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Buchanan's Patent Interferences and Post-Grant Proceedings team consists of some of the most experienced and respected practitioners in the country. In fact, the team members provide advice and services regarding each step involved in interferences and post-grant proceedings. This experience accentuates our mission to help maximize the value of our clients' intellectual property by establishing, maintaining and enforcing their property rights.
Interference Practice
When two or more pending-patent applications or a patent and a pending-patent application are claiming the same invention or substantially the same subject matter, a patent interference may arise to determine who is entitled to patent rights for the invention. While many people think that such proceedings are limited to deciding who was first to invent, more often than not, interferences are used as an efficient and relatively low cost alternative to District Court litigation to challenge a competitor's right to a patent. Whether one wants to provoke an interference, or is faced with defending rights in an interference, competent experienced representation is essential.
The attorneys at Buchanan have represented clients in more than 80 declared interferences and advised clients on an equal number of interference-related issues. Given the firm's extensive interference experience and its depth of knowledge across a wide range of technical fields, the firm can and has represented clients in interference matters in each of the biotech, chemical, computer science, electrical, material science, mechanical and pharmaceutical fields.
Recently, the team:
- Protected a pharmaceutical device for the client's rights to a patent in high-tech ophthalmic devices, resulting in a favorable decision.
- Defended a chemical company in proceedings involving its polyester-related technology, including interference and District Court litigation resulting in a favorable decision.
- Challenged a major pharmaceutical company's attempt to claim hundreds of trillions of compounds through generic claiming, resulting in a favorable decision.
- Favorably settled an interference involving alloys used in the electronics industry.
- Favorably settled an interference involving well-known athletic footwear manufacturers.
- Advised on interference related to golf shoe cleats that resulted in a favorable decision.
- Completed an interference involving tractor-trailer transmissions, resulting in a favorable decision.
- Advised on an interference involving high-technology lighting, resulting in favorable settlement.
- Successfully represented an independent inventor in the window coverings field through interference proceedings and subsequent District Court litigation.
The depth of experience of our team is further highlighted by our participation in interference-related associations and bar activities. Some of our team's positions include former chair of the American Intellectual Property Law Association (AIPLA) Patent Interference Committee (2003-2004), vice-chair of the Intellectual Property Owners Association (IPO) Patent Interferences Committee (2000-present) and members of AIPLA, IPO and the American Bar Association (ABA) Patent Interferences Committees. We have delivered numerous lectures across the country at conferences, seminars and in the media.
In June 2005, one of our team members appeared on the Law Journal with Christopher Naughton in an episode titled "Trends in Patent Law: Protecting Inventor and Invention."
Other notable achievements include legislative and rulemaking participation, including drafting commentary for IPO responding to two-way test for determining interference-in-fact, drafting commentary for AIPLA on 2004 rules changes for contested case practice, drafting commentary for IPO on 2004 rules changes for contested case practice and participating in drafting of legislation being considered for post-grant oppositions proceedings.
Our experience is not limited to two-party, two-application interferences, but extends to very complex multi-party and complex multi-application interferences. Our team has successfully protected clients' rights in a seven-party interference and successfully protected clients' rights in an interference potentially involving more than 100 patent applications.
We also have experience in taking on appeals of interference decisions and extensive experience in settling interferences, including preparation and negotiation of settlement agreements and accompanying licenses for interferences in which clients are involved. Because of that experience, we are able to effectively evaluate our clients' cases, as well as those of the opposing parties, to determine an appropriate strategy and advise whether settlement should be pursued.
Post-Grant Proceedings
The Post-Grant Proceedings team of Buchanan includes attorneys who have been involved in numerous patent reissue and reexamination proceedings. While patent reissues are similar to patent prosecution, there are many nuances peculiar to reissue practice that can lead to undesired results for the inexperienced. The members of the team have handled broadening and narrowing reissues and have also participated in reissue protests. It is also notable that members of the team have lectured on the topics of reissue and reexamination for more than 10 years in a Patent Resources Group course.
Recently, our reissues team:
- Prepared and prosecuted a broadening reissue application for a major semiconductor company, after extensive analysis of prior art, to obtain expanded scope of coverage for a new generation of opto-electronics device.
- Obtained a broadened reissue patent for a microprocessor manufacturer that enabled the client to enforce the patent against the products of major competitors who had designed around the original patent.
- Prepared and are currently prosecuting a broadened reissue application to cover the application of the USB standard to smart keys and dongles for computers.
Reexamination proceedings do not involve patent prosecution in the normal sense. Instead, they require a level of knowledge that members of our team can provide. We make the tactical decisions of if and when to file a request for reexamination, the ability to determine whether to file a request for ex parte or inter partes reexamination and the experience to handle the unique reexamination procedures as part of a team effort as part of our client service.
In recent reexamination proceedings, our team:
- Filed one of the first third-party requests for reexamination to include transcripts of inventor testimony that resulted in a cancellation of all patent claims.
- Successfully represented a patent owner in a third-party -initiated reexamination that encompassed processing of circuit boards.
- Successfully represented a patent owner in a third-party-initiated reexamination that involved light-weight optical lens material.
- Prosecuted a reexamination application filed by a third party in technology relating to golf clubs. The reexamination involved protracted examination leading to an appeal in which the examiner was reversed on all grounds by the Board of Appeals.
- Prepared, filed and prosecuted a reexamination application on behalf of patent owner in technology relating to plasma processing of semiconductor wafers.
Based in our Alexandria office, members of the Interferences and Post-Grant Proceedings team are only a short walk from the U.S. Patent and Trademark Office. Our proximity to the USPTO is an important tool for advancing matters by letting us conduct face-to-face meetings with the examiners in order to explain complex technologies and to discuss legal issues.
Supported by their colleagues in the firm's other practice areas, Buchanan's Patent Interference and Post-Grant Proceedings team is backed by an organization of sufficient breadth and depth to meet requirements attendant to the resolution of intellectual property issues.
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