Patent Interference Timeline

Patent Interference Timeline

Patent Interference Overview | McNeely, Hare & War LLP

Introduction to USPTO Patent Interference Practice
When two or more rival inventors/companies contest the right to a patent at the US Patent & Trademark Office or USPTO, the dispute is resolved by determining who was the first to actually invent the disputed subject matter. A patent interference governed by 35 U. S. C. §135 is an administrative proceeding by which the first to invent is determined by the USPTO Board of Patent Appeals and Interferences. The first to invent is either the first to conceive and the first to reduce to practice, or the first to conceive and the last to reduce to practice, if he worked on the invention with reasonable diligence from a date just prior to the other party’s conception to the date of his own reduction to practice.
A patent interference arises when two or more pending patent applications, or at least one pending patent application and an unexpired patent, contain patent claims covering the same or substantially the same subject matter. An important point here is that a patent interference is appropriate only when both inventors claim the same invention. It’s not enough that they describe the same subject matter.
The determination of who is the first to invent the claimed subject matter is referred to as determining priority. The USPTO Patent Board of Appeals conducts the patent interference under the rules appearing at 37 C. F. R. §§1. 601 – 1. 690. A patent interference usually includes motions, depositions, briefing, and an oral hearing before a panel of three administrative patent judges. The USPTO Board of Patent Appeals is empowered to decide not only priority of invention but also the patentability of that invention. In some cases the USPTO Board of Patent Appeals will decide that the invention is not patentable to either party and will enter judgment that neither is entitled to a patent.
A patent interference can be initiated in two ways: by suggestion of the patent examiner, or by request of the patent applicant. When a patent examiner determines that an invention claimed by a patent applicant is patentable, and that it is the “same patentable invention”[37 C. § 1. 601(n)] as that claimed in an unexpired patent or another pending patent application, the patent examiner may then forward the patent application to the USPTO Board of Patent Appeals for declaration of a patent interference. To seek a patent interference, a patent applicant must file a request addressed to the patent examiner that satisfies specific requirements of 37 C. 607. Such a request must suggest “counts” identifying patent claims corresponding to the counts, identify the other patent application or unexpired patent that claims the same or substantially the same invention, and explain why a patent interference should be declared. Under 35U. §135(b), the applicant must have presented the claims for interference within one year of the issue date of the opponent’s patent, or within one year of the publication of the opponent’s application.
If the patent examiner determines that a patent interference might exist, the patent examiner forwards the patent application file to the USPTO Board of Patent Appeals with a memorandum of prescribed form and content. Whether the interference will be declared is for the USPTO Patent Board to decide. If the USPTO Patent Board is satisfied that a patent interference exists, a notice will be mailed to each involved party declaring a patent interference. The notice identifies the patentable subject matter in dispute and sets a schedule for certain required actions by the parties. Among other things, the notice identifies one of the parties as senior and all others as junior. The senior party is the applicant or patentee who is entitled to rely on the earliest filing date and is therefore presumed – subject to contrary proof – to be the first inventor.
Under U. law, an inventor is a person who contributed to the conception of the subject matter defined by at least one claim in a patent or application. Showing that you are the first to invent requires proving that you were the first to possess the complete invention. The complete invention consists of two elements: conception (the idea) and reduction to practice (putting the idea into a workable form). So, proving priority of invention requires proof of the earliest dates for both conception and reduction to practice. A complete conception is not simply the inventor’s idea, but an idea that is clearly defined so that a person of ordinary skill in the field of the invention would be able to reduce the invention to practice without undue experimentation.
A reduction to practice can take one of two forms: actual or constructive. An actual reduction to practice is a physical demonstration that the invention works for its intended purpose. A constructive reduction to practice is the filing of a patent application that describes the invention and how to make and use it. All testimony is initially submitted in affidavit form, but witnesses might be cross-examined in a deposition. Any documentary evidence, such as copies of research records, correspondence, and analytical or other test data, must be filed with an affidavit. An inventor’s testimony, the documents he creates, and any other evidence based entirely on information obtained from an inventor must be independently corroborated to prevent fraud. Testimony and records of others, such as technicians, analysts, and others, who didn’t con-tribute to the conception of the invention, need not be independently corroborated.
It is possible to win a patent interference if you were the first to conceive but the last to reduce to practice. Under 35 U. §102(g) an inventor has an opportunity to win the patent interference priority contest by proving that he had the earliest conception and showing that he exercised reasonable diligence during the critical period, which is just prior to the other party’s conception and continuing up to his own reduction to practice. One can prove diligence by submitting evidence of reasonably continuous activity toward a reduction to practice. Acceptable excuses may be reasonable delays in obtaining materials or personnel, or delays due to the need for regulatory clearance for the needed activity. A purely business reason for a delay, such as, for example, postponing work on a project because of market conditions, is not an acceptable excuse for inactivity.
Even an inventor who shows that he was the first to invent can still lose the priority contest if the USPTO Patent Board decides that the completed invention was abandoned, suppressed, or concealed. That can happen if the evidence shows that the inventor or company did not take steps within a reasonable time to make the invention public by filing a patent application, commercializing the invention, or using other means.
The patent interference proceeding ends with an opinion by the USPTO Patent Board stating which party is entitled to a patent containing claims covering the disputed invention. A party not satisfied with the USPTO Patent Board’s judgment can request reconsideration or can pursue an appeal to the U. Court of Appeals for the Federal Circuit or to a U. District Court.
Declaring and winning a patent interference can offer many advantages, however, procedural complexities and strategic considerations can vary widely depending on individual circumstances. For legal advice on a patent interference, consult a registered patent attorney qualified to assist you in patent matters before the USPTO Board of Patent Appeals & Interferences.
How To Challenge A Patent In The PTO | Weintraub Tobin - JDSupra

