An applicant’s prosecution strategy does not bar claims provoking an interference that are otherwise permissible under § 135(b)(1). Here, for example, claims copied from another patent before the critical date in § 135(b)(1) but then canceled and only added-back five years later were found to be permissible for invoking an interference. “Application of § 135(b)(1) does not turn on the patent applicant’s prosecution decisions or require diligence in prosecution.”
Background / Facts: The application on appeal here from the PTO as part of an interference proceeding included substantially copied claims from the opposing party’s patents before the critical “one year” from issuance date in § 135(b)(1), but the applicant later canceled those claims to avoid an interference. It was not until five years after the critical date that the claims were added back to the application and an interference was sought.
Issue(s): Whether § 135(b)(1) allows relation back to a pre-critical date claim when a patent applicant intentionally delays declaration of an interference, assuming the differences between the pre- and post-critical date claims are immaterial.
Holding(s): Yes. “We hold that the Board erred by construing § 135(b)(1) to bar [the applicant’s] post-critical date claims even assuming [the applicant’s] prosecution strategy delayed declaration of the interference. Application of § 135(b)(1) does not turn on the patent applicant’s prosecution decisions or require diligence in prosecution.”