by leaving the senior party subject to a possible subsequent
attack by the junior party which the senior party is prepared to
defend at this time. In other words, the time for O'Young to
establish priority vis-a-vis Powers is now--not at some time in
the future.
O'Young says that it has made no determination on the merits
that Powers is the first inventor. O'Young was under no
obligation to do so as a condition precedent to filing a request
for an adverse judgment. However, entry of an adverse judgment
based on a request for entry of a judgment is considered by the
United States Patent and Trademark Office (USPTO) as a judgment
on the merits. Upon entry of an adverse judgment, insofar as the
United States Patent and Trademark Office (USPTO) is concerned in
connection with the examination of the Powers application,
O'Young is not a prior inventor vis-a-vis Powers and the USPTO is
free to issue a patent to Powers notwithstanding the O'Young
patent. Likewise, upon entry of an adverse judgment, the
estoppel provisions of 37 CFR § 1.658(c) [Rule 658(c)] would
apply to O'Young, e.g., in reissue proceeding seeking to reissue
the O'Young patent involved in the interference.
Entry of an adverse judgment based on a request for entry of
an adverse judgment is discretionary--Rule 662(a) says the board
"may" enter an adverse judgment. Based on the record before us,
we are not entirely sure whether O'Young would have requested
entry of an adverse judgment had O'Young understood the
consequences of its request. Nevertheless, in view of Texaco's
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007