Interference and Derivation
Greenblum and Bernstein has long represented both patentees and patent applicants in all phases of interference practice, including the procedures designed to provoke an interference, all phases of the interference proceeding itself, and appeals to the Court of Appeals for the Federal Circuit or a district court. Interference proceedings are unique and highly specialized and require intricate knowledge of the Standing Order, which governs the procedural aspects of the interference proceedings. Our interference team includes Bruce Stoner, who was the Chief Patent Judge at the time the original Standing Order was implemented, and Michael Fink and Jill M. Browning, both of whom have many years of experience representing patentees and patent applicants in interference proceedings handled by the Board of Patent Appeals and Interferences.
Interferences are, at their heart, proceedings to determine which party was the first to invent the subject matter that is claimed by two or more parties in either an issued patent or a pending application. The American Invents Act (“AIA”), enacted in September, 2011, changed the United States patent law system from a “first-to-invent” system to a “first-to-file” system and, thus, interference proceedings will not be available to patent applications that claim or contest an earliest effective filing date later than March 16, 2013.
Patent applicants claiming an earlier effective filing date later than March 16, 2013, will be able to pursue “Derivation Proceedings” to determine whether an inventor named in an earlier filed patent application actually “derived” the subject matter from an inventor of a later-filed patent application (and, thus, the later applicant will obtain the patent rights despite having filed later).
Derivation issues are currently handled in interference proceedings. Our Interference team has extensive experience handling derivation issues in the context of interferences and so will be well suited to handle derivation issues that arise and are subject to Derivation Proceedings.