1. Home
  2. |Insights
  3. |Claims Filed After Critical Date To Provoke Interference Are Barred Unless They Are Not Materially Different From Claims Filed Before Critical Date

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.”

Insights

Client Alert | 15 min read | 08.20.25

The New EU “Pharma Package”: Interplay with the Critical Medicines Act and other shortage initiatives

In this eighth alert in our weekly series on the EU Pharma Package, we continue our overview of initiatives with respect to security of supply and shortage prevention and mitigation. Our last alert looked at how the Pharma Package seeks to address these issues. However, the Pharma Package does not exist in isolation, and in this alert we will discuss the interplay between its measures and those contained in other important EU initiatives such as the proposed Critical Medicines Act (CMA), and the Medicinal Countermeasures Strategy and the EU Stockpiling Strategy....