1308 (Fed. Cir. 1989), parties involved in interferences,
including now Livak, have continually told us that we have to
decide patentability when it (1) is raised, (2) fully briefed and
(3) evidence has been submitted.
Section § 135(a) itself says that the board "may" determine
questions of patentability. A review of legislative activity
leading up to the 1984 amendment 7 to § 135(a) should convincingly
demonstrate that "may" does not mean "shall".
H.R. 6286, 98th Cong., 2d Sess., § 202 (Sept. 20, 1984), as
introduced by then Congressman Kastenmeier, sought to amend
§ 135(a) and provided that "The Board of Patent Appeals and
Interferences shall determine questions of priority of the
inventions and may determine questions of patentability."
(Emphasis added). On the other hand, S. 1538, 98th Cong., 2d
Sess., § 14(a) (Calendar No. 1016) (June 23, 1983), as introduced
by then Senator Mathias,8 also sought to amend § 135(a) and
provided that "The Board of Patent Appeals and Interferences
shall determine the priority and patentability of invention in
interferences." (Emphasis added). A similar provision appeared
in S. 1535, 98th Cong., 1st Sess., § 19(a) (Calendar No. 1330)
(June 23, 1983).9 Ultimately, the House, as opposed to the
Senate, version of the amendment to § 135(a) became law.
7 Patent Law Amendments Act of 1984, Pub. L. No. 98-622, §§ 201-207, 98
Stat. 3383, 3386-89 (1984).
8 Reported by Senator Thurmond on June 26, 1984.
9 Reported by Senator Thurmond on October 5, 1984.
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