involved in a "dissolved" interference could never be certain
when the interference might be "reinstated." A patent could
therefore, in effect, be held hostage indefinitely.
The exercise of the "may" discretion vested by Congress in
the board to determine when to decide patentability in an
interference should be exercised consistent with the objective of
Congress in amending § 135(a). Accordingly, and without
attempting to set down rigid rules for all time and all cases,
and as long as two parties are claiming the same patentable
invention, we agree with the Federal Circuit's Perkins dicta that
patentability generally should be decided--provided, of course,
the issue is fairly,12 timely13 and otherwise properly raised 14 by
the parties (37 CFR § 1.633(a)) or the board itself (37 CFR
§ 1.641).15
On the other hand, in a case like the one before us today,
i.e., where there is no interference-in-fact, the problem
Congress sought to overcome with the amendments to § 135(a)
cannot, and does not, exist. Livak and Han claim separate
patentable inventions. The Livak patent is no impediment to the
12 By "fairly" we mean that a preliminary or miscellaneous motion was
filed and served and that an opponent had an full opportunity to oppose the
motion.
13 By "timely" we mean that the motion was filed at a time when the board
had authorized motions to be filed. Thus, a party who files a preliminary
motion before times are set for filing preliminary motions or after the time
has expired for filing a preliminary motion has not "timely" filed the motion.
14 By "properly raised" we mean that the preliminary motion complies
(1) procedurally with the rules and the requirements of the Trial Section's
STANDING ORDER and (2) substantively with the requirements of law.
15 See In re Gartside, 203 F.3d 1305, 53 USPQ2d 1769 (Fed. Cir. 2000).
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