Are Threshold Issues Really Jurisdictional?¹

By Charles L. Gholz² and Lindsay J. Kile³

Introduction

According to 37 CFR 41.201, "Definitions," in Subpart E, "Patent Interferences," of Part 41, "PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES," of Title 37, "Patents, Trademarks, and Copyrights" of the Code of Federal Regulations:

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

1. 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 USC 112(1) of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).