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 2304 Suggesting an Interference

MPEP SECTION SUMMARY An interference may be suggested by an applicant or an examiner. This section explains what happens depending on whether an applicant or an examiner calls the interference. It discusses the preliminary activities that need to happen before referring an interference to the Board. For instance, an interference search must be performed on each application in condition for allowance. In addition, this section covers the difference between the proceedings when an applicant suggests an interference vs. when the examiner suggests an interference. For example, when an applicant suggests an interference, the examiner will need to review the suggestion to ensure it meets the requirements. A patentee may not suggest an interference. The only way is for the patentee to become an applicant by filing a reissue application. Further details for suggesting an interference are covered in this section.

  Section Frequency Chart

An interference search must be performed on each application in condition for allowance.

The papers must be available to the Board as image file wrapper (IFW) files or paper.

If the PCT application file itself is required for benefit then the PCT file must be obtained.

A certified translation of every foreign benefit application or PCT application not filed in English is required.

The claims involved with the interference must be sorted from the claims not involved with the interference (restriction requirements may be used for this purpose).

When an applicant suggests an interference, the examiner will need to review the suggestion to ensure it meets the requirements stated in 37 C.F.R. 41.202(a).

The requirements of 37 C.F.R. 41.202(a) include:

• The identification of the interfering application or patent (serial number or the patent number, or indirect evidence like the inventors or assignee names will suffice).
• At least one patentable count with at least one patentable claim from each party for each count, and a claim chart comparing at least one set of claims for each count must be included.
• An explanation of priority (see section below on explaining priority).
  • A detailed explanation of why the applicant will prevail on priority.
  • A chart showing where the disclosure provides a constructive reduction-to-practice within the scope of the interfering subject matter.
  • A requirement to show priority under 35 U.S.C. 102(g).
• A claim chart showing the written description for each claim in the applicant’s specification (if a claim has been added or amended to provoke the interference).
  • The interfering claim must be allowable and the written description must support the interfering claim.
  • The best practice is to add (or amend to create) a fully supported claim and then explain why the claims define the same invention.

Interfering claims of applications with either the same assignee or the same inventive entity are "patentably indistinct claims" within the meaning of 37 CFR 1.78(f) and that the examiner may require consolidation of such claims into a single application that provides support for the claims.

A constructive reduction-to-practice of the count is a description in an application that would have anticipated the subject matter of a count.

• One disclosed embodiment is enough to anticipate the subject matter of a count.
• In the event the application relies on a chain of benefit disclosures, then the disclosure must be continuously disclosed throughout the entire benefit claim.

An applicant should simply explain his or her entitlement to any earlier existing constructive reduction-to-practice showings.

If there is no earlier constructive reduction-to-practice, then the applicant may:

• Antedate the earliest constructive reduction-to-practice of the other application or patent.
  
• Show why the other application or patent is not entitled to its constructive reduction-to-practice.
• Provide some other reason why he or she should be considered the first inventor.

The examiner is not responsible for examining the sufficiency of the showing except when:

• The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of attempting to overcome the rejection.
  
  • In this case the examiner must decide if the applicant’s showing is sufficient to overcome the rejection.
    • If the examiner finds the showing not sufficient, then the rejection under 102(a) or (e) still holds true and the examination of the application is not complete (remember, interferences may not be called when the examination is not yet finished).
• Compliance with 35 U.S.C. 135(b) is not met:
  • The application does not have a claim for “substantially the same subject matter” as the interfering patent or published application prior to one-year from the date on which the interfering patent or published application was granted or published.
  • 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 that the applicant explain how the requirements of 35 U.S.C. 135(b) are met, otherwise, a rejection under 35 U.S.C. 135(b) will be made.

With regard to patents, when the requisite relationship between post- and pre-critical date claims is otherwise established, the condition of pre-AIA 35 U.S.C. 135(b)(1) is met and there is no requirement of diligent prosecution.

With regard to published applications, in a subsequently filed application relative to an application published under 35 U.S.C. 122(b), if applicant does not appear to have a claim that is for "substantially the same subject matter" prior to one-year after publication, in accordance with pre-AIA 35 U.S.C. 135(b)(2), an interference will not be declared.

The written description requirement does not demand, as a matter of law, actual examples or an actual reduction to practice, so long as the application or priority application sufficiently described the subject matter to a person skilled in the art.

When an applicant copies a claim from another application or patent, the applicant's claims are construed in view of the originating specification when the other party challenges the sufficiency of written description support.

A patentee may not suggest an interference:

• The only way is for the patentee to become an applicant by filing a reissue application.

An examiner may initiate an interference:

• When the applicant has a claim that claims the same invention as a claim in the application or patent of another inventor.
• The examiner requires an applicant to add a claim to provoke an interference.
  • This may be done to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will pursue claims to the interfering subject matter.

Before requiring an applicant to add a claim to provoke an interference, the examiner should ensure that:

• The application is otherwise completed.
• The required claim does not encompass prior art or would not otherwise be barred.
• The application provides adequate support under 35 U.S.C. 112, first paragraph, for the subject matter of the claim.
• The applicant has not stated that the commonly described subject matter is not the applicant’s invention.
• A claim based on a claim from a published application has been allowed.

If the applicant refuses to add the required claim, the applicant will be barred from claiming the subject matter of the required claim.

• The applicant will also be barred from claiming any subject matter that would have been anticipated or rendered obvious if the required claim were treated as prior art.

An applicant may also express disagreement with the requirement to add a claim by:

• Identifying a claim already in the application that provides a basis for an interference.
• Adding an alternative claim that will spark an interference.
• Explaining why the required claim is not patentable to the applicant.

An interference is rarely appropriate when the application and the interfering application or patent belong to the same owner.

• In this case, the examiner may require an election for priority between the application and other application or patent.
• When making the election, the owner will need to eliminate the commonly claimed subject matter (this may be accomplished by canceling or amending the interfering claims).

 

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