Background
SNIPR Technologies Ltd. owns five patents directed to methods of selectively eliminating specific bacteria using CRISPR gene-editing technology. All five patents claim priority to a PCT application filed on May 3, 2016 — after the America Invents Act’s (AIA) March 16, 2013 effective date — making them “pure AIA” patents examined and issued entirely under the first-inventor-to-file system.
Rockefeller University held a patent application claiming similar CRISPR-based methods but tracing priority to a 2013 provisional application filed under the old pre-AIA system, making it a “pure pre-AIA” application. The Patent Trial and Appeal Board (PTAB) declared an interference between SNIPR’s patents and Rockefeller’s application to determine which party first invented the claimed subject matter — the classic pre-AIA priority contest. SNIPR moved to terminate the interference, arguing that its AIA patents could not lawfully be drawn into an interference proceeding. The PTAB denied SNIPR’s motion, and SNIPR appealed.
The Court’s Holding
The Federal Circuit reversed the PTAB, holding that pure AIA patents cannot be involved in interference proceedings. The court grounded its analysis in the text of the AIA, which explicitly limited interferences to applications and patents with claims having an effective filing date before March 16, 2013 — the cutoff for the old first-to-invent system. SNIPR’s patents, with claims effective after that date, fell squarely on the AIA side of the line and could not be subjected to the pre-AIA priority framework.
The court rejected Rockefeller’s argument that the pre-AIA interference statute should still apply when a pre-AIA application conflicts with an AIA patent. Permitting such a proceeding, the court reasoned, would retroactively expose AIA patentees to a form of priority challenge they had no reason to expect when filing under the new system. The AIA’s first-inventor-to-file framework replaced interference proceedings with the inter partes review (IPR) system for post-AIA patents, and the two regimes were not designed to overlap.
Key Takeaways
- “Pure AIA” patents — those with all claims having an effective filing date on or after March 16, 2013 — are categorically exempt from patent interference proceedings.
- The pre-AIA interference framework cannot reach AIA patents even when a competing application has pre-AIA priority claims to the same subject matter.
- CRISPR and other cutting-edge biotech patents filed after March 2013 are shielded from the most disruptive form of patent priority contest under the old system.
- Parties with pre-AIA applications competing against AIA-era patents should look to other mechanisms — such as IPR or derivation proceedings — rather than interferences, to challenge those patents.
Why It Matters
The decision draws a firm line in one of patent law’s most complex transition zones: the shift from the pre-AIA “first to invent” world to the AIA’s “first inventor to file” system. For the biotechnology and pharmaceutical industries — where CRISPR, gene therapy, and other revolutionary technologies have generated overlapping patent claims from multiple research institutions — the ruling provides important clarity. Patentees who obtained AIA patents need not fear that a pre-AIA competitor can revive the old interference machinery against them.
For companies building patent portfolios in emerging scientific fields, the case underscores the importance of understanding which legal regime governs their patents. AIA patents offer insulation from interference proceedings but are subject to IPR and other post-grant challenges. The ruling also highlights the enduring complexity of the AIA transition period, as legacy pre-AIA applications continue to work their way through the patent system years after the 2013 cutoff.