Opened to in

spection.

In default.

Notice amend.

to

connected therewith, which are relied upon to establish the fact.

The preliminary statements should be carefully prepared, as the parties will be strictly held in their proofs to the dates set up therein.

If a party prove any date earlier than alleged in his preliminary statement, such proof will be held to establish the date alleged and none other.

The statement must be sealed up before filing (to be opened only by the examiner of interferences; see Rule 111), and the name of the party filing it, the title of the case, and the subject of the invention indicated on the envelope. The envelope should contain nothing but this statement.

(For forms, see 36 and 37, Appendix.)

111. The preliminary statements shall not be opened to the inspection of the opposing parties until each one shall have been filed, or the time for such filing, with any extension thereof, shall have expired, and not then unless they have been examined by the proper officer and found to be satisfactory.

Any party in default in filing his preliminary statement shall not have access to the preliminary statement or statements of his opponent or opponents until he has either filed his statement or waived his right thereto, and agreed to stand upon his record date.

112. If, on examination, a statement is found to be defective in any particular, the party shall be notified of the defect and wherein it consists, and a time assigned within which he must cure the same by an amended statement; but in no case will the original or amended statement be returned to the party after it has been filed. Unopened Unopened statements will be removed from interference files and preserved by the office, and in no case will such statements be open to the inspection of the opposing party without authority from the Commissioner. If a party shall refuse to file an amended statement he may stricted to his record date in the further proceedings in the interference.

statement.

amend.

be re

Motion to 113. In case of material error arising through inadvertence or mistake, the statement may be corrected on motion (see Rule 153), upon a satisfactory showing that the correction is essential to the ends of justice. The motion to correct the statement must be made, if possible,

before the taking of any testimony, and as soon as practicable after the discovery of the error.

Failure to file

Failure to overcome prima facie

114. If the junior party to an interference, or if any preliminary party thereto other than the senior party, fails to file a statement. statement, or if his statement fails to overcome the prima come facie case made by the respective dates of application, such party will be notified by the examiner of interfer ences that judgment upon the record will be rendered against him at the expiration of thirty days, unless cause is shown why such action should not be taken. Within this. period any of the motions permitted by the rules may be brought. Motions brought after judgment on the record has been rendered will not be entertained unless sufficient reasons appear for the delay.

testimony exinvention prior

date.

to order of inven

115. If a party to an interference fail to file a statement, Failure to file testimony will not be received subsequently from him to cluded setting up prove that he made the invention at a date prior to his to application application. 116. In original proceedings in cases of interference the Presumption as several parties will be presumed to have made the inven- tion. tion in the chronological order in which they filed their completed applications for patents clearly illustrating and describing the invention; and the burden of proof will rest upon the party who shall seek to establish a different state of facts.

evidence.

117. The preliminary statement can in no case be used statement not as evidence in behalf of the party making it.

118. Times will be assigned in which the junior applicant, Time for tak shall complete his testimony in chief, and in which the other party shall complete the testimony on his side, and a further time in which the junior applicant may take rebutting testimony; but he shall take no other testimony. If there be more than two parties to the interference, the times for taking testimony will be so arranged that each shall have an opportunity to prove his case against prior applicants and to rebut their evidence, and also to meet the evidence of junior applicants.

119. Whenever the time for taking the testimony of a party to an interference shall have expired, and no testimony shall have been taken by such party, any senior party may, by motion based on a proper showing and served on such party in default, have an order entering judgment against such defaulting party, unless the latter shall, at a day set and not less than ten days after the

Failure to take testimony.

Postponement

of hearing.

Enlargement of time for taking

hearing of the motion, show good and sufficient cause why the judgment shall not be entered.

120. If either party desire to have the hearing continued, he will make application for such postponement by motion (see Rule 153), and will show sufficient reason therefor by affidavit.

121. If either party desire an extension of the time astestimony. signed to him for taking testimony, he will make application therefor, as provided in Rule 154 (4).

solve for irregu

entability, etc.

grounds.

Motion to dis- 122. Motions to dissolve an interference (1) upon the larity, nonpat- ground that there has been such informality in declaring the same as will preclude a proper determination of the question of priority of invention, or (2) which deny the patentability of an applicant's claim, or (3) which deny his right to make the claim, or (4) which allege that counts of the issue have different meanings in the cases of differStatement of ent parties should contain a full statement of the grounds relied upon, and should, if possible, be made not later than the thirtieth day after the statements of the parties have been received and approved. Such motions, and all motions of a similar character, should be accompanied by a Motion to trans- motion to transmit the same to the primary examiner, and such motion to transmit should be noticed for hearing upon a day certain before the examiner of interferences. When in proper form the motion presented will be transmitted by the examiner of interferences, with the files and papers, to the proper primary examiner for his determination, who will thereupon fix a day certain when the said motion will be heard before him upon the merits, and give notice thereof to all the parties. If a stay of proceedings be desired, a motion therefor should accompany the motion for transmission.

mit.

