The
Standard for the Existence of an Interference[1]
I. Introduction
USPTO requests comments on the
standard the Director should apply in order for the Director to be of the
opinion that an interference-in-fact exists.
That request appears in the notice "Standard for Declaring a Patent
Interference," 65 FR 79809 (December 20, 2000). The standard that the Director ultimately chooses to apply will
have far reaching ramifications. Obviously, that standard will affect the scope
of interferences. However, it will also
affect practice under 37 CFR 1.131 and the desirability of implementing in the
U.S. a post grant opposition system. In
response to some early comments in response to the notice, Senior
Administrative Patent Judge McKelvey informally posed additional questions to
the interference bar.
I discuss the background to this
notice, address all of the USPTO's questions, and I also address comments from
other members of the interference bar.
My conclusions are that the USPTO has the authority to decide which test
to apply for interference-in-fact, that 37 CFR 1.601 currently specifies a
one-way test, and that a one-way test
is preferable than a two-ways test for public policy reasons.
II. Response
to the Supporting Conclusions and Statements in the Notice
The questions in the notice are
preceded by legal conclusions which appear to vest more authority in the USPTO
than I deem correct. Accordingly, I
respond to many of these conclusions prior to addressing the questions posed by
the notice.
The notice asserts that the Director
has discretion in determining what constitutes an interference, citing Ewing
v. United States ex rel. Fowler Car. Co., 244 US 1, 11 (1917)). I agree that the notice's interpretation of Ewing
is correct. I also agree that Ewing
is still good law, since 35 USC 135(a) now states that it is "the opinion
of the Director" that determines whether one application and another
application or patent interfere.[2]
The notice asserts that the
Director's decision regarding whether to declare an interference based upon a
particular fact pattern is not subject to review, citing United States ex
rel. International Money Machine Co. v. Newton, 47 App.D.C. 449, 450
(1918). I agree that the notice's
assertion is a correct conclusion to be drawn from United States ex rel.
International Money Machine Co.
insofar as the facts are limited to a single case. However, I do not agree that United
States ex rel. International Money Machine Co. authorizes the Director to
decide to declare an interference in one case and to not declare an
interference in another case where the underlying issues are identical. Whatever action the Director takes in
various cases must not be arbitrary, capricious, or an abuse of discretion. Cf. Abrutyn v. Giovanniello,
15 F.3d 1048, 1050-51, 29 USPQ2d 1615, 1617 (Fed. Cir. 1994). In addition, the Director's action must not
violate the constitution. Rydeen
v. Quigg, 748 F.Supp. 900, 906, 16 USPQ2d 1876, 1881 (D.C.D.C. 1990).
The notice asserts that a third
party has no right to intervene in the prosecution of a particular patent,
citing Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1685 (Fed. Cir.
1991). I do not agree with the sweeping
conclusion drawn in the notice in reliance upon Animal Legal Defense Fund. Animal Legal Defense Fund was not a
case where two claimants existed, and it was not a case where two claimants
presented interfering claims.
In the case where there are first
and second claimants whose claims interfere, it is reasonable to allow a first
claimant to intervene in the second claimant's application for two
reasons. First, if the second
claimant's application issues, the first claimant's claims will be rejected
based upon the second claimant's issued patent. Cf. In re Ogiue, 517 F.2d 1382, 1386, 186 USPQ 227, 231
(CCPA 1975). That result is unfair,
because the first claimant may be entitled to the interfering claim. Second, parties with conflicting claims are
much more likely to infringe those claims than a third party. Thus, the first claimant may be harmed by
the improper issuance of the patent containing the interfering claim to the
second claimant, because the patentee (second claimant) can then sue the first
claimant for infringement.
Underlying the reasoning that rival
claimants may have a right to intervene in special cases is the public policy
of issuing only one patent on one patentable invention. See Neifeld, "Viability of the Hilmer
Doctrine," 81 JPTOS 544 (July 1999) at section III, p. 546. It has long been recognized as the duty of
the USPTO to implement this public policy.
