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What is a Patent Interference?
Chris: A Patent Interference is a dispute between two parties with a patent on the same invention.
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Chris Maiorana interviewed by Steve Sleeper; recorded in 2017.
The patent office can potentially have two patents issued on the same thing?
Chris: That's right. It sounds funny. There are different scenarios as well. If the Patent Office is aware there's a pending application that has conflicting claims with a issued patent, it can potentially declare a Patent Interference. The two parties then fight over who gets the rights to the conflicting subject matter. That’s when you need a Patent Interference Attorney or a Patent Interference Lawyer.
Are the issues in a Patent Interference similar to patent prosecution issues?
Chris: Sure. There are a lot of similar issues and similar terminology. There can be a scenario where you have to file a priority motion that's similar to a patent application affidavit. In a patent application, you try to swear behind someone else's reference, meaning you'd say you conceived your invention before the filing date of the reference. Then we say that reference doesn't count against you in your patent during prosecution and your patent moves forward. In a Patent Interference, you don't file an affidavit so much as you file a motion for priority. Then you have a lot of supporting documents in that motion.
How much detail goes into a motion?
Chris: Each motion is fairly complicated. This is where our firm can save a client a lot of money because we’re efficient Patent Interference Attorneys. We figure roughly three or four times the amount of time spent on an appeal brief in a patent application is the amount of time for each motion.
How many are needed?
Chris: It depends. In a recent Patent Interference , we filed seven motions and the other side filed six motions.
Isn't it typically more than that?
Chris: There are a lot of national quotes that Patent Interference specialists will charge quite a lot to do each motion. We have a level of expertise with patent prosecution and a lot of date sensitive files. When we do the timelines we think - here's the reference, here's your diligence, your reduction to practice. You have to be diligent about time. There's a difference in a Patent Interference where they're a lot more particulars about each time frame. You need more diligence than in a patent application because there's a serious issue at stake. Good Patent Interference proceeding attorneys know this. We won this Patent Interference proceeding.
Is there a follow-up to a motion?
Chris: Yes. One party will file a motion, and the other party will file what's called an opposition. Then the original party gets to file what's called a reply. It's a motion, then an opposition, then a reply.
How much does all that cost?
Chris: An opposition is going to be about the same cost as the original motion. The other side files their motion; you file your opposition against it. Then you have to detail quite a few things. It's kind of like a patent application appeal brief where there’s a long, structured format and you're bound by it. It's hard to cut a lot of corners, but we can still be reasonably efficient. An opposition is going to be about the cost of a primary motion, and then the reply is probably about half that. Maybe less if a reply is not needed or is targeted. My theory is, you should file a reply to get the last word in.
Are depositions needed?
Chris: They can be needed. Some of the red tape is to get testimony into the file to use in your motion, For this you need to have your inventor, or witness, sign a declaration, which is a sworn, written record that puts their statements in the file. Then there's a paragraph the patent office makes you include that says, "By signing this declaration, I realize I'm subject to being deposed." The primary testimony gets presented in written form, then the other side has the chance to depose that witness to try to cross reference and maybe find some inconsistencies . You only want to present the minimum number of witnesses needed in order to win the case. Every witness you present, even in written declaration format, is subject to a potential deposition.
This sounds a lot like litigation. Is it?
Chris: It is. There are descriptions that say a Patent Interference is a mini-litigation at the patent office level. I think that's fairly accurate. It's a little bit less involved because you can start your testimony with a written declaration, so it can be carefully crafted to get your point across. There's a lot of supporting documents as well. The depositions aren't a big part of it and there’s no live presentation. You're presenting your file in paper format.
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