How To Challenge A Patent In The PTO | Weintraub Tobin – JDSupra

The validity of a United States patent can be challenged in federal court litigation. Patents can also be challenged in the U. S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process.
The PTO provides three procedures by which a patent can be challenged: inter partes review (IPR), post grant review (PGR), and ex parte reexamination. In IPRs and PGRs, the challenger and the patent owner both participate, and the proceedings are handled by the Patent Trial and Appeal Board (PTAB). In an ex parte reexamination, the challenger is not involved after the request for reexamination has been filed, and the proceeding is handled by the PTO examiners.
In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent. The filing fees are high, $41, 500 for an IPR and $47, 500 for a PGR, with additional fees depending on the number of claims challenged. The proceedings are handled by a three-judge panel of administrative judges with technical background in the field of the patent. There are two phases in these proceedings. The first phase consists of the filing of the petition by the challenger, the filing of a response by the patent owner, and the decision whether to institute the IPR or PGR by the PTAB. If the PTAB institutes the IPR or PGR, then the second phase (the trial phase) begins. The second phase consists of discovery (more limited than in litigation), briefing, an oral hearing, and a final written decision by the panel. The entire process from institution to the final decision should take no more than 12 months. The parties may appeal the decision to the Federal Circuit Court of Appeals.
Although an IPR is the most popular method of challenging a patent in the PTO, it has limitations. A petition for an IPR cannot be filed until nine months after the patent is issued. If a lawsuit for infringement has been filed, however, the accused infringer must file an IPR within one year of being sued. The only grounds that can be asserted in an IPR are anticipation (35 USC §102) and obviousness (35 U. C. §103). The only prior art that can be cited are patents and printed publications. Thus, an IPR cannot be used to invalidate a patent based on patentable subject matter, written description, best mode, enablement, indefiniteness, or ownership, and an IPR cannot be based on prior art other than patents and printed publications. Both parties in an IPR typically use experts to provide opinions on claim construction and on the grounds for invalidity.
The majority of the PTAB’s decisions in IPRs have found most or all of the claims invalid. If the PTAB finds the challenged claims valid, the challenger is estopped from asserting in patent infringement litigation the grounds that were raised in the IPR or any grounds that could have been raised.
A PGR is similar to an IPR in some respects, but the challenger may assert more grounds of invalidity. In addition to anticipation and obviousness, in a PGR a patent can challenged on patentable subject matter (§101), and written description, enablement, and definiteness (§112). Another advantage of a PGR over an IPR is that the prior art in a PGR is not limited to patents and printed publications. PGRs may only be filed for patents that were filed after March 16, 2013, when the America Invents Act went into effect, and must be filed within nine months of the date the patent issued. PGR proceedings suffer from the same disadvantage as IPRs with respect to estoppel.
An ex parte reexamination proceeding is different from an IPR and a PGR. Any person can challenge an issued patent, including the patent owner. The proceeding is not brought in the PTAB, but before a panel of three patent examiners. The patent owner is permitted to amend claims and add claims to the patent. The proceeding is not inter partes, so the challenger is not involved once the request has been filed. An ex parte reexamination must be based on patents and printed publications. A disadvantage of ex parte reexaminations is that, compared to IPRs, they are much less likely to be successful. An advantage of an ex parte reexamination, however, is that there is no estoppel effect. Another advantage is that an ex parte reexamination is less costly than IPRs and PGRs.
In determining which procedure is best in a given situation, the advantages and disadvantages of each type of proceeding should be considered in light of the patent to be challenged, the relationship of the parties, the grounds to be asserted, the timing of the challenge, the likelihood of litigation, and the financial resources of the challenger.
Why Patent Interference Proceedings Are Worth It | Articles | Finnegan

