The Board Must Decide Every Patentability Motion That is Fairly Raised and Fully Developed During the Interference¹

INTRODUCTION

For many years, I have been publishing an annual article in the Journal of the Patent and Trademark Office entitled A Critique of Recent Opinions in Patent Interferences. Since 2006 I have included in that critique a section entitled "Riding to the End of the Line" dealing generally with the issue of when the BPAI will decide issues that it isn't absolutely required to decide in order to enter judgment in a given interference and specifically with the issue of when the BPAI will go on to the second phase of an interference³ despite the fact that its decision on the first phase of the interference⁴ could be used to enter a judgment terminating the interference. I also wrote an article in this journal entitled When is the Declaration of an Interference a Ticket to Ride to the End of the Line?, 13 Intellectual Property Today No. 1 at page 16 (2006).

WHAT THE BOARD DID IN BARANY V. McGALL AND AMGEN, INC. V. HUMAN GENOME SCIENCES, INC.

In my critique of the interference opinions published in 2009, 92 JPTOS ___ (2010), I cited Barany v. McGall (PTOBPAI 6 February 2009)(informative)(Paper No. 59 in Int. No. 105,351) for the proposition that "The Decision Whether or Not to Go On To the Priority Phase is Totally Discre...