Interference No. 105,125
Chaffee v. Skulnick
more than three months after the filing date of a senior party patentee to make a prima facie
showing that demonstrates that the junior party is entitled to a judgment relative to the patentee is
discussed in Kistler v. Weber, 412 F.2d 280, 285, 162 USPQ 214, 218-219 (CCPA 1969). In
Kistler v. Weber, the Court of Customs and Patent Appeals dismissed junior party's argument
that then Rule 228 (parallel to Rule 617) and then Rule 204(c) (parallel to Rule 608(b)) place an
undue burden on the junior party or are contrary to the rights of the first inventor. ThcCCPA
stated that:
The expense involved in a protracted interference, and the special hardships workable on
a patentee involved therein, are notorious, and to minimize both, where possible, would
appear to be the laudable purpose of these rules. Kistler v. Weber, 412 F.2d 280, 285,
162 USPQ 214, 218-219 (CCPA 1969).
Further, a junior party applicant who fails to demonstrate a prima facie showing under
Rule 608(b) may file additional evidence only under very limited circumstances. 37 CFR
§ 1.617(b). The policy behind Rule 617(b) is articulated in the Notice of Final Rule, Patent
Interference Proceedings, 49 Fed. Reg. 48416, 48423 (Dec. 12, 1984) as follows:
The "good cause" showing required by § 1.617(b) imposes a stricter standard than was
required under the prior rules. The stricter standard is necessary to encourage applicants
copying claims from a patent to better prepare their initial showings under § 1.608(b).
Under current practice, the Board of Patent Interferences has found that substantial time
is lost in issuing orders to show cause based on an inadequate initial showing only to
have an adequate showing made with the response to the order to show cause. Under the
"good cause" standard, ignorance by a party or counsel of the provisions of the rules or
the substantive requirements of the law would not constitute good cause.
See also, Hahn v. Wong, 892 F.2d 1028,13 USPQ2d 1313 (Fed. Cir. 1989).
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