1	Patent Interferences – Recent Developments By R. Danny Huntington Burns, Doane, Swecker & Mathis, L.L.P. Alexandria, Virginia
2	Historical Context “Interferences are the last bastion of form over substance in the United States.” Procedurally complex A limited number of Administrative Patent Judges with virtually unlimited power to proceed procedurally as they see fit Rules which were drafted to codify procedures which were in place prior to the Federal Rules of Civil Procedure and the Federal Rules of Evidence
3	Historical Context (cont.) Federal Rules of Evidence apply in interferences Federal Rules of Civil Procedure do not Until 1998, interferences sometimes dragged on for years In 1998, the Trial Section was created APJs with prior experience in the courts, many from the Solicitor’s Office
4	Interference Forms Standing Order created to standardize procedures Forms for Motions Phase and Priority Phase http://www.uspto.gov/web/offices/dcom/bpai/itsformnew2003May.htm Notice Declaring Interference Standing Order Order - Setting Times for Preliminary Motions and Statements Order - Setting Times for Priority Phase
5	Pre-screening Pre-screening of cases to weed out those where an interference should not be declared Interference Practice Specialists http://www.uspto.gov/web/offices/dcom/bpai/IPS-list.htm Interference Initial Memorandum http://www.uspto.gov/web/offices/dcom/bpai/PTO-850.htm
6	Pre-screening (cont.) After Interference Practice Specialist has reviewed case with the examiner and is satisfied with the status, a meeting with an APJ is held APJ may indicate: that the case is ready for an interference, that further information is needed, that certain rejections should be made, or that an interference is not appropriate
7	Interference Status Can see whether an interference has been requested or declared for issued patents http://www.uspto.gov/web/offices/pac/607d/index.html Listing of patents for which a notice under 37 CFR 1.607(d) has been mailed since January 1, 1998 A spreadsheet appears at the bottom of that page that provides additional information about the status of the interferences corresponding to the listed patents.
8	After Declaration Two stages, each lasting about a year Preliminary Motions List of Motions within about six weeks Telephone conference with the APJ two business days later Preliminary Motions about four months from declaration Responsive motions about one month later Oppositions about six weeks later Replies about six weeks later
9	After Declaration (cont.) Preliminary Motions (cont.) Motions to Suppress and Request for Hearing Oppositions to Motions to Suppress Replies to Oppositions Filing of Record at about nine months from date interference is declared Hearing about a month later Decision on Preliminary Motions
10	After Declaration (cont.) Second Stage Priority Testimony Nine-Month Schedule Junior Party goes first Direct Testimony by Declaration Oral Cross-Examination Filing of Record Final Hearing Decision (about one year after Decision on Preliminary Motions)
11	Trial Section Decisions Can access Trial Section Decisions on website http://www.uspto.gov/web/offices/dcom/bpai/its.htm Can use Google to search opinions even though in .pdf format Most decisions are not precedential, but valuable for procedural aspects
12	Threshold Preliminary Motions No Interference-in-Fact Two-way Obviousness Failure to Comply with 35 USC 135(b) Failure to copy claims of issued patent within one year of issuance Failure to copy claims of published application within one year of issuance Lack of Written Description (?)
13	Interference Estoppel New 35 USC 102(g)(1) “A person shall be entitled to a patent unless … during the course of an interference conducted under 135 or section 291, another inventor therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed.”
14	Interference Estoppel (cont.) Old 102(g), now (g)(2) “A person shall be entitled to a patent unless … before such person’s invention thereof the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.”
15	Interference Estoppel (cont.) TRIPs Agreement provided only that patents shall be available and enforceable without regard to where the invention was made. It did not require that a party should be able to use the invention as prior art against another party. Thus, only way to make inventions outside the US into prior art is by an interference.
16	Interference Estoppel (cont.) Can prove acts of invention outside the US in WTO countries after 1 January 1996 and make them prior art. Companies with research facilities outside the US are starting interferences, and publication of applications makes it easier to do so.
17	Copying Claims Old 35 USC 135(b), now (b)(1) Must copy claims of an issued patent within one year or barred New 135(b)(2) Must copy published claims within one year of publication if application not filed until after claims are published
18	Record Keeping “Rule of Reason” means you are looking for consistency Document retention – hot topic after GATT Notebooks are hearsay, so only evidence of conception, not reduction to practice or diligence
19	Record Keeping (cont.) Hierarchy - from notarized documents down to oral testimony not supported by documents Make record keeping easy Standard notebook instructions are typically too complicated
20	Record Keeping (cont.) Computer records present special challenges Technology drift