35 U.S.C. 135 (pre‑AIA): Interferences

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

Current Pre-AIA AIA Redline

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35 U.S.C. 135 (pre‑AIA)   Interferences.

[Editor Note: Except as noted below,*not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 135 for the law otherwise applicable.]

  • (a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.
  • (b)
    • (1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
    • (2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) may be made in 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.
  • (c) Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, shall be in writing and a true copy thereof filed in the Patent and Trademark Office before the termination of the interference as between the said parties to the agreement or understanding. If any party filing the same so requests, the copy shall be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to file the copy of such agreement or understanding shall render permanently unenforceable such agreement or understanding and any patent of such parties involved in the interference or any patent subsequently issued on any application of such parties so involved. The Director may, however, on a showing of good cause for failure to file within the time prescribed, permit the filing of the agreement or understanding during the six-month period subsequent to the termination of the interference as between the parties to the agreement or understanding.

    The Director shall give notice to the parties or their attorneys of record, a reasonable time prior to said termination, of the filing requirement of this section. If the Director gives such notice at a later time, irrespective of the right to file such agreement or understanding within the six-month period on a showing of good cause, the parties may file such agreement or understanding within sixty days of the receipt of such notice.

    Any discretionary action of the Director under this subsection shall be reviewable under section 10 of the Administrative Procedure Act.

  • (d) Parties to a patent interference, within such time as may be specified by the Director by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9 to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining patentability of the invention involved in the interference.

(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76 Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; subsection (a) amended Nov. 8, 1984, Public Law 98-622, sec. 202, 98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 98 Stat. 3385; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11) and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.

*NOTE: The provisions of 35 U.S.C. 135 (pre‑AIA), as in effect on March 15, 2013, shall apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA also apply (see35 U.S.C. 100 (note) ), if such application or patent contains or contained at any time—

(A) a claim to an invention having an effective filing date as defined in section 100(i), that occurs before March 16, 2013; or

(B) a specific reference under section 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.