Proposed Changes to Patent Interference Law and Practice (1)

I. Introduction

I propose changes to the patent interference laws and interference practice intended to improve the utility of patent interferences. My proposals herein are based upon discussions and an informal consensus reached at the fall 2001 meeting of the Interference Committee of the American Intellectual Property Lawyers Association (AIPLA). In addition, the proposals herein are based in large part on my more formal presentation of those changes at the winter 2002 meeting of the Committee. Thus, I credit the Committee for originating the proposals.

In sequence, I (1) introduce the topic, (2) outline the legal framework relating to interferences, (3) discuss the dichotomy between what the United States Patent and Trademark Office (USPTO) and the interference bar consider to be the purpose of an interference proceeding, (4) disclose the proposed changes to interference law and practice, (5) explain why the proposed changes would be advantageous, and (6) respond to counter arguments to my proposed changes.

II. Outline of the Legal Framework Relating to Interferences

A. Statutory Authority for Interferences

35 USC 135(a) provides the Board of Patent Appeals and Interferences jurisdiction over priority and patentability of inventions involved in an interference proceeding. If a party is dissatisfied with the judgement in an interference proceeding, it can file a 35 USC 146 action, but it can only raise in the 146 action those issues it raised in the interference proceeding. The party can also appeal to the Court of Appeals for the Federal Circuit (CAFC) on the record of the interference proceeding. However, an adverse party can remove another party's CAFC appeal to a district court by filing a 146 action. Importantly, 35 USC 135(a) limits the USPTO's jurisdiction to interference proceedings involving at least one pending application. In contrast, 35 USC 291 provides a district court jurisdiction over interfering patents. However, 291 claims are rarely made, indicating to me that section 291 does not effectively serve the purposes for which it exists.

In this article, "interference proceeding" means an interference proceeding in the USPTO.

B. Relevant Interference Law - Broad Estoppel Consequences Despite Limited Issue Determinations

In In re Deckler, 977 F.2d 1449, 1452, 24 USPQ2d 1448, 1450 (Fed. Cir. 1992), the CAFC held that the USPTO's ex parte rejection of application claims based upon the existence of a "judgment [of an interference that the applicant was not] entitled to claim the patentable subject matter defined in the interference count [was a proper] ... basis for [the USPTO's] rejection of claims to the same patentable invention" in post interference ex parte prosecution. Id. at 1452, 1450. See, also, Ex parte Tytgat, 225 USPQ 907, 913 (BPAI 1985) (expanded panel) "sound judicial and administrative policy dictates that an interference should settle all issues which are decided or which could have been decided." (2) 37 CFR 1.658(c) is the interference estoppel rule based upon this body of law. It estops a losing party to an interference proceeding from taking action that the party could have taken in the proceeding after the interference proceeding terminates. The existence of rule estoppel and corresponding case law are motivations for a party in an interference proceeding to file certain preliminary motions that the party knows are very likely will not be decided on their merits. The primary reason for these motions is for the purpose of preserving the party's right to take similar action in post interference ex parte prosecution, in case that party loses the interference.

Moreover, issue preclusion may prevent a parties in a patent infringement litigation from re-litigating issues, such as validity and enforceability of a patent, which were litigated in a prior interference proceeding involving that party. Cf. Coakwell v. United States, 292 F.2d 918, 130 USPQ 231 (Ct. Cl. 1961). (3)

Thus, the scope of interference estoppel is very broad. In contrast, the issues actually decided in an interference proceeding are usually limited, and relatively narrow in scope.

