2304.01(a) Interference Search [R-01.2024]

When an application is in condition for allowance, an interference search must be made by using the most efficient and effective manner based on the claimed subject matter in the broadest claim (e.g., by performing a text search, or a classified search, or a combination of text search and classified search, of the “US-PGPUB” database). Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search. If the application contains a claim directed to a nucleotide and/or amino acids sequence, the examiner must submit a request to STIC to perform an interference search of the sequence. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject matter to determine whether interfering subject matter exists. If interfering subject matter does exist, the examiner will follow the guidance set forth in this chapter. If there is no interfering subject matter then the examiner should prepare the application for issuance. The interference search must be made of record in the application file. See MPEP § 719.05, subsection III.

The search for interfering applications must not be limited to only the classes or subgroups in which the application is classified, but must be extended to all classes in which it has been necessary to search in the examination of the application. See MPEP § 1302.08. An interference search of those applications held under Secrecy Order, which are reviewed by Licensing and Review, may be required. Inspection of pertinent prints, drawings, brief cards, and applications will be done on request by an examiner associated with Licensing and Review.

2304.01(b) Obtaining Control Over Involved Files [R-08.2017]

Ordinarily applications that are believed to interfere should be assigned to the same examiner.

I. IN DIFFERENT TECHNOLOGY CENTERS

If the interference would be between two applications, and the applications are assigned to different Technology Centers (TCs), then one application must be reassigned. Ordinarily the applications should both be assigned to the TC where the commonly claimed invention would be classified. After termination of the interference, further transfer may be appropriate depending on the outcome of the interference.

II. PAPERS NOT CONVERTED TO IMAGE FILE WRAPPER FILES

Although the official records for most applications have been converted into Image File Wrapper (IFW) files, some records exist only in paper form, particularly older benefit application files. Even IFW files may have artifact records that have not been converted. Complete patent and benefit files are necessary for determining whether benefit should be accorded for purposes of pre-AIA 35 U.S.C. 102(g)(1). A suggested interference must not be referred to the Board if all files, including benefit files, are not available to the examiner in either IFW format or paper.

If a paper file wrapper has been lost, it must be reconstructed before the interference is referred to the Board.

III. PATENT COOPERATION TREATY APPLICATION FILES

Generally, a separate application file for a Patent Cooperation Treaty (PCT) application is not required for according benefit because the PCT application is included in a national stage application file that is itself either the application involved in the interference or a benefit file. Occasionally, however, the PCT application file itself is required for benefit. For instance, if benefit is claimed to the PCT application, but not to a national stage application in which it is included, then the PCT application file must be obtained.

2304.01(c) Translation of Foreign Benefit Application [R-01.2024]

A certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English is required. See 35 U.S.C. 119(b)(3) and 372(b)(3) and 37 CFR 1.55(g)(3)(i) and 41.154(b). If no certified translation is in the official record for the application, the examiner must require the applicant to file a certified translation. The applicant should provide the required translation if applicant wants the application to be accorded benefit of the non-English language application. Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file. See 37 CFR 41.154(b) and 41.202(e).

Form paragraph 23.19 may be used to notify applicant that a certified English translation of the priority document is required.

2304.01(d) Sorting Claims [R-08.2017]

An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.

Interfering claims of applications with either the same assignee or the same inventive entity are “patentably indistinct claims” within the meaning of 37 CFR 1.78(f). The examiner may require consolidation of such claims into a single application that provides support for the patentably indistinct claims. See 35 U.S.C. 132(a).

Similarly, the examiner should require an applicant to restrict an application to the interfering claims in accordance with pre-AIA 35 U.S.C. 121, in which case the applicant may file a divisional application for the claims that do not interfere.

Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112(a) for the claim.

2304.02(a) Identifying the Other Application or Patent [R-08.2012]

Usually an applicant seeking an interference will know the application serial number or the patent number of the application or patent, respectively, with which it seeks an interference. If so, providing that number will fully meet the identification requirement of 37 CFR 41.202(a)(1).

Occasionally, an applicant will believe another interfering application exists based only on indirect evidence, for instance through a journal article, a “patent pending” notice, or a foreign published application. In such cases, information about likely named inventors and likely assignees may lead to the right application. The applicant should be motivated to help the examiner identify the application since inadequate information may prevent the declaration of the suggested interference.

2304.02(b) Counts and Corresponding Claims [R-08.2017]

The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).

The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.

