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 2303 Completion of Examination

MPEP SECTION SUMMARY

The examination should be completed on all other issues before an interference is called, which means all pending claims must be allowed, finally rejected, or canceled, all petitions must be decided, and all appeals from the final rejection must be completed. Further details on the completion of the examination are discussed in this section.

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ยง 41.102 Completion of examination.

Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:

(a) Examination or reexamination must be completed, and

(b) There must be at least one claim that:

(1) Is patentable but for a judgment in the contested case, and

(2) Would be involved in the contested case.

Restriction requirements may be appropriate when an interference takes place:

  • If an application contains both interfering and non-interfering claims, a restriction requirement should be made between the two.
    • This will minimize the claims that are involved in the interference (the Board will only need to deal with the claims that are directly related to the interference) and no others.
  • If unpatentable claims whose further prosecution will delay the interference and the delay will create prejudice toward another applicant or the public, a restriction requirement may be made.

An applicant may choose to cancel claims and refile them in a continuation application without waiting for the restriction requirement.

Applicants may file reissue applications to amend patent claims in response to the events of an interference.

  • However, the Board does not permit reissue applicants to add claims that would not correspond to a count.

All issues must be resolved before an interference may be suggested, including patents undergoing reexamination or reissue:

  • These issues may affect how the interference is declared (in many cases, it will eliminate the basis for an interference).
  • For example, if a patent maintenance fee has not been paid on time and a petition to accept delayed payment is still pending, then the interference must be postponed until the petition has been decided (this is due to the fact that if the petition is rejected, the patent will be considered expired and unexpired patents are not eligible for an interference).

Patent term adjustments may be available for patents whose issuance has been delayed for an interference.

Any administrative trial ordinarily must be resolved before an interference is suggested.

» 2304 Suggesting an Interference