Maiorana, P.C.

USPTO Patent Interference Practice

We won our second Patent Interference

This is very good news for our client.

This one was easier than the first one. One of the reasons is that the opposing attorneys were completely inexperienced on what to argue. Since they did not even make the proper arguments, there was literally no way they could win. The question on this one was how much work would we need to put in to the file to preserve our rights, and still win. We pushed the envelope a little bit by not filing every Legal Brief that was possible. The idea was that the other Legal Briefs that we did file were enough to win the case.

While two Patent Interference wins seems like a small number, it is really a big number compared with the total number of Patent Interferences that have been decided. By the serial numbers of the Patent Interferences, there were roughly 100 Patent Interferences declared between the first Patent Interference that we won Patent Interference that we won and the second Patent Interference that we won . Not all of those went through to a decision. Some get settled. I've not done the analytics, but even if they all had gone through to a final decision by the board, this would be a 2% contribution to all the Patent Interferences for the last five years. This is statistically significant.

The good news is that by filing less overall Legal Briefs, the overall cost was cut down considerably. Don't get me wrong, there is a lot of work that goes into a winning Patent Interference strategy. This is basically a litigation on paper, decided at the Patent Office. Testimony is presented through sworn affidavits. There is an opportunity for the opposing counsel to cross examine any declaration in a live deposition. Depositions do increase the cost for sure. However, by knowing the rules, and the tight windows for noticing people up, it's likely that an inexperienced Patent Attorney would miss the window for the deposition. It's also likely that they would not know the standards that need to be argued. Everything needs to relate back to the claim elements - or the Patent Interference Count. The standard is high. The board will not accept hand-waving arguments at all. So the burden of who must prove a certain fact is very important. I heard from a colleague that 90% of the time, the senior party wins a Patent Interference. I'm not sure if this is the exact number, but that makes sense.

In a Patent Interference, the briefs that are filed are called "motions". Each motion ultimately needs to be cross referenced to testimony that is backed by a factual showing. If the person presenting the testimony is an inventor, third-party corroboration is needed. This is a bit difficult in certain cases. But it does limit whether either side can simply say that "somebody told me this on the telephone". That won't fly in an Patent Interference. You'll need a email chain that can be authenticated.

Aside from the two wins, we had another Patent Derivation proceeding that we worked on. The case did not go to the board for a decision, but was settled early based on our efforts. In that case we settle the Patent Derivation issue that was lingering for a client for a very long time. They were very excited to get that finally resolved in a manner that was acceptable to their business goals. We consulted on two other cases that were attempting to provoke an Interference. In the big picture, it is still possible to provoke an Interference. The standard is fairly high though.

If you are an attorney that has a client that has been noticed up for an Interference, it is imperative that you get up to speed on all the rules very quickly. There are several notice items that need to be done right off the bat. If you are uncomfortable with your ability to get up to speed quickly, give us a call and we can discuss working as co-counsel. If you're an individual inventor, give us a call and we can discuss working on your file as a cost effective Patent Interference Attorney.

Book an appointment with one of our Patent Attorneys for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549.

  • Chris Maiorana
  • April 2020
[1] Not to be confused with a patent interference count.
[2] We are a short drive to the Elijah J. McCoy Midwest Regional U.S. Patent and Trademark Office in Detroit, Michigan.
Topics: Patent Interference Strategy, Cost Effective Patent Interference, Patent Interference Attorney, Patent Interference Count
Related: Patent Interference Practice Overview; Help With Patent Interferences; Patent Interference Practice

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