Eliminating the Black Hole of Interferences

By Richard A. Neifeld

Table of Contents

I. Introduction

II. Overview of Pre-Interference Procedure

III. Inquiries in the USPTO

Feedback from the Board

V. Outstanding Issues

I. Introduction

On average, I believe that the inventions claimed in an interference requested by an applicant are more valuable, and therefore more worthy of expedited action in the USPTO, than the inventions claimed in other 35 USC 111 patent applications. This belief follows from the fact that an applicant requesting an interference knows that a fully contested interference costs hundreds of thousands of dollars, which is far more than the cost of ex parte patent prosecution. With that cost in mind, an applicant will not usually request an interference unless the applicant thinks the claimed invention is worth at least the cost of the interference. In fact, the USPTO has recognized the importance of rapidly resolving interferences requested with a patent by requiring that the examining corps and the Board act on that class of applications with "special dispatch." Unfortunately, the existence of a contested interference usually has exactly the opposite effect, delaying the issuance of a patent by the sum of the pre-interference period and the interference period, which is usually several years. The resulting delay in issuance of a patent may shorten the term of the patent.

In fact the period from when an applicant requests an interference to when the interference is declared is so mysterious that that period (or at least the part of that period after the examiner forwards the files to the Board) has been referred to as "the black hole" of interferences. The causes of the pre-interference delay and procedures that may reduce that delay are discussed below.

II. Overview of Pre-Interference Procedure

An applicant requests an interference by filing a paper in the application complying with the requirements of either 37 CFR 1.604 (for an interference with another application) or 37 CFR 1.607 (for an interference with a patent). If, upon review of the applicant's request for an interference, the examiner determines that an interference should be declared, the examiner is required to prepare an interference memorandum complying with the requirements of 37 CFR 1.609(b) and then forward the interference memorandum and the files to the Board. 37 CFR 1.609(a). The interference memorandum contains one or more proposed counts and the claims that the examiner believes correspond to each proposed count, provides a basis for that correspondence, and indicates for which of each party's earlier applications the examiner believes that party should be accorded the benefit of the earlier application's filing date.

The details of what actually occurs in the USPTO when an applicant requests an interference are discussed below.

III. Inquiries in the USPTO

Motivated by discussions with Ray Green, Chair of the Interference Committee of the AIPLA, and by one particularly egregious case I am handling, I investigated what pre-interference procedures were in place inside the USPTO. I was eventually referred to the Commissioner's delegee at that time, which was Examiner Peter Wong. In response to my inquiry, Peter indicated via email that:

I did an informal survey with a couple of Technology Centers and found out that the TC Interference Specialists are usually the contact person(s) for any interference matters. There is a procedure in place for cases remanded from the Board to the TCs, however, the enforcement of the procedure in each TC is not consistent. We are looking into new procedures to ensure that we can better serve our customers in dealing with interference cases. In the mean time, here is the list of TC Interference Specialists:

TC 1600 - Michail Woodward, SPRE and Anthony Caputa, SPRE
TC 1700 - Doug McGinty, SPRE
TC 2700 - Gary Shaw, QAS and Jack Harvey, QAS
TC 2800 - Hien Phan, SPRE and Ed Glick, SPRE
TC 3600 - Randy Reese, SPRE and Ken Dorner, SPRE
TC 3700 - Robert Webster, SPRE

If I could be of assistance in any way, please give me a call or drop me an email.

I then called at least one of the "TC Interference Specialists" from each TC. Several of the SPREs were quite candid and informative. However, one SPRE indicated that it would be improper to talk with me about internal USPTO policy, and that SPRE suggested I take that issue up with Deputy Commissioner ("DC") Steve Kunin. In view of that one SPRE's concerns, I will not identify which SPREs or which TC provided substantive feedback. However, I did obtain substantive feedback from at least three SPREs in at least three TCs. Collectively, they informed me that:

1. Interference requests are not docketed in PALM;

2. The SPREs do not know of the existence of interference requests until an examiner of an application containing the request brings that fact to the SPREs attention;

3. The SPREs are not in an examiner's chain of command;

4. The SPRE in one TC indicated that that SPRE rejects essentially all of the interference requests on first review, because of defects in the requests;

5. No examiner gets a disposal count for an application containing an interference request unless the application is in condition for allowance (i.e., all claims must be allowable, but for the interference issue);

6. The examiners do not automatically get examining credit for examining interference requests;

7. Most TCs do not keep even an informal docket (i.e., some SPRE Interference Specialists do have set up their own individual ad hoc informal dockets) of applications containing interference requests;

8. The TCs do get a copy of a memo from the Board when the Board returns an interference request to the TC;

9. Examiners do not automatically get examining credit for reexamining and revising interference requests returned to them from the Board;

10. Apparently, the SPREs in many of the TCs have substantial backlogs of cases to review ("substantial" being in their estimation; I don't know what the actual delay is for any SPRE to pick up a file containing an interference request) including reexamination, reissue, and interference requests;

11. The Board has adopted a practice in some cases of meeting face to face with the examiner to expedite correction of the examiner's interference memorandum;

12. The SPREs act as both a clearing house for examiners' questions and as reviewers of interference memorandum drafted by the examiners;

13. The SPREs review 37 CFR 1.609(b) statements for sufficiency, review the examiners' writeups of why claims do and do not correspond, and confirm that all related application files are present; and

14. One SPRE indicted the most significant delays in processing interference request were caused by (1) lost files and (2) the 37 CFR 1.609(b) burden on the examiner to explain why each claim, particularly each dependent claim, does or does not correspond to the count. That SPRE indicated that 20% of the requested files were in fact lost.