See Reed v. Landman, 1891 C.D. 73, 79 (Comm'r
1891)("The Patent Office must not only determine between actually
conflicting claims, but it must also protect the public from more than one
patent on the same invention. Hence, it
declares interferences, not between claims, but between applications containing
conflicting claims, or between the application and the unexpired patent
containing conflicting claims, as the case may be."). Allowing intervention in the special cases
where there are interfering claims would certainly promote that public policy.[3]
The notice relies upon Winter
v. Fujita, 53 USPQ2d 1234 (BPAI 1999), reh'g denied, 53 USPQ2d 1478
(BPAI 2000) (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) for the conclusion
that:
Recent
precedent of the Trial Section of the Interference Division of the Board of
Patent Appeals and Interferences confirms that resolution of whether an
interference-in-fact exists involves a two-ways patentability analysis.
The
precedent relied upon for this conclusion in the notice is the statement in Winter
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 Party B and vice versa. The claimed invention of Party A must
anticipate or render obvious the claimed invention of Party 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. [Winter, at 1243]
In my opinion, this holding in Winter
is directly contrary to 37 CFR 1.601(j) and (n). 37 CFR 1.601(j) and (n) define the basis for what constitutes the
Directors's opinion that there is an interference-in-fact. Interference-in-fact is a term defined in 37
CFR 1.601(j) to exist when two parties have claims that "define the same
patentable invention." The term
"same patentable invention" is defined in 37 CFR 1.601(n) to exist
for an invention 'A' relative to 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'.[4]
Hence,
the Director has defined, by rule, what constitutes the basis for the
Director's opinion, within the meaning of 35 USC 135(a), that an interference
exists in any give case. Specifically,
the Director has defined by rule that an interference exists when the one-way
obviousness test specified in 601(n) for "same patentable invention"
is satisfied.
One might argue that case law
controls the definitions of “interference-in-fact.” However, case law is merely interpretation of the Director’s
opinion regarding when an interference exists, since 35 USC 135(a) leaves the
determination of criteria defining an interference to the Director. The Director has established by rules the
criteria defining when an interference exists.
The rules established by the USPTO govern proceedings in the USPTO. 35 USC 2(b)(2) (As amended Nov. 29,
1999). Moreover, the rules have the
force and effect of law. Wyden
v. Commissioner of Patents and Trademarks, 807 F.2d 934, 935-36, 231
USPQ 918, 919-20 (Fed. Cir. 1986). 37 CFR 1.601(j) and (n) were implemented in
1984. The 1984 rule change implementing
37 CFR 1.601(j) and (n) define the law regarding what constitutes the
Director's opinion within the meaning of 35 USC 135(a) that an interference
exists. Hence the opinion in Winter is inconsistent with law because it
is inconsistent with 37 CFR 1.601(j) and (n).
Prior to the 1984 rule change, the
Director (then Commissioner)’s criteria defining an interference-in-fact was
that claims of two parties were patentably indistinct from one another. In Aelony v. Arni, 547 F.2d
566, 192 UPSQ 486 (CCPA 1977), the Court of Customs and Patent Appeals
indicated that the patentable indistinctness test was (in 1977) the test for
interference-in-fact. The Court
approved of that test because it carried out the statutory requirement that the
USPTO issue only one patent for claims that were not patentably distinct from
one another, stating that:
Turning
to the merits, Aelony et al. argue that the interference was improper ab initio
under 35 USC 135(a)5 because the cyclopentadiene material employed
by Aelony et al. does not overlap the eight materials employed by Arni et
al. Accordingly, say Aelony et al.,
there is no interference in fact. We
disagree. We first note two published
board opinions which addressed this same argument of no overlap, asserted in
the same context as in the present case, viz., Dewilde v. Leigh,
191 USPQ 256 (PTO Bd. Pat. Int'f.
1976); Moore v. McGrew, 170 USPQ 149 (Bd. Pat. Int'f. 1971).
In each case, the board ruled that the test of interference in fact is
not whether two sets of claims overlap, but whether they are patentably
distinct from each other. In each case,
the board found that, although the two sets of claims before it were mutually
exclusive, they were patentably indistinct, and hence there was an interference
in fact. We believe that these board
precedents correctly set forth the test of interference in fact and are
grounded on sound policy considerations.6 Sections 102, 103, and 135 of 35 USC clearly contemplate — where
different inventive entities are concerned — that only one patent should issue
for inventions which are either identical to or not patentably distinct from
each other. Hence, we view the phantom
count practice as a proper procedural tool established by the PTO in order to
ensure, where necessary, what the statute intends, viz., that only one patent
should issue for one inventive concept. Moreover, we believe that there is
ample precedent from this court for framing the test of interference in fact in
terms of whether two sets of claims are patentably distinct from each other.
See the McCabe case, subsequently quoted with approval in Brailsford
v. Lavet and in Nitz v. Ehrenreich, all three cases cited
supra.
‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑‑
535 USC 135(a) reads as follows:
Whenever
an application is made for a patent which, in the opinion of the Commissioner,
would interfere with any pending application, or with any unexpired patent, he
shall give notice thereof to the applicants, or applicant and patentee, as the
case may be. The question of priority of invention shall be determined by a
board of patent interferences (consisting of three examiners of interferences)
whose decision, if adverse to the claim of an applicant, shall constitute the
final refusal by the Patent and Trademark Office of the claims involved, and
the Commissioner may issue a patent to the applicant who is adjudged the prior
inventor. A final judgment adverse to a patentee from which no appeal or other
review has been or can be taken or had shall constitute cancellation of the
claims involved from the patent, and notice thereof shall be endorsed on copies
of the patent thereafter distributed by the Patent and Trademark Office.
6We note in passing an article in 3 Pat. L. Persp.
Section C.1[4] (1971 Dev.) which comments favorably on the Moore case. [Aelony,
at 569-70, 489-90.]
In summary, the conclusion in Winter
that the criteria defining the existence of an interference is two-ways
obviousness is contrary to the rules, specifically 37 CFR 1.601(n), implemented
in 1984. Prior to 1984, an
interference-in-fact existed when claims of two parties were patentably indistinct,
as the term "patentably indistinct" is defined in the case law.
The notice asserts that "there
is no authority under the law, to turn interference proceedings under 35
U.S.C. 135(a) into pre-grant oppositions or post-grant
cancellations." In reply, I submit
that there is no authority precluding the USPTO from taking that action in an
interference. In fact, 35 USC 135(a)
specifically authorizes the USPTO to decide questions of priority and
patentability, and 35 USC 6(b) (added November 29, 1999) requires the USPTO to
decide questions of priority and patentability. Therefore, that statement in the notice is not relevant to the
standard the Director should apply in determining whether an interference
exists.
The notice states that "there
is no desire on the part of the USPTO ... to turn interference proceedings under 35 U.S.C. 135(a) into
pre-grant oppositions or post-grant cancellations." In reply, the desire of the USPTO should be
to implement its mission, which is defined by statute. Section 35 USC 6(b) of the statute states
that the Board "shall determine priority and patentability
of invention in interferences declared under section 135(a)...." Emphasis supplied. Unlike 35 USC 135(a), 35 USC 6(b) does not indicate that
patentability determinations in an interference are discretionary.
III. Response
to the Three Questions Posed in the Notice
The notice poses three questions, which I now
address. In the first question, the
notice asks:
If one-way patentability analysis is sufficient to
establish an interference-in-fact, would it be possible to have an interference
with two counts as set out in Example 4, reproduced above?
