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.