USPTO Patent Interference Practice Strategies

The requirements for requesting a patent interference with a pending application are: (1) formulating one or more patent interference counts, (2) presenting at least one patent claim corresponding to the proposed count or identifying at least one patent claim in its application that corresponds to the proposed count, (3) identifying the other application and, if known, a patent claim in the other application which corresponds to the proposed count, and (4) explaining why a patent interference should be declared. Patent Rule 1.604(a)   Rule 606 states that before “a patent interference is declared between a patent application and an unexpired patent, a patent examiner must determine that there is interfering subject matter patent claimed in the application and the patent which is patentable to the applicant subject to a judgment in the patent interference.” Thus, the explanation why a patent interference should be declared should at least allege that the patent claims in the application are patentable to the applicant, but for the potential interference.

The requirements for requesting a patent interference with an issued patent include: (1) identifying the patent, (2) presenting one or more patent interference counts, (3) identifying at least one patent claim in the patent corresponding to the proposed count, (4) presenting at least one patent claim corresponding to the proposed count or identifying at least one patent claim already pending in its application that corresponds to the proposed count, (5) if any patent claim of the patent or application identified as corresponding to the proposed count does not correspond exactly to the proposed count, explaining why each such patent claim corresponds to the proposed count, (6) applying the terms of any application patent claim identified as corresponding to the count, and not previously in the application to the disclosure of the application, and (7) explaining how the requirements of 35 U.S.C. 135(b) are met if the patent claim presented or identified in the patent client’s application as interfering were not present in the application until more than one year after the issue date of the patent. Patent Rule 1.607(a).

When the effective filing date of an applicant requesting a patent interference with a patent is later than the effective filing date of the target patent by no more than three months, Rule 608(a) requires the requestor to file a statement alleging that there is a basis upon which the applicant is entitled to a judgment relative to the patentee. When the effective filing date of a patent application in which a patent applicant requesting a patent interference with a patent is later than the effective filing date of the target patent by more than three months, Rule 608(b) requires the applicant requesting the patent interference to submit evidence and explanations demonstrating that applicant’s application is prima facie entitled to a judgment relative to the patent.

However, rule 608(b) states that “the patent examiner will consider the evidence and explanation only to the extent of determining whether a basis upon which the application would be entitled to a judgment relative to the patentee is alleged and, if a basis is alleged, a patent interference may be declared.”   Whereas, Patent Rule 1.617 (a) states that the administrative patent judge will review the evidence filed in connection with Patent Rule 608(b), and, if the administrative patent judge determines that the “evidence fails to show that the applicant is prima facie entitled to a judgment relative to the patentee, the administrative patent judge shall, concurrently with the notice declaring the patent interference, enter an order stating the reasons for the opinion and directing the applicant, within a time set in the order, to show cause why summary judgment should not be entered against the applicant.”

Patent Rule 1.617(b) also states that “additional evidence shall not be presented by the applicant or considered by the Board” in response the show cause order. In other words, if the applicant’s interference request alleges but does not make a prima facie case for a date of invention prior to the effective filing date of the target patent, the applicant will not be able to supplement that evidence and will be faced with a show cause order, most likely resulting in judgement against the applicant.  Accordingly, whenever a 608(b) showing is required, the showing must be sufficient so that the applicant is prima facie entitled to judgement relative to the patentee.

Recognizing a potential interference early on allows your patent client to act before certain options are foreclosed.  Failing to request a patent interference within one year of the issuance of the target patent bars an inventor from obtaining a patent interference and from obtaining patent claims defining substantially the same subject matter as patent claimed in the patent.  Under certain circumstances, failing to request a patent interference within one year of the publication of a patent application will also bar an inventor from obtaining both a patent interference and the patent claims in the published application.  Applications targeting a patent for a patent interference that are filed after the issuance of the target patent must make certain showings in the patent interference by a burden of clear and convincing evidence as opposed to a burden of the preponderance of the evidence.

Getting the competitor’s patent application involved in a patent interference before it can issue into a patent can be advantageous because, normally, no patent will issue from the target patent application until judicial review of the patent interference is terminated.  The duration of the interference and judicial review can be substantial.  Furthermore, a stay in litigation is more likely if a patent interference is procedurally advanced relative to the litigation than vice versa.  Finally, late recognition of problem patents increases the costs of designing, licensing, or abandoning the market.  Conversely, preventing a competitor from timely identifying the patent client’s patent applications increases the value of the patent client’s patent portfolio.

Patent Rule 1.658(c) defines the estoppel effect in the USPTO with respect to all issues that were or could have been raised in the patent interference.  This includes estoppel with respect to patent claims defining patentably indistinguishable inventions from a count, and to patent claims to subject matter commonly disclosed in any applications involved in the patent interference.

Issues decided in a patent interference proceeding may be accorded issue preclusion effect in subsequent litigation.  Patent Rule 1.657 defines the burden of proof as to date of invention to be on the party with the later effective filing date, and that the burden increases from preponderance of the evidence to clear and convincing evidence if the effective filing date of the application is after the effective filing date of the target patent, and that burden does not shift based upon submission of priority evidence.

If the patent client’s competitor is about to file a patent application on contested technology, or obtain a patent on that technology, the patent client should file a patent interference immediately.  As explained, the burden of proof on priority depends solely upon effective filing and issue dates, and pointedly does not depend upon evidence of inventive activity.