2304.02(c) Explaining Priority [R-08.2017]

A description in an application that would have anticipated the subject matter of a count is called a constructive reduction-to-practice of the count. One disclosed embodiment is enough to have anticipated the subject matter of the count. If the application is relying on a chain of benefit disclosures under any of pre-AIA 35 U.S.C. 119, 120, 121 and 35 U.S.C. 365, then the anticipating disclosure must be continuously disclosed through the entire benefit chain or no benefit may be accorded. See Tas v. Beachy, 626 Fed. App'x. 999, 1002 (Fed. Cir. 2015) (nonprecedential) (when a party to an interference seeks the benefit of an earlier-filed U.S. patent application, the earlier application must contain a written description of the subject matter of the interference Count, and must meet the enablement requirement.); Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998).

If the application has an earlier constructive reduction-to-practice than the apparent earliest constructive reduction-to-practice of the other application or patent, then the applicant may simply explain its entitlement to its earlier constructive reduction-to-practice. Otherwise, the applicant must (A) antedate the earliest constructive reduction-to-practice of the other application or patent, (B) demonstrate why the other application or patent is not entitled to its apparent earliest constructive reduction-to-practice, or (C) provide some other reason why the applicant should be considered the prior inventor.

The showing of priority may look similar to showings under 37 CFR 1.130-1.132, although there are differences particularly in the scope of what must be shown. In any case, with the exception discussed below, the examiner is not responsible for examining the substantive sufficiency of the showing.

I. REJECTION UNDER PRE-AIA 35 U.S.C. 102(a) or 102(e)

If an application claim is subject to a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR 41.202(a) rather than a declaration under 37 CFR 1.130-1.132, then the examiner must review the suggestion to verify that the applicant’s showing, taken at face value, is sufficient to overcome the rejection. If the examiner determines that the showing is not sufficient, then the examination is not completed, and in accordance with 37 CFR 41.102, the rejection should be maintained and the suggestion should not be referred to the Board for an interference.

II. COMPLIANCE WITH PRE-AIA 35 U.S.C. 135(b)

If an application claim interferes with a claim of a patent, and the claim was added to the application by an amendment filed more than one year after issuance of the patent, or the application was not filed until more than one year after issuance of the patent (but the patent is not a statutory bar), then under the provisions of pre-AIA 35 U.S.C. 135(b)(1), an interference will not be declared unless at least one of the claims which were in the application, or in a parent application, prior to expiration of the one-year period was for “substantially the same subject matter” as at least one of the claims of the patent. When the requisite relationship between post- and pre-critical date claims is otherwise established, the condition of pre-AIA 35 U.S.C. 135(b)(1) is met and there is no requirement of diligent prosecution. See In re Commonwealth Scientific, 632 Fed. App'x. 1024, 1026 (Fed. Cir. 2015) (nonprecedential) (“Application of § 135(b)(1) does not turn on the patent applicant’s prosecution decisions or require diligence in prosecution.”). Note that the expression “prior to one year from the date on which the patent was granted” in 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).

Similarly, in a subsequently filed application relative to an application published under 35 U.S.C. 122(b), if applicant does not appear to have a claim that is for “substantially the same subject matter” prior to one year after publication, in accordance with 35 U.S.C. 135(b)(2), an interference will not be declared. See Loughlin v. Ling, 684 F.3d 1289, 1294, 103 USPQ2d 1413, 1417 (Fed. Cir. 2012)(“an application filed” in § 135(b)(2) includes the benefit provision of §120).

The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different material limitation in the claim. These tests are distinctly different. The analysis focuses on the interfering claim to determine whether all material limitations of the interfering claim necessarily occur in a prior claim. See In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002). If none of the claims which were present in the application, or in a parent application, prior to expiration of the one-year period meets the “substantially the same subject matter” test, the interfering claim should be rejected under pre-AIA 35 U.S.C. 135(b). See In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997).

Form paragraph 23.14 may be used to reject a claim as not being made prior to one year of the patent issue date. Form paragraph 23.14.01 may be used to reject a claim as not being made prior to one year from the application publication date.

2304.02(d) Adequate Written Description [R-08.2017]

An applicant is not entitled to an interference simply because applicant wants one. The interfering claim must be allowable, particularly with respect to the written description supporting the interfering claim. However, the written description requirement does not demand, as a matter of law, actual examples or an actual reduction to practice. The written description requirement is met so long as the application or priority application sufficiently described the subject matter to a person skilled in the art. See Tas v. Beachy, 626 Fed. App'x. 999, 1005 (Fed. Cir. 2015) (nonprecedential).

