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2300.01 Introduction - 2300 Interference Proceedings
2300.01 Introduction
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 six-month 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 six-month 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.
This chapter is designed to aid examiners in identifying potential interferences and in preparing to discuss potential interferences with Interference Practice Specialists and with the Board of Patent Appeals and Interferences. Since each interference is unique and must be declared and decided on its own facts, any given interference may have features that vary significantly from those discussed in this chapter.
Interferences are quite rare during patent prosecution. At present, fewer than one percent of all applications become involved in interferences. Consequently, the examiner should focus on identifying when an interference is necessary, not on the actual mechanics of proposing an interference. Each Technology Center (TC) has at least one Interference Practice Specialist (IPS), who has received special training in preparing cases for an interference.The examiner should consult with the IPS to ensure that an interference exists and that the examiner has satisfied the requirements for proposing an interference. See MPEP § 2309 through § 2309.02 regarding procedures for preparation of interference papers by the examiner.
An interference is a proceeding, conducted before the Board of Patent Appeals and Interferences (Board), to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents. Jurisdiction to decide an interference is granted by 35 U.S.C. 135(a), which also grants the Board discretion to determine questions of patentability in the proceeding.
The United States Patent and Trademark Office (USPTO) does not have jurisdiction to conduct interferences which involve only patents, i.e., which do not involve at least one pending application. Jurisdiction over those proceedings is conferred on the Federal courts by 35 U.S.C. 291.
Since the Board is the body which has jurisdiction over interferences conducted in the USPTO, the examiner's involvement in the proceeding, once the interference has been declared, is minimal. This chapter therefore is generally limited to information concerning those aspects of an interference, including preliminary and subsequent proceedings, which are within the jurisdiction of, or are relevant to, the examiner. It does not include the procedure which is followed before the Board during the interference. Persons seeking information concerning that procedure should consult the text of the pertinent rules, 37 CFR subpart E, the notices of rulemaking and accompanying comments adopting those rules. These notices and comments, as well as other notices pertinent to current interference practice and procedure, are as follows:
Final Rule, 49 FR 48416 (Dec.12, 1984), 1050 O.G. 385 (Jan.29, 1985);
Correction Notice, 50 FR 23122 (May 31, 1985), 1059 O.G. 27 (Oct. 22, 1985);
Notices of Rulemaking: 52 FR 13833 (Apr. 27, 1987), 1080 O.G. 15 (July 14, 1987);
53 FR 23728 (June 23, 1988), 1092 O.G. 26 (July 12, 1988);
54 FR 29548 (July 13, 1989), 1105 O.G. 5 (Aug. 1, 1989);
56 FR 42528 (Aug. 28, 1991)*, 1136 O.G. 40 (Mar. 17, 1992);
*corrected, 56 FR 46823 (Sep. 16, 1991)
58 FR 49432 (Sep. 23, 1993), 1155 O.G. 65 (Oct. 19, 1993);
60 FR 14488 (Mar. 17, 1995), 1173 O.G. 36 (Apr. 11, 1995);
64 FR 12901 (Mar. 16, 1999);
65 FR 56792 (Sept. 20, 2000), 1239 O.G. 125 (Oct. 17, 2000);
65 FR 70489 (Nov. 24, 2000), 1241 O.G. 68 (Dec. 19, 2000).
Notices: Access to Interference Settlement Agreements by Government Agencies, 972 O.G. 2 (July 4, 1978); Interference Practice: Response to Order to Show Cause Under 37 CFR 1.640, 1074 O.G. 4 (Jan. 6, 1987); Interference Practice: Fraud and Inequitable Conduct Allegations, 1074 O.G. 42 (Jan. 27, 1987); Interferences - Preliminary Motions for Judgment, 1118 O.G. 19 (Sep. 11, 1990); Consideration of Fraud and Inequitable Conduct in Patent Interference Cases, 1133 O.G. 21 (Dec. 10, 1991); Interference Practice: Consideration of Fraud and Inequitable Conduct (Id.); Interference Practice: Matters Relating to Belated Preliminary Motions, 1144 O.G. 8 (Nov. 3, 1992); Availability of Interference Files and Interference Related Application and Patent Files, 1184 O.G. 15 (Mar. 5, 1996); Admissibility of Electronic Records in Interferences, 1208 O.G. 35 (Mar. 10, 1998); Publication of Opinions and Orders Entered by the Board of Patent Appeals and Interferences, 1217 O.G. 17 (Dec. 1, 1998); Interference Practice - Interference Rules Which Require a Party to "Show the Patentability" of a Claim, 1217 O.G. 17 (Dec. 1, 1998); Interference Practice - New Procedures for Handling Interference Cases at the Board of Patent Appeals and Interferences, 1217 O.G. 18 (Dec. 1, 1998).
The text of the notices listed above is available on the USPTO web page at www.uspto.gov.
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