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(3) For filing motions under rule 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 rule 204 (c) is deemed insufficient (rule 228) the notice of interference will not set the time schedule specified in paragraph (b) of this rule but will be accompanied by an order to show cause by the Board of Patent Interferences as provided by rule 228,

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 Office involving the matter or application or patent in which the conflicting interests exist.

211. Jurisdiction of interference. (a) Upon the institution and declaration of the interference, as provided in rule 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.

212. Suspension of ex parte prosecution. On declaration of the interference, ex parte prosecution of an application is suspended, 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 these rules. 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.

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INTERFERENCES: PRELIMINARY STATEMENT

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 rule will be restricted to his effective filing date. (Rule 223 (c).)

(a) The prelimi

216. Contents of the preliminary statement. nary 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 invention 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 rule and/or as to the first written description (paragraph (a)(2) of this rule) is made, a copy of such drawing and/or written description must be attached to the statement. (See rule 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.

217. Contents of the preliminary statement; invention made abroad. (a) When the invention was made abroad the fact specified by rule 216 (a) (1) to (6) are not required, and in lieu thereof there should be stated:

(1) When the invention was introduced into this country by or onꞌ 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 rule 216 (a) (1) to (6) and documentary attachments if the allegations relate to a drawing or written description.

(2) 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 rule 216 (a) (1) to (6).

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 (rule 207). (For extension of the time set see rule 245.)

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.

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 rule 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 error.

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 rule 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 rule 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 rule 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 writen description as required by rule 216(b), he will be restricted to his effective filing date as to that allegation unless such copy is admitted by motion under rule 222.

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

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 rule 226) or its benefit is sought by a motion filed in accordance with rule 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 rules 131, 202, and 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 (rule 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 the proof of service required by rule 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.

225. Failure of junior party to file statements or to overcome filing date of senior party. If a junior party to an interference fails to file a preliminary statement, or if his statement fails to overcome the prima facie case made by the filing date of the application of another party, judgment on the record will be entered against such junior party unless he has filed a motion under rule 231, within the time set for such motions, for some action in the interference or he has opposed a motion under rule 231 (a) (2), (3), (4), or (5). If such a motion has been timely filed but does not result in action in the interference which will remove the basis for a judgment on the record, such judgment on the record will be entered unless the motion related to matters which may be reviewed at final hearing under rule 258, and within 30 days of the decision disposing of the motion the junior party concerned rquests that final hearing be set to review such matter. Also, such a junior party may within such 30-day period request a final hearing to review such a matter raised by his opposition to a motion under rule 231(a) (2), (3), (4), or (5) which are granted over his opposition. (Amended June 25, 1973.)

226. Access to applications. After the mailing of the notices of interference each party will be permitted to see or obtain copies of each other's applications which are set out in the notices except for copies of affidavits or declarations filed under rules 131, 202, and 204 which shall be and remain sealed until preliminary statements are opened under rule 227, except as provided in rule 228 regarding affidavits or declarations under rule 204 (c).

227. Access to preliminary statements. (a) The preliminary statements shall be open to the inspection of the senior party, and of any junior party who himself filed a statement, after the date set for the serving of preliminary statements (rule 207 (b) (2)), but shall not be open to inspection prior to that time.

(b) A junior party who fails to file a preliminary statement shall not have access to the preliminary statement of any other party.

(c) If the interference be terminated before the preliminary statements have been opened to the inspection of the parties, the preliminary statements will remain sealed.

(d) After termination of an interference any unopened statements will be removed from the interference file and preserved by the Office, and in no case will such statements be open to the inspection of anyone (including opposing parties) without authority from the Commissioner.

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