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2301.02 Definitions - 2300 Interference Proceedings
2301.02 Definitions
37 CFR 1.601 Scope of rules, definitions.
This subpart governs the procedure in patent interferences in the Patent and Trademark Office. This subpart shall be construed to secure the just, speedy, and inexpensive determination of every interference. For the meaning of terms in the Federal Rules of Evidence as applied to interferences, see § 1.671(c). Unless otherwise clear from the context, the following definitions apply to this subpart:
(a) Additional discovery is discovery to which a party may be entitled under § 1.687 in addition to discovery to which the party is entitled as a matter of right under § 1.673(a) and (b).
(b) Affidavit means affidavit, declaration under § 1.68, or statutory declaration under 28 U.S.C. § 1746. A transcript of an ex parte deposition may be used as an affidavit.
(c) Board means the Board of Patent Appeals and Interferences.
(d) Case-in-chief means that portion of a party's case where the party has the burden of going forward with evidence.
(e) Case-in-rebuttal means that portion of a party's case where the party presents evidence in rebuttal to the case-in-chief of another party.
(f) A count defines the interfering subject matter between two or more applications or between one or more applications and one or more patents. When there is more than one count, each count shall define a separate patentable invention. Any claim of an application or patent that is designated to correspond to a count is a claim involved in the interference within the meaning of 35 U.S.C. 135(a). A claim of a patent or application that is designated to correspond to a count and is identical to the count is said to correspond exactly to the count. A claim of a patent or application that is designated to correspond to a count but is not identical to the count is said to correspond substantially to the count. When a count is broader in scope than all claims which correspond to the count, the count is a phantom count.
(g) The effective filing date of an application is the filing date of an earlier application, benefit of which is accorded to the application under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded, the filing date of the application. The effective filing date of a patent is the filing date of an earlier application, benefit of which is accorded to the patent under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded, the filing date of the application which issued as the patent.
(h) In the case of an application, filing date means the filing date assigned to the application. In the case of a patent, "filing date" means the filing date assigned to the application which issued as the patent.
(i) An interference is a proceeding instituted in the Patent and Trademark Office before the Board to determine any question of patentability and priority of invention between two or more parties claiming the same patentable invention. An interference may be declared between two or more pending applications naming different inventors when, in the opinion of an examiner, the applications contain claims for the same patentable invention. An interference may be declared between one or more pending applications and one or more unexpired patents naming different inventors when, in the opinion of an examiner, any application and any unexpired patent contain claims for the same patentable invention.
(j) An interference-in-fact exists when at least one claim of a party that is designated to correspond to a count and at least one claim of an opponent that is designated to correspond to the count define the same patentable invention.
(k) A lead attorney or agent is a registered attorney or agent of record who is primarily responsible for prosecuting an interference on behalf of a party and is the attorney or agent whom an administrative patent judge may contact to set times and take other action in the interference.
(l) A party is an applicant or patentee involved in the interference or a legal representative or an assignee of record in the Patent and Trademark Office of an applicant or patentee involved in an interference. Where acts of a party are normally performed by an attorney or agent, "party" may be construed to mean the attorney or agent. An inventor is the individual named as inventor in an application involved in an interference or the individual named as inventor in a patent involved in an interference.
(m) A senior party is the party with the earliest effective filing date as to all counts or, if there is no party with the earliest effective filing date as to all counts, the party with the earliest filing date. A junior party is any other party.
(n) Invention "A" is the same patentable invention as an invention "B" when invention "A" is the same as ( 35 U.S.C. 102) or is obvious ( 35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A". Invention "A" is a separate patentable invention with respect to invention "B" when invention "A" is new ( 35 U.S.C. 102) and non-obvious ( 35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A".
(o) Sworn means sworn or affirmed.
(p) United States means the United States of America, its territories and possessions.
(q) A final decision is a decision awarding judgment as to all counts. An interlocutory order is any other action taken by an administrative patent judge or the Board in an interference, including the notice declaring an interference.
(r) NAFTA country means NAFTA country as defined in section 2(4) of the North American Free Trade Agreement Implementation Act, Pub. L. 103-182, 107 Stat. 2060 (19 U.S.C. 3301).
(s) WTO member country means WTO member country as defined in section 2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4813 (19 U.S.C. 3501).
37 CFR 1.601 defines various terms used in Subpart E of Title 37, Code of Federal Regulation, including "same patentable invention," "separate patentable invention," "sworn," "United States," "final decision," "interlocutory order," "NAFTA country" and "WTO member country." "Affidavits" include declarations filed under 35 U.S.C. 25 and 37 CFR 1.68 as well as statutory declarations under 28 U.S.C. 1746. The definition "United States" is the same as the definition of United States in 35 U.S.C. 100(c). "NAFTA country" is defined in section 2(4) of the NAFTA Implementation Act, which includes United States, Mexico and Canada. For purposes of 35 U.S.C. 104, inventions made abroad in a NAFTA country would include only Mexico and Canada.
The definition of "interference" permits an interference between one or more applications and one or more patents provided it does not create an interference between patents. Thus, the revised rules follow the policy of Wilson v. Yakel, 1876 C.D. 245 (Comm'r Pat. 1876) and, to the extent inconsistent therewith, do not follow the policy announced in Touval v. Newcombe, 194 USPQ 509 (Comm'r Pat. 1976). An interference exists between two applications, or an application and a patent, if at least one claim from each would have anticipated or rendered obvious the subject matter of at least one claim of the other. The test is analogous to a statutory or obviousness type double patenting analysis. Note that the claims need not be identical in language or scope for an interference to exist. See Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977) (finding an interference where the claims did not even overlap).
A "count" defines interfering subject matter. An interference may have two counts only if the second count defines a "separate patentable invention" from the first count. The reason the second count must define a separate patentable invention is to permit the USPTO to lawfully issue separate patents to different parties in an interference when a single party does not prevail as to all counts. A "separate patentable invention" is defined in 37 CFR 1.601(n):
Invention "A" is a separate patentable invention with respect to invention "B" when invention "A" is new ( 35 U.S.C. 102) and non-obvious ( 35 U.S.C. 103) in view of invention "B" assuming invention "B" is prior art with respect to invention "A".
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