Both Legal and Technical Prowess Required to Achieve a Positive Outcome in Patent Interference Challenge Involving Work by Nobel-Winning Scientist

Where we started: Our intellectual property lawyers represent a major university’s research and technology foundation, performing chemical patent work on its behalf. During the course of our work for the foundation, it encountered a patent interference challenge from another institution based upon work done by a Nobel-winning scientist. While our client maintained relationships with several other law firms, they believed we were the best-suited IP team for this complex and important matter.  

Our strategy – plus more: The dispute involved multiple interferences with several parties and patent applications, and centered on an invention regarding catalysts used in, for example, the production of pharmaceutical compounds. During the patent interference proceedings before the United States Patent and Trademark Office (USPTO), we had to demonstrate that our client was an original inventor, because at the time such matters didn’t hinge on who was first to file, as they do now, but rather who was first to invent.  

This required our team to exchange information about dates of invention, lab notebooks, and other evidence regarding the development of complex chemical concepts and methods. Drawing on both our legal and technical experience, we conducted an analysis of who conceived what and when, laid out the facts in a systematic manner, and argued our case.  

Upshot: Despite stiff opposition from national and global law firms with extensive resources, our team resolved the matter on very favorable terms for our client, for whom we continue to counsel.