Interference Statute Does Not Require Diligence For Re-Presenting Claims

10 December 2015 PharmaPatents Blog

In In re: Commonwealth Scientific & Industrial Research Organisation, the Federal Circuit held that pre-AIA 35 USC §135(b)(1) does not embody a diligence requirement, such that interfering claims presented more than 5 years after originally presented claims were abandoned were not time-barred by the statute. Although the decision was non-precedential, because it reversed a decision of the Patent Trial and Appeal Board on an important issue in interference proceedings, it seems worth noting.

The Statutory Bar Of 35 USC § 135(b)(1)

This case turned on the interpretation of pre-AIA 35 USC §135(b)(1), which places a time limit on presenting claims that “interfere” with the claims of a granted patent:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

(Pre-AIA 35 USC §135(b)(2) has a parallel provision for claims of published U.S. patent applications.)

The CCPA and Federal Circuit have held that a claim presented after the critical date can relate back to a claim presented before the critical date as long as the later claim is directed to the same or substantially the same subject matter as the earlier-presented claim. But is the statute still satisfied if the claim is presented years after the first claim is canceled?

The Interference At Issue

The interference at issue was declared between Carnegie Institution Of Washington’s U.S. Patent No. 6,506,559 and CSIRO’s U.S. Application No. 11/364,183.  The ‘559 Patent was issued on January 14, 2003, making January 14, 2004 the critical date under §135(b)(1).

The ‘183 application was filed in 2006 as a continuation of U.S. Application No. 10/755,328, which was filed January 13, 2004 (one day before the critical date) with claims copied from the ‘559 Patent. CSIRO eventually abandoned the ‘328 application. On August 10, 2009—more than five years after the critical date—CSIRO added claims to the ‘183 application that were substantially similar to claims previously presented in the ‘328 application (and to claims of the ‘559 Patent).


The Board found that CSIRO could not relate the post-critical date claims filed in the ‘183 application back to the pre-critical date claims presented in the ‘328 application, finding that CSIRO’s lack of diligence in prosecuting those claims and effectively delaying the declaration of interference ran afoul of the purpose of §135(b)(1), which was to “encourage promptitude.” According to the Board:

The safe-harbor provision of § 135(b)(1) cannot be reasonably be read to permit intentional delay or even—potentially—intentional frustration of a patentee’s repose.

Thus, the Board found CSIRO’s interfering claims to be time barred.

The Federal Circuit Decision

The Federal Circuit decision was authored by Judge Stoll and joined by Judges Chen and Meyer.

The Federal Circuit found no support for the Board decision in the statutory language or judicial precedent, noting instead that “[a]pplication of § 135(b)(1) does not turn on the patent applicant’s prosecution decisions or require diligence in prosecution.” After reviewing decisions applying the principle that “cancellation or amendment of a pre-critical date claim does not in itself result in a violation of § 135(b)(1)” such as Cryns v. Musher, 161 F.2d 217 (CCPA 1947); Corbett v. Chisholm, 568 F.2d 759 (CCPA 1977); Regents of Univ. of Cal. v. Univ. of Iowa Research Found., 455 F.3d 1371 (Fed. Cir. 2006); and Adair v. Carter, 668 F.3d 1334 (Fed. Cir. 2012), the court concluded:

We left no room for imposition of a requirement of diligent prosecution when the requisite relationship between post- and pre-critical date claims is otherwise established. We see no basis in this precedent or the statutory language itself for now reading in an exception to the exception in § 135(b)(1) to require a showing of diligent prosecution by the patent applicant. At no time have we held that a patent applicant’s prosecution strategy could bar claims otherwise permissible under § 135(b)(1), and the Board’s analysis does not persuade us to adopt such a rule at this time.

Thus, the Federal Circuit reversed the Board decision.

The Continued Relevance Of Interference Proceedings

The America Invents Act (AIA) phases out interference proceedings, but interference jurisprudence remains relevant because patent claims with an effective filing date prior to March 16, 2013, still can become involved in an interference. According to this article on Patently-O, 40% of recently published applications are “pre-AIA” applications that could become involved in an interference.

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