Why Patent Interference Proceedings Are Worth It | Articles | Finnegan

Authored by Lara C. Kelley and Barbara Clarke McCurdy
U. S. patent law is unique in recognizing the inventive activity of individuals as significant in deciding who is entitled to patent rights on an invention. Other countries simply rely on the filing date of a patent application to decide who gets a patent. Who actually invented first is not relevant in those countries. In the United States, however, the question of who made an invention first is important in two different situations. One is where the U. Patent and Trademark Office (PTO), or a court, decides which of two parties is entitled to a patent on a single invention. This is called a patent interference. The other is where a court decides whether a patent is invalid because someone else made the invention first. This latter situation typically arises as part of an invalidity defense to patent infringement. Both situations are governed by 35 U. C. §102(g), and both involve a determination of who is “first to invent. ” This article explores how a “first to invent” position can be more advantageously pursued in a patent interference rather than a district court action.
While the rules for conception, reduction to practice, and diligence are generally the same in a patent interference proceeding and in an invalidity defense in district court, there are procedural and substantive reasons why a patent interference can be the better forum to vindicate a “first to invent” argument. It may not always be apparent that one has a choice between an interference and an invalidity defense. But here’s how the situation might present itself. Your company might have a breakthrough product that has been carefully protected through filing one or more patent applications. You might even have a portfolio of patents and patent applications covering the product and related technology. You then learn of a new patent owned by the Acme Company broadly claiming an invention that might encompass your company’s breakthrough product.
At this juncture, you typically might obtain an opinion of counsel that Acme’s competing patent is invalid, or that your product does not infringe Acme’s claims, or both. If your initial reaction to Acme’s patent was correct, that is, if Acme’s patent claims do encompass your product, and your product is already protected by issued patent claims, or even pending patent applications, you and your counsel might come to the conclusion Acme’s patent is invalid because your inventor invented the technology first.
It is at this point that routine procedure might dictate that your outside counsel prepare a written opinion asserting the invalidity of Acme’s patent based on your inventor’s earlier work in the field, thus shielding your company from an assertion of willful infringement and the treble damages that go with it. That opinion might also serve [as] the basis of a complaint for declaratory judgment of invalidity. But that opinion will not protect your company from a patent infringement suit, nor will it help solve the problem of Acme’s new patent in the marketplace, which itself might impact your company’s ongoing business apart from any direct attack from Acme. Another option in this circumstance is to provoke an interference with the competing patent. One requirement for admission to an interference is a pending application, preferably filed before the opponent’s application. Thus, if your company has a pending application or is entitled to file a reissue application based on one of its patents, you might take steps to “provoke” an interference with the competing patent. This is usually done by copying or substantially copying the claims of the competing patent within one year of the patent’s issue date, and then filing a Request for Interference. See 35 U. §135(b); 37 C. F. R. §§ 1. 607, 1. 608.
The steps involved in provoking the interference vary depending on the respective filing dates of the competing patent application and patent, and may involve some significant strategy decisions regarding the scope and type of claims one wants to pursue. Consideration must be given to the statutory and regulatory framework that has been set up to avoid declaring an interference between what the PTO calls “patentably distinct” claims. See 37 C. §1. 601(n); Eli Lilly & Co. v. Board of Regents of the Univ. of Washington, 334 F. 3d 1264 (Fed. Cir. 2003). Additionally, an interference “count, ” which is similar to a claim and defines the interfering subject matter, should be carefully crafted and suggested to the PTO. The PTO examiner must be satisfied that the claims are allowable and that the application should be sent to the PTO’s Board of Patent Appeals and Interferences (Board), which has the authority to declare the interference and, thereafter, has jurisdiction over the proceeding. If these hurdles are overcome and the Board declares the interference, there are many reasons an interference is preferable to a district court invalidity defense for resolving a priority dispute. Here, in no particular order, are at least ten:1. The burden of proving priority in an interference is lower than the burden of proving invalidity in a patent infringement action.
Any party in a district court proceeding asserting invalidity, either as a defendant in an infringement action, or as a plaintiff in a declaratory judgment action, bears the burden of proving that invalidity by clear and convincing evidence. On the other hand, in a PTO interference proceeding, where there is no “presumption of validity” as there is in a district court action, the burden is assigned differently, and the standard used is almost always only a preponderance of the evidence. 1
