MPEP Summary Chapter 2300

MPEP Summary Chapter 2300 Interference Proceedings

An interference is a proceeding that is held before the Board of Patent Appeals and Interferences 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**WILL BE TESTED ON NEW EXAM**. The PTO will ask questions on this chapter and relate the topic of interferences to the topics of reexaminations, protests and appeals. You should pay special attention to actions after the interference, access to interferences, the meaning of diligence and actual reduction to practice.

2300 Introduction
If a patent claims the same invention as an application and its issue date is near to that of the application, a rejection of claims of the application under 35 U.S. C. 135(b) is made.

35 U.S.C. 135 Interferences.
(a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.
(b) (1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.
(c) Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, shall be in writing and a true copy thereof filed in the Patent and Trademark Office before the termination of the interference as between the said parties to the agreement or understanding. If any party filing the same so requests, the copy shall be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to file the copy of such agreement or understanding shall render permanently unenforceable such agreement or understanding and any patent of such parties involved in the interference or any patent subsequently issued on any application of such parties so involved. The Director may, however, on a showing of good cause for failure to file within the time prescribed, permit the filing of the agreement or understanding during the sixmonth period subsequent to the termination of the interference as between the parties to the agreement or understanding. The Director shall give notice to the parties or their attorneys of record, a reasonable time prior to said termination, of the filing requirement of this section. If the Director gives such notice at a later time, irrespective of the right to file such agreement or understanding within the sixmonth period on a showing of good cause, the parties may file such agreement or understanding within sixty days of the receipt of such notice. Any discretionary action of the Director under this subsection shall be reviewable under section 10 of the Administrative Procedure Act.
(d) Parties to a patent interference, within such time as may be specified by the Director by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9 to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining patentability of the invention involved in the interference.

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 applications
a pending application and one or more unexpired patents

an interference is necessary to determine priority between two applicants, or an applicant and a patentee, when they are claiming the same patentable subject matter and their filing dates are close enough together that there is a reasonable possibility that the first to file is not the first inventor

interferences are:
proceedings in the PTO between two applications or an application and a patent
used to determine which inventive entity is entitled to obtain claims covering an invention both seek to patent
never between two patents that are issued
all interferences involve at least one pending application
reissue applications may be involved in interferences

an interference resembles a lawsuit, it has:
motions
discovery briefs
a hearing
appeals

provoking an interference:
an interference between pending applications is normally initiated by the examiner, and only occasionally by an applicant
an interference between a pending application and a patent is normally provoked by the applicant

interferences may be provoked by:
an examiner (usually between pending applications)
an applicant (usually when between a pending application and a patent)
no interference will be allowed involving an application under secrecy order

one way to initiate an interference is to copy claims from a patent into an application
the PTO emphasizes that the patent and claim number must be identified in this case

the party that prevails during an interference is the party that can establish the:
earlier reduction to practice
earlier date of conception coupled with diligence
earlier filing date, parent filing date or foreign filing date

priority contests (or interferences):
the PTO does not always award priority to the first filed application, instead the PTO has interferences
are not required to show diligence between an actual reduction to practice and the submission of constructive reduction to practice so long as an invention is not abandoned, suppressed or concealed
must show diligence during the time one inventor conceived of the idea and the other inventors actual reduction to practice
the first to show actual reduction to practice will win the interferences under normal circumstances
reissue applications are not precluded from being involved in an interference

the loser in an interference may appeal to the District Court

the claim being fought over is called a count:
it defines the interfering subject matter between an application and/or patents
a given inventor may have reduced to practice certain counts without having reduction to practice of others

an inventor (in a priority contest against another inventor) can rely on activities in a WTO and NAFTA member country to establish a date of invention prior to the publication of a related article

in an interference:
35 U.S.C. 135(b) precludes an application from copying a claim from a patent that has been issued for more than one year
the Commissioner cannot waive this rule as it is a statutory requirement
an examiner does not have discretionary power to accept claims barred by statute

Example:
if a reference in question is a noncommonly owned U.S. patent claiming the same invention as the applicant and its issue date is less than one year prior to the presentation of claims to that invention in the application being examined, the applicant's remedy is to request an interference

2302 Consult an Interference Practice Specialist

§ 41.202 Suggesting an interference.
(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.

