Patents Post Grant Blog

Guest Post by Brad Pedersen

With the recent announcement from the Obama administration supporting the Manager’s Amendment to Senate Bill S. 515 and with the possibility that the Bill could soon get to the Senate floor for a vote prior to Memorial Day, it is time to take seriously some of the details about transitioning from (i) the current interference/reexamination scheme to a new derivation/review scheme and (ii) the current inter partes reexamination proceedings handled by the Central Reexamination Unit (CRU) to post grant/inter partes reviews handled by the new Patent Trials and Appeals Board (PTAB). 

This post is the first of a two part series and addresses the transition provisions for interferences.

Interference to Derivation – Because S.515 will change the U.S. patent system from a first-to-invent (FTI) system to a first-inventor-to-file with grace period (FTFG) system, as was discussed in an earlier post, interferences will be replaced by a new “derivation proceeding” to determine whether the second applicant for a patent was in fact the first inventor to file for a patent.  Although, the Manager’s Amendment is a marked improvement of the prior version of S. 515, the transition period for dealing with the last potential interferences appears to be too short. 

Section 2(m)(2) of the Manager’s Amendment to S. 515 reads as follows:

(m) EFFECTIVE DATE. – …

 (2) INTERFERENCE. – For any application for patent, or any patent issuing thereon, to which the amendments made by this section apply [an FTFG case] which contains the same claimed invention as defined in section 100(j) of title 35, United States Code, as in an application for patent, or any patent issuing thereon, to which the amendments made by this section do not apply [an FTI case], an interference may be declared within 2 years after the date of the enactment of this Act and conducted as provided in section 135 or 291 of title 35, United States Code, in effect on the day prior to the date of the enactment of this Act to determine questions of priority of the inventions, and the Director may issue a patent for the claimed invention to the applicant who is adjudged the prior inventor.

Because the prosecution cutover to FTFG occurs for applications having an effective priority date more than 1 year after the date of enactment, an FTFG case would always be the “junior” party as compared to an FTI case.  If an FTI case is filed prior to the date of enactment, the effective filing date would always make the FTI case prior art to the junior party FTFG case, thereby avoiding the need for an interference.  However, if the FTI case is filed within the 1 year period between the enactment date and the cutover date, there is one situation in which an interference might be possible — the situation where the FTFG case can take advantage of the grace period exception under the new section 102(b) because the invention of the FTFG case was publicly disclosed before the effective filing date of the FTI case.  In these situations, the FTFG case would be able to invoke the grace period exception to remove the FTI case as prior art.   Unless the FTFG case can make use of the grace period exception, there is no possibility for an interference, which means that the interference to derivative transition provision will apply to only a very small group of cases.  Given the consequences of not taking advantage of the grace period exception, it is likely that best practices will dictate switching to a FTFG strategy to invoke the grace period exception beginning as early as the date of the enactment of bill of S. 515.

For this small group of potential interference cases that bridge the FTI to FTFG transition, however, it is technically not possible for an interference to be “declared” as required by the transition language of the bill.  Take the extreme example of an FTI case filed on the last day before the cutover and an FTFG case filed on the first date after the cutover that has a grace period exception before the FTI case.  In this situation, the earliest normal publication at 18 months of either case would not occur until 2.5 years after the date of enactment.  As such, it would be effectively impossible for either case to provoke and get an interference declared by the 2 year deadline set forth in the Bill. 

While there are no current statistics on the delay between the date that claims are “copied” and the date the Board “declares” an interference, with the current backlog of unexamined patent applications and the reluctance in some Art Units to send a potential interference case to the Board, it is not uncommon for the delay to be several years after the first publication or issuance of claims that might be subject to an interference.  In addition, given that the need to provoke an interference may not arise until after a patent has issued and that patent could have been under a request for non-publication, it seems  prudent to change the provision for interferences to derivation proceedings  such that the Director is authorized to declare an interference between an FTI case and a FTFG case regardless of the time period, so long as the provisions of current 35 U.S.C. § 135(b) have been satisfied by the party seeking to provoke the interference.