Strategic Plan > Index to Action Papers > Elimination of the Interference Bar Created by Application Publications

Action:

The USPTO should delete 35 U.S.C. § 135(b)(2), which creates a bar to claims that are not copied within one year of the claims being published in a U.S. application publication or in a World Intellectual Property Organization (WIPO) publication of an International Application.

Background Information:

The American Inventors Protection Act of 1999 (AIPA) added a new provision, § 135(b)(2), that requires applicants to copy a claim within one year of the claim being published in a U.S. patent application publication or an international application publication by WIPO in any language.  This bar only applies to applications filed after the date of publication.  A publication may not include patentable claims or claims supported by an enabling disclosure in the patent application because the publication includes claims which have not been examined.  A later applicant should not be forced to copy these claims within a year of publication of the application, but should be allowed to wait until the claims are found to be patentable and are included in a granted patent.  In addition, the requirement to copy claims within one year of an international application not published in English is unfair and creates a heavy burden on applicants to translate claims of all international applications published in a language other than English.  Furthermore, this provision is difficult to administer as the bar only applies to applications filed after the date of publication.  Therefore, the bar might apply to a continuing application where it did not apply to the parent application.  To protect against future possible bars under § 135(b)(2), it is anticipated that applicants will file applications with a large number of claims, thus further draining the Office's scarce resources. 

Without revision, applicants would be required to review each application prior to issue to determine if additional claims must be presented to avoid a bar being created based on a publication that occurred after filing of the application and prior to patenting of the application.  This is because a divisional, continuation or reissue filing could be subject to a § 135(b)(2) bar based on such publications but the identical claims would not be subject to the bar if pursued via a request for continued examination.  Thus, the law today places a premium on procedure over substance from the point of view of applicants and places a large burden on the Office with little (if any) benefit.

The Office and the public have not yet been significantly impacted by the creation of § 135(b)(2) as no WIPO publications of International Applications filed after November 29, 2000, have been in existence for more than a year and less than 10,000 U.S. patent application publications are more than one year old.  The negative impacts on the system, however, will begin to increase dramatically within the next few months.

Options Considered:

Option #1:  Delete 35 U.S.C. § 135(b)(2).

Description of Option:  Introduce legislation to delete 35 U.S.C. § 135(b)(2).

·       Advantages:  By deletion of  § 135(b)(2), the workload of the Office would be reduced in the following ways:  (1) elimination of the need to administer and enforce a complex provision; (2) avoidance of future increases in the number of interferences declared; (3) elimination of the need for extensive training on this provision; and (4) elimination of the strong incentive for applicants to file applications with a greater number of claims to avoid future bars.  In addition, applicants would be relieved of the heavy burdens of translating the claims of all International Applications not published in English, the need for extensive use of continued examination filings, and the need to review publication claims in addition to patented claims. 

Option #2:

  Modify 35 U.S.C. § 135(b)(2) to exclude the requirement that the application be filed after the publication date of the application publication in order for the bar to apply, and include the requirements that (1) the International Applications must be published in English or an English language translation must be provided, and (2) an application publication must comply with 35 U.S.C. § 112, first and second paragraphs, in order for the bar to attach.

·       Advantages:  This option would greatly simplify the administration of § 135(b)(2) for the Office by eliminating the requirement that the application must be filed after the publication in order for the bar to apply.  The elimination of this requirement puts all pending applications on the same footing in that all applications, no matter when filed, have one year to make the interference claim from the publication date of the application publication.  The additional requirement that the International Application must be published in English, or provide an English language translation, eliminates the need for the public and for examiners to get a translation of the claims in order to see if the bar is applicable.  The additional requirement that the bar would only apply if the application publication complied with 35 U.S.C. § 112 would prevent claims that are not enabled, or not definite, from barring other applicants to that claimed subject matter, and would assist in limiting the number of claims originally filed in patent applications.  The § 112 requirement could also be implemented through examination policy procedures instead of seeking a legislative change (see Option #3), but it would leave the Office exposed to a court challenge on such procedures.

Option #3:

  Make no change to 35 U.S.C. § 135(b)(2), discourage the filing of more claims by reform of the Office's fee structure and require, via policy implementation, compliance with 35 U.S.C. § 112, first and second paragraphs, for application publications in order for the bar under § 135(b)(2) to apply.

·       Advantages:  Increasing the fees for excess claimsshould cause applicant to file applications containing only a reasonable number of claims.  In addition, the policy that the bar would only apply if the application publication complied with 35 U.S.C. § 112 would prevent claims that are not enabled, or not definite, from barring other applicants to that claimed subject matter, and would assist in limiting the number of claims originally filed in patent applications.

USPTO Recommended Course of Action: 

Pursue option 1.

Proof of Concept (POC):

POC is not recommended for this initiative.  This proposal has received widespread approval from the user community and was not the subject of commentary suggesting that a pilot or further study of the proposal should be done.  Further, conducting a pilot of the proposal is not viable given the need for a statutory revision in order to implement the proposal. 

Timing:

This statutory initiative is intended to be part of the second phase of legislation supporting the 21^st Century Strategic Plan or it may be introduced with any legislation submitted to implement unity of invention. 

Details:

The USPTO will consider seeking deletion of 35 U.S.C. § 135(b)(2).

Return on Investment:

Estimated benefits:  Implementing this initiative would permit the Office to not further increase its workload by administrating such a complex provision of the law.   Section 135(b)(1) will still be retained to provide some relief to patent owners from their competitors declaring interferences after one year from the issue date of the patent.  The protection provided by § 135(b)(2) to owners of application publications is flawed in that there are easy ways to avoid the application of that bar (e.g., by filing applications with many claims), and it will force applicants to file applications even earlier, which may be before their inventions are truly enabled, in order to avoid losing possible patent rights.  In turn, this could result in lower quality patent applications being filed and prosecuted.

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