DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
RIN 0651-AB29
Standard for Declaring a Patent Interference
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice and request for comments.
SUMMARY: The Director of the United States Patent and Trademark Office
has discretion to declare an interference involving a patent
application. The current standard requires a two-way patentability
analysis for the Director to be of the opinion that an interference-in-
fact exists. In view of public commentary suggesting that, at least in
some cases, a one-way patentability analysis should be sufficient,
USPTO provides reasons for the current standard and solicits comments
on the propriety of that standard.
DATE: Submit comments on or before January 31, 2001.
ADDRESSES: Send all comments:
1. Electronically to ``Interference.Rules@uspto.gov'', Subject:
``Interference-in-fact'';
2. By mail to Director of the United States Patent and Trademark
Office, BOX INTERFERENCE, Washington, D.C. 20231, ATTN: ``Interference-
in-Fact''; or
3. By facsimile to 703-305-0942, ATTN: ``Interference-in-fact''.
FOR FURTHER INFORMATION CONTACT: Fred E. McKelvey or Richard Torczon at
703-308-9797.
SUPPLEMENTARY INFORMATION: The patent statute provides that
``[w]henever an application is made for a patent which, in the opinion
of the Director, would interfere with any pending application, or with
any unexpired patent, an interference may be declared * * *'' 35 U.S.C.
135(a). ``It is * * * [the Director] who is to judge (be of opinion)
whether an application will interfere with a pending one * * *'' Ewing
v. United States ex rel. Fowler Car Co., 244 U.S. 1, 11 (1917). The
duty imposed upon the Director to declare an interference involves the
exercise of judgment upon the facts presented and cannot be controlled
by mandamus. United States ex rel. International Money Machine Co. v.
Newton, 47 App. D.C. 449, 450 (1918). A party does not have a right to
have the Director declare an interference. United States ex rel. Troy
Laundry Machinery Co. v. Robertson, 6 F.2d 714, 715 (D.C. Cir. 1925).
Likewise, a third-party has no right to intervene in the prosecution of
a particular patent application to prevent issuance of a patent. Animal
Legal Defense Fund v. Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1685
(Fed. Cir. 1991).
An interference is declared when two parties are claiming the
``same patentable invention.'' 37 CFR 1.601(i). An ``interference-in-
fact,'' a term of art in patent law, exists when at least one claim of
a first party and at least one claim of a second party define the same
patentable invention. 37 CFR 1.601(j). The phrase ``same patentable
invention'' is defined as follows at 37 CFR 1.601(n) (emphasis in
original):
Invention ``A'' is the same patentable invention as an invention
``B'' when invention ``A'' is the same as (35 U.S.C. 102) or is
obvious (35 U.S.C. 103) in view of invention ``B'' assuming
invention ``B'' is prior art with respect to invention ``A''.
Invention ``A'' is a separate patentable invention with respect to
invention ``B'' when invention ``A'' is new (35 U.S.C. 102) and non-
obvious (35 U.S.C. 103) in view of invention ``B'' assuming
invention ``B'' is prior art with respect to invention ``A''.
Recent precedent of the Trial Section of the Interference Division
of the Board of Patent Appeals and Interferences confirms that
resolution of whether an interference-in-fact exists involves a two-way
patentability analysis. Winter v. Fujita, 53 USPQ2d 1234, 1243 (BPAI
1999), reh'g denied, 53 USPQ2d 1478 (BPAI 2000):
The claimed invention of Party A is presumed to be prior art
vis-a-vis Party B and vice versa. The claimed invention of Party A
must anticipate or render obvious the claimed invention of Party B
and the claimed invention of Party B must anticipate or render
obvious the claimed invention of Party A. When the two-way analysis
is applied, then regardless of who ultimately prevails on the issue
of priority, * * * [USPTO] assures itself that it will not issue two
patents to the same patentable invention.
The Winter v. Fujita rationale is consistent with examples set out
in the supplemental information accompanying the final rule, Patent
Interference Proceedings, published at 49 FR 48416 on December 12,
1984. In this respect, attention is directed to Examples 3, 4 and 5 of
that notice, 49 FR at 48420:
Example 3: Application E contains patentable claims 1 (engine),
2 (6-cylinder engine), and 3 (engine with a platinum piston).
