of the Board of Patent Interferences shall be called thereto. The interference may be suspended and referred to the primary examiner for consideration of the matter, in which case the parties will be notified of the reason to be considered. Arguments of the parties regarding the matter will be considered if filed within 20 days of the notification. The interference will be continued or dissolved in accordance with the determination by the primary examiner. If such reference or. reason be found while the interference is before the primary examiner for determination of a motion, decision thereon may be incorporated in the decision on the motion, but the parties shall be entitled to reconsideration if they have not submitted arguments on the matter.

[30 FR 6647, May 14, 1965]

§ 1.238 Addition of new party by examin

er.

If during the pendency of an interference, another case appears, claiming substantially the subject matter in issue, the primary examiner should notify the Board of Patent Interferences and request addition of such case to the interference. Such addition will be done as a matter of course by a patent interference examiner, if no testimony has been taken. If, however, any testimony may have been taken, the patent interference examiner shall prepare and mail a notice for the proposed new party, disclosing the issue in interference and the names and addresses of the interferants and of their attorneys or agents, and notices for the interferants disclosing the name and address of the said party and his attorney or agent, to each of the parties, setting a time for stating any objections and at his discretion a time of hearing on the question of the admission of the new party. If the patent interference examiner be of the opinion that the new party should be added, he shall prescribe the conditions imposed upon the proceedings, including a suspension if appropriate.

[34 FR 12631, Aug. 2, 1969]

(a) Motions relating to matters other than those specified in § 1.231 will be determined by a patent interference examiner or the Board of Patent Interferences, as may be deemed appropriate. Such motions shall be made in writing and shall contain a full statement of the action sought and the grounds therefor, and satisfactory proof of any facts required must accompany the motion. Oral hearings will not be held except on order of a patent interference examiner or Board of Patent Interferences. Briefs or memoranda in support of such motions shall accompany the motion. Any opposition to the motion, together with any brief or memorandum in support thereof, shall be filed within 20 days from the date of service of the motion unless some other date is set by the patent interference examiner.

(b) Typewritten briefs may be used in connection with all motions. By stipulation of the parties subject to approval or by order of the tribunal before whom the motion is pending, briefs may be received if filed otherwise than as prescribed.

(c) In oral hearings on motions, the moving parties shall have the right to make the opening and closing arguments. Unless otherwise ordered before the hearing begins, oral arguments will be limited to 30 minutes for each party.

(d) Any request for reconsideration or modification of a decision or other action by the Board of Patent Inter

ferences or patent interference examiner, must be filed within 20 days after the date of the decision, or other action and any reply thereto must be filed within 20 days from the date of service of the request. With regard to requests for reconsideration of a decision after final hearing, see § 1.256(b). [41 FR 27832, July 7, 1976]

§ 1.244 Petition to the Commissioner from decisions on motions.

There is no appeal from decisions rendered on motions, but the Commissioner may consider on petition any matter involving abuse of discretion or the exercise of his supervisory authority, or such other matters as he may deem proper to consider. Any such petition must comply with § 1.181 and, if not filed within 20 days from the decision complained of, may be dismissed as untimely. Any opposition thereto must be filed within 20 days from the date of service of the petition.

[41 FR 27832, July 7, 1976]

§ 1.245 Extension of time.

Extensions of time in any case not otherwise provided for may be had by stipulation of the parties, subject to approval, or on motion duly brought, sufficient cause being shown for such extension.

[43 FR 28478, June 30, 1978]

§1.246 Late papers.

A motion or other paper belatedly filed will not normally be considered except upon a showing, under oath or in the form of a declaration (§ 1.68), of sufficient cause as to why such motion or paper was not timely presented.

[43 FR 28478, June 30, 1978]

§1.247 Service of papers.

(a) Every paper filed in the Patent and Trademark Office in interference proceedings must be served upon the other parties in the manner provided in § 1.248, except the following:

(1) Preliminary statements at the time of filing but see § 1.215 (b) and (c).

(2) Documentary exhibits introduced at the taking of a deposition.

(3) Certified transcripts of testimony under 1.276 (but copies of the record must be served (§ 1.253) (a)).

(4) Statutory disclaimers under 35 U.S.C. 253.

(b) The specification in certain sections that a designated paper must be served does not imply that other papers, not excepted above need not be served. However, the requirement for service of designated papers may be waived under particular circumstances and service may be required of other designated papers which need not ordinarily be served. Proof of service must be made before the paper will be considered in the interference by the Office. A statement of the attorney, attached to or appearing in the original paper when filed, clearly stating the time and manner in which service was made will be accepted as prima facie proof of service.

[43 FR 28478, June 30, 1978]

§ 1.248 Service of papers; manner of service; proof of service.

(a) Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in any of the following ways:

(1) By delivering a copy of the paper to the person served;

(2) By leaving a copy at the usual place of business of the person served with someone in his employment;

(3) When the person served has no usual place of business, by leaving a copy at the person's residence, with some person of suitable age and discretion who resides there;

(4) Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service.