The
answer to this question is yes, as I demonstrate below. For convenience, I copy here Example 4:
Example
4: Application G contains patentable claims 1 (engine), 2 (6‑cylinder
engine), and 3 (engine with a platinum piston). Application H contains patentable claims 11 (engine) and 15
(engine with a platinum piston). Claims
1 and 2 of application G and claim 11 of application H define the same
patentable invention. Claim 3 of application G and claim 15 of application H
define a separate patentable invention from claims 1 and 2 of application G and
claim 11 of application H. If an interference is declared, there would be two
counts: Count 1 (engine) and Count 2 (engine with a platinum piston). Claims 1
and 2 of application G and claim 11 of application H would be designated to
correspond to Count 1. Claim 3 of
application G and claim 15 of application H would be designated to correspond
to Count 2.
In addressing the questions posed in
the notice regarding Example 4, I assume that an engine containing a platinum
piston would not have been obvious in view of either an engine or an engine
containing six cylinders.
37 CFR 1. 601(f) specifies that
"each count shall define a separate patentable invention," and the
test for "separate patentable invention" appears in 37 CFR
1.601(n). Applying the test in 37 CFR
1.601(n) for "separate patentable invention" to the claim to an
engine with a platinum piston, and assuming that the claim to an engine with a
platinum piston is non-obvious in view of the claim to the engine or the engine
with six cylinders, leads to the conclusion that the claim to the engine with a
platinum piston is a separate patentable invention from the claim to an
engine. Since, the claim to an engine
with a platinum piston is a separate patentable invention from the claim to an
engine, the claim to an engine with a platinum piston can constitute a second count.
Hence, the answer to the first question posed in the notice is yes.
The second question posed by the
notice is:
How would having an interference with between claim
1 of application G and claim 15 of application H of Example 4 square with the
holding in Nitz v. Ehrenreich, 537 F.2d 539, 543, 190 USPQ 413,
416-17 (CCPA 1976)?
In reply to the second question
posed in the notice, I submit that Nitz is not relevant since the
Commissioner's opinion in year 1976 regarding what constituted an interference
is different from the Director's opinion in year 2001 specified in 37 CFR
1.601(n). See the discussion of Aelony,
supra. Nitz was merely an
interpretation of the Commissioner's (now Director's) opinion.
The third question posed in the
notice is:
If a one-way patentability analysis is sufficient,
what would it take to establish that there is no interference-in-fact in a
given case?
In reply, there would be no
interference in fact in two situations.
In the first situation, (1) the
claim of the first party would not have been obvious in view of the subject
matter defined by the claim of the second party and (2) the claim of the second
party would not have been obvious in view of the subject matter defined by the
claim of the first party. There is no
interference-in-fact because the subject matter claimed by neither party is
unpatentable based upon the subject matter claimed by the other party.
In the second situation, (1) the
claim of the first party would have been obvious in view of the claim of
the second party, (2) the claim of the second party would not have been obvious
in view of the claim of the first party, but (3) the first party has
priority for its claim. As in the
first situation, there is no interference-in-fact because the subject matter
claimed by neither party is unpatentable based upon the subject matter claimed
by the other party.
The answer to the second question
posed in the notice is that establishing no interference-in-fact in a
particular case would take showings of fact supporting the conclusions of
obviousness, non-obviousness, and priority required in either one of the two
foregoing situations.
A procedural problem with existing
interferences is that their two-ways test based no-interference-in-fact
determinations occur before priority determinations, and that the
interferences terminate upon a conclusion of no two-ways
obviousness. This is a problem because
terminating an interference based upon a lack of two-ways obviousness without
determining priority leaves open the possibility that the second to invent's
claims are obvious (one-way obviousness) and therefore unpatentable based upon
the first to invent's acts of invention.
Failing to declare an interference based upon a lack of two-ways
obviousness when there is one-way obviousness leads to the same result; invalid
patents.
IV. Additional
Questions Informally Posed by SAPJ McKelvey
A. The Additional Questions
SAPJ McKelvey posed two additional
questions at the meeting of the AIPLA Interference Committee on February 02,
2001. First, in a genus species
contest, what should be the count?
Second, under what circumstances are both parties entitled to their
claims?
