Patent Office Practice - Patent Interferences and Derivation Proceedings
Leadership in handling “first-to-invent” U.S. patent interference proceedings.
When two or more independent parties claim to have invented the same subject matter at more or less the same time, the dispute over who invented first traditionally has been resolved in an interference proceeding before the Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent and Trademark Office (USPTO). Although implementation of the America Invents Act (AIA) in March 2013 removed the option of an interference for most new patent applications, interferences will remain viable for many patent applications containing claims entitled to earlier filing dates. Additionally, the USPTO announced that it will rarely, if ever, dismiss an interference commenced before September 16, 2012, under the AIA. Finnegan can navigate through complicated situations and the transitional AIA provisions to advise whether an interference is appropriate.
The outcome of an interference can affect corporate revenue streams, market position, and shareholder value. Finnegan’s understanding of all facets of interference law, deep technical expertise, thorough familiarity with all relevant USPTO procedures, and extensive patent litigation experience enable us to handle high-stakes interference matters. For decades, we have counseled and represented our clients in patent interferences—and in the process, we established one of the most highly regarded interference practices in the country. Our clients range from Fortune 500 corporations to emerging biotechnology companies and technology start-ups.
Experience in every facet of interference practice.
Patent interference cases have much in common with litigation: discovery, the contentious nature of the work, the importance of expert testimony—and much in common with prosecution: argument of patentability issues before the USPTO, possible amendment of claims, assertion of benefit of earlier patent application filing dates, and establishing dates of invention. Thus, interferences represent a unique, hybrid type of administrative proceeding requiring a specialized set of skills. Finnegan brings deep experience in every aspect and phase of a patent interference, from the crucial motions phase through priority determination, and then post-decision options.
Finnegan is one of the few law firms in the world that has an interference specialty practice supported by deep experience in patent prosecution, the AIA, strategic patent transactions, and trial and appellate litigation. Knowledge of the interplay among these areas is key to developing and implementing a successful interference strategy. Having seen interferences evolve from all angles better equips us to advise clients on the most significant and often complicated tactical decisions, such as whether to provoke an interference, request post-grant review or inter partes review, or negotiate a settlement. Other important decisions include whether to attack a patent’s validity before the Board or bring a claim in a district court, or to proceed with a § 146 action in district court versus a § 141 appeal at the Federal Circuit. Finnegan’s experience in interferences, combined with our significant litigation and appellate experience, provides a rare skill set.
New derivation proceedings.
As of March 2013, patent applicants may request a derivation proceeding at the USPTO. In a derivation proceeding, the USPTO determines whether an inventor named in an earlier patent application derived the claimed invention from an inventor of another application. Although derivation proceedings are new, derivation of an invention has been a potential issue that may arise in interferences. Finnegan’s deep interference experience has prepared us for those unique occasions when a derivation issue surfaces.
A deep understanding of technology.
Our singular focus on intellectual property enables us to bring comprehensive technical expertise and experienced professionals to every case we handle. Nearly 90 of our lawyers, student associates, and technical specialists hold Ph.D.’s in fields ranging from neurobiology to electrical engineering. With more than 60 former patent examiners on staff, we know the inner workings of the USPTO, and we understand the merits on which patents or applications will be upheld or dismissed.