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2309.06 Interfering Subject Matter in "Secrecy Order" Cases - 2300 Interference Proceedings
2309.06 Interfering Subject Matter in "Secrecy Order" Cases
37 CFR 5.3 Prosecution of application under secrecy order; withholding patent.
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(b) An interference will not be declared involving national applications under secrecy order. However, if an applicant whose application is under secrecy order seeks to provoke an interference with an issued patent, a notice of that fact will be placed in the file wrapper of the patent. (See § 1.607(d)).
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Since declaration of an interference gives immediate access to applications by opposing parties, no interference will be declared involving an application which has a secrecy order therein. See MPEP § 120 and § 130. Claims will be suggested, if necessary, so that all parties will be claiming the same patentable invention. See MPEP § 2303 - § 2305.04. When each application contains at least one claim to the same patentable invention, the following letter will be sent to all parties:
Claims 1, 2, etc. (including the conflicting claims and claims not patentable over the application under secrecy order) conflict with those of another application. However, the secrecy order (of the other application/of your application) does not permit the declaration of an interference. Accordingly, action on the application is suspended for so long as this situation continues.
Upon removal of the secrecy order and markings, if applicable, from all applications, an interference will be declared.
The letter should also indicate the allowability of the remaining claims, if any.
A notice that claims have been presented in an application under secrecy order for the purpose of interference with a patent should be placed in the patented file. Also, in accordance with 37 CFR 1.607(d), the patentee should be notified. See MPEP § 2307.06. The question of an interference is taken up upon termination of the secrecy order in the application in which patent claims are presented. The suggested notices should be modified accordingly.
The notices should be signed by the primary examiner. The copy of the notice retained separately in the TC should, in addition, contain the identification of the applications and patents involved and the interfering claims.
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