Ondeyka v. Shelley

Informative decision only: persuasive authority, not binding precedent. When a patent named in a declared interference had expired (here for non-payment of maintenance fees) before the interference was declared, the Board lacks subject matter jurisdiction because 35 U.S.C. § 135(a) authorizes interference only with a pending application or "any unexpired patent," and it must terminate the interference. The Board also cannot entertain the expired patentee's preliminary motions on patentability or priority, or a motion for full third-party participation in the other party's application, though the patentee keeps its rights under the protest provisions of 37 CFR § 1.291. No prior precedent of the Board is named as being modified; the Board follows Petrie v. Welsh, 21 USPQ2d 2012 (BPAI 1991) and Waterman v. Birbaum, 53 USPQ 2024 (BPAI (ITS) 2000) for the jurisdictional point. For a party facing an application that was declared into interference with an expired patent, the expired patent's owner cannot use the interference to attack the application's patentability or priority benefit, and the only route left is a protest under 37 CFR § 1.291. For the applicant, the interference ends and the application returns to ex parte examination with no right of the former opponent to intervene. The Board relied on Animal Legal Defense Fund v. Quigg, 932 F.2d 920 (Fed. Cir. 1991), for the rule that an individual has no right to intervene in prosecution of another's application, and it also cited Godtfredsen v. Banner, 503 F. Supp. 642 (D.D.C. 1980). LEGAL TEST OR STANDARD: Under 35 U.S.C. § 135(a), an interference may be declared only where an application would interfere with a pending application or with "any unexpired patent"; if the patent had expired as of the date the interference was declared, the Board lacks subject matter jurisdiction over the interference. TRIGGERING FACTS: The interference was declared June 1, 2001 between a Shelley application and the Ondeyka patent. Ondeyka's list of intended preliminary motions disclosed that the patent expired on February 25, 1996 for non-payment of maintenance fees (35 U.S.C. § 41(b)), and the Board had been unaware of this at declaration. Ondeyka sought patentability motions under 37 CFR § 1.633(a), a priority-benefit motion under § 1.633(g), and full third-party participation under § 1.635 with a waiver of § 1.291. KEY QUOTE: "The patent interference statute, 35 U.S.C. § 135(a) does not authorize an interference between an expired patent and a pending application." (Paper 14, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Petrie v. Welsh, 21 USPQ2d 2012 (BPAI 1991) and Waterman v. Birbaum, 53 USPQ 2024 (BPAI (ITS) 2000) on lack of jurisdiction over an expired patent. PRACTICE TIP: Check a patent's maintenance-fee status before relying on it in an interference, and if it has expired, promptly alert the Board, as Ondeyka did in its list of intended preliminary motions. Do not expect to litigate patentability or priority there; use a protest under 37 CFR § 1.291 instead.