Sec. 135 Repose

  • BASICS: A statute of repose. “(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted. (2) 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 Sec. 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.” 35 U.S.C. § 135(b) (pre-AIA). Whether the application was filed after the publication, depends on the effective filing date of the application under Sec. 120. Loughlin (Fed. Cir. 07/11/12).
  • Applicable to Non-FITF Patents And Some FITF Patents: Applies to non-FITF patents and also applies to FITF patents if they also have or had a claim with, or reference an application which had, an effective filing date before March 15, 2013. See L. 112–29, § 3(n), Sept. 16, 2011, 125 Stat. 293.
  • Sec. 135(b) Applies To Ex Parte Prosecution And Perhaps To Litigation: In re McGrew, 120 F.3d 1236 (Fed. Cir. 1997) (“The application of section 135(b) is not limited to inter partes interference proceedings but may be used, in accordance with its literal terms, as a basis for ex parte rejections.”) But consider whether Aristocrat Tech. (Fed. Cir. 09/22/08) bars Sec. 135(b) as invalidity basis.
  • Sec. 135(b): Claim Entitled To Date Of Earlier Claim If Not Materially Different: “Whether claim 7 [added more than one year after earlier patent issued] is obvious in view of original claims 1-6 is not germane to the question of whether claim 7 is entitled to the earlier effective date of claims 1-6 for purposes of the one-year bar of 35 U.S.C. § 135(b). To establish entitlement to the earlier effective date of existing claims for purposes of the one-year bar of 35 U.S.C. § 135(b), a party must show that the later filed claim does not differ from an earlier claim in any ‘material limitation.’ Corbett v. Chisholm, 568 F.2d 759, 765-66, 196 USPQ 337, 343 (CCPA 1977).” In re Berger (Fed. Cir. 01/29/02). A claim may relate back, to avoid Sec. 135(b), even if the party intentionally delayed prosecution and declaration of an interference. In re Commonwealth Scientific (Fed. Cir. 11/20/15) (non-precedential) (rev’g PTAB interpretation of the statute, in an interference). Whether there is sufficient identity between pre- and post-critical date claims depends solely on a comparison of the pre- and post- critical date claims and not on a comparison to the count copied from the other party. Pre-critical date claim may have been cancelled and need not have been patentable. Adair (Fed. Cir. 02/07/12). Even where no single prior claim is the same as the claim in question, this prior claim requirement is satisfied by a collection of prior claims, each directed to the same essential invention, where they demonstrate that the pre-critical date claims do not differ materially from the post-critical date claims. Pioneer Hi-Bred (Fed. Cir. 02/28/12).
  • TIPS: