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Would You Rather Have Your Opponentís Patentability Issues Decided Inter Partes or Ex Parte? 1

By Charles L. Gholz 2


To paraphrase one of SAPJ McKelveyís favorite phrases, it has not escaped the attention of the interference bar that the board is fond of relegating patentability issues to post- interference ex parte prosecution.† While some of us have speculated as to why this is so, the SAPJ himself has now explained the boardís reasoning in detail.

What the Majority Said In Karim v. Jobson

According to the SAPJís opinion (joined by APJ Barrett; concurring opinion by APJ Torczon), in Karim v. Jobson, ___ USPQ2d ____ (PTOBPAI 28 February 2007) (informative):

The issue before us is whether we should enter judgment without deciding all motions, thereby leaving certain issues for resolution by the Examiner upon resumption of ex parte prosecution of the involved Jobson application.3

Junior party Karim was in the interference on a patent and an application to reissue that patent.† All of Karimís claims designated as corresponding to the count had been held unpatentable.

Senior party Jobson had been held to be entitled to the benefit of a filing date that was prior to Karimís alleged date of invention.

The fact relevant to this article is that one of Karimís motions (its motion for a judgment that Jobsonís cl...

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