In response to the one SPRE's suggestion that I discuss the issues with DC Steve Kunin, I emailed Steve a request for information and comments numbered 1-5. Steve apparently circulated my email internally, had the circulated version returned to him with remarks by various USPTO personnel embedded in brackets, and then responded to me via email, including in his email my five comments and responses to them. His email states that:

At the moment this is being discussed at the operational level. I suggest that you discuss this with Esther Kepplinger, who will, I believe attend the AIPLA meeting in Pittsburgh. See other comments below. Stephen G. Kunin

-----Original Message----- From: RNEIFELD@oblon.com [SMTP:RNEIFELD@oblon.com]
Sent: Wednesday, May 03, 2000 2:01 PM
To: skunin@USPTO.GOV
Cc: RGreen@BrinksHofer.com; Bruce.Stoner@USPTO.GOV

Dear Steve,

I represent the AIPLA interference sub-committee charged to investigate and report on solutions to what has been referred to as the "black hole" problem, i.e., the delay at the group level in getting files containing interference requests examined and, when applicable, sent to the Board.

1. If there is an internal policy change that the PTO is considering that relates to this issue, the AIPLA interference committee would love a chance to review it, discuss it at the upcoming Pittsburgh meeting, and to provide comments and feedback. [This is being worked by Bruce Stoner and Fred McKelvey. Bruce would be the better person to talk to on this matter.]

2. If there is an internal policy change pertaining to examiner interference searches, I am sure that the AIPLA interference subcommittee would love to review that as well. [I know of no specific changes, but there are some automation initiatives being worked on to address the subject. Esther may know more about what is happening in this regard.]

3. If you can provide any information on these subject, or if you can provide any written material preferably sufficiently prior to the Pittsburgh meeting, Ray Green, the committee chair, or I, might be able to distribute it prior to the meeting. [I don't know of anything that is in writing in final form.]

4. Are the SPREs in each tech center authorized to discuss their Tech Center's procedures for dealing with interference requests with me? [This is something that Esther can address.] Some of the SPREs have indicated a reluctance to discuss how interference requests are handled at the group, even over the telephone, citing Office policy. I don't want to prompt anyone to violate office policy yet I do want to obtain useful information. [There may be some technology center policies they are reluctant to discuss. Our office wide policies appear in the MPEP 2300 and are public.]

5. FYI - I previously discussed my inquiry with Peter Wong when he was on detail to the Commissioner's office (and he was the person in the Commissioner's office to whom my inquiry was delegated) in December 1999 and he emailed me the names of interference responsible SPREs in the Tech centers. [Esther would be the point of contact for correspondence. Peter has returned to the Corps.]

In response to the information I received from the Commissioner's office and the SPREs in each TC, I drafted a report to the AIPLA interference committee and circulated the draft to CAPJ Stoner and SAPJ McKelvey in mid May, 2000 so they would have time to review it prior to the then upcoming Interference Committee meeting of the AIPLA in Pittsburgh. Ray Green kindly distributed the report at the meeting. The report contained my findings and the following suggestions based upon those findings.

1. Docket interference requests in PALM. Docket dates for review and action upon interference requests, and for review and action upon rejected interference requests. That is, place due dates for work on interference requests on the examiners' dockets, just like due dates for office actions are docketed.

2. Compensate examiners for time spent on interference requests. For example, compensatory time could be based upon (1) the number of applications and patents involved in an interference initial memorandum or (2) the total number of claims in the applications and patents in the interference initial memorandum. If the examiner does not reject the interference request, split credit into two parts, and award the examiner partial credit when the interference request is first forwarded to the Board and the remaining partial credit when the interference request is finally disposed of (either by declaration of an interference or by rejection of the interference request). If the examiner does reject the interference request, provide full compensation at that time.

3. Award a count to an examiner whenever the examiner forwards an interference request to the Board instead of only when all claims are allowable but for the interference issues.

4. Do not initially transmit all of the files for an interference request to and from the Board. Instead, have only the initial memorandum papers hand carried by the examiner to the Board for an initial review by an APJ, and have the examiner attend the APJ during the review so the APJ can query the examiner and advise the examiner on changes, if necessary. Alternatively, have the examiner attend the SPRE during the SPREs review.

