Federal Circuit Approves Tactical Delay in Bringing Interference Action

On November 20, 2015, in In re Commonwealth Scientific Industrial Research Organisation and Bayer CropScience NV (2014-1710), the Court of Appeals for the Federal Circuit reversed a decision of the Patent Trial and Appeal Board (PTAB) that would have made it increasingly difficult for patent applicants to invoke interference proceedings in the many applications that remain subject to patent laws in effect prior to the America Invents Act. This ruling revived long-standing precedent that the PTAB decision would have overturned, and in so doing, would have imposed new requirements of prompt prosecution on patent applicants seeking interference proceedings to secure their patent rights. The reversal of this decision means that patent applicants can continue to invoke interference proceedings even years after first meeting the requirements of the interference statute.

The case was argued by Christopher North of Buchanan Ingersoll & Rooney with Todd Walters and Erin Dunston on the brief for CSIRO and Bayer CropScience NV. Previously, in the USPTO, the Buchanan team had secured a judgment that scientists at CSIRO had invented methods of controlling the expression of genes in plants before the scientists who won the Nobel Prize for their discovery of the same effect in microscopic worms. Despite this earlier victory, the PTAB refused claims of CSIRO’s patent application as barred by delays in seeking an interference. The Federal Circuit decision overturned the refusal of the claims by the PTAB, which will allow CSIRO and Bayer CropScience to secure the full patent protection to which they are entitled.

The "first inventor to file" provisions of the America Invents Act (AIA) will eventually make interference proceedings obsolete and no longer provide for patent office determinations of who was actually the first to invent when two different inventors claim the same invention. However, there are still very many applications pending for which the pre-AIA provisions apply and interference proceedings continue to be declared. In 2015, through November, 29 interferences were declared. The statutory provision for such interference proceedings, 35 U.S.C. § 135, that was in effect prior to the enactment of the AIA continues to apply to any application that ever contained a claim with an effective filing date prior to March 16, 2013, and any continuation or divisional applications claiming the benefit of the filing date of such an application. Applications subject to the pre-AIA interference statute could still be pending through March 2024.

In the underlying proceeding, Interference 105,754, Commonwealth Scientific Industrial Research Organisation v. Carnegie Institute of Washington and University of Massachusetts was declared in 2010. In the proceedings in the USPTO, Carnegie challenged CSIRO’s interfering claims as belated. The pre-AIA provisions of 35 U.S.C. § 135 provide one year in which an applicant can copy the claims of an issued patent to provoke an interference. Although CSIRO had presented interfering claims within a year after Carnegie’s first patent issued, CSIRO allowed those claims to lapse and did not formally request an interference until a few years later when the claims were resubmitted in a continuation application.

The PTAB ruled that the one-year time limit to copy claims in 35 U.S.C. § 135 included an implicit additional requirement of "promptitude" in pursuing an interference, and that CSIRO had delayed the declaration of the interference by its actions. The PTAB refused all but four of CSIRO’s claims and maintained that refusal even after Carnegie had declined to contest the issue of priority of invention.

If the PTAB ruling had stood, it would have made it increasingly difficult for patent applicants to invoke interference proceedings over time as applicants would have been required to provoke an interference without delay, starting within a year after the first patent claiming the same invention issued.

However, the PTAB ruling was contrary to the plain language of the statute. The pre-AIA statute requires only one thing for an applicant to avoid having their claims to the same or substantially the same invention as a claim of an issued patent be barred − that the patent applicant has made such a claim before one year after the patent was granted. The PTAB’s ruling was also contrary to old precedents in which the statute was construed. Interpreting an earlier version of the same statute in 1947, the court’s predecessor held that a party may rely upon a claim that was presented before the bar date to satisfy the requirements of the statute for later claims, even if the original claims had been canceled. Cryns v. Musher, 161 F.2d 217, 218-20 (C.C.P.A. 1947). This principle was reiterated again thirty years later, where the court held that "the quality of the patentee’s conduct here is of no moment in determining the applicability of the §135(b) bar." Corbett v. Chisholm, 568 F.2d 759, 764-65 (C.C.P.A. 1977).

In the Judgment and Decision entered November 20, 2015, in In Re Commonwealth Scientific (2014-1710), the Court of Appeals for the Federal Circuit reiterated these principles and stated "We see no basis in this precedent or the statutory language itself for now reading in an exception to the exception in § 135(b)(1) to require a showing of diligent prosecution by the patent applicant." Thus, an applicant can continue to rely on claims presented within one year of the issuance of an interfering patent to provoke an interference, even years later, and even if those claims were canceled in the interim. This will insure that applicants who are entitled to interference proceedings can continue to invoke their rights as long as applications subject to the pre-AIA rules remain pending.

Buchanan’s Patent Office Litigation Practice Group has significant experience in Patent Office litigations, such as IPR, Post Grant Review (PGR) and Interference matters. To date, the firm has assisted with over 40 Patent Office litigation matters on behalf of both patent owners and petitioners and has filed 10 Petitions for IPRs, four petitions for Covered Business Method Reviews and two favorable Final Written Decisions denied on behalf of patent owners.