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