serial number and filing date, or in the case of a patentee by the number and date of the patent. The notices shall also specify the issue of the interference, which shall be clearly and concisely defined in only as many counts as may be necessary to define the interfering subject matter (but in the case of an interference with a patent all the claims of the patent which can be made by the applicant should constitute the counts), and shall indicate the claim or claims of the respective cases corresponding to the count or counts. If the primary examiner has indicated that the patent or application of any party included in the interference is entitled to the benefit of the filing date of any prior applications as to the subject matter in issue, the notices shall so state and shall specify such prior applications. Except as noted in paragraph (e) of this section, the notices shall also set a schedule of times for taking various actions as follows:

(1) For filing the preliminary statements required by § 1.215 and serving notice of such filing, not less than 2 months from the date of declaration.

(2) For each party who files a preliminary statement to serve a copy thereof on each opposing party who also files a preliminary statement as required by § 1.215(b), not less than 15 days after the expiration of the time for filing preliminary statements.

(3) For filing motions under § 1.231, not less than 4 months from declaration.

(c) The notices of interference shall be forwarded by the patent interference examiner to all the parties, in care of their attorneys or agents; a copy of the notices will also be sent the patentees in person and, if the patent in interference has been assigned, to the assignees.

(d) When the notices sent in the interest of a patent are returned to the Office undelivered, or when one of the parties resides abroad and his agent in the United States is unknown, additional notice may be given by publication in the Official Gazette for such period of time as the Commissioner may direct.

(e) In a case where the showing required by § 1.204(c) is deemed insufficient (§ 1.228) the notice of interference will not set the time schedule specified in paragraph (b) of this section but will be accompanied by an order to show cause by the Board of Patent Interferences as provided by § 1.228.

[30 FR 6645, May 14, 1965, as amended at 43 FR 28478, June 30, 1978]

§ 1.208 Conflicting parties having same attorney.

Whenever it shall be found that two or more parties whose interests appear to be in conflict are represented by the same attorney or agent, the examiner shall notify each of said principal parties and the attorney or agent of this fact, and shall also call the matter to the attention of the Commissioner. If conflicting interests exist, the same attorney or agent or his associates will not be recognized to represent either of the parties whose interests are in conflict without the consent of the other party or in the absence of special circumstances requiring such representation, in further proceedings before the Patent and Trademark Office involving the matter or application or patent in which the conflicting interests exist.

§ 1.211 Jurisdiction of interference.

(a) Upon the institution and declaration of the interference, as provided in § 1.207, the Board of Patent Interferences will take jurisdiction of the same, which will then become a contested case.

(b) The primary examiner will retain jurisdiction of the case until the declaration of interference is made.

[30 FR 6645, May 14, 1965]

§ 1.212 Suspension of ex parte prosecution.

On declaration of the interference, ex parte prosecution of an application is suspended, and amendments and other papers received during the pendency of the interference will not be entered or considered without the consent of the Commissioner, except as provided by the regulations in this

part. Proposed amendments directed toward the declaration of an interference with another party will be considered to the extent necessary. Ex parte prosecution as to specified matters may be continued concurrently with the interference, on order from or with the consent of the Commissioner.

INTERFERENCES: PRELIMINARY

STATEMENT

AUTHORITY: §§ 1.215 to 1.228 also issued under 35 U.S.C. 135.

§ 1.215 Preliminary statement required.

(a) Each party to the interference will be required to file a concise preliminary statement giving certain facts and dates, on or before a date fixed by the Office. The preliminary statement must be signed and sworn to or made in the form of a declaration, by the inventor but in appropriate circumstances, as when the inventor is dead or a showing is made of inability to obtain a statement from the inventor, the preliminary statement may be made by the personal representative or assignee or by someone authorized or entitled to make the statement and having knowledge of the facts.

(b) A party who files a preliminary statement shall at the same time notify all opposing parties of that fact and by the time set for that purpose he shall serve a copy of his preliminary statement and all attached documents on every opposing party from whom he has received notification of the filing of a statement.

(c) A party who fails to serve a copy of his preliminary statement as required in paragraph (b) of this section will be restricted to his effective filing date. (See § 1.223(c).)

[30 FR 6645, May 14, 1965, as amended at 34 FR 12630, Aug. 2, 1969; 34 FR 18858, Nov. 26, 1969]

§ 1.216 Contents of the preliminary statement.

(a) The preliminary statement must state that the party made the invention set forth by each count of the interference, and whether the invention was made in the United States or abroad. When the invention was made in the United States the preliminary

statement must set forth as to the invention defined by each count the following facts:

(1) The date upon which the first drawing of the invention was made; if a drawing of the invention has not been made prior to the filing date of the application, it must be so stated.

(2) The date upon which the first written description of the invention was made; if a written description of the invention has not been made prior to the filing date of the application, it must be so stated.

(3) The date upon which the invention was first disclosed to another person; if the invention was not disclosed to another person prior to the filing date of the application, it must be so stated.

