California 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.