Interference proceeding

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An interference proceeding, also known as a priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a proceeding unique to the patent law of the United States. Unlike in most other countries, which have long had a first-to-file system, until the enactment of the Leahy-Smith America Invents Act (AIA) in 2011, the United States operated under a first-to-invent. The interference proceeding determines which of several patent applications had been made by the first inventor.

Contents

The AIA switched the US to a first-to-file regime effective March 16, 2013, [1] and interferences apply only to patent applications with an effective filing date prior to that change.

Definition

An interference proceeding is an administrative proceeding conducted by a panel of administrative patent judges (administrative law judges sitting on the Board of Patent Appeals and Interferences) of the United States Patent and Trademark Office (USPTO) to determine which applicant is not entitled to the patent if both claimed the same invention in:

  1. two or more pending patent applications, or
  2. at least one pending patent application and at least one patent issued within a year of the pending application's filing date.

A panel, composed of judges on the Board of Patent Appeals and Interferences, a quasi-judicial body in the USPTO, hears an interference contest. Its final judgment adjudicating one party as an earlier inventor is called a priority award, or simply an award. Appeals from this tribunal are heard before either the United States Court of Appeals for the Federal Circuit or the United States District Court for the District of Columbia. See 35 U.S.C.   § 144, 35 U.S.C.   § 146.

Parties

At least two parties are involved in an interference proceeding: the inventor(s) or applicant(s) who filed an earlier patent application are called the "senior party", and the other inventor(s) or applicant(s) are called the "junior party". Both parties can be referred as "contestants", but that term is currently more likely to be used to describe the junior party.

Presumptions

Presumptions are stated in 37 C.F.R. 41.207(a):

(1) Order of invention. Parties are presumed to have invented interfering subject matter in the order of the dates of their accorded benefit for each count. If two parties are accorded the benefit of the same earliest date of constructive reduction to practice, then neither party is entitled to a presumption of priority with respect to the other such party.
(2) Evidentiary standard. Priority may be proved by a preponderance of the evidence, except a party must prove priority by clear and convincing evidence if the date of its earliest constructive reduction to practice is after the issue date of an involved patent or the publication date under 35 U.S.C. 122(b) of an involved application or patent.

Leahy-Smith America Invents Act

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act into law. Part of the Act changed the U.S. patent system from a first-to-invent system to a first-to-file system. [2] As such, interference proceedings for any patent application with an effective filing date on or after March 16, 2013, were eliminated from U.S. patent law. [3] Derivation proceedings are replacing interference proceedings in the patent statutes, but the dispute surrounding a derivation proceeding is unrelated to that of an interference proceeding.

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Leahy–Smith America Invents Act

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In United States patent law since the Leahy-Smith America Invents Act (AIA), a derivation proceeding is a trial proceeding under 35 U.S.C. § 135 conducted at the Patent Trial and Appeal Board to determine whether (i) an inventor named in an earlier patent application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon, that are subject to the first-inventor-to-file provisions of the AIA. This is in contrast to an interference proceeding under pre-AIA law, which determined the priority of invention.

References

  1. ↑ Agostino, Joseph; Briggs, Heath J.; Schindler, Barry J. (February 2, 2013). "Phase 3 of the America Invents Act: New Patent Laws Take Effect on March 16, 2013". National Law Review. Retrieved April 18, 2021.
  2. ↑ "Archived copy" (PDF). Archived from the original (PDF) on 2011-10-15. Retrieved 2011-09-27.{{cite web}}: CS1 maint: archived copy as title (link)
  3. ↑ http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf [ bare URL PDF ]
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