The America Invents Act (AIA) has ushered in a new era for post-issuance validity challenges of patents before the PTO. In particular, the new practices of inter partes review and post-grant review have essentially replaced inter partes reexamination practice. Further, the transitional program for covered business method patents, which operates much like a post-grant review, provides an even more preferable mechanism for challenging qualifying business method patents. These new contested proceedings provide third-party challengers with expeditious options to contest the validity of issued patents before the Patent Trial and Appeal Board (PTAB) of the PTO.
The rules and procedures for these post-issuance challenges borrow elements from the fields of inter partes reexamination and interference practice. Having excelled at representing our clients in those fields, Fitzpatrick is ahead of the curve with respect to post-issuance challenges. In addition, unlike the previous inter partes reexamination practice, post-issuance challenges involve discovery and depositions. Fitzpatrick’s depth of experience with complex prosecution, interferences and litigation in a broad range of technologies makes us well suited to advise and assist our clients in navigating these new proceedings.
Interferences and Derivation Proceedings
An interference is a contested proceeding conducted before the PTAB to determine which of two or more inventive entities was the first to invent the subject matter in dispute. Although only a small percentage of all patent applications become involved in an interference, it is usually one of the most important applications in leading edge technologies that do. With the AIA, interferences will now only be available for cases with effective filing dates before March 16, 2013. However, it will be some time before the proceedings are completely phased out.
For applications with effective filing dates on or after March 16, 2013, the AIA provides for derivation proceedings, which allow someone who claims to be the true inventor to assert rights to a patent over another who has ‘derived’ the invention. Derivation proceedings may be brought before the PTAB or in federal courts. While the concept of derivation existed prior to the AIA, the new derivation proceedings will live on beyond interference practice.
Our firm has been handling interferences since the early 1970s, and is one of the country’s leading firms in this specialized area of the law. We have handled interferences in all technology areas including chemistry, biochemistry, pharmacology, computers, electronics and optics to name a few, and are familiar with all aspects of the practice including count formulation, motion practice, discovery and settlement. We have also been involved in the review of PTO interference decisions both in civil actions under 35 U.S.C. 146 and direct appeals to the Court of Appeals for the Federal Circuit.
Our team of over twenty experienced interference practitioners, is well positioned to leverage our deep interference experience for our clients in the emerging field of derivation proceedings.