MPEP § 2308 — MPEP § 2308
Current through: 2022-07-01

2308-Action After an Interference 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2300 

 Section 2308 
 

 
 
 
 
 
 2308 Action After an Interference [R-10.2019]

 
 37 CFR 41.127 Judgment. 

 
 (a) Effect within Office —
 
 (1) Estoppel. A judgment disposes of all issues that were, or
 by motion could have properly been, raised and decided. A losing party who
 could have properly moved for relief on an issue, but did not so move, may
 not take action in the Office after the judgment that is inconsistent with
 that party’s failure to move, except that a losing party shall not be
 estopped with respect to any contested subject matter for which that party
 was awarded a favorable judgment.
 

 (2) Final disposal of claim. Adverse judgment against a claim
 is a final action of the Office requiring no further action by the Office to
 dispose of the claim permanently.
 

 
 

 
 *****

 
 (c) Recommendation . The judgment may include a recommendation for
 further action by the examiner or by the Director. If the Board recommends
 rejection of a claim of an involved application, the examiner must enter and
 maintain the recommended rejection unless an amendment or showing of facts not
 previously of record is filed which, in the opinion of the examiner, overcomes the
 recommended rejection.
 

 
 *****

 

 Jurisdiction over an application returns to the examiner once the
 interference has terminated. If there is a recommendation for further action in the
 application, the examiner must reopen prosecution to consider the recommendation. The
 examiner must enter any recommended rejection, and must maintain the rejection unless the
 applicant by amendment or submission of new evidence overcomes the rejection to the
 examiner’s satisfaction. Moreover, in the first action after termination of an interference
 or derivation, the examiner should make of record in each application all references not
 already of record which were pertinent to any preliminary motions and which were discussed
 in the decision on motion. 
 

 If there is no recommendation in the judgment, the examiner should update
 the search and may, but is not required to, reopen prosecution for any claim not disposed
 of in the judgment.
 

 An interference judgment simply resolves any question of priority between
 the two parties to the interference. The judgment does not prevent the examiner from making
 a rejection in further examination in the same application or a different application. If a
 party loses on an issue in the interference, the examiner should reject any claim for which
 allowance would be inconsistent with the interference judgment.
 

 Form paragraph 23.02 may be used to resume ex
 parte prosecution.
 

 ¶ 23.02 Ex Parte Prosecution Is Resumed

 Interference No. [1] has been terminated by a decision [2] to applicant. Ex parte prosecution is resumed.
 

 Examiner Note:
 
 1. In bracket 1, insert the interference number.

 2. In bracket 2, insert whether favorable or unfavorable.
 
 

 

 
 2308.01 Final Disposal of Claims [R-08.2012]

 Judgment against a claim in an interference, including any judgment on
 priority or patentability, finally disposes of the claim. No further action is needed
 from the examiner on that claim. If no claim remains allowable to the applicant, a
 notice of abandonment should be issued.
 

 

 
 2308.02 Added or Amended Claims [R-08.2017]

 An applicant may file a motion during the interference to add or amend
 a claim. A patentee may file a reissue application in support of a motion to add or
 amend a claim. A copy of the paper adding or amending the claim will be placed in the
 official record of the application, but not entered. A decision on the motion is entered
 in the official record of the application. The examiner may enter the added claim or
 amended claim into the application only if, and only to the extent, authorized by the
 Board, typically in the decision on the motion. The decision authorizing entry of the
 added or amended claim does not prevent the examiner from rejecting the claim during
 further prosecution.
 

 

 
 2308.03 Estoppel Within the Office [R-08.2017]

 If a party loses on an issue, it may not re-litigate the issue before
 the examiner or in a subsequent Board proceeding. The time for the party to make all
 pertinent arguments is during the interference, unless the Board expressly prevented the
 party from litigating the issue during the interference.
 