In JD v. SH, (4) a panel of four members of the Trial Section indicated their view that the purpose of having an interference is to "assist an examiner in the examination of a patent application." (5) Thus, the Trial Section of the Board views only the issues raised in an interference proceeding that relate to the patentability of the claims in the application(s) involved the proceeding to be those issues that the proceeding needs to resolve. The Trial Section further clarified that point in Winter v. Fujita. (6) A panel of five members of the Board including the Chief Administrative Patent Judge (CAPJ) Stoner and four members of the Trial Section stated their view that an interference proceeding is "not a full-blown pre-gant opposition ... or a full-blown patent cancellation proceeding" and that "how the Board goes about determining how to exercise discretion under Rule 642 [i.e., whether to add patents to the interference]" is also "discretionary." (7) Interpolation supplied. Further, it is my personal experience that the Trial Section often exercises its discretion in economizing judicial resources by not deciding issues raised via motion that are not required for entry of judgement.

My synthesis of the foregoing case law, of additional cases not discussed here, and of guidance provided by members of the Trial Section at numerous meetings of the interference bar is that the Board's views the purpose and scope of interference proceedings to be limited. Moreover, my experience is that the Board's view leads to decisions in interferences of relatively few of the issues typically raised by the parties.

Finally, the scope of subject matter jurisdiction for interference proceedings, at least under current Board created precedent, is relatively narrow.

In Winter v. Fujita, the Trial Section held that interference-in-fact (i.e., a jurisdictional requirement for an interference proceeding) requires two-ways obviousness. (8)

In Cragg et al. v. Martin v. Fogarty et al., (9) a panel of four members of the Trial Section of the Board held that 35 USC 135(b) barred an interference proceeding even when the party copying claims had on file within one year of the issuance of the target patent claims (1) that included all of the limitations of the claims in the target patent and (2) additional limitations that would have been non-obvious in view of the claims in the target patent. In other words, the Trial Section defined the 135(b) bar to require claims on file within the one year limit defined by 135(b) that met the same two-ways obviousness test defined in Winter as the condition for satisfying the "substantially the same subject matter" requirement of 135(b). (10)

Finally, 35 USC 135(b) was amended in the AIPA (11) to include 135(b)(2), which bars claims to "substantially the same subject matter" as claimed in a published patent application made more than one year after the publication of the barring application. (12)

Thus, under current precedent, an applicant is not entitled to have an interference with a patent when the claims in the patent are invalid in view of the allowable claims in the application, unless the claims in the application are also obvious in view of the claims in the patent. For a simple example, consider the situation where an applicant is claiming a species of a genus, and the species is non-obvious in view of a genus claim in a patent. (13)

C. Interference Procedure in the USPTO

In 1999, CAPJ Stoner established the "Trial Section" division in the Board to handle the interlocutory phase of interferences. The Trial Section has been remarkably effective in reducing interference duration and imposing a much higher degree in uniformity of practice in interferences than previously existed. CAPJ Stoner recently reported that the median for interference proceeding duration is now substantially less than 30 months. The reduction in interference pendency is due to imposition by the Trial Section, at the time of declaration of all new interference proceedings, of a standard Standing Order (14) and a standard Notice Declaring Interference, (15) and the fixed deadlines for the motions period imposed in the Order and Notice. The Order and Notice include detailed procedural requirements. Those procedures are de facto rules of interference practice as enforceable as 37 CFR 1.601 et seq. (16) I outline the aspects of the interference procedure that relate to the issues this article addresses.

An interference proceeding begins with a declaration of an interference. (17) The declaration inter alia defines (1) the applications and patents involved in the interference, (2) applications and their filing dates to which applications or patents involved in the interference are accorded benefit, (3) count(s) of the interference, and (4) which claims of each involved application and patent are designated to which count.

Subsequent to the declaration, interference proceedings have two sequential phases: the preliminary motions phase followed by the priority phase. Each phase lasts on the order of one year.

