Gibson v. Sturman

Informative decision only: persuasive authority, not binding precedent. When a party in an interference asks for a one-day extension because of an emergency and opposing counsel unreasonably withholds or conditions consent, the administrative patent judge may modify the standing stipulation procedure so that the requesting party may self-approve extensions of not longer than one business day by referencing the order in its paper. This applies to all time periods except Time Periods 7 and 8 in the preliminary motions stage and the "Last Time" in the priority stage. In emergencies, opposing counsel is expected to give an immediate and unconditional yes or no answer. No prior precedent directly addressed this issue; the decision cites no earlier Board decision. It modifies the standing procedure in this interference, under which parties could stipulate to extensions other than Time Periods 7 and 8 and contact the APJ only if agreement failed. For the party seeking an extension, an emergency request now gets an expected immediate yes or no, and if the other side balks, the APJ may allow self-approval of one-day extensions without a stipulation or prior approval. For the opposing party, delay, conditions or negotiation in response to an emergency request risks loss of the right to self-approve extensions, a direction to confirm counsel's authority or appoint new counsel, and an expectation of better cooperation. The Board relied on 37 CFR § 1.610 (construe the rules to secure the just, speedy and inexpensive termination of every interference, with pendency not normally exceeding two years), and no court authority is cited. LEGAL TEST OR STANDARD: No multi-factor test. The APJ applied 37 CFR § 1.610, under which the interference rules are construed to secure the just, speedy, and inexpensive termination of every interference, and the APJ controls the interference so pendency does not normally exceed two years. Measured against that, the question was whether opposing counsel showed the expected level of understanding and cooperation, which in an emergency means an immediate and unconditional answer, yes or no. TRIGGERING FACTS: Senior party's counsel's law partner died on December 25, 2002, with a viewing on December 27, 2002, the day papers were due. Counsel left a voice mail seeking a one-day extension after reaching out to opposing counsel, who had not agreed. Junior party's counsel later said she had replied by e-mail with two conditions and that it was normal to get client authorization first. The APJ found the request so patently reasonable that the failure to agree wasted Board resources and increased cost. The remedy covered extensions of not longer than one business day, excluding Time Periods 7 and 8 and the Last Time in the priority stage. KEY QUOTE: "In emergency situations such as this, the administrative patent judge expects the opposing counsel to give an immediate and unconditional answer, yes or no, so that the party with the emergency would know whether he or she has gotten the one-day extension or he or she needs to arrange a joint conference call with the administrative patent judge immediately." (Paper No. 43, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The order modifies the interference's own standing procedures, which assumed reasonable understanding and cooperation from both parties. PRACTICE TIP: If you need a short emergency extension in an interference, contact opposing counsel first and state the reason. If you are the opposing counsel, give an immediate, unconditional yes or no, and do not negotiate conditions or wait for client authorization. Make sure lead and backup counsel have authority to stipulate to brief extensions. If you doubt the emergency, withhold consent but be ready to explain why.