English
Interference Rule 41.200(b) Taken Out of Its Misery
The USPTO has announced that 37 C.F.R. 41.200(b) is no longer viable in light of the Federal Circuit’s Agilent Technologies, Inc. v. Affymetrix[1] decision, and has thus cancelled the rule.
As discussed in earlier posts commenting on the Agilent and Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Company[2] decisions, the Federal Circuit has concluded that, when a party challenges the patentability of a “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim should be interpreted in light of the specification of the targeted patent or application. In contrast, Rule 41.200(b) required that a claim in interference be given its broadest reasonable construction in light of the specification in which it appears.
With Rule 41.200(b) taken out of its misery, one has to wonder what guidance examiners will be given when examining claims “copied” to provoke an interference. Will examiners be instructed to apply one claim construction when considering written description and another claim construction when applying prior art to the same “copied” claims? Will the MPEP be updated?
If nothing else, the PTO’s decision to cancel Rule 41.200(b) in response to Agilent reinforces the prevailing opinion that interference practice is arcane.
[1] 567 F.3d 1366 (Fed. Cir. 2009).
[2] 590 F3d 1326 (Fed. Cir. 2010).
Yes, and I also think one could also look at this as a continuation of the many, many, years of common confusion between appropriate claims in an interference and appropriate interference “counts” (which need not be patentable to anyone). Especially since the same Board can now decide both the patentability of the subject claims of the parties and (if they survive) invention date priority as to the count(s). The need to first arrive at true, traditional, counts was cleverly [but not necessarily always fairly, in my view] finessed some years ago by the widespread Board imposition of “McKelvey Counts.” [For example, an interference count of "Claims 1, 2 and 12 of application A OR Claim 13 of patent B."]
Of course many of the claim SUPPORT disputes that are the subject here have been caused by parties trying to exactly copy claims of others ver batum [which is not required, but a common myth] rather than presenting modified claims that they can more clearly support that are still 103 obvious vis a vis the other parties claims.