A
Practitioner's View of Ethical Considerations Before the Board in Interferences
Richard
A. Neifeld[1]
I. Introduction
Practitioners face many of the
same types of ethical issues in representations before the Board of Patent
Appeals and Interferences ("Board") as in any representation to the
United States Patent and Trademark Office ("Office"). However, only the Board handles interference
proceedings. There are substantial
differences between ethical issues relating to interferences, ex parte
prosecution, and other inter partes proceedings. In this paper, I identify some potential ethical pitfalls in
interference practice.
II. The Duty of Disclosure in Interferences
An issue that the interference
bar has repeatedly discussed is the extent to which the duty of disclosure
applies in interferences. For example,
does a patentee involved in an interference have a 37 CFR 1.56 duty of
disclosure?[2] What if the
patentee knows of an anticipatory reference as to an involved claim or a non
involved claim? What if the patentee
knows of a reference either more material than prior art of record or that
provides a prima facie case of obviousness?
If you represent the patentee in such a situation, what do you tell your
client, and what do you do?[3] I suggest that you turn to section 10 of the
37 CFR, which governs all representations before the Office. See 37 CFR 10.1, first sentence. In situations just described, 37 CFR
10.18(b)(1) is relevant. It states in
pertinent part that "whoever ... knowingly and willfully ... conceals, or
covers up by any trick, scheme, or device a material fact ... shall be subject to
penalties...." A lesson to draw
from this example is that you should carefully review 37 CFR 10 in addition to
37 CFR 1.601 et seq. if you become involved in an interference.
III. New and Frivolous Arguments are Subject to Sanctions
In Leveen v. Edwards,
Interference No. 104,290, paper No. 351 (PTOBPAI 2002)(non-precedential)[4],
a panel of the Board issued an opinion in which it explained why it decided not
to issue sanctions against Edwards in the form of an award of fees, pursuant to
37 CFR 1.616(a)(5). The opinion was in
response to a hearing, which was in response to an order to show cause (paper
No. 348) why sanctions should not be imposed.
The show cause order indicated that the panel believed that Edwards' new
arguments in a brief were both new and frivolous. In the opinion, the panel indicated that it was not imposing
sanctions because the practitioner had convinced them that the new arguments
were not made in bad faith. While no
sanctions were imposed, the opinion put practitioners on notice, stating that:
However, we choose to use this opinion as notice to
practitioners not to change the thrust of arguments previously made when review
of an interlocutory order is sought at final hearing. We do this in the interest of providing an "abundance of
fairness" to parties who somehow might not have appreciated the
impropriety of changing arguments on review.
See e.g., Hockerson-Halberstadt v. Converse Inc., 183 F.3d 1369,
1374 (Fed. Cir. 1999).[5]
Hockerson-Halberstadt
does not discuss sanctions. Instead, it
relates to whether the court will consider arguments on claim construction
asserted on appeal that was not asserted at trial. In Hockerson-Halberstadt, the Court put the bar on notice
that it will no longer consider arguments in support of a claim construction
first presented on appeal. Hence, it
does not clearly support the Board's warning regarding sanctions. However, the general thrust of Leveen
is clear; the Board will not tolerate a low ethical standard of conduct
including non-compliance with rules and orders.
IV. A Laundry List of Pitfalls
A. Avoid
Ex Parte Communications
Practitioners can communicate ex
parte with patent examiners when prosecuting patent applications. Don't try
that with APJ's in an interference since ex parte communications are improper
in an inter partes proceeding in general and in the Office in particular. See 37 CFR 10.93 (b). 37 CFR 10.93(b) indicates that ex parte
communications "as to the merits of the cause" are prohibited. The Board addressed what constituted an ex
parte communication as to the merits of the cause in A.S. v. B.R.,
Interference No. 104,AAA, paper No. 10
(PTOBPAI December 03, 1998)(precedential). In that case, the practitioner sent an email to the APJ in charge
of an interference pointing out a formal problem with a count of a newly
declared interference. The email
apparently did not "cc" counsel for the opposing party. In response, the panel stated that:
In
the future, an email received by the Trial Section plausibly related to a
particular interference will be returned unanswered if it does not on its face
indicate “service” by e-mail upon opposing counsel. Moreover, e-mail cannot take the place of pleadings which are to
be filed in the manner required by the rules.
