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2301 Interference Proceedings [R-08.2017]

An interference is a contest under pre-AIA 35 U.S.C. 135(a) between an application and either another application or a patent. An interference is declared to assist the Director of the United States Patent and Trademark Office in determining priority, that is, which party first invented the commonly claimed invention within the meaning of pre-AIA 35 U.S.C. 102(g)(1). See MPEP § 2301.03. Once an interference has been suggested under 37 CFR 41.202, the examiner refers the suggested interference to the Board. An administrative patent judge declares the interference, which is then administered at the Board. A panel of Board members enters final judgment on questions of priority and patentability arising in an interference.

Once the interference is declared, the examiner generally will not treat the application again until the interference has been terminated. Occasionally, however, the Board may refer a matter to the examiner or may consult with the examiner on an issue. Given the very tight deadlines in an interference, any action on a consultation or referral from the Board must occur with special dispatch.

The application returns to the examiner after the interference has been terminated. Depending on the nature of the judgment in the case, the examiner may need to take further action in the application. For instance, if there are remaining allowable claims, the application may need to be passed to issue. The Board may have entered a recommendation for further action by the examiner in the case. If the applicant has lost an issue in the interference, the applicant may be barred from taking action in the application or any subsequent application that would be inconsistent with that loss.

Given the infrequency, cost, and complexity of interferences and derivation proceedings, it is important for the examiner to consult immediately with an Interference Practice Specialist (IPS) in the examiner’s Technology Center, see MPEP § 2302, once a possible interference is identified. It is also important to complete examination before the possible interference is referred to the Board. See MPEP § 2303. See MPEP § 2310et seq. for discussion of derivation proceedings.

2301.01 Statutory Basis [R-08.2017]

35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless —

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(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

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35 U.S.C. 104 (pre-AIA) Invention made abroad.

(a) IN GENERAL.—
- (1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365 of this title.
- (2) RIGHTS.—If an invention was made by a person, civil or military—
  - (A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
  - (B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
  - (C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.
- (3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.
(b) DEFINITIONS.—As used in this section—
- (1) The term “NAFTA country” has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
- (2) The term “WTO member country” has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.

35 U.S.C. 135 (pre-AIA) 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.

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2301.02 Definitions [R-08.2017]

37 CFR 41.2 Definitions.

Unless otherwise clear from the context, the following definitions apply to proceedings under this part:

Affidavit means affidavit, declaration under § 1.68 of this title, or statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit in a contested case.
Board means the Patent Trial and Appeal Board and includes:
- (1) For a final Board action:
  - (i) In an appeal or contested case, a panel of the Board.
  - (ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge.
- (2) For non-final actions, a Board member or employee acting with the authority of the Board.
Board member means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.
Contested case means a Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case.
Final means, with regard to a Board action, final for the purposes of judicial review. A decision is final only if:
- (1) In a panel proceeding. The decision is rendered by a panel, disposes of all issues with regard to the party seeking judicial review, and does not indicate that further action is required; and
- (2) In other proceedings. The decision disposes of all issues or the decision states it is final.
Hearing means consideration of the issues of record. Rehearing means reconsideration.
Office means United States Patent and Trademark Office.
Panel means at least three Board members acting in a panel proceeding.
Panel proceeding means a proceeding in which final action is reserved by statute to at least three Board members, but includes a non-final portion of such a proceeding whether administered by a panel or not.
Party, in this part, means any entity participating in a Board proceeding, other than officers and employees of the Office, including:
- (1) An appellant;
- (2) A participant in a contested case;
- (3) A petitioner; and
- (4) Counsel for any of the above, where context permits.

37 CFR 41.100 Definitions.

In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart:

Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.

Involved means the Board has declared the patent application, patent, or claim so described to be a subject of the contested case.

37 CFR 41.200 Procedure; pendency.

(a) A patent interference is a contested case subject to the procedures set forth in subpart D of this part.
(b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers to the statute in effect on March 15, 2013, unless otherwise expressly indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers to the statute applicable to the involved application or patent.
(c) Patent interferences shall be administered such that pendency before the Board is normally no more than two years.

37 CFR 41.201 Definitions.

In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart:

Accord benefit means Board recognition that a patent application provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).

Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in a patent application of the subject matter of a count. Earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must comply with the requirements of 35 U.S.C. 119-121, 365, or 386.

Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.

Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim that has been designated as corresponding to the count.

Senior party means the party entitled to the presumption under § 41.207(a)(1) that it is the prior inventor. Any other party is a junior party.

Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include:

- (1) No interference-in-fact, and
(2) In the case of an involved application claim first made after the publication of the movant’s application or issuance of the movant’s patent:
- (i) Repose under 35 U.S.C. 135(b) in view of the movant’s patent or published application, or
- (ii) Unpatentability for lack of written description under 35 U. S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).

2301.03 Interfering Subject Matter [R-08.2017]

37 CFR 41.203 Declaration.

(a) Interfering subject matter. An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.