Historically, an applicant provoked an interference by copying a claim from its opponent. The problem this practice created was that differences in the underlying disclosures might leave the claim allowable to one party, but not to the other; or despite identical claim language differences in the disclosures might require that the claims be construed differently.

Rather than copy a claim verbatim, the better practice is to add (or amend to create) a fully supported claim and then explain why, despite any apparent differences, the claims define the same invention. See 37 CFR 41.203(a). The problem of inadequate written description in claims added or amended to provoke an interference is so great that the issue has been singled out for heightened scrutiny early in the course of an interference. See 37 CFR 41.201, under “Threshold issue.” When an applicant copies a claim from another application or patent, the applicant’s claims are construed in view of the originating specification when the other party challenges the sufficiency of written description support. 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).

2304.04(a) Interfering Claim Already in Application [R-08.2017]

If the applicant already has a claim to the same subject matter as a claim in the application or patent of another inventor, then there is no need to require the applicant to add a claim to have a basis for an interference.

The examiner may invite the applicant to suggest an interference pursuant to 37 CFR 41.202(a). An applicant may be motivated to do so in order to present its views on how the interference should be declared.

If the applicant does not suggest an interference, then the examiner should work with an Interference Practice Specialist (IPS) to suggest an interference to the Board. The suggestion should include an explanation of why at least one claim of every application or patent defines the same invention within the meaning of 37 CFR 41.203(a). See MPEP § 2301.03 for a discussion of interfering subject matter. The examiner must also complete Form PTO-850.

The examiner should be prepared to discuss why claims interfere, whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art, and whether an applicant or patentee is entitled to claim the benefit of an application as a constructive reduction-to-practice. The IPS may require the examiner to prepare a memorandum for the Board on any of these subjects. The IPS may require the examiner to participate in a conference with the Board to discuss the suggested interference.

2304.04(b) Requiring a Claim [R-10.2019]

The examiner may, pursuant to 35 U.S.C. 132(a), require an applicant to add a claim that would interfere with the claim of another application or patent. For example, the requirement may be made to obtain a clearer definition of the interfering subject matter or to establish whether the applicant will pursue claims to the interfering subject matter. When the requirement is based on a published application with allowed claims or a patent, the examiner must identify the published application or the patent in making the requirement.

Given the cost and complexity of interferences, a requirement to add a claim under 37 CFR 41.202(c) should not be lightly made. Before making the requirement, the examiner should consult with an Interference Practice Specialist (IPS). The following principles should guide the examiner in exercising discretion to make this requirement:

• (A) An interference should generally not be suggested if examination of the application is not otherwise completed.
• (B) The required claim must not encompass prior art or otherwise be barred.
• (C) The application must provide adequate support under 35 U.S.C. 112(a) for the subject matter of the required claim.
• (D) A claim should not be required when the applicant expressly states that the commonly described subject matter is not the applicant’s invention.
• (E) A claim based on a claim from a published application should not be required unless the claim from the published application has been allowed.

Form paragraph 23.04 may be used to require applicant to add a claim to provoke interference.

APPLICANT MUST ADD THE CLAIM

If required to add a claim under 37 CFR 41.202(c), the applicant must do so. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim. The applicant would then be barred from claiming, not only the subject matter of the required claim, but any subject matter that would have been anticipated or rendered obvious if the required claim were treated as prior art. See In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA 1975).

While complying with the requirement to add a claim, an applicant may also express disagreement with the requirement several ways, including:

• (A) Identifying a claim already in its application, or another of its applications, that provides a basis for the proposed interference;
• (B) Adding an alternative claim and explaining why it would provide a better basis for the proposed interference (such as having better support in the applicant’s disclosure); or
• (C) Explaining why the required claim is not patentable to the applicant.

The examiner may withdraw the requirement if persuaded by the reasons the applicant offers.

2304.04(c) Rejections Based on Disclaimer [R-10.2019]

Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant’s failure to:

• (A) make claims suggested for interference with another application under 37 CFR 41.202(c) (See MPEP § 2304.04(b) ),
• (B) copy a claim from a patent when suggested by the examiner (MPEP § 2304.04(b) ), or
• (C) respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent (see MPEP § 2308).

The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.

Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48.aia, 7.48.fti and 7.49.