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

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.”