Affirming the Patent and Trademark Office's Board of Patent Appeals and Interferences (the Board), the U.S. Court of Appeals for the Federal Circuit provided specific guidance concerning the sufficiency of corroborating evidence for establishing reduction to practice in the context of interference practice. In re Harold R. Garner, Case No. 07-1221 (Fed. Cir., Dec. 5, 2007) (Moore, J.).
The patent applicant, Harold R. Garner, provoked an interference with an earlier-filed patent application after it was cited against him during prosecution of his patent application. To do this, Garner amended his application to copy the claims of the senior application and submitted evidence under Rule 202(d) that he had reduced his invention to practice before the senior application's effective filing date.
The Board granted the interference request, but determined that Garner's initial filing for priority was insufficient. Moreover, Garner's attempt to remedy the deficiency by submitting additional evidence of priority was procedurally flawed because it was untimely. Only after the Board issued an order to show cause as to why judgment should not be entered against Garner in the interference did he proffer three important evidentiary items: the specification of his provisional application; the specification of his utility application; a 37 C.F.R. §1.131 declaration that he had filed during prosecution. The Board rejected these items as "new evidence" under Rule 202 concerning interference proceedings and refused to consider them because they were not part of Garner's original filing. Without sufficient evidence of an earlier reduction to practice to establish priority, the Board issued judgment against Garner.
On appeal, the Federal Circuit first considered whether Garner's evidence was untimely. The Court first acknowledged that the U.S. Patent and Trademark Office (USPTO) is entitled to substantial deference in interpreting its own regulations. Even so, the Court concluded that the Board's interpretation of "new evidence" was inconsistent with Rule 202 because it resulted in different treatment of patent specifications under different subsections of that rule. To be consistent with other subsections of the rule, the Court held that Garner's provisional and utility patent specifications were not "new matter" because they were in his original patent application filings. Accordingly, Garner was permitted to rely on these pieces of evidence, but he was not permitted to rely on the §1.131 declaration.
Nevertheless, the Court affirmed the Board's adverse decision regarding whether the evidence was sufficient to show corroboration of reduction to practice. Even with his patent specifications in evidence, Garner's submissions to the Board did not sufficiently corroborate his claim of actual reduction to practice. At most, the evidence corroborated the existence of a device, but that is insufficient. Quoting its own decision in Cooper v. Goldfarb, the Court noted that the law does not require that every point of a reduction to practice be independently corroborated. However, the Court found corroboration of the existence of Garner's device insufficient to establish corroboration of reduction to practice without corroboration that the device worked for its intended purpose. Thus, the Court held that the Board's failure to consider Garner's additional evidence amounted to harmless error and affirmed the Board's Judgment that Garner failed to make a prima facie showing of priority.
Practice Note: First, be sure to include all corroborating evidence of priority in your original Rule 202(d) filing for interference. Second, ensure the evidence you submit shows not only the existence of the invention, but also that it worked for its intended purpose.
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