Litigation - Patent Interferences

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 is almost always initiated and resolved in an interference proceeding before the Board of Patent Appeals and Interferences at the U.S. Patent and Trademark Office (PTO). The outcome 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 PTO procedures, and extensive patent litigation experience enable us to handle high-stakes interference matters.

Since the new interference rules were adopted in 1984, 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. At any given time, we are typically involved in 10 to 15 percent of all pending interferences. We have handled more than 60 interferences in the past five years, and approximately 50 of our lawyers have experience in interference proceedings. 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 PTO, possible amendment of claims, assertion of benefit of earlier patent application filing dates, and establishing dates of invention. Thus, they represent a unique, hybrid type of administrative proceeding requiring a specialized set of skills. We bring 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, strategic patent transactions, and trial and appellate litigation. Knowledge of the interplay between these areas is key to developing and implementing a successful interference strategy. Having seen interferences evolve from all angles better equips us to advise a client on the most significant and often complicated aspects of an interference, such as whether to provoke an interference or negotiate a settlement, attack a patent’s validity before the Board or bring a claim of infringement in the district court, or to proceed with a § 146 action in district court versus a § 141 appeal at the Federal Circuit.

Navigating your interference through the courts

Finnegan's extensive experience in trial and appellate litigation allows us to continue to guide your interference through the court system following a decision from the PTO. Whether it is in a review of the PTO decision in the specialized district court litigation under 35 U.S.C. § 146 (Section 146 action) or in an appeal to the U.S. Court of Appeals for the Federal Circuit, Finnegan's representation provides a rare combination of specialized expertise in interferences with the significant litigation and appellate expertise for which the firm is so well known.

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. More than 90 of our lawyers, student associates, and technical specialists hold Ph.D.’s in fields ranging from neurobiology to electrical engineering. With 60 former patent examiners on staff, we know the inner workings of the PTO, and we understand the merits on which patents or applications will be upheld or dismissed.