The Interference/Opposition/Reexamination Group (IOR) of Merchant & Gould assists clients in precipitating, planning, defending and securing positive results in copyright and trademark litigation and in patent interferences. We have experience handling cases, including quasi de novo proceedings and reviews of patent interference decisions under 35 U.S.C. § 146, before the United States Patent and Trademark Office, Federal Circuit Court of Appeal and in district courts throughout the United States.
Attorneys at M&G have helped U.S. and internationally based clients through more than 150 interferences involving diverse industries and technologies such as:
- Mechanical Engineering (everything from underground storage tanks to high security locks and window frames)
- Software and DRM Applications (internet distribution to security encryption)
- Chemistry and Chemical Engineering (photo-resists to pesticides and numerous other applications)
- Biotechnology/Pharmaceutical/Therapeutic Disputes (e.g., protein engineering, molecular diagnostics and assays, antibodies, gene therapy, vaccines and immunomodulators)
The changing practice and rules governing patent interferences, from the introduction of the Trial Board Section in 1998 to the introduction of the contested case rules in 2005, have made interference practice a trap for the unwary. Lawyers at Merchant & Gould's IOR Group have honed two different types of interference actions designed to guide clients around these hidden dangers.
In 2000, they precipitated an interference with a patentee who had asserted patent claims against their client, and thereby avoided a preliminary injunction that would have been litigation-dispositive, yet without a basis for claiming priority. Over the ensuing years, the practice leaders have developed the sensitive practice of securing Declarations of Interference with patents that had been used to threaten their clients with infringement enforcement, or actually being enforced.
The interference alternative levels the playing field for the alleged defendant, putting the patent holder before a tribunal that is comfortable finding patent claims unpatentable, and reducing the burden of proof to a preponderance of the evidence, the lowest burden in civil practice.
Requiring extensive coordination with the client, our IOR Group has used interference practice to secure holdings of patent invalidity and non-infringement —helping those we represent avoid damage claims in the billions of dollars. Similarly, our attorneys have successfully defended patentees named in interference actions, preserving enforceable claims and licenses covering commercial embodiments.
In every matter, M&G remains committed to practicing intellectual property law in innovative ways and to finding the best possible solution for each client no matter where that takes us.