The preliminary motions phase is substantially directed toward redefining the interfering subject matter initially defined in the declaration. The preliminary motions include motions that (1) seek a judgement that opponent's claims are unpatentable to a party on a non-priority basis (37 CFR 1.633(a) motions), (2) that seek a judgement that there is no interference-in-fact (37 CFR 1.633(b)) motions, (3) that seek to redefine the interfering subject matter by amending/changing counts, claims, and designating claims as corresponding or not corresponding to counts (37 CFR 1.633(c)), (4) that seek to substitute one application for another (37 CFR 1.633(d)), (5) that seek to declare an additional interference between some of the parties (37 CFR 1.633(e)), (6) that seek to obtain or deny benefit of earlier applications (37 CFR 1.633(f) and (g)), and (7) that seek to add to the interference an application to reissue a patent involved in the interference. Importantly, 633(a) expressly excludes evidence of derivation (evidence of 35 USC 102(f) unpatentability) and evidence of priority of invention (evidence of 35 USC 102(g) prior art unpatentability and 35 USC 135(a) priority based unpatentability) in unpatentability/invalidity preliminary motions.

The necessary but not necessarily sufficient showing for grant of a preliminary motion are specified in 37 CFR 1.637. Not surprisingly, since the preliminary motions for the most part seek to redefine the interfering subject matter, the specifications in rule 637 depend heavily upon showings relating to the interfering subject matter as defined by the claims and the count(s). (18)

In addition, the rules, Order, and Notice specify that direct testimony to be via declaration, and the time period during which a party can cross-examine declarants who gave declaration supporting another party's motion ends prior to the date when the opposition to the motion must be served. Similarly, declarants can only be cross-examined on declarations supporting oppositions and replies prior to when the opposition or reply is due. This procedure is substantially different than the procedure practiced prior to the existence of the Trial Section, when cross-examination of declarants on their declarations supporting motions, oppositions, and replies was usually deferred until the priority phase. In Charlton v. Rosenstein, (19) a panel of four members of the Trial Section explained the reason for this change in procedure, stating that:

The manifest benefit of a 3-judge decision on preliminary motions is that the count becomes fixed, at least insofar as the board is concerned, before priority testimony is presented. Parties do not have to (1) guess whether the count might be changed at final hearing and (2) present alternative priority cases during the priority testimony phase to meet each possible count which otherwise might be urged at final hearing. (20)

Cross-examination during the motions period has enabled the Board to decide the motions at the end of the motions period, prior to the priority phase. However, interference proceedings are now substantially more complicated in the preliminary motions phase, and substantially more expensive in the preliminary motions phase.

The second phase of an interference proceeding is the priority phase. In the priority phase, parties contest priority of invention. The parties sequentially put on their priority evidence and cross-examine each other's priority declarants.

At some time, a panel of the Board renders judgement, which constitutes a final decision of the USPTO. Interference proceedings are most frequently resolved prior to the end of the priority phase. In some cases, judgement is entered as a direct consequence of the decisions on motions. More often, judgement is entered upon consent of the parties after the parties reach a business settlement prior to completion of the priority phase.

Notably, application(s) involved in the interference that survive judgement will not be issued until after all judicial review has terminated. (21) That review can last many years, thereby delaying the applicant's anticipated exclusive right.

III. The Dichotomy between what the USPTO and the Interference Bar Consider to Be the Purpose of an Interference Proceeding and the Problems that I Perceive with the Current System

The Trial Section of the Board has indicated via its opinions that the purpose of having an interference is to help the examiner determine whether to eventually allow the claims in the involved application, and that the Board's interference function is not to correct mistakes of the USPTO in improperly issuing invalid patents.

In contrast, those applicants that request interferences (which form the basis for the majority of interferences involving commercially important inventions) do so in large part seeking to cancel claims in patents that would cover their assignee's products. What this class of applicants desires is a comprehensive review of the patentability and validity of interfering claims.

If there was an effective alternative to interference proceedings to correct USPTO errors in issuing invalid patents, I would agree with the Board's view of the utility of interference proceedings. However, no such alternative exists. United States law provide the USPTO essentially no jurisdiction to assess validity of issued patents based upon all prior art evidence, except in interferences proceedings. (22) Interference proceedings are essentially the only type of proceeding in the USPTO in which non-self authenticating evidence of prior art is admissible to show that claims are unpatentable or invalid.

