2308 Action After an Interference [R-10.2019]
37 CFR 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.
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- (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.
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Jurisdiction over an application returns to the examiner once the interference has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction. Moreover, in the first action after termination of an interference or derivation, the examiner should make of record in each application all references not already of record which were pertinent to any preliminary motions and which were discussed in the decision on motion.
If there is no recommendation in the judgment, the examiner should update the search and may, but is not required to, reopen prosecution for any claim not disposed of in the judgment.
An interference judgment simply resolves any question of priority between the two parties to the interference. The judgment does not prevent the examiner from making a rejection in further examination in the same application or a different application. If a party loses on an issue in the interference, the examiner should reject any claim for which allowance would be inconsistent with the interference judgment.
Form paragraph 23.02 may be used to resume ex parte prosecution.
¶ 23.02 Ex Parte Prosecution Is Resumed
Interference No. [1] has been terminated by a decision [2] to applicant. Ex parte prosecution is resumed.
Examiner Note:
- 1. In bracket 1, insert the interference number.
- 2. In bracket 2, insert whether favorable or unfavorable.
2308.01 Final Disposal of Claims [R-08.2012]
Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
2308.02 Added or Amended Claims [R-08.2017]
An applicant may file a motion during the interference to add or amend a claim. A patentee may file a reissue application in support of a motion to add or amend a claim. A copy of the paper adding or amending the claim will be placed in the official record of the application, but not entered. A decision on the motion is entered in the official record of the application. The examiner may enter the added claim or amended claim into the application only if, and only to the extent, authorized by the Board, typically in the decision on the motion. The decision authorizing entry of the added or amended claim does not prevent the examiner from rejecting the claim during further prosecution.
2308.03 Estoppel Within the Office [R-08.2017]
If a party loses on an issue, it may not re-litigate the issue before the examiner or in a subsequent Board proceeding. The time for the party to make all pertinent arguments is during the interference, unless the Board expressly prevented the party from litigating the issue during the interference.
There are two main types of interference estoppel. First, a losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the subject matter of the lost count. See In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992); and Ex parte Tytgat, 225 USPQ 907 (Bd. Pat. App. & Inter. 1985). Second, a losing party is procedurally barred from seeking from the examiner relief that could have been--but was not--sought in the interference. See 37 CFR 41.127(a)(1); and Ex parte Kimura, 55 USPQ2d 1537 (Bd. Pat. App. & Inter. 2000) (reissue applicant estopped to claim compound when patentability of that compound could have been put in issue in interference where opponent’s application also described compound).
The examiner should consult with an Interference Practice Specialist (IPS) before allowing a claim to a losing party that was added or amended during post-interference examination.
Example 1
The applicant lost on priority for a count drawn to subject matter X. The Board’s judgment automatically disposed of all of the applicant’s claims corresponding to the count. The applicant files a continuing application with a claim to subject matter X. The claim must be rejected as estopped on the merits by the applicant’s loss in the interference.
Example 2
Same facts as Example 1 except the applicant files a continuing application with a claim generic to subject matter X. Since the generic claim encompasses subject matter lost in the interference, the generic claim must be rejected as estopped on the merits by the loss in the interference.
Example 3
Same facts as Example 1 except the applicant files a continuing application with a claim to subject matter that would have been obvious in view of subject matter X. The claim must be rejected as estopped on the merits by the applicant’s loss in the interference, but the examiner must demonstrate why the claim would have been obvious if subject matter X is assumed to be prior art.
Example 4
Same facts as Example 1 except the applicant files a continuing application with a claim identical to a claim that corresponded to the count of the interference. The applicant also files a showing of why the claim should not have corresponded to the count. The claim should be rejected as procedurally estopped. Whether the showing is adequate or not, it is too late. The time to make the showing was during the interference.
Example 5
Same facts as Example 4 except that during the interference the applicant timely requested, but was not permitted, to show the claim did not correspond to the count. The examiner may determine in light of the new showing whether the lost count would have anticipated or rendered obvious the subject matter of the claim. The procedural estoppel does not apply if, through no fault of the applicant, the Board prevented the applicant from seeking relief during the interference.
Example 6
The applicant’s claim 1 was held unpatentable during the interference. The applicant could have moved, but did not move, to amend the claim. The applicant files a continuing application with an amended claim 1. If the subject matter of the amended claim would have been anticipated or obvious in view of a count of the interference, it must be rejected as procedurally estopped. Whether the amendment is sufficient to overcome the ground for unpatentability or not, the time to have amended the claim was during the interference.
Example 7
Same situation as Example 6 except the applicant did move to amend the claim, but the motion was denied. The result is the same as in Example 6. If the subject matter of the amended claim would have been anticipated or obvious in view of a count of the interference, it must be rejected as procedurally estopped. The applicant’s lack of success on the motion does not prevent the estoppel from applying to the claim.
Example 8
Same facts as Example 6 except the applicant filed a late request during the interference to amend the claim to overcome the basis for unpatentability. The request was denied as untimely. The claim must be rejected as procedurally estopped. Even though the applicant was not permitted to amend the claim during the interference, the estoppel still applies because the applicant’s inability to obtain relief in the interference was the result of the applicant’s failure to seek timely relief.
2308.03(a) Losing Party [R-08.2012]
A party is barred (estopped) from raising an issue if the party lost on the issue during the interference. A party may lose on one issue, yet not lose on a different issue.
Example
The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue claims to the method of using the compound, but not claims to the compound itself.
2308.03(b) No Interference-in-Fact [R-08.2012]
A judgment of no interference-in-fact means that no interference is needed to resolve priority between the parties. Neither party has lost the interference for the purpose of estoppel consistent with 37 CFR 41.127(a)(1), even if one of the parties suggested the interference.
A judgment of no interference-in-fact bars any further interference between the same parties for claims to the same invention as the count of the interference.
2308.03(c) No Second Interference [R-08.2017]
No second interference should occur between the same parties on patentably indistinct subject matter. If the Board held that there is no interference-in-fact between the parties for the subject matter of the count, that holding may not be reopened in further examination. If a party that lost the earlier interference is again claiming the same invention as the count, the interfering claims should be rejected as estopped.
2308.04 Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit [R-10.2019]
The losing party after an interference judgment has the right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the Federal Circuit (CAFC). If the losing party before the Board is unsuccessful after appealing to the CAFC, with all claims being finally refused, and a formal mandate is issued regarding the pending claims then the proceedings in the case are considered terminated on the issue date of the mandate. In accordance with Morganroth v. Quigg, 885 F.2d 843, 12 USPQ2d 1125 (Fed. Cir. 1989), the subject application may not be revived by the USPTO on petition because the USPTO’s authority to revive applications does not extend to an alleged abandonment resulting from actions taken in proceedings outside the agency. See MPEP § 1216.01, subsection I.A.