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 is no longer appropriate to suspend an application on the chance that an interference might ultimately result

One party not in condition for allowance
a. a first application will usually be granted a Notice of Allowance and become a patent (in spite of a second application with interfering claims) when all of the following conditions are met:
i. the first application and a second application claim the same patentable invention; and
ii. a first application is in condition for allowance; and
iii. the second application is not in condition for allowance
1) in the instance above, an interference may be appropriate when examination of the second application is complete, this would result in an application vs. patent interference

Both parties in condition for allowance
a. Within six months
i. when both parties are in condition for allowance and the earliest effective filing dates are within six months, an interference may be suggested
ii. this would result in an application vs. application interference
iii. if the earliest filed application is available as a reference against the later filed application, then a rejection should be made against the later filed application
iv. in this case the earlier filed application should be allowed and issued
b. Not within six months
i. 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
ii. in this case the application with the earliest effective filing date shall issue
iii. the application with the later filing date will be rejected on the basis of the earlier filed application
iv. the only way an interference can be suggested is if the later filed application can make the showing required by 37 CFR 41.202(d) (this rule states that the applicant must show why his or her later filed application would prevail on priority)

2303 Completion of Examination

§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.

the examination should be completed on all other issues before an interference is called, which means:
a. all pending claims must be allowed, finally rejected, or canceled
b. all petitions must be decided
c. all appeals from the final rejection must be completed

restriction requirements may be appropriate when an interference takes place:
a. if an application contains both interfering and noninterfering claims, a restriction requirement should be made between the two
i.. 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
b. 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:
a. these issues may affect how the interference is declared (in many cases, it will eliminate the basis for an interference)
b. 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)

2304 Suggesting an Interference

§ 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
(1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
(2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
(3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
(4) Explain in detail why the applicant will prevail on priority,
(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant's specification, and
(6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.

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.

Preliminaries before referring an interference to the Board
a. an interference search must be performed on each application in condition for allowance
b. the papers must be available to the Board as image file wrapper (IFW) files or paper
i. if the PCT application file itself is required for benefit then the PCT file must be
obtained
ii. a certified translation of every foreign benefit application or PCT application not filed in
English is required
c. 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) o

Applicant suggestion
a. 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:
a. 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)
b. 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
i.. an explanation of priority (see section below on explaining priority)
ii. a detailed explanation of why the applicant will prevail on priority
iii. a chart showing where the disclosure provides a constructive reductiontopractice within the scope of the interfering subject matter
iv. a requirement to show priority under 35 U.S.C. 102(g)
v. 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)
vi. the interfering claim must be allowable and the written description must support the interfering claim
vii. the best practice is to add (or amend to create) a fully supported claim and then explain why the claims define the same invention

Explaining priority
a. a constructive reductiontopractice of the count is a description in an application that would have anticipated the subject matter of a count
b. 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
c. an applicant should simply explain his or her entitlement to any earlier existing constructive reductiontopractice showings
d. if there is no earlier constructive reductiontopractice, then the applicant may:
i. antedate the earliest constructive reductiontopractice of the other application or patent
ii. show why the other application or patent is not entitled to its constructive reductiontopractice
iii. provide some other reason why he or she should be considered the first inventor
e. the examiner is not responsible for examining the sufficiency of the showing except when:
i. 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
f. in this case the examiner must decide if the applicant's showing is sufficient to overcome the rejection
i. 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:
a. when the application does not have a claim for "substantially the same subject matter" as the interfering patent or published application prior to oneyear from the date on which the interfering patent or published application was granted or published
b. 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 oneyear 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

35 U.S.C. 135 Interferences. (b)
(1)A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

§ 41.202 Suggesting an interference.
(b) Patentee. A patentee cannot suggest an interference under this section but may, to the extent permitted under § 1.99 and § 1.291 of this title, alert the examiner of an application claiming interfering subject matter to the possibility of an interference.

