2308 Action After an Interference
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Section Frequency Chart
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| 2308.01 |
(a) Effect within Office—
(1) Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party’s failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
(2) Final disposal of claim. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently.
(b) Request for adverse judgment. A party may at any time in the proceeding request judgment against itself. Actions construed to be a request for adverse judgment include:
(1) Abandonment of an involved application such that the party no longer has an application or patent involved in the proceeding,
(2) Cancellation or disclaiming of a claim such that the party no longer has a claim involved in the proceeding,
(3) Concession of priority or unpatentability of the contested subject matter, and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for further action by the examiner or by the Director. If the Board recommends rejection of a claim of an involved application, the examiner must enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection.
(d) Rehearing. A party dissatisfied with the judgment may file a request for rehearing within 30 days of the entry of the judgment The request must specifically identify all matters the party believes to have been misapprehended or overlooked, and the place where the matter was previously addressed in a motion, opposition or reply.
Once the interference is terminated, jurisdiction will return to the examiner.
- If further action is recommended in the application, then the examiner will need to reopen prosecution.
- If no further action is recommended in the application, then the examiner may reopen prosecution (if necessary, but not required) for any claims left standing.
An interference only resolves the question of priority between the two parties in the interference, it does not address any other issues of examination.
-Added or amended claims
An applicant may file a motion during an interference to add or amend a claim.
A patentee may file a reissue application in support of a motion to add or amend a claim.
The added or amended claim may be added by the examiner only if authorized by the Board.
- However, even if the Board authorizes the added or amended claim, the examiner may later reject the claim.
A party that loses on an issue may not later re-litigate the issue before the examiner or the Board.
- A party is barred (estopped) from raising an issue if the party lost on the issue during the interference.
-No interference-in-fact
A judgment of no interference-in-fact means:
- No interference is needed to resolve the priority issues between the two parties.
- Any further interference between the same parties for the same claims on the invention is barred.
The losing party after an interference judgment has the right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the Federal Circuit (CAFC).
- If the losing party before the Board is unsuccessful after appealing to the CAFC, with all claims being finally refused, and a formal mandate is issued regarding the pending claims then the proceedings in the case are considered terminated on the issue date of the mandate.
