Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
KRAMER AND FISHER, JUNIOR PARTY PETITIONERS
v.
BALLARD, SENIOR PARTY RESPONDENT
Interference No. 101,884
February 6, 1989
Attorney for Petitioners
Anthony S. Volpe
Attorney for Respondent
Donald J. Bobak
Donald J. Quigg
Commissioner of
Patents and Trademarks
DECISION ON PETITION
*1 Petitioners
have filed a petition to the Commissioner pursuant to 37 CFR § 1.644(a)(1).
Proceedings on Petition
In this case, petitioners
filed the petition and respondent opposed on the merits. A panel of the board
thereafter entered an order which states:
On December 30, 1988,
Kramer et al. filed a Petition (Paper No. 60) to the Commissioner and a request
(Paper No. 63) for certification. On January 13, 1989, Kramer et al. filed a
supplemental petition (Paper No. 66). Ballard has filed an opposition to the
petition.
For the reasons stated
therein and in the absence of an opposition, the request for certification is
granted.
Section 1.644(a)(1)
requires an examiner-in-chief or a panel of the board to reach two conclusions
before a petition may be certified to the Commissioner. First, the
examiner-in-chief or panel must be of the opinion that the petition raises a
controlling question of procedure or an interpretation of a rule as to which there is a substantial
ground for a difference of opinion. Second, the examiner-in-chief or panel must
be of the opinion that an immediate decision on petition may materially advance
the ultimate termination of the interference.
These two
"opinions" are necessary to prevent "interlocutory"
petitions to the Commissioner thus disrupting the orderly prosecution of the
interference. Compare 37 CFR §
1.644(a)(2), which permits a petition only after entry of a final
decision in the interference. The notice of final rule makes clear that the
standard under § 1.644(a)(1) is the
same as that under 28 U.S.C. § 1292(b).
49 Fed.Reg. 48416, 48425 col. 3 (Dec. 12, 1984). In this case, the order of the
board certifying the questions expresses no opinion on either point required by
§ 1.644(a)(1). The mere fact that a
"respondent" does not oppose a petition is not per se a reason for
certifying a question raised in a petition. It will be assumed that the panel
believes the requirements of §
1.644(a)(1) are present in this case. [FN1]
When a petition is
certified by an examiner-in-chief or the board, the Commissioner will initially
decide whether to decide the certified questions on the merits or defer a
decision until after a final decision is rendered by the board. In this case,
the questions certified, particularly Question No. 1, raise issues which ought
to be resolved at this point in the interference. In view of the above, the
"certification" is accepted and the petition is granted to the extent that the two questions will be
considered on the merits.
QUESTION NO. 1
A. Background
*2 This
interference involves:
(1) an application
which names petitioners Kramer and Fisher as joint inventors and
(2) a patent which
names respondent Ballard as sole inventor.
Petitioners timely filed
a "preliminary motion" under 37 CFR § 1.633(a) contending that the respondent's claims corresponding to
the count are not patentable to respondent. The specific ground of
unpatentability alleged, while unusual, is not without precedent. In
particular, petitioners Kramer and Fisher contend that respondent Ballard is
not the inventor of the subject matter claimed in the Ballard patent. Rather
petitioners contend that the subject matter was jointly invented by petitioners
Kramer and Fisher and respondent Ballard. [FN2]
The examiner-in-chief
dismissed the preliminary motion. Petitioners then sought reconsideration by a
panel of the board. In its opinion in support of a decision denying
reconsideration, the panel states in relevant part:
[T]he request [for
reconsideration] states that the [preliminary] motion challenged the
patentability of the senior party's claims on the basis of non-inventorship, i.e.,
that Ballard is not the inventor, but is, at most, a joint inventor with the
junior party. The request [for reconsideration] contends that the question of
non-inventorship is a "distinctly different issue from priority of
invention and/or derivation" and that the dismissal of the motion as being
proscribed by 37 CFR 1.633(a) is in error. The request states that patents have
been held invalid under 35 U.S.C. 102(f) ...
***
In our view, the
[preliminary] motion insofar as it raises the issue of "non-inventorship" was properly
dismissed as not complying with 37 CFR 1.633(a). Clearly, the motion raises an
issue of priority because nowhere does the motion contend that a third person
other than Kramer, Fisher (Kramer's co-inventor) or Ballard is the inventor of
the Ballard patent. Even if the inventive entity of the Ballard patent were
incorrect as alleged, Ballard would be permitted to correct the inventorship
under the provisions of 35 U.S.C. 116, which are to be given a liberal
construction in favor of applicants....
Petitioners state that
the question which should be certified to the Commissioner is:
Is a preliminary motion
challenging the inventorship of the Senior Party's patent claims proper under
37 CFR § 1.633(a) where the Junior
Party asserts that the Senior Party is at most a joint inventor with the Junior
Party and the third party jointinventive entity is not a party to the
interference?
