SKGF Services
Interferences
Interferences are a fact of life in our first-to-invent system for anyone who has a continuing research and development program, and who files patent applications in the U.S. This is especially the case in high technology areas such as biotechnology and electronics, although it is by no means limited to these areas. We have seen interferences in all areas of technology, although–as confirmed by PTO statistics–with a noticeable increase in the last few years in the area of biotechnology.
Competent and cost conscious legal representation in this complex area of patent law requires a keen understanding of the technology, the substantive law of interferences and –quite critically– interference procedure. We have successfully handled dozens of interferences, and therefore offer a cost effective, seasoned and knowledgeable team to handle interferences when they arise.
Our experience runs the gamut from pre-declaration activities to successful appeals to the Federal Circuit. We are experienced in all phases of the practice, including the copying of claims, motions, count formation, testimony period, depositions, corroborated proofs, etc., as well as final hearings before the Board and appeals to the court.
We have represented U.S. and foreign clients in two-party and multiparty interferences and have acted on behalf of either junior or senior parties. We have successfully represented patentees in defending against post issuance interferences and also have successfully represented applicants against both patentees and other applicants.
When an interference is declared, we normally create a team comprised of a director and one or more associates, as well as one or more paralegals. We assure director involvement in all interferences. In all instances, a director with many years of interference experience will be involved in supervising interference and/or settlement strategy.
Results
Pre Interference Procedures
We have extensive practice in counseling clients on various interference issues that precede the declaration of an interference. For example, we have prepared and filed many requests for interference and have copied claims from issued United States patents, including filing reissue applications of our clients’ issued U.S. patents and provoking interferences with the issued patents of opponents during the reissue process.
We have experience prosecuting applications that present interference issues before the Examiner. In several cases we have prosecuted these applications to issuance while successfully avoiding an interference. We also have experience settling interference issues prior to declaration of an interference.
Another pre-interference activity that we recommend to our high technology clients is to watch for the publication of patent applications of our clients’ competitors. In this manner, we can be prepared and favorably positioned in the event an interference may—or needs to—be declared in the future.
Use of the Expanded Jurisdiction of The Board
We have taken full advantage of the expanded jurisdiction of the Board of Patent Appeals and Interferences to provoke and to win interferences based on non-priority issues, such as lack of novelty or lack of enablement. In this manner, the interference procedure becomes a vehicle for an inter partes contest before the PTO which, many times, can be superior to PTO reexaminations or inter partes court procedures.
Settlements
In our experience, most interferences do not get to Final Hearing but settle instead. Settling an interference is certainly the most cost effective and expedient means to finalize what has become in recent years a long, drawn out and potentially quite expensive procedure. We therefore have extensive expertise in negotiating interference settlement agreements, mutual exchanges of proofs and mutual decisions on allocation of priorities, as well as the licensing agreements that normally accompany such settlements. We have an extensive library of past settlement agreements that we can put into immediate use during any interference.
Recent Matters
The following is a partial list of interference matters in which members of Sterne, Kessler, Goldstein & Fox have been substantively involved. The order is Junior Party v. Senior Party.
- Pioneer Hi-Bred v. Monsanto (Plant genetics)
Pioneer won the interference on patentable distinctness after final hearing, aff’d. Loesch-Fries v. Beachy, 41 USPQ2d 1158 (Fed.Cir. 1996). - Enzon v. Creative Biomolecules, (Single chain antibodies)
Enzon won on summary judgment against Creative for failure to corroborate proofs under Rule 608(b), aff’d. Huston v. Ladner, 23 USPQ2d 1910 (Fed. Cir. 1992). - Ventana Medical Systems v. University of California (Diagnostic genetics)
Case was settled after the Board denied both parties' motions to either stay the interference pending reexamination or merge both interference and reexamination proceedings, Dietz Band v. Gray, 73 USPQ2d (BNA) 1857 (Bd. Pat. App. & Inter. 2004.) - Ventana Medical Systems v. University of California (Diagnostic Genetics)
UCal's motion to add a pending application to interference denied until application is allowed. Westbrook v. Gray 75 USPQ2d 1607 (Bd. Pat. App. Intf. 2004) - Newron Pharmaceuticals v. Purdue Neuroscience Company (Methods of treating pain)
Pevarello, P. et al v. Lan, N. et al 82 USPQ2d 1863 (Bd. Pat. App. Intf. 2006) and also Board Decision, January 12, 2007 dealing with scope of arbitrations in interferences and cross examination guidelines, respectively. - Caliper Technologies Corp. v. Micronics, Inc. and The University of Washington (Microfluidics)
- Genzyme v. University of Michigan v. Hospital for Sick Children, Toronto v. University of Michigan and Hospital for Sick Children, Toronto (Cystic Fibrosis and gene therapy)
Three interferences. - Lake Region Mfg. Co. v. Medtronic AVE, Inc. (Over-the-wire catheter and guidewire system)
- Sauer, Inc. v. Kanzaki Kokukoki Mfg. Co., Ltd. (Integrated hydrostatic transmissions)
- Massachusetts General Hospital v. Max-Planck Institute (Viral vectors for gene therapy)
For a comprehensive list of cases, click here.
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