(4) The date of the first act or acts susceptible of proof (other than making a drawing or written description or disclosing the invention to another person) which, if proven, would establish conception of the invention, and a brief description of such act or acts; if there have been no such acts, it must be so stated.

(5) The date of the actual reduction to practice of the invention; if the invention has not been actually reduced to practice before the filing date of the application, it must be so stated.

(6) The date after conception of the invention when active exercise of reasonable diligence toward reducing the invention to practice began.

(b) When an allegation as to the first drawing (paragraph (a)(1) of this section) and/or as to the first written description (paragraph (a)(2) of this section) is made, a copy of such drawing and/or written description must be attached to the statement. (See § 1.223(c).)

(c) If a party intends to rely solely on a prior application, domestic or foreign, and on no other evidence, the preliminary statement may so state and need not be signed or sworn to or declaration made by the inventor.

[30 FR 6646, May 14, 1965, as amended at 34 FR 12630, Aug. 2, 1969; 34 FR 18858, Nov. 26, 1969]

§ 1.217 Contents of the preliminary statement; invention made abroad.

When the invention was made abroad the facts specified by § 1.216(a) (1) to (6) are not required, and in lieu thereof there should be stated:

(1) When the invention was introduced into this country by or on behalf of the party, giving the circumstances with the dates connected therewith which are relied upon to establish the fact and, when appropriate, including allegations of activity in this country of the nature of that represented by § 1.216(a) (1) to (6) and documentary attachments if the allegations relate to a drawing or written description. Such statement may be signed and sworn to, or made in the form of a declaration, either by the inventor or by one authorized to make the statement and having knowledge of the facts alleged therein.

(2) If a party is entitled to the benefit of the second sentence of 35 U.S.C. 104, he must so state and his preliminary statement must include allegations of activity abroad corresponding to those required by § 1.216 (a) (1) to (6).

[43 FR 28478, June 30, 1978; 43 FR 57886, Dec. 11, 1978]

§ 1.218 Time for filing preliminary statement.

The time for filing the preliminary statement is ordinarily specified in the notices of interference mailed to the parties (§ 1.207). (For extension of the time set see § 1.245.)

[30 FR 6646, May 14, 1965]

§ 1.219 Statements sealed before filing. The statement must be filed in a sealed envelope bearing the name of the party filing it and the number and title of the interference. The envelope should contain nothing but this statement and if mailed should be enclosed in an outer envelope. The statements may be opened only by an examiner of interferences.

§ 1.222 Correction of statement on motion.

In case of material error arising through inadvertence or mistake, the

statement

(a) The preliminary should be carefully prepared, as a party will not be allowed to amend his statement in any way except by motion under § 1.222, and any doubts as to definiteness or sufficiency of any allegation or compliance with formal requirements will be resolved against the party concerned by restriction to his effective filing date or to the latest date of a period alleged as may be appropriate. Prior to final hearing a party will not be notified of any defect in his statement except that a junior party, subject to restriction resulting from such a defect and by virtue of that restriction being subject to judgment under § 1.225, will be notified of that defect and also notified that judgment on the record will be entered against him at the expiration of a time set, not less than 30 days, unless cause be shown why judgment should not be entered. Each of the parties by whom or on whose behalf a preliminary statement is made will be strictly held in his proofs to the dates set forth therein. This includes joint applicants or patentees; a new preliminary statement will not be received in the event the application is amended or the patent is corrected to remove the names of those not inventors, nor will a preliminary statement alleging different dates be received if an application is amended or a patent is corrected to include a joint inventor, except by motion under § 1.222.

(b) If a party proves any date earlier than alleged in his preliminary statement, such proof will be held to establish the date so alleged and none earli

er.

(c) If a party to an interference fails to file a statement, testimony will not be received subsequently from him to

prove that he made the invention at a date prior to his effective filing date. If a party alleges in his statement a date of first drawing or first written description but does not attach a copy of such drawing or written description as required by § 1.216(b), he will be restricted to his effective filing date as to that allegation unless such copy is admitted by motion under § 1.222. The content of a drawing or written description attached to the statement normally will not be considered by the Office.

(d) The preliminary statement can in no case be used as evidence in behalf of the party making it.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 12630, Aug. 2, 1969; 43 FR 28478, June 30, 1978]

§ 1.224 Reliance on prior application.

A party will not be permitted to rely on any prior application to obtain the benefit of its filing date unless the prior application is specified in the notice of interference (see § 1.226) or its benefit is sought by a motion filed in accordance with § 1.231. In the latter case, complete copies of the contents of the application file the benefit of which is sought, except affidavits or declarations under §§ 1.131, 1.202, and 1.204, must be served on all opposing parties with the motion, and in the case of a foreign application the necessary papers to prove a date of priority under 35 U.S.C. 119 including a translation where required (§ 1.55), must be filed and copies served on all opposing parties with the motion except for such papers as were of record in the involved application when the interference was declared. In either case proof of service required by § 1.247 must include reference to the prior application as well as the motion or, in the case of the stated exception, note that the papers in question were of record when the interference was declared.

