Strategies for Preparing for a Patent Interference

Strategies For Preparing for an Interference				application, consider filing a non-publication request,
Table of Contents				and an IDS identifying your client's applications
I. The Benefits of Timely Recognizing a Potential				disclosing or claiming similar subject matter, and a
Interference				37 CFR 1.59 petition to expunge the IDS
II. Obtain and Use Competitive Intelligence				information. Similarly, your client should consider
III. Patent Procedures Relating to Competitive				filing IDSs in the cited applications identifying the
Intelligence				new application along with petitions to expunge in
A. Limit Access to Your Client's Applications				those applications.
B Obtain Information Regarding Competitor's				Note that your client's opponent in the
Patent Applications				interference will have access to the file history of
IV. The Law Relevant to Requesting an				your client's involved application and all applications
Interference				to which it claims priority. Therefore, even a
A. 35 USC 102(g)(1) - Procedural Limitations on				non-publication request in your client's involved
Secret Prior Art				application will not immunize information regarding
B. 35 USC 135(a) - Criteria for an Interference				your client's similar applications identified in an IDS
C. 35 USC 135(b) - The Statutory Bar				from eventual discovery.
D. 37 CFR 1.604, 1.607, 1.608, and 1.617, and				It is extremely unlikely that the USPTO would
Requesting an Interference				declare an interference involving claims in a PCT
E. 37 CFR 1.658(c) Estoppel, Interference				application.34 Therefore, even though your client
Estoppel, and Issue Preclusion				may promptly copy claims into their application, it
1. In the USPTO				makes little sense to present a complete 37 CFR
2. In Subsequent Litigation				1.604 request at that time. You should file the
V. File Early				604 request in your client's application when there
VI. Respond to Published United States or PCT				is a 35 USC 371 national stage (or 35 USC 111(a)
Applications				continuation) of the target PCT application, since
VII. Consider Splitting Subject Matter Between				you can then identify in your client's interference
Applications in View of Temporal Delays and				request the United States serial number of the
Interference Estoppel				target application. A 371 application will be published
A. Probable Time Line for an Interference				several months after it is on file in the USPTO.
B. Predicting the Outcome and Consequences of				However, as a third party, you can periodically
the Outcome				request status information from the USPTO
1. Consequences of Losing the Interference				based upon the publication of a PCT application to
2. Consequences of Prevailing in the Interference				determine whether a corresponding 371 application
C. Costs of an Interference				has been filed in order to identify the serial
VIII. Count Formulation for an Interference				number of the 371 application prior to its
Request				publication. That will allow you to more promptly
IX. Table 1 - Comparison of Data Sources				request an interference.
I. The Benefits of Timely Recognizing a Potential				You should promptly file an interference request
Interference				targeting the published United States 35 USC
Timely recognizing a potential interference allows				111(a) or 371 application because it takes most
your client to act before certain legal and business				interference requests roughly two years to
options are foreclosed. Failing to request an				mature into interferences.35 Prompt filing
interference within one year of the issuance of				increases the chances that an interference
the target patent bars your client (1) from				request will be considered and an interference
obtaining an interference and (2) from obtaining				declared prior to issuance of the target application
patent claims defining substantially the same				into a patent. Moreover, you should periodically
subject matter as claimed in the patent.1 Failing to				check for papers filed in the target application
request an interference within one year of the				using PAIR, obtain copies of paper filed in it, copy
publication of an application will under certain				into your application any additional or amended
circumstances also bar your client from obtaining				claims presented in the 371 application to which
both an interference and the claims in the				your client believes it has a right, and update your
published application.2				604 request accordingly.
Applications targeting a patent for an interference				When you file an interference request targeting a
that are filed after the issuance of the target				competitor's application or patent, consider filing a
patent must make certain showings in the				paper in the style of a public protest in each of
interference by the burden of clear and convincing				the applications related to the target application or
evidence as opposed to the otherwise generally				patent pointing out that the subject application is
applicable burden of the preponderance of the				related to the target application or patent, and
evidence.3 Promptly requesting an interference				should be examined in view of that fact
with a target application may result in an				relationship.36 That may bring the existence of
interference with the target application as				the interference request to the attention of the
opposed to an interference with a patent issued				examiners of the related applications, and enable
from the target patent. Dragging the target				those examiner to consider the impact of the
application into an interference before it can issue				interference request on the subject application.
into a patent can be advantageous because,				This action may result in the related applications
normally, no patent will issue from the target				being included in the interference, having
application until judicial review of the interference				prosecution in them stayed until the interference
is terminated.5 The duration of the interference				is terminated, or at least receiving a heightened
and all judicial review can be substantial.				level of examination.37 However, you are also
Therefore, failing to timely request an				obliged to serve a copy of any public protest on
interference could result in your client				the attorney for the target application, 38
unnecessarily facing a patent instead of an				thereby notifying the adverse party of your
application for the duration of the interference and				interference request. You will have to weigh
judicial review of the interference. Furthermore, if				benefits and drawbacks of this procedure in each
your client requests a stay in litigation in which it				situation.
