Federal Circuit Confirms That U.S. Priority Claim Must Be Considered When Assessing Interference Timeliness

10 September 2012 PharmaPatents Blog

In Loughlin v. Ling, the Federal Circuit affirmed a decision of the USPTO Board of Patent Appeals and Interferences that had canceled the sole claim of Loughlin’s patent in an interference proceeding. The decision turned on the interplay between the interference statute of limitations (35 USC § 135(b)(2)) and the domestic priority statute (35 USC § 120).

The Patent and Application At Issue

Loughlin’s patent (U.S. 7,434,426) was filed on May 13, 2004 and prosecuted under application no. 10/845,624. The ’624 application was published on November 18, 2004.  After several years of pendency, claim 42 was allowed and the patent issued October 14, 2008 with that single claim.

Ling’s application (11/671,404) was filed on February 5, 2007, and claimed priority under 35 USC § 120 to application no. 10/759,413, filed on January 16, 2004. Coincidentally, Ling’s parent application was published on the same day as Loughlin’s application, due to their similar foreign and domestic priority claims.

On February 21, 2007, while Loughlin’s application was pending but more than one year after it had published, Ling copied claims from Loughlin’s application into the ’404 application in order to provoke an interference.

The Interference

The USPTO declared an interference in September of 2012, after Loughlin’s patent had issued, between claim 1 of Loughlin’s ’426 patent and claim 31 of Ling’s ’404 application. Loughlin moved for judgment on the basis that Ling’s copied claim was time-barred by 35 USC § 135(b)(2):

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

Thus, § 135(b)(2) bars an interfering claim only if two requirements are met:

  1. The interfering claim is presented in an application “filed” after the earlier application was published.
  2. The interfering claim is not made until after “1 year after the date on which the [earlier] application [was] published.

Loughlin argued that the ’404 application was filed after Loughlin’s ’624 application was published, and that claim 31 was not added until more than one year after the ’624 application was published.

The board noted that Ling’s ’404 application properly claimed priority to the ’413 application, which was filed before Loughlin’s application was published. The board therefore concluded that the ’404 application is not an application filed after the ’624 application was published, as required under § 135(b)(2).  Accordingly, the board found that the statute did not bar Ling from adding claim 31 to provoke the interference.

In view of the board decision, Loughlin requested adverse judgment under 37 CFR § 41.127(b) and appealed to the Federal Circuit. The board entered adverse judgment and canceled the sole claim of the ’426 patent.

The Federal Circuit Decision

The main issue presented to the Federal Circuit was whether the statute’s reference to ”an application filed after the [earlier]application is published” refers to the actual filing date of the application at issue or the effective filing date, including any domestic priority claim under 35 USC § 120:

An application for patent for an invention disclosed in the manner provided by section 112(a)…in an application previously filed in the United States…shall have the same effect, as to such invention, as though filed on the date of the prior application…

Loughlin argued that the phrase of § 135(b)(2) in question refers to the actual filing date, and presented the following main arguments:

  • The board erred by construing § 135(b)(2) and § 120 together
  • Section 135(b)(2) is a “staleness” provision intended to require a party seeking an interference proceeding to provoke it in a timely manner

The Federal Circuit disagreed, finding that the plain language of § 120 supports a broad application of its provisions, including its application to § 135(b)(2).

Provided the criteria in § 120 are met, applications “shall,” without exception, receive the benefit of the earlier filing date. The statute does not limit its effect to only certain provisions under patent laws.

Indeed, the court noted that § 120 applies to subsections (b), (d) and (e) of  § 102, even though those statutory provisions do not include any express reference to § 120.  The court also cited a number of board decisions which interpreted the portion of § 135(b)(2) at issue as incorporating the priority benefit provisions of § 120.

The Court responded to Loughlin’s “staleness” argument by stating that although it recognized the “force of Loughlin’s point about timeliness,” the argument “cannot prevail in light of § 120’s granting of priority benefit to any application meeting its requirements, which includes Ling’s application.”

The Court therefore affirmed the board decision that canceled the sole claim of Loughlin’s ’426 patent.

Appellate Jurisdiction

Ling raised a jurisdictional challenge to Loughlin’s ability to seek appeal, alleging that because Loughlin had requested adverse judgment under Board Rule 127(b), there was no final adverse judgment upon which an appeal could be made. Ling also argued that Loughlin’s appeal was premature because Loughlin had “failed to exhaust his administrative remedies.”

The Federal Circuit disagreed with Ling on both jurisdictional issues. The court stated that the board’s decision on priority was a final, adverse judgment because board Rule 127(b)(3) specifically permits a party to an interference to avail himself of the rule on the basis of “[c]oncession of priority or unpatentability of the contested subject matter.”The court noted further that Loughlin’s actions promoted “[j]udicial economy.”

Awarding The First Inventor To File

The Federal Circuit arrived at its decision based on its interpretation of 35 USC § 135(b)(2), but the outcome also makes sense in the context of both the current first-to-invent system and the upcoming first-to-file system. Ling’s priority application was filed five months before Loughlin’s application, and constitutes prima facie evidence of an earlier date of invention of the subject matter at issue. Indeed, Loughlin’s decision to request adverse judgment suggests that Loughlin would not have been able to establish an earlier date of invention. On the other hand, Ling escaped the time limit provisions of § 135(b)(2) because the parent application was filed before Loughlin’s application—he was the first inventor to file.

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