Comment: Why First-To-File Should Not Mean The End of Interferences

1987Journal of the Patent and Trademark Office Society, volume 69 (1987), pages 711-16

A good many of the arguments in favor of going from first-to-invent to first-to-file proceed on the implicit assumption that changing from a first-to-invent system to a first-to-file system will mean the end of interferences. I do not think that that should be so, for four reasons.

I. Derivation Cases

First, we need a system for dealing with charges of derivation and outright theft of invention. In his article espousing abolition of the interference system,1 Donald R. Dunner, Esq. acknowledges that "inventors need to have protection against derivation and outright theft of their invention[s],"2 but he argues that derivation cases are a tiny fraction of all interferences and that "a system as complex, costly and time consuming as even the current interference system is hardly necessary to deal with so minute a problem."3 Actually, based on my personal experience, I would estimate that 10 or 15 percent of all interferences involve serious derivation questions. Moreover, the current interference system handles those questions very well -- much better than any of the likely alternatives, such as providing that such issues be decided by way of a civil action in a United States District Court a la 35 USC 291.4 Finally, Mr. Dunner's argument seems to overlook the fact that interferences are handled by Examiners-in-Chief who, when they are not working on interferences and title proceedings under 42 USC 2182 and 42 USC 2457, handle routine ex parte appeals. Thus, there is no separate, costly tribunal that is kept alive solely to decide interferences. In my estimation, even if we go to a first-to-file system and even if we abolish interferences in the other categories of cases (discussed below) in which I think they should be retained, at a minimum interferences should be retained for derivation cases.

II. Inventorship Disputes Among Former Colleagues

The second reason that I think that interferences should be retained even if we go to a first-to-file system is to handle hostile-former-colleagues cases. The derivation and theft-of-invention cases discussed in the previous section involve two non-overlapping parties, one or both of which allegedly stole the invention from the other party. A distinct variation on that theme is illustrated by the following example, which is loosely based on Linkow v. Linkow and Edelman, 517 F.2d 1370, 186 USPQ 223 (CCPA 1975). A and B were colleagues at the time the invention was made. A has a joint application prepared and sends it to B for signature. B immediately files an application under 37 CFR 1.47(a)5 claiming the invention as the joint invention of A and B. An interference is declared naming A as the senior party. B has the burden of proving that the invention was a joint conception, and the issue is decided by the board -- quickly, inexpensively (relative to court litigation), and accurately.

Obviously, disputes of this type will not disappear in a first-to-file world, and I submit that interferences are the optimum way to resolve them.

III. Interleaving Priorities

The third reason that I think that interferences should be retained even if we go to a first-to-file system is to handle interleaving priority situations. Consider the following example, in which party A and party B are unrelated applicants and in which time goes down the page. Consider further that the two parties are in interference, that there are two counts (i.e., that the PTO has decided that each party is claiming the same two 37 CFR 1.601(n) "separate patentable invention[s]"), and that there are two separate disputes. Party A claims that it is entitled to the benefit of its first foreign priority date for count 1. Party B denies that but concedes that party A is entitled to the benefit of its second foreign priority date, while party B claims that it is entitled to the benefit of its first foreign priority date for count 1.

Party A Party B
First foreign priority  
  First foreign priority
Second foreign priority  
  Second foreign priority
  First U.S. filing date (parent application)
First U.S. filing date (parent application)  
  Second U.S. filing date (CIP application)
Second U.S. filing date (CIP application)  

Party A denies that but concedes that party B is entitled to the benefit of its second foreign priority date. That is the first dispute. The second dispute concerns count 2. Party B claims that it is entitled to the benefit of its first U.S. filing date for count 2. Party A denies that but concedes that party B has support for its claims corresponding to count 2 in its second U.S. application, while party A claims that it is entitled to the benefit of its first U.S. filing date for count 2. Party B denies that but concedes that party A has support for its claims corresponding to count 2 in its second U.S. application.

This hypothetical situation (which is by no means unusual) is handled very nicely by "the current interference system."6 How would it be handled with a first-to-file system?

Well, if we maintain our current secrecy provisions, the situation is insoluble without an interference system. The PTO cannot rationally decide which application to issue and cite as a reference against the other. Moreover, the proposal to publish U.S. applications eighteen months after the earliest claimed priority date provides only a partial and generally unsatisfactory solution. If that proposal is adopted, the PTO could cite each applicant's published application as a reference against the other applicant and enter appropriate rejections, after which each applicant could separately appeal those rejections, arguing that it could antedate the reference under 35 USC 119 or 120, as appropriate. However, with separate, independent appeals, the applicants could obtain separate, independent, and mutually inconsistent results. Moreover, both the examiner and the board would not have the benefit of the arguments of an opposing party--namely, the owner of the cited reference.

