Interferences, the U.S. Patent and Trademark Office's procedure for determining which of a plurality of inventive entities were the "first to invent," were eliminated by the Leahy-Smith America Invents Act, but they are not entirely gone:  patents and applications examined and granted under the "old" patent law can still become embroiled in them.  Accordingly, questions regarding the legal and procedural requirements remain relevant (at least until the last of the patents or applications from the old regime expire or are abandoned).  And, perhaps surprisingly, issues (even ones of first impression) can arise in an interference even now, as was the case decided by the Federal Circuit last month in In re Commonwealth Scientific & Industrial Research Organization, Bayer Cropscience NV.

Before the Court was the proper interpretation of 35 U.S.C. § 135(b)(1), that portion of the statute relating to the timing for provoking an interference (for example, by copying claims in a granted patent or published application).  The limitations in this portion of the statute are important as a matter of repose, wherein a patentee (or applicant) can rest assured that their claims would not be subject to future challenge.  (Such provisions do not exist, for example, with regard to inter partes review under the AIA, where a patent can be challenged throughout its term.)

The interference, between CSIRO and patents owned by Carnegie Institute of Washington and the University of Massachusetts ("Carnegie"), involved claims 52-62 and 69-106 of CSIRO's U.S. Patent Application No. 11/364,183 copied from  Carnegie's U.S. Patent Nos. 6,605,559, 7,622,633, and 7,538,095.  CSIRO had originally copied claims from one of Carnegie's patents before the "critical date" under the statute, but later cancelled those claims, only to reintroduce them five years later in the '183 application involved in the interference.

Carnegie moved during the interference for judgment, on the grounds that these later-added claims were untimely under § 135(b)(1), which reads in pertinent part:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

Carnegie argued that permitting this type of intentional delay was contrary to the statutory intent and that it would "frustrate the purpose" of the law to allow such intentional delays.

The Patent Trial and Appeal Board granted judgment in Carnegie's favor as a matter of first impression, despite acknowledging that this section of the statute had been interpreted to permit entry of "post-critical date" claims provided that they were not "materially different" from interfering, pre-critical date claims (and that such was the case here).  On the merits, the Board also found that Carnegie was not entitled to its priority date and entered judgment against Carnegie, cancelling the Carnegie claims in interference.  Despite having prevailed in the priority contest the Board refused entry of CSIRO's claims based on its interpretation of § 135(b)(1).

CSIRO appealed with neither Carnegie nor the USPTO participating in the appeal.  The Federal Circuit reversed, in an opinion by Judge Stoll joined by Judges Mayer and Chen.  As it turned on a matter of statutory interpretation, the panel reviewed the Board's decision de novo and held that the PTO had erred in its interpretation, even assuming CSIRO's prosecution strategy delayed declaration of the interference.  The panel's reasoning was based on its interpretation that the statute did not require diligence in prosecution or any regard for an applicant's patent prosecution strategy either by its plain language or by precedent.  Citing the CCPA, in Cryns v. Musher, 161 F.2d 217 (CCPA 1947), and Corbett v. Chisholm, 568 F.2d 759 (CCPA 1977), and its own precedent following the CCPA, in Univ. of Cal. v. Univ. of Iowa Research Found., 455 F.3d 1371, 1376 (Fed. Cir. 2006), and Adair v. Carter, 668 F.3d 1334, 1339 (Fed. Cir. 2012), the panel held that "cancellation or amendment of a pre-critical date claim does not in itself result in a violation of § 135(b)(1) so long as the later added claims are immaterially different from the precritical date claim," citing specific instances and language from these cases inconsistent with the Board's decision.  In these cases "[w]e left no room for imposition of a requirement of diligent prosecution when the requisite relationship between post- and pre-critical date claims is otherwise established" according to the opinion.

And thus did the Court reverse another PTAB opinion that, while grounded in what appears to be an attempt at equity and perhaps sound administration of the Board and the conduct of interferences, was fundamentally not based in either the statute or case law interpretation of the statute.  Even at this late date for interferences, the necessity and usefulness of the Federal Circuit's supervisory role over the Office is once again evident in this decision.

In re Commonwealth Scientific & Industrial Research Organization, Bayer Cropscience NV (Fed. Cir. 2015)
Panel: Circuit Judges Chen, Mayer, and Stoll
Opinion by Circuit Judge Stoll