Fitch, Even, Tabin & Flannery LLP: Federal Circuit Clarifies Interference Bar in Adair v. Carter

By Kendrew H. Colton

On February 7, 2012, in Adair v. Carter, the Federal Circuit provided an important clarification to the law of patent interferences. 

Interferences in the U.S. Patent and Trademark Office (USPTO) are proceedings in which the USPTO determines which of two applicants who have filed claims to the same invention is entitled to a patent. There is a one-year period after a patent grants for another applicant to present competing claims; otherwise, the interference is barred. In Adair, the court affirmed the Board of Patent Appeals and Interferences and clarified this one-year time limit.

The time bar, which is codified in Section 135(b)(1) of the Patent Act, specifies "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent made not be made in any application unless such a claim is made prior to one year from the date the patent was granted." In explaining that this time bar serves a gatekeeper function, analogous to a statute of repose, the court quoted from Regents of the University of California v. University of Iowa Research Foundation [enhanced version available to lexis.com subscribers]: "to limit [...] the patentee's vulnerability to a declaration of an interference" by "limit[ing] the window of time in which the cause of an interference can occur."  

The court explained that to overcome the Section 135(b)(1) bar, "an applicant must show that such claim is not materially different from a pre-critical date claim [i.e., one presented before the expiry of the one-year bar] present in the application or any predecessor thereto in order to obtain the benefit the earlier filing date." The court further held that any patent claim filed within the critical period, whether or not canceled, may provide support for later-filed patent claims, so long as the earlier claims are not materially different from the later-filed claim.

The threshold determination under Section 135(b)(1) is different from the determination of whether the patent applicant's claims are directed to the same or substantially the subject matter claimed in the issued patent in order to declare an interference. The court noted that when a material difference exists between the pre- and post-critical date claims, a belated interference is improper because it would be a different interference than that which should have been declared by the USPTO.
 
In Adair, the Board of Patent Appeals and Interferences found (1) Adair's pre-critical date claims were not patentable to Adair; (2) Adair added claim limitations to overcome the rejection; and accordingly (3) material differences presumptively existed between the post- and pre-critical date claims by virtue of the amendments, which Adair did not rebut. The court affirmed because "what was required in determining whether the §135(b) bar might be overcome was an assessment of the material differences between the post- and pre-critical date claims, which is precisely what the Board did."

The Adair court addressed the bar of Section 135(b)(1), which addresses interferences between a patent and a pending patent application. A similar one-year bar for interferences between applications is specified under Section 135(b)(2), in which case the one year runs from publication of the application having claims to be copied. The Adair court's analysis would have similar applicability to that provision as well.
 
The court's decision will be of particular interest to those patent applicants whose pending applications are not subject to the recently enacted provisions of the America Invents Act and who are contemplating a possible interference.
 
If you have questions concerning this decision, please contact Fitch Even partner Kendrew H. Colton, the author of this alert.

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