has been accused of infringement of a patent				VII. Consider Splitting Subject Matter Between
based upon the existence of an interference				Applications in View of Temporal Delays and
involving the patent, it is more likely that the stay				Interference Estoppel
will be granted if an interference is procedurally				Your client needs to take into consideration the
advanced relative to the litigation than vice				potential time line, outcome, consequences of the
versa.6 Finally, late recognition of problem patents				outcome, and cost when deciding what action to
increases the costs of designing, licensing, or				take in view of a potential interference. Based
abandoning the market.				upon these considerations, your client can make a
For all of the foregoing reasons, early recognition				reasoned decision (1) whether to attempt to
of the potential for an interference can be				provoke an interference and (2) whether to also
advantageous. Conversely, preventing a				attempt to promptly obtain issued patents on
competitor from timely identifying your client's				closely related but arguably non-interfering subject
patent applications increases the value of your				matter. The important point is to identify these
client's patent portfolio. I focus in this paper on				issues prior to taking action and to weigh the
practices you can employ to identify relevant				benefits and drawbacks before deciding to act.
patent information, such as potential interferences,				Keep in mind that the motivation for filing most
to prevent competitors from identifying your				interference requests is that the existence of
client's patent information, and to explain what				another's exclusive right to the target claims is
you can or should do when you identify a				unacceptable from a business perspective.
potential interference.				Therefore, the most important goal of most of
II. Obtain and Use Competitive Intelligence				the parties requesting interferences is to obtain
Your client will never know a patent problem				cancellation of the other party's claims.
exists (until it is too late) unless it is obtaining				A. Probable Time Line for an Interference
competitive intelligence. Each company should				Most probably, an interference request will result
employ a procedure to obtain competitive				in an interference in roughly two years after the
intelligence. Most companies set up an information				date the request for the interference is filed. Most
"watch," which is a periodic retrieval of targeted				probably, the interference proceeding in the
information, as part of this procedure.				USPTO will take about two years. Most probably,
There are numerous commercial databases				any 35 USC 146 action following the interference
containing relevant patent and non-patent				will take about two years. Most probably, any 35
information. Table 1 (see section VIII) lists some				USC 141 appeal will take about a year. Therefore,
of the more popular commercial database				any hard fought interference and its judicial
sources, and it lists pros and cons of each				review may take on the order of five years.
vendor's services.7 As Table 1 shows, no one				Most probably, post interference prosecution and
vendor supplies all potentially useful sources of				issuance of a prevailing applicant's application will
competitive intelligence. Therefore, a good policy is				take about a year.
to use a plurality of database vendors to gather				B. Predicting the Outcome and Consequences of
relevant information for analysis.				the Outcome
If a company does not have an in-house				Predicting the outcome of an interference
information specialist, it may be cost effective				depends upon the known facts of the case (e.g.,
and more reliable for it to contract with a				your priority evidence and known prior art) and
consulting information specialist instead of				guesses as to unknown facts (e.g., your
attempting to internally implement a watch. This is				opponent's priority evidence and unknown prior
because a suitable “watch” may involve				art). Thus, any such prediction and the confidence
retrieving data from multiple data vendors, and				level of the prediction depend upon the facts of
the watch may need to be tweaked from time				the case.
to time to provide desired information. Moreover,				1. Consequences of Losing the Interference
it may be desirable to conduct non-automated				If your client "loses"39 the interference, it may
database searches for certain information.				end up with no patent, and 37 CFR 1.658(c) may
Information specialist organizations include the				bar it from any claims to any subject matter
Association of Independent Information				disclosed or obvious in view of the disclosure of
Professionals (AIIP), the Society for Competitive				the other applications (or patents) involved in the
Intelligence (SCIP), the Special Libraries Association				interference. In contrast, if your client does not
(SLA), and the Patent Information User's Group				provoke an interference, it may obtain claims
(PIUG).8				dominating or subservient to the claims of the
One source of patent competitive intelligence is				target application or patent, and these may be
disclosures by or to your client, typically in				claims that your client would be precluded from
connection with offers to sell IP, settlement or				obtaining if it pursued an interference.
merger negotiations, or duties pursuant to a joint				Theoretically, that should not happen since,
venture. Consider including in the underlying				theoretically, your client and the owner of the
agreement terms defining the rights to pursue				target application or patent should be entitled to
inter partes administrative actions, such as				the same claims in any case. However,
interferences. Likewise, be aware of the possibility				interferences adduce additional evidence than
of requesting administrative action, such as				exists in ex parte prosecution, decisions of the
interferences, if your agreement permits (or does				APJs on patentability and the scope of interfering
not expressly exclude) them.				subject matter may differ from those of ex
III. Patent Procedures Relating to Competitive				parte examiners, and failure to either raise certain
Intelligence				issues or carry the burden of proof on certain
In this section, I list procedures to employ for (1)				issues in an interference may all result in different
limiting or delaying access to your client's patent				outcomes in interferences than in corresponding
or confidential information and (2) obtaining access				ex parte prosecution.
to information about patent applications of others.				2. Consequences of Prevailing in the Interference
A. Limit Access to Your Client's Applications				If your client prevails in the interference, (1)
If there is information that you feel obliged to				corresponding claims in the opponent's application
submit in a 35 USC 111(a) patent application, a				or patent will be canceled, and your client's
reissue patent application, or a reexamination, and				application will be entitled to an amount of term
you want that information to remain confidential,				extension40 unless term is limited by a terminal
consider filing the information pursuant to MPEP				disclaimer. In addition, issue preclusion may apply in
section 724 concurrently with a rule 37 CFR 1.59				a follow on infringement litigation by your client on
petition to have the information expunged if the				its patent issuing from its application involved in
information is found to be not important to				the interference against the other party in the
patentability. If you file such a petition, the				interference.