Thus, from the hypothetical in the above introduction, if your company asserted invalidity in a district court action, it would necessarily bear the burden of proving that invalidity by clear and convincing evidence. In an interference proceeding, on the other hand, the burden would play out in one of two different ways: if your company’s inventors were the “senior party, ” that is, if it went into the interference with the earlier effective filing date, the burden of proving priority would be placed from the beginning on Acme; if you were the “junior party, ” you would bear the burden of proving priority, but only by a preponderance of evidence. Thus, your company in this hypothetical is almost always better off from the burden of proof perspective in an interference proceeding than it is in a district court action. 2. Patentability issues can be raised in addition to priority in an interference.
An interference proceeding is bifurcated into “preliminary motions” and “priority” phases, with separate hearings and decisions for each phase. While an interference is usually considered a priority contest and a prima facie priority case must be evident to get into an interference, there is an opportunity to attack the other party’s claims on grounds other than priority during the preliminary motions period. For example, a party’s claims can be attacked in an interference as unpatentable over the prior art, i. e., the earlier patents and literature. Or a party’s claims can be challenged as failing to meet the enablement or written description requirements. Because a decision on any of the preliminary motions can determine the outcome of the interference before priority is even an issue, e. g. by determining that a patent is invalid, an interference is an attractive option when an interfering party has a strong validity attack on an issued patent. 3. The Board is more likely to understand the issues than a judge or jury.
Another reason an interference before the PTO is a more attractive option than an invalidity defense in district court is the decision-maker’s expertise. The Board has experience in patentability and priority determinations and makes these decisions regularly, as opposed to a judge or jury. Members of the Board all have scientific and technical training, as well as law degrees and significant patent legal training. Many are former PTO examiners. And since the fall of 1998, newly declared interferences have been assigned to what is called the Trial Section of the Board, which is specifically tasked with expediting interferences, particularly the preliminary motions, before the Board. Moreover, a three-member panel makes all significant Board determinations, thus hopefully ensuring three expert decision-makers for each substantive issue that arises in the case. 4. An interference affords flexibility not provided in the district courts.
A patent applicant involved in an interference has the option of amending its claims if they are challenged as unpatentable during an interference. See 37 C. 633(c). Likewise, a patentee hit with a charge of unpatentable claims may have the option of filing a reissue application to amend its claims, which can then be brought into the interference as well. See 37 C. 633(h). There is no similar procedure afforded to parties engaged in litigation before a federal district court.
Importantly, this advantage of interference practice allows a party seeking to provoke an interference who has a pending application to tailor that application to fit the other party’s product or patent claims. For example, a patent applicant facing an infringement charge from a patentee might be concerned about his chances of proving invalidity as a defense in a district court. Even if his current pending claims are not overlapping in scope, he can amend his claims or file a related application to recite the claims he wants provided he has written description support. Likewise, a patentee might use a pending related application to recite claims that explicitly cover an accused product. 5. There is limited discovery in an interference.
From the perspective of many companies (and their attorneys) engaged in patent infringement litigation, discovery is often considered the most onerous, expensive, and time-consuming aspect of the litigation. But discovery is a matter of right afforded to such litigants under the Federal Rules. On the other hand, an interference does not afford the parties discovery as a matter of right. Instead, an interfering party generally has to show the requested discovery is in the interest of justice, which is a higher standard than the relevance standard under the Federal Rules. See 37 C. 687. Discovery is generally frowned upon by the Board, and occurs in only a minority of interferences. While some may consider the limited discovery a disadvantage to provoking an interference, particularly where a party seeks to delay a certain outcome, e. g., pending FDA approval of a product, or where a party’s case hinges on information in the opponent’s possession, there can be no question that this fact serves to streamline the proceedings, usually making an interference a speedier and less expensive proposition than district court litigation. 6. There is no live testimony or trial in an interference.
Another factor impacting the speed and cost of an interference relative to a district court litigation is that testimony in an interference takes the form of affidavits and cross-examination deposition transcripts, and only rarely is testimony given in the presence of a Board member. This is true during both the preliminary motions and priority phases. While there are of course pros and cons to providing live testimony depending on the type of witness giving the testimony, there is more control over the affidavit testimony presented in an interference. Finally, while an oral hearing before a three-judge panel of the Board may and usually does occur at the end of each phase of an interference, these hearings are usually limited to twenty minutes per side. 7. An interference is usually less expensive.
