One of the wonderful (as in, it makes one wonder) and frustrating (which needs no explanation) aspects of patent law is that just when you think a question is settled it either isn't or the conventional interpretation is called into question.  The Federal Circuit was created to minimize such instances, and while its track record in this regard has been a little spotty since the Supreme Court began reversing its decisions over a decade ago, the Court got it right in SNIPR Technologies Ltd. v. Rockefeller University.

The case arose over an interference declared between patents having an effective filing date after the date the Leahy-Smith America Invents Act (AIA) came into force (March 16, 2013) and an application that had its effective filing date prior to March 16th.  The interference involved SNIPR's related U.S. Patent Nos. 10,463,049; 10,506,812; 10,561,148; 10,524,477; and 10,582,712, which claimed priority to PCT Application No. PCT/EP2016/059803, filed May 3, 2016 (after March 16th and thus prosecuted under the first-inventor-to-file provisions of the AIA) and Rockefeller's U.S. Application No. 15/159,929, which claimed priority to PCT Application No. PCT/US2014/015252, filed on February 7, 2014, and U.S. Provisional Application 61/761,971, filed February 7, 2013 (prior to March 16th and filed and prosecuted under the first-to-invent provisions of the 1952 Patent Act).  The technology at issue were methods of selectively killing bacteria in a mixed set of bacteria by gene editing performed using clustered regularly interspaced short palindromic repeats (CRISPR) methodology.

The opinion sets forth extensively the motivation for the change from the first-to-invent to the first-inventor-to-file provisions regimes as recorded in the legislative history, including that "using a patent's filing date to determine priority among competing inventors is objective and simple, whereas an invention date determination 'is often uncertain, and, when disputed, typically requires corroborating evidence as part of an adjudication'"; that resolving inventorship questions required "a lengthy, complex and costly administrative proceeding (called an 'interference proceeding')" that "can take years to complete . . . , cost hundreds of thousands of dollars, and require extensive discovery"; and that "because it is always possible that an applicant could be involved in an interference proceeding, companies must maintain extensive recording and document retention systems in case they are later required to prove the date they invented the claimed invention."  In addition, the panel appreciated the benefits of harmonizing U.S. patent law with patent regimes abroad (which universally have "first to invent" priority standards).

The opinion also recited the "significant changes to the statutory scheme" occasioned by the change.  But Congress did not apply them retroactively (a decision responsible in part for the issue before the court in this case).  The opinion set out the three categories of patents and applications created by the AIA and their relationship to interference practice:

• Pure pre-AIA patents and applications: patents and applications that have only ever contained claims with pre-AIA effective filing dates (i.e., before March 16, 2013) are subject to the patentability requirements and Interference Provisions in the pre-AIA versions of 35 U.S.C. §§ 102, 103, 135, and 291.  AIA § 3(n)(1).

• Pure AIA patents and applications: patents and applications that have only ever contained claims with post-AIA effective filing dates (i.e., on or after March 16, 2013) are subject to the patentability requirements and derivation proceedings in the AIA versions of 35 U.S.C. §§ 102, 103, 135, and 291.  AIA § 3(n)(1).

• Mixed patents and applications: patents and applications that contain (or contained at any time) at least one claim with a pre-AIA effective filing date and at least one claim with a post-AIA effective filing date are subject to the patentability requirements in the AIA versions of 35 U.S.C. §§ 102–103 but are also subject to the pre-AIA Interference Provisions.  See AIA § 3(n)(1)–(2).

Below, the Patent Trial and Appeal Board granted priority to the Rockefeller application because SNIPR did not file a priority statement that antedated Rockefeller's earliest accorded priority date (February 7, 2014), after denying two SNIPR motions to dismiss the interference because none of their claims were filed prior to the March 16, 2013 date and thus were not subject to an interference proceeding.  This appeal followed.

The Federal Circuit reversed, in an opinion by Judge Chen joined by Judges Wallach and Hughes.  The basis for the PTAB's decision below was language in pre-AIA 35 U.S.C. § 135(a) that the Director was authorized to declare an interference between any application and "any unexpired patent"; accordingly, the PTAB decided that an interference to determine priority of invention was available to Rockefeller's application and the Director was authorized to declare the interference with the SNIPR patents.  The Federal Circuit interpreted the AIA, and specifically Section 3(n), according to the plain meaning of the statutory language, that language in context with the AIA, and the intent of Congress (to eliminate interferences, as that intent was effected by the statute).  In the panel's view, "AIA § 3(n) makes clear that only pure pre-AIA and mixed patents may be part of an interference" using that plain meaning.  The statutory language includes that the first-inventor-to-file regime, "'shall apply' to any  patents that have ever contained a claim with an effective filing date on or after March 16, 2013."  This language was significant as interpreted by the court because "[t]he word "'shall' is 'both mandatory and comprehensive' and 'generally imposes a nondiscretionary duty,'" citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018).  The opinion interprets AIA § 3(n)(2) to establish "one limited exception" for "mixed patents" (that does not apply to the SNIPR patents at issue) which for the Federal Circuit is "strong evidence that Congress did not wish to further open the interference door to pure AIA patents and applications."  Under such circumstances the opinion states that "additional exceptions are not to be implied, in the absence of evidence of a contrary legislative intent," citing United States v. Smith, 499 U.S. 160, 167 (1991).  The panel found "no hint of congressional intent to expose pure AIA first-inventor-to-file patents and applications to interferences" and "[t]o the contrary, the purpose and history behind the AIA reinforce our understanding  of the text" that "Congress was dead set on eradicating interferences for new applications, criticizing them as lengthy, expensive, and requiring companies to maintain extensive documentation and systems to prove the date of their invention."