Public policy would dictate that the USPTO try to correct its errors in issuing more than one patent on the same patentable invention since multiple patents on the same invention burden the public. (23) This is especially important in commercially significant technologies, which are the technologies in which interferences are most often requested.

Moreover, the Board's view of the purpose of an interference is also a basis for its holding in Winter that interference in fact requires two-ways obviousness. The two ways obviousness test precludes interference where an application's claims are novel and non-obvious over a patent's claims, but the patent's claims are not novel or are obvious in view of the application's claims. Thus, in view of Winter, the USPTO will not declare an interference proceeding in this case, and the assignee of the application and all other members of the public remain burdened by the issued patent even though it is in fact likely invalid. Of course, an applicant requesting an interference can, in essence, admit that its claim is not novel or is obvious in view of the target patent's claims for the purposes of getting into the interference. However, that type of "election" is irrevocable, and an applicant losing priority after such an election will not be issued a patent on its otherwise patentable invention. In my view, the limitation on alternatives of being precluded from the interference or making the election via admission caused by Winter are unfair and counterproductive.

Furthermore, the effect of the Board's view of the purpose for an interference motivates which issues the Board decides in the interference, namely, only those necessary to help the examiner decide whether to allow the claims in the involved application after the interference terminates. Consequently, issues related to validity of claims of an involved patent logically will not be decided if the Board deems them unnecessary for rendering a judgement. These issues include which claims of the involved patent should correspond to the count, which patents and applications should be involved in the interference, whether additional counts should exist in the interference, whether there should be spin off interferences, and validity and enforceability of claims. In other words, most of the issues that the parties must raise via preliminary motion in order to avoid estoppel are issues that the Board may decide not to decide.

Obviously, the interference bar has a vested interest in wide applicability of interferences, and it is therefore unhappy with the holding in Winter because that holding limits the scope of interference proceedings. However, I also see the interference estoppel driven need to raise via motion all issues, even though the majority of those issues likely will not be decided, as economically inefficient and deserving correction.

Finally, there is the issue of the needless complication of preliminary motions practice introduced by linking the prerequisites for granting those motions to counts. Counts are artificial legal constructs whose only purpose should be for determining which party has priority for an invention that is non-obvious over prior art. It is in my view this complication, more than any other, is what scares away the vast majority of the patent bar from interference practice.

I address all of these concerns with proposed changes to interference law and practice in the next section.

IV. The Proposed Changes to Interference Law and Practice ,Why the Changes Would Be Advantageous, and My Response to the Counter Arguments

From a public policy and economic perspective, the USPTO should be the entity primarily charged with determining validity of issued patents. It has the technical and legal expertise and ability to provide uniformity of decisions, qualities lacking in District Courts. In addition, USPTO interference proceedings are far less expensive than any comparable District Court patent infringement proceedings in which validity may also be contested. Thus, it makes economic sense to charge the USPTO with the primary responsibility for determining issues of validity. Therefore, one goal of any change in interference law and policy should be to effect this change.

Obviously, interference proceedings should be conducted in a just, speedy, and inexpensive manner. (24) Thus, I find personally distasteful the needless complication introduced into interference proceedings by the existence of count based requirements in the preliminary motions phase. The preliminary motions are intended to redefine the interference. The fundamental argument for count based requirements is that the parties must be allowed to redefine the interference to get the correct definition of the priority contest: to define what is both non-obvious over prior art and the common patentable invention(s) of the parties.

I disagree that count based requirement for the motions are necessary or desirable. This is because I disagree with the fundamental limitations imposed on the nature of preliminary motions. A careful look at preliminary motions show that they exclude all issues of patentability/ validity of one party's claims based upon the other party's (or parties) 102(f) or (g) evidence. However, the fundamental issue in an interference is or should relate to 102(f) and (g). Any interference proceeding that reaches the priority phase will ultimately be decided on 102(f) and (g) basis. (25) Why, then, exclude such evidence from forming the basis of granting preliminary motions for unpatentability? The exclusion of 102(f) and (g) based unpatentability/invalidity motions is what causes the complications in interferences.

