Gray v. Heeres

When a party files an abandonment of the contest under 37 CFR § 1.662(a), the Board treats the filing as a request for entry of an adverse judgment and enters a judgment on the merits against that party, even if the filing says the abandonment does not concede priority. As between the parties, that judgment establishes that the opposing party "made" (35 U.S.C. § 102(g)) the invention of the count before the abandoning party. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision. For the opposing party in the interference, an abandonment yields a merits judgment on priority, with an entitlement ruling on the record before the Board, so it need not litigate priority further. For the abandoning party, a reservation such as no concession of priority, or a stated lack of commercial interest, will not avoid a priority judgment on the merits. The decision cites no Federal Circuit, CCPA or Supreme Court authority; it relies on 37 CFR § 1.662(a) and 35 U.S.C. § 102(g), and it points to 35 U.S.C. § 135(c) and 37 CFR § 1.661 for any settlement agreement. LEGAL TEST OR STANDARD: No multi-factor test. The Board stated that notwithstanding the party's statement, (1) the filing of the abandonment of contest under 37 C.F.R. § 1.662(a) shall be treated as a request for entry of an adverse judgment (see 37 CFR § 1.662(a)), and (2) the judgment entered is a judgment on the merits which as between the parties establishes that the opposing party "made" (35 U.S.C. § 102(g)) the invention defined by the count prior to the abandoning party. TRIGGERING FACTS: Junior party Gray et al. filed an abandonment of contest under 37 C.F.R. § 1.662(a) (Paper 28) as to Count 1, the sole count, due to lack of commercial interest by the real party in interest, Sepracor. The paper stated that abandoning does not concede priority of invention to the senior party Heeres et al. The Board entered judgment anyway; the senior party's preliminary statement was returned unopened. KEY QUOTE: "FURTHER ORDERED that junior party NANCY M. GRAY and RAYMOND L. WOOSLEY is not entitled to a patent containing claims 1-15 (corresponding to Count 1) of U.S. Patent 5,474,997, granted December 12, 1995, based on 08/341,266, filed November 17, 1994." (Paper 29, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Do not file an abandonment of contest under 37 CFR § 1.662(a) expecting to keep priority unconceded. Treat it as a request for adverse judgment on the merits, and if a settlement agreement exists, address 35 U.S.C. § 135(c) and 37 CFR § 1.661.