2307 Action During an Interference [R-08.2012]
37 C.F.R. 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.
Once a patent or application becomes involved in an interference, the Board of Patent Appeals and Interferences (Board) has jurisdiction over the file. The examiner may not act on an involved patent or application except as the Board may authorize.
The Board may occasionally consult with the examiner, for instance, on a question regarding the technology at issue in an involved application or patent.
The Board retains jurisdiction over the interference until the interference is terminated. The Director has defined termination to occur after a final Board judgment in the interference and the period for seeking judicial review has expired or, if judicial review is sought, after completion of judicial review including any further action by the Board. 37 CFR 41.205(a).
2307.01 Ex Parte Communications [R-08.2012]
37 C.F.R. 41.11 Ex parte communications in inter partes proceedings.
An ex parte communication about an inter partes reexamination (subpart C of this part) or about a contested case (subparts D and E of this part) with a Board member, or with a Board employee assigned to the proceeding, is not permitted.
Since an interference involves two or more parties, the integrity of the process requires the opportunity for the opposing party to participate in communications or actions regarding any involved application or patent. Once an interference is declared, any attempt by a party to communicate with the Board of Patent Appeals and Interferences (Board) through the examiner or to have the examiner act in an involved patent or application without Board authorization should be promptly reported to the Board. Board action may include a sanction in the interference or referral of a patent practitioner to the Office of Enrollment and Discipline.
2307.02 Access to Related Files [R-08.2012]
37 C.F.R. 41.109 Access to and copies of Office records.
- (a) Request for access or copies. Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.
- (b) Authorization of access and copies.
Access and copies will ordinarily only be authorized for the following
- (1) The application file for an involved patent;
- (2) An involved application; and
- (3) An application for which a party has been accorded benefit under subpart E of this part.
In addition to any access permitted to a member of the public under 37 CFR 1.11 and 1.14 (see MPEP § 103), an opposing party may be authorized under 37 CFR 41.109 to have access to or a copy of the record for any involved patent or application, and for any application for which benefit has been accorded. The availability of a file to an opposing party under 37 CFR 41.109 has no bearing on whether a file is otherwise available under 37 CFR 1.11 or 1.14.
2307.03 Suspension of Related Examinations [R-08.2012]
Although the examiner may not act in a patent or an application directly involved in an interference, 37 CFR 41.103, examination may continue in related cases, including any benefit files. Once examination is completed, the examiner should consult with an Interference Practice Specialist (IPS) to determine whether and how further action should proceed. The IPS may consult with the Board of Patent Appeals and Interferences (Board) to determine whether the application claims would be barred in the event the applicant loses the interference.
Suspension may be necessary if the claims would be barred by a loss in the interference. Steps should be considered to minimize the effect of any patent term adjustment that would result from the suspension. For instance, the examiner could require restriction, 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued. The applicant may then file a divisional application with the interfering claims, which may be suspended.
2307.04 Additional Parties to Interference [R-08.2012]
During the course of an interference, the examiner may come across applications or patents of parties that claim the same invention, but are not already involved in the interference. If so, the examiner should consult with an Interference Practice Specialist (IPS) and prepare a referral of the suggested interference to the Board of Patent Appeals and Interferences in the same way that a referral is prepared in the first instance.
2307.05 Board Action on Related Files [R-08.2012]
Occasionally, the Board may order that a paper be filed in a related application. Generally, the paper will notify the examiner of a fact, such as a party admission or prior art, that may be relevant to examination of the related case.
2307.06 Action at the Board [R-08.2012]
Action at the Board of Patent Appeals and Interferences (Board) during an interference is beyond the scope of this Chapter. For further information, see 37 CFR part 41, subparts A, D, and E; see also the Board’s Contested Case Practice Guide. A Standing Order and other orders, which further direct the conduct of the parties, are also entered in each interference.