Any e-mail sent to the Trial Section must also be sent by e-mail to
opposing counsel. If opposing counsel
does not have e-mail, then a party may not communicate inter partes with
the Board through e-mail in a specific interference.[6]
In F.M.W v. D.A.T,
Interference No. 104, BBB, paper No. 4 (PTOBPAI December 23, 1998)(precedential to the Trial Section of the
Board), the interference, as declared, apparently had initial times for
responses set during a "holiday period" around the end of
December. A first practitioner
representing the junior party filed via facsimile a paper complaining about
those times for responses. In addition,
the APJ handling the interference received an email at his personal email
address (as opposed to his "*.uspto.gov" email address) from a second
practitioner representing the junior party, and the contents of that email
apparently related to the deadlines complained about in the foregoing
paper. The email had no indication that
it was served on the senior party. The
Board stated that:
[t]he e-mail communication can be viewed as
supplementing arguments made in the ... [facsimile], in which case the email
communication is an improper ex parte communication in an
interference. On the other hand, it is
possible to review [sic; view] the email communication as calling attention to
a general problem in interference cases.
*** We will give the second
practitioner the benefit of the doubt ....
[Emphasis in the original; interpolation supplied, at p. 6.]
A prudent course of action is
for a practitioner to avoid communicating ex parte with any APJ on any matter
arguably touching on the merits of any inter partes proceeding handled by an
APJ.
However, F.M.W provides
an additional lesson. F.M.W
involved a notice declaring an interference sent to the "rather large
patent department" of the junior party,[7]
and the junior party's complaints were received shortly after the junior party
received the notice declaring interference.
I surmise that the practitioners in the patent department for the junior
party were unfamiliar with interference procedures. The attorney of record receiving a declaration of an interference
usually has had little or no experience with interferences. Given those facts, it is advisable to inform
all practitioners (1) to avoid ex parte communications in an interference and
(2) to promptly consult a practitioner experienced with interferences upon
receiving a notice declaring an interference.
In addition, a special note of instruction can be placed in the file for
any patent in which a patentee has received a 37 CFR 1.607(d) notice, amongst
any other action the patentee decides to take in response to the notice.
B. Notify
the Office When You Copy Claims
37 CFR 1.604(b) and 607(c)
indicate that, when presenting a claim in an application that you think may
interfere with a claim in another pending application or a patent, you
"shall identify" to the Office the other application or patent and
claim in the patent. Moreover, 37 CFR
10.23(c)(7) states that "[k]nowingly withholding from the Office
information identifying a patent or
patent application of another from which one or more claims have been
copied" is misconduct, and that rule has been enforced. In Bovard v. Respondent, Office of
Enrollment and Discipline ("OED") Proceeding D96-01 (Commissioner's
Decision, August 27, 1997),[8]
an attorney of record in a patent application received a private reprimand for
failing to properly notify the Office of copied claims. However, the Commissioner clearly indicated
in the opinion that a private reprimand was an exception for violation of the
duty of disclosing copied claims, stating that "[b]ecause of factual
circumstances unique to this case, the Commissioner has chosen to issue only a
private reprimand for this misconduct."
C. Comply
with 35 USC 135(b)
Do not assume that you
understand the implications of 135(b).
See In re Berger, 61 USPQ2d 1523, ___, 279 F.3d 975, ___, 2002
U.S. App. LEXIS 1186. (Fed. Cir. 2002) and
Housey v. Berman, Docket No. 01_1311 (Fed. Cir. May 29,
2002). If for whatever reason you do
not exactly copy claims from a patent with which you want an interference, you
may be barred from amending those claims later on in order to get into
interference.
