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2309.02 Preparation of Papers - 2300 Interference Proceedings
2309.02 Preparation of Papers
INTERFERENCE INITIAL MEMORANDUM
If the proposed interference will involve a patent, the examiner should first determine whether the maintenance fees have been paid, by using the patent number with PALM Intranet, PALM screen 2970, or contacting the USPTO Status and Entity Division. See MPEP § 1730. If fees are due and they have not been paid, the interference cannot be declared since it would involve an expired patent ( 35 U.S.C. 135(a); 37 CFR 1.606).
A sample of a Form PTO-850 is shown at the end of this section.
A separate form is used for each count of the interference. The form need not be typed. If the count is identical to a claim of one of the parties, the number of that claim is circled. If the count is not identical to any claim of any of the parties, the count should be typed on a plain sheet and attached to the form.
The files to be included in the interference should be listed by last name (of the first listed inventor if application is joint), application number, filing date, and, if applicable, patent number and issue date.
The sequence in which the parties are listed on the form is completely immaterial. If the examiner has determined that a party is entitled to the benefit of the filing date of one or more applications (or patents) as to the counts, the blanks provided on the form for indicating this fact should be filled in as to all such applications. It is particularly important to list all intermediate applications necessary to provide continuity of pendency to the earliest benefit application to which a party is entitled.
An applicant may be accorded the benefit of a foreign application on the Form PTO-850 and the declaration notices only if the papers required by 37 CFR 1.55, including an English translation of the foreign application, have been filed and the primary examiner has determined that the applicant is in fact entitled to the benefit of such application. In addition, for utility or plant applications filed on or after November 29, 2000, the applicant must submit the priority claim within the time required by 37 CFR 1.55(a)(1) or file a grantable petition, including the surcharge set forth in 37 CFR 1.17(t), for an unintentionally delayed priority claim under 37 CFR 1.55(c). A patentee may be accorded the benefit of the filing date of a foreign application in the notice of interference provided he or she has complied with the requirements of 37 CFR 1.55, has filed an English translation, if required, and the primary examiner has determined that at least one species within the count involved in the interference is supported by the disclosure of the foreign application.
All claims in each party's application or patent must be listed in the spaces provided on the form as either corresponding or not corresponding to the count. A claim corresponds to a count if, considering the count as prior art, the claim would be unpatentable over the count under 35 U.S.C. 102 or 35 U.S.C. 103. If the examiner is in doubt as to whether a party's claim does or does not correspond to a count, it should be listed as corresponding to the count. If the party disagrees with this listing, a motion may be filed under 37 CFR 1.633(c)(4) during the interference to designate the claim as not corresponding to the count.
Note that for each count, every claim in a party's application or patent must be designated as either corresponding or not corresponding to the count; this includes any claims of the application which may be under rejection. For every claim of an application which is listed on the form, the examiner must indicate whether or not that claim is allowable by writing its number in either the "patented or patentable pending claims" box or the "unpatentable pending claims" box on the form. All patent claims and at least one of the application claims designated as corresponding to the count must be listed in the "patented or patentable pending claims" box.
If an involved application or patent contains multiple dependent claims, the examiner should be careful to indicate which embodiments of each multiple dependent claim correspond or do not correspond to each count. An embodiment of a multiple dependent claim should not be circled on form PTO-850 as being the count, but rather, the embodiment should be written out in independent form in the space provided.
After Form PTO-850 is filled out for each count of the proposed interference, it must be signed by the primary examiner and an Interference Practice Specialist in the space provided. The form must also be signed by the TC Director, if the TC Director's approval is required (as when the interference involves two applications whose effective filing dates are more than 6 months apart).
The examiner should keep a copy of the form or forms and all attachments for his/her records.
If two of the parties have the same attorney or agent, the examiner will in a separate memorandum call the attention of the Board to that fact when the Interference Initial Memorandum is forwarded. The administrative patent judge, when the interference is declared, can then take such action as may be appropriate under 37 CFR 1.613(b).
