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Recorded Februry 2017. Chris Maiorana interviewed by Steve Sleeper.
I heard Patent Interferences were essentially over since the passage of the America Invents Act or AIA?
Chris: I want to clarify from a previous interview that Patent Interferences are related to patent applications that were filed before the conversion to the America Invents Act (AIA). That is a big distinction. After the American Invents Act, there are different laws that apply.
If I think my patent is in conflict with another patent, what do I do?
Chris: There are two scenarios. Either the applicant could request a Patent Interference or the USPTO could declare a Patent Interference. One thing to keep in mind is normally one patent is already issued, so there are allowed claims issued while the second application is still in pending status. The Patent Office wants to intervene during that pending status of the second application to see if there's a conflict. They normally wait until that pending application has allowable claims, and then the case gets flagged and sent to the Interference department to determine whether a Patent Interference should be declared. This is an issue based in the claims, not necessarily the specification. Two specifications could be fairly similar, but have claims that are quite distinct and may not have an overlap. That's a distinction we wanted to make as a Patent Interference Lawyer.
Do I need to copy another set of claims into my application to request a Patent Interference?
Chris: No. That's the way things worked a long time ago. In the old days, you would take a competing application's claims and copy them verbatim to your application. Then you make the argument with the Patent Office about that being the basis to declare an Interference. This doesn't happen anymore. The claims, when read reasonably, if they overlap, then that's all that you need. By the way, there was a conversion date in 2013 to the America Invents Act.
How does the USPTO administer the documents? I don't see anything in PAIR.
Chris: The Interference Department is a small portion of the United States Patent Office. They have what's called the Patent Interference Portal. Each patent attorney who works on an Interference proceeding needs to get credentials to work within the portal. We have those credentials, so it’s not an issue since we are Interference Lawyers in Silicon Valley.
Are there any trusted resources on Patent Interference proceedings?
Chris: Sure. The main reference is a book called Patent Interference Practice Handbook by Jerome Rosenstock. It's an older style document. He goes through a lot of different scenarios fairly quickly and presents a big picture. He keeps it updated and is a nice guy. He took my calls, which I thought was neat.
Changing gears a bit. I heard these things can take a long time. Is that true?
Chris: They used to take a lot more time than they do now. A typical Patent Interference timeline is two years. You potentially could win in one year because there are two phases of the Interference. If you win after one year, you don't have to do the second year. They have strict timelines they want you to meet.
Is this the same as a derivation proceeding ?
Chris: Very similar. A derivation is going to be after the AIA. It uses the same judges, the same concepts. They do twist the words around a little bit to adapt to the new law, but it's the same essential idea that two people have contemporaneously invented the same thing and there has to be some sort of way to determine who should get the patent rights. That's not to be confused with someone stealing your invention. Let’s say you were talking in a coffee shop about your invention and someone overheard it and went and filed on their own. That's a different scenario and is addressed differently. We can help with a patent derivation proceeding too.
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