USPTO Not Required to Continue Interference Declared on an Untimely Amendment

Author:Mr Lawrence Cullen
Profession:McDermott Will & Emery

The U.S. Court of Appeals for the Federal Circuit has held

that the U.S. Patent and Trademark Office (USPTO) Board of Appeals has the

authority to terminate an interference without resolving issues of

patentability or priority. Berman v. Housey, Case No. 01-1311 (Fed. Cir.

May 29, 2002).

Berman filed an amendment in a pending application,

requesting that an interference be declared with a pending patent application

of Housey (later issued as a patent, Housey III). The examiner determined that

a claim of the Berman application interfered with claims of Housey III and with

claims of Housey I and II (two earlier issued patents). Soon after the

interference was declared, Housey filed a preliminary motion to terminate the

interference under 35 U.S.C. ß135(b), asserting that Berman did not file an

interfering claim within one year of the issuance of Housey I or II. Berman

opposed the motion, claiming that one of his originally filed claims was

directed to substantially the same subject matter as the count. Berman also

filed a motion for judgment that all claims of Housey I-III were invalid based

on prior art.

The Board held that the originally filed claim of Berman was not

directed to the same or substantially the subject matter as claimed in Housey I

and II, that Berman did not present an interfering claim within one year of the

issuance of Housey I or II and that under ß135(b), Berman was now barred from

doing so. The Board terminated the interference, entered judgment for Housey

and dismissed Berman's patentability motion as moot.

On appeal, Berman argued that the Board erred in failing to

consider Berman's patentability motion, urging that the Board was required to resolve

all issues of patentability and priority. Berman relied on a line of prior

Federal Circuit decisions, including Perkins v. Kwon, and on 35 U.S.C. ß6 that states that the Board "shall

determine priority and patentability of invention in interferences declared

under ß135(a)."

The Federal Circuit observed that a ß135(b) determination is

a threshold issue that should be addressed by the Board before proceeding on

the merits of an interference, and held that once the Board determines that

there is a ß135(b)

bar, the Board may refuse to address other issues that have been raised (e.g.,

priority or...

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