Interferences

For decades, Sterne Kessler has successfully handled dozens of interferences, with experience that runs the gamut from pre-declaration activities to successful appeals to the Federal Circuit.

Sterne Kessler has represented U.S. and foreign clients in two-party and multiparty interferences. We have successfully represented patentees in defending against post-issuance interferences and also have successfully represented applicants against both patentees and other applicants.

Our seasoned, efficient, and knowledgeable team has experience across technologies, including biotechnology, electronics, and manufacturing. Legal representation in this complex area of patent law requires a keen understanding of the technology, the substantive law of interferences and—quite critically—interference procedure. This understanding encompasses all phases of the practice, including the copying of claims, motions, count formation, testimony period, depositions, and corroborated proofs, as well as final hearings before the Board and appeals to the Federal Circuit.

Pre-Interference Procedures

Our practice includes counseling clients on various issues that precede the declaration of an interference, including

Preparing and filing requests for interference
Filing reissue applications of our clients’ issued U.S. patents
Provoking interferences with the issued patents of opponents during the reissue process
Prosecuting applications that present interference issues before the Examiner while successfully avoiding an interference upon patent issuance
Preparing our clients to be favorably positioned by watching for the publication of patent applications of competitors

Settlements

In our experience, most interferences settle rather than get to Final Hearing—settlement is certainly the most expedient means to finalize what has become in recent years a long, drawn-out, and resource-intensive procedure. We leverage our experience to efficiently resolve these disputes, including negotiating settlement agreements, licensing agreements that normally accompany settlements, and mutual exchanges of proofs and mutual decisions on allocation of priorities.

Derivation Proceedings

Sterne Kessler has a rare level of experience with derivations, a nuanced and infrequently-occurring inventorship dispute resolution proceeding.

Derivation proceedings were introduced along with inter partes review (IPR) with the America Invents Act (AIA) over a decade ago. As proceedings that deal with inventorship disputes, derivations are the post-AIA successors to interference proceedings. With that in mind, we leverage experience in dozens of interference representations to bolster our derivation strategies. In addition, our leadership in other AIA-proceedings, such as IPRs, helps to inform our participation in these proceedings.

Sterne Kessler has experience in several public derivations, and has gained experience in a variety of other matters that are not publicly available. In particular, we represented adidas as the respondent in a trio of derivations, securing an institution denial in each proceeding.