Interference No. 105,099 Paper 25
Hannum v. Immunex Corp. Page 12
antedating effort under 37 C.F.R. § 1.131. Other consequences may also become
apparent.
In a priority contest, a party can always give up or settle away its claim to priority.
Cf. 35 U.S.C. 135(c) and (d); 37 C.F.R. § 1.662. In moving for a judgment of no
interference-in-fact, Hannum has given up on its opportunity to contest the priority of
the species that Immunex is claiming. In failing to oppose, Immunex has surrendered
what may be its best opportunity to avoid a dominating claim.
While the parties may be estopped from pursuing various remedies inside and
outside the Office, the Office is not so estopped. Fundamentally, a priority contest is
about who loses, not who wins. In re Kyrides, 159 F.2d 1019, 1022, 73 USPQ 61, 63
(CCPA 1947). A judgment of no interference-in-fact is not a mandate to the examiner
to issue claims. Indeed, as indicated above, if the Immunex applications mature into
patents, Hannum may well be subject to a rejection under § 102(e). In the absence of
interfering subject matter, however, we cannot pursue that question here.
REHEARING
Since the motion is unopposed and results in a final decision, we proceed
directly to judgment without issuing an order to show cause. Since both parties have
had an opportunity to submit evidence, no additional testimony period would be set in
any case. Consequently, if a party wishes to challenge this decision it may do so in the
form of a request for reconsideration filed within 21 days of the date of this judgment.
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