Report of the Interference Committee of the AIPLA
Chair - Rick Neifeld
I. RESPONSE OF THE AIPLA INTERFERENCE COMMITTEE TO THE SURVEY QUESTIONS POSED BY MARC JOBERT
Given time constraints, selected questions were specifically addressed. The entire set of questions will be posed to the entire committee using the survey functionality of the "patentinterference" web site at www.yahoogroups.com. The committee did not have a quorum present, but it did have 22 voting members and 47 attendees physically present at this meeting.
Question 2: Should the US go to a first to file system? NO (21 votes). Yes (6 votes).
Question 2.a - Will first to file substantially reduce overall patent costs? No (22 votes). Yes (5 votes.)
II. COMMITTEE REPORTS
Jim Laughlin reported that no action affecting our committee is pending in the Patent Law committee. Jim will help follow up on the legislative issue noted below
Todd Walters is getting several of the Trial Section opinions on the PTO web site published in the official reporters.
Ray Green spoke briefly on the black hole issue. On that issue, I handed out the survey results on statistics on the pendency of 37 CFR 1.607 requests (appended to the end of this email.)
Paul Morgan, although not a sub committee chair, noted to the APJs that they had not acted on the outstanding rules issues of duty of disclosure as it pertains to a patentee in an interference and prima facie priority showing for junior party patentees.
III. COMMITTEE VOTES
The committee voted 16 to 1 that I should broadcast email new trial section opinions via the patentinterference chat room. I will start doing this.
In heated discussions on a proposed legislative agenda, and after substantial debate on interrelationships between interference, first to file, first to invent, 102(g), pre-grant opposition, and post grant cancellation concepts, the committee, the SAPJ and the CAPJ all seem to be strongly in favor of superceding the current interference system with a post grant cancellation proceeding. The impetus to do so is partially a result of the success of the preliminary motions procedures implemented by the Trial Section. Those procedures could be implemented in a cancellation proceeding, thereby avoiding the need for counts and claim correspondence. Since count and claim formulation would be unnecessary, parties could theoretically file 102(g) evidence with their motions, thereby avoiding the bifurcation of motions and 102(g) evidence in the current interference procedures. In addition, since only patents would be involved, the ongoing delays due to unavailability of all related files would largely disappear. The committee agreed that implementing the current preliminary motions procedures in a post grant cancellation proceeding would result in decisions in about one year from declaration of the proceeding, and substantially truncate the pre declaration black hole period (see statistics below).
The committee recognized that the envisioned cancellation proceeding would be quicker, smaller in scope, less complicated, and fairer to both parties. I will follow up with the Interference Committee Board Liaison (Rex Stratton) on how to proceed to raise this issue within AIPLA. However, if you have any feedback, please post it to the patentinterference chat room.
IV. 37 CFR 607 SURVEY DATA AND ANALYSIS
RESULTS OF SURVEY ON PENDENCY OF 37 CFR 1.607 REQUESTS PRIOR TO DECLARATION OF INTERFERENCE
Number of practitioners responding: 10
Number of pending 37 CFR 1.607 requests reported: 35
DURATION OF PENDENCY: 607 REQUESTS PENDING BETWEEN
0-1 YEAR: 9
1-2 YEARS: 15
2-3 YEARS: 5
3-4 YEARS: 3
4-5 YEARS: 0
> 5 YEARS: 3
From this data, statistically speaking, it appears that:
9/35 (26%) of 607 requests are acted upon within one year of being requested
24/35 (68%) of 607 requests are acted upon within 2 years of being requested
29/35 (83%) of 607 requests are acted upon within 3 years of being requested
32/35 (89%) of 607 requests are acted upon within 4 years of being requested
It appears that about 11 percent of 607 requests are "terminal"; they do not result in interferences as indicated by pendency of greater than 5 years.
Conclusion: Most interference requests mature into interferences roughly 2 years after they are requested.