confidential information will not be made available				If your client has previously obtained patents with
to the public and will be returned to the applicant if				claims to closely related subject matter, you may
an examiner determines that the information is				be forced to file in your client's interference
not "important to a reasonable examiner in				application a terminal disclaimer to moot a double
deciding whether to allow the application to issue				patenting rejection, thereby losing any potential
as a patent."9				term extension that may be afforded by the
Second, anyone can access the file of an				AIPA due to the duration of the interference and
abandoned unpublished United States patent				subsequent judicial review. This is a factor to
application if the application is referred to				weigh when considering prosecution of related
anywhere in the file history (not just when it is				applications. In this regard, also keep in mind your
referred to in the specification) of an issued				rule 56 duty to provide information from the
patent.10 Why is this important? Partially because				interference to the examiner examining any
of the duty to disclose "Information Relating to or				relevant application, whether you win or lose the
From Copending United States Patent				interference.41
Applications,"11 such as information "[f]or				C. Costs of an Interference
"different applications pending in which similar				Most interferences cost several hundred thousand
subject matter but [arguably] patentably indistinct				dollars to litigate; roughly ten percent of the cost
claims are present."12 Accordingly, it is a common				of a patent infringement litigation. Interferences
practice to file IDSs containing copending				are procedurally complex, usually requiring the
application statements. These statements may				interplay of priority and patentability issues
include the specification, figures, claims, or merely				respecting both parties' claims. However,
the serial numbers of the related applications.				interferences allow much more limited discovery
Keep in mind that the claims are potentially				than district court infringement litigation, they do
material vis-a-vis a double patenting determination.				not deal with issues of infringement or damages,
In any case, that practice can eventually enable				and therefore they cost less than infringement
an adverse party to access the file histories of				litigation.
the cited applications - - even if those applications				VIII. Count Formulation for an Interference
are subsequently abandoned. In addition, for				Request
reexaminations and reissue applications, that				The vast majority of interference proceedings
practice provides your client's competitors				terminate prior to a decision on priority. However,
potentially damaging information. Therefore, you				priority is the ultimate issue, and the reasons why
may want to file a 37 CFR 1.59 petition along with				interferences terminate are logically related and
each copending application statement.				dependent upon priority. For example, a decision
B Obtain Information Regarding Competitor's				on motions that a party lacks support for its
Patent Applications				involved claims will result in termination of the
If you are interested in whether there are any				interference via a judgement against that party.
pending applications related to either a published				However, lack of support implies that the party
United States application or an issued United				does not have priority for the subject matter
States patent, simply look on the continuity link				defined by the count. Likewise, parties settle or
for parent and child data in PAIR, or telephone or				concede based upon factors including the likelihood
fax your request for that information to the				of prevailing on priority. Therefore, priority is an
USPTO.13 Continuity and status information is				issue you should be concerned with when
extremely useful in targeting patent applications				requesting an interference.
for an interference or a public protest.				Priority in an interference is awarded on a count
In certain instances, an application priority to which				by count basis. The party losing priority with
is claimed in a PCT publication is not readily				respect to a count will not be entitled to claims
available from the USPTO. In those instances, be				corresponding to that count, which are all claims
aware that copies of the priority applications may				that define the same patentable invention as the
be obtained directly, promptly, and inexpensively				count. Claims corresponding to the count are
from the International Bureau in Zurich.				supposed to define obvious variations of the
You can request status information from the				subject matter defined by the count. The count is
USPTO to determine whether a 371 application				supposed to define subject matter that is
has been filed based upon a published PCT				non-obvious over the of the prior art. The count
application by sending a request for status				is an artificial legal construct defined by the APJ at
information to the PCT Legal Office either by mail				the beginning of the interference in the declaration
or by facsimile to 703-308-6459, including a cover				of the interference. However, interference
of the published PCT application, and a letter				requests must include a propose count or counts.
requesting status. The PCT Legal office will then				Often, the proposed counts are the same as the
mail you a letter providing status, including the US				counts defined in the declaration of the
serial number, if one exists.14				interference.
Finally, you can now order from the USPTO a				Moreover, a party requesting (via motion) in the
copy of any paper cited in the PAIR file for a				interference proceeding that the count be change
published application.15				has the burden of the preponderance of the
IV. The Law Relevant to Requesting an				evidence to explain why the count should be
Interference				changed. The majority of motions in interferences
Deciding what action, if any, to take when you				are denied. Therefore, it is statistically unlikely that
identify a potential interference requires knowing				the count will be changed via a motion in an
the relevant law. The relevant law includes inter				interference. Therefore, your client has the
alia 35 USC 102(g), 35 USC 135(a), 35 USC 135(b),				possibility of influencing the outcome of the
37 CFR 1.604, 37 CFR 1.607, 1.608, and 1.617,				interference by what count or counts it proposes
1.658(c) and related interference estoppel, and 37				in its request for an interference, and what claims
CFR 1.657. 35 USC 102(g) defines the				it presents prior to the interference.
