Scott Harris, a patent attorney with Fish & Richardson, says in some areas of research discoveries are often made days apart. (photo/alandeckerphoto.com)

The National Football League has rules on pass interference, but it keeps changing them. The U.S. Patent and Trademark Office has rules on patent interferences, proceedings that determine which of two competing parties has rights to an idea, but has decided only recently to write them down.

The patent office receives about 360,000 applications a year, nearly a thousand a day. It issues about 170,000 patents a year, about 466 a day. Since it takes the agency more than two years to issue a patent, what it issues in a given year doesn’t normally come from applications filed in the same year.

Intellectual property can be lucrative, and society needs inventions so manufacturers can offer new products that can improve or even save lives. “The patent system is designed to encourage people to divulge their secrets in return for 20 years of exclusivity to the rights,” says John Wetherell, a partner at Pillsbury Winthrop.

In some fields of research, “it’s almost inevitable that two people come up with the same thing literally days apart,” says Scott Harris, a patent attorney with Fish & Richardson.

When two parties file a patent covering the same invention, the interference dispute is resolved before an administrative judge.

The process that governs interferences is important because, unlike most nations, the United States awards a patent to the first party to invent, rather than the first party to file. Putting the rules into code is expected to shorten the length of interference proceedings before the Patent Office, says Richard Torczon, an administrative patent judge in Washington, D.C. “In the mid-’90s we had cases that were taking a decade to resolve; now our average is down to below two years,” Torczon says. “We got religion and the rules reflect that.”

The rules, which were issued in November, now require that issues be identified at an early stage. “The idea is to let everybody know what we are trying to accomplish in the proceeding early on,” says Torczon.

The rules also place an increased amount of discretion with the administrative patent judge to waive or suspend procedural rules, in an effort to move proceedings along.

Giving the judges more discretion will speed up individual cases, but codifying the rules likely means more interferences will be filed. “There’s always been a group that thought interferences should be used as a weapon, which is not really what they were intended for,” Harris says. “Now that the rules are more specific, we’re going to see using interference much more aggressively to get someone’s patent.”

Filing a patent application first is a good defense against an interference claim, Harris says. “In an interference action, the offense is the guy who filed his patent first; he’s the senior party. The other guy is trying to play catch up and show why he didn’t.”

Two-Way Test

The new rules also codify the patent office’s practice of using a “two-way test” to determine when to declare an interference; the two-way test says essentially that granting a patent to one party would necessarily deny the patent to the other.

Daniel Yannuzzi, a San Diego-based patent expert with Morrison & Foerster, says the “two-way test” rule is most likely to come up where one invention is the genus and the other is a mere species. “So let’s say I’ve got a vessel that is a cup and another patent has a cup with a handle,” he says. “The question is whether the handled cup is a separate invention or merely another form of a cup. The answer is that the cup with the handle would prevent a patent from issuing to just the cup, but the cup by itself would not prevent a patent from issuing to the cup with a handle.”

Yannuzzi says it’s good practice for inventors and their attorneys to keep abreast of the record of patent applications, which are now published within 18 months of filing. Advice to inventors: be diligent about searching patent publications, and in documenting the invention’s conception and reduction to practice.

Information on patent filings is so widespread that it is risky for a company to wait longer than one year to file a claim of patent infringement, says Richard Warburg, a partner in the intellectual property department of Foley & Lardner. (photo/alandeckerphoto.com)

Richard Warburg, a partner in the intellectual property department of Foley & Lardner, says publication of patents is widespread enough now that if there are potential claims arising from a competitor’s application, you have a duty to declare your interferences within one year of publication to preserve your rights.

Failing to properly file all the possible claims is dangerous, Warburg says, because the judge can use this defect to rule that the patent applications are distinct; thus, no interference. “There’s an incentive for the judge to say that’s distinct, I don’t have to declare a winner here,” Warburg says.

One strategy is to make sure a patent is sufficiently broad to take on potential poachers. But in last year’s Chiron v. Genentech case, a federal judge decided Chiron’s inclusive patents were too broad for enforcement. “They gave with one hand and took away with the other,” Warburg says.

The lesson is to “file early but with sufficient description of all future development you think might come along,” Warburg adds.

The evidence of invention is often found in documentation, so inventors are encouraged to keep detailed notebooks. Warburg suggests enlisting an independent person (that is, anybody but another inventor) to witness the invention.

File Fast

A “reduction to practice,” providing further evidence that the idea works, is another part of pursuing an interference claim, or defending a patent. Filing a patent application is important because it is considered “constructive reduction of practice.”

Although the United States adheres to a “first to invent” standard for allowing a patent, the first party to file still wins the overwhelming number of cases.

“File as fast as you can,” Harris says. “There’s no substitute for adequate records, lab notebooks showing when you came up with the idea and what you’ve done to move the idea along to finalize it.”

Scientists can be so involved with their work that Kate Murashige, a partner with Morrison & Foerster, says companies should have someone in-house who monitors the science to identify things that should be protected. (photo/alandeckerphoto.com)

Sometimes, locking down your patent depends on a fresh set of eyes or using expertise that may already be in-house.

“Have an independent person who knows something about patents, a second opinion, or somebody familiar with the industry; the easy answer would be another firm,” says Kate Murashige, a partner with Morrison & Foerster. “It’s also a good idea to have somebody in house who is monitoring the science that goes on with an eye to identifying things that should be protected. The in-house science expert would go to group meetings and keep in contact with the scientists. Otherwise, you’re relying on the scientists themselves to decide if they have a patentable invention, and what constitutes an invention isn’t always so straight forward.”

Nothing is as forceful as an idea whose time has come, particularly if you already know the landscape. “Ultimately, it boils down to a combination of how creative an inventor is and how well they monitor databases and sources of information that are out there,” says Wetherell. “If you can, you want to be able to gather info in terms of what’s already known, so you’re contributing something new to society’s body of knowledge.”

With California’s scientific community buzzing with the possibilities for stem cells, experts say it’s only a matter of time before some of these inventions become contested.

“With an increase in research, there’s more and more likelihood that people will be stepping on each other’s toes, so you might see an increased interference activity as they race to the patent office,” says Yannuzzi.