Interference Statute Does Not Require Diligence For Re-Presenting Claims

In In re: Commonwealth Scientific & Industrial Research Organisation, the Federal Circuit held that pre-AIA 35 USC §135(b)(1) does not embody a diligence requirement, such that interfering claims presented more than 5 years after originally presented claims were abandoned were not time-barred by the statute. Although the decision was non-precedential, because it reversed a decision of the Patent Trial and Appeal Board on an important issue in interference proceedings, it seems worth noting.

The Statutory Bar Of 35 USC § 135(b)(1)

This case turned on the interpretation of pre-AIA 35 USC §135(b)(1), which places a time limit on presenting claims that "interfere" with the claims of a granted patent:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

(Pre-AIA 35 USC §135(b)(2) has a parallel provision for claims of published U.S. patent applications.)

The CCPA and Federal Circuit have held that a claim presented after the critical date can relate back to a claim presented before the critical date as long as the later claim is directed to the same or substantially the same subject matter as the earlier-presented claim. But is the statute still satisfied if the claim is presented years after the first claim is canceled?

The Interference At Issue

The interference at issue was declared between Carnegie Institution Of Washington's U.S. Patent No. 6,506,559 and CSIRO's U.S. Application No. 11/364,183. The '559 Patent was issued on January 14, 2003, making January 14, 2004 the critical date under §135(b)(1).

The '183 application was filed in 2006 as a continuation of U.S. Application No. 10/755,328, which was filed January 13, 2004 (one day before the critical date) with claims copied from the '559 Patent. CSIRO eventually abandoned the '328 application. On August 10, 2009—more than five years after the critical date—CSIRO added claims to the '183 application that were substantially similar to claims previously presented in the '328 application (and to claims of the '559 Patent).

The Board found that CSIRO could not relate the post-critical date claims filed in the '183 application back to the pre-critical date claims presented in the '328 application, finding that CSIRO's lack of diligence in prosecuting those claims and effectively delaying the declaration...