circumstances in which secret inventions are prior				The logical procedure to follow to propose a
art. 135(a) defines what constitutes interfering				count is to determine your client's relevant priority
subject matter. 135(b) defines a patentability and				information, obtain what priority information you
interference bar. Rules 604 and 607 define the				can regarding the target application, such as the
requirements for an applicant to copy claims and				disclosure of any applications to which the target
request an interference. Rule 608 defines the				application claims priority, relevant press releases
showing an applicant must make prior to the				on the target company's products, publications of
interference to convince the examiner to				the named inventors, and information on the
recommend the interference.16 Rule 617 defines				employment histories of the named inventors,
the degree of proof required in an applicant's				and propose a count (1) that you believe to be
608(b) showings necessary to avoid losing the				non-obvious over the prior art and (2) that
interference when it is declared. 37 CFR 1.657				provides the highest probability that your client will
defines who has the burden of proof on priority.				have priority over the other party's priority for
I briefly review this law below and provide				the subject matter defined by that count.
practice advice interspersed with the review.				In addition, you should present in the interference
However, note that you are obliged to notify the				request claims identical (or as close as possible
examiner when you present claims substantially				given the limitation of support in your client's
similar or copied from a target patent or				application) to the proposed count. This is at least
application that you are doing so, and failure to do				because the existence of such claims may
so is a sanctionable act of misconduct.17 Merely				preclude an argument by your opponent in the
citing the target application or patent in an IDS is				interference why the count should be changed.
not sufficient to satisfy this obligation.				IX. Table 1 - Comparison of Data Sources
A. 35 USC 102(g)(1) - Procedural Limitations on				Database sources for competitive intelligence is
Secret Prior Art				available at All of the database vendors noted in
35 USC 102(g)(1) defines inventive activity that				this chart provide fee based services. Most of the
occurred abroad to be prior art only in an				Internet sites are free, but some require
interference.18 In contrast, 35 USC 102(g)(2)				registration or subscription. Table 1 is courtesy of
defines inventive activity that occurred in the				Martin Goffman Associates.
United States to be prior art without limit to the				FOOTNOTES
type of action.19 As a consequence, a company's				1 135 USC 135(b)(1)("A claim which is the same
inventive activity that occurred abroad will not				as, or for the same or substantially the same
provide a 102(g) prior art invalidity defense to a				subject matter as, a claim of an issued patent
charge of infringement of a patent. It follows that				may not be made in any application unless such a
foreign company's have a greater incentive than				claim is made prior to one year from the date on
domestic companies to request interferences,				which the patent was granted."); and In re
since that action is more likely to be the foreign				McGrew, ___ F.3d ___, ___, 43 USPQ2d 1642,
company's only recourse to avoid liability for				1635 (Fed. Cir 1997)(Rich J.)("The application of
patent infringement.				section 135(b) is not limited to inter partes
B. 35 USC 135(a) - Criteria for an Interference				interference proceedings but may be used, in
35 USC 135(a) states that an "application ... which,				accordance with its literal terms, as a basis for ex
in the opinion of the Director, would interfere with				parte rejections.").
any pending application, or with any unexpired				2 35 USC 135(b)(2)("A claim which is the same as,
patent..." may be the basis of an interference. In				or for the same or substantially the same subject
other words, the statutory language leaves the				matter as, a claim of an application published
criteria for what constitutes interference at the				under section 122(b) of this title may be made in
complete discretion of the Director. The Director's				an application filed after the application is published
discretion is circumscribed by 37 CFR 1.601(j) and				only if the claim is made before 1 year after the
(n), which define an "interference-in-fact" based				date on which the application is published."). You
upon a "same patentable invention" test. A literal				can file copied claims in your application at any
reading of those rules would indicate that the test				time if your application was pending when the
for interfering subject matter is the same as the				target application was published.
usual test for obviousness-type double patenting;				3 Bamberger v. Cheruvu, 55 USPQ2d 1523, 1526
a one-way obviousness test. However, in Winter				(PTOBPAI 1998)("We recognize that when an
v. Fujita,20 an expanded panel of the Board held				application is filed after a patent issues, that [sic]
that interference-in-fact required a "two-way				the applicant must prove priority by clear and
patentability analysis," stating that:				convincing evidence. Price v. Symsek, 988 F.2d
Resolution of an interference-in-fact issue involves				1187, 26 USPQ2d 1031 (Fed. Cir. 1993). In the
a two-way patentability analysis. The claimed				interference before us, the Bamberger application
invention of Party A is presumed to be prior art				was copending with the application which matured
vis-a-vis Part B and vice versa. The claimed				into the Cheruvu patent. We leave for another
invention of Party A must anticipate or render				case the determination of whether unpatentability
obvious the claimed invention of Part B and the				should be based on clear and convincing evidence
claimed invention of Party B must anticipate or				in those interferences where the junior party
render obvious the claimed invention of Party A.				application was filed after the senior party patent
When the two-way analysis is applied, then				issued."). Issues of derivation and fraud always
regardless of who ultimately prevails on the issue				require proof by clear and convincing evidence.
of priority, the Patent and Trademark Office				See Price v. Symsek, 988 F.2d 1187, ___, 26
(PTO) assures itself that it will not issue two				USPQ2d 1031, 1033-34 (Fed. Cir. 1993) as to
patents to the same patentable invention.				derivation and Litton Sys., Inc. v. Honeywell, Inc.,
Winter still leaves some wiggle room as to when				87 F.3d 1559, 1570, 39 USPQ2D 1321, 1328 (Fed.
