IPO 12-7-04 Interference Basics

Total Page:16

File Type:pdf, Size:1020Kb

IPO 12-7-04 Interference Basics INTERFERENCE BASICS Raymond W. Green Brinks Hofer Gilson & Lione 3600 NBC Tower 455 North Cityfront Plaza Drive Chicago, IL 60611 312-321-4222 [email protected] www.usebrinks.com I. What to Do to Get Into an Interference Proceeding. A. Decide if you really want to do this. B. Be prepared to spend some money. C. Decide if you are going to do it yourself, or engage interference counsel. D. Present claims in your application that are patentable subject to the interference proceeding, and unpatentable over your opponent’s patent or application if you lose the interference proceeding; and over which your opponent’s claims are unpatentable if you win the interference proceeding. 1. It is not necessary to “copy” your opponent’s claims. You can and should, if you have support for them. 2. Beware of the one-year bar of 35 USC 135(b)(1)1 re patent claims. 3. Beware of the one-year bar of 35 USC 135(b)(2)2 re patent application claims. 4. You need to tell the ex parte examiner when you copy or substantially copy claims.3 5. You will probably4 eventually need to comply with Rule 202(a).5 6. If you are an applicant who is junior in constructive reduction to practice date6, you must file proofs under Rule 202(d), making out a prima facie case of priority with respect to your opponent’s constructive reduction to practice date. You probably will not get to supplement your showing, after your proofs are considered by an Administrative Patent Judge.7 II. What to Do if you Expect an Interference Proceeding. A. Educate yourself or retain interference counsel. B. Learn who your assignee and real party in interest are. C. Investigate who made the invention, and when and where. D. Correct inventorship and record assignments and powers of attorney, if necessary. E. Perfect any claims to foreign priority by filing certified copies and translations. F. Change correspondence address if desirable. G. Obtain and study copies of your files, and your opponents’ files, if available. H. Search for prior art if you are so inclined. There probably will not be time to do so later, and priority determination of invalid claims is wasteful of time and money to you, your opponent, and the USPTO. I. Make relevant prior art of record, if you are an applicant. Copyright © Raymond W. Green, Brinks Hofer Gilson & Lione, 2004. 1 III. What to Expect if an Interference Proceeding is Declared. A. Whether to institute an interference proceeding, and the timing of the declaration, are at the discretion of the ex parte examiner (or possibly the Interference Specialist or Technical Center Director), and of the Administrative Patent Judge. You can’t “file an interference” no matter how worthy your cause. B. A lengthy “Standing Order”.8 C. A fast-moving pace and front-loaded effort, see section IV, below. D. Stipulated extensions of intermediate time periods. E. No extensions of final time periods. F. The Federal Rules of Civil Procedure do not apply and discovery is usually not available, except for the mandatory discovery required by Priority Statements. G. No dismissal without prejudice or suspension. H. The closest thing to post-grant opposition that exists in the USPTO. I. Final decision in about two years after declaration, usually less. Many interference proceedings are settled, and many are terminated as a result of the decision on preliminary motions, or by agreement that a piece of prior art anticipates the interfering subject matter.9 J. Settlement discussions at least about three times during the interference proceeding. You will have to record any agreement reached in contemplation of settling an interference proceeding.10 IV. What you Need to be Able to Do Quickly After Declaration. A. Identify your assignee, and your real party or parties in interest, who may not be the same as your assignee. (Two weeks after the Declaration of Interference.) B. Identify your lead counsel and backup lead counsel. (Two weeks after the Declaration of Interference.) This may require recording assignments and powers of attorney. C. Identify related applications and proceedings, and provide a clean copy of your current claims. (Two weeks after the Declaration of Interference.) D. Request copies of PTO files. (Two weeks after the Declaration of Interference.) E. Provide an annotated copy of your claims. (Four weeks after the Declaration of Interference.) This requires understanding the invention. F. Disclaim any patent claims known to be invalid.11 G. Provide a list of intended preliminary and other motions. (Two days before the conference call, see below.) H. Participate in a conference call. (About 10 weeks after the Declaration of Interference. The exact date is given in the Declaration of Interference.) I. Provide a “Priority Statement” of your dates of invention. (Rule 204.) (Three Months after the Declaration of Interference.) Note that inventive activities may not need to have occurred in the United States.12 The requirement in Rule 204 for corroborated dates is new. 1. Set forth “all bases on which the party intends to establish its entitlement to judgment on priority.” 