Ondeyka notes that their patent (U.S. Patent No. 5,091,389) expired on February
25, 1996, due to non-payment of maintenance fees.
(Ondeyka List of Intended Preliminary Motions, Paper No. 13, p. 3 and 35 U.S.C. § 41(b)). At
the time the interference was declared, the Board was unaware that Ondeyka’s patent had
expired.
B. Discussion
The patent interference statute, 35 U.S.C. § 135(a) does not authorize an interference
between an expired patent and a pending application. Specifically, 35 U.S.C. § 135(a) provides
in part:
Whenever an application is made for a patent which, in the opinion of the
Director, would interfere with any pending application, or with any unexpired
patent, an interference may be declared and the Director shall give notice of such
declaration to the applicants, or applicants and patentee, as the case may be.
(Emphasis added). As the Ondeyka patent had expired as of the date the interference was
declared, the Board lacks subject matter jurisdiction over the interference. Petrie v. Welsh, 21
USPQ2d 2012 (BPAI 1991); Waterman v. Birbaum, 53 USPQ 2024 (BPAI (ITS) 2000).
While recognizing that its patent has expired, Ondeyka seeks to file the following
preliminary motions: (1) One or more motions under 37 CFR § 1.633(a) on the grounds that
Shelly’s claims are unpatentable; (2) a motion under 37 CFR § 1.633(g) attacking the priority
benefit accorded to Shelly’s claims; and (3) a motion under 37 CFR § 1.635 authorizing full
third-party participation by Ondeyka in the examination of Shelley’s U.S. application or any
continuing application thereof. (Paper No. 13, pages 2-3). Moreover, Ondeyka states:
In declining to pay the required maintenance fee for U.S. Patent No. 5,091,389, Ondeyka
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