there exists interfering subject matter since a				Cir. 1996), vacated and remanded on other
"two-way patentability analysis" does not specify				grounds, 117 S. Ct. 1240 (1997) as to fraud.
that there must be two-ways obviousness				4 I polled the members of the Interference
between the claimed inventions. However, my				Committee of the AIPLA to determine the
current understanding from the case law and the				average delay between requesting an interference
guidance provided by members of the Trial				and declaration of the interference. The average
Section21 of the Board at various bar meetings is				delay was about two years. See Neifeld,
that an interference would require two-ways				“Report of the January 2002 meeting of the
obviousness between the parties' claims, except in				Interference Committee of the AIPLA,”
unusual circumstances. However, one important				published in the AIPLA Quarterly Bulletin and
point to note is that a claim in an application to a				available at
species of a genus may be insufficient to provoke				5 Cf. Lin v. Fritsch,14 USPQ2d 1795, 1798
an interference with a claim in a target application				(Comm'r 1989)("The normal practice of PTO is
or patent to the genus.22				not to issue patents based on applications involved
C. 35 USC 135(b) - The Statutory Bar				in an ongoing interference. The interference rules
35 US 135(b)23 provides a "triple whammy."				authorize petitions to the Commissioner in
First, it precludes untimely attempts to provoke				interference cases for the purpose of seeking a
an interference.				waiver of a rule of practice. 37 CFR §1.644(a)(3)
Second, it precludes getting a patent on claims				[Rule 644]. Inasmuch as Rule 644 is not
defining substantially the same subject matter as				inconsistent with law, it has the force and effect
claims in an issued patent or published US				of law. In re Rubinfield, 270 F.2d 391, 123 USPQ
application that are not timely presented.				210 (CCPA 1959), cert. denied, 362 U.S. 903 [ 124
Third, since the 135(b) "substantially the same				USPQ 535 ] (1960). Rule 644 gives the
subject matter" criteria may be narrow than				Commissioner jurisdiction to reach the merits of
the135(a) "same patentable invention" criteria,				Lin's petition.").
anomalous situations may occur where 35 USC				6 Whether or not a court grants a stay
135(b) may bar an interference even when claims				requested based upon the existence of an
that were timely presented met the 35 USC				interference depends on various factors including
135(a) criteria. As a result, the applicant requesting				how advanced the litigation is relative to the
the interference (1) may be barred from the				interference, the number of issues that will not be
interference and (2) barred from getting a patent				resolved by a decision in the interference, and the
even when there is no 135(b) bar. This is because				hardship to the non-moving party. See Chiron
37 CFR 1.131 does not allow antedating a patent				Corp. v. Abbott Labs., 1996 U.S. Dist. LEXIS 317,
or published application for claims that define the				*8-9 (N.D.Cal. 1996)(advanced litigation); General
"same patentable invention"24 as the claims in the				Foods Corp. v. Struthers Scientific and Int’l.
patent or published application.				Corp., 309 F.Supp. 161, 161-2 (D. Del.
35 USC 135(b)(2) presents special problems since				1970)(advanced litigation and several other
it bars late presented claims to "an application				patents in suit); Research Corp. v. Radio Corp. of
published under section 122(b) of this title," and 35				America, 181 F.Supp. 709, (D. Del. 1960)(advanced
USC 374 accords to published PCT applications				interference); Sanwa Foods, Inc., v. Wenger Mfg.,
the same force and effect as published US				Inc., 18 USPQ2d 1493 (D. Kan. 1990)(interference
application, except for 102(e) and 154(d).25 The				so advanced decision expected prior to trial
special problem arises in that not all PCT				deemed grounds to deny request for stay); NL
applications are published in English, but all PCT				Chemicals, Inc. v. Southern Clay Prods., Inc., 14
publications may serve as the basis for a				USPQ2d 1561 (D.D.C. 1989)(stay granted where
135(b)(2) bar. Accordingly, it may be difficult to				the PTO interference encompassed all of the
identify a claim in a foreign language (e.g.,				issues in the district court action); R.E. Phelon Co.,
Japanese, German, or French) published PCT				Inc. v. Wabash, Inc., 640 F.Supp. 1383, 1385 (N.D.
application defining subject matter that would be a				Ind. 1986)(stay granted where both parties joined
problem for your client, and just as difficult to				in the request for the stay).
determine whether your client's applications have				7 Courtesy of Martin Goffman, Ph.D., Goffman &
support to copy those claims. However, if you				Associates. I use Goffman & Associates for
can identify potentially relevant PCT published				most of my proprietary database information
applications, you can address this problem by				needs. See
obtaining an automated English translation of at				8 See for the AIIP. The AIIP is directed to
least the claims using free web services, such as				general information. See for the SCIP. See for the
those linked on my firm's web site at:				SLA. See for the PIUG. The PIUG is directed to
The terms of 135(b)(2) limit the bar based upon				patent information.
published applications (including PCT application) to				9 MPEP section 724.04, August 2001, page
claims presented in applications filed after the				700-250.
publication date of the published application. Thus,				10 See Q&A 85 on page 24, and see form PTO
there is no time bar on copying claims in an				SB68, at and specifically section 1.B.
application that was pending when the potentially				11 MPEP section 2001.06(b).
