- BASICS: A statute of repose. Speck (Fed. Cir. 05/23/24) (rev’g PTAB in interference proceeding and holding that senior party’s claim was time-barred under Section 135(b)). “(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); Regents of Univ. of Cal. (Fed. Cir. 07/17/06) (“Section 135(b)(1) bars any claim having a degree of identity with a claim in an issued patent unless such a claim is filed before the critical date [one year after issued patent].”). 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 (Materially Broader Or Materially Narrower): “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 (CCPA 1977).” In re Berger (Fed. Cir. 01/29/02). This is a “two-way test, which requires comparing the two sets of claims to determine if either set contains material limitations not found in the other, rather than just looking to only see if the post-critical date claims contain material limitations not present in the pre-critical date claims.” Speck (Fed. Cir. 05/23/24) (rev’g PTAB in interference proceeding, and holding that senior party’s claim was time-barred under Section 135(b): the issue is whether amendments to claims after the critical date changed the claims so that they are not substantially the same as the claims before the critical date, which they did by amending “the claims to require that the device be ‘free of a containment material atop the drug layer’ in order to overcome a rejection.”). 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: