Rose v. Frazer

Informative decision only: persuasive authority, not binding precedent. When a party in an interference seeks leave to correct a preliminary statement date, and the allegation (here, communication "on July 20 to 26, 1991" in support of derivation) is not indefinite or insufficient and gives the opponent sufficient notice, the Board will not allow an amendment and will deny the motion without prejudice. Rule 629(a) [37 CFR § 1.629(a)] restricts a party to the latest date of an alleged period only where doubts as to definiteness or sufficiency make that "appropriate"; the Board will entertain a later motion if actual prejudice results. No prior precedent directly addressed this issue in the text; the decision cites only Rule 629(a) and the 1984 Notice of Final Rule, 49 Fed. Reg. 48416, 48439 (Dec. 12, 1984). For the opposing party, the decision means a date-range allegation in a preliminary statement, including one on derivation, is not automatically collapsed to its end date, so the opponent cannot count on that restriction. For the party that filed the statement, it cannot get a correction merely out of uncertainty over how Rule 629(a) applies, and it keeps the burden of proving the precise date of communication. The decision relies on no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: Rule 629(a) provides that a party is strictly held to any date alleged in its preliminary statement, that doubts as to definiteness or sufficiency of any allegation or compliance with formal requirements are resolved against the filing party by restricting it to its effective filing date or to the latest date of a period alleged, as may be appropriate, and that a party may not correct a preliminary statement except as provided by § 1.628. The Board asked whether the amendment was needed and how an opponent could be prejudiced, and held that no amendment is needed where the allegation is not indefinite or insufficient and gives the opponent sufficient notice. TRIGGERING FACTS: Frazer's preliminary statement from the terminated Interference 103,929 was filed as the statement in this interference and alleged communication, for derivation, on July 20 to 26, 1991. Frazer moved to file a corrected statement alleging July 20, 1991, because Rule 629(a) might apply to derivation allegations and might restrict it to July 26. Frazer's opponent did not consent. Frazer's alleged facts were a Seattle workshop from July 20 to 26, 1991, a Book of Abstracts distributed July 20, and the opponent on an attendee list. The Board assumed those facts true. KEY QUOTE: "The "July 20 to 26" allegation in the '929 preliminary statement is sufficient notice to Frazer's opponent of when communication is said to have taken place." (Paper 23, p. 5) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board applied Rule 629(a) [37 CFR § 1.629(a)] and quoted the Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416, 48439 (col. 1) (Dec. 12, 1984), on the purposes of a preliminary statement. PRACTICE TIP: Do not move to correct a preliminary statement date out of caution about Rule 629(a); instead, plead dates with enough definiteness to give notice, and be ready to prove the precise date, since a period allegation that gives notice stays open only to the burden of proof, and relief is available only on a later showing of actual prejudice.