interfering application was published. 35 USC 374				12 MPEP section 2001.06(b), page 2000-5, August
would imply that no 135(b)(2) bar would exist to				2001; interpolation supplied.
claims filed in your client's own PCT application				13 USPTO FILE INFORMATION UNIT, Crystal
when your client's own PCT application was filed				Plaza 3, Tel: 703-308-2733; Fax: 703-305-6067.
prior to the publication date of the target				14According to Examiner Leonard Smith, PCT
application. However, in my opinion, the USPTO				Legal Office, USPTO.
has not clearly defined whether it considers claims				15 See
in a PCT application in the international stage to be				16 Interferences are declared by an
"pending." Accordingly, your client should not rely				Administrative Patent Judge (APJ), not by the
upon "pending" claims in its own PCT application to				examiner. 37 CFR 1.610)a).
satisfy 135(b)(2), unless that application has been				17 See 37 CFR 10.23(c)(7) and Bovard v.
nationalized in accordance with 35 USC 371.				Respondent, Office of Enrollment and Discipline
D. 37 CFR 1.604, 1.607, 1.608, and 1.617, and				("OED") Proceeding D96-01 (Commissioner's
Requesting an Interference				Decision, August 27, 1997).For a description of
Rules 604 and 607 specify what you need to				ethical duties in interferences, see Neifeld, "A
show to get into an interference.				Practitioner's View of Ethical Considerations Before
37 CFR 1.604(a) specifies the requirements for				the Board in Interferences," September 2002,
requesting an interference with a pending				available at
application, which are: (1) suggesting a proposed				18 35 USC 102(g)(1) reads:during the course of an
count, (2) presenting at least one claim				interference conducted under section 135 or
corresponding to the proposed count or identifying				section 291, another inventor involved therein
at least one claim in its application that				establishes, to the extent permitted in section
corresponds to the proposed count, (3) identifying				104, that before such person’s invention
the other application and, if known, a claim in the				thereof the invention was made by such other
other application which corresponds to the				inventor and not abandoned, suppressed, or
proposed count, and (4) explaining why an				concealed....
interference should be declared. 37 CFR 1.606 is				19 35 USC 102(g)(2) reads:before such
useful in understanding item (4). Rule 606 states				person’s invention thereof, the invention was
that before "an interference is declared between				made in this country by another inventor who had
an application and an unexpired patent, an				not abandoned, suppressed, or concealed it.
examiner must determine that there is interfering				20 53 USPQ2d 1234 (PTOBPAI 1999)(expanded
subject matter claimed in the application and the				panel consisting of Stoner, Chief Administrative
patent which is patentable to the applicant subject				Patent Judge, McKelvey, Senior Administrative
to a judgment in the interference." Thus, the				Patent Judge, and Schafer, Lee, and Torczon, trial
explanation why an interference should be				section administrative patent judges)(opinion by
declared should at least allege that the claims in				SAPJ McKelvey).
the application are patentable to the applicant, but				21 The Trial Section of the Board is a section of
for the potential interference.				the Interference Division of the Board. The Trial
37 CFR 1.607(a) specifies the requirements for				Section includes about eight APJs. The APJs of
requesting an interference with an issued patent.				the Trial Section have declared, presided over,
These requirements are the following: (1)				and decided most of the interference proceedings
identifying the patent, (2) presenting a proposed				since inception of the Trial Section in 1998.
count, (3) identifying at least one claim in the				22 For a discussion of this issue see Neifeld,
patent corresponding to the proposed count, (4)				“The Standard for the Existence of an
presenting at least one claim corresponding to the				Interference” 83 JPTOS 275 (April 2001), also
proposed count or identifying at least one claim				available at
already pending in its application that corresponds				23 35 USC 135(b) reads:
to the proposed count, (5) if any claim of the				(b)(1)A claim which is the same as, or for the
patent or application identified as corresponding to				same or substantially the same subject matter
the proposed count does not correspond exactly				as, a claim of an issued patent may not be made
to the proposed count, explaining why each such				in any application unless such a claim is made prior
claim corresponds to the proposed count, (6)				to one year from the date on which the patent
applying the terms of any application claim				was granted.
identified as corresponding to the count, and not				(2) A claim which is the same as, or for the same
previously in the application to the disclosure of				or substantially the same subject matter as, a
the application, and (7) explaining how the				claim of an application published under section
requirements of 35 U.S.C. 135(b) are met if the				122(b) of this title may be made in an application
claim presented or identified in your client's				filed after the application is published only if the
application as interfering were not present in the				claim is made before 1 year after the date on
application until more than one year after the				which the application is published.
issue date of the patent.				24 However, see In re Eickmeyer, 202 USPQ
37 CFR 1.608(a) applies when the effective filing				655, 661, 602 F.2d 974, 980 (CCPA 1979)("At the
date of an applicant requesting an interference				same time, we do not regard the opposite result
with a patent is later than the effective filing date				(proposed here by the PTO) to be justifiable,
of the target patent by no more than three				namely: leaving an applicant in a position where he
months. Rule 608(a) requires the requestor to file				cannot overcome a reference by a 131 affidavit
a statement alleging that there is a basis upon				because the PTO has decided that the reference
which the applicant is entitled to a judgment				claims his invention, while, at the same time, he is
relative to the patentee. Since the allegation is				denied an interference because the PTO has
usually based upon priority, you must conduct a				decided that the claims of his application and those
priority investigation to make this statement.				of the reference are not for substantially the
37 CFR 1.608(b) applies when the effective filing				same invention.")
date of an application in which an applicant				2535 USC 374 reads:
requesting an interference with a patent is later				The publication under the treaty defined in section
than the effective filing date of the target patent				351(a) of this title, of an international application
by more than three months. Rule 608(b) requires				designating the United States shall confer the
the applicant requesting the interference to submit				same rights and shall have the same effect under
evidence and explanations demonstrating that				this title as an application for patent published
applicant's application is prima facie entitled to a				under section 122(b), except as provided in
judgment relative to the patent. However, rule				sections 102(e) and 154(d) of this title.
