Go to MPEP - Table of Contents
2307 Applicant Requests Interference With a Patent - 2300 Interference Proceedings
2307 Applicant Requests Interference With a Patent
37 CFR 1.607 Request by applicant for interference with patent.
(a) An applicant may seek to have an interference declared between an application and an unexpired patent by,
(1) Identifying the patent,
(2) Presenting a proposed count,
(3) Identifying at least one claim in the patent corresponding to the proposed count,
(4) Presenting at least one claim corresponding to the proposed count or identifying at least one claim already pending in its application that corresponds to the proposed count, and, if any claim of the patent or application identified as corresponding to the proposed count does not correspond exactly to the proposed count, explaining why each such claim corresponds to the proposed count, and
(5) Applying the terms of any application claim,
(i) Identified as corresponding to the count, and
(ii) Not previously in the application to the disclosure of the application.
(6) Explaining how the requirements of 35 U.S.C. 135(b) are met, if the claim presented or identified under paragraph (a)(4) of this section was not present in the application until more than one year after the issue date of the patent.
(b) When an applicant seeks an interference with a patent, examination of the application, including any appeal to the Board, shall be conducted with special dispatch within the Patent and Trademark Office. The examiner shall determine whether there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in an interference. If the examiner determines that there is any interfering subject matter, an interference will be declared. If the examiner determines that there is no interfering subject matter, the examiner shall state the reasons why an interference is not being declared and otherwise act on the application.
(c) When an applicant presents a claim which corresponds exactly or substantially to a claim of a patent, the applicant shall identify the patent and the number of the patent claim, unless the claim is presented in response to a suggestion by the examiner. The examiner shall notify the Commissioner of any instance where an applicant fails to identify the patent.
(d) A notice that an applicant is seeking to provoke an interference with a patent will be placed in the file of the patent and a copy of the notice will be sent to the patentee. The identity of the applicant will not be disclosed unless an interference is declared. If a final decision is made not to declare an interference, a notice to that effect will be placed in the patent file and will be sent to the patentee.
If the applicant does not apply the terms of the claim presented to the disclosure of the application, i.e., does not state how each term of the copied claim is supported by the specification, as required by 37 CFR 1.607(a)(5), a one-month time period should be set for correction of this deficiency. Form Paragraph 23.12 should be used for this purpose.
COMPLIANCE WITH 35 U.S.C. 135(b)
If the claim presented or identified as corresponding to the proposed count was added to the application by an amendment filed more than one year after issuance of the patent, or the application was not filed until more than one year after issuance of the patent (but the patent is not a statutory bar), then under the provisions of 35 U.S.C. 135(b), an interference will not be declared unless at least one of the claims which were in the application, or in a parent application, prior to expiration of the one-year period was for "substantially the same subject matter" as at least one of the claims of the patent. Therefore, 37 CFR 1.607(a)(6) requires that the request for interference with the patent include an explanation of how the requirements of 35 U.S.C. 135(b) are met. If this explanation is not provided, a one-month time period should be set for correction of this deficiency.
Further, if the patent issued from an application which was published under 35 U.S.C. 122(b), note the one year from publication date limitation found in 35 U.S.C. 135(b)(2) with respect to applications filed after the date of publication.
The explanation under 37 CFR 1.607(a)(6) must be considered by the examiner to determine whether the "substantially the same subject matter" requirement of 35 U.S.C. 135(b) has been met. In order for an application claim to be for "substantially the same subject matter" as a patent claim, it must contain all the material limitations of the patent claim. Parks v. Fine, 773 F.2d 1577, 227 USPQ 432 (Fed. Cir. 1985), modified, 783 F.2d 1036, 228 USPQ 677 (1986). See also Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977); In re Sitz, 331 F.2d 617, 141 USPQ 505 (CCPA 1964); Stalego v. Heymes, 263 F.2d 334, 120 USPQ 473 (CCPA 1959); Rieser v. Williams, 255 F.2d 419, 118 USPQ 96 (CCPA 1958); Emerson v. Beach, 215 F.2d 290, 103 USPQ 45 (CCPA 1955); In re Tanke, 213 F.2d 551, 102 USPQ 93 (CCPA 1954); Andrews v. Wickenden, 194 F.2d 729, 93 USPQ 27 (CCPA 1952); In re Frey, 182 F.2d 184, 86 USPQ 99 (CCPA 1950); Thompson v. Hamilton, 152 F.2d 994, 68 USPQ 161 (CCPA 1946). The fact that the application claim may be broad enough to cover the patent claim is not sufficient. In re Frey, 182 F.2d 184, 86 USPQ 99 (CCPA 1950).
If none of the claims which were present in the application, or in a parent application, prior to expiration of the one-year period meets the "substantially for the same subject matter" test, the claims presented or identified as corresponding to the proposed count should be rejected under 35 U.S.C. 135(b). In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997).
Note that the expression "prior to one year from the date on which the patent was granted" in 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
SPECIAL DISPATCH
Examiners should note that 37 CFR 1.607 requires that examination of an application in which applicant seeks an interference with a patent "shall be conducted with special dispatch."
See MPEP § 708.01.
Form paragraph 23.12 may be used to notify applicant of the failure to specifically apply each limitation of each of the copied claims to the disclosure of the application.
¶ 23.12 Failure To Apply Terms of Proposed Claim to the Disclosure
Claim [1] of this application has been copied from U.S. Patent No. [2] for the purpose of an interference.
Applicant has failed to specifically apply each limitation or element of each of the copied claim(s) to the disclosure of the application.
Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, to specifically apply each limitation or element of each of the copied claim(s) to the disclosure of the application. THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.
Go to MPEP - Table of Contents