Interference No. 104,843 Paper 51
Kundu v. Ragunathan Page 12
[25] Alpharma and its counsel continued to review and revise Kundu’s application until it was
filed 21 January 2002 [0047]-[0049].
[26] Kundu filed its application about four months after Alpharma’s final request to prepare an
application on the invention of the count, about five months after Ragunathan’s 065
patent issued, about eight months after Alpharma and its counsel first discussed seeking
patent protection to a megestrol formulation, and about nine months after it was aware of
litigation over Par’s ANDA directed to MEGACEŽ, the product Alpharma was targeting
with its megestrol formulations.
DISCUSSION
A. Nature of the proceeding
Under Rule 608, an examiner may require a prospective junior party to show why it
would be entitled to a judgment on priority under 35 U.S.C. 102(g)(1) if the senior party does no
more than rely on its effective filing date.10 A Rule 617 proceeding is a relatively rare
interference proceeding in which the Board sua sponte explores problems in a junior party's
showing under Rule 608. Basmadjian v. Landry, 54 USPQ2d 1617, 1618-19 (BPAI 1997),
provides an extensive discussion of practice under Rule 617.
In the present case, Kundu provided a prima facie showing of an earlier actual reduction
to practice, but §102(g)(1) requires the prior inventor not to abandon, suppress, or conceal the
invention. The remarkable unexplained delay between Kundu’s reduction to practice and filing
10 The phrase "prima facie" is used in this context to indicate a showing that overcomes the senior party’s
effective date. It does not indicate a lowered threshold of proof on the question of priority. Basmadjian, 54 USPQ2d
at 1623.
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