608(b) states that "the examiner will consider the				26 See Basmadjian v. Landry, Interference No.
evidence and explanation only to the extent of				103,694, paper No. 22, pp 57-58 (PTOBPAI 1997)
determining whether a basis upon which the				(precedential to the Board) (Judgement entered
application would be entitled to a judgment relative				against Basmadjian because Basmadjian's 608(b)
to the patentee is alleged and, if a basis is alleged,				showings did not prima facie establish diligence;
an interference may be declared," whereas 37				additional evidence submitted by Basmadjian's in
CFR 1.617(a) states that the APJ will review the				response to the show cause order was not
evidence filed in connection with rule 608(b), and,				considered since Basmadjian did not show good
if the APJ determines that the "evidence fails to				cause why the additional evidence was not
show that the applicant is prima facie entitled to a				submitted with 608(b) showings.).
judgment relative to the patentee, the				27 37 CFR 1.658(c) reads:c) A judgment in an
administrative patent judge shall, concurrently with				interference settles all issues which (1) were
the notice declaring the interference, enter an				raised and decided in the interference, (2) could
order stating the reasons for the opinion and				have been properly raised and decided in the
directing the applicant, within a time set in the				interference by a motion under § 1.633 (a)
order, to show cause why summary judgment				through (d) and (f) through (j) or § 1.634, and
should not be entered against the applicant." 37				(3) could have been properly raised and decided in
CFR 1.617(b) also states that "additional evidence				an additional interference with a motion under §
shall not be presented by the applicant or				1.633(e). A losing party who could have properly
considered by the Board" in response the show				moved, but failed to move, under § 1.633 or
cause order. In other words, if the applicant's				1.634, shall be estopped to take ex parte or inter
interference request alleges but does not make a				partes action in the Patent and Trademark Office
prima facie case for a date of invention prior to				after the interference which is inconsistent with
the effective filing date of the target patent, the				that party’s failure to properly move, except
applicant will not be able to supplement that				that a losing party shall not be estopped with
evidence and will be faced with a show cause				respect to any claims which correspond, or
order, most likely resulting in swift judgement				properly could have corresponded, to a count as
against the applicant.26 Accordingly, whenever a				to which that party was awarded a favorable
608(b) showing is required, it is essential that the				judgment.
showing be sufficient so that the applicant is prima				28 In re Deckler, 977 F.2d 1449, 1452, 24
facie entitled to judgement relative to the				USPQ2d 1448, 1450 (Fed. Cir. 1992)(the
patentee.				judgement in the interference may be used as a
E. 37 CFR 1.658(c) Estoppel, Interference				basis to subsequently reject claims of the losing
Estoppel, and Issue Preclusion				party to the same patentable invention as the
1. In the USPTO				count).
37 CFR 1.658(c) defines the estoppel effect in the				29 49 Fed. Reg. 48440 second column lines 25-61;
USPTO with respect to all issues that were or				In re Shirmer, 69 F.2d 556, 558, 21 USPQ 161, 163
could have been raised in the interference.27 This				(CCPA 1934); and Avery v. Chase, 101 F.2d 204,
includes estoppel with respect to claims defining				40 USPQ 343 (CCPA 1939), cert. den'd, 307 U.S.
patentably indistinguishable inventions from a				638 (1939); and 37 CFR 1.633(e).
count,28 and to claims to subject matter				30 Bruning v. Hirose, 161 F.3d 681, ___, 48
commonly disclosed (whether or not claimed) in				USPQ2d 1934, 1938 (Fed. Cir. 1998)("Accordingly,
any applications involved in the interference.29				this court holds that, during an interference
2. In Subsequent Litigation				involving a patent issued from an application that
Issues decided in an interference proceeding may				was copending with the interfering application, the
be accorded issue preclusion effect in subsequent				appropriate standard of proof for validity
litigation. The burden of proof on most issues in				challenges is the preponderance of the evidence
an interference proceeding is preponderance of				standard."); Brown v. Barbacid, 276 F.3d 1327,
the evidence.30 The corresponding burden in				1333, 61 USPQ2d 1236, ___ (Fed. Cir.
infringement litigation is clear and convincing				2002)("Specifically, this court (or the Board on
evidence. In all cases, the burden of proof in the				remand, as the case may be) must determine,
interference proceeding is no higher than the				based on the entire evidentiary record, whether
burden of proof in infringement litigation.				Barbacid ultimately prevailed in proving priority by
Therefore, the decisions on issues actually litigated				a preponderance of evidence.").
