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Post-AIA patents aren’t immune to interference proceedings

June / July 2022 IP Newsletter

When the America Invents Act (AIA) changed the U.S. patent system from a “first to invent” to “first inventor to file for a patent” system, it created some confusion. For example, questions arose about the applicability of interference proceedings to patent applications filed after the “first to file” provision took effect on March 16, 2013. Now, in SNIPR Tech. Ltd. v. The Rockefeller University, the Patent Trial and Appeal Board (PTAB) has attempted to provide some clarity.

Patentee cries foul

The issue arose after the U.S. Patent and Trademark Office declared an interference — that is, a dispute over which party first invented an invention claimed by multiple parties — between several patents owned by SNIPR Technologies Limited and The Rockefeller University. The patents all cover a method of killing or modifying bacteria using the CRISPR gene-editing technology.

Once an interference is declared, the PTAB determines which inventor has “priority” and therefore is entitled to the patent. Rockefeller’s patent application listed a priority date that fell before March 16, 2013 (pre-AIA), and the SNIPR patents had a priority date after that day (post-AIA). SNIPR sought to terminate the interference proceeding, arguing that Congress eliminated such proceedings for post-AIA patents. Because all its patents were filed post-AIA, SNIPR claimed, the interference declaration was contrary to the law.

Patentee strikes out

As noted, the AIA eliminated the requirement that an inventor be the first to make an invention it wishes to patent. In turn, it also eliminated interference proceedings for determining who first invented a claimed invention.

The board, however, pointed to a timing provision in the AIA that specified that, for interfering patents, the “first to invent” standard would continue to apply for pre-AIA patents. In the PTAB’s view, the provision demonstrated Congress’s intent to allow interferences under circumstances after the enactment of the AIA, contrary to SNIPR’s position.

According to the PTAB, Congress could have ended all interferences at the implementation of the AIA. If it had, different parties could both have been issued patents for the same invention even when one party has an effective filing date before March 16, 2013. But, according to the PTAB, Congress did not do so.

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