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Federal Circuit Upholds Cancellation from Interference Provoked Two Years After Publication

On July 11, 2012, the US Court of Appeals for the Federal Circuit affirmed a ruling by the USPTO Board of Patent Appeals and Interferences (“Board”) cancelling claim 1 of US Patent 7,434,426 (“Patent ‘426”), held by Robert Loughlin and John Loughlin (together, “Loughlin”), because the claim interfered with US Patent Application 11/671,404 (“Application ‘404”), held by Renny Tse-Haw Ling and Chun-Shen Wu (together, “Ling”).  Both Application ‘404 and Patent ‘426 claim a “multiple function lock.”

Patent ‘426, which issued on October 14, 2008, claims priority to a provisional application filed on May 16, 2003, which was published on November 18, 2004.

Ling filed Application ‘404 on February 5, 2007, claiming priority to an earlier application filed on January 16, 2004.  On February 21, 2007, Ling added a new claim 31 to Application ‘404, which copied claim 1 of Patent ‘426, in order to provoke an interference.  Loughlin requested the Board to deny Ling’s interference, asserting that Ling was barred by 35 U.S.C. 135(b)(2) from provoking an interference.  This statute allows the USPTO Director to declare an interference of “[a] claim which is the same as . . . a claim of an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.”

The Board denied Loughlin’s request, stating that the bar imposed by § 135(b)(2) does not apply in cases where an interfering application is filed before the interfered-with application is published.  The Board found that, because Ling was granted priority benefit to an earlier application, Ling was therefore filed before Loughlin’s Application was published.  The Bard, therefore, allowed the interference to proceed, finding that Lou

Loughlin appealed this decision to the Federal Circuit.  Loughlin argued that § 135(b)(2) should be interpreted as a “staleness” provision which requires party who wishes to provoke an interference to do so in a timely manner.  In this case, Ling waited more than two years after Loughlin’s application was published to add the interfering claim.  The Federal Circuit, however, rejected this argument, finding that the plain language of § 135(b)(2), together with 35 U.S.C. § 120 (which allows applicants to antedate prior art by claiming the benefit of an earlier filing date), only sets up a 1 year deadline for provoking an interference when the interfering application was filed after the interfered application was published.

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