Interferences remain a fact of life despite the switch from a first-to-invent system to a first-inventor-to-file system, effective since March 16, 2013. This is especially the case in high technology areas such as biotechnology and electronics, although it is by no means limited to these areas. Even post-implementation of the America Invents Act (AIA), we are seeing interferences in all areas of technology, grandfathered in from the earlier, pre-AIA era.
Two changes that took effect September 16, 2012 are:
- For interferences declared after September 16, 2012, appeals from the Patent Trial and Appeal Board (PTAB) will go before a district court, not the Federal Circuit.
- The PTAB can dismiss an interference and allow a party to petition for post grant review instead.
Why Choose Sterne Kessler
Competent and cost conscious legal representation in this complex area of patent law requires a keen understanding of the technology, the substantive law of interferences and –quite critically– interference procedure. We have successfully handled dozens of interferences, and therefore offer a cost effective, seasoned and knowledgeable team to handle interferences when they arise.
Our experience runs the gamut from pre-declaration activities to successful appeals to the Federal Circuit. We are experienced in all phases of the practice, including the copying of claims, motions, count formation, testimony period, depositions, corroborated proofs, etc., as well as final hearings before the Board and appeals to the court.
We have represented U.S. and foreign clients in two-party and multiparty interferences and have acted on behalf of either junior or senior parties. We have successfully represented patentees in defending against post issuance interferences and also have successfully represented applicants against both patentees and other applicants.
When an interference is declared, we normally create a team comprised of a director and one or more associates, as well as one or more paralegals. We ensure director involvement in all interferences. In all instances, a director with many years of interference experience will be involved in supervising interference and/or settlement strategy.
Pre Interference Procedures
We have extensive practice in counseling clients on various interference issues that precede the declaration of an interference. For example, we have prepared and filed many requests for interference and have copied claims from issued United States patents, including filing reissue applications of our clients’ issued U.S. patents and provoking interferences with the issued patents of opponents during the reissue process.
We have experience prosecuting applications that present interference issues before the Examiner. In several cases we have prosecuted these applications to issuance while successfully avoiding an interference. We also have experience settling interference issues prior to declaration of an interference.
Another pre-interference activity that we recommend to our high technology clients is to watch for the publication of patent applications of our clients’ competitors. In this manner, we can be prepared and favorably positioned in the event an interference may—or needs to—be declared in the future.
In our experience, most interferences do not get to Final Hearing but settle instead. Settling an interference is certainly the most cost effective and expedient means to finalize what has become in recent years a long, drawn out and potentially quite expensive procedure. We therefore have extensive expertise in negotiating interference settlement agreements, mutual exchanges of proofs and mutual decisions on allocation of priorities, as well as the licensing agreements that normally accompany such settlements. We have an extensive library of past settlement agreements that we can put into immediate use during any interference.