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Issue 14 | April 9, 2002
New Unique Statutory Bar


A unique statutory bar created by the American Inventors Protection Act of 1999 ("AIPA") makes it critical to monitor the claims in published utility and plant patent applications for "the same or substantially the same subject matter." Failing to monitor the claims in the published applications may result in the later applicant missing the opportunity to claim certain subject matter and/or to provoke an interference proceeding.

March 15, 2002, marked the first anniversary of the publication of United States patent applications in accordance with the provisions of the AIPA. In addition to providing for the publication of U.S. patent applications, the AIPA created a new statutory bar, which was reflected in the division of 35 U.S.C. § 135(b) into two subsections.

Title 35 U.S.C. § 135(b)(1), which corresponds to the earlier §135(b), creates a one year statutory bar for claiming the same or substantially the same subject matter as a claim of an issued patent. Title 35 U.S.C. §135(b)(2) was added by the AIPA and reads as follows:

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) of this title 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.
The statutory bar created by §135(b)(2) adds yet another level of complexity to the task of accurately and timely identifying commonly claimed subject matter. Some points for consideration regarding the provisions of 35 U.S.C. §135(b)(2) include the following:
  1. The complexities of identifying commonly claimed subject matter for purposes of 35 U.S.C. §135(b)(1) (re: issued patents) are likely to be present for purposes of §135(b)(2) (re: published applications) because §135(b)(2) repeats the statutory language "the same or substantially the same subject matter." This language was recently interpreted by the Court of Appeals for the Federal Circuit as meaning that the copied claim cannot differ in a "material limitation." See In re Berger, 61 U.S.P.Q.2d 1523 (Fed. Cir. 2002). The Berger decision reflects the complex web of statutes, rules and case law regarding the issue of whether parties are claiming "the same or substantially the same subject matter." Although §§135(b)(1) and (2) are ordinarily considered in the context of "copying claims" or "provoking interferences," the statutory bars can form an independent basis for rejecting claims during ex parte prosecution without an applicant deliberately "copying" a published or issued claim (by happenstance, the applicant may present a claim that is directed to "the same or substantially the same subject matter" as a published or issued claim).

  2. Section 135(b)(2) refers to a claim "made in an application filed after the application is published." Therefore, §135(b)(2) appears to create a bar only in an application filed after the publication of "the application" and does not create a statutory bar in an application that was pending before publication of "the application." Unfortunately, the apparent clarity of the statute is blurred by information on the USPTO web page (see "Eighteen Month Publication," paragraph "CAD"), which refers to "the effective filing date of a claim" rather than the effective filing date of the application in which the claim appears.

  3. The USPTO web page (see "Eighteen Month Publication," paragraph "CAD") states that "The published application could be a U.S. patent application or an international application designating the United States." Many wonder whether a statutory bar will be created by a claim published in a foreign language.

  4. Unlike the patent claims encompassed by § 135(b)(1), published application claims encompassed by § 135(b)(2) have not been examined on the merits at the time of publication. Thus, the applicant must weigh the wisdom of copying the published claim to "play it safe," even though the claim that is ultimately allowed may be substantially narrower, against the likelihood of having to amend the copied claim during its examination and becoming ensnared by prosecution history that could limit the scope of all the applicant's claims. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 56 USPQ2d 1865 (Fed. Cir. 2000)(en banc) (cert. granted).
These issues and many other issues will likely become increasingly significant with the growing number of published applications and the increasing likelihood of subsequent applicants receiving rejections under 35 U.S.C. §135(b)(2). Published U.S. applications are posted every Thursday on the USPTO web page.

To discuss this topic further, please contact the author, Oliver R. Ashe, Jr., at Greenblum & Bernstein, P.L.C.. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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