1. Interference-in-fact The Boston Scientific v. Cordis’ Claim Construction Order mentions an interference-in-fact.Claim Construction Order An Interference-in-fact is like an Interference (no suffix): Both involve the patent term of art interference. In patent law this word does not exactly mean “that which comes between so as to be hindrance or obstacle.” However, when two people think they invented the same thing and both want exclusive rights to it, they may be obstacles to each other. So, what is the term of art “interference”? And how is an interference-in-fact different? 10/13/08Julie Kane – Interference-in-fact1

2. Interference (the term of art) An interference (regular or “in-fact”) decides the question: who invented first? An interference is a PRIORITY CONTEST. A regular interference is a proceeding in the Patent Ofice – initiated by an Examiner during examination of a patent application, and – adjudicated by the Board of Patent Appeals and Interferences (BPAI). When the Examiner identifies another patent or application that claims the same invention, s/he declares an interference. 10/13/08Julie Kane – Interference-in-fact2

3. Interferences - Statutes 35 USC 10135 USC 101: Whoever invents or discovers any[thing] NEW and useful … may obtain a patent…. 35 USC 10235 USC 102: A person shall be entitled to a patent unless … (g)(1) … before such person's invention thereof the invention was made by [another] inventor…. 35 USC 135(a): “Whenever an application is made for a patent which … would interfere with any pending application, or with any unexpired patent, an interference may be declared….” “The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions….” 10/13/08Julie Kane – Interference-in-fact3

4. Interference-in-Fact Begins in a court, not in the Patent Office. 35 USC §291 governs jurisdiction; also appeals (by35 USC §291 by cross reference to 35 USC §146, 2 nd paragraph).35 USC §146 “[I]ts purpose is to enable the court to resolve the problem created by the existence of two or more patents having been issued on the same invention….” Albert v. Kevex Corp., 741 F.2d 396 at 399 [18-5] (Fed. Cir. 1984) (Davis, J., concurring in part and dissenting in part).Albert v. Kevex Corp Involves only issued patents. Can be a stand-alone proceeding, or can arise in infringement litigation 10/13/08Julie Kane – Interference-in-fact4