[34 FR 12630, Aug. 2, 1969, as amended at 34 FR 18858, Nov. 26, 1969]

§ 1.225 Failure of junior party to file statements or to overcome filing date of senior party.

(a) If a junior party to an interference fails to file a preliminary statement, or if his statement fails to overcome the effective filing date of the application of another party, judgment on the record will be entered against such junior party unless he has filed a proper motion under § 1.231, within the time set for such motions, seeking some action in the interference. If such motion has been timely filed but does not result in action in the interference which removes the basis for a judgment on the record, such judgment will be entered unless the motion related to a matter which may be reviewed at final hearing under § 1.258, and within 30 days of the decision denying his motion, or a later time set by the patent interference examiner, the junior party concerned requests that final hearing be set to review such matter. Also, such a junior party may within such 30 day period, or time set, request a final hearing to review such a matter raised by his opposition to a motion under § 1.231(a) (2), (3), (4), or (5) which was granted over his opposition.

(b) Such a junior party will not be permitted to take testimony except on granting of a motion accompanied by showing of good cause, which should normally include names of proposed witnesses and affidavits or declarations by them giving their expected testimony.

(c) If, as a result of a decision on motion, the original senior party is deprived of the benefit of an earlier filed application and is thereby made a junior party and if in addition he relies solely on said earlier filed application in his preliminary statement, he stands in the same position as a junior party whose statement fails to overcome the effective filing date of the senior party as in the first sentence of § 1.225(a).

[43 FR 28478, June 30, 1978]

§ 1.226 Access to applications.

After the mailing of the notices of interference each party will be permit

ted to see or obtain copies of each other's applications which are set out in the notices except for copies of affidavits or declarations filed under §§ 1.131, 1.202, and 1.204 which shall be and remain sealed until preliminary statements are opened under § 1.227, except as provided in § 1.228 regarding affidavits or declarations under

§ 1.204(c).

[30 FR 6646, May 14, 1965, as amended at 34 FR 18858, Nov. 26, 1969]

§ 1.227 Access to preliminary statements.

(a) The preliminary statements shall be open to the inspection of the senior party, and of any junior party who himself filed a statement, after the date set for the serving of preliminary statements (§ 1.207(b)(2)), but shall not be open to inspection prior to that time.

(b) A junior party who fails to file a preliminary statement shall not have access to the preliminary statement of any other party.

(c) If the interference be terminated before the preliminary statements have been opened to the inspection of the parties, the preliminary statements will remain sealed.

(d) After termination of an interference any unopened statements will be removed from the interference file and preserved by the Office, and in no case will such statements be open to the inspection of anyone (including opposing parties) without authority from the Commissioner.

[30 FR 6646, May 14, 1965]

§ 1.228 Summary judgment.

When an interference is declared on the basis of a showing under § 1.204(c), such showing will be examined by an Examiner of Interferences. If the Examiner considers that the facts set out in the showing provide sufficient basis for the interference to proceed, the interference will proceed in the normal manner as provided by the regulations in this part; otherwise an order shall be entered concurrently with the notice of interference pointing out wherein the showing is insufficient and notifying the applicant making such showing that summary judgment

will be rendered against him because of such insufficiency at the expiration of a period specified in the notice, not less than 30 days, unless cause be shown why such action should not be taken. In the absence of a showing of good and sufficient cause, judgment shall be so rendered. Any response made during the specified period will be considered by a Board of Patent Interferences without an oral hearing unless such hearing is requested by the applicant, but additional affidavits, declarations or exhibits will not be considered unless accompanied by a showing in excuse of their omission from the original showing. If the applicant files a response to the order to show cause, the patentee will be furnished with one copy of the showing under § 1.204(c) and will be allowed not less than 30 days from its mailing date within which to present his views with respect thereto. He shall also be entitled to be represented at any oral hearing on the matter. Unless it shall be otherwise ordered before the hearing begins, oral arguments will be limited to not more than 30 minutes for each party. The Board will determine, on the basis of the original showing and the response made, whether the interference should be allowed to proceed or summary judgment should be entered against the junior applicant.

[41 FR 27832, July 7, 1976]

INTERFERENCES: MOTION PERIOD, DISSOLUTION, REFORMATION

AUTHORITY: §§ 1.231 to 1.238 also issued under 35 U.S.C. 135.

§ 1.231 Motions before the primary examiner.

(a) Within the period set in the notice of interference for filing motions any party to an interference may file a motion seeking:

(1) To dissolve as to one or more counts, except that such motion based on facts sought to be established by affidavits, declarations or evidence outside of official records and printed publications will not normally be considered, and when one of the parties to the interference is a patentee, no motion to dissolve on the ground that the subject matter of the count is un