 There are two main types of interference estoppel. First, a losing
 party is barred on the merits from seeking a claim that would have been anticipated or
 rendered obvious by the subject matter of the lost count. See In re
 Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992); and Ex
 parte Tytgat, 225 USPQ 907 (Bd. Pat. App. & Inter. 1985). Second, a
 losing party is procedurally barred from seeking from the examiner relief that could
 have been--but was not--sought in the interference. See 37 CFR
 41.127(a)(1) ; and Ex parte Kimura, 55 USPQ2d
 1537 (Bd. Pat. App. & Inter. 2000) (reissue applicant estopped to claim compound
 when patentability of that compound could have been put in issue in interference where
 opponent’s application also described compound).
 

 The examiner should consult with an Interference Practice Specialist
 (IPS) before allowing a claim to a losing party that was added or amended during
 post-interference examination.
 

 
 Example 1 

 The applicant lost on priority for a count drawn to subject matter
 X. The Board’s judgment automatically disposed of all of the applicant’s claims
 corresponding to the count. The applicant files a continuing application with a claim
 to subject matter X. The claim must be rejected as estopped on the merits by the
 applicant’s loss in the interference.
 

 

 
 Example 2 

 Same facts as Example 1 except the applicant files a continuing
 application with a claim generic to subject matter X. Since the generic claim
 encompasses subject matter lost in the interference, the generic claim must be
 rejected as estopped on the merits by the loss in the interference.
 

 

 
 Example 3 

 Same facts as Example 1 except the applicant files a continuing
 application with a claim to subject matter that would have been obvious in view of
 subject matter X. The claim must be rejected as estopped on the merits by the
 applicant’s loss in the interference, but the examiner must demonstrate why the claim
 would have been obvious if subject matter X is assumed to be prior art.
 

 

 
 Example 4 

 Same facts as Example 1 except the applicant files a continuing
 application with a claim identical to a claim that corresponded to the count of the
 interference. The applicant also files a showing of why the claim should not have
 corresponded to the count. The claim should be rejected as procedurally estopped.
 Whether the showing is adequate or not, it is too late. The time to make the showing
 was during the interference.
 

 

 
 Example 5 

 Same facts as Example 4 except that during the interference the
 applicant timely requested, but was not permitted, to show the claim did not
 correspond to the count. The examiner may determine in light of the new showing
 whether the lost count would have anticipated or rendered obvious the subject matter
 of the claim. The procedural estoppel does not apply if, through no fault of the
 applicant, the Board prevented the applicant from seeking relief during the
 interference.
 

 

 
 Example 6 

 The applicant’s claim 1 was held unpatentable during the
 interference. The applicant could have moved, but did not move, to amend the claim.
 The applicant files a continuing application with an amended claim 1. If the subject
 matter of the amended claim would have been anticipated or obvious in view of a count
 of the interference, it must be rejected as procedurally estopped. Whether the
 amendment is sufficient to overcome the ground for unpatentability or not, the time
 to have amended the claim was during the interference.
 

 

 
 Example 7 

 Same situation as Example 6 except the applicant did move to amend
 the claim, but the motion was denied. The result is the same as in Example 6. If the
 subject matter of the amended claim would have been anticipated or obvious in view of
 a count of the interference, it must be rejected as procedurally estopped. The
 applicant’s lack of success on the motion does not prevent the estoppel from applying
 to the claim.
 

 

 
 Example 8 

 Same facts as Example 6 except the applicant filed a late request
 during the interference to amend the claim to overcome the basis for unpatentability.
 The request was denied as untimely. The claim must be rejected as procedurally
 estopped. Even though the applicant was not permitted to amend the claim during the
 interference, the estoppel still applies because the applicant’s inability to obtain
 relief in the interference was the result of the applicant’s failure to seek timely
 relief.
 

 

 
 2308.03(a) Losing Party [R-08.2012]

 A party is barred (estopped) from raising an issue if the party lost
 on the issue during the interference. A party may lose on one issue, yet not lose on
 a different issue.
 

 
 Example 

 

 The applicant lost the interference on a count drawn to a compound,
 but the opponent lost on a count drawn to methods of using the compound. The
 applicant may continue to pursue claims to the method of using the compound, but not
 claims to the compound itself.
 