If the patent client identifies a published United States or PCT application (1) which designates the United States and (2) the patent claims of which cover or relate to the patent client’s technology, then the patent client should consider preserving its rights in view of 35 USC 135(b)(2).  135(b)(2) will bar the patent client from presenting patent claims to substantially the same subject matter as claimed in a published application when the patent client files such patent claims (1) more than one year after publication and (2) in any application filed after the date of the publication.  Therefore, the patent client should consider either copying patent claims from the published application in a previously filed 35 USC 111(a) or 35 USC 371 application or filing a new application and copying the patent claims in the newly filed application.

In addition, the patent client can present additional patent claims modeled after the published patent claims which exclude limitations for which the patent client arguably does not have support in their specification, exclude limitations for which the patent client arguably does not have an early priority date, and correct indefiniteness problems. This approach can allow the patent client to meet the 135(b) bar and also obtain allowable patent claims that are also interfering with the target patent claims.  Note that the patent attorney is obliged to notify the patent office of the target patent application and the fact that the patent attorney is copying patent claims from it, even if the target patent application is a PCT patent application in the PCT international stage.  This is because Patent Rule 1.604(b) states that the patent attorney must notify the patent office when the patent attorney presents a patent claim that the patent attorney knows “define[s] the same patentable invention patent claimed in a pending patent application of another,” and a PCT patent application has the same effect as a regular United States patent application for all purposes except 102(e) and 154(b), pursuant to 35 USC 374.  Thus, the notification requirement applies to copying of patent claims in a PCT patent application in the international stage.

Important issues to consider include (1) whether to attempt to provoke a patent interference and (2) whether to also attempt to promptly obtain issued patents on closely related but arguably non-interfering subject matter.  The important point is to identify these issues prior to taking action and to weigh the benefits and drawbacks before deciding to act.  The motivation for filing most patent interference requests is that the existence of another’s exclusive right to the target patent claims is unacceptable from a business perspective. Therefore, the most important goal of most of the parties requesting interferences is to obtain cancellation of the other party’s patent claims.

A patent interference request will result in a patent interference in about two years after the date the request for the patent interference is filed.  Therefore, a complete patent interference proceeding and its judicial review may take about five years. Most probably, post interference prosecution and issuance of a prevailing applicant’s patent application will take about a year.

Patent claims corresponding to the count should define obvious variations of the subject matter defined by the count.  The count is supposed to define subject matter that is non-obvious over the prior art. However, patent interference requests must include a propose count or counts. Often, the proposed counts are the same as the counts defined in the declaration of the patent interference. Moreover, a party requesting that the count be changed has the burden of the preponderance of the evidence to explain why the count should be changed.

The patent client has the possibility of influencing the outcome of the patent interference by what count or counts it proposes in its request for a patent interference, and what patent claims it presents prior to the patent interference.  The logical procedure to follow to propose a count is to determine the patent client’s relevant priority information, obtain what priority information the patent attorney can regarding the target patent application, such as the disclosure of any patent applications to which the target patent application patent claims priority, relevant press releases on the target company’s products, publications of the named inventors, and information on the employment histories of the named inventors, and propose a count (1) that the patent attorney believe to be non-obvious over the prior art and (2) that provides the highest probability that the patent client will have priority over the other party’s priority for the subject matter defined by that count.  In addition, the patent attorney should present in the patent interference request patent claims nearly identical to the proposed count.  This is at least because the existence of such patent claims may preclude an argument by your opponent in the patent interference why the count should be changed.

If the patent client loses the patent interference, it may end up with no patent, and Patent Rule 1.658(c) may bar it from any patent claims to any subject matter disclosed or obvious in view of the disclosure of the other patent applications (or patents) involved in the patent interference. In contrast, if the patent client does not provoke a patent interference, it may obtain patent claims dominating or subservient to the patent claims of the target patent application or patent, and these may be patent claims that the patent client would be precluded from obtaining if it pursued a patent interference. That should not happen since, theoretically, the patent client and the owner of the target patent application or patent should be entitled to the same patent claims in any case. However, interferences adduce additional evidence than exists in ex parte prosecution, decisions of the administrative patent judges on patentability and the scope of interfering subject matter may differ from those of ex parte patent examiners, and failure to either raise certain issues or carry the burden of proof on certain issues in a patent interference may all result in different outcomes in patent interferences than in corresponding ex parte prosecution.

If the patent client prevails in the patent interference, corresponding patent claims in the opponent’s patent application or patent will be canceled, and the patent client’s patent application will be entitled to an amount of term extension unless the term is limited by a terminal disclaimer.  In addition, issue preclusion may apply in a follow on infringement litigation by the patent client on its patent issuing from its patent application involved in the patent interference against the other party in the patent interference.  If the patent client has previously obtained patents with patent claims to closely related subject matter, the patent attorney may be forced to file in the patent client’s interference patent application a terminal disclaimer to moot a double patenting rejection, thereby losing any potential term extension that may be afforded by the AIPA due to the duration of the patent interference and subsequent judicial review. This is a factor to weigh when considering prosecution of related patent applications. In this regard, also keep in mind your rule 56 duty to provide information from the patent interference to the patent examiner examining any relevant patent application, whether the patent attorney win or lose the patent interference.

A majority of interference proceedings terminate prior to a decision on priority. However, priority is the ultimate issue, and the reasons why interferences terminate are logically related and dependent upon priority.  For example, a decision on motions that a party lacks support for its patent claims will result in termination of the patent interference via a judgement against that party.  However, lack of support implies that the party does not have priority for the subject matter defined by the count.  Likewise, parties settle or concede based upon factors including the likelihood of prevailing on priority.

Therefore, priority is an issue the patent attorney should be concerned with when requesting a patent interference.  Priority in a patent interference is awarded on a count by count basis.  The party losing priority with respect to a count will not be entitled to patent claims corresponding to that count, which are all patent claims that define the same patentable invention as the count.