2305 Requiring a Priority Showing [R-08.2017]

Whenever the application has an earliest constructive reduction-to-practice that is later than the earliest constructive reduction-to-practice of a published application having allowed claims or a patent with which it interferes, the applicant must make a priority showing under 37 CFR 41.202(d)(1).

There are two typical situations in which a showing under 37 CFR 41.202(d)(1) is filed without a requirement from the examiner. First, the applicant may be complying with 37 CFR 41.202(a)(2) in order to suggest an interference under 37 CFR 41.202(a) or as part of complying with a requirement under 37 CFR 41.202(c). Second, the applicant may file the showing to overcome a rejection based on pre-AIA 35 U.S.C. 102(a) or 102(e) when an affidavit is not permitted under 37 CFR 1.131(a)(1) because the applicant is claiming interfering subject matter.

If no showing has been filed, and the application’s earliest constructive reduction-to-practice is later than the earliest constructive reduction-to-practice of a patent or published application, then the examiner must require a showing of priority. This showing is necessary because an insufficient showing (including no showing at all) can trigger a prompt judgment against the applicant in an interference. See 37 CFR 41.202(d)(2). The applicant may choose to comply with a requirement under 37 CFR 41.202(d)(1) by suggesting an interference under 37 CFR 41.202(a).

I. RELATIONSHIP TO 37 CFR 1.131 AFFIDAVIT

Ordinarily an applicant may use an affidavit of prior invention under 37 CFR 1.131 to overcome a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e). An exception to the rule arises when the reference is a patent or application published under 35 U.S.C. 122(b) and the reference has claims directed to the same patentable invention as the application claims being rejected. See 37 CFR 1.131(a)(1). The reason for this exception is that priority is determined in an interference when the claims interfere. See pre-AIA 35 U.S.C. 135(a). In such a case, the applicant must make the priority showing under 37 CFR 41.202(d) instead. In determining whether a 37 CFR 1.131 affidavit is permitted or not, the examiner should keep the purpose of the exception in mind. If an interference would not be possible at the time the affidavit would be submitted, then the affidavit should be permitted. This situation could arise two ways.

First, the claims that matter for the purposes of 37 CFR 1.131 are not the published claims but the currently existing claims. For example, if the claims that were published in a published application have been significantly modified during subsequent examination, they may no longer interfere with the rejected claims. Similarly, the patent claims may have been subsequently corrected or amended in a reissue application or a reexamination. Since an interference no longer exists between the current claims in the patent or published application and the rejected claims, an affidavit under 37 CFR 1.131 may be submitted.

Similarly, if a published application contains claims to the same invention, but the claims in the published application are not in condition for allowance, then no interference is yet possible. See 37 CFR 41.102. Since the claims in the published application might never be allowed in their present form, it is not appropriate to proceed as though an interference would be inevitable. Consequently, an affidavit under 37 CFR 1.131 may be submitted.

II. NOT A PRIORITY STATEMENT

A priority showing under 37 CFR 41.202(d)(1), which is presented during examination, is not the same as a priority statement under 37 CFR 41.204(a), which is filed during an interference. A priority statement is a notice of what a party intends to prove on the issue of priority during an interference. A priority showing under 37 CFR 41.202(d)(1) must, however, actually prove priority assuming that the opposing party did not oppose the showing. See also 37 CFR 41.202(e)(1). Generally speaking, while a priority statement might be more detailed in some respects, it will not be sufficient to make the necessary showing of priority for the purposes of 37 CFR 41.202.

An applicant presenting a priority showing must establish through the showing that it would prevail on priority if an interference is declared and the opponent does not oppose the showing. The requirement for a priority showing is intended to spare a senior party patentee the burden of an interference if the junior party applicant cannot establish that it would prevail in an interference even if the senior party does nothing. See Kistler v. Weber, 412 F.2d 280, 283-85, 162 USPQ 214, 217-19 (CCPA 1969) and Edwards v. Strazzabosco, 58 USPQ2d 1836 (Bd. Pat. App. & Inter. 2001).

The consequence of an inadequate showing may be serious for the applicant. If an interference is declared and the Board finds the priority showing insufficient (thereby issuing an order to show cause why judgment should not be entered against the applicant), the applicant will not be allowed to present additional evidence to make out a priority showing unless the applicant can show good cause why any additional evidence was not presented in the first instance with the priority showing before the examiner. See 37 CFR 41.202(d)(2); Huston v. Ladner, 973 F.2d 1564, 23 USPQ2d 1910 (Fed. Cir. 1992); Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989); and Edwards v. Strazzabosco, 58 USPQ2d 1836 (Bd. Pat. App. & Inter. 2001). The principles which govern review of a priority showing are discussed in Basmadjian v. Landry, 54 USPQ2d 1617 (Bd. Pat. App. & Inter. 1997) (citing former 37 CFR 1.608(b)).

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