Attorneys at COJK are among a handful in the country that have extensive experience in successfully navigating these complex proceedings. Careful planning and strategy are involved in deciding whether to request an interference with a competitor’s patent or pending application. Our attorneys guide clients through prosecution strategies to maximize their options in dealing with a competitor’s patent position. In some cases the best option is to avoid an interference with a competitor altogether. Traps await during prosecution that can severely restrict maneuverability and in some instances patentability of an applicant’s invention in view of a competitor’s pending application or issued patent.
An integral part of COJK’s interference practice is counseling our clients about good recordkeeping practices. If an interference is declared, a client’s documents can be used to prove its earliest dates of invention. The records involved are those which impact dates of conception, reduction to practice (for example, an actual working prototype) and evidence of diligence. Keeping good laboratory notebooks and preserving electronic records, both by inventors and corroborating witnesses, are often fundamental to prevailing in a priority contest.
Patent interferences are adversarial proceedings conducted before the USPTO’s Board of Patent Appeals and Interferences to determine priority between competing patent applications. United States patent law specifies that the “first to invent” an invention is entitled to a patent if other requirements for patentability are met. In the rest of the world, patents are awarded to those who are “first to file” their patent application; basically, it amounts to a race among competitors to file their applications with the patent office. In the U.S., a proceeding known as an interference occurs when two or more patent applications are filed by different inventors claiming the same or substantially the same invention. To the surprise of some patent holders, interferences can also occur between their issued U.S. patent and another party’s pending application.
Interferences can be requested by a patent applicant. Once “declared” by the Patent Office, interferences are decided by a panel of administrative patent judges who have technical backgrounds and are well-versed in patent law. These patent judges are better able to understand the intricacies of a highly technical patent and legal arguments that may be difficult to convey to a district court judge or to a jury. Thus, interferences can present a more cost-efficient alternative to patent litigation.