(5) Whenever it shall be satisfactorily shown to the Commissioner that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.

(b) Papers filed in the Patent and Trademark Office which are required to be served shall contain proof of service. Proof of service may appear on or be affixed to papers filed. Proof of service shall include the date and

manner of service. In the case of personal service, proof of service shall also include the name of any person served, certified by the person who made service. Proof of service may be made by: (1) an acknowledgement of service by or on behalf of the person served or (2) a statement signed by the attorney or agent containing the information required by this section.

[46 FR 29184, May 29, 1981]

INTERFERENCES: TRIAL

AUTHORITY: §§ 1.251 to 1.259 also issued under 35 U.S.C. 135.

§ 1.251 Assignment of times for discovery and taking testimony.

(a) Subject to the exception provided in paragraph (c) of this section, a period for preparation for testimony will be set in which all parties should complete discovery and other preparatory activities, except for service by the senior party required by § 1.287(a)(1) which is governed by § 1.287(a)(2)(iii).

(b) Subject to the exception provided in paragraph (c) of this section, times will be assigned in which the junior party shall complete his testimony in chief, and in which the other party shall complete the testimony on his side, and a further time in which the junior party may take rebutting testimony, but he shall take no other testimony. If there be more than two parties to the interference, the times for taking testimony will be so arranged that each shall have an opportunity to prove his case against prior parties and to rebut their evidence, and also to meet the evidence of junior parties. If a senior party fails to file a preliminary statement, or expressly elects to rely solely on his effective filing date, he will be assigned only a time for taking rebuttal testimony, and no junior party will be assigned a time for taking rebuttal testimony unless another junior party senior to him is assigned a time for taking testimony in chief. But, subject to the conditions imposed upon junior parties by § 1.225, such senior party may be assigned a period for taking testimony concerning a matter raised by a motion under § 1.231.

(c) Times for preparation of testimony, for compliance with § 1.287(a) and for taking of testimony will ordinarily be assigned in notices sent to the parties after motions under § 1.231 have been disposed of or, if no such motions have been filed, after the close of the motion period (§ 1.231). Such times will not normally be assigned for a junior party who fails to file a preliminary statement or whose preliminary statement fails to overcome the effective filing date of the senior party. (See § 1.225).

(d) Testimony shall be taken during the times assigned in accordance with §§ 1.271 to 1.286.

(e) The date for final hearing will ordinarily be set in separate notices.

[36 FR 8733, May 12, 1971, as amended at 38 FR 10005, Apr. 23, 1973; 40 FR 11873, Mar. 14, 1975]

§ 1.252 Failure of junior party to take testimony.

Upon the filing of a motion for judgment by any senior party to an interference stating that the time for taking testimony on behalf of any junior party has expired and that no testimony has been taken and no other evidence offered by said junior party, an order shall be entered that the junior party show cause within a time set therein, not less than 10 days, why judgment should not be rendered against him, and in the absence of a showing of good and sufficient cause, judgment shall be so rendered. In the absence of such a motion, if any junior party fails to file an evidentiary record by the date set as provided in § 1.253(d), a patent interference examiner shall enter the order to show cause.

[34 FR 12631, Aug. 2, 1969]

§ 1.253 Copies of the testimony.

(a) In addition to the certified transscript of the testimony (§§ 1.275 to 1.278) or executed copies of affidavits or stipulated testimony or facts (§ 1.272), and the exhibits, three true copies of the testimony of each party must be filed for the use of the Office (a total of four copies), and one true copy must be served upon each of the

opposing parties. Only one set of exhibits need be filed in the Office.

(b) These copies of the testimony may be submitted either in printed or in typewritten form.

(c) These copies, whether printed or typewritten, must include the testimony presented by the party filing the same, a copy of the counts of the interference, an index of the names of the witnesses, giving the pages where their examination and cross-examination begin, and an index of the exhibits, briefly describing their nature and giving the pages at which they are introduced and offered in evidence. The pages must be serially numbered throughout the entire record of testimony and the names of the witnesses 'must appear at the top of the pages over their testimony.

(d) The copies of the testimony for all parties must be filed and served on the opposing parties by the date specified in the order setting times for taking testimony or such extensions as may be granted.

(e) When the copies of the testimony are submitted in printed form, they shall be printed in 11-point type and adequately leaded; the paper must be opaque and unglazed; the size of the page shall be 7% by 104 inches (19.4 by 26 cm.); the size of the printed matter shall be 4% by 7% inches (10.6 by 18.2 cm.); and they shall be bound to lie flat when opened. Twenty-five additional copies for the United States Court of Customs and Patent Appeals, should appeal be taken, may also be filed; if no such appeal be taken, the twenty-five copies will be returned to the party filing them.

on

(f) When the copies of the testimony are submitted in typewritten form, they must be clearly legible opaque, unglazed, durable paper approximately 81⁄2 by 11 inches (21.6 by 27.9 cm.) in size (letter size) and one of the three copies must be a ribbon copy, but need not be executed by the certifying officer. (The certified transcript may be a properly executed carbon copy. See § 1.277.) The typing shall be on one side of the paper, in not smaller than pica-type; and double-spaced with a margin of 11⁄2 inches (3.8 cm.) on the left-hand side of the page. The sheets shall be bound

at their left edges, in such manner to lie flat when opened, in a volume or volumes of convenient size (approximately 100 pages per volume is suggested) provided with covers. Documentary exhibits should not be included in bound volumes of testimony. Multigraphed or otherwise reproduced copies conforming to the standards specified will be accepted.