5. Institute a procedure to bypass the SPREs' review of (1) initial drafts of interference requests or (2) revised drafts of interference requests when SPREs' dockets are backed up, e.g., when the normal workload indicates that a SPRE won't get to review initial interference memoranda papers within two weeks. That is, docket and monitor the SPREs' work load.

6. Change the requirement that the examiners explain why every claim should or should not correspond to the count by deleting that requirement.

7. Change the requirement that the examiners explain why every claim should or should not correspond to the count by limiting that requirement to only independent claims, and group the dependent claims with the independent claims. That will let the parties fight it out the dependent claim correspondence issues in the interference. Alternatively, make dependent claim correspondence statements voluntary with the examiner.

8. When an application's file is lost, use a patent issued on that application or on a straight continuation of that application as prima facie evidence of the disclosure in the lost file, and allow the owner of the application, ex parte or inter partes, an opportunity to reconstruct the file and provide a chain of custody. Do not slow down the declaration of the interference due to the USPTO's loss of the application file.

9. When an application's file is lost and there is no patent issued on either the application or a straight continuation of the application, allow the owner of the application, ex parte or inter partes, an opportunity to reconstruct the file and provide a chain of custody. Do not slow down the declaration of the interference due to the USPTO's loss of the application's file.

IV. Feedback from the Board

CAPJ Stoner and SAPJ McKelvey addressed the Interference Committee at the Pittsburgh meeting of the AIPLA. As he has done in the past, CAPJ Stoner reported on the Board's work load, staffing, and progress in cutting down appeal and interference pendency.

Both the CAPJ and the SAPJ addressed the proposals for revising the credit awarded examiners for work done on interference requests. It was their opinion that that type of change in internal USPTO policies was not practicable due to labor relations and bureaucratic constraints in the USPTO. Then, SAPJ McKelvey commented on a number of issues, including the Board's attack on the black hole problem.

First, SAPJ McKelvey indicated that the requirement placed on the examiners to comply with 37 CFR 1.609(b) was causing substantial delay in getting interferences declared.

Second, SAPJ McKelvey indicated that Commissioner of Patents Nick Godici is now requiring a pre-interference meeting between the examiner and a Trial Section APJ for all interference memoranda, for the purpose of reviewing the examiner's draft interference memorandum prior to the examiner forwarding the files and memorandum to the Board. In response to the Commissioner Godici's requirement, Trial Section APJs have been holding pre-interference meetings with the examiners and SPREs. SAPJ McKelvey's indicated that this procedure is helping to resolve the black hole problem.

That new procedure should be literally true, since the "black hole" is defined to be only the time from when the examiner forwards the files to the Board until the interference is declared. Since the Board will not let the examiner forward the files to the Board until the APJ has agreed with the examiner that an interference is ready to be declared, the duration of 'black hole' time during which the examiner is revising a rejected interference memorandum has been shifted back to the examining corps. That may solve the problem as far as the Board is concerned, but the question remains whether that will significantly reduce the overall pre-interference delay.

Finally, SAPJ McKelvey requested that the interference bar wait until the end of 2000 to see if the Board's attack on the black hole problem is successful.

V. Outstanding Issues

The Board's action is commendable. The Board's action will certainly cut down on the average length of the period from when an interference request is actually forwarded to the Board until the interference is declared. It may also cut down the average length of the period from when an interference request is filed until the interference request is forwarded to the Board. However, I do not believe that the Board's action alone can solve the problem because the Board does not have any authority over the examiner corps. 35 USC 6(b).

The Board's attack on the pre-interference delay does not address (1) the period from when an interference request is filed until the examiner considers the interference request, (2) the period of the review by the SPREs, and (3) the period(s) during which the examiner is redrafting rejected interference requests after meetings(s) with the SPREs and the APJs.

Since there is no USPTO-wide docketing of the filing of interference requests, no one knows the average pendency of interference requests. Some of the TC SPREs have noted this problem and devised a partial solution; they have each set up ad hoc interference request docketing. However, the ad hoc docket systems do not catch interference requests until an examiner brings an interference request to the attention of the SPRE, and the SPREs are not in the examiners' chain of command and therefore cannot rearrange the priorities in the examiners's dockets. Moreover, there seems to be no positive incentive for an examiner to pick up an interference request or a rejected interference memorandum for correction. Furthermore, there appears to be no incentive for an examiner to forward an interference request to the Board until all claims in the involved application are allowable.

To solve the pre-interference delay problem, the USPTO should (1) implement a docketing system that identifies interference requests when they are filed and which tracks and dockets action in the interference requests in the same fashion that it tracks and dockets office actions and responses to office actions, (2) provide examining credit proportional to the work involved in preparing interference memorandum, and (3) credit examiners with a disposal notwithstanding the existence of unpatentable claims in the application. Unless these actions are taken, I predict that continued slow and uncertain action on interference requests will remain a fact of life.