As a comprehensive intellectual property law firm, Knobbe, Martens, Olson & Bear, LLP is uniquely positioned to assist its clients in controversies regarding the award of patent rights. While most of the world awards a patent to the first applicant to file a patent application, the United States is unique with its “first to invent” standard for granting a patent. When different applicants apply to patent the same invention, the resulting priority contest between two patent applications (or between a patent application and an already issued patent) is termed a “patent interference”. These patent priority contests, which generally also include patentability determinations, are waged before the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences. The Board’s Trial Section, consisting of a group of specialized Administrative Patent Judges (“APJs”) with technical backgrounds, adjudicates the disputes in much the same way a federal District Court would.

Patent interferences provide a unique forum for conducting inter partes patent disputes when compared to district court litigation. For example, in interferences, patent claims are given their “broadest reasonable interpretation”, the burden of proof for demonstrating unpatentability is by a “preponderance of the evidence”, and the decision-makers (typically a panel of three APJs) are technically trained. In addition, patent interferences are normally scheduled to conclude two years after commencement, are usually less discovery-intensive, and can therefore be less costly.

Patent interferences mirror district court litigation in many ways, including discovery proceedings (incorporating witness cross-examinations or depositions), evidentiary issues, and specialized procedural rules. Knobbe Martens has an active interference practice, with attorneys involved in all aspects of preparing for and engaging in patent interferences before the Board. Knobbe Martens’ attorneys routinely develop prosecution strategy with their clients with an eye toward attempting to invoke, or avoid, the Board’s declaration of an interference. Knobbe Martens’ attorneys often lay the groundwork for a successful interference long before an interference is declared.

Knobbe Martens’ attorneys are also well versed in conducting a patent interference once declared, including both motion practice (the first phase of an interference), as well as priority contests (the second phase of an interference). By establishing an interference team for each case, Knobbe Martens integrates vitally important litigation skills with critical and specialized technical expertise. Knobbe Martens also has a dedicated staff of paralegals who are specially trained in the unique procedural rules governing patent interferences. From initial interference strategy to final hearing, Knobbe Martens is well equipped and uniquely qualified to represent its clients before the Board’s Trial Section.

Additional Information

For more information about interferences, please contact Salima Merani, Ph.D.