1.a patentee may not suggest an interference
a. the only way is for the patentee to become an applicant by filing a reissue application

§ 41.202 Suggesting an interference.
(c) Examiner. An examiner may require an applicant to add a claim to provoke an interference. Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the applicant must also comply with paragraphs (a)(2) through (a)(6) of this section. The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102 (g):
(1) Be patentable to the applicant, and
(2) Be drawn to patentable subject matter claimed by another applicant or patentee.

an examiner may initiate an interference when:
a. the applicant has a claim that claims the same invention as a claim in the application or patent of another inventor
b. 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:
a. the application is otherwise completed the required claim does not encompass prior art or would not otherwise be barred
b. the application provides adequate support under 35 U.S.C. 112, first paragraph, for the subject matter of the claim
c. the applicant has not stated that the commonly described subject matter is not the applicant's invention
d. 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:
a. identifying a claim already in the application that provides a basis for an interference adding an alternative claim that will spark an interference
b. 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
a. in this case, the examiner may require an election for priority between the application and other application or patent
b. 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)

2305 Requiring a Priority Showing

the applicant must make a priority showing when the application's earliest constructive reductiontopractice is later than the earliest constructive reductiontopractice 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:
a. when the applicant is complying with the order to suggest an interference
b. when the applicant is attempting to overcome a rejection based on 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
a. when a rejection under 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)
b. 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
c. an interference may not be possible at the time the affidavit would be submitted due to the fact that:
i. 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)
1) 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
ii. the interfering claims in a published application are not yet in condition for allowance

Not a priority statement
a. 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)
b. a priority showing:
i. is submitted during examination
ii. must actually prove priority if an interference is declared assuming that the opposing party does not oppose the showing
c. 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
d. a priority statement:
i. is filed during the interference
ii. serves as a notice of what a party intends to prove on the issue of priority during an interference

2306 Secrecy Order Cases
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

2307 Action During an Interference

§ 41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.

the Board of Patent Appeals and Interferences always has jurisdiction over a patent or an application that is involved in an interference
a. the Board will have jurisdiction until the interference is terminated

an interference is considered terminated when the Board has determined a final judgment and the period for judicial review has expired

§ 41.11 Ex parte communications in inter partes proceedings.
An ex parte communication about an inter partes reexamination (subpart C of this part) or about a contested case (subparts D and E of this part) with a Board member, or with a Board employee assigned to the proceeding, is not permitted.

§ 41.109 Access to and copies of Office records.
(a) Request for access or copies. Any request from a party for access to or copies of Office records directly related to a contested case must be filed with the Board. The request must precisely identify the records and in the case of copies include the appropriate fee set under § 1.19(b) of this title.
(b) Authorization of access and copies. Access and copies will ordinarily only be authorized for the following records:
(1) The application file for an involved patent;
(2) An involved application; and (3) An application for which a party has been accorded benefit under subpart E of this part. (c) Missing or incomplete copies. If a party does not receive a complete copy of a record within 21 days of the authorization, the party must promptly notify the Board.

an opposing party may have access to the record for an involved patent or application and for any application for which benefit has been accorded
a. the examiner may not act in a patent or an application directly involved in an interference
b. however, examination may continue in related cases, including benefit files

the related applications may need to be suspended if the claims would be barred by a loss in the interference

2308 Action After an Interference

§ 41.127 Judgment.
(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
a. if further action is recommended in the application, then the examiner will need to reopen prosecution
b. 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
a. an applicant may file a motion during an interference to add or amend a claim
b. a patentee may file a reissue application in support of a motion to add or amend a claim
c. 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 relitigate the issue before the examiner or the Board
a. a party is barred (estopped) from raising an issue if the party lost on the issue during the interference

No interferenceinfact
a. a judgment of no interferenceinfact means:
i. 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