uspto.gov
Skip over navigation

2304    Suggesting an Interference [R-08.2012]

The suggestion for an interference may come from an applicant or from an examiner. Who suggests the interference determines what must be done and shown prior to declaration of an interference. In either circumstance, the examiner must consult with an Interference Practice Specialist (IPS), who may then refer the suggested interference to the Board of Patent Appeals and Interferences.

2304.01   Preliminaries to Referring an Interference to the Board [R-08.2012]

2304.01(a)   Interference Search

When an application is in condition for allowance, an interference search must be made by performing a text search of the “US-PGPUB” database in EAST or WEST directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists. If interfering subject matter does exist, the examiner will follow the guidance set forth in this chapter. If there is no interfering subject matter then the examiner should prepare the application for issuance. A printout of only the database(s) searched, the query(ies) used in the interference search, and the date the interference search was performed must be made of record in the application file. The results of the interference search must not be placed in the application file.

The search for interfering applications must not be limited to the class or subclass in which the application is classified, but must be extended to all classes, in and out of the Technology Center (TC), in which it has been necessary to search in the examination of the application. See MPEP § 1302.08.

2304.01(b)   Obtaining Control Over Involved Files

Ordinarily applications that are believed to interfere should be assigned to the same examiner.

I.   IN DIFFERENT TECHNOLOGY CENTERS

If the interference would be between two applications, and the applications are assigned to different Technology Centers (TCs), then one application must be reassigned. Ordinarily the applications should both be assigned to the TC where the commonly claimed invention would be classified. After termination of the interference, further transfer may be appropriate depending on the outcome of the interference.

II.   PAPERS NOT CONVERTED TO IMAGE FILE WRAPPER FILES

Although the official records for most applications have been converted into Image File Wrapper (IFW) files, some records exist only in paper form, particularly older benefit application files. Even IFW files may have artifact records that have not been converted. Complete patent and benefit files are necessary for determining whether benefit should be accorded for purposes of 35 U.S.C. 102(g)(1). A suggested interference must not be referred to the Board of Patent Appeals and Interferences (Board) if all files, including benefit files, are not available to the examiner in either IFW format or paper.

If a paper file wrapper has been lost, it must be reconstructed before the interference is referred to the Board.

III.   PATENT COOPERATION TREATY APPLICATION FILES

Generally, a separate application file for a Patent Cooperation Treaty (PCT) application is not required for according benefit because the PCT application is included in a national stage application file that is itself either the application involved in the interference or a benefit file. Occasionally, however, the PCT application file itself is required for benefit. For instance, if benefit is claimed to the PCT application, but not to a national stage application in which it is included, then the PCT application file must be obtained.

2304.01(c)   Translation of Foreign Benefit Application

A certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English is required. 35 U.S.C. 119(b)(3) and 372(b)(3) and 37 CFR 1.55(a)(4). If no certified translation is in the official record for the application, the examiner must require the applicant to file a certified translation. The applicant should provide the required translation if applicant wants the application to be accorded benefit of the non-English language application. Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file. 37 CFR 41.154(b) and 41.202(e).

Form paragraph 23.19 may be used to notify applicant that a certified English translation of the priority document is required.

¶ 23.19    Foreign Priority Not Substantiated

Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e).

Failure to provide a certified translation may result in no benefit being accorded for the non-English application.

2304.01(d)   Sorting Claims

An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.

Interfering claims of an applicant are “conflicting claims” within the meaning of 37 CFR 1.78(b). The examiner may require consolidation of such claims into any disclosure of the applicant that provides support for the claims. 35 U.S.C. 132(a).

Similarly, the examiner should require an applicant to restrict an application to the interfering claims, 35 U.S.C. 121, in which case the applicant may file a divisional application for the claims that do not interfere.

Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112, first paragraph for the claim.

2304.02   Applicant Suggestion [R-08.2012]

37 C.F.R. 41.202   Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
    • (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
    • (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
    • (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
    • (4) Explain in detail why the applicant will prevail on priority,
    • (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
    • (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.

*****

  • (d) Requirement to show priority under 35 U.S.C. 102(g). (1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
    • (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.

*****

When an applicant suggests an interference under 37 CFR 41.202(a), an examiner must review the suggestion for formal sufficiency. As explained in MPEP § 2304.02(c), the examiner is generally not responsible for determining the substantive adequacy of any priority showing. The examiner may, however, offer pertinent observations on any showing when the suggested interference is referred to the Board of Patent Appeals and Interferences. The observations may be included as an attachment to the Form PTO-850.

Form paragraphs 23.06 to 23.06.06 may be used to acknowledge applicant’s suggestion for interference under 37 CFR 41.202(a) that failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.

