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

§ 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:

(a) 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.

(b) 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 or attachments may be corrected or omitted attachments may be supplied on motion (see § 1.243), upon a satisfactory showing that such action is essential to the ends of justice. The motion must be made, if possible, before the taking of any testimony, and as soon as practicable after the discovery of the error.

[34 FR 12630, Aug. 2, 1969]

§ 1.223 Effect of statement.

(a) The preliminary statement 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 appli

cation 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 earlier.

(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 permitted 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

80-117 0-81--5

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 con

sidered. A motion to dissolve an interference in which a patentee is a party on the ground that the claims corresponding to the counts are unpatentable to the patentee over patents or printed publications will be considered through reexamination if it complies with the requirements of § 1.510(b) and is accompanied by the fee for requesting reexamination set in § 1.21(x). Otherwise, a motion to dissolve an interference in which a patentee is a party will not be considered if it would necessarily result in the conclusion that the claims of the patent which correspond to the counts are unpatentable to the patentee on a ground which is not ancillary to priority. Where a motion to dissolve is based on prior art, service on opposing parties must include copies of such prior art. A motion to dissolve on the ground that there is no interference in fact will not be considered unless the interference involves a design or plant patent or application or unless it relates to a count which differs from the corresponding claim of an involved patent or of one or more of the involved applications as provided in §§ 1.203(a) and 1.205(a).

(2) To amend the issue by addition or substitution of new counts. Each such motion must contain an explanation as to why a count proposed to be added is necessary or why a count próposed to be substituted is preferable to the original count, must demonstrate patentability of the count to all parties and must apply the proposed count to all involved applications except an application in which the proposed count originated.

(3) To substitute any other application owned by him as to the existing issue, or to declare an additional interference to include any other application owned by him as to any subject matter other than the existing issue but disclosed in his application or patent involved in the interference and in an opposing party's application or patent in the interference which should be made the basis of interference with such other party. Complete copies of the contents of such other application, except affidavits or declarations under §§ 1.131, 1.202, and 1.204, must be served on all other parties and

the motion must be accompanied by proof of such service.

(4) To be accorded the benefit of an earlier application or to attack the benefit of an earlier application which has been accorded to an opposing party in the notice of declaration. See § 1.224.

(5) To amend an involved application by adding or removing the names of one or more inventors as provided in § 1.45. (See par. (d) of this section.)

(b) Each motion must contain a full statement of the grounds therefor and reasoning in support thereof. Any opposition to a motion must be filed within 20 days of the expiration of the time set for filing motions and the moving party may, if he desires, file a reply to such opposition within 15 days of the date the opposition was filed. If a party files a timely motion to dissolve, any other party may file a motion to amend within 20 days of the expiration of the time set for filing motions. Service on opposing parties of an opposition to a motion to amend which is based on prior art must include copies of such prior art. In the case of action by the primary examiner under § 1.237, such motions may be made within 20 days from the date of the primary examiner's decision on motion wherein such action was incorporated or the date of the communication giving notice to the parties of the proposed dissolution of the interfer

ence.

(c) A motion to amend under paragraph (a)(2) of this section or to substitute another application or declare an additional interference under paragraph (a)(3) of this section must be accompanied by an amendment adding claims corresponding to the proposed counts to the application concerned if such claims are not already in that application. The motion must also request the benefit of a prior application as provided for under paragraph (a)(4) of this section if the party concerned expects to be accorded such benefit.

(d) All proper motions as specified in paragraph (a) of this section, or of a similar character, will be transmitted to and considered by the primary examiner without oral argument, except that consideration of a motion to dissolve will be deferred to final hearing

before a Board of Patent Interferences where the motion urges unpatentability of a count to one or more parties which would be reviewable at final hearing under § 1.258(a) and such unpatentability is urged against a patentee or has been ruled upon by the Board of Appeals or by a court in ex parte proceedings. Also consideration of a motion to add or remove the names of one or more inventors may be deferred to final hearing if such motion is filed after the times for taking testimony have been set. Requests for reconsideration will not be entertained.

(e) In the determination of a motion to dissolve an interference between an application and a patent, the prior art of record in the patent file may be referred to for the purpose of construing the issue.

(f) Upon the granting of a motion to amend and the adoption of the claims by the other parties within a time specified, or upon the granting of a motion to substitute another application, and after the expiration of the time for filing any new preliminary statements, a patent interference examiner shall redeclare the interference or shall declare such other interferences as may be necessary to include said claims. A preliminary statement as to the added claims need not be filed if a party states that he intends to rely on the original statement and such a declaration as to added claims need not be signed or sworn to by the inventor in person. A second time for filing motions will not be set and subsequent motions with respect to matters which have been once considered by the primary examiner will not be considered.

[30 FR 6647, May 14, 1965, as amended at 34 FR 12630, Aug. 2, 1969; 34 FR 18858, Nov. 26, 1969; 38 FR 10005, Apr. 23, 1973; 40 FR 11873, Mar. 14, 1975; 46 FR 29184, May 29, 1981]

§ 1.237 Dissolution at the request of examiner.

If, during the pendency of an interference a reference or other reason be found which, in the opinion of the primary examiner, renders all or part of the counts unpatentable, the attention