[Federal Register Volume 65, Number 245 (Wednesday, December 20, 2000)]
[Notices]
[Pages 79809-79810]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-32374]


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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.

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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 ``[email protected]'', 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

[[Page 79810]]

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).

    Dated: December 14, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-32374 Filed 12-19-00; 8:45 am]
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