¶ 23.06    Applicant Suggesting an Interference

Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1].

Examiner Note:

  • 1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.
  • 2. In bracket 1, insert the date of applicant’s communication.
  • 3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04.

¶ 23.06.01    Failure to Identify the Other Application or Patent

Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a).

¶ 23.06.02    Failure to Identify the Counts and Corresponding Claims

Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b).

¶ 23.06.03    Failure to Provide Claim Chart Comparing At Least One Claim

Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c).

¶ 23.06.04    Failure to Explain in Detail Why Applicant Will Prevail on Priority

Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c).

¶ 23.06.05    Claim Added/Amended; Failure to Provide Claim Chart Showing Written Description

Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d).

¶ 23.06.06    Time Period for Reply

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication to correct the deficiency(ies). THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.

2304.02(a)   Identifying the Other Application or Patent

37 C.F.R. 41.202   Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
    • (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,

*****

Usually an applicant seeking an interference will know the application serial number or the patent number of the application or patent, respectively, with which it seeks an interference. If so, providing that number will fully meet the identification requirement of 37 CFR 41.202(a)(1).

Occasionally, an applicant will believe another interfering application exists based only on indirect evidence, for instance through a journal article, a “patent pending” notice, or a foreign published application. In such cases, information about likely named inventors and likely assignees may lead to the right application. The applicant should be motivated to help the examiner identify the application since inadequate information may prevent the declaration of the suggested interference.

2304.02(b)   Counts and Corresponding Claims

37 C.F.R. 41.202   Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:

*****

  • (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
  • (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),

*****

The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board of Patent Appeals and Interferences uses to determine what evidence may be used to prove priority under 35 U.S.C. 102(g)(1).

The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.

2304.02(c)   Explaining Priority

37 C.F.R. 41.202   Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:

*****

  • (4) Explain in detail why the applicant will prevail on priority,

*****

  • (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.

*****

  • (d) Requirement to show priority under 35 U.S.C. 102(g). (1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
    • (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.

*****

A description in an application that would have anticipated the subject matter of a count is called a constructive reduction-to-practice of the count. One disclosed embodiment is enough to have anticipated the subject matter of the count. If the application is relying on a chain of benefit disclosures under any of 35 U.S.C. 119, 120, 121 and 365, then the anticipating disclosure must be continuously disclosed through the entire benefit chain or no benefit may be accorded.

If the application has an earlier constructive reduction-to-practice than the apparent earliest constructive reduction-to-practice of the other application or patent, then the applicant may simply explain its entitlement to its earlier constructive reduction-to-practice. Otherwise, the applicant must (A) antedate the earliest constructive reduction-to-practice of the other application or patent, (B) demonstrate why the other application or patent is not entitled to its apparent earliest constructive reduction-to-practice, or (C) provide some other reason why the applicant should be considered the prior inventor.

The showing of priority may look similar to showings under 37 CFR 1.130-1.132, although there are differences particularly in the scope of what must be shown. In any case, with the exception discussed below, the examiner is not responsible for examining the substantive sufficiency of the showing.

I.   REJECTION UNDER 35 U.S.C. 102(a) or 102(e)

If an application claim is subject to a rejection under 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR 41.202(a) rather than a declaration under 37 CFR 1.130-1.132, then the examiner must review the suggestion to verify that the applicant’s showing, taken at face value, is sufficient to overcome the rejection. If the examiner determines that the showing is not sufficient, then the examination is not completed, 37 CFR 41.102, the rejection should be maintained and the suggestion should not be referred to the Board of Patent Appeals and Interferences (Board) for an interference.

II.   COMPLIANCE WITH 35 U.S.C. 135(b)

If an application claim interferes with a claim of a patent or published application, and the claim was added to the application by an amendment filed more than one year after issuance of the patent, or the application was not filed until more than one year after issuance of the patent (but the patent is not a statutory bar), then under the provisions of 35 U.S.C. 135(b), an interference will not be declared unless at least one of the claims which were in the application, or in a parent application, prior to expiration of the one-year period was for “substantially the same subject matter” as at least one of the claims of the patent.

If the applicant does not appear to have had a claim for “substantially the same subject matter” as at least one of the patent claims prior to the expiration of the one-year period, the examiner may require, 35 U.S.C. 132, that the applicant explain how the requirements of 35 U.S.C. 135(b) are met. Further, if the patent issued from an application which was published under 35 U.S.C. 122(b), note the one year from publication date limitation found in 35 U.S.C. 135(b)(2) with respect to applications filed after the date of publication.

The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different material limitation in the claim. These tests are distinctly different. The analysis focuses on the interfering claim to determine whether all material limitations of the interfering claim necessarily occur in a prior claim. In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002). If none of the claims which were present in the application, or in a parent application, prior to expiration of the one-year period meets the “substantially the same subject matter” test, the interfering claim should be rejected under 35 U.S.C. 135(b). In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997). Note that the expression “prior to one year from the date on which the patent was granted” in 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).

Form paragraph 23.14 may be used to reject a claim as not being made prior to one year of the patent issue date. Form paragraph 23.14.01 may be used to reject a claim as not being made prior to one year from the application publication date.

¶ 23.14    Claims Not Copied Within One Year of Patent Issue Date

Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.

¶ 23.14.01    Claims Not Copied Within One Year Of Application Publication Date

Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.

Examiner Note:

  • 1. In bracket 2, insert the publication number of the published application.
  • 2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.

2304.02(d)   Adequate Written Description

37 C.F.R. 41.202   Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:

*****

  • (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and

*****

An applicant is not entitled to an interference simply because applicant wants one. The interfering claim must be allowable, particularly with respect to the written description supporting the interfering claim.

Historically, an applicant provoked an interference by copying a claim from its opponent. The problem this practice created was that differences in the underlying disclosures might leave the claim allowable to one party, but not to the other; or despite identical claim language differences in the disclosures might require that the claims be construed differently.

Rather than copy a claim literally, the better practice is to add (or amend to create) a fully supported claim and then explain why, despite any apparent differences, the claims define the same invention. 37 CFR 41.203(a). The problem of inadequate written description in claims added or amended to provoke an interference is so great that the issue has been singled out for heightened scrutiny early in the course of an interference. 37 CFR 41.201, under “Threshold issue.”

2304.03   Patentee Suggestion [R-08.2012]

37 C.F.R. 41.202   Suggesting an interference.

*****

  • (b) Patentee. A patentee cannot suggest an interference under this section but may, to the extent permitted under § 1.99 and § 1.291 of this title, alert the examiner of an application claiming interfering subject matter to the possibility of an interference.

*****

A patentee may not suggest an interference unless it becomes an applicant by filing a reissue application. A patentee may, however, to the limited extent permitted under 37 CFR 1.99 and 1.291, alert an examiner to the existence of interfering claims in an application. See MPEP § 1134 and § 1901.

2304.04   Examiner Suggestion [R-08.2012]

37 C.F.R. 41.202   Suggesting an interference.

*****

  • (c) Examiner. An examiner may require an applicant to add a claim to provoke an interference. Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the applicant must also comply with paragraphs (a)(2) through (a)(6) of this section. The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g):
    • (1) Be patentable to the applicant, and
    • (2) Be drawn to patentable subject matter claimed by another applicant or patentee.

*****

2304.04(a)   Interfering Claim Already in Application

If the applicant already has a claim to the same subject matter as a claim in the application or patent of another inventor, then there is no need to require the applicant to add a claim to have a basis for an interference.

The examiner may invite the applicant to suggest an interference pursuant to 37 CFR 41.202(a). An applicant may be motivated to do so in order to present its views on how the interference should be declared.

If the applicant does not suggest an interference, then the examiner should work with an Interference Practice Specialist (IPS) to suggest an interference to the Board of Patent Appeals and Interferences (Board). The suggestion should include an explanation of why at least one claim of every application or patent defines the same invention within the meaning of 37 CFR 41.203(a). See MPEP § 2301.03 for a discussion of interfering subject matter. The examiner must also complete Form PTO-850.

The examiner should be prepared to discuss why claims interfere, whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art, and whether an applicant or patentee is entitled to claim the benefit of an application as a constructive reduction-to-practice. The IPS may require the examiner to prepare a memorandum for the Board on any of these subjects. The IPS may require the examiner to participate in a conference with the Board to discuss the suggested interference.

2304.04(b)   Requiring a Claim

35 U.S.C. 132   Notice of rejection; reexamination.

  • (a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

*****

The examiner may, pursuant to 35 U.S.C. 132(a), require an applicant to add a claim that would interfere with the claim of another application or patent. For example, the requirement may be made to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will pursue claims to the interfering subject matter. When the requirement is based on a published application with allowed claims or a patent, the examiner must identify the published application or the patent in making the requirement.