B. The Answers to Additional Questions Flow
form the Public Policy of Having Interferences
1. The
Trial Section Thinks that Purpose of Interferences are Only to Aid Examiners in
Examining Pending Applications
In reply generally, I first note
that the public policy goal of interferences determines the answers to these
additional questions. In recent cases,
the Trial Section of the Board has indicated that its policy is to limit
the scope of interferences. The
two-ways test specified in Winter is one example. Another examples is JD v. SH,
Paper No. 55, http://www.uspto.gov/web/offices/dcom/bpai/its.htm, (BPAI
November 01, 1999)(Trial Section Precedential Opinion)[5] in which the
Trial Section stated that:
The
purpose of having an interference is to assist an examiner in the examination
of a patent application. When two
applicants claim the same patentable invention, a patent is issued only to the
applicant who is the first inventor.
[Page 5.]
***
In
the case before us, the interference was declared between the JD application
and the SH patent. The interference was
necessary for the examiner to know whether a patent may be issued to JD. [Page 7.]
Under
the rationale in JD, the USPTO has no interest in determining if SH’s
issued patent is valid because that determination would not "assist an
examiner in the examination of a patent application."
In Louis v. Okada, 57
USPQ2d 1430 (BPAI 2000)(expanded panel), the Trial Section held that it did not
have jurisdiction to include in an interference a patent on the application
side of an application-patent interference.
The standard Notice Declaring
Interference ("NDI", which the Trial Section uniformly sends out for
each new interference) contains numerous limitations, including 25-25-10 page
limits for motions-oppositions-replies, and precluding
incorporation-by-reference. The Trial
Section requires strict compliance with those details in the notice. Cf. LeVeen v. Edwards, 57
USPQ2d 1406, 57 USPQ2d 1416 (BPAI 2000)(expanded panel)(citing procedural
defects with motions as a basis to dismiss the motions, and indicating that a
party cannot make their case in expert declarations referred to in their
motions).
In Winter, the Trial Section
indicated its resistance to considering patentability and validity issues,
stating that:
... an interference is not a full-blown pre-grant
opposition to the grant of a patent or a full-blown patent cancellation
proceeding. [Winter at
1485.]
***
... Fujita maintains that the
"patentablility" issue should be fully developed and decided inter partes. We disagree and we reject, in this case, Fujita's attempt to turn
these interferences into a pre-grant opposition against all "new"
claims in the Winter and Spalek reissue applications, neither of which is involved in these interferences. [Winter at 1486; emphasis in the
original.]
In summary, the Trial Section has
limited, or maintained a limit on, the scope of interferences and the scope of
patentability issues considered in interferences.
2. The
Public Policy for Interferences Should be to Ensure that Patents Comply With 35
USC
In contrast to the policy
implemented by the Trial Section, I assume that the policy goal for
interferences was properly stated in Aelony, which generally to ensure
that patents comply with 35 USC. It
follows that interference law and practice including the basis for declaring
interferences, count formulation, and the timing of terminating interferences
should be implemented in a manner that avoids invalid patents. In order to avoid invalid patents, priority
evidence needs to be placed in evidence during the interference when that evidence
might show that one party's claims are unpatentable over it. In order to implement the public policy goal
of using interferences to avoid invalid patents, in a species-genus
interference, a species party should be allowed to get into and to remain in
interference with a genus party through a determination of priority to allow
the USPTO to have evidence relevant to whether the genus party’s claim is
invalid - - even when the species has already been determined to be patentably
distinct (not obvious) from the genus.
Returning now to SAPJ McKelvey’s
first additional question, in determining whether the count in a species-genus
interference should be the same scope as the species or the genus, one has to
consider the purpose of the count. The
count is the scope of subject matter for which a party can show priority of
invention with respect to the other party's corresponding claims. Based upon the goal of allowing the species
party to show the USPTO why the genus party’s claim is unpatentable, the species
party should be allowed to show the USPTO that the genus party's claim is
unpatentable inter alia based upon anticipation by the species party's 102(g)
prior inventions within the scope of the genus. Based upon this conclusion, I consider below various situations
which all lead to the conclusion that the count should be of the same scope as
the genus.
