Interference: Late Claim Loses the Game

Images_1California v. Iowa (Fed. Cir. 2006).

The first annual bio-bowl was recently played-out before a small crowd and three officials in the heart of Washington, D.C.

Cal and Iowa battled through an interference proceeding over rights to a molecule designed to desensitize a person to an allergen.

Iowa, the junior party, received its patent first.  Within months, Cal amended its pending claims and requested an interference.  Unfortunately for Cal, the PTO had some problems with its new claims and Cal spent many more months fighting over their patentability.  Eventually, Cal canceled its claims and added a new one that properly set-up the interference.

For an interference, new claims must be added within one year of the other patent’s issue date. 35 USC 135(b)(1).  Even though its newest claim was filed more than one year after Iowa’s patent issued, Cal argued that its earlier amendments and requests for interference should satisfy the rule.  Both the BPAI and CAFC disagreed:


Because California’s proposed interpretation of section 135(b)(1) contravenes this court’s precedent, the plain meaning of the statute, and the policy underlying that section, this court rejects those contentions.

Cal could have relied on the earlier claims if they had not differed in any materially limitation from the new claim — unfortunately for the brown-furballs, the claim was materially different.

The conclusion: tough luck for you if you write bad claims in anticipation of an interference.

Iowa Wins.

8 thoughts on “Interference: Late Claim Loses the Game

  1. FYI – The legal doctrine of denying redress of claims for unreasonable delay is spelled “laches.” “Latches” are for securing trunks.

  2. Clement, I see your point. The entire problem is because everyone is lazy and no one wants to take the time to read the congressional record and find out what the members of congress said diring and since 1897 while considering the 35 USC 135 statutes. They take the easy out and look at a report or two generated by a few congressmen and say that is what the entire congress is thinking. What did other congress members say on the floor of congress about the rational behind 35 USC 135? If I was California’s lawyer, I think it would be in my personal interest to come up arguments more grounded in congress’ actual actions based on every member of congress who chimed in on the issue rather than just relying on judges’ belief as to what a few members of congress may have intended. My god! California’s reputation is at stake! Get on it, man!

  3. I understand that this decision leads to all kinds of legal scrutiny of th einterference rules, but my interest lies more in the actual situation of the patent rights that now has developed. Without knowing anything of the subject matter of both patents, let’s assume that the (claimed) invenion of Cal is broader than that of Iowa, in the sense that there is dependency. Without the interference there will be no judgement on the first to invent, but does that also mean that Iowa’s claims are valid (assuming that Cal would have been the first to invent)? And, in the opposite direction, Cal can now prosecute its application to grant without being bothered by Iowa’s patent (since that has a later date) even if Iowa would have been the first to invent. Rejecting the interference would thus to my opinion mean uncertainty on the validity of both the Iowa and the Cal patent.
    Further, if Cal’s patent issues, would it then be possible for Iowa to request for an interference (as far as I know an interference between two granted patents is possible)?
    Anyhow, I’m just an ignorant European patent attorney, but it seems that this decision has not helped clarity on the ownership of the invention.

  4. Something is not sitting right with the court’s latches/repose argument, Phil. Footnote one from California v. Iowa states “The difference between paragraphs 35 USC 135 (b)(1) and 35 USC 135 (b)(2) is that (b)(1) creates a one year bar relative to issued patents, while (b)(2) creates a one year bar relative to published patent applications. Otherwise, the two paragraphs are the same.”

    Lets assume all the facts are the same, except that Iowa patent instead was a published patent applications and that at the time the PTO declared an interference, Iowa’s patent application had not issued into a patent. If the one year rule for (b)(1) and (b)(2) is the same thing (court: “Otherwise, the two paragraphs are the same”), then California would be SOL (short on luck) on it’s interference against Iowa’s patent application because California filed it’s claim 205 one year and two months after Iowa’s patent application was published.