D. Pick
Your Team Carefully
Representing in an interference
usually involves a small team of attorneys.
Especially in the DC area, many of the attorneys and patent agents are
former patent examiners. Keep in mind
that these former examiners have both a 37 CFR 10.10(b)(2) two year bar on
preparation or prosecution of any application in technology in areas in which
they examined and a 37 CFR 10.10(b)(1) temporally unlimited bar on all matters
pending in the former examiner's group while the former examiner was an
examiner.
What if a member of your team of
attorneys worked in the Office (1) in the examining group in which the patent
your are targeting for an interference was examined and (2) while the
application for that patent was pending?
That situation is not expressly covered by 37 CFR 10.10.
E. Avoid
Conflicts
Conflicts are clearly a problem
for the interference bar, especially at large firms. In fact, there is a case to be made that it is bad business for
any large firm to target interferences as a source of business. An interference has the same preclusive
effect on representations of other potential clients as does a patent
infringement litigation, at least (in my opinion) as great a chance for attorney
malpractice, and an interference is (in my opinion) much harder to competently
staff. However, an interference
typically brings to a firm only about ten percent as much in fees as an
infringement litigation. Moreover,
interferences are much rarer than litigations and therefore less likely to
provide an ongoing source of business.
The ethical issues for a large
firm are illustrated by the opinion in University of New Mexico v. Fordham,
Interference No. 104,761, paper No. 47 (PTOBPAI 2002)(non-precedential).
The opinion contains a panel decision on a request for reconsideration
of a decision of an APJ denying a request to disqualify opposing counsel. The panel denied the University of New
Mexico's (UNM's) request to disqualify attorneys from the firm of Pennie &
Edmonds from representing Fordham. The
decision indicates that an attorney that joined Pennie brought with him a
patent application in which UNM was a co-assignee, and that the UNM inventor
gave Pennie a power of attorney. Those
actions occurred after another Pennie attorney had requested an interference
with the Fordham patent. The Board
ultimately decided to deny UNM's request to disqualify, but its opinion
contains the following sobering statement:
To the extent that P&E may have harmed UNM in a
way unrelated to this interference, UNM can seek redress through the Office of
Enrollment and Discipline or a relevant State Bar.[9]
APJs are also sensitive to their
own potential conflicts. Noelle v.
Armitage, Interference No. 104,724, paper No. 33 (PTOBPAI April 26, 2002)
notes that the reason an interference had been transferred to another APJ was
that the original APJ became aware through a press release that one of the real
parties in interest was pursuing a merger that would have led to a conflict of
interest for the APJ. The opinion noted
the importance of the parties providing complete and up to date 1.602 real
party in interest statements. The
initial and continuing notification duties of 602(b) and (c) are mandatory, and
practitioners need to comply with them.
F. Avoid
Being the Attorney and a Witness
37 CFR 10.63 provides that when "it is obvious that
[any practitioner] ... in the practitioner's firm ... [may be asked to sign an
affidavit or become a witness other than on behalf of the practitioner's client]
... the practitioner shall withdraw."
Thus, recognizing that an attorney representing in an interference may
become a witness should set off a red flag. See, for example, XX v. YY,
Interference No. 1xx,xxx, paper No. unknown, (PTOBPAI 1999)(non-precedential)(patent
practitioner SS cross-examined in the presence of Senior APJ McKelvey on issue
of fraud in patent procurement of involved patent for allegedly failing to
disclose to the examiner experimental results supporting a rejection while
disclosing experimental results supporting impropriety of the rejection).
G. Miscellaneous
Items to Consider
APJs make many procedural
rulings during telephone conference calls.
I have personal knowledge of one instance where the attorney's and the
APJ's understandings of those rulings differed. Obviously, there is a possibility of adverse consequences
resulting from such misunderstandings.
One way to avoid such a consequence is to have a court reporter make a
transcript of any conference call.