(g) The testimony of any party failing to supply copies thereof as specified may be refused consideration.

[40 FR 11873, Mar. 14, 1975]

§ 1.254 Briefs at final hearing.

Briefs at final hearing before the Board of Patent Interferences shall be submitted in printed form, except that when not in excess of 50 legal-size double-spaced typewritten pages, or the equivalent thereof, and in any other case where satisfactory reason therefor is shown they may be submitted in typewritten form. If submitted in printed form, they shall be the same in size and the same as to page and print as is specified for printed copies of testimony. Typewritten briefs shall conform to the requirements for typewritten copies of testimony, except that legal-size paper may be used and the binding and covers specified are not required. Every brief of more than 15 pages shall contain a subject index with page references, supplemented by a list of all authorities referred to, together with references to pages thereof. Three copies of each brief must be filed. The times for filing briefs will be set at an appropriate stage in the proceeding prior to final hearing. The brief for the junior party shall present a full, fair statement of the questions involved, including his position with respect to priority evidence on behalf of other parties, and a clear statement of the points of law or fact upon which he relies. The main brief for each party shall contain a copy of the counts in interference.

[41 FR 27832, July 7, 1976]

§ 1.255 Request for findings of fact and conclusions of law.

Either party may, in his brief, submit concise proposed findings of fact, supported by specific references to and analysis of the record, and conclusions of law, supported by citation of authorities. The opposing party may, in his brief in reply thereto, accept any such proposed findings, or reject any proposed findings giving the reasons therefor, and may likewise submit proposed findings. The Board of Patent Interferences may, in its discretion, adopt the proposed findings in whole or in part.

§ 1.256 Final hearing.

(a) Final hearings will be held by the Board of Patent Interferences on the day appointed at the designated time. If either party appears at the proper time, he will be heard. After the day of hearing, the case will not be taken up for oral argument except by consent of all parties. If the Board of Patent Interferences be prevented from hearing the case at the time specified, a new assignment will be made, or the case will be continued from day to day until heard. Unless it shall be otherwise ordered before the hearing begins, oral arguments will be limited to not more than one hour for each party. A junior party may reserve a portion of his time for rebuttal purposes, but a full, fair opening of his case must be made, including his position with respect to the case presented on behalf of other parties. After a contested case has been argued nothing further relating thereto will be heard unless upon request of the Board of Patent Interferences.

(b) Any request for rehearing or reconsideration, or modification of the decision after final hearing, must be filed within 30 days from the date of the original decision, unless that decision is so modified as to become, in effect, a new decision, and the Board of Patent Interferences so states. Any reply thereto must be filed within 15 days from the filing of the request. The times specified herein may be extended by the Board of Patent Interferences upon a showing of sufficient cause. (See § 1.304.)

[41 FR 27833, July 7, 1976]

§ 1.257 Burden of proof.

(a) The parties to an interference will be presumed to have made their inventions in the chronological order of the filing dates of their applications for patents involved in the interference or the effective filing dates which such applications have been accorded; and the burden of proof will rest upon the party who shall seek to establish a different state of facts.

(b) The termination of the interference by dissolution under §§ 1.231 or 1.237, without an award of priority, or by an award of priority based solely upon ancillary matters, shall not disturb this presumption, and a party under these circumstances enjoying the status of a senior party with respect to any subject matter of his application shall not be deprived of any claim to such subject matter solely on the ground that such claim was not added to the interference by amendment under § 1.231.

[24 FR 10332, Dec. 22, 1959, as amended at 31 FR 7285, May 19, 1966]

§ 1.258 Matters considered in determining priority.

(a) In determining priority of invention, the Board of Patent Interferences will consider only priority of invention on the evidence submitted. Questions of patentability of a claim generally will not be considered in the decision on priority; and neither will the patentability of a claim to an opponent be considered, unless the nonpatentability of the claim to the opponent will necessarily result in the conclusion that the party raising the question is in fact the prior inventor on the evidence before the Office, or relates to matters which have been determined to be ancillary to priority and must be considered. A party shall .not be entitled to raise such nonpatentability unless he has duly presented a motion for dissolution under § 1.231 upon such ground or shows good reason (e.g., that such nonpatentability became evident as a result of evidence extrinsic to an involved application) why such a motion was not presented; however, to prevent manifest