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ARTICLE · 18 SEPTEMBER 2024

Federal Circuit Clarifies Test For Exception To Increasingly Rare Interference Proceedings

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Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially...

United StatesIntellectual Property
Don Geiger
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Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims, such that an exception to the one-year time-bar on interference proceedings applies, and (2) whether Bates' pre-critical claim language materially differed from his post-critical claim language, which dictates whether his claims were time-barred.

I. Background

Interference Proceedings and the AIA

Interference proceedings resolve priority where two patent applications (or a patent application and an issued patent) are drawn to the same invention.1 The USPTO may declare an interference where it believes that such an overlap in patentable subject matter exists. Pre-AIA 35 U.S.C. § 135(a). Because the AIA switched the US patent system from a first-to-invent to a first-to-file regime, priority disputes involving

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