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Failure to File Translation of Application Proves Fatal in Interference

03-1479
May 04, 2004
Parker, Aaron L.

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Last Month at the Federal Circuit - June/July 2004

Judges: Clevenger (author), Michel, and Schall

In Stevens v. Tamai, No. 03-1479 (Fed. Cir. May 4, 2004), the Federal Circuit reversed the judgment of the Board for Tamai, the senior-party applicant in an interference proceeding, with instructions to enter judgment for Stevens, the junior party. The Board erred in granting Tamai the benefit of Japanese Patent Application No. 3-068371 (“the Japanese ‘371 application”).

Stevens and Tamai were parties to Interference No. 103,662, declared May 9, 1997. Stevens’s patent, U.S. Patent No. 5,393,368 (“the ‘368 patent”), was filed February 7, 1994, and issued February 28, 1995. Tamai’s application, Ser. No. 08/196,839 (“the ‘839 application”), was filed on February 15, 1994, as a CIP of U.S. Patent Application No. 08/030,183 (“the ‘183 application”), filed March 29, 1993. The notice declaring the interference accorded the ‘839 application the benefit of the ‘183 application’s filing date; thus, Tamai obtained senior-party status.

Based on a preliminary motion to be accorded the benefit of the filing date of an earlier filed application under 37 C.F.R. § 1.637, Stevens obtained a constructive reduction to practice for the ‘368 patent of February 10, 1993, prior to Tamai’s priority date of March 29, 1993, based on the ‘183 application. Tamai, however, filed a preliminary motion based on the Japanese ‘371 application, filed July 31, 1991, and PCT Application No. PCT/JP92/00947 (“the PCT ‘947 application”), both of which are in Japanese. Tamai only filed a translation of the Japanese ‘371 application with his motion, failing to file a Japanese language copy of either application and similarly failing to file a translation of the PCT ‘947 application with his motion. Tamai also failed to file an affidavit attesting to the accuracy of the translation of the Japanese ‘371 application.

While the Board denied Tamai’s motion for benefit based on the PCT ‘947 application because Tamai had failed to supply a translation of that application, the Board examined the translation of the Japanese ‘371 application and determined it to be a constructive reduction to practice of the interference count. Therefore, the Board entered judgment in Tamai’s favor and against Stevens. After reconsideration, the Board refused to modify its judgment, stating that Tamai was required to file a translation of the PCT ‘947 application along with its motion. The Board further stated that Tamai failed to indicate that the ‘183 application was a translation of the PCT ‘947 application when the motion for benefit was filed.

On appeal, Stevens asserted that Tamai was precluded from directly claiming benefit of the Japanese ‘371 application because it was filed more than one year before the ‘183 application. Further, Stevens argued that Tamai needed to obtain the benefit of the PCT ‘947 application in order to obtain benefit of the Japanese ‘371 application. The Federal Circuit agreed that the Board had erred in according Tamai the benefit of the Japanese ‘371 application because he failed to prove his entitlement to the benefit of the PCT ‘947 application by filing a translation of the PCT ‘947 application along with an affidavit attesting to its accuracy with his motion for benefit.

The Federal Circuit found that Tamai’s compliance with filing requirements for international applications entering the national stage was not sufficient to prove constructive reduction to practice in an interference proceeding. Therefore, without the benefit of the PCT ‘947 application and the Japanese ‘371 application, Tamai’s effective filing date of March 29, 1993, is nearly two months after Stevens’s effective filing date of February 10, 1993. Based on this information, the Federal Circuit held that Stevens proved a constructive reduction to practice earlier in time than Tamai and remanded to the Board with instructions to enter judgment for Stevens.