Reform Doing Away with Interference Proceedings & First to Invent

One of the proposals in the pending patent reform legislation is a change from first to invent to a first to file system. I think it is safe to say that the United States is the only country that has a first to invent system, whereby an inventor who claims they are the first to invent but second to file a patent application could prevail and receive a patent over the first to file a patent application. This has historically been viewed as a benefit to independent inventors and small businesses, and in theory it is. The trouble is that an interference proceeding, the proceeding that would take place to determine who is entitled to receive the patent between the alleged first to invent and the first to file, costs over $650,000 (see An Interference: What, When and How Much Does It Cost? – page 9 at bottom). With that cost not many independent inventors or small businesses are going to be able to foot that bill. Nevertheless, I thought it might be good to take a look at this thing called an interference proceeding, which if patent reform is successful would become a relic of US patent law.  By understanding interferences inventors and small businesses can decide for themselves whether they think they are missing out on anything should patent reform do away with interference proceedings.

Occasionally two or more applications are filed by different inventors claiming substantially the same patentable invention. The patent can only be granted to one of them, and a proceeding known as an “interference” is instituted by the Office to determine who is the first inventor and entitled to the patent. Less than one percent of the applications filed become involved in an interference proceeding, and in fiscal year 2007 only 7 interference proceedings resulted in the patent going to the second to file, who was determined to be the first inventor.

Typically an interference is a proceeding is instituted to determine priority of invention between a pending application and one or more pending applications. It is also possible for there to be an interference between a pending patent application and one or more unexpired patents. Jurisdiction to decide an interference is granted by 35 U.S.C. § 135(a), which states:

Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Commissioner shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.

It is important to note that the Patent and Trademark Office does not have jurisdiction to conduct interferences which involve only patents, i.e., which do not involve at least one pending application. Jurisdiction over those proceedings is conferred to the Federal courts by 35 U.S.C. § 291.

Where two or more applications are found to be claiming the same patentable invention, they may be put in interference, dependent on the status of the respective applications and the difference between their filing dates. The Patent Office will not normally declare an interference between pending applications if there is a difference of more than 3 months in the effective filing dates of the oldest and the next oldest application or in the case of inventions of a simple character.

Before proposing an interference, the examiner must be certain that each of the applications in question do in fact contain a claim to the same patentable invention and that each of those claims is clearly readable upon the disclosure of that party and allowable in its application.  If the applications each contain at least one claim drawn to the same patentable invention, the examiner proceeds to propose the interference.

In the event the examiner does not declare an interference, one may be provoked. First, an interference may be provoked between pending applications by request from an applicant who has become aware of another application which may be claiming the same invention.  Second, an interference between a pending application and a patent is normally provoked by the applicant.  An applicant seeking to provoke an interference with a patent is required to submit evidence which demonstrates that the applicant is prima facie entitled to a judgment relative to the patentee. Evidence must be submitted when the effective filing date of the application is more than 3 months after the effective filing date of the patent. The evidence may relate to patentability and need not be restricted to priority, but if the evidence shows that the claims of the application are not patentable, the claims in the application will be rejected. The applicant can file a request for reexamination of the patent, if applicable.

Once the interference has begun, the terms conception of the invention and reduction to practice are encountered in connection with priority questions. Conception of the invention consists of the complete performance of the mental part of the inventive activity. The conception of an invention is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice. The date of this conception is the date when the inventor’s idea has crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art. For there to be conception of invention the inventors definite and permanent idea must include every feature or limitation of the claimed invention. 

Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his complete thought expressed in such clear terms as to enable those skilled in the art to make the invention. However, there is no final single formula that must be followed in proving corroboration. Rather, the sufficiency of corroborative evidence is determined by the rule of reason.  Accordingly, it is necessary to make a reasonable analysis of all of the pertinent evidence to determine whether the inventor’s testimony is credible. It is also important too keep in mind the purpose for requiring corroborative evidence, which is to prevent fraud, by providing independent confirmation of the inventor’s testimony.