Application F contains patentable claims 11 (engine) and 12 (8-
cylinder engine). Claims 1 and 2 of application E and claims 11 and
12 of application F define the same patentable invention. Claim 3 of
application E defines a separate patentable invention from claims 1
and 2 of application E and claims 11 and 12 of application F. If an
interference is declared, there would be one count (engine). Claims
1 and 2 of application E and claims 11 and 12 of application F would
be designated to correspond to the count. Claim 3 of application E
would not be designated to correspond to the count.
Example 4: Application G contains patentable claims 1 (engine),
2 (6-cylinder engine), and 3 (engine with a platinum piston).
Application H contains patentable claims 11 (engine) and 15 (engine
with a platinum piston). Claims 1 and 2 of application G and claim
11 of application H define the same patentable invention. Claim 3 of
application G and claim 15 of application H define a separate
patentable invention from claims 1 and 2 of application G and claim
11 of application H. If an interference is declared, there would be
two counts: Count 1 (engine) and Count 2 (engine with a platinum
piston). Claims 1 and 2 of application G and claim 11 of application
H would be designated to correspond to Count 1. Claim 3 of
application G and claim 15 of application H would be designated to
correspond to Count 2.
Example 5: Application J contains patentable claims 1 (engine),
2 (combination of an engine and a carburetor) and 3 (combination of
an engine, a carburetor, and a catalytic converter). Application K
contains patentable claims 31 (engine), 32 (combination of an engine
and a carburetor), and 33 (combination of an engine, a carburetor,
and an air filter). The engine, combination of an engine and
carburetor, and combination of an engine, carburetor, and air filter
define the same patentable invention. The combination of an engine,
carburetor, and catalytic converter define a separate patentable
invention from engine. If an interference is declared, there would
be one count (engine). Claims 1 and 2 of application J and claims
31, 32, and 33 of application K would be designated to correspond to
the count. Claim 3 of application J would not be designated as
corresponding to the count.
If the facts of Example 3 are changed so that Application E contained
only claim 3 (engine with a platinum piston), no interference would be
declared because there is no interference-in-fact between claim 3 of
Application E and claims 1-2 of Application F. The engine or 8-cylinder
engine of Application F would not anticipate or render obvious an
engine with a platinum piston of Application E. Likewise, and based on
similar rationale, if the facts of Example 5 are changed so that
Application J contained only claim 3 (combination of an engine, a
carburetor, and a catalytic converter), no interference would be
declared because there is no interference-in-fact between claim 3 of
Application J and claims 31-33 of Application K.
At recent public events, it has been suggested that there may be a
need to expand the situations where an interference should be declared
or maintained. Any decision to expand the nature of interference
proceedings will have a resource consequence for USPTO and for
applicants and patentees involved in interferences. Approximately one-
quarter of the resources of the Board of Patent Appeals and
Interferences are used to resolve interferences, notwithstanding the
fact that there are many more appeals than interferences. USPTO has
received many reports that interferences involve considerable costs for
applicants and patentees. Additionally, there is no desire on the part
of USPTO, and no authority under the law, to turn interference
proceedings under 35 U.S.C. 135(a) into pre-grant oppositions or post-
grant cancellations. Accordingly, USPTO is reluctant, at this time, to
expand the circumstances under which an interference might be declared
or maintained absent a compelling reason.
This notice provides interested parties with an opportunity to
comment and make out a case that the nature of interferences should be
expanded beyond the current practice. If a one-way patentability
analysis is sufficient to establish an interference-in-fact, would it
be possible to have an interference with two counts as set out in
Example 4, reproduced above? How would having an interference between
claim 1 of application G and claim 15 of application H of Example 4
square with the holding of Nitz v. Ehrenreich, 537 F.2d 539, 543, 190
USPQ 413, 416-17 (CCPA 1976)? If a one-way patentability analysis is
sufficient, what would it take to establish that there is no
interference-in-fact in a given case?
Comment Format
Comments should be submitted in electronic form if possible, either
via the Internet or on a 3 1/4-inch diskette. Comments submitted in
electronic form should be submitted as ASCII text. Special characters,
proprietary formats, and encryption should not be used.
Authority: 35 U.S.C. 2(b)(2)(A), 3(a)(2), 135(a).
December 14, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office