, 1969]

§ 1.217 Contents of the preliminary statement; invention made abroad.

When the invention was made abroad the facts specified by § 1.216(a) (1) to (6) are not required, and in lieu thereof there should be stated:

(a) When the invention was introduced into this country by or on behalf of the party, giving the circumstances with the dates connected therewith which are relied upon to establish the fact and, when appropriate, including allegations of activity in this country of the nature of that represented by § 1.216(a) (1) to (6) and documentary attachments if the allegations relate to a drawing or written description. Such statement may be signed and sworn to, or made in the form of a declaration, either by the inventor or by one authorized to make the statement and having knowledge of the facts alleged therein.

(b) If a party is entitled to the benefit of the second sentence of 35 U.S.C. 104, he must so state and his preliminary statement must include allegations of activity abroad corresponding to those required by § 1.216(a) (1) to (6).

[43 FR 28478, June 30, 1978; and 43 FR 57886, Dec. 11, 1978]

§ 1.218 Time for filing preliminary statement.

The time for filing the preliminary statement is ordinarily specified in the notices of interference mailed to the parties (§ 1.207). (For extension of the time set see § 1.245.)

[30 FR 6646, May 14, 1965]

§ 1.219 Statements sealed before filing.

The statement must be filed in a sealed envelope bearing the name of the party filing it and the number and title of the interference. The envelope should contain nothing but this statement and if mailed should be enclosed in an outer envelope. The statements may be opened only by an examiner of interferences.

§ 1.222 Correction of statement on motion.

In case of material error arising through inadvertence or mistake, the statement or attachments may be corrected or omitted attachments may be supplied on motion (see § 1.243), upon a satisfactory showing that such action is essential to the ends of justice. The motion must be made, if possible, before the taking of any testimony, and as soon as practicable after the discovery of the er

ror.

[34 FR 12630, Aug. 2, 1969]

§ 1.223 Effect of statement.

(a) The preliminary statement should be carefully prepared, as a party will not be allowed to amend his statement in any way except by motion under § 1.222, and any doubts as to definiteness or sufficiency of any allegation or compliance with formal requirements will be resolved against the party concerned by restriction to his effective filing date or to the latest date of a period alleged as may be appropriate. Prior to final hearing a party will not be notified of any defect in his statement except that a junior party, subject to restriction resulting from such a defect and by virtue of that restriction being subject to judgment under § 1.225, will be notified of that defect and also notified that judgment on the record will be entered against him at the expiration of a time set, not less than 30 days, unless cause be shown why judgment should not be entered. Each of the parties by whom or on whose behalf a preliminary statement is made will be strictly held in his proofs to the dates set forth therein. This includes joint applicants or patentees; a new preliminary statement will not be received in the event the application is amended or the patent is corrected to remove the names of those not inventors, nor will a preliminary statement alleging different dates be received if an application is amended or a patent is corrected to include a joint inventor, except by motion under § 1.222.

(b) If a party proves any date earlier than alleged in his preliminary statement, such proof will be held to establish the date so alleged and none earlier.

(c) If a party to an interference fails to file a statement, testimony will not be received subsequently from him to prove that he made the invention at a date prior to his effective filing date. If a party alleges in his statement a date of first drawing or first written description but does not attach a copy of such drawing or written description as required by § 1.216 (b), he will be restricted to his effective filing date as to that allegation unless such copy is admitted by motion under § 1.222. The content of a drawing or written description attached to the statement normally will not be considered by the Office.

(d) The preliminary statement can in no case be used as evidence in behalf of the party making it.

[24 FR 10332, Dec. 22, 1959, 34 FR 12630, Aug. 2, 1969; and 43 FR 28478, June 30, 1978] § 1.224 Reliance on prior application.

A party will not be permitted to rely on any prior application to obtain the benefit of its filing date unless the prior application is specified in the notice of interference (see § 1.226) or its benefit is sought by a motion filed in accordance with § 1.231. In the latter case, complete copies of the contents of the application file the benefit of which is sought, except affidavits or declarations under §§ 1.131, 1.202, and 1.204, must be served on all opposing parties with the motion, and in the case of a foreign application the necessary papers to prove a date of priority under 35 U.S.C. 119 including a translation where required (§ 1.55), must be filed and copies served on all opposing parties with the motion except for such papers as were of record in the involved application when the interference was declared. In either case proof of service required by § 1.247 must include reference to the prior application as well as the motion or, in the case of the stated exception, note that the papers in question were of record when the interference was declared.

[34 FR 12630, Aug. 2, 1969, and 34 FR 18858, Nov. 26, 1969]

§ 1.225 Failure of junior party to file statements or to overcome filing date of senior party.

(a) If a junior party to an interference fails to file a preliminary statement, or if his statement fails to overcome the effective filing date of another party, judgment on the record will be entered against that junior party unless:

(1) Under the provisions of § 1.258(a), he would be entitled to raise before the Board of Patent Interferences a matter which is ancillary to priority and which, if decided in his favor, would remove the