2. State dates and locations of the earliest corroborated conception and corroborated actual reduction to practice, and the earliest corroborated date on which diligence began. 2 3. Provide a copy of earliest document on which you will rely to prove conception. J. You may also be required to provide other items, depending on the type of case and who the Administrative Patent Judge is. K. If both sides have the same real party in interest, you will have to decide who the first inventor is. V. What usually comes next – The Motion Phase. A. Motions (limited to 25 pages each), declarations and exhibits. B. Oppositions (limited to 25 pages each), declarations and exhibits. C. Replies (limited to 10 pages each), declarations and exhibits. D. All alleged material facts need to be corroborated by non-inventor testimony, usually in the form of declarations. All declarations are subject to cross-examination. E. Motions to suppress or exclude evidence, oppositions and replies. F. Oral Hearing before three-judge panel. The USPTO does not provide Court Reporters. The parties should do so. G. Decision on Motions. H. There is no motion phase if neither party says it intends to file any motions, or if both sides have the same real party in interest. One or more motions may be given preferred status, to be briefed and decided before the general motion phase. Some intended motions may be decided without written motions, and the parties may be instructed not to file certain intended motions. VI. What may come next, if the Interference Proceeding is Still Around – The Priority Phase. A. Junior party briefs, declarations and exhibits. B. Senior party briefs, declarations and exhibits. C. Opposition briefs, declarations and exhibits. D. Reply briefs, declarations and exhibits. E. Motions to suppress or exclude evidence, oppositions and replies. F. Oral Hearing before three-judge panel. G. Decision on Priority. VII. What may come next, if Either Party is Dissatisfied Enough – Court Proceedings. A. 35 USC 146 Appeal to a proper U.S. District Court, where the Federal Rules of Civil Procedure apply and discovery is available. B. Appeal to the Federal Circuit, with or without a prior 35 USC 146 action. C. If one party wants an appeal to the Federal Circuit, and one party wants a 35 USC 146 action in a U.S. District Court, the 35 USC 146 action proceeds and the Federal Circuit appeal is dismissed.13 A new Federal Circuit appeal can be had after the 35 USC 146 action. 1 “A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.” While the claims have to be presented within a year, compliance with formalities such as those in Rule 202(a) can be delayed until later. 3 2 “A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.” This provision applies only to applications filed under 35 USC 111(a) on or after November 29, 2000, and applications complying with 35 USC 371 that resulted from international applications filed on or after November 29, 2000. Note also that, unlike the 35 USC 135(b)(1) bar with respect to copied patent claims, the 35 USC 135(b)(2) bar only applies to a “[copying] application filed after the [target] application is published”. 3 37 CFR 10.23(c)(7), adopted effective September 13, 2004, 69 FR at 50003. See Appendix A. 4 If the interference proceeding is with another application, the Examiner might proceed under Rule 202(c) without requiring compliance with Rule 202(a). It is therefore not safe to delay compliance in order to delay the declaration of the interference proceeding. It is not likely that you will get an interference proceeding declared, however, unless you comply. 5 Citations to Rules are to sections of the new Rules in 37 CFR Part 41 promulgated August 12, 2004, effective September 13, 2004, 69 FR 49959-50020. A copy is attached as Appendix A. 37 CFR Part 41, Practice Before the Board of Patent Appeals and Interferences, Subpart A, General Provisions; Subpart D, Contested Cases; and Subpart E, Patent Interferences, apply to interference proceedings.