Based on my own practice, I estimate that 25 to 40 percent of all interferences involve interleaving priorities.7 Our present interference system handles such situations very well -- and fairly quickly and at reasonable expense, considering the complexity of the issues. No other satisfactory system for handling such situations is apparent (or has been suggested by the advocates of abolishing interferences). Thus, once again I suggest that, even if we go to a first-to-file system, we should retain interferences for handling this type of situation.

IV. Improvidently Issued Patents

The fourth reason that I think that interferences should be retained even if we go to a first-to-file system is to handle improvidently issued, interfering patents. Consider the following example, in which party A is an applicant, party B is a patentee, and time goes down the page:

Party A Party B
Foreign priority  
  U.S. filing date
U.S. filing date  
  Issue date
Rejection date  

Consider further that the two parties are claiming the same 37 CFR 1.601(n) patentable invention -- indeed, that the applicant has literally copied one or more of the patentee's claims. Under "the current interference system," the applicant and the patentee will be placed in interference, and if the applicant is entitled to the benefit of its foreign priority date, it will win and the patentee's claims grouped with the count or counts will be cancelled from the patentee's patent pursuant to 35 USC 135(a).

This hypothetical situation (which is extremely common and which will continue to be extremely common in a first-to-file word) is also handled very nicely by "the current interference system." How would it be handled without an interference system?

Well, the PTO could allow the applicant to antedate the patent under 35 USC 119 (indeed, it could not prevent the applicant from doing so), then issue a second patent containing claims identical to those in the first patent. One of the two patentees could then initiate a civil action in a District Court under 35 USC 2918 to cancel the other patent. Conceivably, a third party faced with conflicting demands from the two parties could secure a determination of which was the valid patent by combining 35 USC 291 with an interpleader motion under FRCP 22. In either case, a district judge would be called upon to decide whether or not party A was entitled to the benefit of its foreign priority date and which claims in each party's patent defined the same patentable invention. Would that procedure be quicker than "the current interference system"? Less expensive? More likely to produce an accurate result? Don't make me laugh!

V. Ancillary Benefits

An ancillary, but important, benefit of "the current interference system" is that, once an interference has been declared, each party's case is subjected to the refiner's fire. If a party concludes that it is likely to lose on dates, it has an incentive to conduct a more extensive validity search than the examiner did in order to ensure that, if it can't have a patent on the invention in issue, at least neither will its opponent (which is often an arch-competitor). Similarly, the specification and claims are often probed for 35 USC 112 deficiencies far more rigorously than occurs in ex parte practice. Thus, patents that emerge or re-emerge from interferences are typically far better, more defensible patents than patents that have not had the benefit of inter partes scrutiny.9

VI. Conclusions

In conclusion, even if the United States goes to a first-to-file system, we should not abolish our interference system. The number of interferences would no doubt decline under a first-to-file system, but there will still be a significant need for interferences even in a first-to-file world.10

First published in the Journal of the Patent and Trademark Office Society, volume 69 (1987), pages 711-16.

*.Partner in Oblon, Fisher, Spivak, McClelland & Maier, P.C.; Arlington, Virginia. Copyright 1987, Charles L. Gholz


Endnotes


[1].Dunner, First to File: Should Our Interference System Be Abolished?, 68 JPTOS 561 (1986).

[2].68 JPTOS at 565.

[3].Id.

[4].In my opinion, the examiners-in-chief to whom interferences are assigned under 37 CFR 1.610 and who make up a majority of most panels at final hearing have a specialized expertise that allows those issues to be decided more quickly, less expensively, and (most importantly) more accurately than would be the case if they were decided by United States District Courts.

[5].37 CFR 1.47(a) provides in relevant part that, "If a joint inventor refuses to join in an application for patent . . . , the application may be made by the other inventor on behalf of himself or herself and the omitted inventor."

[6].Lest the reader think that interleaving priorities are unusual, I would like to point out that I have seen U.S. applications claiming the benefit of a dozen different priority dates. If two such applications get into interference, sorting out who is entitled to which priority date for which count becomes an extremely exacting and time consuming process.

[7].Note that the "guesstimates" in this paper are not intended to add up to 100%. Many interferences involve more than one of these issues.

[8].35 USC 291 currently reads as follows:

The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 of this title shall apply to actions brought under this section.

[9].Of course it will be argued that not all inventions are worth that kind of scrutiny -- either in the abstract or to the party owning the application or patent involved. The answer to that objection is simple. If the invention is important to neither party, neither party will spend any money on the interference. If the invention is important to one party but not to the other party, the party to whom the invention is not important will abandon the contest, sell its case to the other party, or the like. Only when the invention is important to both (or all) parties will the interference be vigorously litigated.

[10].In fact, if we are going to harmonize with the Japanese and Europeans on this, it seems to me that they should adopt an interference system for the four categories of cases discussed in this paper. They are both faced with the same kinds of problems, and it is my impression that neither system handles those problems well.