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2364.01 Amendments Filed During Interference - 2300 Interference Proceedings
2364.01 Amendments Filed During Interference
When an amendment to an application involved in an interference is received, the examiner inspects the amendment and, if necessary, the application, to determine whether or not the amendment affects the pending or any prospective interference. If the amendment is an ordinary one properly responsive to the last regular ex parte action preceding the declaration of the interference and does not affect the pending or any prospective interference, the amendment is marked in pencil "not entered" and placed in the file, a corresponding entry being endorsed in ink in the contents column of the wrapper. After termination of the interference, the amendment may be permanently entered and considered as in the case of ordinary amendments filed during the ex parte prosecution of the application.
Under 37 CFR 1.615(a), amendments related to an application involved in a pending interference will not be entered without the consent of an administrative patent judge. See MPEP § 2315. Therefore, the examiner should receive the approval of the administrative patent judge in charge of an interference before entering any amendments in any of the cases involved in the interference.
If the amendment is filed in reply to a letter by the primary examiner, suggesting a claim or claims for interference with another party and for the purpose of declaring an additional interference, the examiner, after obtaining the consent of the administrative patent judge, enters the amendment and takes the proper steps to propose the second interference.
If the amendment is one filed in an application where the administrative patent judge has consented to ex parte prosecution of an appeal to the Board of Patent Appeals and Interferences being conducted concurrently with the interference proceeding (see MPEP § 2315) and if it relates to the appeal, it should be treated like any similar amendment in an ordinary appealed application.
When an amendment filed during interference purports to put the application in condition for another interference either with a pending application or with a patent, the primary examiner must personally consider the amendment sufficiently to determine whether, in fact, it does so, and should then consult with the administrative patent judge. With the consent of the administrative patent judge, one of the following three actions may be appropriate.
(A) If the amendment presents allowable claims directed to an invention claimed in a patent or in another pending application in issue or ready for issue, the examiner borrows the file, enters the amendment, and takes the proper steps to propose the second interference.
(B) Where in the opinion of the examiner, the proposed amendment does not put the application in condition for interference with another application not involved in the interference, the amendment is placed in the file and marked "not entered" and the applicant is informed why it will not be now entered and acted upon.
(C) When the amendment seeks to provoke an interference with a patent not involved in the interference and the examiner believes that the claims presented are not patentable to the applicant, and where the application is open to further ex parte prosecution, the file should be obtained, the amendment entered, and the claims rejected, setting a time period for reply. If reconsideration is requested and rejection made final, a time period for appeal should be set. Where the application at the time of forming the interference was closed to further ex parte prosecution and the disclosure of the application will prima facie not support the claim presented, or where the claims presented are drawn to a nonelected invention, the amendment will not be entered and the applicant will be so informed. That communication will give briefly the reason for the nonentry of the amendment.
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