The USPTO Said WHAT??
In SNIPR Techs. Ltd. v. Rockefeller Univ.,[1] the U.S. Court of Appeals for the Federal Circuit (CAFC) recently held that “pure AIA patents and applications” – those that have only ever contained claims with post-AIA effective filing dates (i.e., on or after March 16, 2013) – can never be involved in a pre-AIA “interference,” the Patent Office procedure used to determine “priority of invention” when the United States still had a first-to-invent patent system. This result should surprise no one; shockingly, however, it appears to have come as a surprise to the U.S. Patent and Trademark Office itself.
The facts and procedural aspects of SNIPR Techs are straightforward. SNIPR owns a family of patents directed to methods of selectively killing bacteria in a mixed set of bacteria using clustered regularly interspaced short palindromic repeats (CRISPR) gene editing. The effective filing date of the patents is May 3, 2016, more than three years after the effective date of the AIA, that is, March 16, 2013. The SNIPR Patents were examined and issued under the Patent Act (Title 35 U.S.C.) as amended by the America Invents Act.
For its part, Rockefeller owns a patent application directed to the same invention as the SNIPR patents. The Rockefeller Application claims priority to a provisional application filed before the effective date of the AIA. The Rockefeller Application was thus examined under the pre-AIA version of the Patent Act.
Before the AIA took effect, the United States had a first-to-invent system; after the AIA, the United States joined the rest of the world, at least for the most part, with a first-inventor-to-file patent system in which the date of invention does not come into play in determining who, as between competing applicants, is entitled to a patent, with minor exceptions. The first-inventor-to-file system has now been in force for more than ten years.
The U.S. Patent and Trademark Office, however, does not seem to understand this basic chronology. Faced with the pre-AIA Rockefeller Application and the post-AIA SNIPR Patents, the Patent Trial and Appeal Board (formerly, i.e., in the pre-AIA world, known as the Board of Patent Appeals and Interferences) declared an interference to determine which party was the first to invent the claimed subject matter. It did so even though the answer to that question was irrelevant to the examination and issuance of SNIPR’s patents. In other words, the mere fact that Rockefeller had an earlier date of invention could not, without more, have any bearing whatsoever on validity of SNIPR’s “pure AIA patents.”
SNIPR essentially boycotted the interference proceeding, twice unsuccessfully moving to terminate as erroneously declared and contrary to the clear provisions of the AIA, as well as refusing to file any priority statement asserting an invention date earlier than Rockefeller’s earliest accorded benefit date. As a result, the Board entered judgment against SNIPR and cancelled all claims of the SNIPR patents, without any statutory basis for doing so.
The question on appeal in SNIPR Techs was simple: “whether pure AIA patents may be part of an interference.” The answer is equally simple: no. Elaborating slightly, the Patent Trial and Appeal Board does not have the authority to cancel pure AIA claims through an interference for lack of invention priority under pre-AIA 35 U.S.C. § 102(g). The CAFC summarized it succinctly: “SNIPR’s pure AIA patents were examined and issued under the AIA’s first-inventor-to-file patentability requirements; they cannot then be cancelled under the different, pre-AIA invention priority requirements. As such, the Director erred by declaring an interference involving the SNIPR Patents.”
The Court of Appeals pointed out that Congress repealed the provisions of the Patent Act relating to interferences with respect to pure AIA patents and applications and created one limited exception for “mixed patents” – those having some pre-AIA and other post-AIA claims – which was not the case with the SNIPR Patents. As the U.S. Supreme Court has explained, “Where Congress explicitly enumerates certain exceptions to a general prohibition, additional exceptions are not to be implied, in the absence of evidence of a contrary legislative intent.” The CAFC pointed out that there is “no hint of congressional intent” that pure AIA first-inventor-to-file patents and applications should continue to be subject to interferences with pre-AIA patents.
The Director acknowledged that while under its interpretation of the statute, pure AIA patents could be involved in interferences until March 16, 2033, this possibility was never mentioned in any Patent Office notice or statement issued before or since enactment of the AIA. Crucially, such a possibility would be flatly contrary to common wisdom and practice in the patent law field since 2013.
More specifically, as the CAFC pointed out in the legislative history of the AIA, “Congress was dead set on eradicating interferences for new applications, criticizing them as lengthy, expensive, and requiring companies to maintain extensive documentation and systems to prove the date of their invention.” Before Congress enacted the AIA, U.S. patent practitioners regularly educated their clients about the need for creating and maintaining “inventor’s notebooks” and related records of inventive activities, and the need for legally sufficient corroboration of whatever information those notebooks and records contained, all for the primary purpose of proving priority of invention should the need arise. At least as to inventive activities occurring after March 16, 2013, it has been generally understood and accepted that such inventor’s notebooks and related records were unnecessary at least as far as priority of invention under U.S. patent law is concerned. While there may have been other good and sufficient reasons for companies to continue creating and maintaining extensive documentation and recordkeeping systems regarding their employees’ inventive activities, proving priority of invention was no longer the main, or even any, reason for doing so. Many technology companies did, in fact, modify and simplify their documentation and recordkeeping systems after the effective date of the AIA. Those companies and their patent lawyers alike should be shocked to learn that the Director of the Patent Office argued to the CAFC in SNIPR Techs that such documentation and records might be necessary for pure AIA patents and applications for yet another ten years from today. Making that argument even more surprising is the fact that the Director is not a career bureaucrat with no substantial patent law experience, but instead was a veteran patent lawyer and litigator for a decade and a half before, and almost another decade after, Congress enacted the AIA.
Whatever the genesis of the Director’s position may have been, that position is now dead. As the CAFC succinctly held, “the AIA bars pure AIA patents from being subject to an interference.” End of story.