Recommended publications
  • Patent Searching Glossary (PDF)
    PATENT SEARCHING GLOSSARY Compiled by Carey Lening Graduate Research Assistant – Professor Jon R. Cavicchi Franklin Pierce Law Center This compilation is based on glossaries found in the bibliography of this work. A Abandon: To relinquish (explicitly or implicitly) a potential patent right. An application becomes abandoned by failure to respond to an office action within the required time, or by formal (“express”) declaration. A patent right can also be abandoned by simple inaction. Abandoned Invention: An unexploited invention on which no patent application is filed for a long, unexplained time during which others may have entered the field. Abandonment of Contest: In interference cases, the concession of priority or abandonment of the invention by a party, with the written consent of the assignee when an assignment has been made. Abandonment of Invention: To relinquish rights in an invention. In the U.S., an invention is considered to be abandoned, if within a reasonable time after the invention is completed, no actions are taken to make the invention publicly known. MPEP 2134, MPEP 2138.03 Abandonment of Patent Application: To relinquish, either by express abandonment or by inaction, a patent application. Abandonment by inaction typically involves failure to take a required action (e.g., filing an incomplete response or not paying a fee) during the statutory period for taking the action. A U.S. patent application that was unavoidably or unintentionally abandoned can be revived by petition. When a device is abandoned, it is returned to the public domain. See: Petition to Revive, Public Domain. MPEP 711 Abridgement: A summary of the disclosure of a patent specification, formerly written by the U.K.
    [Show full text]
  • Sauer, Inc. V. Kanzaki Kokyukoki
    INTERFERENCE TRIAL SECTION PRECEDENTIAL OPINION The opinion in support of the decision being entered today is binding precedent of the Interference Trial Section of the Board of Patent Appeals and Interferences. Paper No. 147 Filed by: Trial Section Motions Panel Box Interference Washington, D.C. 20231 Tel: 703-308-9797 Fax: 703-305-0942 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ JOSEPH E. LOUIS Junior Party (Sauer Inc.) (Patent No. 5,513,717) v. HIDEAKI OKADA and SHUSUKE NEMOTO Senior Party (Kanzaki Kokyukoki Mfg. Co., Ltd.) (Application 08/818,964) _______________ Patent Interference No. 104,311 _______________ BEFORE STONER, Chief Administrative Patent Judge, McKELVEY, Senior Administrative Patent Judge, and SCHAFER, LEE, TORCZON, GARDNER-LANE, and MEDLEY, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON SAUER’S MOTIONS 6 AND 7 Interference No. 104,311 Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd. A. Background This interference was declared on February 16, 2000, and involves (1) Sauer Inc.’s patent 5,513,717 naming Joseph E. Louis as inventor (hereinafter Sauer) versus (2) Kanzaki Kokyukoki Mfg. Co., Ltd.'s application 08/818,964 naming Hideaki Okada and Shusuke Nemoto as inventors (hereinafter Kanzaki). Sauer filed Motion 6, under 37 CFR § 1.635/1.642, seeking to add Patent No. 5,473,964, also owned by Kanzaki, to this interference. Sauer further filed Motion 7, under 37 CFR § 1.635/1.642, to add patent No. 5,950,500, also owned by Kanzaki, to this interference. In JD v. SH, a trial section precedential decision (www.uspto.gov/web/offices/dcom/bpai/its/104044.pdf), it was held that the Board would not add a patent to an ongoing interference where the opposing party is involved in the interference only on the basis of patents and not applications.