In an effort to identify
additional ethical issues of interest to interferences, I spoke with Harry
Moatz, Director of OED. Director Moatz
provided a litany list of the ethical failings that his office sees. The one that jumped out at me as potentially
relevant to interference practitioners was failure to report to the
client. Certain time periods for
responding in interference proceedings are much shorter than ex parte time
periods, and responses may require a larger volume of papers and numbers of
copies than in ex parte filings. Hence,
the relatively leisurely reporting schedules possible (but not advisable) for
ex parte matters do not exist in an interference. Practitioners that are unprepared to managed this type of case
may have trouble in keeping their client up to date.
V. Provide Competent Advice and Know What You Need to
Know
Practitioners have a duty to act
competently. 37 CFR 10.77. Interferences involve complicated analysis
of substantive law, procedure, and facts.
If a practitioner cannot act competently, the practitioner should not be
handling an interference. There are a plethora
of ways in which you can fail to act competently. I discuss some of them below.
The first question that arises
when one has identified a potential for an interference is whether to request
the interference (by complying with the provisions of 37 CFR 1.604 or
607). To answer that question, you have
to look far into the future and analyze possible outcomes and
consequences. Generally speaking, you
need to know the consequences of case law and rule estoppel including the
effect on any unclaimed subject matter in your application. You also need to have an understanding of
the time line for an interference from request through judicial review. Keep in mind the potential for subsequent
collateral attack even if you are successful in the interference. In the same vein, keep in mind that, if all
involved cases are assigned to a single entity during the interference, the APJ
is likely to issue an order requiring the assignee to make a priority
"election," and a panel of the Board will enter judgement based upon
that admission. 37 CFR 1.602(a). That election may be subject to collateral
attack.
Practitioners should also know
their case's priority proofs prior to requesting an interference. This is because you have to propose a count
in the request for an interference, and the count of the interference defines
the subject matter for which you have to prove a date of invention earlier than
your opponent in order to win on priority.
Another concern to bear in mind
is the evidence your client does and does not provide to you. For example, if there are declarations in
the file for an application, double check to make sure that the assertions in
the declarations are accurate and complete.
See XX, supra. Knowing
the weaknesses of your case allows you to competently advise your client on
case strategy.
Practitioners that rely upon 37
CFR 1.608(b) showings in their interference request should bear in mind that
608(b) showings must meet more than the examiner's initial review. The 608(b) showings must also satisfy the
APJ that you are entitled prima facie to judgement vis-a-vis the senior
party. If your 608(b) showings do not
make at least a prima facie case of entitlement to judgement, you will see an
order to show cause why judgement should not be entered against you mailed with
the notice declaring an interference.
Do not expect to be entitled to cure deficient evidence in response to
the order. Cf. Basmadjian v. Landry, Interference
No. 103,694, paper No. 22 , at 10-11 (PTOBPAI 1997)(precedential).[10]
Preliminary statements carry a
specific legal effect. A party is not
entitled to prove a date of invention earlier than the date you allege in the
preliminary statement. Obviously, it is
desirable to allege a relatively early date in a preliminary statement. Preliminary statements contain factual
assertions. Factual assertions
implicate your duty under 37 CFR 10.23(2)(ii)("knowingly giving false or
misleading information ... [to the] Office..."). Also note that you have to allege derivation in your preliminary
statement or you lose the right to contest that issue. See 37 CFR 1.623, 624, and 625.
Practitioners should file
preliminary motions that are advantageous for their party's situation in an
interference, and those motions should raise all issues the party intends to
raise. You cannot raise an issue later on in the proceeding that you should
have raised via a preliminary motion.
Cf. 37 CFR 1.640(c)(request for reconsideration of decision on motion
limited to "points misapprehended or overlooked" in the
decision). In addition, you cannot
raise in court review any issue you did not raise in the interference
proceeding in the PTO. See for
example Conservolite, Inc. v. Widmayer,
21 F.3d 1098, 1102, 30 USPQ2d 1626, 1629 (Fed. Cir. 1994) generally and Estee
lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 592, 44 USPQ2d 1610,
1613 (Fed. Cir. 1997)(treating conception, diligence, and reduction to practice
as distinct "issues" for purposes of raising them in a 35 USC 146
action).
