SNIPR Technologies Ltd. v. Rockefeller University (USPTO as Intervenor)
Docket No. 2022-1260 (https://cafc.uscourts.gov/opinions-orders/22-1260.OPINION.7-14-2023_2157777.pdf)
CHEN, WALLACH, HUGHES
July 14, 2023
Brief Summary: Board declaration of an interference between SNIPR’s AIA first inventor-to-file patents and Rockefeller’s first-to-invent patent application reversed as “pure AIA patents may not be part of an interference”. Summary: This appeal relates to “an interference between five first inventor-to-file patents owned by SNIPR Technologies Limited (SNIPR) and a first-to-invent patent application assigned to Rockefeller University (Rockefeller) that resulted in the cancellation of all claims of SNIPR’s patents.” SNIPR argued in this appeal that “the Board never should have subjected its first-inventor-to-file patents to a vestige of the old first-to-invent system: an invention date contest against Rockefeller’s first-to-invent application through an interference.” The FC panel agreed with SNIPR, explaining that “the text, purpose, and history of the AIA make clear that first-inventor-to-file patents exclusively governed by the AIA cannot be subject to an interference”, and reversed the USPTO Board decision. The FC panel explained that “Congress chose not to apply the AIA’s amendments retroactively to existing patents and pending applications” and “enacted timing provisions specifying that the AIA’s new first-to file regime ‘shall apply’ to patents and applications that ‘contain[] or contained at any time . . . a claim . . . that has an effective filing date . . . on or after [March 16, 2013]’” (“for patents and applications with an effective filing date before March 16, 2013, the pre-AIA first-to-invent system continues to apply” (AIA section 3(n)(1); Biogen, FC 2015). The exception to this rule is that “pre-AIA Interference Provisions ‘shall apply to each claim’ of any AIA first-inventor-to-file patent or application ‘if such application or patent contains or contained at any time’ a claim with an effective filing date before March 16, 2013” (“mixed patents and applications”). Here, SNIPR’s patents all have effective filing dates after March 16, 2013 and are therefore “pure AIA patents”. Rockefeller’s priority date (to a provisional application) is February 7, 2013 and is a “pure pre-AIA application”. The FC panel therefore reversed the Board holding “that pure AIA patents may not be part of an interference” (“We do not interpret the language ‘any unexpired patent’ in pre-AIA § 135 to include pure AIA patents…we are not persuaded that Congress believed interferences must be permitted between pure AIA patents and pre-AIA applications up through 2034.”)