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2305.04 Suggestion of Claims, Application in Issue or in Interference - 2300 Interference Proceedings
2305.04 Suggestion of Claims, Application in Issue or in Interference
An application will not be withdrawn from issue for the purpose of suggesting claims for an interference. When an application pending before the examiner contains one or more claims defining an invention to which claims may be presented in an application in issue, the examiner may write a letter suggesting such claims to the applicant whose application is in issue. The letter should state that if such claims are presented within a certain specified time, the application will be withdrawn from issue, the amendment entered, and the interference declared. Such letters must be submitted to the TC Director for approval. If the suggested claims are not presented in the application in issue, it may be necessary to withdraw it from issue for the purpose of rejecting other claims on the implied disclaimer resulting from the failure to present the suggested claims.
When the examiner suggests one or more claims for the purpose of interference with an application in issue to an applicant whose application is pending before him or her, the application in issue will not be withdrawn for the purpose of interference unless the suggested claims are presented in the pending application within the time specified by the examiner. The letter suggesting claims should be submitted to the TC Director for approval.
In either of the above cases, the Office of Patent Publication should be notified when the claims are suggested, so that in case the issue fee is paid during the time in which the suggested claims may be presented, proper steps may be taken to prevent the issue fee from being applied.
The examiner should borrow the allowed application from the Office of Patent Publication and hold the file until the claims are presented or the time limit expires. This avoids any possible issuance of the application as a patent should the issue fee be paid. To further ensure against issuance of the application, the examiner may pencil in the blank space labeled, "Date paid" in the lower right-hand corner of the face of the file wrapper, the initialed request: "Defer for interference." The issue fee is not applied to such an application until the following procedure is carried out.
When notified that the issue fee has been received, the examiner shall prepare a memo to the Office of Patent Publication requesting that issue of the patent be deferred for a period of 3-months due to possible interference. This allows a period of 2 months to complete any action needed. At the end of this 2-month period, the application must either be released to the Office of Patent Publication or be withdrawn from issue.
When an application is found claiming an invention for which claims are to be suggested to other applications already involved in interference, to form another interference, the TC Interference Practice Specialist, after obtaining the consent of the administrative patent judge in charge of the interference, borrows the last named applications from the Service Branch of the Board of Patent Appeals and Interferences. In case the application is to be added to an existing interference, the examiner should consult with the Interference Practice Specialist in accordance with MPEP § 2309. The Interference Practice Specialist will consult with the administrative patent judge in charge of the interference who will determine the action to be taken. Also, see MPEP § 2342 and § 2364.01.
Form paragraph 23.08 may be used to withdraw an application from issue for consideration of a potential interference based on suggested claims. Form paragraph 23.19 may be used to notify applicant that the foreign priority claim has not been substantiated yet.
¶ 23.08 Suggestion of Claims - Application in Issue
This application has been withdrawn from issue for consideration of a potential interference based on the claims suggested in this action.
Examiner Note
1. If a conflicting application is in issue, it should be withdrawn using form paragraph 10.01 prior to suggesting claims for interference.
2. Either form paragraph 23.04 or 23.09 must be used in conjunction with this paragraph.
¶ 23.19 Foreign Priority Not Substantiated
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a translation of the foreign application should be submitted under 37 CFR 1.55 in reply to this action.
Examiner Note
This paragraph may be used when claims are suggested to applicant from either an application or a patent and applicant has a claim for priority, but has not filed a translation of the priority document.
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