    [Show full text]
  • Strategies for Preparing for an Interference
    Reprints available online at: http://www.paznet.com/neifeld/advidx.html Copyright -Richard A. Neifeld Strategies For Preparing for an Interference Richard A. Neifeld Neifeld IP Law, PC, 2001 Jefferson Davis Highway, Suite 1001 Arlington, VA 22202 Tel: 703-415-0012 Email: [email protected] www.Neifeld.com Reprints available online at: http://www.paznet.com/neifeld/advidx.html Copyright -Richard A. Neifeld Table of Contents I. The Benefits of Timely Recognizing a Potential Interference ...................1 II. Obtain and Use Competitive Intelligence ...................................3 III. Patent Procedures Relating to Competitive Intelligence .......................4 A. Limit Access to Your Client's Applications ............................4 B Obtain Information Regarding Competitor's Patent Applications .........5 IV. The Law Relevant to Requesting an Interference ............................5 A. 35 USC 102(g)(1) - Procedural Limitations on Secret Prior Art ..........6 B. 35 USC 135(a) - Criteria for an Interference ..........................7 C. 35 USC 135(b) - The Statutory Bar ..................................8 D. 37 CFR 1.604, 1.607, 1.608, and 1.617, and Requesting an Interference ....9 E. 37 CFR 1.658(c) Estoppel, Interference Estoppel, and Issue Preclusion ...11 1. In the USPTO .............................................11 2. In Subsequent Litigation ....................................12 V. File Early .............................................................13 VI. Respond to Published United States or PCT Applications ....................13 VII. Consider Splitting Subject Matter Between Applications in View of Temporal Delays and Interference Estoppel .........................................16 A. Probable Time Line for an Interference .............................16 B. Predicting the Outcome and Consequences of the Outcome .............16 -ii- Reprints available online at: http://www.paznet.com/neifeld/advidx.html Copyright -Richard A. Neifeld 1. Consequences of Losing the Interference ......................16 2.
    [Show full text]
  • Idenix Seen As Unlikely to Prevail Against Gilead In
    Idenix seen as unlikely to prevail against Gilead in HCV patent interference – attorneys BioPharm Insight Elapsed time to demonstrate diligence, reduction to practice a major hurdle Gilead’s senior party status likely to trump all Idenix must submit brief on priority by 26 April, failure will lead to Gilead’s win Idenix Pharmaceuticals (NASDAQ:IDIX) faces an uphill battle to sufficiently demonstrate enablement in its ongoing patent interference against Gilead Sciences (NASDAQ:GILD) regarding their respective hepatitis C (HCV) intellectual property, attorneys said. Idenix is ultimately unlikely to prevail on the interference, they noted. On 22 March 2013, Idenix announced the United States Patent and Trademark Office Patent Trial and Appeal Board (USPTO) issued a decision in the first phase of ongoing interference concerning Idenix’s patent applications (U.S. Patent Application 12/131,868) and an issued Gilead patent (U.S. Patent 7,429,572) that covers certain 2'-methyl- 2'-fluoro nucleoside compounds useful in the treatment of HCV. Idenix was determined to have a later application filing than Gilead, thus designating the former as the “junior party” and the latter as the “senior party.” The second phase of the interference is expected to commence in 2Q13 and will determine which party was first to invent. The party who is deemed first to invent ultimately prevails in the interference. “The decision from the Board of Patent Appeals and Interferences validates Gilead’s perspective that we were the first to invent the compounds involved in the interference, as described in the ‘572 patent,” a Gilead spokesperson commented. Idenix declined to comment.
    [Show full text]
  • Mpep-1400.Pdf
