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Claims Filed After Critical Date To Provoke Interference Are Barred Unless They Are Not Materially Different From Claims Filed Before Critical Date

Client Alert | 1 min read | 07.19.06

In Regents of the Univ. of Calif. v. Univ. of Iowa Research Found. (No. 05-1374; July 17, 2006), the Federal Circuit affirms a decision of the Board of Patent Appeals and Interferences (“Board”) that the University of California (“California”) failed to comply with 35 U.S.C. § 135(b)(1) (which states that an applicant cannot file “[a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent . . . unless such a claim is made prior to one year from the date on which the patent was granted”). In the application involved in the interference, California had filed a set of claims within one year of the issuance of the University of Iowa's patent, which were then cancelled in light of an new claim filed after the one-year period had expired. The Board found that California failed to comply with Section 135(b)(1), as its new claim was materially different than its earlier-filed claims. On appeal, California argued that only its earlier-filed claims must meet the 135(b)(1) test. The Federal Circuit, however, affirms the Board's decision and states that, “a party confronted with a section 135(b)(1) bar” can avoid the bar if it can “show that claims filed after the critical date find support in claims filed before the critical date.”

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