In fact, the exclusion of 102(f) and (g) evidence from preliminary motions is what necessitates the preliminary motions phase. To understand this conclusion, assume that 102(f) and (g) evidence is allowed as the basis for preliminary motions. By definition of an interference, the two parties are claiming the same patentable invention. This means either that a claim of one party is obvious in view of the subject matter claimed by the other party or that there is two-ways obviousness of the parties' claims. In either of these situations, one party's actual inventions (actual reductions to practice and constructive reductions to practice) are going to form the basis for 102(f) and/or (g) prior art making unpatentable/invalidating the other party's claims.

Accordingly, if each party files a preliminary motion seeking a judgement that the other party's claims are unpatentable, and bases that motion at least in part on its own 102(f) or (g) evidence of prior invention, one of those two parties' motions should ultimately be granted (after

of course oppositions and cross-examination of declarants), thereby removing the interfering claims. Thus, once those unpatentability motions are decided, the interference issues should no longer exist.

Showing unpatentability under 102(f) or (g) does not require counts, and it does not require claims designated as corresponding to counts. All that it requires is (1) proof of what is prior art applicable against the other party and (2) a showing why the target claims are unpatentable in view of the prior art. Therefore, the count based artifacts of the current preliminary motions procedures would not be required if 102(f) and (g) evidence were admissible in support of preliminary motions.

I have outlined above why the count based requirements of preliminary motions are an artifact of the exclusion of 102(f) and (g) evidence imposed by the existing rules, specifically, 37 CFR 1.633(a)(1) and (2). Moreover, if preliminary motions included 102(f) and (g) evidence, there would be no "second" phase, a separate priority phase, to an interference, except in rare cases. As a result, the average duration of an interference proceeding would be substantially reduced, perhaps by as much as 50 percent.

Danny Huntington, a well known member of the interference bar, voiced the major criticism to this proposal, when I floated it at the Winter 2002 AIPLA Interference Committee meeting. Danny voiced the concern that the proposed change in procedure would front load priority costs in interferences. Danny indicated that most interferences terminated prior to a decision on priority, and he believed that the change in procedure would therefore be economically inefficient since it would place the requirements (and costs) for priority showings in the preliminary motions phase.

In reply, I agree that most interference proceedings do not reach a decision on priority. However, this is most frequently because the parties settle at some point prior to receiving a decision on priority. Interference proceedings do not frequently terminate as a result of judgement based upon decisions on the preliminary motions. In fact, it is my experience that a substantial fraction of interferences progress well into the priority phase before the parties reach a business settlement and request a consent judgement.

In further reply, I also note that the complications introduced by the requirements in preliminary motions relating to counts, the need to make those motions in view of the interference estoppel consequences, and the fact that many motions are never decided, is also economically inefficient. The proposed change in procedure would eliminate the need for all count based showings in the preliminary motions phase, thereby avoiding this inefficiency.

Still further, consider the consequential utility of simplified interference proceedings to the patent bar at large and society as a whole. The elimination of the complications inherent in the current count based preliminary motions phase would likely make interference proceedings a lot more accessible to the patent bar at large, and therefore better serve the public purpose for which interference proceedings exist.

On whole, I believe that the reduction in interference proceeding duration and the simplification of the interference procedures far outweigh any drawbacks to the proposed change. This conclusion is the primary thesis of this paper.

I also propose additional changes.

Second, I propose that interference proceedings be converted into patent-patent proceedings in the USPTO.

Third, I propose that the scope of interference-in-fact be based upon a one-ways obviousness test.

Fourth, I propose elimination of 135(b)(2).

