Will Post-Grant Review Create Super-Interferences under the America Invents Act?

December 01, 2011

If the USPTO exercises its discretion to dismiss future interferences “without prejudice to the filing of a petition for post-grant review” under § 6(f)(3)(A) of the America Invents Act, the first-to file reform Act may create a new “super-interference” proceeding, greatly expanding the review of non-priority issues available under current interference practice.

Since an interference can be dismissed without prejudice to instituting post-grant review, the scope of post-grant review necessarily includes issues of prior invention under § 102(g). Under § 321(b), post-grant review may be based on any statutory ground relating to invalidity of the patent or any claim, including § 102(g) as extended by the Act. If an interference is dismissed without prejudice to instituting a post-grant review, an applicant should have the statutory right to raise any statutory ground of invalidity with respect to a patentee’s claims, without the restrictions imposed in current interference preliminary motions practice.

Invalidity challenges have been a driving force behind interferences, but the Board effectively limits the scope of patentability issues that are currently considered in interferences, by requiring prior approval of each patentability motion, and restricting the number of motions for judgment on issues of invalidity, or declining to consider patentability motions that do not raise “threshold” issues. The unfettered ability to raise patentability as well as priority issues in post-grant review would provide powerful incentives to pursue interferences after the effective date of the Act.

More generally, to the extent that the grounds of post-grant review include priority of invention under § 102(g), an applicant should have discretion to decide whether to attempt to provoke an interference, or initially to petition for post-grant review. This decision will be guided by the time limits imposed on initiation of post-grant review, the scope of other grounds of invalidity at issue, the different estoppel consequences of an adverse judgment, and issues related to priority, such as derivation, that are currently considered in interferences. In many cases, interferences will provide advantages to applicants seeking to challenge recently-issued patents.

As discussed in a previous post, § 3(n)(2) of the Act provides that the current interference statutes (§§ 102(g) and 135) will remain in effect when post-Act applications or patents contain specific references to pre-Act applications, regardless of whether claims of the post-Act applications or patents are actually entitled to benefit under §§ 120, 121, or 365(c). Uncodified § 6(f)(3)(A) of the Act requires the PTO to issue regulations concerning the procedures under which an interference commenced before the effective date is to proceed, including whether such interference (i) is to be dismissed without prejudice to the filing of a petition for a post-grant review; or (ii) is to proceed as if the Act had not been enacted.

The authority to dismiss an interference without prejudice to filing a petition for post-grant review raises a number of significant issues, which may be addressed by USPTO regulations.

Under § 3(n)(2), the interference statutes will continue to apply to a patent or application containing a specific reference to a pre-Act application, including continuations and divisionals. Under § 3(n)(1), the post-grant review provisions apply only to patents or applications containing at least one claim that is not entitled to a pre-Act effective filing date. Determination of whether an interference can be dismissed in favor of a post-grant proceeding may thus depend on complex issues of benefit, which frequently require evidence, including depositions, and briefing in interference motions.

Under § 321(c), a petition for a post-grant review may only be filed within 9 months of patent grant. If this provision limits the ability of the USPTO to require a petition for post-grant review by an applicant involved in an interference, it may severely restrict the option to dismiss interferences in favor of post-grant review proceedings. Unlike post-grant review, an interference may generally be provoked by presenting interfering claims up to one year after patent grant under § 135(b)(1). The declaration of an interference typically requires a suspension of prosecution of several months to define the interfering subject matter and the initial status of the partes, which could restrict or eliminate the narrow window for a post-grant petition.

The new statute provides more general authority for the USPTO to determine the manner in which post-grant review or “another matter or proceeding may proceed,” if another proceeding involving the patent is before the Office.” Section 325(d) states that “notwithstanding sections 135(a), 251, and 252, and chapter 30, the Director may provide for “the stay, transfer, consolidation, or termination of any such matter or proceeding.” Under this section, an interference could be consolidated with an existing post-grant review proceeding, but it is unclear whether § 325(d) could provide independent authority for the USPTO to substitute post-grant review for an interference more than 9 months after patent grant.

To the extent that interference motions raise only issues of priority and unpatentability based on prior art publications or patents, §325(d) might provide the USPTO with authority to maintain the interference, but require that non-priority issues be decided in an inter partes review proceeding. Since there is no specific statutory time limit for decision in an interference, priority issues could be deferred until after resolution of patentability questions, as permitted in derivations under § 135(c).

Despite these uncertainties, interferences will remain a significant part of post-grant opposition practice, in addition to post-grant review, inter partes review, and derivations.

These comments are at most speculative, until the USPTO issues regulations governing the treatment of interferences under the America Invents Act, and the courts definitively construe the uncodified interference provisions.