The Board of Patent Appeals and Interferences*

1. The Board of Patent Appeals and Interferences* Motions Practice Tips James T. Moore Vice Chief Administrative Patent Judge *Until September 15, 2012 when we shall switch over to being the Patent Trial and Appeal Board

2. Interference Jurisdiction (35 U.S.C. §135) • United States is changing from a “first to invent” country to a “first inventor to file” country in 18 months • Interfering claims claim the same patentable invention • Objective – determine who is not the first to invent; they are not entitled to a patent • May also look at patentability issues • This is litigation

3. Interference Proceedings • Motions Phase • Scope of interfering subject matter • Who has earlies application that describes and enables the interfering subject matter - “senior” party” • May determine patentability • Threshold issues • Standing • 35 U.S.C. § 112 • 35 U.S.C. § 135(b)

4. Motions Practice in Interferences • Priority Phase • Conception • Reduction to practice • Diligence • Derivation • Evidence • All motions must be supported by sufficient evidence of record

5. Interferences and Post-Grant • Interference proceedings are a motions-based trial practice • Post Grant Proceedings will also be a motions-based trial practice (The Patent Trial and Appeal Board) • Motions-based trial practices are NOT prosecution; there are NOT easy second bites at the apple • “Make sure…..”

6. Motions Practice in Interferences • Make sure you have an end game plan • Make sure you know what you are trying to do with your motions and can concisely state why • An initial conference call is held to determine which motions a party will be authorized to file.      • You need to provide a good explanation as to why you need to file a motion at the initial call and provide a firm basis in the motion as to why you need the requested relief.

7. Motions Practice in Interferences • Make sure you can be flexible in the initial conference call, are ready and able to pare your wants down to your absolute needs • On the offense – you don’t need to kill a claim several different ways, start off by being reasonable • On the defense – don’t try to file contingent motions for every possible contingency.  Make your stand in one place

8. Motions Practice in Interferences • Make sure you understand who has the burden of proof • Senior party is presumptive winner • Party seeking relief of any kind has the burden of proof • Make sure you know what the burden of proof is • Generally a preponderance of the evidence • Motions rarely granted on argument alone

9. Motions Practice in Interferences • Make sure you understand the law • Are you familiar with BPAI Precedential decisions, including Trial Section* precedential decisions? • Make sure you understand the rules • The rules can be unforgiving. ‘Good cause’ is not your chance for a do-over. • Do you know the Standing Order? There’s a new one out this year. *Contested Cases is being returned to its former name - Trial Section

10. Motions Practice in Interferences • Make sure you make out your case in your opening brief. • Holding back arguments in a motion is a mistake.  The Board will not permit a new issue in a reply where the issue could have been raised in the motion. Opening briefs which fail to make the burden out may be decided against you on the spot. • Recon won’t help if you didn’t make the argument or provide the evidence up front • Make sure you know what elements need to be proven

11. Motions Practice in Interferences Make sure you continue to be scrupulously honest and forthright with the Board in your arguments, representations, and in your conduct of the proceeding. - Your stock in trade is your name, reputation, and integrity. - You want the panel to think, when your name comes up, “Attorney X. This brief will be good. I can count on the representations.”

12. Motions Practice in Interferences • Are you good at trial proceedings? • Are you interested in serving your country? • Are you willing to work in a first-rate organization recently charged by Congress and the President to conduct four new trial proceedings (and with plenty of exciting appellate work)? • We are hiring such people. Lots of them. • Make sure you apply at WWW.USAJOBS.COM

13. Questions? • BPAI Web Page • www.uspto.gov • Click on “Appeal” (Button #7) • statistics, argument dates, opinions, the interference web portal, standard operating procedures, rules and other information • 571-272-9797 • Staffed every weekday 8:30 am to 4:30 • 572-272-INTF (4683) • Interference procedural questions ONLY