August 2011 Issue

Rule Review

This month’s “Rule Review” instead focuses on an important part of the Patent Code, 35 U.S.C. § 135(b), and some of the issues that it raises.1  Part (b) of the section sets forth time limits within which a patent applicant may present claims drawn to subject matter it believes it is entitled to if such claims were previously presented in a patent or application of another.  In particular, § 135(b)(1) states that “[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.”  In other words, anyone wishing to obtain a claim to the same subject matter as a claim of an issued patent must do so within one year of that patent’s issuance.

Similarly, § 135(b)(2), which addresses published applications, states that “[a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.”  At first blush, § 135(b)(2) appears to be a logical corollary to § 135(b)(1).  However, a careful reading of § 135(b)(2) reveals that its complicated construction presents a number of issues and challenges.  For example, although § 135(b)(2) specifically references applications published under § 122(b), which relates to the USPTO’s pregrant publication procedure, it is important to remember that publication of a Patent Cooperation Treaty (PCT) application that designates the United States is deemed to be a publication under § 122(b).  35 U.S.C. § 374.  Thus, the one-year period referenced in § 135(b)(2) may be tolled from the date of publication of a PCT application, which can occur before the USPTO publishes a corresponding U.S. application.

Another difficulty with § 135(b)(2) arises when a challenger becomes aware of a published application and subsequently files its own application to copy claims and provoke an interference.  Under a plain-meaning interpretation of § 135(b)(2), the challenger would need to ensure it presents the copied claims within one year of the date of publication.  However, the Board of Patent Appeals and Interferences has twice clarified that § 135(b)(2) does not bar copying claims more than one year after application publication if the copied claims are entitled to the benefit of an earlier filing date under 35 U.S.C. § 120.  See Ding v. Singer, Interference No. 105,436, Paper No. 56, pp. 8-13 (Bd. Pat. App. & Int. 2007); Ryan v. Young, Interference Nos. 105,504 and 105,505, Paper No. 116, p. 25 (Bd. Pat. App. & Int. 2008).

For those entities monitoring application publications of third parties, a plain-meaning interpretation of § 135(b)(2) might present a further challenge when such an entity becomes aware of claims it believes it is entitled to, but reasonably believes the published claims are unpatentable.  In such an instance, the entity might feel compelled to copy the published claims to preserve its rights just in case the published claims issue.  Obviously, however, such monitoring and claim copying may be very costly if done regularly.  Here, again, the Board has offered some guidance, clarifying that § 135(b)(2) bars a target claim only if the subject claim “ultimately (1) issues as published or (2) issues with no material changes.”  Ryan, Paper No. 116 at 43.

Given the timeframes set forth in § 135(b), companies should ensure they not only monitor U.S. patent grants and application publications but also monitor PCT publications.  Once the company becomes aware of subject matter in a third-party publication that it believes it is entitled to, the company should make a case-by-case determination of whether it is prudent to copy claims at that time or, if a patent application publication, simply monitor the publication as it progresses through prosecution.  However, waiting to see if the application matures into a patent having interfering claims may foreclose an opportunity to pursue an interference if the patent issues with claims identical to or materially similar to the published claims.

1 While the portions of 35 U.S.C. § 135(b) discussed here are currently in force, it is important to note that both the House and Senate have proposed to substantially revise § 135 to, among other things, remove the current provisions of § 135(b).