    Chapter 1400 Correction of Patents 1400.01 Introduction 1430 Reissue Files Open to the Public and, 1401 Reissue Notice of Filing Reissue Announced in, 1402 Grounds for Filing Of®cial Gazette 1403 Diligence in Filing 1431 [Reserved] 1404 Submission of Papers Where Reissue -1439 Patent Is in Litigation 1440 Examination of Reissue Application 1405 Reissue and Patent Term 1441 Two-Month Delay Period 1406 Citation and Consideration of 1441.01 Protest and Pre-issuance Submission References Cited in Original Patent in Reissue Applications 1407 [Reserved] 1442 Special Status -1409 1442.01 Litigation-Related or PTAB 1410 Content of Reissue Application Trial-Related Reissues 1410.01 Reissue Applicant and Inventor©s Oath 1442.02 Concurrent Litigation or Trial Before or Declaration the Patent Trial and Appeal Board 1410.02 Assignee Consent to the Reissue 1442.03 Litigation Stayed 1411 Form of Speci®cation 1442.04 Litigation Involving Patent 1411.01 Certi®cate of Correction or 1442.05 Court Ordered Filing of Reissue Disclaimer in Original Patent Application 1411.02 New Matter 1443 Initial Examiner Review 1412 Content of Claims 1444 Review of Reissue Oath/Declaration 1412.01 Reissue Claims Must Be for Same 1445 Reissue Application Examined in Same General Invention Manner as Original Application 1412.02 Recapture of Canceled Subject Matter 1446 [Reserved] 1412.03 Broadening Reissue Claims -1447 1412.04 Correction of Inventorship By Reissue 1448 Fraud, Inequitable Conduct, or Duty 1412.05 Correction of Inventorship in a of Disclosure Issues Broadening
    [Show full text]
  • The Effect of the Interference Rule Revisions Enacted in Response to Nafta and Gatt
    *19 Copyright © 1995 by the PTC Research Foundation of Franklin Pierce Law IDEA: The Journal of Law and Technology 1995 THE EFFECT OF THE INTERFERENCE RULE REVISIONS ENACTED IN RESPONSE TO NAFTA AND GATT Stephen M. Bodenheimer, Jr. [n.a1] Edward J. Kessler [n.a1] Guy R. Gosnell [n.a1] I. INTRODUCTION On December 8, 1993, 35 U.S.C. § 104 [n.1] was amended to provide that the date of invention could be proved by reliance on activities occurring in countries that are bound by the North American Free Trade Agreement (NAFTA). [n.2] On September 27, 1994, Congress passed the General Agreement on Tariffs and Trade (GATT) which becomes effective on January 1, 1996. To implement GATT, § 104 has been further amended to provide that the date of a claimed invention in a patent application filed on or after January 1, 1996, can be proved by reliance on activities occurring not just in the United States, Canada and Mexico, but also on activities occurring in any World Trade Organization (WTO) member country. [n.3] Consequently, several rules of patent practice, particularly the rules that control the conduct of interferences, have been significantly revised to accommodate the amendments to § 104. [n.4] Accordingly, this article reviews the revisions to the interference rules and focuses on the effect that these revisions will have on foreign *20 inventors. Although the revisions of the interference rules reviewed by this article and the analysis of the effect of the rule revisions on foreign inventors is presently applicable only to inventive activities in Canada and Mexico, the rule revisions and this analysis will also be applicable after January 1, 1996, to activities occurring in each of the WTO member countries.
    [Show full text]
  • COLLABO INNOVATIONS, INC., Petitioner, V
    No. 19-601 IN THE Supreme Court of the United States COLLABO INNOVATIONS, INC., Petitioner, v. SONY CORPORATION, ET AL. Respondents. On Petition for Writ of Certiorari to the United States Court of Appeals for the Federal Circuit BRIEF IN OPPOSITION JOHN C. O’QUINN ANDREW S. BALUCH MEGAN M. WOLD Counsel of Record KIRKLAND & ELLIS LLP SMITH BALUCH LLP 655 Fifteenth Street, NW 700 Pennsylvania Avenue, SE Washington, DC 20005 Suite 2060 (202) 879-5000 Washington, DC 20003 (202) 880-2397 MATTHEW A. SMITH [email protected] ELIZABETH A. LAUGHTON SMITH BALUCH LLP 1100 Alma Street Suite 109 Menlo Park, CA 94025 (202) 669-6207 Counsel for Respondent February 7, 2020 i QUESTIONS PRESENTED In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011) (“AIA”) and created a prospective procedural mechanism for challenging issued patents called inter partes review. Two years later, Petitioner Collabo Innovations, Inc. acquired U.S. Patent 5,952,714 (the “’714 patent”) and then asserted it against Sony Corporation. Sony responded by asking the U.S. Patent & Trademark Office (“PTO”) to institute inter partes review of the ’714 patent, applying the procedural mechanism as the AIA allowed. Collabo did not argue that the PTO should not institute or render a final written decision on the grounds that applying inter partes review to its patent would be unconstitutional. The PTO instituted inter partes review and concluded that, under the substantive patentability standards applicable at the time of the patent’s issuance in 1999, the ’714 patent’s claims were not patentable and should never have issued.
