On September 23, 2019, the Patent Trial and Appeal Board (“PTAB”) issued a decision dismissing Sigma-Aldrich’s interference petition related to the revolutionary CRISPR-Cas9 biotechnology. The claims at issue in Sigma-Aldrich’s petition were directed to methods of genetically modifying a eukaryotic cell using a CRISPR-Cas9 system. The petition was unusual because it sought an interference although none of Sigma-Aldrich’s claims had yet been allowed. On this basis, PTAB denied the petition as premature (and on other procedural grounds) and dismissed it without prejudice to refiling.
We previously reported on Sigma-Aldrich’s petition here. Sigma-Aldrich’s petition sought an interference between itself and the Regents of the University of California (“UC”) that would parallel interference no. 106,115 (declared on June 24, 2019) between UC and the Broad Institute (“Broad”). In its Decision on Petition, PTAB dismissed the petition for procedural and technical reasons, rather than reaching the merits of the request. The dismissal serves as a reminder to applicants to mind the form and content of their requests for a declaration of interference.
PTAB first explained that the petition was improper pursuant to 37 C.F.R. § 1.4(c) because it was directed to multiple matters considered by different branches of the USPTO. 37 C.F.R. § 1.4(c) states that “each distinct subject, inquiry, or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.” Here, the petition was filed under 37 C.F.R. § 41.103 with respect to the request for PTAB to declare an interference. It also appeared to request supervisory review of the Examiner’s non-final Office action under 37 C.F.R. § 1.181, which falls under the jurisdiction of Technology Center 1600. The application further requested that the Director of the USPTO waive or suspend regulations under 37 C.F.R. § 1.183 to allow Sigma-Aldrich to seek an interference without a determination that at least one of their claims are patentable.
Next, PTAB found that Sigma-Aldrich’s request to declare an interference was premature. Under 37 C.F.R. § 41.102, before a “contested case” is initiated, except as PTAB may otherwise authorize, examination must be completed and there must be at least one claim that is patentable but for a judgment in the contested case. A patent interference is a “contested case” under 37 C.F.R. § 41.200(a). Because none of Sigma-Aldrich’s claims have been allowed, the requirement of claim that would be patentable but for the judgment was not satisfied.
Finally, PTAB determined that even if it exercised its discretion and reviewed Sigma-Aldrich’s and UC’s claims for purposes of declaring an interference, the petition provided an insufficient basis for PTAB to evaluate the suggestion of an interference. The petition did not comply with the requirements of 37 C.F.R. §§ 41.202(a) and 41.203(d) for suggestions regarding an interference or the addition of an application to an existing interference. For example, to suggest an interference, an applicant must identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts. 37 C.F.R. § 41.202(a). According to the PTAB, Sigma-Aldrich’s petition failed to do this.
PTAB dismissed the petition without prejudice, which leaves open the possibility of a refiling.
