Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 52
inequitable conduct issues. PTO policy, effective October 24, 1991, is that fraud and
inequitable conduct issues will be considered when properly raised inter partes in
patent interference cases, 1132 Off. Gaz. Pat. Off. 33 (November 19, 1991); GIB v. CR,
23 LISP62d 1158, 1159 (Bd. Pat. App. & Int. 1992).
A subsequent notice by the Chairman, Board of Patent Appeals and
Interferences, explained the policy applied by the Board in determining whether the
issues of fraud and/or inequitable conduct raised in a pending interference proceeding
will be given consideration in 1133 Off. Gaz. Pat. & Tm. Office 22 (December 10, 1991).
The notice explains
Issue of fraud and/or inequitable conduct in an interference will be
considered by the Board if:
1 . They are raised by way of preliminary motion for judgement under
37 CFR 1.633(a). The motion must be filed during the period set
for filing preliminary motions (37 CFR 1.636(a)), or good cause (37
CFR 1.655(b)(3)) must be shown as to why the issues of fraud
and/or inequitable conduct were not timely raised during the
preliminary motion period. An assertion that the issues were not
raised earlier because the Board was precluded from considering
them by the Commissioner's Notice of Oct. 17, 1988 (1906 Off.
Gaz. Pat. Office 19 (Nov. 8, 1988)) shall not be deemed to be good
cause.
2. They are raised by motion in a currently pending
interference in which the time for filing preliminary motions
expired prior to the publication date in the Official Gazette of
the Commissioner's Notice dated Oct. 24, 1991, and
provided (a) the motion is promptly after the Official Gazette
publication date of the notice, and (b) the times for taking
testimony or, if no testimony, the times for filing briefs for
final hearing (37 CFR 1.656) have not been set.
Issues of fraud and/or inequitable conduct will not be considered in
any interference in which the times for taking testimony or the times for
filing briefs for final hearing have already been set, unless "good cause" is
shown under 37 CFR 1.655(b)(3). See item 1 above. An example of
good cause would be where fraud or inequitable conduct is first
discovered during taking of testimony.
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