As mentioned above, because of the very limited discovery and lack of live witnesses or trial, interferences are frequently a bargain when compared to full-blown patent infringement litigation. Expert witnesses can play a role in an interference but only on technical, not legal, issues. Thus, interferences do not seem to devolve into the battle of experts that seems so common in patent infringement litigation—saving expenses in this area as well.
Because of the differences among technologies and the varying complexities of interferences, it is nearly impossible to estimate costs for a typical interference. However, because of the bifurcated nature of an interference, it is usually possible to provide ballpark figures for each of the two phases of the interference taking into consideration what is known about the case in the beginning. When comparing these costs to a parallel district court action, the interference usually winds up being much less expensive. That reason alone is enough for many companies to at least consider provoking an interference before embarking on a litigation strategy. 8. There remain opportunities for trial litigation after an interference.
Often, an interference is only the first step in a party’s overall litigation strategy. There is nothing to prevent a party from pursuing a lawsuit in federal court, particularly if discovery or live testimony may be important to the case. Or a party who has been sued for patent infringement may opt to provoke an interference, and then seek a stay in the litigation pending the interference outcome. While courts are often reluctant to grant such stays, they may be more amenable where the issues are highly technical, either from a scientific point of view or a patent law perspective.
Moreover, a final interference decision by the Board can be appealed to a federal district court pursuant to 35 U. §146. While the Court of Appeals for the Federal Circuit hears most interference appeals, a §146 action is an alternative, and is considered a hybrid of an appeal and a trial de novo. While the record before the PTO is admitted into evidence in a §146 case, the statute explicitly affords the parties the right to take further testimony within certain limits. Unsuccessful patent interferants often choose a §146 action as a means of obtaining evidence that was unavailable at the Board or as a means to present live witnesses. Or some do it simply to drag out the appeal process and delay the issuance of an opponent’s patent. 9. Provoking an interference may afford a party a stronger settlement position.
As mentioned above, a party who is successful in getting an interference declared and set up so that he is senior party has an advantage in the interference: he does not bear the burden of proving priority. Thus, a junior party patentee may be more willing to engage in meaningful settlement discussions with a potential infringer who has provoked an interference with his patent. The Board even requires the parties to engage in settlement discussions at various points during an interference after it has been declared. Thus, a small company who strategically provokes an interference may be able to obtain a better settlement with a patentee than he might otherwise obtain. 10. A successful interference outcome can result in a patent term extension.
While the intricacies of the PTO’s rules for patent term adjustment are beyond the scope of this article, there are provisions for an extension of patent term for delays in the PTO’s examination of an application due to interference proceedings. See 37 C. 701(a)(1), 1. 702(c), 1. 703(a)(5), 1. 703(c). Thus, some of the delays in the PTO’s issuance of a patent caused by engaging in an interference can at least theoretically be recouped at the end of the patent term. Endnotes 1 See 37 C. 657(b) setting forth the preponderance of the evidence standard where an application has an effective filing date before the opposing patent’s issue date. While §1. 657(c) does set forth a clear and convincing standard in an interference where an application has an effective filing date after the competing patent’s issue date, this circumstance is rare and the vast majority of interferences involve the situation outlined in §1. 657(b).
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes and is not intended to constitute legal advice. This memorandum may be considered advertising under applicable state laws.

Frequently Asked Questions about patent interference timeline

How long before a patent is challenged?

Although an IPR is the most popular method of challenging a patent in the PTO, it has limitations. A petition for an IPR cannot be filed until nine months after the patent is issued. If a lawsuit for infringement has been filed, however, the accused infringer must file an IPR within one year of being sued.Mar 29, 2021

What is an interference in patent law?

One is where the U.S. Patent and Trademark Office (PTO), or a court, decides which of two parties is entitled to a patent on a single invention. This is called a patent interference. The other is where a court decides whether a patent is invalid because someone else made the invention first.Jul 19, 2004

Do patent interferences still exist?

Patent interference proceedings are used to determine which party was the first to invent a particular technology claimed by different applicants. Such proceedings are no longer a fixture of U.S. patent law since the passage of the America Invents Act (AIA) of 2011.Jul 1, 2019

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