Authored by: Jeremy J. Gustrowsky
A recent Federal Circuit decision highlights the importance of timing and claim amendments in patent interference proceedings. The dispute centered on a drug-coated balloon catheter, with Ulrich Speck and Bruno Scheller challenging Brian L. Bates and others over who was entitled to the patent. The heart of the issue was whether Bates’ U.S. Patent Application No. 14/013,591 was time-barred under 35 U.S.C. § 135(b)(1), which sets a strict one-year deadline for making certain patent claims after a related patent is granted.
The case turned on whether amendments made to Bates’ patent application after the critical one-year deadline were “materially different” from the claims that existed before the deadline. The Patent Trial and Appeal Board originally sided with Bates, using a “one-way” test that only checked if the new claims were narrower than the old ones. However, the Federal Circuit disagreed, holding that a “two-way” test should be used—meaning both sets of claims must be compared to see if either contains important differences not found in the other.
Applying this two-way test, the court found that the post-deadline claims in Bates’ application were indeed materially broader than the pre-deadline claims. Specifically, the new claims allowed for certain containment materials that the earlier claims did not, and these differences were considered important because they were added to overcome patent examiner rejections. As a result, the court ruled that Bates’ application was time-barred and reversed the Board’s decision, restoring Speck’s patent rights.
This decision serves as a reminder to inventors and patent applicants: amending claims after the critical one-year period can be risky if those changes are significant. The two-way test now firmly guides how courts will determine whether late amendments are allowed, ensuring that only truly similar claims can avoid the time bar.