Interference No. 105,313
Tomita v. Godil
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, 1034, 13 USPQ2d 1313, 1318-1319 (Fed. Cir. 1989)
(affirming the Board’s holding of lack of showing of good cause). Note further that in Huston v.
Ladner, 973 F.2d 1564, 1567, 23 USPQ2d 1910, 1913 (Fed. Cir. 1992), the Court of Appeals for
the Federal Circuit held: “the Board did not abuse its discretion in finding that Huston’s
allegations of attorney misrepresentation and gross negligence failed to establish ‘good cause’
under 37 C.F.R. § 1.617(b).” In the underlying Board decision of that case, as noted by the Court
of Appeals for the Federal Circuit, Huston v. Ladner, 973 F.2d at 1566, 23 USPQ2d at 1912, it
was determined that the applicant’s attorney did not appreciate the rule with regard to making the
original showing complete and the substantive requirements of the law.
The junior party acknowledges that in the absence of extraordinary circumstances it may
not submit additional evidence to supplement the evidence it originally submitted in the Rule
608(b) showing to demonstrate an actual reduction to practice (Paper 10, Page 13). Indeed, the
response to the show cause order states on page 14: “It is clear that the law forbids, except under
extreme circumstances, the submission of additional evidence establish a conception or actual
reduction to practice at a time prior to the Senior Party’s filing date.” However, the junior party
does not argue that there was any such extraordinary circumstance sufficient to establish good
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