Judgment - Request for Adverse - Bd. R. 127(b)
On 2 June 2005, the board received from the party Szum a paper entitled “SZUM
CONCESSION OF PRIORITY (37 C.F.R. 41.127)” (Paper 32). The content of paper 32 is as
follows (emphasis added as underlined):
This is a Concession of Priority of Party Szum.
Party Szum concedes priority of the subject matter of the count in the subject
interference and will accede to adverse judgment as a result thereof, pursuant to [Bd. R]
41.127(b).
Party Szum does not concede priority or, take any position herein, with regard to
any disclosed or claimed subject matter which is set forth in the Szum pending and
involved application, Serial No. 09/757,533, but which does not correspond to the count
or, which would support a claim which would not, if entered, be deemed to correspond to
the count.
The board treats a concession of priority as a request for adverse judgment. Bd. R.
127(b)(3). The estoppel effects of a judgment are provided for in Bd. R. 127(a) which states that:
A judgment disposes of all issues that were, or by motion could have properly been,
raised and decided. A losing party who could have properly moved for relief on an issue,
but did not so move, may not take action in the Office after the judgment that is
inconsistent with that party’s failure to move, except that a losing party shall not be
estopped with respect to any contested subject matter for which that party was awarded a
favorable judgment.
Szum’s attempt to limit the effects of the requested adverse judgment, as set out in the
underscored paragraph, does not prevent or avoid the effect of Bd. R. 127(a). The estoppel
effects apply in full force, no matter how Szum has attempted to limit its concession of priority.
Eli Lilly and Co. v. Cameron, 61 USPQ 1863 (Bd.Pat.App. & Int. 2001).
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Last modified: November 3, 2007