2305 Requiring a Priority Showing
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(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.
The applicant must make a priority showing when the application’s earliest constructive reduction-to-practice is later than the earliest constructive reduction-to-practice of a patent or published application.
The two situations where a showing under 37 C.F.R. 41.202(d) is filed without an examiner include:
- When the applicant is complying with the order to suggest an interference.
- When the applicant is attempting to overcome a rejection based on pre-AIA 35 U.S.C. 102(a) or 102(e).
- This usually occurs when an affidavit under 37 C.F.R. 1.131 is not permitted because the applicant is claiming interfering subject matter.
-37 C.F.R. 1.131
When a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) has been made, and the applicant cannot submit an affidavit under 37 C.F.R. 1.131 because the reference has claims directed to the same patentable invention as the application claims being rejected, then the applicant must make a priority showing under 37 C.F.R. 41.202(d).
If an interference is not possible at the time the affidavit would be submitted, then the affidavit under 37 C.F.R. 1.131 should be permitted.
An interference may not be possible at the time the affidavit would be submitted due to the fact that:
- The claims related to the affidavit are not published claims, but currently existing claims (this can arise if the claims that were published have been changed or
amended).- In this case, since the claims in the patent or published application and the rejected claims no longer interfere, an affidavit under 37 C.F.R. 1.131 may be submitted.
- The interfering claims in a published application are not yet in condition for allowance.
-Not a priority statement
A priority showing under 37 C.F.R. 41.202(d)(1)is not the same as a priority statement under 37 C.F.R. 41.204(a).
A priority showing:
- Is submitted during examination.
- Must actually prove priority if an interference is declared assuming that the opposing party does not oppose the showing.
- If a priority showing is found to be insufficient for the Board, the applicant will not be allowed to present additional evidence without good cause.
A priority statement:
- Is filed during the interference.
- Serves as a notice of what a party intends to prove on the issue of priority during an interference.