If the species party's 102(g)
inventions are within the scope of its own disclosed species, then the species
party will be able to prove up its earliest date of invention for either count.
If, on the other hand, the species
party's earliest date of invention is for another species within the genus, the
question should be: should the species
party be allowed to rely upon acts of invention for any species within the
genus to knock out the genus party's claim?
The policy goal is to issue only valid claims. Therefore, the species applicant should be able to show any
activity that would anticipate the genus so that the USPTO can determine
whether the genus party’s claim is valid.
Accordingly, in this situation, the count should be the genus so that
the species applicant can show any evidence of invention within the genus that
might anticipate the genus claim.
What about the effect of priority
determination on the species party?
Traditionally in an interference, the party that loses on priority has
judgement entered that it is not entitled to its corresponding claims. However,
it would make no sense to enter judgement against the species party's
claim if the species party's claim was non-obvious over the genus.[6] Accordingly, if the species party's claim
is found to be non-obvious in view of the genus, the formulation of the count
should not affect the species party's right to a patent.
If the species party's claim is
found to be obvious in view of the genus party's claim and the genus party
shows priority of invention for any invention within the scope of the genus,
then the species party should not be entitled to its claim because that claim
is unpatentable under 102/103 in view of the prior art genus. Therefore, in this situation, the count
should be the same scope as the genus to allow the genus applicant to show that
the genus applicant invented first so that the species party cannot obtain a
patent on the species.
In summary answer to the first
additional question posed by SAPJ McKelvey, for the reasons presented above,
the count should be the genus.
In reply to the second additional
question posed by SAPJ McKelvey, both parties are entitled to their claims when
those claims satisfy inter alia 35 USC 102 and 103. That situation exists only when the USPTO determines (1) that the
genus party had possession of the genus before the species party had possession
of the species and (2) that the species party's species claim is non-obvious in
view of the genus.
The Honorable Anthony Zupcic[7]
raised a concern that the genus party could be subject to multiple
interferences with various species parties if a one-way test is applied. In reply to the concern, I note that a price
of entry into an interference is a showing of priority over an opponent's
patent or application's filing date,[8]
and that once an interference terminates, interference estoppel precludes the
same party from raising-any issue that the losing party could have raised in
the interference.[9] Accordingly, I do not believe that a one-way
test leads to repeated or multiple interferences.
V. Public
Policy Favors a One-Way Test
A. Under
a Two-Ways Test, The USPTO Will be Forced to Knowingly Issue Invalid Patents in
Contradiction to its Mission
The USPTO is charged with issuing only valid patents.[10] Applying the two-ways obviousness test for
interference-in-fact will create situations in which the USPTO will have to
issue invalid patents knowing that there is a high likelihood the patents are
invalid.
37 CFR 1.131 incorporates the test specified in 37 CFR 1.601(n). 601(n) is a one-way test. Therefore, a genus claimant cannot
overcome a rejection based upon a patent claiming a species of the genus where
the species is non-obvious in view of the genus by filing a 37 CFR 1.131
declaration antedating the species patent's filing date. However, the Trial Section will not
declare an interference since there is no two-ways obviousness, thereby
precluding the genus applicant from challenging the rejection. The opinion in In re Eickmeyer, 202
USPQ 655, 602 F.2d 974 (CCPA 1979) is right on point, indicating that this
result is repugnant. There, the court
stated that:
At the same time, we do not regard the opposite
result (proposed here by the PTO) to be justifiable, namely: leaving an
applicant in a position where he cannot overcome a reference by a 131 affidavit
because the PTO has decided that the reference claims his invention, while, at
the same time, he is denied an interference because the PTO has decided that
the claims of his application and those of the reference are not for
substantially the same invention. [Eickmeyer,
at 661, 980.]
Cf.