The question presented
would be more properly phrased as follows:
Does 37 CFR § 1.633(a) authorize a junior party to move
for judgment on the ground that the claims of the senior party are unpatentable
under 35 U.S.C. § 102(f) because the
invention defined by the senior party's claims corresponding to the count is
the joint invention of the junior and senior party?
*3 The question is
answered in the affirmative. Accordingly, the decision of the panel to the
contrary is set aside [FN3] and the matter will be remanded to the
examiner-in-chief for further proceedings consistent with the views expressed
in this opinion.
C. Discussion
Section 1.633(a)
authorizes the filing of a preliminary motion for judgment based on
patentability. There are two exceptions stated in the rule. First, the
preliminary motion cannot be based on "priority." 37 CFR § 1.633(a)(1). This simply means that a party
cannot establish priority through a §
1.633 motion. Second, a preliminary motion cannot be based on
"derivation." [FN4]
Neither exception
precludes a preliminary motion for judgment on the ground that the inventive
entity named in a patent or application "did not ... invent the subject
matter sought to be patented...." 35 U.S.C. § 102(f); Chisum, Patents, §
2.03 n. 1 and § 2.03[1] n. 1
(1988).
The issue presented in petitioners'
preliminary motion is not one of priority. Bloom v. Furczyk, 144 USPQ 678, 1965
Dec.Comm'r Pat. 81 (Bd.Int.1955). Bloom involved two applications:
(1) the junior party's
application named Bloom and Hovis as joint inventors and
(2) the senior party's
application named Furczyk and Henwood as joint inventors.
Upon consideration of all the evidence, the Board of Patent
Interferences found that the junior party had failed to establish priority.
Accordingly, it entered an award of priority in favor of the senior party.
[FN5] However, the award of priority did
not end the matter. Based on its assessment of the evidence, the Board of
Patent Interferences concluded that the invention defined by the count was the
joint invention of Bloom, Hovis, Furczyk, and Henwood. This conclusion,
however, could not support an "award of priority" against the senior
party. Rather, the Board of Patent Interferences made a recommendation to the
Commissioner "that claims corresponding to the counts be rejected in the
application of ... Furczyk and ... Henwood on the ground of nonjoinder of co-
inventors...." 144 USPQ at 686, 1965 Dec.Comm'r Pat. at 94. [FN6]
The rejection which the
Board of Patent Interferences recommended [FN7] in Bloom involves the same
issue of "patentability" which petitioners' preliminary motion sought
to raise in this case. [FN8] The preliminary motion did not contend that
petitioners Kramer and Fisher "made" the invention prior to
respondent Ballard. Rather, it contended that an inventive entity (e.g.,
Kramer, Fisher, and Ballard) not named in any application or patent involved in
the interference made the invention. If the allegations in the preliminary
motion are ultimately proved and correction of inventorship cannot be achieved,
judgment would be entered against both parties based on unpatentability--not
priority.
*4 An important
aspect of the "new" interference rules was to insure that all issues
would be raised at an earlier stage during the interference. As noted in the
notice issuing the final rules,:
the issues which will
be raised and decided by the Board at final hearing are made known during the
interlocutory stage through:
(a) The preliminary
statement,
(b) motions under
§ 1.633 and decisions thereon, and
(c) notices under
§ 1.632 of a party's intent to argue
abandonment.
49 Fed.Reg. at 48439, paragraph bridging cols. 1-2. The board's
decision does not explain how the issue petitioners are attempting to raise
with their § 1.633(a) preliminary
motion would be raised in the interference. As noted above, Bloom demonstrates
that the issue can arise in an interference and that the issue does not involve
"priority."
The board correctly
observed that the law provides a means for correcting improperly named
inventive entities. See 35 U.S.C. §
116, third paragraph, as to applications, and 35 U.S.C. § 256, first paragraph, as to patents.
Moreover, the board correctly observed that correction of inadvertent misnaming
of inventors should be liberally granted. Patterson v. Hauck, 341 F.2d 131, 144
USPQ 481 (CCPA 1965). However, at this point the board's statement that
"Ballard would be permitted to correct the inventorship" is
manifestly premature.
Petitioners are entitled
to a ruling on the merits of their preliminary motion. Petitioners and
respondent are entitled to attempt to correct inventorship if they can comply
with the statutory provisions. [FN9] The examiner-in-chief
in the first instance, and the board at final hearing, are empowered to
consider both the motion and any attempt to correct inventorship. On the other
hand, if the evidence shows that there was deceptive intent on the part of the
parties in misnaming inventors, it may enter judgment against both parties.
QUESTION NO. 2
Question No. 2, simply put,
is whether a party is entitled to file a "reply" to an
"opposition" [FN10] to a "request for reconsideration"
filed pursuant to 37 CFR § 1.640(c).