The priority question presented by an interference proceeding is determined by the Board of Patent Appeals and Interferences, which is a board of three administrative patent judges. The Board will decide who is entitled to the patent based on the evidence submitted. 35 USC § 135(a) also grants the Board discretion to determine questions of patentability during the proceeding. After resolution by the Board the losing party may appeal to the Court of Appeals for the Federal Circuit or file a civil action against the winning party in the appropriate United States district court.

Each party to an interference proceeding must submit evidence of facts proving when the invention was made. In view of the necessity of proving the various facts and circumstances concerning the making of the invention during an interference, inventors must be able to produce evidence to demonstrate when they conceived of the invention and when it was reduced to practice. If no evidence is submitted a party is restricted to the date of filing the application as his/her earliest date of invention.

Reduction to practice refers to the actual construction of the invention in physical form. The issue of reduction to practice is a question of law.  Proof of actual reduction to practice requires a showing that the invention actually worked for its intended purpose. Below are examples of reduction to practice:

1. In the case of a machine, reduction to practice requires the actual building of the machine.
2. In the case of an article or composition reduction to practice requires the actual making of the article or composition.
3. In the case of a process reduction to practice requires the actual carrying out of the steps of the process.

Notwithstanding, the filing of a regular patent application completely disclosing the invention is treated as equivalent to reduction to practice; this is frequently referred to as constructive reduction to practice. Constructive reduction to practice is a term of art that refers to the preparation of a patent application. If a the description of the invention in a patent application is sufficiently definite enough to allow one skilled in the art to make the invention the invention will be considered to be constructively reduced to practice, even if no working model or prototype exists.

In order to win an interference proceeding it may not be enough to merely produce evidence of date of conception and date of reduction to practice. It may also be necessary for the inventor to demonstrate that he or she was diligent, which is a term of art. Diligence is only an issue with respect to invention when the first to conceive is the second to reduce to practice. In this case, in order for the first to conceive (i.e., the first inventor) to have priority it is necessary to show diligence prior to the conception of the inventor who is second to conceive and first to reduce to practice.

Public policy favors the early disclosure of inventions. This underlies the requirement for reasonable diligence in reducing an invention to practice, not unlike the requirement that, to avoid a holding of suppression or concealment, there be no unreasonable delay in filing an application once there has been a reduction to practice.

As already pointed out corroborating evidence is needed.  The testimony of an inventor is not enough.  It is not enough with respect to any issue.  There are cases where independent inventors tried to demonstrate diligence and could only demonstrate that they took time off from work.  That demonstrates time was taken off from work, not that the invention was worked on while not working your day job.  This lack of corroborating evidence can be associated both with conception and diligence.  With respect to conception it occurs because there is no inventors notebook that has been signed, dated and witnessed to demonstrate when key aspects crystallized for the inventor.  In terms of diligence, any break is too much usually, even a break to take a vacation can sink you.  So many inventors fail to have the specific information necessary to prevail.

For those interested in my opinions of the first to file changes of the patent reform legislation see:

• Much Ado About Nothing Over First to File
• Kappos Talks Patent Reform at Inventors Conference
• Analyzing Patent Reform and First to File Provisions
• Patent Law Fun & Lessons: What Dilbert Teaches About Inventing
  

For a contrary opinion see:

• Making the Case Against First to File (by Ron Katznelson)

Like any time there is proposed change, it will lead to uncertainty.  I personally feel there is no benefit to first to invent for small businesses and independent inventors.  I think we should focus on the language of the proposed 35 USC 102 and make sure it continues to provide a grace period that is meaningful.  I also would LOVE to see provisional patent applications change to be pending for 24 months, which is something that USPTO Director David Kappos favors.  That will hopefully be added to the bill by way of amendment.  Focusing on these and other issues that will really matter to independent inventors and small businesses is the best way to make sure your voices are heard, considered and any reform takes into account what is best for the inventor community.