Ten Reasons for Invalidating with Patent Interference Proceedings

A July 2004 article by Lara C. Kelley and Barbara C. McCurdy discusses ten reasons why a “first to invent� invalidity position under 35 USC §102(g) can sometimes be more-advantageously pursued in a patent interference proceeding, rather than a district court action.

1. The burden of proving priority in an interference is lower than the burden of proving invalidity in a patent infringement action.
2. Patentability issues can be raised in addition to priority in an interference.
3. The Board is more likely to understand the issues than a judge or jury.
4. An interference affords flexibility not provided in the district courts.
5. There is limited discovery in an interference.
6. There is no live testimony or trial in an interference.
7. An interference is usually less expensive.
8. There remain opportunities for trial litigation after an interference.
9. Provoking an interference may afford a party a stronger settlement position.
10. A successful interference outcome can result in a patent term extension.