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2306 Interference Between an Application and a Patent - 2300 Interference Proceedings
2306 Interference Between an Application and a Patent
37 CFR 1.606 Interference between an application and a patent; subject matter of the interference.
Before an interference is declared between an application and an unexpired patent, an examiner must determine that there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in the interference. The interfering subject matter will be defined by one or more counts. The application must contain, or be amended to contain, at least one claim that is patentable over the prior art and corresponds to each count. The claim in the application need not be, and most often will not be, identical to a claim in the patent. All claims in the application and patent which define the same patentable invention as a count shall be designated to correspond to the count.
An interference may be declared between an application and a patent if the application and patent are claiming the same patentable invention, as defined in 37 CFR 1.601(n), and at least one of the applicant's claims to that invention are patentable to the applicant. Since at least one of the applicant's claims must be patentable, an interference between an application and a patent cannot be declared if:
(A) The patent is a reference against the application under 35 U.S.C. 102(b)/103;
(B) The applicant's claims are not supported by the application disclosure, or otherwise do not comply with 35 U.S.C. 112;
(C) The applicant was not claiming the same or substantially the same invention as claimed in the patent within 1 year after the date on which the patent was issued ( 35 U.S.C. 135(b); see also MPEP § 2307);
(D) The patent is a reference against the application under 35 U.S.C. 102(e)/103, unless the applicant has filed a showing under 37 CFR 1.608. See MPEP § 2307.02 concerning the rejection of claims in an application which correspond to claims of a patent.
Since the claims of a patent may not be altered (except by reissue or reexamination), the applicant must claim the same patentable invention as is claimed in one or more claims of a patent in order to provoke an interference with the patent. The fact that the patent may disclose subject matter claimed by the applicant is not a basis for interference if the patent does not claim that subject matter.
The counts of the interference are formulated based on essentially the same criteria regardless of whether or not a patent is involved. As stated in 37 CFR 1.601(f), "each count shall define a separate patentable invention." Therefore, instead of having the same number of counts as copied patent claims, the examiner determines how many separate patentable inventions are claimed by the applicant and the patentee. When the interference is declared, there will be only one count for each separate patentable invention, with all the claims of the applicant and of the patentee which claim each invention designated as corresponding to the count for that invention.
An interference between an application and a patent may arise in one of the following ways:
(A) During examination of an application, the examiner may determine that the application contains one or more allowable claims which are drawn to the same invention as claimed in a patent. In that event, the examiner may propose the interference as described in MPEP § 2309.
(B) The examiner may discover a patent having an effective U.S. filing date later than the effective filing date of an application which claims an invention which is disclosed by the applicant and to which the applicant could present patentable claims. In that event, the examiner should proceed in accordance with MPEP § 2306.01.
(C) The applicant may provoke an interference with a patent by presenting a proposed count and either presenting a claim corresponding to the proposed count, or identifying a claim already in the application that corresponds to the proposed count. See 37 CFR 1.607 and MPEP § 2307.
37 CFR 1.601(i) includes the possibility that an interference may include more than one unexpired patent. The USPTO does not have jurisdiction to determine interferences between patents. However, if the examiner discovers two or more patents which are claiming the same invention as an application, interferences may be instituted between the application and the patents. The TC Director's approval must be obtained before interferences involving multiple patents will be proposed.
PATENT IN DIFFERENT TECHNOLOGY CENTER
When an applicant seeks to provoke an interference with a patent classified in another TC, the propriety of proposing the interference is decided by and the interference is proposed by the TC where the patent is classified. In such a case, it may be necessary to transfer the application, including the drawings, temporarily to the TC which will propose the interference.
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