Patent Board Codifies Two-Way Test for Interference, Streamlines Process.

In September 2004, the Patent Office (USPTO) amended its regulations regarding practice before the Board of Patent Appeals and Interferences. One substantive change in the rules codifies the “two-way” test for determining whether subject matter is interfering.  Under the two-way test, “An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.”  Thus, the interference requires that each invention obviate the other.  A second substantive change involves “threshold issues” that provide a “quick” way to end an interference.  According to the new rules, a threshold issue is “an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference.”  These threshold issues include (i) no interference-in-fact; (ii) a bar to interference under 35 U.S.C. 135(b) (e.g., application published more than one year prior); or (iii) a lack of written description to suggest the interference.

The net effect of these changes is expected to reduce the number of provoked interferences. The BPAI is expected to hear motions on the threshold issues prior to getting into the meat of the interference.