    [Show full text]
  • United States Court of Appeals for the Federal Circuit
    02-1610 Page 1 of 11 United States Court of Appeals for the Federal Circuit 02-1610 (Interference No. 104,733) ELI LILLY & CO., Appellant, v. BOARD OF REGENTS OF THE UNIVERSITY OF WASHINGTON, Appellee. Charles E. Lipsey , Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for appellant. With him on the brief were Kenneth J. Meyers and Deborah Katz. Of counsel on the brief were Brian P. Barrett and Steven P. Caltrider, Eli Lilly and Company, of Indianapolis, Indiana. William F. Lee , Hale and Dorr LLP, of Boston, Massachusetts, argued for appellee. With him on the brief were Lisa J. Pirozzolo, of Boston, Massachusetts; and James L. Quarles III and Henry N. Wixon, of Washington, DC. Of counsel were Maria L. Maebius and William G. McElwain, of Washington, DC. John M. Whealan, Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, for amicus United States Patent and Trademark Office. With him on the brief were James A. Toupin, General Counsel; and Stephen Walsh and Henry G. Sawtelle , Associate Solicitors. Appealed from: United States Patent and Trademark Office Board of Patent Appeals and Interferences http://finweb1/Library/CAFC/02-1610.htm 7/8/2003 02-1610 Page 2 of 11 United States Court of Appeals for the Federal Circuit 02-1610 (Interference No. 104,733) ELI LILLY & CO. Appellant, v. BOARD OF REGENTS OF THE UNIVERSITY OF WASHINGTON, Appellee. ___________________ DECIDED: July 3, 2003 ___________________ Before MICHEL, LOURIE, and GAJARSA, Circuit Judges. Opinion for the court filed by Circuit Judge GAJARSA. Circuit Judge LOURIE dissents.
    [Show full text]
  • Judicial Review and the Patent System
    Exceptional, After All and After Oil States: Judicial Review and the Patent System Michael S. Greve CSAS Working Paper 17-005 Perspectives on the PTAB: The New Role of the Administrative State in the Innovation Economy, November 9, 2017 Abstract The U.S. Supreme Court’s seminal 2018 decision in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC appears to mark the end of “patent exceptionalism”—that is, the notion that patent law and administration (should) remain at variance with the precepts of general administrative law. The petitioners contended that invention patents are “private rights” that, under the Constitution, can be canceled only by Article III courts, not administratively. The Court’s unequivocal rejection of that position removed any lingering constitutional cloud over the Patent and Trademark Office’s (PTO) administrative patent review and reexamination procedures under the 2011 America Invents Act. However, the statutory judicial review regime of the Patent Act still departs from general administrative law. Parallel to an APA-conforming provision for appellate judicial review, the Patent Act permits disappointed patent applicants to contest adverse administrative decisions by way of an original, de novo action in U.S. district court. The relevant provision, Section 145 of the Patent Act, is wholly incompatible with administrative-law precepts of appellate (deferential, on- the-record) judicial review. Dating all the way back to the 1836 Patent Act, it is a statutory remnant of Marbury’s near-forgotten world of private rights and separated powers. This Article chronicles the strange survival of Section 145 and explores its present-day, post-Oil States implications.
    [Show full text]
  • Reduction to Practice and Summary Judgment During Patent Priority Disputes
    Washington Law Review Volume 72 Number 4 Symposium: Indian Law into the Twenty-First Century 10-1-1997 When Is Enough Enough? Reduction to Practice and Summary Judgment During Patent Priority Disputes R. Douglas Bradley Follow this and additional works at: https://digitalcommons.law.uw.edu/wlr Part of the Intellectual Property Law Commons Recommended Citation R. D. Bradley, Notes and Comments, When Is Enough Enough? Reduction to Practice and Summary Judgment During Patent Priority Disputes, 72 Wash. L. Rev. 1109 (1997). Available at: https://digitalcommons.law.uw.edu/wlr/vol72/iss4/7 This Notes and Comments is brought to you for free and open access by the Law Reviews and Journals at UW Law Digital Commons. It has been accepted for inclusion in Washington Law Review by an authorized editor of UW Law Digital Commons. For more information, please contact [email protected]. Copyright O 1997 by Washington Law Review Association WHEN IS ENOUGH ENOUGH? REDUCTION TO PRACTICE AND SUMMARY JUDGMENT DURING PATENT PRIORITY DISPUTES R. Douglas Bradley, Ph.D. Abstract. This Note examines the current U.S. Patent and Trademark Office standards for determining patent priority in an interference proceeding. In particular, this Note reviews and criticizes the procedural rules governing the implementation of summary judgment in an interference. In Schendel v. Curtis, the U.S. Court of Appeals for the Federal Circuit had the opportunity to articulate a clear analytical framework to guide Administrative Patent Judges in the determination of what experimental evidence, and how much of it, a party must present to establish a prima facie showing of reduction to practice.