    However, if Iowa’s patent application had not yet issued into a patent at the time the interference was declared, where is the harm to Iowa that latches is supposed to prevent? If Iowa ain’t got no patent, has Iowa really obtained any property right for which it needs to be more secure in? How can 35 USC 135(b)(2) be a statute of repose as the court held? And if 35 USC 135(b)(2) is not a statute of repose and (b)(2) and (b)(1) are the same (court: “Otherwise, the two paragraphs are the same”), then how can 35 USC 135(b)(1) be a statute of repose as the court has held since the year 1897? The rational given by the California v. Iowa court is flawed. I think someone just opened California’s can of whoop a** and that someone is Iowa. We’re only at half time folks, and the brown bears will be coming out mean, ugly, and fightin’ and eating corn for lunch.

  5. Issue: Pre-critical date claims vs. Post critical date claims. Holding: 35 USC 135(b)(1) statute placed a one-year “latches” time limit on Iowa’s exposure to an interference proceeding so that Iowa might be more secure in Iowa’s property right.

    California (09/265,191) vs. Iowa (clam 3 of 6,207,646). (The transaction history of 09/265,191 is an interesting read as you can feel the prosecution attorney squirm over time. Check it out at link to portal.uspto.gov ).

    Seven months after Iowa’s patent issued with 39 claims on March 27, 2001, California added claims 202-204 to the ’191 application. The examiner rejected claims 202-204 and on May 9, 2002, more than one year after the ’646 patent had issued, California added claim 205 then later canceled claims 202-204. On 12-16-2003, more than 2 1/2 years after Iowa’s patent issued, the PTO declared an interference between California’s claim 205 and Iowa’s claim 3.

    In trying to overcome 35 USC 135(b)(1), California argues that when it filed claims 202-204 within a year of the issuance of the ’646 patent, it “discharged” its notice duty under section 135(b)(1) and could go forward in the interference with claim 205. The court cried BS and held that “Section 135(b)(1) bars any claim having a degree of identity with a claim in an issued patent unless such a claim is filed before the critical date” because “title 35 in this section … prohibits unsupported, post-critical date identity.” The court reasoned that 135(b)(1) was not a notice statute; it was a statute of repose (freedom from worry; peace of mind).

    Since the year 1897, the court has applied latches against the interference provoker, placing the burden on the interference provoker to get the PTO to declare an interference in a reasonable amount of time (which used to be two years and now is one year). Here, 35 USC 135(b)(1) statute placed a time limit on Iowa’s exposure to an interference proceeding so that Iowa might be more secure in Iowa’s property right.

    What I don’t get is why California needed three claims, claims 202-204, to provoke an interference with Iowa’s claim 3? Why didn’t California just copy claim 3 from the Iowa’s patent and move forward? Heck, up until it discovered Iowa’s patent, California had filed 201 claims in one patent application (201 claims!). California obviously isn’t afraid to spend taxpayer’s money to pay for the over-20-claims fees. (Hurray for California!) Couldn’t California have just copied all of Iowa’s 39 claims and let the examiner figure out which subject matter was contained in California’s patent? Isn’t that standard Interference practice? And if they couldn’t just copy Iowa’s claims, then perhaps California’s patent application lacked the subject matter to challenge Iowa’s patent. And if that’s the case, why did California go forward with the Interference? If California can’t beat Iowa at football, do you think people will give a rat’s a** if they beat Iowa in a patent interference?

  6. I can see how CAL argued “its earlier amendments and requests for interference should satisfy the rule.” 35 USC (b)(1) states “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.” It appears that CAL argued that the phrase “such a claim is made” may mean a claim of interference, not a patent claim. However, in a very rare situation, the actual text of 35 USC (b)(2) identifies exactly what the 35 USC (b)(1) phrase “such a claim is made” means – a claim of an application.

    CAL seems to have been short changed. First, someone missed the one year rule. I mean, come on. There are only so many patent rules and only a handful for interferences. How can you miss the one year rule? Second, was the best argument really one which attempts to persuade the court that the text of 35 USC (b)(2) is ambigious and means something different than previously held?

  7. I believe that the Junior party’s new claim has to be filed or added by an amendment within a year from the publication of the Senior party’s patent application. The one year from issue rule is true as well, but if the application published, the strategy has to be adjusted. 35 USC 135 (b)(2).

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