Buchanan is one of very few law firms in the United States with a practice group dedicated to the highly specialized disciplines of patent interferences, reexaminations and reissues. Our extensive experience in these three specialties permits us to offer our clients powerful alternatives in patent litigation and helps our clients achieve their business objectives. Each of these specialties involves aspects of both patent litigation and patent prosecution. Each requires highly experienced counsel who have the knowledge and skill to coordinate complex proceedings in the USPTO with patent litigation in the courts. Our long-standing practice in these specialties has been widely recognized as one of the most effective and successful in the nation, and it substantially enhances the work of our patent litigation team.

As with our patent prosecution practice, our interference, reexamination and reissue practice covers every aspect of science, technology and engineering. Using its in-depth knowledge of USPTO procedures in these specialized areas, the group brings together creativity, strategic thinking, and outstanding patent litigation skills to handle disputes at any level of difficulty or complexity. These specialized skills provide our clients with high impact options that are not available at most firms.

Patent Interferences

When two or more parties file patent applications seeking the issuance of patents claiming substantially the same subject matter, the dispute over who was the first to invent is usually decided in an interference proceeding before the USPTO's Board of Patent Appeals and Interferences. These often are de facto opposition proceedings in which one party is challenging a competitor's right to a patent. The procedures for handling interferences in the USPTO are complex, and the stakes are usually high. Buchanan's patent interference team has earned an outstanding national reputation for providing highly effective representation to our clients in interference proceedings.

The interference team has handled more than 100 interference proceedings. The team has experience in every aspect of interference practice in the USPTO, including provoking interferences, defending our clients' patent rights when competitors provoke interferences, and handling multi-party and multi-application interferences. The team's deep experience covers every phase of these unique proceedings. Their experience includes handling appeals of USPTO decisions on interferences — both specialized appeals in district court litigation under 35 U.S.C. § 146 and appeals to the court of Appeals for the Federal Circuit. It also includes negotiating exceptionally complex settlements and licensing agreements to resolve interferences.

Patent Reexaminations

Buchanan's patent reexamination team has the experience and skill necessary to advise our clients about the complex strategic decisions presented by ex parte and inter partes reexamination requests and to handle all aspects of these proceedings when our client or an opposing party requests a reexamination in the USPTO. In recent years, reexamination requests have become an increasingly popular tactic for many defendants and some plaintiffs in patent litigation. However, while there can be benefits from choosing this option, there are risks as well. Buchanan's reexamination team regularly assists clients in making sound decisions in these areas and in handling the complex proceedings that ensue when a reexamination request is made.

In patent litigation, the defendant can file a request for either an ex parte or inter partes reexamination in the USPTO and request that the asserted patent be invalidated. The district court in which the patent infringement case is pending can then be asked to stay the litigation during the reexamination. Depending on the status of the case, it is common for some district courts to grant a stay pending a ruling by the USPTO on the reexamination request. If a stay is granted, the reexaminations may proceed more slowly and less expensively than district court litigation, which may help a defendant, particularly a small company facing a significantly larger opponent.

However, the risks to a defendant considering a reexamination request are not insignificant. Throughout the reexamination process, the patent infringement case is still pending in the district court, and a stay can be lifted at any time. The defendant may not have an active role in the USPTO proceedings, which may permit the patent holder to "clean up" the asserted patent and end up with an even stronger case against the defendant. Reexaminations can involve substantial legal expense, and they can lead to additional expenses if either party appeals ruling in an inter partes reexamination. At the end of the reexamination process, barring a finding by the USPTO that the asserted patent is invalid, the district court will lift the stay, and the patent infringement case will proceed on the merits, possibly with the plaintiff in a better position than before the reexamination.

A plaintiff in a patent infringement case can request only an ex parte reexamination by the USPTO and faces an even more complicated set of considerations when deciding whether to request such a reexamination. The usual objective of a plaintiff is to eliminate a prior art invalidity defense in a cost-effective way. However, there are many risks involved in this strategy. Even a successful reexamination ruling does not totally eliminate the prior art defense in the underlying litigation, and the district court can still find the patent to be invalid. Once a reexamination proceeding begins, it cannot be stopped by the parties, even if the underlying litigation is settled. The defendant is likely to learn of the ex parte reexamination, file its own request and be allowed to participate at least to some extent in the USPTO proceedings. The underlying litigation may be stayed on the request of the defendant. Moreover, in a reexamination, the plaintiff is required to comply with the duty of disclosure, so the plaintiff may decide to submit to the USPTO materials from the district court proceedings bearing on defendant's claims of invalidity (pleadings, documents, expert reports, briefs, prior art documents, etc.). Finally there is a risk that the USPTO may adversely construe the meaning of the claims of the asserted patent, which can lead to defeat in the district court litigation, even though the district court is not bound by the USPTO's claim construction.

Buchanan's reexamination team has the experience that comes only from handling a large number of reexamination requests and proceedings over the years. The decisions are hard, and the risks involved are significant. If reexamination is requested, the proceedings require skill and experience to prevail. Whether our client is a plaintiff or a defendant, the reexamination team is fully prepared to assist with the analysis and strategic decisions to be made and to handle any reexamination proceeding involving our clients.

Patent Reissues

Buchanan's patent reissues team has successfully handled complex patent reissue applications over many years and has developed the in-depth experience needed by our clients, particularly when they are considering filing patent infringement litigation to enforce their intellectual property rights. Although reissue proceedings are similar to standard patent prosecutions, there are critical differences that can lead to adverse consequences if the differences are not understood and properly handled. The long experience of Buchanan's reissues team in handling both broadening and narrowing reissue applications, as well as participating in reissue protests, provides our clients with full access to this sometimes critically valuable option.