Given the cost and complexity of interferences, a requirement to add a claim under 37 CFR 41.202(c) should not be lightly made. Before making the requirement, the examiner should consult with an Interference Practice Specialist (IPS). The following principles should guide the examiner in exercising discretion to make this requirement:

  • (A) An interference should generally not be suggested if examination of the application is not otherwise completed.
  • (B) The required claim must not encompass prior art or otherwise be barred.
  • (C) The application must provide adequate support under 35 U.S.C. 112, first paragraph for the subject matter of the required claim.
  • (D) A claim should not be required when the applicant expressly states that the commonly described subject matter is not the applicant’s invention.
  • (E) A claim based on a claim from a published application should not be required unless the claim from the published application has been allowed.

Example 1

A patent is 35 U.S.C. 102(b) prior art against any possible interfering claim. No interfering claim should be required.

Example 2

The patent issued more than one year ago and the applicant did not previously have a claim to the same subject matter. Any added claim would most likely be time barred under 35 U.S.C. 135(b)(1). No interfering claim should be required.

Example 3

An application describes work that attributes to another inventor, but also describes and claims an improvement. The other inventor has received a patent for original work. The applicant may in some sense have 35 U.S.C. 112, first paragraph support for an interfering claim to the other inventor’s work. Nevertheless, the applicant has indicated that the commonly described subject matter is not the applicant’s invention. No interfering claim should be required.

Example 4

An application has support for both a generic claim G and a species claim G1. The applicant only claims the genus G. A patent discloses and claims only G1. Under the facts of this example, there is no evidence that genus G would have rendered the species G1 obvious. If for some reason the patent is not available as a reference against the application, the examiner may require the applicant to add a claim to species G1 after consulting with an IPS.

Example 5

Published application H and application I both support a claim to H1. Published application H contains a claim to H1, but application I does not. The claim to H1 in the published application is under rejection. Applicant I should not ordinarily be required to add the claim.

Form paragraph 23.04 may be used to require applicant to add a claim to provoke interference.

¶ 23.04    Requiring Applicant to Add Claim to Provoke Interference

The following allowable claim from [1]is required to be added for the purpose of an interference:

[2]

The claim must be copied exactly.

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication to add the claim. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim, but will not result in abandonment of this application. See 37 CFR 41.202(c) and MPEP § 2304.04(b). THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.

If the interference would be with a patent, applicant must also comply with 37 CFR 41.202(a)(2) to (a)(6).

Examiner Note:

  • 1. In bracket 1, insert the published application number if the claim is an allowed claim from a U.S. application publication or the patent number if the claim is from a U.S. patent.
  • 2. In bracket 2, insert the claim which applicant is required to add to provoke an interference.

  APPLICANT MUST ADD THE CLAIM

If required to add a claim under 37 CFR 41.202(c), the applicant must do so. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim. The applicant would then be barred from claiming, not only the subject matter of the required claim, but any subject matter that would have been anticipated or rendered obvious if the required claim were treated as prior art. In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA 1975).

While complying with the requirement to add a claim, an applicant may also express disagreement with the requirement several ways, including:

  • (A) Identifying a claim already in its application, or another of its applications, that provides a basis for the proposed interference;
  • (B) Adding an alternative claim and explaining why it would provide a better basis for the proposed interference (such as having better support in the applicant’s disclosure); or
  • (C) Explaining why the required claim is not patentable to the applicant.

The examiner may withdraw the requirement if persuaded by the reasons the applicant offers.

2304.05   Common Ownership [R-08.2012]

37 C.F.R. 41.206   Common interests in the invention.

An administrative patent judge may decline to declare, or if already declar ed the Board may issue judgment in, an interference between an application and another application or patent that are commonly owned.

An interference is rarely appropriate between two applications or an application and patent that belong to the same owner. The owner should ordinarily be able to determine priority and is obligated under 37 CFR 1.56 to inform the examiner about which application or patent is entitled to priority. The examiner may require an election of priority between the application and other application or patent. 35 U.S.C. 132(a).

In making the election, the owner must eliminate the commonly claimed subject matter. This may be accomplished by canceling the interfering application claims, disclaiming the interfering patent claims, amending the application claims such that they no longer interfere, or filing a reissue application to amend the patent claims such that they no longer interfere.

Example 1

Two corporations have applications that claim the same invention. After a merger of the corporations, the resulting corporation owns both applications. The new corporation is obligated to investigate priority. Once the corporation has had an opportunity to determine which application is entitled to priority, the corporation must elect between the applications or otherwise eliminate the need for an interference.

Example 2

J files an application in which J is the sole inventor and assignee. K files an application in which J and K are named as inventors and co-assignees. Although J is an owner of both applications, an interference may nevertheless be necessary if J and K disagree about which application is entitled to priority.

[top]

 

United States Patent and Trademark Office
This page is owned by Patents.
Last Modified: 03/27/2014 10:10:34