by Richard Neifeld, Ph.D, Neifeld IP Law, PC, Arlington VA. (1)
Interference law is an area of U.S. patent law with which all patent practitioners should be familiar at least to the extent necessary to provide useful advice. This paper provides an overview of interference law and practice toward that end. In sequence, this paper defines interference, explores the consequences of the holding in Winter v. Fujita including (1) apparent limitation on interference proceedings and (2) how and why to avoid interference proceedings.
II. Definition of Interference
In this paper, I distinguish between interference and an interference proceeding. Interference is a condition precedent to declaration of an interference proceeding.
Interference is defined by a synthesis of statute, case law, and rule. The relevant statutory section is 35 USC 135(a), which states in pertinent part that:
Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference [sic; interference proceeding] may be declared.... [Bold and italics added for emphasis; interpolation supplied.]
Thus, the statute leaves the criteria under which an application and either another application and/or patent interfere to "the opinion of the Director." Those criteria were the subject of the holding in Winter v. Fujita, 53 USPQ2d 1234 (PTOBPAI 1999)(expanded panel consisting of Stoner, Chief APJ, McKelvey, SeniorAPJ, and Schafer, Lee, and Torczon, trial section APJs)(opinion by SAPJ McKelvey), wherein the expanded panel stated that:
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.
The Court of Appeals for the Federal Circuit cited that construction with approval in Noelle v. Lederman, Docket No. 02-1187, 355 F.3d 1343; 2004 U.S. App. LEXIS 774; 69 USPQ2d 1508, (Fed. Cir. January 20, 2004); rehearing en banc denied at 2004 U.S. App. LEXIS 9107 (Fed. Cir. April 9, 2004). As stated in Noelle:
In order for an interference-in-fact to exist, invention A must anticipate or make obvious invention B, and invention B must anticipate or make obvious invention A, thereby meeting both prongs of the 'two-way' test.
On August 12, 2004, the Federal Register published "Rules of Practice Before the Board of Patent Appeals and Interferences, Final Rule". See 69 FR 49960. These rules over haul all practice before the Board, including the rules for interference proceedings. With respect to interference proceedings, these rules specify what constitutes the opinion of the Director within the meaning of 35 USC 135(a) that interference exists. Specifically, new rule 37 CFR 41.203(a) now defines the existence of interference as follows:
(a) Interfering subject matter. An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.
Thus, the Director has, by rule, memorialized the holding in Winter. What this means is that interference exists only when and between claims of two parties that are either obvious or anticipated in view of each other. Only in instances in which interference exists is the Director authorized to declare an interference proceeding. 35 USC 135(a); 37 CFR 41.203(b).
III. Consequences of Winter
Another consequence of Winter is that it reduces the availability of interference proceedings for the purpose of cancelling claims in an opponent's patent. (7) Just as the two-ways test makes it easier to avoid an interference proceeding, the two-ways test also makes it harder to obtain an interference proceeding. Thus, the holding in Winter limits interference proceedings as a substitute for a generally applicable post-issuance cancellation proceeding. This limitation is one of the factors motivating the industry-wide push for a true post-issuance cancellation proceeding. In fact, interference proceedings were and remain a very imperfect tool for obtaining cancellation of invalid patents for a number of reasons. Those reasons are apparent in view of the discussion below.
IV. Why You Would Want to Avoid an Interference ProceedingYou would want to avoid an interference proceeding if that was the best course to meet your client's business goals. Why might avoiding an interference proceeding meet your client's business goals? For the following reasons.
Our view of the landscape for interference law and practice was fundamentally changed by Winter. Winter tells us that interference only exists when claims meet the two-ways test. As a corollary, amending and antedating may be used to avoid an interference proceeding.Date/time: November 1, 2004 (10:29am)
1. I can be reached via my contact information at: www.Neifeld.com.
2. 37 CFR 1.601(n), which has now been superceded, read:
Invention "A" is the same patentable invention as an invention "B" when invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A". Invention "A" is a separate patentable invention with respect to invention "B" when invention "A" is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A".
3. See Chief Judge Lourie's dissent at 334 F.3d 1264, 1273; 2003 U.S. App. LEXIS 13508, ___; 67 USPQ2d 1161, ___, which reads:
I believe the Board's action constitutes an abuse of discretion because the language of Rule 601(n) plainly describes a one-way test and does not support a two-way test. While Winter does hold that a two-way test is appropriate, its conclusion, not binding on us, is unsupported by any reasoning. ... [A]nd the majority opinion argue that the PTO's comments in promulgating its interference rules should be considered in our interpretation of the rules, but, when they are contrary to their plain meaning, such comments cannot alter the meaning of the rules.
4. Old rule 37 CFR 1.131 precluded antedating when the application claimed the same patentable invention specified in old rule 1.601(n). New rule 37 CFR 1.131 as amended by the rules package published in the Federal Register August 12, 2004 precludes antedating when the application claims the same patentable invention specified in 37 CFR 41.203(a), and 37 CFR 41.203(a) specifies the two-ways test.
5. Cf. Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977) and Case v. CPC International, Inc., ___ F.2d ___, ___, 221 USPQ 196, 200 (Fed. Cir. FC 1984)(affirming the practice of phantom counts).
6. See Neifeld, "Winter, its Impact on Prosecution and Patent Strategy, and Comments on 35 USC 135(b)(2) ," posted at http://www.neifeld.com/zarfas_040406.htm.
7. See Gholz, "Is the Declaration of an Interference a Ticket to Ride to the End of the Line?," posted at http://www.oblon.com/Pub/display.php?gholz980701.html.
8. See for example "Patent Interference Costs Statistics" Neifeld, 86 JPTOS 13 (2004) which is also posted on http://www.neifeld.com/advidx.html for some information cost of motions in interferences.
9. See Martin v. Clevenger, 11 USPQ2d 1399, 1400 (Comm'r 1989), n. 1., which reads:
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.
10. See for example Wu v. Wang, 129 F.3d 1237; 1997 U.S. App. LEXIS 30581; 44 USPQ2d 1641 (Fed. Cir. 1997). The opinion identifies that Wu provoked the interference in its application 07/627,975. USPTO records show that application was filed December 17, 1990, and the opinion indicates that an APJ declared an interference on August 1, 1991, that a final hearing was held in the interference on November 17, 1995, a final judgement issued June 19, 1996, that an appeal to the to the Court of Appeals for the Federal Circuit (CAFC) was filed July 25, 1996, that Wu filed a civil action in the D.C.D.C. September 26, 1996, and dismissing the appeal in favor of the civil action. Subsequently, an appeal from the civil action was had to the CAFC, and a writ of certiari to the Supreme Court denied in 2000; see Wang v. Winner Int'l Royalty Corp., 530 U.S. 1238, 147 L. Ed. 2d 289, 120 S. Ct. 2679, 2000 U.S. LEXIS 4144, 68 U.S.L.W. 3756 (2000).
11. 35 USC 102(g)(2) reads:
... or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. [Subsection (g) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806).]