Sullivan v. Bingel

Informative decision only: persuasive authority, not binding precedent. When a party concedes priority and judgment is entered against all of its claims in an interference, leaving only patentability questions that have not been fully developed, the Board, which under 35 U.S.C. §135(a) "shall determine questions of priority of inventions and may determine questions of patentability," may exercise its discretion not to decide the pending patentability motions. It may instead terminate the interference and recommend under 37 C.F.R. §1.659(c) that the examiner of the opponent's pending application consider those issues. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision. For the party attacking patentability (here the conceding junior party, Sullivan), the ruling means its preliminary motions alleging unpatentability of the opponent's claims will not be adjudicated by the Board once priority is conceded; the party's route is the examiner's review of those motions, and the Board noted it may also file a protest under 37 C.F.R. §1.291. For the opponent and applicant (Bingel), the application returns to ex parte examination, where the examiner is asked to consider the issues and take any action needed to ensure patentability, rather than receiving a Board patentability ruling. The Board relied on statutes and rules (35 U.S.C. §135(a), §154(b), 37 C.F.R. §1.601(a), §1.659(c), §1.662(a)) and cited no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: Discretionary, not a multi-factor test. Under 35 U.S.C. §135(a) the Board "shall determine questions of priority of inventions and may determine questions of patentability." Conceded priority is treated under 37 C.F.R. §1.662(a) as a request for adverse judgment, and 37 C.F.R. §1.659(c) lets the Board make any other appropriate recommendation to the examiner. The Board relied on these considerations: the facts presented, the opponent's claims being in a pending application, technical issues suited to an examiner's review, a limited record on a highly technical field, and the patent term adjustment and speedy-resolution policy. TRIGGERING FACTS: Sullivan, junior party with two issued patents, conceded priority on the sole count (Count 2), so judgment was entered against all its claims. Its two preliminary motions alleging unpatentability of Bingel's involved claims were pending, with Bingel's opposition not yet due and no cross-examination or replies filed. Bingel's claims were in pending Application 09/508,057, and the subject was metallocene catalyst synthesis, not fully explained on the limited record. KEY QUOTE: "Consequently, in an interference in which the patentability issues have not been fully developed, once the core issue of priority has been resolved, there is little justification in continuing the interference to develop fully issues that can be administered more efficiently in an examination." (Paper No. 73, p. 4) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before conceding priority, recognize that doing so will likely end the interference and leave your pending patentability motions unadjudicated; if you want them considered, plan to rely on the Board's recommendation to the examiner or a 37 C.F.R. §1.291 protest, and if you want a Board ruling, develop the patentability record fully and early.