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2307.03 Presentation of Claims for Interference With a Patent, After Prosecution of Application is Closed - 2300 Interference Proceedings
2307.03 Presentation of Claims for Interference With a Patent, After Prosecution of Application is Closed
An amendment presenting a claim to provoke an interference in an application not in issue is usually admitted and promptly acted on. However, if the application had been closed to further prosecution as by final rejection or allowance of all the claims, or by appeal, such amendment is not entered as a matter of right.
An interference may result when an applicant presents claims to provoke an interference with a patent which provided the basis for final rejection. Where this occurs, if the rejection in question has been appealed, the Board of Patent Appeals and Interferences should be notified of the withdrawal of this rejection so that the appeal may be dismissed as to the involved claims.
Where the prosecution of the application is closed and the presented claims relate to an invention distinct from that claimed in the application, entry of the amendment may be denied. See Ex parte Shohan, 48 USPQ 326, 1941 C.D. 1 (Comm'r Pat. 1940). Admission of the amendment may very properly be denied in an application where prosecution is closed, if prima facie, the claims are not supported by the applicant's disclosure. An applicant may not present a claim corresponding to a patent claim which applicant has no right to make as a means to reopen or prolong the prosecution of his or her application. See MPEP § 714.19.
AFTER NOTICE OF ALLOWANCE
When an amendment which includes one or more claims presented to provoke an interference with a patent is received after the Notice of Allowance and the examiner finds one or more of the claims patentable to the applicant and an interference to exist, the examiner should prepare a letter, requesting that the application be withdrawn from issue for the purpose of interference. This letter, which should designate the claims to be involved, together with the file and the proposed amendments, should be sent to the TC Director.
When an amendment which includes one or more claims presented to provoke an interference with a patent is received after Notice of Allowance, and the examiner finds basis for refusing the interference on any ground, the examiner should make an oral report to the supervisory patent examiner of the reasons for refusing the requested interference. Notification to applicant is made on Form PTOL-271 if the entire amendment or a portion of the amendment (including all the presented claims) is refused. Form Paragraph 23.01 should be employed to express the adverse recommendation as to the entry of the presented claims.
¶ 23.01 Entry of Claims Disapproved
Entry of claim [1] disapproved because [2]. This application will not be withdrawn from issue.
Examiner Note
In bracket 2, insert brief statement of basic reasons for disapproval. See MPEP § 2307.03.
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