This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA, 35 U.S.C. § 135, and specifically whether the Patent Trial and Appeal Board (Board) has the authority to cancel SNIPR’s pure AIA claims through an interference for lack of invention priority under pre-AIA § 102(g).
In 2011, Congress passed the AIA, which transformed the U.S. patent system from a first-to-invent system to a first-to-file system. Under a first-to-invent system, the first person to come up with an invention has “priority” and is entitled to a patent even if there was an earlier filed patent application from a different inventor covering the same invention. Under the pre-AIA regime, an inventor could challenge the priority of an earlier filed application in an administrative proceeding called an “interference” in order to demonstrate an earlier invention date. Under a first-to-file system, the first person to file a patent application has “priority” regardless of the invention date. As part of switching from a first-to-invent system to a first-to-file system, Congress removed “interference” proceedings from the AIA because it was no longer necessary to determine who invented first. The text of the AIA makes clear that all patents with a filing date prior to March 16, 2013 would continue to be governed by the pre-AIA legislation while any patent with a filing date on or after March 13, 2016 would be governed by the AIA – as well as the limited circumstance of a mixed-AIA patent, which is subject to the pre-AIA for claims with a priority date prior to March 16, 2013, and is subject to the AIA for claims with a priority date on or after March 16, 2013.
With the statutory background established, enter SNIPR and Rockefeller, two companies that own patents/applications covering similar techniques for CRISPR gene editing. At issue in this dispute were five SNIPR patents that claimed priority to a PCT application filed on May 3, 2016 (pure AIA), as well as a Rockefeller patent application with an effective filing date of February 7, 2013 (pre-AIA).
During the prosecution of the Rockefeller application, the Board declared an interference between claims 20–33 of the Rockefeller applications and all claims of the SNIPR patents to determine which party was the first to invent. Due to the earlier filing date of the Rockefeller application and the failure of SNIPR to file a priority statement asserting an invention date earlier than the Rockefeller application’s earliest priority date, the Board determined that Rockefeller had senior party status and cancelled all claims of the SNIPR patents.
SNIPR twice moved to terminate the interference proceedings, but the Board denied each request reasoning that “pre-AIA patent claims (such as Rockefeller’s) must comply with [pre-AIA] 35 U.S.C. § 102(g)[.]” SNIPR then appealed to the Federal Circuit.
Whether interference proceedings apply to pure AIA patents that are being challenged based on a pre-AIA patent?
No, patents with a priority date on or after March 16, 2013 are not subject to interference proceedings regardless of whether the interfering patent has a filing date before March 16, 2013.
SNIPR argued that its inclusion in an interference proceeding was improper because its patents, having priority dates after March 16, 2013, were governed solely by the AIA, which eliminated interference proceedings. Rockefeller argued that interference proceedings under pre-AIA § 135 authorized the Director to declare an interference between an application that would interfere with “any unexpired patent,” including the SNIPR patents.
The Federal Circuit rejected Rockefeller’s arguments in light of the statutory interpretation of both the AIA and pre-AIA. First, they interpreted the text of the AIA, noting that § 3(n) specifically enumerates that the AIA applies to patents filed on or after March 16, 2013 and the pre-AIA regime applies to patents filed prior to March 16, 2013. Additionally, the Federal Circuit found no hints in the text of the AIA that Congress intended to subject pure AIA patents to the cost and complexities of interference proceedings. As a consequence, the AIA bars pure AIA patents from being subject to an interference.
Rockefeller also argued that a pure-AIA patent should be allowed in an interference proceeding based on language in pre-AIA § 135(a) which authorized the Director to declare an interference between any interfering application (in this case, Rockefeller’s) and “any unexpired patent” (in this case, SNIPR’s). Rockefeller argued that the language “any unexpired patents” applied to pure-AIA patents, which would allow for an interference including SNIPR’s pure-AIA patents. The Federal Circuit again rejected these arguments, providing that interpreting “any expired patent” to include pure-AIA patents would defeat a central purpose of the AIA (moving to a first-to-file system and avoiding the cost and inefficiencies of interference proceedings) and would render superfluous the statutory scheme delineating between pure-, pre-, and mixed-AIA patents.