2301 Interference Introduction
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(a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.the Patent and Trademark Office.
An interference is necessary to determine priority between two applicants, or an applicant and a patentee, when they are claiming the same patentable subject matter and their filing dates are close enough together that there is a reasonable possibility that the first to file is not the first inventor
A count is the Board’s description of the interfering subject matter
- The count sets the scope of admissible proofs on priority
- Where there is more than one count, each count must describe a patentably distinct invention
- Every count must have at least one corresponding claim for each party
- A claim may correspond to more than one count
The term “same invention” means patentably indistinct inventions (where there appears to be no difference between the inventions)
Identical language in claims does not guarantee that they are drawn to the same invention
- The application and invention as a whole must be considered, not just the wording of the claims
Applications subject to current 35 U.S.C. 102 may also be subject to an interference.
Even if current 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it:
- (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or
- (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim.
Pre-AIA 35 U.S.C. 102(g)also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied.
- Thus, if an application contains, or contained at any time, a claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, a claim having an effective filing date that is on or after March 16, 2013, each claim may still be subject to an interference in accordance with pre-AIA 35 U.S.C. 102(g) while the application is also subject to current 35 U.S.C. 102 and 103.
Where an application not subject to pre-AIA 35 U.S.C. 102(g) interferes with a patent subject to pre-AIA 35 U.S.C. 102(g), the examiner should consult with an Interference Practice Specialist.
