Noelle v. Armitage

Informative decision only: persuasive authority, not binding precedent. When interference parties seek suspension and offer to terminally disclaim for a period equal to the suspension, the Board may permit it, but permission is not automatic, and the Board will weigh factors including the duration of the suspension (long suspensions are likely to be denied even with a terminal disclaimer) and the effect on other proceedings (disruption or term extension elsewhere is not cured by a disclaimer in the suspended case). The agency ordinarily regards suspensions with extreme disfavor. No prior precedent directly addressed this issue; the order cites none. For a party opposing suspension, it signals that the Board treats suspensions skeptically and that a terminal disclaimer does not by itself cure the harm. For parties who want a suspension, such as applicants in an interference, it shows that offering a terminal disclaimer for the suspension period is a recognized route, but it does not guarantee approval. The order also reminds parties to keep real party-in-interest statements complete and current. The order relies on no Federal Circuit, CCPA or Supreme Court authority, though it invokes the "progress of the useful arts" rationale of the patent system. LEGAL TEST OR STANDARD: Terminal disclaimers have been permitted as a condition for suspending an interference, but permission is not automatic. The Board identified two additional factors to consider: 1. Duration. 2. Other proceedings. Duration: suspension withholds information about what is claimed, a policy harm under the "progress of the useful arts" rationale, so long suspensions are likely to be denied even with a terminal disclaimer. Other proceedings: a disruption or term extension in another proceeding is not cured by a terminal disclaimer in the suspended proceeding. TRIGGERING FACTS: Both parties were applicants, so a suspension would effectively extend any resulting patent term. The parties saw merit in suspending because one real party-in-interest was pursuing a merger and a related interference was on appeal. They asked about terminally disclaiming their applications for a period equal to the suspension and said they would consult their clients. The footnote assumes neither party is subject to a terminal disclaimer over a patent. No suspension motion was decided; the order only changed the assigned judge. KEY QUOTE: "Ordinarily, the agency regards suspensions with extreme disfavor." (Paper 33, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If you want a suspension of an interference, do not rely on a terminal disclaimer alone. Propose a short, definite suspension period, and address how the suspension would affect any related proceeding. Also keep your real party-in-interest statement complete and current.