Practitioners must meet the time
periods noted as non-extendable in the orders setting time periods
accompanying the standard "Notice Declaring Interference." Cf. B.M.
v. H.G., Interference No. 104,CCC, paper No. 34 (PTOBPAI 1999)(binding
precedent of the Interference Trial Section) ("Joint request for
extensions of time for time periods 7 and 8 denied.").
Practitioners have to notice at
the appropriate time in an interference intent to argue abandonment,
suppression, or concealment or lose the right to contest those issues. 37 CFR
1.632.
Practitioners have to comply
with the statutory requirements of 35 USC 135(c) to reduce to writing and file
a copy of any agreement reached by the parties in contemplation of settlement
of the interference. Failure to do so
results in permanent unenforcability by operation of the statute. See 35 USC 135(c). While the Board may disagree, it is still prudent to file a copy
of any such agreement reached during subsequent court review of the
interference proceeding. See
Johnston v. Beachy, Interference No. 104,286, paper No. 200 (PTOBPAI
2001)(binding precedent of the Interference Trial Section)(relating to filing
of interference settlement for settlement occurring after termination of an
interference proceeding in the Office).
Practitioners are obliged to
inform the examiner of results of an interference and provide information from
the interference to the examiner examining any relevant application. See Eli
Lilly v. Cameron, Interference No. 104,104, paper No. 18 (PTOBPAI 2001)
(non-precedential) (adverse judgement that "is material to the
patentability with respect to pending claims in other applications under
consideration before" the Office falls within the rule 56 duty not
withstanding Lilly's characterization of request for entry of adverse judgement
as not an admission).
VI. Conclusion
There are differences between
the ethical issues relating to representing in interferences before the Board
compared to other types of representations, and these differences result from
different applicable substantive law and procedure. A practitioner should be familiar with the ethical issues in
interferences if representing in an interference.
Printed:
July 30, 2002 (11:12AM)
C:\paznet\neifeld\EthicalIssuedBeforetheBoard_020709.wpd
[1]Neifeld IP Law, PC. See www.Neifeld.com.
I can be reached via email at: .
[2]The Board's notice at http://www.uspto.gov/web/offices/dcom/bpai/bpaifaq.htm
states that "[u]nless an order is entered in a particular interference
there currently is no regulation which requires a patentee in an interference
to advise the board or its opponent of prior art falling within the scope of 37
CFR §§ 1.56" and indicates that the PTO's policy is under review. The post date for that web page is indicated
at the bottom of the page to be 02/12/2002.
[3]The AIPLA previously
proposed that the Office include a duty of disclosure rule for
interferences. However, the Office did
not adopt that rule.
[4]Board cases cited in this
paper without reference to a conventional reporter are posted on the
Interference Trial Section Opinion's portion of the Board's web site at: http://www.uspto.gov/web/offices/dcom/bpai/its.htm. Many of the posted Board opinions are
designated, precedential, precedential to the Trial Section of the Board, or
non-precedential. The implications of
an opinion being designated non-precedential or being designated precedential
to the Trial Section of the Board are not well defined.
[5]Leveen at 5.
[6] A.S. at p. 14.
[7]F.M.W at p. 4.
[8]Bovard OED discipline opinion D01
posted at: http://www.uspto.gov/web/offices/com/sol/foia/oed/disc/disc.htm.
[9]UNM at 7.
[10]Basmadjian does not appear on
the Trial Section Opinion's portion of the Board's web site at: http://www.uspto.gov/web/offices/dcom/bpai/its.htm. Instead, it appears on the
"Precedential Opinions" section of the Board's web site at: http://www.uspto.gov/web/offices/dcom/bpai/prec.htm.