MPEP 2301.02
Definitions

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2301.02    Definitions [R-08.2017]

37 C.F.R. 41.2 Definitions.

Unless otherwise clear from the context, the following definitions apply to proceedings under this part:

  • Affidavit means affidavit, declaration under § 1.68 of this title, or statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit in a contested case.
  • Board means the Patent Trial and Appeal Board and includes:
    • (1) For a final Board action:
      • (i) In an appeal or contested case, a panel of the Board.
      • (ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge.
    • (2) For non-final actions, a Board member or employee acting with the authority of the Board.
  • Board member means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.
  • Contested case means a Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case.
  • Final means, with regard to a Board action, final for the purposes of judicial review. A decision is final only if:
    • (1) In a panel proceeding. The decision is rendered by a panel, disposes of all issues with regard to the party seeking judicial review, and does not indicate that further action is required; and
    • (2) In other proceedings. The decision disposes of all issues or the decision states it is final.
  • Hearing means consideration of the issues of record. Rehearing means reconsideration.
  • Office means United States Patent and Trademark Office.
  • Panel means at least three Board members acting in a panel proceeding.
  • Panel proceeding means a proceeding in which final action is reserved by statute to at least three Board members, but includes a non-final portion of such a proceeding whether administered by a panel or not.
  • Party, in this part, means any entity participating in a Board proceeding, other than officers and employees of the Office, including:
    • (1) An appellant;
    • (2) A participant in a contested case;
    • (3) A petitioner; and
    • (4) Counsel for any of the above, where context permits.

37 C.F.R. 41.100 Definitions.

In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart:

Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.

Involved means the Board has declared the patent application, patent, or claim so described to be a subject of the contested case.

37 C.F.R. 41.200 Procedure; pendency.

  • (a) A patent interference is a contested case subject to the procedures set forth in subpart D of this part.
  • (b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers to the statute in effect on March 15, 2013, unless otherwise expressly indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers to the statute applicable to the involved application or patent.
  • (c) Patent interferences shall be administered such that pendency before the Board is normally no more than two years.

37 C.F.R. 41.201 Definitions.

In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart:

Accord benefit means Board recognition that a patent application provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).

Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in a patent application of the subject matter of a count. Earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must comply with the requirements of 35 U.S.C. 119-121, 365, or 386.

Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.

Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim that has been designated as corresponding to the count.

Senior party means the party entitled to the presumption under § 41.207(a)(1) that it is the prior inventor. Any other party is a junior party.

Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include:

    • (1) No interference-in-fact, and
  • (2) In the case of an involved application claim first made after the publication of the movant’s application or issuance of the movant’s patent:
    • (i) Repose under 35 U.S.C. 135(b) in view of the movant’s patent or published application, or
    • (ii) Unpatentability for lack of written description under 35 U. S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).