The answer in equally simple terms is "no." Accordingly, the
examiner-in-chief correctly refused to enter petitioners' reply and properly
returned the reply to petitioners.
Petitioners rely on 37
CFR § 1.638(b), which provides for a
reply to an opposition to a motion. Section 1.638(b), however, does not
authorize a reply to an opposition to a request for reconsideration. Rather, it
only authorizes a reply to an opposition to a motion. 49 Fed. Reg. at 48425,
col. 1, first full paragraph and 48442, col. 3, second full paragraph. The word
"opposition" in § 1.638(b) is
limited to the "opposition" mentioned in § 1.638(a). The term "motion" in § 1.638(a), however, does not include the
"request for reconsideration" mentioned in § 1.640(c).
Additional Matter
*5 Petitioners
have filed a "second reply" in these proceedings which warrants
discussion. The "second reply" is in response to respondent's
opposition to the petition and is styled RULE 638(b) REPLY TO THE OPPOSITION OF
SENIOR PARTY TO JUNIOR PARTY'S PETITION TO THE COMMISSIONER PURSUANT TO 37 CFR
§ 1.644 (received by the board on
January 23, 1989).
Section 1.644 provides
for a petition. It also provides for an opposition. It does not authorize any
"reply." Petitioners' reliance on §
1.638(b) for filing the "second reply" is misplaced. The word
"opposition" in § 1.638 does
not refer to an opposition filed under §
1.644(b), last sentence. Accordingly, the "second reply" to
the opposition to the petition will be returned as an unauthorized paper. 37
CFR § 1.618.
Decision
Question No. 1 is
answered in the affirmative.
Question No. 2 is answered
in the negative.
The petition is
granted-in-part.
FN1. Nothing in § 1.644(a)(1) or any other rule precludes an
examiner-in- chief or a panel from certifying, sua sponte, at any time during
an interference, and without a petition by a party, any question which the
examiner-in-chief or the panel believes should be determined by the
Commissioner.
FN2. Petitioners' preliminary motion would appear to concede that
the proper inventors are not named in the Kramer and Fisher application
involved in the interference. This fact does not render petitioners'
preliminary motion improper. See Collins, Current Patent Interference Practice,
§ 2.6[a], p. 29 (1987) (a motion for
judgment under § 1.633 on the grounds
of unpatentability could be made with respect to all parties, including the
moving party). See also Lamont v. Berguer, 7 USPQ 2d 1580 (Bd.Pat.App. &
Int.1988).
FN3. The "decision" being set aside is found in that
part of the board's opinion which appears in Section II of Paper No. 58, pp.
2-3 (Bd.Pat.App. & Int. Dec. 15, 1988).
FN4. In view of recent notices, there is a third ground which
cannot be raised with a preliminary motion under § 1.633(a), viz., "fraud" and "inequitable
conduct." See Commissioner's Notice of Sept. 8, 1988, Patent and Trademark
Office Implementation of 37 CFR 1.56,
reprinted in 1095 Off.Gaz.Pat.Office 16 (Oct. 11, 1988) and Commissioner's
Notice of October 17, 1988, Further Clarification on Patent and Trademark
Office Implementation of 37 CFR 1.56, reprinted in 1096 Off.Gaz.Pat.Office 19
(Nov. 8, 1988).
FN5. The "award of priority" was in reality a final
decision by the Patent Office that the junior party was not entitled to a
patent containing any claim corresponding to the count.
FN6. Bloom should be distinguished from Linkow v. Linkow and
Edelman, 517 F.2d 1165, 186 USPQ 223 (CCPA 1975). In Linkow the issue was
whether the invention defined by the count was the sole invention of senior
party inventive entity Linkow or junior party inventive entity Linkow and
Edelman. In Bloom, no application involved in the interference named the proper
inventive entity. If petitioners' preliminary motion is correct, the same is
true in this interference.
FN7. Sheffner v. Gallo, 515 F.2d 1169, 185 USPQ 726 (CCPA 1975),
establishes that the Board of Interferences acted properly in making a
recommendation and not awarding priority against Furczyk.
FN8. In this case it
would not be necessary for the board to make a recommendation under 37 CFR
1.659. Since the "new" interference rules permit the board to
consider issues of patentability, the "new" rules eliminate the need
for the board to make the kind of recommendation which the Board of Patent
Interferences was required to make in Bloom under the "old" rules.
FN9. See also 37 CFR § 1.48(a) and 37 CFR §
1.324.
FN10. An opposition to a request for reconsideration cannot be
filed as a matter of course. It may be filed only if an examiner-in-chief of
the board requests an opposition. In this case, the board requested an
opposition.
11 U.S.P.Q.2d 1148
END OF DOCUMENT