F.M.W. v. D.A.T.

When a practitioner sends a communication to an administrative patent judge handling an interference without serving the opposing party's attorney of record, and the communication can be viewed as supplementing arguments in a filed paper, the Board treats it as an improper ex parte communication in an interference. The Board here made the e-mail of record, gave the sender the benefit of the doubt by assuming it only flagged a general problem, and pointed to A.S. v. B.R., Interference 104,AAA (Paper 10) (Bd. Pat. App. & Int. Dec. 2, 1998). The text states no sanction and no further rule beyond this. No prior precedent directly addressed this issue in the text; the Board only calls attention to A.S. v. B.R., Interference 104,AAA (Paper 10) (Bd. Pat. App. & Int. Dec. 2, 1998), whose content the opinion does not describe. For the opposing party, the decision means that an e-mail sent to the judge and not forwarded to its attorney of record is made of record and identified as ex parte, so the opposing party is told of it. For the party that sent it, the practitioner risks the communication being characterized as improper, although here the Board gave the benefit of the doubt, imposed no stated sanction, and noted that an extension of time could have been requested under 37 CFR § 1.645. The Board cites no Federal Circuit, CCPA or Supreme Court authority on this point; it relies on 37 CFR § 1.601, § 1.645, § 1.662(a) and § 1.3 for the other matters. LEGAL TEST OR STANDARD: The Board stated no multi-factor test. It reasoned that the e-mail went to the judge's personal e-mail address, was copied to the Chief Administrative Patent Judge, and, as far as the record showed, was not forwarded to the senior party's attorney of record, making it an ex parte communication. It then said the e-mail could be viewed as supplementing arguments in Paper 3, in which case it is an improper ex parte communication in an interference, or as calling attention to a general problem. TRIGGERING FACTS: A second practitioner at the junior party's assignee e-mailed the administrative patent judge designated to handle the interferences, at the judge's personal address rather than the USPTO address, with a copy to Chief Administrative Patent Judge Stoner at his USPTO address. The record did not show the e-mail was forwarded to the senior party's attorney of record. It came after the junior party faxed Paper 3 complaining that due dates in the NOTICE DECLARING INTERFERENCE fell in a holiday period. KEY QUOTE: "The e-mail communication can be viewed as supplementing arguments made in the electronic copies of the documents (Paper 3), in which case the e-mail communication is an improper ex parte communication in an interference." (Paper 4, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board called attention to A.S. v. B.R., Interference 104,AAA (Paper 10) (Bd. Pat. App. & Int. Dec. 2, 1998), available on the PTO web page, without describing its holding. PRACTICE TIP: Never send an e-mail or other communication to the administrative patent judge, especially at a personal address, without simultaneously serving the opposing party's attorney of record. If you need relief such as more time, file a proper paper served on the other side, for example a request for an extension of time under 37 CFR § 1.645.