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Federal Circuit Holds That Pure AIA Patents Are Not Subject To Interferences
08/01/2023On July 14, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the Patent Trial and Appeal Board (“PTAB”), holding that a patent that has only ever contained claims with an effective filing date that postdates the effective date of the America Invents Act (“AIA”) may not be subject to an interference—even if the allegedly interfering patent has a priority date prior to the AIA. SNIPR Technologies Limited v. Rockefeller University, No. 2022-1260, -- F.4th --, 2023 WL 4536369 (Fed. Cir. July 14, 2023).
Congress enacted the AIA in 2011, which transitioned the U.S. patent system from a “first-to-invent” to a “first-inventor-to-file” system for determining patent priority. “Under the old, first-to-invent system, the first person to invent had ‘priority’ to an invention and was entitled to a patent, even if a different inventor was the first to file a patent application for that invention.” However, under the AIA’s “first-inventor-to-file” rubric, “the first person to file a patent application on an invention has priority and is entitled to a patent, even when another inventor can establish an earlier invention date.”
Under the AIA, Congress eliminated “inferences” from the Patent Act, which were administrative priority determinations that the PTO and the PTAB had historically conducted under the “first-to-invent” system in order to decide “which inventor among two inventors who claim the same invention could prove an earlier invention date.” In eliminating interferences from the Patent Act, the AIA created three categories of patents and applications: (i) pure pre-AIA patents and applications, which have only ever contained claims with pre-AIA effective filing dates (i.e., before March 16, 2013) and are still subject to interferences; (ii) pure AIA patents and applications, which have only ever contained claims with post-AIA effective filing dates and are not subject to interferences; and (iii) mixed patents and applications, which contain at least one claim with a pre-AIA effective filing date and at least one claim with a post-AIA effective filing date, and are therefore subject to both the pre- and post-AIA regime.
SNIPR Technologies Limited (“SNIPR”) owns five patents relating to selectively killing bacteria using clustered regularly interspaced short palindromic repeats (“CRISPR”) gene editing. SNIPR’s patents claim priority to an application that was filed on May 3, 2016. Rockefeller University (“Rockefeller”) filed a patent application for a similar process, and the application claims priority to two applications that were filed on February 7, 2013, and February 7, 2014.
In evaluating the priority as between SNIPR and Rockefeller, the PTAB ruled there was an interference between all claims of SNIPRs patents and certain claims of Rockefeller’s application. Due to the Rockefeller application’s earlier filing date, the PTAB identified Rockefeller as having seniority over SNIPR on the related patent claims, and provided Rockefeller with an accorded benefit date of February 7, 2014. SNIPR moved to terminate the interference as inconsistent with the AIA because interferences are “unavailable to assess patents that are governed by the AIA”, and SNIPR’s patents all postdated the effective filing date of the AIA. In response, the PTAB re-declared an interference and accorded Rockefeller an earlier, pre-AIA benefit date of February 7, 2013, i.e., prior to the effective date of the AIA, in accordance with its U.S. Provisional Application filing date.
SNIPR again moved to terminate the interference, “arguing that the AIA eliminated interferences for AIA patents such as the SNIPR Patents.” The PTAB again denied SNIPR’s motion, reasoning that “pre-AIA patent claims (such as Rockefeller’s) must ‘comply with [pre-AIA] 35 U.S.C. § 102(g),’ which requires an interference” ruling between SNIPRs patents and Rockefeller’s application. Consequently, because SNIPR did not file a priority statement claiming an earlier invention date than Rockefeller’s earliest accorded benefit date, the PTAB ruled that Rockefeller had senior party status over SNIPR with respect to the claims.
On appeal, the CAFC considered “whether the [PTAB] has the authority to cancel SNIPR’s pure AIA claims through an interference for lack of invention priority under [the] pre-AIA” patentability scheme, and agreed with SNIPR, holding that the plain language of the AIA and the statutory purpose and history of the AIA establish that pure AIA patents may not be subject to an interference.
Regarding the plain language, the CAFC held that AIA 35 U.S.C. § 3(n) “makes clear” that “only pure pre-AIA and mixed patents may be part of an interference.” According to the CAFC, the statute explicitly states that the first-inventor-to-file rule “shall apply” to any patents that have ever contained a claim with an effective filing date on or after March 16, 2013. The CAFC emphasized that “shall” is “both mandatory and comprehensive” and “imposes a nondiscretionary duty.”
Regarding the statutory purpose and history, the CAFC emphasized the goal of the AIA was to “transition the U.S. patent system to a first-inventor-to-file system and eliminate the specter of interferences going forward for new applications.” Therefore, the CAFC rejected Rockefeller’s argument that SNIPR’s patents should be subject to interference based on the language “any unexpired patent” in [pre-AIA] 35 U.S.C. § 135(a) (“Whenever an application … would interfere with any pending application, or with any unexpired patent, an interference may be declared….”). Specifically, the CAFC reasoned that because AIA 35 U.S.C. § 3(n)(1) calls for the new versions of §§ 135 and 102 to apply to pure AIA patents, and AIA § 3(n)(1)–(2) requires that pre-AIA versions of §§ 135 and 102 apply to pure pre-AIA and mixed patents, the language “any unexpired patent” cannot refer to pure AIA patents.
The CAFC rejected Rockefeller’s remaining argument that, without interference, the Patent Office could be forced to issue two patents for the same subject matter under the pre-AIA and AIA systems. According to the CFAC, “this scenario is a remote one,” the PTO director “condede[d] that she is not aware of this scenario having occurred,” and “[g]iven the unlikelihood of this obscure situation, we are not persuaded that Congress believed interferences must be permitted between pure AIA patents and pre-AIA applications.” The CFAC further noted that this hypothetical issue could be adequately addressed through other means, such as inter partes review, post-grant review, or ex parte reexamination.
As it was undisputed that SNIPR’s patents had an effective filing date after March 16, 2013—which makes them pure AIA patents—the CAFC concluded that the PTAB and Director erred in subjecting SNIPR’s patents to interference.
