Washington, D.C. / San Francisco (October 7, 2004) -- The U.S. Patent & Trademark Office (PTO) has without fanfare reissued the rules governing the essential patent-dispute mechanism known as "interferences," leaving experienced patent lawyers pondering how strategy will shift for individuals and businesses seeking to protect their inventions and proprietary business processes.
"All the certainty we had with the previous rules has been swept away by the PTO," says Barry Bretschneider, a senior patent litigator and interference practitioner based in the Northern Virginia office of law firm Morrison & Foerster LLP. "It's a brave new unknowable world."
"Interference practice has always placed a premium on getting on top of your case early," says Matthew Kreeger, an intellectual property litigator and interference practitioner in Morrison's San Francisco office. "The new rules require even more work up front. Parties will be required to identify, at a very early stage, all of the issues they intend to raise during the interference, and won't be allowed to raise new issues without a strong excuse for raising them late."
Patent interferences resolve disputes about which of competing inventors were the first to invent, since U.S. law awards a patent to the party who can prove priority of inventorship rather than priority of filing with the PTO. Though the total number of interferences has been declining of late, they are on the upswing for biotechnology and medical device patents, representing untold billions of dollars in intellectual property interests. The outcome of a patent interference can make or break a company; in short, says Mr. Bretschneider "it is not something you want to lose."
The intricacy of the new rules (which run on to 60 pages) makes them nearly impossible to summarize, say Mr. Bretschneider and Mr. Kreeger. However, some generalities can be drawn.
To speak with Mr. Bretschneider or Mr. Kreeger, please contact Keith Emmer at 212-721-9979, Bryonie Byers at 202-887-8730, or Kerry Efigenio at 415-268-7210.