in the interference proceeding should be granted				31 Section 27 of the Restatement of Judgements
issue preclusion effect in subsequent infringement				(second) states the general rule of issue
litigation.31				preclusion, which is that: When an issue of fact or
F. 37 CFR 1.657 - Burden of Proof on Priority				law is actually litigated and determined by a valid
37 CFR 1.657 defines the burden of proof as to				and final judgment, and the determination is
date of invention to be on the party with the				essential to the judgment, the determination is
later effective filing date, and that the burden				conclusive in a subsequent action between the
increases from preponderance of the evidence to				parties, whether on the same or a different claim.
clear and convincing evidence if the effective filing				32 Brown v. Barbacid, 276 F.3d 1327, 1333, 61
date of the application is after the effective filing				USPQ2d 1236, ___ (Fed. Cir. 2002).("In sum,
date of the target patent, and that burden does				under 37 C.F.R. § 1.657(a) and (b), the ultimate
not shift based upon submission of priority				burden of proof always remained on thejunior
evidence.32				party, Barbacid. Thus, the Board erred in stating
V. File Early				that the burden of proof shifted to Brown at any
If your competitive intelligence is lucky enough to				point in this case.")
identify that your client's competitor is about to				33 There is no authoritative legal opinion on this
file a patent application on contested technology,				issue. However, a PCT application may form the
or obtain a patent on that technology, your client				basis for a rejection of a claim as specified in
should file immediately. As just shown, the burden				102(e), and possible based upon 102(g). See the
of proof on priority depends solely upon effective				discussion of the purpose for an interference and
filing and issue dates, and pointedly does not				why applications qualify as prior art under 102(g) in
depend upon evidence of inventive activity.				Neifeld, "Viability of the Hilmer Doctrine” 81
VI. Respond to Published United States or PCT				JPTOS 544 (July 1999) and Neifeld, “Viability
Applications				of the Hilmer Doctrine” 81 JPTOS 544 (July
Assume your client identifies a published United				1999), respectively, both available at
States or PCT application (1) which designates the				34 It appears that the Board would have
United States and (2) the claims of which cover				jurisdiction over a PCT application in an
or relate to your client's technology. Your client				interference via application of the terms of 35
should first consider preserving its rights in view				USC 374 to 35 USC 135(a), but I know of no
of 35 USC 135(b)(2).				such interference.
135(b)(2) will bar your client from presenting				35 See “Report of the January 2002 meeting
claims to substantially the same subject matter				of the Interference Committee of the
as claimed in a published application when your				AIPLA” published in the AIPLA Quarterly
client files such claims (1) more than one year				Bulletin, available at
after publication and (2) in any application filed				36 37 CFR 1.291 specifies the rules for public
after the date of the publication. Therefore, your				protests. A protest filed after the date of
client should consider either copying claims from				publication of an application will not be entered into
the published application in a previously filed 35				the applications 37 CFR 1.291(a)(1). However, the
USC 111(a) or 35 USC 371 application or filing a				existence of the interference issue should still be
new application and copying the claims in the				noted by the examiner.
newly filed application. Your client should copy				37 MPEP 2315.01 first paragraph states that:
exactly the same claims as in the published				Where one of several applications of the same
application (to the extent possible based upon				inventor or assignee which contain overlapping
support in your client's application's specification) to				claims gets into an interference, the prosecution
ensure compliance with 135(b). In addition, your				of all the cases not in the interference should be
client can present additional claims modeled after				carried as far as possible, by treating as prior art
the published claims which exclude limitations for				the counts of the interference for the purpose of
which your client arguably does not have support				making provisional rejections and by insisting on
in their specification, exclude limitations for which				proper lines of division or distinction between the
your client arguably does not have an early				applications. In some instances, suspension of
priority date, and correct indefiniteness problems.				action by the Office cannot be avoided. See MPEP
This approach provides the best possible chance				§ 709.01.
for your client meeting the 135(b) bar and also				38 37 CFR 1.291(a)(2).
obtaining allowable claims that are also interfering				39 The concepts of winning and losing depend
with the target claims.				upon the goals of the parties in the interference.
Keep in mind that you are obliged to notify the				However, in this context, winning and losing refer
Office of the target application and the fact that				to the effect on a claim by claim basis of the final
you are copying claims from it, even if the target				decision or judgement in the interference. See 35
application is a PCT application in the international				USC 135(a).
stage. This is because 37 CFR 1.604(b) states				40 The pre-AIPA law provides for up to five
that you must notify the Office when you				years of interference term extension, and the
present a claim that you know "define[s] the				AIPA provides for day for day term extension.
same patentable invention claimed in a pending				See 35 USC 154.
application for all purposes except 102(e) and				41 See Eli Lilly v. Cameron, Interference No.
154(b), pursuant to 35 USC 374. Therefore, the				104,104, paper No. 18 (PTOBPAI 2001)
requirement to notify the Office when copying				(non-precedential) (adverse judgement that "is
claims from an application specified in 37 CFR				material to the patentability with respect to
1.604(b) applies to copying of claims in a PCT				pending claims in other applications under
application in the international stage.				consideration before" the Office falls within the
Moreover, if your client files a new application for				rule 56 duty not withstanding Lilly's
use as a vehicle for interference with a national				characterization of request for entry of adverse
stage or continuation of the published PCT				judgement as not an admission).

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Strategies for Preparing for a Patent Interference