    [Show full text]
  • Reexamination Practice with Concurrent District Court Litigation Or Section 337 USITC Investigations
    The Sedona Conference Journal Volume 11 2010 Reexamination Practice with Concurrent District Court Litigation or Section 337 USITC Investigations Robert Greene Sterne, Jon E. Wright, Lori A Gordon & Byron L. Pickard Recommended Citation: Robert Greene Sterne et al., Reexamination Practice with Concurrent District Court Litigation or Section 337 USITC Investigations, 11 SEDONA CONF. J. 1 (2010). Copyright 2010, The Sedona Conference Copyright 2010, Sterne, Kessler, Goldstein & Fox, P.L.L.C. For this and additional publications see: https://thesedonaconference.org/publications 2010 THE SEDONA CONFERENCE JOURNAL ®1 REEXAMINATION PRACTICE WITH CONCURRENT DISTRICT COURT LITIGATION OR SECTION 337 USITC INVESTIGATIONS Robert Greene Sterne, Jon E. Wright, Lori A. Gordon & Byron L. Pickar d 1 Sterne, Kessler, Goldstein & Fox, P.L.L.C. Washington, DC AUTHORS ’ N OTE Patent reexamination was first selected as a topic for presentation at The Sedona Conference® on Patent Litigation in 2006. Version 1 of this paper was first published as part of that conference. The Sedona Conference’s® on Patent Litigation in 2007, 2008 and 2009 each addressed reexamination and concurrent patent litigation, and subsequent versions of this paper accompanied those Sedona dialogues. Other versions accompanied presentations made at ACPC, IPO and PLI Conferences. Now in Version XI, it will accompany the Sedona dialogue on this topic that will take place on October 21, 2010, at the Sedona Patent Litigation Conference XI (2010). 2 In all versions, the authors address current procedure, process, and cutting-edge topics in reexamination practice and concurrent litigation. This paper subscribes to a neutral Swiss approach of presenting all sides of an issue and does not advocate for any particular view so that discussion may ensue.
    [Show full text]
  • America Invents Act Changes Major Changes to Improve the U.S
    America Invents Act Changes www.finnegan.com major changes to improve the u.s. patent system The America Invents Act (AIA) became law on September 16, 2011, making sweeping changes to the U.S. patent system. The most significant changes were implemented over a period of 18 months. “first-to-invent” to a “first-inventor-to-file” system The AIA switched the U.S. patent system from a “first-to- invent” to a “first-inventor-to-file” system on March 16, 2013, aligning the United States more closely with existing patent regimes around the world. Under the new system, the effective filing date of a patent application—instead of the date of invention—determines who wins the race to patent an invention. The effective filing date of an application will also determine whether a reference, such as a published article, may be considered prior art against that application. Under the “first-inventor-to-file” provisions of the AIA, an applicant can no longer rely on an earlier invention date to argue that a reference is not prior art. The AIA also redefines the types of prior art acts that may be AIA used to reject a patent application. For example, under America Invents Act pre-AIA law, a public use or sale of a claimed invention will act as prior art if it occurred in the United States. Under the FITF AIA, a public use or sale anywhere in the world will act as prior art. First-Inventor-to-File The “first-inventor-to-file” and related provisions of the USPTO AIA apply to any patent application with at least one claim U.S.
    [Show full text]