F.M.W. v. D.A.T.

INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION
The opinion in support of the decision being entered
today is binding precedent of the Interference Trial
Section of the Board of Patent Appeals and
Interferences. The opinion is otherwise not binding
precedent. The decision was entered on 23 December
1998.
Paper No. 4
Filed by: Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
F.M.W.,
Junior Party,
(Patents A,AAA,AAA and B,BBB,BBB),
v.
D.A.T.,
Senior Party
(Application CC/DDD,DDD).
_______________
Patent Interferences 104,BBB and 104,CCC
_______________
Before: McKELVEY, Senior Administrative Patent Judge, and
SCHAFER and LEE, Administrative Patent Judges.
McKELVEY, Senior Administrative Patent Judge.
MEMORANDUM OPINION AND ORDER

We are aware that members of the bar have referred to a "black hole"	1
from which "undeclared interferences" are unable to "escape." The "black hole"
time period begins when an examiner signs a Form PTO 850 and ends when an
interference is declared. The time period consists of two time periods. The
first begins when the examiner signs the 850 and ends when the papers reach the
board. The second time period begins when the papers reach the board and ends
when the interference has been declared. Creation of the Trial Section has
essentially eliminated the second time period. We understand that the Patent
Corps is making every effort to essentially eliminate the first time period. In
the future, the period between the signing of the 850 and declaration of the
interference hopefully will be minimal.
Interferences declared: 27. Missing parts reports issued: 70. The	2
number of missing parts reports and interferences declared do not add to 80
because proposed interferences have been received since the creation of the Trial
Section.
It is the standard practice of the Trial Section to notify the	3
practitioners of record when a proposed interference is returned to a Technology
Center with a missing parts report for corrective action.
Use of a standardized NOTICE DECLARING INTERFERENCE is in response to	4
complaints by practitioners (including the second practitioner mentioned
hereinafter) that different administrative patent judges used different
- 2 -
A. Discussion
A Trial Section of the Board of Patent Appeals and
Interferences was established in October of this year for the
purpose of handling interference cases up to final hearing. 1217
Off. Gaz. Pat. & Tm. Office 18 (Dec. 1, 1998). Immediately upon
its establishment, the Trial Section set out to eliminate a
backlog of approximately 80 proposed interferences which had been
forwarded to the board by the Technology Centers, but which had
not been declared. As of the date of this MEMORANDUM OPINION	1
AND ORDER, the backlog has essentially been eliminated through
declarations of interferences or remands with a "missing parts
report" to the Technology Centers for corrective action.	2 3
When an interference is declared, the Trial Section uses a
standardized NOTICE DECLARING INTERFERENCE. The notice requires	4

declaration notices.
NOTICE DECLARING INTERFERENCE, Paragraph 7.	5
NOTICE DECLARING INTERFERENCE, Paragraph 8.	6
NOTICE DECLARING INTERFERENCE, Paragraph 9.	7
- 3 -
that certain ministerial acts be taken within standardized
established time periods. For example, the notice requires a
party within fourteen (14) days to (1) identify a lead and backup
counsel, (2) identify the real party in interest and (3) place	5 6
an order for copies of files.7
These two interferences were declared on December 16, 1998.
The administrative patent judge who entered the NOTICE
DECLARING INTERFERENCE on behalf of the board overlooked the fact
that the due dates were going to fall during a holiday period
when using the standard NOTICE DECLARING INTERFERENCES.
On December 23, 1998, documents styled JUNIOR PARTY
NOTICE #1 (Paper 3) were received by facsimile for each of
Interference 104,BBB and Interference 104,CCC. The fax documents
were sent by a first practitioner associated with the patent
department of the assignee of the junior party.
The junior party fax documents point out that (1) the
certain periods for taking action set out in the NOTICE DECLARING
INTERFERENCE make numerous documents due fourteen days after the
interferences were declared, which turns out to be December 30,
1998, and (2) December 30, 1998, falls during a holiday period
during which practitioners are said not to be present in the

According to a publication of the PTO, there were over 20 registered	8
practitioners giving as their address the address of the assignee of the junior
party. Attorneys and Agents Registered to Practice before the U.S. Patent and
Trademark Office (1996).
- 4 -
patent department of the assignee of the junior party. The
administrative patent judge who declared the interference would
have had no way of knowing that no practitioner would be
available in the rather large patent department of the assignee	8
of the junior party.
The junior party fax documents also point out that the
junior party "appears to have no vital interest in this
interference, as far as *** [the first practitioner submitting
the documents] is presently informed, and thus [the junior party]
does not presently intend to respond ***" (Paper 3, page 3).
Under the circumstances, we believe that it would be
appropriate to reset the time for complying with those
requirements of the NOTICE DECLARING INTERFERENCE which presently
make papers due on December 30, 1998. The interference rules are
to "be construed to secure the just, speedy, and inexpensive
determination of every interference." 37 CFR § 1.601. In
addition, and in particular to save the senior party applicant
any unnecessary expense, we will set a time period for the junior
party to determine whether it wishes to file a request for entry
of an adverse judgment. 37 CFR § 1.662(a). Papers otherwise due
can be filed after the junior party determines whether it wishes
to file requests for entry of adverse judgment. A time will also

- 5 -
be set for filing preliminary statements--the effective filing
date difference between the senior and junior party is over 4
years.
B. Observation
The tone of the fax documents (Paper 3) is emotional, as
opposed to objective. The facts manifestly could have been set
out in a straightforward, non-emotional manner, and an extension
of time could have been requested. 37 CFR § 1.645.
The times set in the NOTICE DECLARING INTERFERENCE were set
in good faith--a fact which we would hope the first practitioner
would have understood. However, the tone of the fax documents
suggest that the first practitioner feels otherwise. The
documents required to be filed by December 30, 1998, are
ministerial in nature and in no way involve any substantive
issue. Hence, we are truly surprised by the tone of the fax
documents. The first practitioner's attention is directed to
37 CFR § 1.3 which provides that practitioners are to conduct
business with the Patent and Trademark Office "with decorum ***."
C. Ex parte e-mail communication
We also make of record an e-mail communication sent to the
administrative patent judge designated to handle these
interferences by a second practitioner associated with the patent
department of the assignee junior party. We note that the e-mail

- 6 -
communication was sent to the personal e-mail address, and not
the USPTO e-mail address, of the administrative patent judge
designated to handle the interference. The e-mail communication
also was copied to Chief Administrative Patent Judge Stoner at
his USPTO e-mail address. Insofar as we can tell from the
record, the e-mail communication was not forwarded to the
attorney of record for the senior party, thus making the e-mail
communication an ex parte communication.
The e-mail communication can be viewed as supplementing
arguments made in the electronic copies of the documents
(Paper 3), in which case the e-mail communication is an improper
ex parte communication in an interference. On the other hand, it
is possible to review the e-mail communication as calling
attention to a general problem in interference cases.
We will give the second practitioner the benefit of the
doubt. We will assume that the second practitioner was
attempting to call attention to a general problem associated with
the use of the Trial Section's standard NOTICE DECLARING
INTERFERENCE in such a manner as to make papers, albeit papers
ministerial in nature, due during a holiday period.
Nevertheless, in light of the ex parte nature of the e-mail
communication, we call attention to A.S. v. B.R., Interference
104,AAA (Paper 10) (Bd. Pat. App. & Int. Dec. 2, 1998), which is
available on the PTO web page at
http://www.uspto.gov/web/offices/dcom/bpai/its.htm.

- 7 -
D. Order
Upon consideration of the record, and for the reasons given,
it is
ORDERED that the junior party shall have until
January 14, 1999, within which to file a request for entry of
adverse judgment (if the junior party be so advised).
FURTHER ORDERED that if the junior party does not file
a request for entry of adverse judgment on or before January 14,
1999, then both parties shall have until January 22, 1999, within
which to comply with the requirements of the NOTICE DECLARING
INTERFERENCE which would otherwise be due before January 22,
1999.
FURTHER ORDERED that preliminary statements shall be
filed, and notices that a preliminary statement has been filed
shall be filed and served, on or before March 11, 1999, subject
to the time and date being further changed by the administrative
patent judge designated to handle these interferences.
FURTHER ORDERED that the telephone conference call
scheduled for 2:30 p.m. on February 17, 1999, is rescheduled for
2:30 p.m. on March 16, 1999 (the call will be initiated from the
PTO), subject to the time and date being further changed by the

- 8 -
administrative patent judge designated to handle these
interferences.
FURTHER ORDERED that a copy of this opinion without
identifying the parties or practitioners shall be published.
FURTHER ORDERED that the Clerk shall mail a copy of
this MEMORANDUM OPINION AND ORDER to the attorney of record for
the senior party and to both the first and second practitioners
associated with the junior party.
______________________________
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
______________________________)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
JAMESON LEE )
Administrative Patent Judge )

- 9 -
cc (via Fax and First Class Mail):
Attorney for F.M.W.
Attorney for D.A.T.
Enc: E-mail communication mentioned in the opinion