ass="alignleft size-full wp-image-1999" title="the-end-is-near" src="http://www.patentspostgrant.com/wp-content/uploads/2010/04/the-end-is-near.jpg" alt="the-end-is-near" width="264" height="400" />... or is it? Rumors of the demise of interferences via patent reform have been greatly exaggerated for years. Whether S.515 will have a different fate than other recent patent reform bills is uncertain at best. In any event, we continue our review of S.515 provisions related to post grant matters. On March 4th
, we outlined the provisions in S.515 which would change reexamination and implement a new Post-Grant Review revocation mechanism, respectively. Today, we discuss what little of substantive interference practice
will remain if S.515 is enacted -- namely, derivation proceedings.
Currently, derivation cases are a species or type of interference decided by the Board of Patent Appeals and Interferences (“BPAI”). In an interference proceeding at the BPAI, derivation is proven by establishing prior conception of the interfering subject matter and communication of the conception to the opposing party.
Examiners rarely, if ever, suggest an interference sua sponte
. Consequently, in the vast majority of cases, an applicant wishing to initiate a derivation proceeding is required to suggest an interference pursuant to 37 C.F.R. § 41.202. The suggestion of an interference is initially considered by an examiner, who is instructed by the MPEP not to even consider the suggestion of interference until after
he or she has decided that the targeting applicant's claims are in condition for allowance, but for the existence of the targeted application or patent. Therein, lies the rub. As stated in MPEP 2304.02(d), “[a]n applicant is not entitled to an interference simply because applicant wants one. The interfering claim must be allowable, particularly with respect to the written description supporting the interfering claim.” Thus, examiners are effectively interference gatekeepers to the BPAI. With little or no experience in considering a suggestion of an interference and even less incentive to recommend one, when a suggestion of an interference is filed by an applicant, the examination process often becomes tortured.
S.515 would substantially change the process for initiating derivations and maintain a one year “copy” provision, as discussed next.
Initiating a derivation process (§ 135)
-- S.515 replaces the suggestion process currently employed by the PTO with a petition process. S.515 provides that:
The petition shall set forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the petitioner and, without authorization, filed an application claiming such invention.
the S.515 provision implementing a petition process in place of the current suggestion process may prove to be a marked improvement depending on how the petition process is implemented. Although S.515 does not expressly provide so, hopefully, the decision to remove examiners from the requesting process and to give that responsibility to the Director or his designee reflects that the petitioner will not have to establish the patentability of the claimed subject matter as a prerequisite to initiating a derivation proceeding. In derivation proceedings, where there is often an allegation of “bad” acts, that would seem appropriate.
One year statute of limitations (§ 135)
-- S.515 maintains a 35 U.S.C. §135(b) type one year statute of limitation provision. S.515 provides that:
Any such petition may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier applicant’s claimed Invention.
This language is not entirely clear. The start of the one year "statute of limitations" is triggered by publication of the "bad guy's" claim. That is OK. However, the remainder of the provision suggests that the bad guy's published claim must be directed to "the same or substantially the same" invention as the earlier
applicant's claimed invention. The problem with this provision is that, in derivation cases, more likely than not the applicant (petitioner) is the later applicant -- not the earlier applicant.
Since the Post-Grant Reviews will apparently be handled under the BPAI's current rules for handling Contested Cases, 37 CFR 41.100 et seq., a great deal of procedural interference practice will presumably remain.
See also Gholz, Would Derivation Proceedings Be The Same as Derivation Interferences?, 16 Intellectual Property Today No. 5 at page 8 (2009). Mr. Gholz is a partner of mine at Oblon Spivak.