Anthony Zupcic, my immediate predecessor as chair of the AIPLA Interference Committee, expressed reservations about changing from an application-patent interference system to a patent-patent interference system. Anthony's view was that there appeared to be no strong motivation for such a change.

In reply, I submit that USPTO interference proceedings should be converted to patent-patent contests for the following reasons. First, the potential delay in issuing a winning applicant's application is unfair and inefficient. This is because the losing party can elect to delay for several years issuance of a winning party applicant opponent's application, simply by seeking judicial review. When the losing party's case is weak, judicial review is both an inefficient use of resources and unfair to the winning party applicant. However, a losing party may be motivated to seek judicial review because delaying issuance of an opponent's patent provides a business advantage. Providing the USPTO patent-patent interference jurisdiction instead of patent-application interference jurisdiction would avoid the inequity and inefficiency since both winners and losers would have started with patents. (26)

Second, providing the USPTO patent-patent interference jurisdiction would probably avoid the "black hole" of interferences, alleviating the, still in some cases, distressingly long pre-interference delay. (27) This is at least in part because the Board still requires examiners to indicate claim count correspondence before the Board will accept the files from the examining corps prior to declaring an interference. (28) That would not be necessary in a patent-patent interference where it was the parties' motions that would define interfering claims.

Third, the issuance of the application prior to declaring an interference would remove any doubt that the invention claimed in the application was prior art under 102(g).

Finally, the scope of patent-patent interference proceeding should be based upon a one-ways test. This is because the claims and inventive acts of each party would in fact be 102(g) or 102(g)/103 prior art possibly available timewise against the other party, if both parties had patents. Accordingly, it would make no sense in a patent-patent interference to limit the subject matter of the interference only to claims that met the two-ways obviousness test of Winter. Moreover, the Board would have no basis for construing its interference function as limited to helping examiners examine applications, since no applications would be involved.

Furthermore, the existence of a patent-patent interference proceeding in the USPTO would easily segue into full blown cancellation proceeding in which interference issues would only be a subset of the grounds for cancellation of an issued patent. Finally, the existence of such a cancellation proceeding would segue naturally into a first-to-file system if the United States ever decided to go that route.

I believe that the synergistic benefits of changing to patent-patent interference proceedings and applying a one-ways obviousness test are compelling reasons for these changes in law and practice.

V. How the Proposed Changes Could be Implemented

The changes proposed above do not require radical surgery to existing statutes or case law. In fact, only a minor change to 135(a) and minor regulatory changes eliminating portions of 37 CFR 1.633 and 637 are necessary. However, in order to avoid allowing the Board interpretation based "wiggle room" on the meaning of 135(a) and 135(b), the meaning of interference should be identically defined in both sections. Specifically, in section 135(a), the reference to applications-patent jurisdiction should be replaced by reference to patent-patent jurisdiction, and the "in opinion of the Director would interfere" should be replaced by reference to the one-ways obviousness test. Similarly, 135(b) should refer to the same test for interference as 135(a).

Finally, the existence of 135(b)(2), implemented in the AIPA, provides no utility. Its existence will lead to increased complexity in patent prosecution. (29) Accordingly, it should be deleted from the statute.

What I believe to be suitable revisions to 35 USC 135(a) and (b) appear below:

135. Interferences

(a) Whenever a claim in an unexpired patent is obvious in view of a claim in another unexpired patent an interference may be declared. The Director shall give notice of such declaration to the parties. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. A final judgment adverse to claims in a patent or a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.

(b) A claim which would interfere with a claim in an issued patent shall not be made in an application unless such a claim was made prior to one year after the date on which the patent was granted.

VI. Summary

In summary, I propose changing the interference rules or practice to allow preliminary motions to be based upon 102(f) and (g) evidence, amending the statute so as to replace application-patent based interferences with patent-patent based interferences, and defining interference to mean one-ways obviousness of claimed subject matter. The foregoing discussion explains in brief why these changes would provide substantial economic benefits to society.

