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2308.01 Patent Has Filing Date Earlier Than Application - 2300 Interference Proceedings
2308.01 Patent Has Filing Date Earlier Than Application
When an applicant attempts to provoke an interference with a patent, the examiner must determine the effective filing dates of the application and of the patent; only the patent's effective United States filing date will be considered. Any claim of foreign priority by the patentee under 35 U.S.C. 119(a) will not be taken into account when determining whether or not an interference should be declared, in order to be consistent with the holding in In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966), that the effective date of a United States patent as a reference is not affected by the foreign filing date to which the patentee is entitled under 35 U.S.C. 119(a). If the patentee is determined to be entitled to the benefit of a prior United States application as to claimed subject matter involved in the interference, that application must be listed on the PTO-850 form (see MPEP § 2309.02).
If the effective filing date of the application is 3 months or less after the effective filing date of the patent, the applicant must submit a statement alleging that there is a basis upon which the applicant is entitled to a judgment relative to the patentee. 37 CFR 1.608(a). The statement may be made by persons other than the applicant. See MPEP § 715.04.
If the effective filing date of the application is more than 3 months after the effective filing date of the patent, 37 CFR 1.608(b) requires that the applicant must file (A) evidence, such as patents, publications and other documents, and one or more affidavits or declarations which demonstrate that applicant is prima facie entitled to a judgment relative to the patentee, and (B) an explanation stating with particularity the basis upon which the applicant is prima facie entitled to the judgment.
If an applicant is claiming the same invention as a patent which has an earlier effective United States filing date but there is not a statutory bar against the application, and the applicant has not submitted the items required by 37 CFR 1.608(a) or (b), as appropriate, the application should be rejected under 35 U.S.C. 102(e)/ 103. A statement should be included in the rejection that the patent cannot be overcome by an affidavit or declaration under 37 CFR 1.131 but only through interference proceedings. Note, however, 35 U.S.C. 135(b) and MPEP § 2307. The applicant should also be advised that an affidavit under 37 CFR 1.608(b) or evidence and an explanation under 37 CFR 1.608(b), as appropriate, must be submitted and it should be stated, if applicable, that the patentee has been accorded the benefit of an earlier U.S. application.
If the applicant does not agree he or she is claiming the same invention as the patent, and files an affidavit under 37 CFR 1.131, the rejection should be repeated and made final. The rejection should specify what the count or counts of the interference between the application and the patent would be. If the applicant still disagrees with the examiner, the rejection may be appealed to the Board of Patent Appeals and Interferences, and the question of whether the application and the reference patent are claiming the same invention may be argued on appeal, inasmuch as the 37 CFR 1.131 affidavit cannot be considered unless the applicant is found to be claiming an invention which is patentably distinct from that claimed in the patent. See In re Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972) and In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962).
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