A Possible Solution to the Interregnum Problem

 by Charles L. Gholz and Lisa M. Mandrusiak

I previously concluded that Congress had created an interregnum. Decisions of the board declared both before and after the interregnum will be subject to court review, but decisions of the board in interferences declared during the interregnum will not. However, now we examine a contrary view for why the decisions of the board in interferences declared during the interregnum might be reviewable under either 35 USC 141 or 35 USC 146 after all.

Excerpt:

INTRODUCTION

In Gholz and Mandrusiak, Will PTAB Decisions in Interferences Declared After September 15, 2012 Be Reviewable in Court?, 19 Intellectual Property Today No. 12 (December 2012) at page 32, the authors of this article concluded that, under the law as it then existed, such decisions would likely not be reviewable under either 35 USC 141 (appeal to the Federal Circuit) [an annotated version of this statute is available to lexis.com subscribers]  or 35 USC 146 (civil action in a district court) [annotated version]. In Gholz and Mandrusiak, Will PTAB Decisions in Interferences Declared After September 15, 2012 But Before Enactment of the AIA Technical Amendments Act Be Reviewable Via Petitions for Extraordinary Writs or Actions Under the APA?, 20 Intellectual Property Today No. 2 (February 2013) at page 32, we concluded that, while the AIA Technical Amendments Act, which was enacted on January 14, 2013, provided that decisions in interferences declared after that date would be reviewable under either 35 USC 141 or 35 USC 146, decisions in interferences declared after September 15, 2012 and before January 14, 2013 would be subject only to the very limited review provided by actions under the Administrative Procedures Act (hereinafter referred to as "the APA"). That is, we concluded that Congress, in its wisdom, had created an interregnum. Decisions of the board in interferences declared both before and after the interregnum will be subject to court review under either 35 USC 141 or 35 USC 146, but decisions of the board in interferences declared during the interregnum will not be.

In response to that article, Bob Armitage (in a private communication) provided a contrary view, examined in this article, for why the decisions of the board in interferences declared during the interregnum might be reviewable under either 35 USC 141 or 35 USC 146 after all.

THE SIGNIFICANCE OF THE INTERREGNUM

Since, for various reasons well beyond the scope of this article, the board now declares many fewer interferences annually than it did just a few years ago, the reader may well be wondering whether the problem discussed herein and in the two articles cited at the outset is worth worrying about. The answer is that, as shown in the table below, the issue affects a small, but non-negligible, number of the publically available interferences.[footnotes omitted]

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Charles L. Gholz is a Partner in Oblon, Spivak, McClelland, Maier & Neustadt, LLP; Alexandria, Virginia. His direct dial telephone number is 703/412-6485, and his email address is cgholz@oblon.com.

Lisa M. Mandrusiak is an Associate in Oblon, Spivak, McClelland, Maier & Neustadt, LLP; Alexandria, Virginia. Her direct dial telephone number is 703/412-6492, and her email address is lmandrusiak@oblon.com.