Motions to effect stay of proceedings.

When the motion has been decided by the primary examiner the files and papers, with his decision, will be sent at once to the docket clerk.

Motions to shift the burden of proof should be made before, and will be determined by, the examiner of interferences. No appeal from the decision on such motions will be entertained, but the matter may be reviewed on appeal from the final decision upon the question of priority of invention.

123. All lawful motions, except those mentioned in Rule 122, will be made before and determined by the tribunal having jurisdiction at the time. The filing of motions will not operate as a stay of proceedings in any case. To effect

this, motion should be made before the tribunal having jurisdiction of the interference, who will, sufficient grounds appearing therefor, order a suspension of the interference pending the determination of such motion.

missioner and

chief.

124. Where, on motion for dissolution, the primary ex- Appeal to Comaminer renders an adverse decision upon the merits of a examiners-inparty's case, as when he holds that the issue is not patentable or that a party has no right to make a claim or that the counts of the issue have different meanings in the cases of different parties, he shall at once reject such claims as may be affected and shall set a time for reconsideration; after reconsideration, if he adheres to his original conclusion, he will make the previous rejection final and fix a limit of appeal. The appeal must go to the examiners-inchief in the first instance and will be heard inter partes. If the appeal is not taken within the time fixed, it will not be entertained except by permission of the Commissioner.

No appeal will be permitted from a decision rendered upon motion for dissolution affirming the patentability of a claim or the applicant's right to make the same or the identity of meaning of counts in the cases of different parties.

Appeals may be taken directly to the Commissioner, except in the cases provided for in the preceding portions of this rule, from decisions on such motions as, in his judgment, should be appealable.

Determination,

125. After the interference is finally declared, it will not, except as herein otherwise provided, be determined without judgment of priority founded either upon the testimony, or upon a written concession of priority by one of Concession of the parties, signed by the inventor himself (and by the assignee, if any), or upon a written declaration of abandonment of the invention.

priority.

126. The examiner of interferences or the examiners-in- Statutory bar suggested. chief may, either before or in their decision on the question of priority, direct the attention of the Commissioner to any matter not relating to priority which may have come to their notice, and which, in their opinion, establishes the fact that no interference exists, or that there has been irregularity in declaring the same (Rule 122), or which amounts to a statutory bar to the grant of a patent to either of the parties for the claim or claims in interference. The Commissioner How determay, before judgment on the question of priority, suspend the interference and remand the case to the primary examiner for his consideration of the matters to which attention

mined.

Second interference.

interference for

new references.

has been directed. From the decision of the examiner appeal may be taken as in other cases. If the case shall not be so remanded, the primary examiner will, after judgment, consider any matter affecting the rights of either party to a patent which may have been called to his attention, unless the same shall have been previously disposed of by the Commissioner.

127. A second interference will not be declared upon a new application for the same invention filed by either party. Suspension of 128. If, during the pendency of an interference, a referconsideration of ence be found, the interference may be suspended at the request of the primary examiner until the final determination of the pertinency and effect of the reference, and the interference shall then be dissolved or continued as the result of such determination. The consideration of such reference shall be inter partes.

new parties.

For addition of 129. If, during the pendency of an interference, another case appear, claiming substantially the subject-matter in issue, the primary examiner shall request the suspension of the interference for the purpose of adding said case. Such suspension will be granted as a matter of course by the examiner of interferences if no testimony has been taken. If, however, any testimony has been taken, a notice for the proposed new party, disclosing the issue in interference and the names and addresses of the interferants and of their attorneys, and notices for the interferants disclosing the name and address of the said party and his attorney, shall be prepared by the primary examiner and forwarded to the examiner of interferences, who shall mail said notices and set a time of hearing on the question of the admission of the new party. If the examiner of interferences be of the opinion that the interference should be suspended and the new party added, he shall prescribe the terms for such suspension. The decision of the examiner of interferences as to the addition of a party shall be final.

Nonpatentability at final hearing.

130. Where the patentability of a claim to an opponent is material to the right of a party to a patent, said party may urge the nonpatentability of the claim to his opponent at final hearing before the examiner of interferences as a basis for the decision upon priority of invention, and upon appeals from such decision. A party shall not be entitled to take such step, however, unless he has duly presented and prosecuted a motion under Rule 122 for dissolution upon the ground in question, or shows good reason why such a motion was not presented and prosecuted.