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2364 Entry of Amendments - 2300 Interference Proceedings
2364 Entry of Amendments
Under 37 CFR 1.637(c)(1) and (c)(2), (d)(3), (e)(1) and (e)(2), or (h), a moving party is required to submit with his or her motion as a separate paper, an amendment embodying the proposed claims if the claims are not already in the application concerned. In the case of an application involved in the interference, this amendment is not entered at that time but is placed in the application file.
An amendment filed in connection with a motion to add or substitute counts in an interference must include any claim or claims to be added and be accompanied by the appropriate fees (or fee authorization), if any, which would be due if the amendment were to be entered, even though it may be that the amendment will never be entered. Only upon the granting of the motion may it be necessary for the other party or parties to present claims, but the fees (or fee authorization) must be paid whenever claims are presented. Claims which have been submitted in reply to a suggestion by the Office for inclusion in an application must be accompanied by the fee due (or fee authorization), if any. Money paid in connection with the filing of a proposed amendment will not be refunded by reason of the nonentry of the amendment.
If the motion is granted, the amendment is entered at the time decision on the motion is rendered. If the motion is not granted, the amendment, though left in the file, is not entered and is so marked.
If the motion is granted only in part and denied as to another part, only so much of the amendment as is covered in the grant of the motion is entered, the remaining part being indicated and marked "not entered" in pencil. See 37 CFR 1.644.
In each instance, the applicant is informed of the disposition of the amendment in the first action in the application following the termination of the interference. If the application is otherwise ready for issue, the applicant is notified that the application is allowed and the Notice of Allowance will be sent in due course, that prosecution is closed, and to what extent the amendment has been entered.
As a corollary to this practice, it follows that where prosecution of the winning application had been closed prior to the declaration of the interference, as by being in condition for issue, that application may not be reopened to further prosecution following the interference, even though additional claims had been presented in connection with a motion in the interference.
It should be noted at this point that, under 37 CFR 1.663, the entry of an adverse judgment against a party who requests same pursuant to 37 CFR 1.662(a) finally disposes of all claims of that party's application which are designated as corresponding to the count.
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