Thomas v. Pippin

Informative decision only: persuasive authority, not binding precedent. When a party appeals a final Board interference judgment to the Federal Circuit, the Board retains authority under Loshbough v. Allen to perform purely ministerial acts, so it may accept for filing, in the interference file only, a request to convert an involved application to a SIR, so long as it takes no action on the merits of the request. The Board lacks jurisdiction to act on the merits during the appeal, and the earliest merits action in the agency is after the Federal Circuit issues its mandate. No prior precedent directly addressed this issue; the Board treated Loshbough v. Allen as the relevant precedent and said Hyatt v. Boone did not involve a SIR request filed during a Federal Circuit appeal. For the opposing party (Thomas), the decision means it cannot defeat the filing by arguing the Board lacks jurisdiction or that the request was untimely, because acceptance for filing is ministerial and conversion does not occur on filing. For the applicant seeking a SIR (Pippin), it preserves the ability to lodge the request in the interference file before the repeal of 35 U.S.C. § 157 took effect on 16 March 2013, with no ruling on what happens to the request later. The Board relied on Loshbough v. Allen, 359 F.2d 910 (CCPA 1966), for the point that jurisdiction attaches in the strict sense upon the notice of appeal but a PTO board may still exercise a purely ministerial function. LEGAL TEST OR STANDARD: Issue 1 asked whether the Board has authority to grant leave to file a SIR conversion request after a notice of appeal to the Federal Circuit; the Board answered by asking whether the filing is a purely ministerial function under Loshbough v. Allen. Issue 2 asked, assuming authority, whether to exercise discretion to grant leave. The Board also asked whether authorizing the filing would interfere in any manner with Federal Circuit proceedings and deliberations; if it would, the motion would be denied. TRIGGERING FACTS: The Board entered judgment against junior party Thomas on Count 1 after Thomas said it would file no priority statement or priority motion, and Thomas appealed to the Federal Circuit. Senior party Pippin then moved to file a SIR request (Ex 1011) for its involved application, a complete application under 37 CFR § 1.293(a). Pippin asked for no action on the request, and 35 U.S.C. § 157 was to be repealed effective 16 March 2013. The request was accepted only in the interference file, not the application file. KEY QUOTE: "Because the filing of the SIR request is viewed as a ministerial action, we hold that we have authority to authorize Pippin to file its SIR request." (Paper 97, p. 5) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Loshbough v. Allen, 359 F.2d 910 (CCPA 1966), as the relevant precedent, and distinguished Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998), as not involving a SIR request filed during a Federal Circuit appeal. PRACTICE TIP: If you want to file a SIR request while an interference appeal is pending, move for leave to file it in the interference file only and expressly ask for no Board action on the merits. Do not ask the Board to examine or act on the request, and do not argue that filing converts the application, because the application stays a pending application until the Federal Circuit proceedings conclude.