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2306.01 Patent Has Filing Date Later Than Application - 2300 Interference Proceedings
2306.01 Patent Has Filing Date Later Than Application
Although a patent which has an effective U.S.filing date later than the effective filing date of an application is not prior art against that application, the application should not be issued if the application and patent contain claims to the same patentable invention. In order to avoid the issuance of two patents to the same patentable invention, the examiner should take steps to propose an interference between the application and the patent.
If the application contains at least one allowable claim drawn to the same patentable invention as at least one patent claim, the examiner may propose the interference by proceeding as described in MPEP § 2309.
If the application discloses, but does not claim, an invention claimed in the patent, the examiner should suggest a claim or claims to the applicant (see MPEP § 2305), and include a statement that failure of the applicant to make the claim or claims will be taken as a concession that the subject matter of the claim or claims is the prior invention of another. Form Paragraphs 23.09 and 23.10 should be used for this purpose.
¶ 23.09 Requirement To Copy Patent Claim
The following claim number [1] from U.S. Patent No. [2] is suggested to applicant under 35 U.S.C. 135(a) for the purposes of an interference:
[3]
The suggested claim must be copied exactly, although other claims may be proposed under 37 CFR 1.605(a).
Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication to copy this patent claim. Failure to do so will be considered a concession that the subject matter of this claim is the prior invention of another under 35 U.S.C. 102(g), and thus also prior art under 35 U.S.C. 103(a) (In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975)), but will not result in the abandonment of this application. THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.
Examiner Note
1. In bracket 1, insert the number from the patent of the suggested claim.
2. In bracket 2, insert the number of the patent.
3. In bracket 3, insert a copy of the patent claim.
4. Only one claim from the patent should be suggested for interference unless other claims to a separate patentably distinct invention are claimed in the patent and can be made by the applicant. To suggest an additional claim, form paragraph 23.10 should follow this paragraph.
5. If the Office action addresses other issues, such as a rejection of other claims, form paragraph 23.07 should be included at the end of the Office action.
¶ 23.10 Copying Additional Patent Claims for a Distinct Invention
Claim number [1] from U.S. Patent No. [2] is suggested under 35 U.S.C. 135(a) in addition to claim [3] of the patent, suggested above. The inventions defined by these patent claims are considered to be "separate patentable inventions" under 37 CFR 1.601(n) which could form the basis for plural counts in an interference.
The suggested claim, reproduced below, must be copied exactly, although other claims may be proposed under 37 CFR 1.605(a).
[4]
Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication to copy this additional patent claim. Failure to do so will be considered a concession that the subject matter of this claim is the prior invention of another under 35 U.S.C. 102(g), and thus also prior art under 35 U.S.C. 103(a) (In re Oguie, 517 F.2d 1382,186 USPQ 227 (CCPA 1975)). THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.
Examiner Note
1. In bracket 1, insert the number of the patent claim that is patentably distinct from the claim specified in form paragraph 23.09.
2. This paragraph must follow form paragraph 23.09 and should only be used in those rare instances where both the patent and the application claim distinct, interfering inventions.
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