In SNIPR TECHNOLOGIES LIMITED V. ROCKEFELLER UNIVERSITY, No. 2022-1260 (July 14, 2023) (Chen,* Wallach, and Hughes), a panel of the Court addressed the issue of which patents and patent applications can be the subject of an interference.
SNIPR is the owner of five patents directed to methods of selectively killing bacteria in a mixed set of bacteria using CRISPR gene editing. All of the SNIPR patents claimed priority to a PCT application filed on May 3, 2016. Accordingly, all of the applications from which the SNIPR patents issued were deemed “pure AIA” applications (i.e., applications that only ever contained claims with an effective filing date after March 16, 2023) and so examined and issued under the AIA’s first-inventor-to-file patentability requirements.
Rockefeller University had a pending application that was also directed to methods of selectively killing bacteria. Rockefeller’s application claimed priority to a PCT application filed on February 4, 2014, and a U.S. provisional application filed on February 7, 2013. Based on the filing date of Rockefeller’s provisional application, Rockefeller’s pending application was deemed a “pure pre-AIA” application (i.e., an application that has only ever contained claims with effective filing dates before March 16, 2013).
The Board declared an interference between certain claims of Rockefeller’s pending application and all of the claims of the SNIPR patents. The Board initially identified Rockefeller as the senior party based on the February 2014 filing of the Rockefeller PCT application. SNIPR moved to terminate the interference on the grounds that interferences are unavailable to assess patents governed by the AIA. The Board subsequently redeclared the interference, but this time gave Rockefeller benefit of the pre-AIA filing date of the Rockefeller provisional application.
SNIPR again moved to terminate the interference on the grounds that the AIA eliminated interferences for pure AIA patents and patent applications. The Board again denied SNIPR’s motion using the rationale that Rockefeller’s pending application, as a pure pre-AIA application, had to comply with the pre-AIA version of 35 U.S.C. § 102(g) (which required an interference under pre-AIA 35 U.S.C. § 135 between the claims of Rockefeller’s pending application and the claims of the SNIPR patents).
SNIPR did not file a priority statement alleging an earlier date of invention than the filing date of the Rockefeller provisional application. The Board therefore entered judgment against SNIPR and cancelled all of the claims of all of the SNIPR patents. SNIPR then appealed.
In an opinion by Judge Chen, the panel reversed the Board’s decision and held that first-inventor-to-file patents and patent applications exclusively governed by the AIA, i.e., pure AIA patents and applications, cannot be subject to an interference.
The panel rejected the argument from Rockefeller and the Director of the U.S. Patent & Trademark Office, who had intervened, that AIA § 3(n) required Rockefeller’s pending application, as a pure pre-AIA application, to be evaluated under pre-AIA 35 U.S.C. § 102(g) (which required an interference under pre-AIA 35 U.S.C. § 135(a) to determine priority of invention). In particular, the panel rejected the argument the language of pre-AIA 35 U.S.C. § 135(a) authorizing an interference between an application and “any unexpired patent” gave the Director the authority to declare an interference that included a pure AIA patent like the SNIPR patents.
The panel first reviewed the statutory language of AIA § 3(n) and concluded that only pure pre-AIA and “mixed” patents and patent applications (i.e., patents and applications that contain (or contained at any time) at least one claim with a pre-AIA effective filing date and at least one claim with a post-AIA effective filing date) may be part of an interference. Finding “no hint” of congressional intent to expose pure AIA patents and patent applications to interference, the panel reasoned that AIA § 3(n)(1) and § 3(n)(2) created two separate worlds for interferences: pure pre-AIA and mixed patents and patent applications, which are subject to interferences; and pure AIA patents and patent applications which are not subject to interferences. The panel therefore concluded that the AIA bars pure AIA patents from being subject to an interference.
The panel then turned to the language of pre-AIA 35 U.S.C. § 135(a) and concluded that the language “any unexpired patent” did not include pure AIA patents. Noting that the words of a statute must be read in context and with a view to their place in the overall statutory scheme, the panel concluded that such a reading would be inconsistent with the plain language of AIA § 3(n) (which the panel had concluded did not allow pure AIA patents to be part of interferences). The panel further noted that interpreting “any unexpired patent” in the manner proposed by Rockefeller and the Director would undermine “a central purpose” of the AIA, which was to do away with the first-inventor-to-file system and interferences for future applications. Under the interpretation proposed by Rockefeller and the Director, pure AIA patents could conceivably be dragged into interferences until the year 2034. The panel also noted that the interpretation proposed by Rockefeller and the Director would render superfluous the limited exception of AIA § 3(n)(2), thereby providing another reason to support the conclusion that the phrase “any unexpired patent” in 35 U.S.C. § 135(a) did not include pure AIA patents.
The panel therefore reversed. Because the panel reversed the Board's decision, the claims of all five SNIPR patents were reinstated. And, because the SNIPR patents are ineligible to be included in an interference with the Rockefeller pending application, the PTO will have to issue the Rockefeller pending application without further amendment. Interestingly, this means that there will be multiple patents owned by different parties that claim the same subject matter. While this situation may be resolvable in the future through an AIA trial proceeding or in a district court litigation challenging the validity of the SNIPR patents or the Rockefeller patent, it nevertheless creates a significant potential issue for any third party looking to enter the field.