1. Richard Neifeld, Ph.D., Patent Attorney, Neifeld IP Law, PC. I can be reached at or via www.Neifeld.com.

2. Tytgat relies upon the following additional cases: Blackford v. Wilder, 28 App.D.C. 535, 542, 550, 1907 Dec. Comm'r. Pat. 491, 496, 501 (1907); Daniels v. Coe, 73 App.D.C. 54, 56, 116 F.2d 941, 943, 47 USPQ 203, 205, (1940); and U.S. Rubber Co. v. Coe, 79 U.S. App.D.C. 3051, 146 F.2d 315, 64 USPQ 100 (1943).

3. See Gholz, Collateral Estoppel Effect of Decisions by the Board of Patent Interferences, 65 JPOS 67, 96-97 (1983), for a detailed discussion of this issue.

4.  http://www.uspto.gov/web/offices/dcom/bpai/its/104044.pdf, Interference No. 104,444, paper No. 55 (BOPA November 1, 1999), marked "INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION."

5. Page 5 lines 1-2.

6. Winter v. Fujita, 53 USPQ 1478, http://www.uspto.gov/web/offices/dcom/bpai/its/104283.pdf interference No. 104,283, paper No. 82 (BOPA 2000).

7. Id at ___, 18. There are two CAFC opinions strongly suggesting that the Board must decide all issues properly raised by the parties in the interference proceeding. They are Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed. Cir. 1989) and Schulze v. Green, 136 F.2d 786, 45 USPQ2d 1769 (Fed. Cir. 1998). However, the Board distinguished those cases in Winter.

8. Winter v. Fujita, 53 USPQ2d 1234 (PTOBPAI 1999)(expanded panel consisting of Stoner, Chief Administrative Patent Judge, McKelvey, Senior Administrative Patent Judge, and Schafer, Lee, and Torczon, trial section administrative patent judges)(opinion by SAPJ McKelvey). "Resolution of an interference-in-fact issue involves a two-way patentability analysis. The claimed invention of Party A is presumed to be prior art vis-a-vis Part B and vice versa. The claimed invention of Party A must anticipate or render obvious the claimed invention of Part B and the claimed invention of Party B must anticipate or render obvious the claimed invention of Party A. When the two-way analysis is applied, then regardless of who ultimately prevails on the issue of priority, the Patent and Trademark Office (PTO) assures itself that it will not issue two patents to the same patentable invention."

For a review of the issue raised by Winter, see Neifeld, "The Standard for the Existence of an Interference" 83 JPTOS 275 (April, 2001), reproduced at: http://www.neifeld.com/advart8.html .

9. Cragg et al. v. Martin v. Fogarty et al., (Interference 104,192, BPAI, July 27, 2001) (non-precedential, panel consisting of SAPJ McKelvey, and APJs Schafer, Lee, and Medley.)

10. Cragg et al. v. Martin v. Fogarty et al., pp. 35-37, stating that:

In our view, none of the authorities Fogarty cites sets forth the principle that so long as every material limitation of a patent claim is included in an applicant's claim, then the applicant has claimed substantially the same invention as the patent claim regardless of whether the applicant's claim includes additional features which may render the applicant's claim patentably distinct or separately patentable from the patent claim. *** Fogarty has failed to demonstrate that it had been claiming substantially the same invention as Martin's claim 1 within the one-year period of 35 U.S.C. 135(b).

I note in passing that that the decision in Cragg et al. is apparently in conflict with the Board's interpretation in Housey v. Berman of the "substantially the same subject matter" recitation in 135(b). In Housey, the Board concluded that the "substantially the same subject matter" in 135(b) did not mean the same thing as the test for the existence of an interference in 135(a). Although Cragg et al. is non-precedential, it is important since in it the Board does define their view of the the "substantially the same subject matter" recitation in 135(b), and because it is contradictory to the widely disseminated Housey opinion.

