Interference, Opposition, Reexamination

The Interference/Opposition/Reexamination Group of Merchant & Gould assists clients in precipitating, planning, defending, and securing positive results in Interferences before the United States Patent and Trademark Office, as well as appeals to the Court of Appeals for the Federal Circuit and quasi de novo proceedings at District Court in reviews of Interference decisions under 35 USC 146.

Merchant & Gould's IOR Group represents clients over a wide range of technologies, including mechanical engineering (everything from underground storage tanks to high security locks to window frames), software and DRM applications (internet distribution to security encryption), chemistry (photoresists to pesticides) and a wide variety of other applications. The largest number of clients involved in interferences, however, are those with biotechnology/pharmaceutical/therapeutic disputes (e.g., protein engineering, molecular diagnostics and assays, antibodies, gene therapy, vaccines, and immunomodulators).

The changing practice and rules governing Interference, 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. Merchant & Gould's IOR Group has a long history in guiding clients around these hidden dangers. Merchant & Gould's IOR Group has honed two different types of Interference actions. In 2000, they precipitated an interference with a patentee who had asserted patent claims against their client, and thereby avoiding 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 for their clients holdings of patent invalidity and non-infringement, avoiding damage claims in the billions of dollars. Similarly, our practitioners have successfully defended patentees named in interference actions, preserving enforceable claims and licenses covering commercial embodiments.

• Helped clients through more than 150 Interferences

• Technologies include mechanical engineering, software and DRM applications and chemistry

• Sensitive practice of securing Declarations of Interference with patents

• Securing holdings of patent invalidity

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