Legal Definitions - motion to dissolve interference

A motion to dissolve interference is a formal request made in a specific type of patent dispute, primarily relevant under older U.S. patent law. It is filed by the party with the earlier filing date (known as the "senior party") who is challenging another party's claim to be the first inventor of the same invention. The purpose of this motion is to ask the U.S. Patent and Trademark Office (USPTO) to terminate the "interference" proceeding, arguing that the dispute itself should not continue, often because the other party's claims are not valid or do not truly conflict with the senior party's invention in a way that warrants a full investigation into who invented first.

Note: Interference proceedings were used to determine who was the first to invent when multiple parties claimed the same invention. The U.S. patent system largely transitioned from a "first-to-invent" to a "first-inventor-to-file" system in 2013, making these proceedings much less common today, primarily applying to older patent applications.

• Example 1: Lack of Patentable Subject Matter

  Imagine two inventors, Alice and Bob, both filed patent applications for a new type of self-cleaning window. Alice filed her application earlier, making her the senior party in the interference proceeding initiated by the USPTO. During the process, Alice's legal team discovers that Bob's claims for his self-cleaning window describe an invention that was already publicly known and used by others long before Bob filed his application. Alice's attorney would file a motion to dissolve interference, arguing that Bob's claims are unpatentable due to prior art, and therefore, there's no valid patentable invention for Bob to claim, making the interference proceeding unnecessary.

  Explanation: Alice, as the senior party, uses the motion to argue that Bob's claims are not legally viable for a patent, thereby removing the basis for the interference and dismissing Bob's challenge to her priority as the first inventor.

• Example 2: No True Overlap Between Inventions

  Consider two pharmaceutical companies, PharmaCorp and BioGen, both developing a new drug for a specific condition. PharmaCorp filed its patent application for Compound X earlier than BioGen filed for Compound Y. The USPTO declares an interference because the initial review suggests their claims might overlap. However, after a detailed analysis, PharmaCorp's legal team realizes that while the compounds address the same condition, Compound Y has a significantly different chemical structure and mechanism of action that makes it distinct and not truly the "same invention" as Compound X. PharmaCorp would file a motion to dissolve interference, asserting that there is no "common patentable subject matter" between the two applications, meaning the interference was declared in error and should be terminated.

  Explanation: PharmaCorp, the senior party, uses the motion to demonstrate that despite initial appearances, the two inventions are sufficiently different, negating the need for an interference to determine who invented first.

• Example 3: Junior Party's Claims Lack Adequate Support

  A solo inventor, Dr. Chen, files a patent application for a novel medical device. A few months later, a large medical technology company, MedTech Inc., files an application for a similar device, leading to an interference with Dr. Chen as the senior party. Dr. Chen's legal team reviews MedTech Inc.'s application and discovers that while MedTech Inc. claims a broad range of features, their original patent application only describes a very narrow version of the device, and their later, broader claims are not adequately supported by the initial disclosure. Dr. Chen would file a motion to dissolve interference, arguing that MedTech Inc.'s claims are unpatentable because they are not properly supported by their own application, thus invalidating their basis for challenging Dr. Chen's priority.

  Explanation: Dr. Chen, the senior party, employs the motion to argue that the junior party's (MedTech Inc.'s) claims are procedurally flawed and unpatentable, thereby seeking to end the interference and affirm Dr. Chen's presumptive status as the first inventor.