The Mutual Destruction Scenario in U.S. Interference Proceedings

Matthew Kreeger and Rachel Krevans write that one of the most difficult strategic dilemmas arising during a U.S. patent interference proceeding occurs when a party is unable to make a reliable initial assessment of the likelihood that it will be able to prove it invented first:

This is often the case because, while both parties’ filing dates are known at the start of an interference and each party’s own actual conception and reduction-to-practice dates should be reasonably ascertainable by that party, each party may know little or nothing about its opponent’s conception and reduction-to-practice dates when it files its preliminary motions. It is also often the case that when a party assesses possible motions to attack the validity (patentability) of its opponent’s claims, it will realise that its own claims are vulnerable to the same challenges. In other words, a party may not be able to challenge the patentability of its opponent’s claims successfully without bringing its own claims down as well. And each party must decide what to do before knowing what motions, if any, its opponent is going to bring.

Regardless of this possiblility of mutual destruction, the authors write that interferences proceedings can provide certain advantages:

Unlike infringement litigation in the federal district courts, during an interference there is no presumption of validity that must be overcome in order to invalidate an opponent’s patent claims. Interferences are tried at the outset before the PTO, before administrative law judges who have substantial familiarity with legal and technical issues important to patent disputes.

There is also the possibility of obtaining de novo review via litigation in the federal courts.