Chapter 2300: Interferences
An interference is a proceeding that is held before the Patent Trial and Appeal Board to determine who should receive the right to a patent when a pending application claims the same invention as another pending application or an unexpired patent. The PTO will not conduct interferences which only involve issued patents.
Interferences will only be conducted when at least one pending application is involved. The examination should be completed on all other issues before an interference is ever called. Interferences have been phased out by Derivation Proceedings. However, applications filed before March 16, 2013 are still eligible for interferences.
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If a patent application claims the same invention as a patent or another application, a priority contest (also called an interference) under 35 U.S.C. 135 may proceed. An interference is a proceeding held before the Board of Patent Appeals and Interferences (also known as the Board). It is called to determine who will receive priority of the invention in question and therefore, who will receive the patent. Interferences may occur between a pending application and one or more pending application or a pending application and one or more unexpired patents. This section covers more details concerning interferences.
This section helps explain when an examiner should consult an interference practice specialist (IPS). It also explains that an interference should take place after the examination of the application if one is necessary at all.
It covers the differences between an application vs. patent interference (which commonly happens when one party is not in condition for allowance) and an application vs. application interference (which often happens when both parties are in condition for allowance and the earliest effective filing dates are within six months.
When both parties are in condition for allowance and the earliest effective filing dates of the applications are not within six months of each other, an interference should not be called. Further details are discussed in this section.
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.
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.
This section covers the requirement for making a priority showing. 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. Further details are covered in this section including a discussion of 37 C.F.R. 1.131 and how a priority showing is not the same as a priority statement.
An interference will not be declared involving a national application under secrecy order. When the secrecy order expires, the interference may then be called.
If an application under secrecy order has claims that interfere with an application not under secrecy order, then the application not under secrecy order should be allowed. An interference may be suggested with the application under secrecy order once the secrecy order has been lifted.
This section covers the action during an interference. The Board of Patent Appeals and Interferences always has jurisdiction over a patent or an application that is involved in an interference. The Board will have jurisdiction until the interference is terminated.
This section discusses the actions that take place after an interference. 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. Further details including how added or amended claims are handled and an explanation of no interference-in-fact is given. This essentially means no interference is needed.
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