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A claim of one inventor can be said to interfere with the claim of another inventor if they each have a patentable claim to the same invention. The Office practice and the case law define “same invention” to mean patentably indistinct inventions. See Case v. CPC Int’l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir. 1984); Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 489-90 (CCPA 1977); Nitz v. Ehrenreich, 537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA 1976); and Ex parte Card, 1904 C.D. 383, 384-85 (Comm’r Pats. 1904). If the claimed invention of one party is patentably distinct from the claimed invention of the other party, then there is no interference-in-fact. See Nitz v. Ehrenreich, 537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA 1976). 37 CFR 41.203(a) states the test in terms of the familiar concepts of obviousness and anticipation. See Tas v. Beachy, 626 Fed. App'x. 999, 1001 (Fed. Cir. 2015)(nonprecedential) (an interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa); Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wa., 334 F.3d 1264, 1269-70, 67 USPQ2d 1161, 1164-65 (Fed. Cir. 2003) (affirming the Office’s interpretive rule).

Identical language in claims does not guarantee that they are drawn to the same invention. Every claim must be construed in light of the application in which it appears for purpose of evaluating whether there is interfering subject matter, unlike when evaluating whether copied claims comply with the written description requirement where the originating disclosure is consulted. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375, 91 USPQ2d 1161, 1167 (Fed. Cir. 2009) (when a party challenges written description support for a copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language). Claims reciting means-plus-function limitations, in particular, might have different scopes depending on the corresponding structure described in the written description.

When an interference is declared, there is a description of the interfering subject matter, which is called a “count.” Claim correspondence identifies claims that would no longer be allowable or patentable to a party if it loses the priority determination for the count. To determine whether a claim corresponds to a count, the subject matter of the count is assumed to be prior art to the party. If the count would have anticipated or supported an obviousness determination against the claim, then the claim corresponds to the count. See 37 CFR 41.207(b)(2). Every count must have at least one corresponding claim for each party, but it is possible for a claim to correspond to more than one count.

Example 1

A patent has a claim to a compound in which R is an alkyl group. An application has a claim to the same compound except that R is n-pentyl, which is an alkyl. The application claim, if prior art to the patent, would have anticipated the patent claim. The patent claim would not have anticipated the application claim. If, however, in the art n-pentyl would have been an obvious choice for alkyl, then the claims define interfering subject matter.

Example 2

An application has a claim to a boiler with a novel safety valve. A patent has a claim to just the safety valve. The prior art shows that the need for boilers to have safety valves is well established. The application claim, when treated as prior art, would have anticipated the patent claim. The patent claim, when treated as prior art and in light of the boiler prior art, can be shown to render the application claim obvious. The claims interfere.

Example 3

An application has a claim to a reaction using platinum as a catalyst. A patent has a claim to the same reaction except the catalyst may be selected from the Markush group consisting of platinum, niobium, and lead. Each claim would have anticipated the other claim when the Markush alternative for the catalyst is platinum. The claims interfere.

Example 4

Same facts as Example 3, except the applicant has a Markush group for the catalyst consisting of platinum, osmium, and zinc. Each claim would have anticipated the other claim when the Markush alternative for the catalyst in each claim is platinum. The claims interfere.

Example 5

An application has a claim to a protein with a specific amino acid sequence shown in SEQ ID NO:1. A patent has a claim to the genus of polynucleotides defined as encoding the same amino acid sequence as the applicant’s SEQ ID NO:1. The patent claim would have anticipated the application claim since it expressly describes an amino acid sequence identical to the protein of the application. The application claim would have rendered the patent claim obvious in light of a well-established relationship between nucleic acids for encoding amino acids in protein sequences. The claims interfere.

Example 6

A patent has a claim to a genus of polynucleotides that encode a protein with a specific amino acid sequence. An application has a claim to a polynucleotide that encodes a protein with the same amino acid sequence. The application claim is a species within the genus and thus would have anticipated the patent claim. The patent claim would not have anticipated or rendered the application claim obvious without some explanation of why a person having ordinary skill in the art would have selected the applicant’s species from the patentee’s genus. Generally the explanation should include citation to prior art supporting the obviousness of the species. Without the explanation, the claims do not interfere.

Example 7

A patent and an application each claim the same combination including “means for fastening.” The application discloses glue for fastening, while the patent discloses a rivet for fastening. Despite otherwise identical claim language, the claims do not interfere unless it can be shown that in this art glue and rivets were considered structurally equivalent or would have rendered each other obvious.

Example 8

A patent claims a formulation with the surfactant sodium lauryl sulfate. An application claims the same formulation except no specific surfactant is described. The application discloses that it is well known in the art to use sodium lauryl sulfate as the surfactant in these types of formulations. The claims interfere.

Example 9

An applicant has a claim to a genus and a species within the genus. The interference is declared with two counts, one directed to the genus and one directed to the species. The species claim would correspond to the species count because the count would have anticipated the claimed subject matter. The genus count would not ordinarily have anticipated the species claim, however, so the species claim would only correspond to the genus count if there was a showing that the genus count would have rendered the claimed species obvious. The genus claim, however, would have been anticipated by both the genus count and the species count and thus would correspond to both counts.

2301.04 Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013 [R-01.2024]

Applications subject to AIA 35 U.S.C. 102 (see MPEP § 2159) may also be subject to an interference.

Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP §§ 2138 and 2159.03.

Thus, if an application contains, or contained at any time, a claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, a claim having an effective filing date that is on or after March 16, 2013, each claim may still be subject to an interference in accordance with pre-AIA 35 U.S.C. 102(g) while the application is also subject to AIA 35 U.S.C. 102 and 103. Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.

Where an application not subject to pre-AIA 35 U.S.C. 102(g) interferes with a patent subject to pre-AIA 35 U.S.C. 102(g), the examiner should consult with an Interference Practice Specialist.

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Last Modified: 10/30/2024 08:50:24