In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). In order to avoid running afoul of Eickmeyer,
the USPTO would have to interpret 601(n) in accordance with Winter
to specify a two-ways test. Under a
two-ways test, the genus claimant can overcome a rejection based upon a
patent claiming a species of the genus where the species is non-obvious in view
of the genus, by filing a 37 CFR 1.131 declaration antedating the species
patent's filing date. Once the genus
claimant does that, the USPTO cannot maintain its rejection. However, under the rationale of Winter,
the USPTO would have no basis to institute an interference. That would result in the USPTO's knowingly
issuing a likely invalid patent to the genus applicant, contrary to the USPTO's
mission and to public policy.
Further, I note that the Eickmeyer
rationale is equally applicable to situations where there is partial overlap of
claims in addition to the genus species relationship.
B. A Large Percentage of the Invalid Patents That the USPTO Will
Issue Due to its Implementing a Two-Ways Test Cover Commercially Important
Inventions
For the reasons presented below, a
one-way test for interferences is more likely to result in less invalid patents
covering commercially valuable subject matter.
Most interferences result from
requests by applicants. Applicants know
that interferences have a significant cost associated with them.[11] Accordingly, applicants only choose to
provoke an interference when the disputed claims cover a market of enough
commercial significance to warrant the cost of an interference. A one-way test for an interference more
often than a two-ways test will enable the USPTO to declare an interference and
consequently determine which of two parties is rightfully entitled to a patent
covering a market of commercial significance.
Under the two-ways test, the USPTO will be issuing more invalid patents
in commercially significant markets than under a one-way test. Since invalid patents have an
anti-competitive effect, public policy favors the Director applying a one-way
test for an interference. Whether the
claims relationship is genus-species or partial overlap, parties fight in an
interference because the overlapping claimed subject matter is what is most
commercially significant. It is in
those commercially significant cases where the public policy in only issuing
valid patents is most important. In all
such cases, applying the one-ways test better serves public policy by enabling
the USPTO to enable the USPTO to prevent invalid patents.
C. A One-Way Test Partially Compensates for
the Lack of a Post Grant Opposition System in the United States
A one-way test based interference
system puts the U.S. one step closer, and in some respects surpasses, the
efficiency of the post grant oppositions systems in place around the
world. The post grant opposition model
does not limit standing to those opponents who have a stake in the market
covered by the claimed invention.
Typically, in those systems, anyone can oppose a patent. Allowing anyone to oppose a patent is
inefficient because it allows oppositions
when the opponent has no real commercial interest in the claimed
invention. Thus, while oppositions may
result in cancellation of invalid patents, no commercial significance attaches
to some of those opposed or canceled patents. This subset of oppositions is
economically inefficient, because their only effect is to use up time of
scientists, patent attorneys, and examiners, that could be spent more
productively.
In contrast to the opposition
systems, the U.S. interference system requires a stake to enter the game. The interference requestor has to be in the
market, in the sense that the interference requestor is patenting the same
technology as their opponent, and the interference requestor has to consider
the market for the technology significant enough to fight over. Hence, the U.S. interference system may
result in a smaller fraction of invalid patents being canceled than in an
opposition system, but the interference system has a certain efficiency because
less resources are spent in the process of canceling invalid patents.
VI. Conclusion
In conclusion, public policy favors
a one-way test. The USPTO should either
overrule Winter and follow the one-way test specified in 37 CFR
1.601(n), or it should amend 37 CFR 1.601(n) to resolve the conflict between 37
CFR 1.601(n) and Winter. If the
USPTO maintains the two-ways test for when an interference-in-fact exists
(e.g., by amending 37 CFR 1.601(n) so that it is in accord with Winter),
it needs to fix the Eickmeyer problem a two-ways test creates for 37 CFR
1.131 so that the USPTO can prevent issuance of invalid patents and issue valid
patents.
In addition, if the USPTO maintains
the two-ways test, there is a stronger need for a post grant opposition system
than otherwise.
. Originally published at 83 JPTOS 275 (April
2001).