by Dennis Crouch
The key benefit of the first-to-file patent regime, introduced by the Leahy-Smith America Invents Act (AIA), is the clarity that it provides. The filing date is an understandable, immutable, and reasonable priority claim marker. This is in contrast to the invention “date”, which requires evidence of the inventor’s mental state as shown by corroboratory evidence; spread across time from conception to invention completion accomplished at reduction to practice. Pre-AIA invention priority contests were decided through a process known as Interference Proceedings—mini trials before the Board (then known as the Board of Patent Appeals and Interferences or BPAI).
The transition from first-to-invent to first-to-file has involved a number of quirks, the latest is found in SNIPR Technologies Ltd. v. Rockefeller University, — F.4th — (Fed. Cir. July 14, 2023). The case focuses on situations where one party has a Pre-AIA filing date and the other was Post-AIA.
Both parties claim patent rights to certain methods of using CRISPR tools to edit bacterial genes for the purpose of creating antibiotic resistance. The idea then is that those “good” bacteria will not be impacted by the use of antibiotics to kill “bad” bacteria growing in the same pot.
After SNIPR’s patents issued, Rockefeller amended its pending claims to match those of the SNIPR patents for the purpose of prompting an interference. The PTO took the bait, declared an interference, and invalidated the SNIPR patents. On appeal though, the Federal Circuit has reversed — holding that the SNIPR patents are post-AIA patens and therefore should not have been subjected to an interference proceeding.
Rockefeller’s application claims priority to a provisional application filed on February 7, 2013 (before the March 2013 AIA date). The SNIPR patents claim priority back to a May 2016 filing. In interference lingo, Rockefeller is the “senior party” because of its earlier filing date and SNIPR was unable to provide an earlier date of conception.
On appeal, the Federal Circuit concluded this whole process was wrong and no longer permitted. In particular, the PTAB erred in subjecting SNIPR’s AIA patents to an interference proceeding. Only pre-AIA patents, not pure post-AIA patents like SNIPR’s, can be subjected to such a proceeding. The court reached this conclusion based upon its analysis of the text, purpose, and history of the AIA, concluding that first-to-file patents are exclusively governed by the new priority provisions found in the AIA and therefore cannot be subject to an interference. Under the AIA, we no longer question which party is the first inventor, but rather only ask if there is some prior art that renders the claimed invention obvious or anticipated.
The result then is that SNIPR’s patents have not been cancelled, and the PTO will also need to issue the Rockefeller patent. Some folks see this as a major metaphysical risk—that the existence of two patents covering the same invention could lead to the singularity. While having double patents is probably not the best outcome, industry will work through this possibility of blocking rights as it has many times in the past. The Federal Circuit considered this issue and noted that the Rockefeller filings could be raised in a variety of other ways—such as an AIA-trial proceeding, a process to challenge the validity of a patent—to challenge the SNIPR patents. Although there is a theoretical scenario where a pre-AIA application would not qualify as post-AIA prior art, that scenario is highly unlikely and remote. While a remote risk exists, the Court ultimately found it did not justify overriding Congress’ intent in the AIA statute to rid the system of interference proceedings and focus on filing date.