Patent Interference

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By Rich Stim

An “interference” is patent jargon for an administrative proceeding scheduled by the U.S. Patent and Trademark Office (USPTO) to determine who gets the patent in situations where two pending applications (or a pending application and a patent issued within one year of the pending application’s filing date) both claim the same invention.

The Board of Patent Appeals and Interferences determines the priority of inventorship according to the following analytical steps.

Step 1: Deciding who Was First?

The Board decides which inventor was the first to reduce the invention to practice. This will be the first inventor to either:

  • constructively reduce the invention to practice by filing a provisional or regular patent application (the senior party), or
  • actually reduce the invention to practice by building and testing a working model of the invention.

Step 2: Proving Inventorship

Based on evidence introduced in the interference proceeding, the Board decides whether the inventor who was second to reduce to practice can prove both that (1) he or she was first to conceive of the invention, and (2) he or she was also diligently attempting to reduce the invention to practice at the time the other inventor conceived the invention.

The inventor who can prove both prior conception and diligence in reduction to practice will be awarded the patent; otherwise, the inventor who was first to reduce the invention to practice (either actually or constructively) gets the patent.

The reasoning behind these priorities is relatively simple. The patent laws attempt to balance three goals:

  • get the inventor to file as quickly as possible so the invention can become known to the public
  • get the inventor to come up with the best possible version of the invention, and
  • reward the inventor who is first to conceive of the invention.

By initially presuming that the first inventor to reduce the invention to practice should get the patent, the patent laws serve the first two goals. But all three goals can be served by giving the patent to the first to conceive the invention if that inventor also worked diligently to reduce the invention to practice.

Because an inventor may later be called on to prove when an invention was first conceived and what steps were taken to reduce it to practice, most inventors maintain detailed records of their inventive activities in notebooks that are signed and witnessed.

The Effect of the America Invents Act

Note that among the changes implemented by the America Invents Act, enacted in September 2011, is that commencing in March 2013, the USPTO will  terminate interference process and instead permit a patent owner to bring a “derivation hearing” at the USPTO against another patent owner claiming to have the same invention and who has an earlier effective filing date. Alternatively, the owner of a patent may sue the owner of another patent that claims the same invention and has an earlier effective filing date.