Corroboration For Priority.Affirming the Patent and Trademark Office's Board of Patent Appeals and Interferences The Board of Patent Appeals and Interferences (BPAI) is a body of the United States Patent and Trademark Office (USPTO), which decides issues of patentability. If an applicant for an invention cannot convince a patent examiner that they are entitled to their claims, then the (the Board), the U.S. Court of Appeals for the Federal Circuit provided specific guidance concerning the sufficiency of corroborating evidence corroborating evidence n. evidence which strengthens, adds to, or confirms already existing evidence. for establishing reduction to practice in the context of interference practice. In re Harold R. Garner, Case No. 07-1221 (Fed. Cir., Dec. 5, 2007) (Moore, J.). The patent applicant, Harold R. Garner, provoked an interference with an earlier-filed patent application after it was cited against him during prosecution of his patent application. To do this, Garner amended his application to copy the claims of the senior application and submitted evidence under Rule 202(d) that he had reduced his invention to practice before the senior application's effective filing date. The Board granted the interference request, but determined that Garner's initial filing for priority was insufficient. Moreover, Garner's attempt to remedy the deficiency by submitting additional evidence of priority was procedurally flawed because it was untimely. Only after the Board issued an order to show cause as to why judgment should not be entered against Garner in the interference did he proffer To offer or tender, as, the production of a document and offer of the same in evidence. proffer v. to offer evidence in a trial. three important evidentiary items: the specification of his provisional application Under United States patent law, a provisional application for patent is a type of national application for patent filed in the United States Patent and Trademark Office (USPTO), but which does not mature into an issued patent unless further steps are taken by the applicant. ; the specification of his utility application; a 37 C.F.R. s.1.131 declaration that he had filed during prosecution. The Board rejected these items as "new evidence" under Rule 202 concerning interference proceedings and refused to consider them because they were not part of Garner's original filing. Without sufficient evidence of an earlier reduction to practice to establish priority, the Board issued judgment against Garner. On appeal, the Federal Circuit first considered whether Garner's evidence was untimely. The Court first acknowledged that the U.S. Patent and Trademark Office (USPTO USPTO abbr. United States Patent and Trademark Office ) is entitled to substantial deference in interpreting its own regulations. Even so, the Court concluded that the Board's interpretation of "new evidence" was inconsistent with Rule 202 because it resulted in different treatment of patent specifications under different subsections of that rule. To be consistent with other subsections of the rule, the Court held that Garner's provisional and utility patent specifications were not "new matter" because they were in his original patent application filings. Accordingly, Garner was permitted to rely on these pieces of evidence, but he was not permitted to rely on the s.1.131 declaration. Nevertheless, the Court affirmed the Board's adverse decision regarding whether the evidence was sufficient to show corroboration of reduction to practice. Even with his patent specifications in evidence, Garner's submissions to the Board did not sufficiently corroborate To support or enhance the believability of a fact or assertion by the presentation of additional information that confirms the truthfulness of the item. The testimony of a witness is corroborated if subsequent evidence, such as a coroner's report or the testimony of other his claim of actual reduction to practice. At most, the evidence corroborated cor·rob·o·rate tr.v. cor·rob·o·rat·ed, cor·rob·o·rat·ing, cor·rob·o·rates To strengthen or support with other evidence; make more certain. See Synonyms at confirm. the existence of a device, but that is insufficient. Quoting its own decision in Cooper v. Goldfarb, the Court noted that the law does not require that every point of a reduction to practice be independently corroborated. However, the Court found corroboration of the existence of Garner's device insufficient to establish corroboration of reduction to practice without corroboration that the device worked for its intended purpose. Thus, the Court held that the Board's failure to consider Garner's additional evidence amounted to harmless error The legal doctrine of harmless error is found in the Federal Rules of Criminal Procedure, extensive case law, and state statutes. It comes into use when a litigant appeals the decision of a judge or jury, arguing that an error of law was made at trial that resulted in an incorrect and affirmed the Board's Judgment that Garner failed to make a prima facie [Latin, On the first appearance.] A fact presumed to be true unless it is disproved. In common parlance the term prima facie is used to describe the apparent nature of something upon initial observation. showing of priority. Practice Note: First, be sure to include all corroborating evidence of priority in your original Rule 202(d) filing for interference. Second, ensure the evidence you submit shows not only the existence of the invention, but also that it worked for its intended purpose. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. Ms Tiffany Scurry McDermott Will & Emery 2049 Century Park East 34th Floor Los Angeles Los Angeles (lôs ăn`jələs, lŏs, ăn`jəlēz'), city (1990 pop. 3,485,398), seat of Los Angeles co., S Calif.; inc. 1850. California 90067-3208 UNITED STATES United States, officially United States of America, republic (2005 est. pop. 295,734,000), 3,539,227 sq mi (9,166,598 sq km), North America. The United States is the world's third largest country in population and the fourth largest country in area. E-mail: pdevinsky@mwe.com URL URL in full Uniform Resource Locator Address of a resource on the Internet. The resource can be any type of file stored on a server, such as a Web page, a text file, a graphics file, or an application program. : www.mwe.com Click Here for related articles (c) Mondaq Ltd, 2008 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com |
|
||||||||||||||||
Printer friendly
Cite/link
Email
Feedback
Reader Opinion