Addressing the issue of whether the one-year time bar for a patent interference can be overcome, the U.S. Court of Appeals for the Federal Circuit affirmed that the one-year bar for a patent interference could be overcome by proving a prior patent application was directed to the same invention, through multiple, non-overlapping claims in combination. Pioneer Hi-Bred International Inc. v. Monsanto Technology LLC., Case No. 11-1285 (Fed. Cir., Feb. 28, 2012) (Clevenger, J.).

In November 2009, the Board of Patent Appeals and Interferences (the Board) declared an interference between claims of a patent belonging to Pioneer and those of a pending application owned by Monsanto. On the face of the Pioneer patent, a date of invention of June 10, 1988 was claimed. The Monsanto involved application containing the interfering claims was filed June 13, 2005. The Monsanto involved application claims a date of invention of January 22, 1990, which is the filing date of an earlier Monsanto application. Pioneer moved for judgment after the interference was declared, arguing the claims in the Monsanto involved application in issue were time-barred under 35 U.S.C. § 135(b). Section 135(b) precludes any applicant from presenting a claim already made in an issued patent at any time after the “critical date,” which is the date one year after the patent in question issued.

The Board concluded that the interference was not time-barred, even though the Monsanto involved application was filed after the critical date of July 10, 2002 and even though it did not contain any claim that had been in the earlier Monsanto application. It ruled that a combination of the claims in the earlier application were enough to meet the requirements of § 135(b). Pioneer appealed.

The Federal Circuit affirmed, concluding that claim 1 of the involved Monsanto application contained a preamble equivalent to claim 1 of the earlier Monsanto application, as well as four limitations that were substantially equivalent to a set of separate dependent claims in the earlier application. The Court concluded that it was appropriate to considerate the combined claims, despite the fact that they do not depend on one another, determining that the scope of the combination of claim 1, a dependent claim and two claims referencing claim 1, were similar in coverage to and not “directed to inventions outside what was later claimed by Monsanto” in the application.