 

 
 2308.03(b) No Interference-in-Fact [R-08.2012]

 A judgment of no interference-in-fact means that no interference is
 needed to resolve priority between the parties. Neither party has lost the
 interference for the purpose of estoppel consistent with 37 CFR
 41.127(a)(1) , even if one of the parties suggested the
 interference.
 

 A judgment of no interference-in-fact bars any further interference
 between the same parties for claims to the same invention as the count of the
 interference.
 

 

 
 2308.03(c) No Second Interference [R-08.2017]

 No second interference should occur between the same parties on
 patentably indistinct subject matter. If the Board held that there is no
 interference-in-fact between the parties for the subject matter of the count, that
 holding may not be reopened in further examination. If a party that lost the earlier
 interference is again claiming the same invention as the count, the interfering
 claims should be rejected as estopped.
 

 

 

 
 2308.04 Office Procedure Following Decision by the U. S.
 Court of Appeals for the Federal Circuit [R-10.2019]
 

 The losing party after an interference judgment has the
 right to appeal an unfavorable Board decision to the U.S. Court of Appeals for the
 Federal Circuit (CAFC). If the losing party before the Board is unsuccessful after
 appealing to the CAFC, with all claims being finally refused, and a formal mandate is
 issued regarding the pending claims then the proceedings in the case are considered
 terminated on the issue date of the mandate. In accordance with Morganroth v.
 Quigg, 885 F.2d 843, 12 USPQ2d 1125 (Fed. Cir. 1989), the subject
 application may not be revived by the USPTO on petition because the USPTO’s authority to
 revive applications does not extend to an alleged abandonment resulting from actions
 taken in proceedings outside the agency. See MPEP § 1216.01 , subsection I.A.
 

 

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 2301-Interference Proceedings 
 2301.01-Statutory Basis 

 2301.02-Definitions 

 2301.03-Interfering Subject Matter 

 2301.04-Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013 

 
 

 2302-Consult an Interference Practice Specialist 

 2303-Completion of Examination 
 2303.01-Issuance and Suspension 

 2303.02-Other Outstanding Issues with Patents 

 
 

 2304-Suggesting an Interference 
 2304.01-Preparation of an Application for Interference 
 2304.01(a)-Interference Search 

 2304.01(b)-Obtaining Control Over Involved Files 

 2304.01(c)-Translation of Foreign Benefit Application 

 2304.01(d)-Sorting Claims 

 
 

 2304.02-Applicant Suggestion 
 2304.02(a)-Identifying the Other Application or Patent 

 2304.02(b)-Counts and Corresponding Claims 

 2304.02(c)-Explaining Priority 

 2304.02(d)-Adequate Written Description 

 
 

 2304.03-Patentee Suggestion 

 2304.04-Examiner Suggestion 
 2304.04(a)-Interfering Claim Already in Application 

 2304.04(b)-Requiring a Claim 

 2304.04(c)-Rejections Based on Disclaimer 

 
 

 2304.05-Common Ownership 

 
 

 2305-Requiring a Priority Showing 

 2306-Secrecy Order Cases 

 2307-Action During an Interference 
 2307.01-Ex Parte Communications 

 2307.02-Access to Related Files 

 2307.03-Suspension of Related Examinations 

 2307.04-Additional Parties to Interference 

 2307.05-Board Action on Related Files 

 2307.06-Action at the Board 

 
 

 2308-Action After an Interference 
 2308.01-Final Disposal of Claims 

 2308.02-Added or Amended Claims 

 2308.03-Estoppel Within the Office 
 2308.03(a)-Losing Party 

 2308.03(b)-No Interference-in-Fact 

 2308.03(c)-No Second Interference 

 
 

 2308.04-Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit 

 
 

 2309-National Aeronautics and Space Administration or Department of Energy 

 2310-Derivation Proceedings 
 2310.01-Statutory Basis 

 2310.02-Definitions 

 
 

 2311-Consult a Technology Center Practice Specialist 

 2312-Board May Assume Jurisdiction 

 2313-Action Once a Derivation Proceeding is Instituted 

 2314-Action at the Board 

 2315-Action After a Derivation Proceeding is Decided 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:35