With regard to the Director's reliance on the "any expired patent" language in pre-AIA § 135 the Federal Circuit opined that their task is "to construe statutes, not provisions," citing King v. Burwell, 576 U.S. 473, 486 (2015).  In the context of the rest of the AIA and express recitations of Congressional intent, the opinion states it was "clear that the language 'any unexpired patent' cannot refer to pure AIA patents" because such a reading "would be inconsistent with the plain language of AIA § 3(n), which does not allow for pure AIA patents to be part of interferences, and the AIA amendments repealing interferences and the priority of invention requirement for pure AIA patents."  The opinion notes that such an interpretation would "defeat a central purpose of the AIA," i.e., "to transition the U.S. patent system to a first-inventor-to-file system and eliminate the specter of interferences going forward for new applications."  The panel also asserts that judicial interpretation of specific provisions in the AIA, such as AIA § 3(n) should prevail over the "general" language in pre-AIA § 135, citing Bulova Watch Co. v. United States, 365 U.S. 753, 758 (1961), and that interpreting the AIA as the Director and Rockefeller urge "would render superfluous Congress's limited exception in AIA § 3(n)(2)."

As for the remaining arguments asserted by the Director and Rockefeller (such as the possibility of patents being granted to different inventive entities for the same invention), the Federal Circuit posits that inter partes review, post-grant review, and ex parte reexamination provide alternative and adequate remedies under the AIA, and that the temporal logistics, that pure pre-AIA applications will always be prior art to pure AIA patents, make this scenario unlikely to impossible.

For completeness and as an illustration of how the USPTO can discern potential complications in how patents are applied for, examined, and adjudicated, the opinion sets forth this possible scenario:

1) the AIA patent must have been filed on or after March 16, 2013, see AIA § 3(n)(1);

2) the subject matter disclosed in the AIA patent must have been previously disclosed by the inventor of the AIA patent, see 35 U.S.C. § 102(b)(2)(B);

3) the previous disclosure must have been made less than one year before the AIA patent was filed so that the previous disclosure cannot be considered prior art, see 35 U.S.C. § 102(b)(1);

4) the pre-AIA application being considered as prior art must be a U.S. patent, published application, or published PCT application, see 35 U.S.C. § 102(a)(2);

5) the pre-AIA application being considered as prior art must have an effective filing date before March 16, 2013, see AIA § 3(n)(1);

6) the pre-AIA application must have been filed between the disclosure of the AIA invention and the filing of the AIA application or patent, see 35 U.S.C.§ 102(b)(2)(b); and

7) the pre-AIA application and the AIA patent must claim the same invention.

The panel considered this to be a "remote possibility" and an "obscure situation" that the Director admitted had not arisen.

The Federal Circuit then made short work of the case before it, holding that the SNIPR patents were not subject to an interference proceeding under its (proper) interpretation of the AIA, but that (as set forth in a footnote) "[w]hether [Rockefeller's] published application anticipates any of SNIPR's claims was never adjudicated during the interference.  Likewise, the Board never considered whether the Rockefeller Application satisfies the written description and enablement requirements for the claims Rockefeller amended to correspond to the SNIPR Patents [and] [t]hese issues remain disputed between the parties," giving Rockefeller some possibility of recourse in its challenge to SNIPR's patents.

The on-going multiple interferences over priority of invention to CRISPR technology (between four parties involved in six interferences over seven years (and counting) provides a counterpoint to the simple resolution to this case (for good or ill, depending on your patent proclivities).  But to the extent the PTAB believed that interferences should be available to determine inventorship disputes under the AIA the Federal Circuit's decision has closed the door once and for all on this possibility, even as the number of applications filed under the first-to-invent regime inexorably reduces to zero.

SNIPR Technologies Ltd. v. Rockefeller University (Fed. Cir. 2023)
Panel: Circuit Judges Chen, Wallach, and Hughes
Opinion by Circuit Judge Chen