I also note in passing that the CAFC's opinion in In re Berger ___ F.3d ___, ___ USPQ2d ___ (Fed. Cir. Docket No. 01-1129, application Serial no. 08/315,629, January 29, 2002) is not relevant here, since that opinion did not deal head on with the definition of "substantially the same subject matter."

11. S. 1948, signed into law November 29, 1999.

12. For a discussion of changes to the patent laws made by the AIPA, see Neifeld, "Summary and Analysis of the New Patent Laws Enacted November 29, 1999" 82 JPTOS 181 (March, 2000), reproduced at: http://www.neifeld.com/advart4.html .

13. This situation is discussed at length in Neifeld, "The Standard for the Existence of an Interference" 83 JPTOS 275 (April, 2001), reproduced at: http://www.neifeld.com/advart8.html .

14. The most recent form for the Standing Order is available at http://www.uspto.gov/web/offices/dcom/bpai/standing.pdf.

15. The most recent form for the Notice Declaring Interference is available at http://www.uspto.gov/web/offices/dcom/bpai/declare7.pdf.

16. 37 CFR 1.610(e) provides APJs the power to "determine a proper course of conduct in an interference...."

17. See 37 CFR 1.611, which is entitled "Declaration of Interference." See Neifeld, "Eliminating the Black Hole of Interferences" Intellectual Property Today, Vol. 7, No. 9 (September, 2000 at 22), reproduced at: http://www.neifeld.com/advart6.html, discussing pre-interference procedure and problems.

18. 37 CFR 1.637 is entitled "Content of motions."

19. http://www.uspto.gov/web/offices/dcom/bpai/its/104148.pdf, interference No. paper No. 104,148, paper No. 147 (BOPA 2000).

20. Id at 7.

21. Martin v. Clevenger, 11 USPQ2d 1399, 1400, n1 (Comm'r 1989)(" There are two situations where PTO will not issue a patent to a winning party in an interference. First, if the interference involves a patent and an application, the board holds that the applicant is entitled to prevail, and the patentee seeks judicial review by civil action under 35 U.S.C. 146, a patent is not issued to the winning party. Monsanto Co. v. Kamp, 349 F.2d 389, 146 USPQ 431 (D.C. Cir. 1965). Second, if judicial review is sought in the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, a patent is not issued to the winning party.")

Typically, interferences are not declared until all claims remaining in an application are allowable, but for the interference issue. In those cases, the application is likely to issue without further ex parte prosecution shortly after being returned from the Board to the examining corps.

22. Public use proceedings and determinations, two other types of USPTO proceedings, are extremely rare.

23. See Neifeld, "Viability of the Hilmer Doctrine" 81 JPTOS 544 (July, 1999), reproduced at: http://www.neifeld.com/hilmer.html .

24. Per 37 CFR 1.601, the interference rules "shall be construed to secure the just, speedy, and inexpensive determination of every interference."

25. Or, perhaps 35 USC 135(a), since that section of the statute provides the Board authority to enter adverse judgement based upon priority of invention, per se, as opposed to judgement relying upon 102(f) or (g) prior art.

26. The USPTO is capable of implementing suitable rules an internal procedures ensuring that an interfering application is only issued once suitable 37 CFR 1.608 ex parte showings are made, and in instituting patent-patent interferences once the interfering application issues.

27. See Neifeld, "Eliminating the Black Hole of Interferences" Intellectual Property Today, Vol. 7, No. 9 (September, 2000 at 22). In fact, I still have two interference requests pending from 1999! My informal poll of the interference bar indicates that median time from interference request to declaration is about 2 years.

28. Former 37 CFR 1.609 used to require the examiners to perform this count claim correspondence.

29. See for example Neifeld, "Summary and Analysis of the New Patent Laws Enacted November 29, 1999" 82 JPTOS 181 (March, 2000) .

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