Waterman v. Birbaum

When a pending application was expressly abandoned before the interference was declared, the Board lacks subject matter jurisdiction because 35 U.S.C. § 135(a) does not authorize an interference between an abandoned application and an unexpired patent, so it must terminate the interference for lack of subject matter jurisdiction. The Board will not further evaluate any pending preliminary showing, here the Rule 608(b) showing, even though a declaration order had already issued. No prior precedent directly addressed this issue as a holding; the Board only cited Petrie v. Welsh, 21 USPQ2d 2012 (Bd. Pat. App. & Int. 1991), by "Compare" signal, where the patent had expired before declaration. For the opposing party (here the senior party patentee), the decision means an interference declared on an application already abandoned is void and ends without any merits or showing evaluation. For the applicant (the junior party), express abandonment filed before declaration defeats the interference and the Board will not consider the Rule 608(b) showing. The Board cited no Federal Circuit, CCPA or Supreme Court authority; it relied on 35 U.S.C. § 135(a) and 37 CFR § 1.606. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 135(a) and 37 CFR § 1.606, an interference may be declared between a pending application and an unexpired patent when the Commissioner is of the opinion that they claim the same patentable invention. The Board stated that § 135(a) does not authorize an interference between an abandoned application and an unexpired patent, so jurisdiction is lacking when the application was abandoned as of declaration. TRIGGERING FACTS: The interference was declared 9 February 2000 between the Waterman application and the Birbaum patent. Waterman had filed an express abandonment on 18 January 2000, before declaration, which the Board did not know of. The parties informed the Board by a Joint Communication (Paper 3). KEY QUOTE: "The Patent Statute (35 U.S.C. § 135(a)) does not authorize an interference between an abandoned application and an unexpired patent." (Paper 4, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Petrie v. Welsh, 21 USPQ2d 2012 (Bd. Pat. App. & Int. 1991) with a Compare signal, as an analogous termination for lack of subject matter jurisdiction where the patent had expired before declaration. PRACTICE TIP: If an application is expressly abandoned, promptly notify the Board, as counsel did here by joint communication, because the interference cannot proceed. Do not expect the Board to evaluate a Rule 608(b) showing or other pending matters once jurisdiction is lacking.