Interference proceeding
Encyclopedia
An interference proceeding, also known as priority contest, is an inter partes
proceeding to determine the priority issues of multiple patent application
s. It is a unique procedure in the patent
law of the United States
. Unlike in most other countries which have adopted the first-to-file
system, the first-to-invent
system of the U.S. allows a party which has failed to file a patent application on time to challenge the inventorship
of another party which has a granted or pending patent, if certain requirements are met.
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 claim the same invention
in:
A panel, composed of judges on the Board of Patent Appeals and Interferences
, a quasi-judicial body
in the USPTO, hears interference contests. Its final judgment adjudicating one party as an earlier inventor is called priority award, or simply award. Appeal
s from this tribunal may be 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 , .
41.207(a):
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.
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.
References:
Inter partes
The term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
proceeding to determine the priority issues of multiple patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s. It is a unique procedure in the patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law of the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
. Unlike in most other countries which have adopted the first-to-file
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
system, the first-to-invent
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
system of the U.S. allows a party which has failed to file a patent application on time to challenge the inventorship
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
of another party which has a granted or pending patent, if certain requirements are met.
Definition
The interference proceeding is an administrative proceedingAdministrative proceeding
An administrative proceeding is a non-judicial determination of fault or wrong-doing and may include, in some cases, penalties of various forms. They are typically conducted by government or military institutions....
conducted by a panel of administrative patent judges (administrative law judges sitting on the Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
) of the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) to determine which applicant is not entitled to the patent if both claim the same invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
in:
- two or more pending patent applicationsPatent pendingThe expressions "patent pending" or "patent applied for" refer to a warning that inventors are entitled to use in reference to their product or process once a patent application has been filed, but prior to the patent being issued or the application abandoned...
, or - 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
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
, a quasi-judicial body
Quasi-judicial body
A quasi-judicial body is an individual or organization which has powers resembling those of a court of law or judge and is able to remedy a situation or impose legal penalties on a person or organization.-Powers:...
in the USPTO, hears interference contests. Its final judgment adjudicating one party as an earlier inventor is called priority award, or simply award. Appeal
Appeal
An appeal is a petition for review of a case that has been decided by a court of law. The petition is made to a higher court for the purpose of overturning the lower court's decision....
s from this tribunal may be heard before either the United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
or the United States District Court for the District of Columbia
United States District Court for the District of Columbia
The United States District Court for the District of Columbia is a federal district court. Appeals from the District are taken to the United States Court of Appeals for the District of Columbia Circuit The United States District Court for the District of Columbia (in case citations, D.D.C.) is a...
. See , .
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.- Senior party: Merely being the first to file the application does not grant a party legal protection. It counts only as prima faciePrima faciePrima facie is a Latin expression meaning on its first encounter, first blush, or at first sight. The literal translation would be "at first face", from the feminine form of primus and facies , both in the ablative case. It is used in modern legal English to signify that on first examination, a...
evidence that he or she is the first inventor. A senior party can also file a "motion to dissolve interference" to request the dismissal of challenges to its priority. - Junior party: A party other than the senior party bears the burden of proving that he is the first inventor. The proceeding's administrator considers certain factors, such as the invention's conception date and the inventor's diligenceDiligenceDiligence is steadfast application, assiduousness and industry — the virtue of hard work rather than the sin of careless sloth.Diligent behaviour is indicative of a work ethic — a belief that work is good in itself....
in reducing the invention to practiceReduction to practiceIn United States patent law, the reduction to practice is a concept meaning the embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding....
. Until the 1960s, a junior party was frequently called an "interferant".
Presumptions
Presumptions are stated in 37 C.F.R.Code of Federal Regulations
The Code of Federal Regulations is the codification of the general and permanent rules and regulations published in the Federal Register by the executive departments and agencies of the Federal Government of the United States.The CFR is published by the Office of the Federal Register, an agency...
41.207(a):
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
Reduction to practice
In United States patent law, the reduction to practice is a concept meaning the embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding....
, then neither party is entitled to a presumption of priority with respect to the other such party.
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 will change the US patent system from a first-to-invent system to a first-to-file system. As such, interference proceedings will be eliminated from US patent law. More specifically, any patent application with an effective filing date on or after March 16, 2013 will not be able to initiate an interference. 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.External links
- MPEP 2300.01 Introduction - 2300 Interference Proceedings (USPTO web site)
- http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf
References: