MPEP § 2301 — MPEP § 2301
Current through: 2022-07-01

2301-Interference Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2300 

 Section 2301 
 

 
 
 
 
 
 2301 Interference Proceedings [R-08.2017]

 An interference is a contest under pre-AIA 35 U.S.C. 135(a) between an
 application and either another application or a patent. An interference is declared to
 assist the Director of the United States Patent and Trademark Office in determining
 priority, that is, which party first invented the commonly claimed invention within the
 meaning of pre-AIA 35
 U.S.C. 102(g)(1) . See MPEP § 2301.03 . Once an interference has
 been suggested under 37
 CFR 41.202 , the examiner refers the suggested interference to the
 Board. An administrative patent judge declares the interference, which is then administered
 at the Board. A panel of Board members enters final judgment on questions of priority and
 patentability arising in an interference.
 

 Once the interference is declared, the examiner generally will not treat
 the application again until the interference has been terminated. Occasionally, however,
 the Board may refer a matter to the examiner or may consult with the examiner on an issue.
 Given the very tight deadlines in an interference, any action on a consultation or referral
 from the Board must occur with special dispatch.
 

 The application returns to the examiner after the interference has been
 terminated. Depending on the nature of the judgment in the case, the examiner may need to
 take further action in the application. For instance, if there are remaining allowable
 claims, the application may need to be passed to issue. The Board may have entered a
 recommendation for further action by the examiner in the case. If the applicant has lost an
 issue in the interference, the applicant may be barred from taking action in the
 application or any subsequent application that would be inconsistent with that loss.
 

 Given the infrequency, cost, and complexity of interferences and
 derivation proceedings, it is important for the examiner to consult immediately with an
 Interference Practice Specialist (IPS) in the examiner’s Technology Center, see
 MPEP §
 2302 , once a possible interference is identified. It is also
 important to complete examination before the possible interference is referred to the
 Board. See MPEP §
 2303 . See MPEP § 2310 et seq. for discussion of derivation proceedings.
 

 
 2301.01 Statutory Basis [R-08.2017]

 
 35 U.S.C. 102 (pre-AIA) 
 Conditions for patentability; novelty and
 loss of right to patent. 

 A person shall be entitled to a patent unless —

 *****

 
 (g)(1) during the course of an interference conducted under
 section
 135 or section 291 , another
 inventor involved therein establishes, to the extent permitted in
 section
 104 , that before such person’s invention thereof the
 invention was made by such other inventor and not abandoned, suppressed, or
 concealed, or 
 

 
 *****

 

 
 35 U.S.C. 104 (pre-AIA) 
 Invention made abroad. 

 
 (a) IN GENERAL.—
 
 (1) PROCEEDINGS.—In proceedings in the Patent and Trademark
 Office, in the courts, and before any other competent authority, an
 applicant for a patent, or a patentee, may not establish a date of
 invention by reference to knowledge or use thereof, or other activity
 with respect thereto, in a foreign country other than a NAFTA country or
 a WTO member country, except as provided in sections
 119 and 365 of this
 title.
 

 (2) RIGHTS.—If an invention was made by a person, civil or
 military—
 
 (A) while domiciled in the United States, and serving
 in any other country in connection with operations by or on behalf
 of the United States,
 

 (B) while domiciled in a NAFTA country and serving in
 another country in connection with operations by or on behalf of
 that NAFTA country, or
 

 (C) while domiciled in a WTO member country and
 serving in another country in connection with operations by or on
 behalf of that WTO member country, that person shall be entitled to
 the same rights of priority in the United States with respect to
 such invention as if such invention had been made in the United
 States, that NAFTA country, or that WTO member country, as the case
 may be.
 

 
 

 (3) USE OF INFORMATION.—To the extent that any information
 in a NAFTA country or a WTO member country concerning knowledge, use, or
 other activity relevant to proving or disproving a date of invention has
 not been made available for use in a proceeding in the Patent and
 Trademark Office, a court, or any other competent authority to the same
 extent as such information could be made available in the United States,
 the Director, court, or such other authority shall draw appropriate
 inferences, or take other action permitted by statute, rule, or
 regulation, in favor of the party that requested the information in the
 proceeding.
 

 
 

 (b) DEFINITIONS.—As used in this section—
 
 (1) The term “NAFTA country” has the meaning given that term
 in section 2(4) of the North American Free Trade Agreement Implementation
 Act; and
 

 (2) The term “WTO member country” has the meaning given that
 term in section 2(10) of the Uruguay Round Agreements Act.
 

 
 

 
 

 
 35 U.S.C. 135 (pre-AIA) 
 Interferences. 

 
 (a) Whenever an application is made for a patent which, in the
 opinion of the Director, would interfere with any pending application, or with
 any unexpired patent, an interference may be declared and the Director shall
 give notice of such declaration to the applicants, or applicant and patentee,
 as the case may be. The Board of Patent Appeals and Interferences shall
 determine questions of priority of the inventions and may determine questions
 of patentability. Any final decision, if adverse to the claim of an applicant,
 shall constitute the final refusal by the Patent and Trademark Office of the
 claims involved, and the Director may issue a patent to the applicant who is
 adjudged the prior inventor. A final judgment adverse to a patentee from which
 no appeal or other review has been or can be taken or had shall constitute
 cancellation of the claims involved in the patent, and notice of such
 cancellation shall be endorsed on copies of the patent distributed after such
 cancellation by the Patent and Trademark Office.
 

 
 *****

 

 

 
 2301.02 Definitions [R-08.2017]

 
 37 CFR 41.2 Definitions. 

 Unless otherwise clear from the context, the following definitions
 apply to proceedings under this part:
 

 
 Affidavit means affidavit, declaration under
 §
 1.68 of this title, or statutory declaration under 28
 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit
 in a contested case.
 

 Board means the Patent Trial and Appeal Board and
 includes:
 
 (1) For a final Board action:
 
 (i) In an appeal or contested case, a panel of the
 Board.
 

 (ii) In a proceeding under §
 41.3 , the Chief Administrative Patent Judge
 or another official acting under an express delegation from the
 Chief Administrative Patent Judge.
 

 
 

 (2) For non-final actions, a Board member or employee acting
 with the authority of the Board.
 

 
 

 Board member means the Under Secretary of Commerce for
 Intellectual Property and Director of the United States Patent and Trademark
 Office, the Deputy Under Secretary of Commerce for Intellectual Property and
 Deputy Director of the United States Patent and Trademark Office, the
 Commissioner for Patents, the Commissioner for Trademarks, and the
 administrative patent judges.
 

 Contested case means a Board proceeding other than an appeal
 under 35
 U.S.C. 134 or a petition under § 41.3 .
 An appeal in an inter partes reexamination is not a contested case.
 

 Final means, with regard to a Board action, final for the
 purposes of judicial review. A decision is final only if:
 
 (1) In a panel proceeding . The decision is rendered by a
 panel, disposes of all issues with regard to the party seeking judicial
 review, and does not indicate that further action is required; and
 

 (2) In other proceedings . The decision disposes of all
 issues or the decision states it is final.
 

 
 

 Hearing means consideration of the issues of record.
 Rehearing means reconsideration.
 

 Office means United States Patent and Trademark Office.
 

 Panel means at least three Board members acting in a panel
 proceeding.
 

 Panel proceeding means a proceeding in which final action is
 reserved by statute to at least three Board members, but includes a non-final
 portion of such a proceeding whether administered by a panel or not.
 

 Party , in this part, means any entity participating in a
 Board proceeding, other than officers and employees of the Office,
 including:
 
 (1) An appellant;

 (2) A participant in a contested case;

 (3) A petitioner; and

 (4) Counsel for any of the above, where context permits.

 
 

 
 

 
 37 CFR 41.100 Definitions. 

 In addition to the definitions in § 41.2 , the
 following definitions apply to proceedings under this subpart:
 

 Business day means a day other than a Saturday, Sunday, or Federal
 holiday within the District of Columbia.
 

 Involved means the Board has declared the patent application,
 patent, or claim so described to be a subject of the contested case.
 

 

 
 37 CFR 41.200 Procedure; pendency. 

 
 (a) A patent interference is a contested case subject to the
 procedures set forth in subpart D of this part.
 

 (b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers
 to the statute in effect on March 15, 2013, unless otherwise expressly
 indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers to the
 statute applicable to the involved application or patent.
 

 (c) Patent interferences shall be administered such that pendency
 before the Board is normally no more than two years.
 

 

 

 
 

 
 37 CFR 41.201 Definitions. 

 In addition to the definitions in §§ 41.2 and
 41.100 , the following definitions apply to proceedings under
 this subpart:
 

 Accord benefit means Board recognition that a patent application
 provides a proper constructive reduction to practice under 35 U.S.C.
 102(g)(1) .
 

 Constructive reduction to practice means a described and enabled
 anticipation under 35 U.S.C. 102(g)(1), in a patent
 application of the subject matter of a count. Earliest
 constructive reduction to practice means the first constructive
 reduction to practice that has been continuously disclosed through a chain of patent
 applications including in the involved application or patent. For the chain to be
 continuous, each subsequent application must comply with the requirements of
 35 U.S.C. 119-121 , 365 , or
 386 . 
 

 Count means the Board’s description of the interfering subject
 matter that sets the scope of admissible proofs on priority. Where there is more than
 one count, each count must describe a patentably distinct invention.
 

 Involved claim means, for the purposes of 35 U.S.C.
 135(a) , a claim that has been designated as corresponding to
 the count.
 

 Senior party means the party entitled to the presumption under
 §
 41.207(a)(1) that it is the prior inventor. Any other party is
 a junior party .
 

 Threshold issue means an issue that, if resolved in favor of the
 movant, would deprive the opponent of standing in the interference. Threshold issues
 may include:
 

 
 
 
 (1) No interference-in-fact, and 

 
 

 (2) In the case of an involved application claim first made after
 the publication of the movant’s application or issuance of the movant’s
 patent:
 
 (i) Repose under 35 U.S.C. 135(b) in
 view of the movant’s patent or published application, or 
 

 (ii) Unpatentability for lack of written description under
 35
 U. S.C. 112 of an involved application claim where
 the applicant suggested, or could have suggested, an interference under
 §
 41.202(a) .
 

 
 

 
 

 

 
 2301.03 Interfering Subject Matter [R-08.2017]

 
 37 CFR 41.203 Declaration. 

 
 (a) Interfering subject matter . An interference exists if the
 subject matter of a claim of one party would, if prior art, have anticipated or
 rendered obvious the subject matter of a claim of the opposing party and vice
 versa.
 

 
 *****

 

 A claim of one inventor can be said to interfere with the claim of
 another inventor if they each have a patentable claim to the same invention. The Office
 practice and the case law define “same invention” to mean patentably indistinct
 inventions. See Case v. CPC Int’l, Inc., 730 F.2d 745, 750, 221 USPQ
 196, 200 (Fed. Cir. 1984); Aelony v. Arni, 547 F.2d 566, 570, 192
 USPQ 486, 489-90 (CCPA 1977); Nitz v. Ehrenreich, 537 F.2d 539, 543,
 190 USPQ 413, 416 (CCPA 1976); and Ex parte Card, 1904 C.D. 383,
 384-85 (Comm’r Pats. 1904). If the claimed invention of one party is patentably distinct
 from the claimed invention of the other party, then there is no interference-in-fact.
 See Nitz v. Ehrenreich, 537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA
 1976). 37 CFR
 41.203(a) states the test in terms of the familiar concepts of
 obviousness and anticipation. See Tas v. Beachy, 626 Fed. App'x. 999,
 1001 (Fed. Cir. 2015)(nonprecedential) (an interference exists if the subject matter of
 a claim of one party would, if prior art, have anticipated or rendered obvious the
 subject matter of a claim of the opposing party and vice versa); Eli Lilly
 & Co. v. Bd. of Regents of the Univ. of Wa., 334 F.3d 1264, 1269-70, 67
 USPQ2d 1161, 1164-65 (Fed. Cir. 2003) (affirming the Office’s interpretive rule).
 

 Identical language in claims does not guarantee that they are drawn to
 the same invention. Every claim must be construed in light of the application in which
 it appears for purpose of evaluating whether there is interfering subject matter, unlike
 when evaluating whether copied claims comply with the written description requirement
 where the originating disclosure is consulted. See Agilent Techs., Inc. v.
 Affymetrix, Inc., 567 F.3d 1366, 1375, 91 USPQ2d 1161, 1167 (Fed. Cir.
 2009) (when a party challenges written description support for a copied claim in an
 interference, the originating disclosure provides the meaning of the pertinent claim
 language). Claims reciting means-plus-function limitations, in particular, might have
 different scopes depending on the corresponding structure described in the written
 description.
 

 When an interference is declared, there is a description of the
 interfering subject matter, which is called a “count.” Claim correspondence identifies
 claims that would no longer be allowable or patentable to a party if it loses the
 priority determination for the count. To determine whether a claim corresponds to a
 count, the subject matter of the count is assumed to be prior art to the party. If the
 count would have anticipated or supported an obviousness determination against the
 claim, then the claim corresponds to the count. See 37 CFR 41.207(b)(2) . Every count
 must have at least one corresponding claim for each party, but it is possible for a
 claim to correspond to more than one count.
 

 
 Example 1 

 A patent has a claim to a compound in which R is an alkyl group. An
 application has a claim to the same compound except that R is n-pentyl, which is an
 alkyl. The application claim, if prior art to the patent, would have anticipated the
 patent claim. The patent claim would not have anticipated the application claim. If,
 however, in the art n-pentyl would have been an obvious choice for alkyl, then the
 claims define interfering subject matter.
 

 

 
 Example 2 

 An application has a claim to a boiler with a novel safety valve. A
 patent has a claim to just the safety valve. The prior art shows that the need for
 boilers to have safety valves is well established. The application claim, when
 treated as prior art, would have anticipated the patent claim. The patent claim, when
 treated as prior art and in light of the boiler prior art, can be shown to render the
 application claim obvious. The claims interfere.
 

 

 
 Example 3 

 An application has a claim to a reaction using platinum as a
 catalyst. A patent has a claim to the same reaction except the catalyst may be
 selected from the Markush group consisting of platinum, niobium, and lead. Each claim
 would have anticipated the other claim when the Markush alternative for the catalyst
 is platinum. The claims interfere.
 

 

 
 Example 4 

 Same facts as Example 3, except the applicant has a Markush group
 for the catalyst consisting of platinum, osmium, and zinc. Each claim would have
 anticipated the other claim when the Markush alternative for the catalyst in each
 claim is platinum. The claims interfere.
 

 

 
 Example 5 

 An application has a claim to a protein with a specific amino acid
 sequence shown in SEQ ID NO:1. A patent has a claim to the genus of polynucleotides
 defined as encoding the same amino acid sequence as the applicant’s SEQ ID NO:1. The
 patent claim would have anticipated the application claim since it expressly
 describes an amino acid sequence identical to the protein of the application. The
 application claim would have rendered the patent claim obvious in light of a
 well-established relationship between nucleic acids for encoding amino acids in
 protein sequences. The claims interfere.
 

 

 
 Example 6 

 A patent has a claim to a genus of polynucleotides that encode a
 protein with a specific amino acid sequence. An application has a claim to a
 polynucleotide that encodes a protein with the same amino acid sequence. The
 application claim is a species within the genus and thus would have anticipated the
 patent claim. The patent claim would not have anticipated or rendered the application
 claim obvious without some explanation of why a person having ordinary skill in the
 art would have selected the applicant’s species from the patentee’s genus. Generally
 the explanation should include citation to prior art supporting the obviousness of
 the species. Without the explanation, the claims do not interfere.
 

 

 
 Example 7 

 A patent and an application each claim the same combination
 including “means for fastening.” The application discloses glue for fastening, while
 the patent discloses a rivet for fastening. Despite otherwise identical claim
 language, the claims do not interfere unless it can be shown that in this art glue
 and rivets were considered structurally equivalent or would have rendered each other
 obvious.
 

 

 
 Example 8 

 A patent claims a formulation with the surfactant sodium lauryl
 sulfate. An application claims the same formulation except no specific surfactant is
 described. The application discloses that it is well known in the art to use sodium
 lauryl sulfate as the surfactant in these types of formulations. The claims
 interfere.
 

 

 
 Example 9 

 An applicant has a claim to a genus and a species within the genus.
 The interference is declared with two counts, one directed to the genus and one
 directed to the species. The species claim would correspond to the species count
 because the count would have anticipated the claimed subject matter. The genus count
 would not ordinarily have anticipated the species claim, however, so the species
 claim would only correspond to the genus count if there was a showing that the genus
 count would have rendered the claimed species obvious. The genus claim, however,
 would have been anticipated by both the genus count and the species count and thus
 would correspond to both counts.
 

 

 

 
 2301.04 Applicability of 35 U.S.C. 102(g) to Applications filed on or
 after March 16, 2013 [R-01.2024]
 

 Applications subject to AIA 35 U.S.C.
 102 (see MPEP § 2159 ) may also be subject to an
 interference. 
 

 Even if AIA 35 U.S.C. 102 and 103 apply
 to a patent application, pre-AIA 35 U.S.C. 102(g) also
 applies to every claim in the application if it: (1) contains or contained at any time a
 claimed invention having an effective filing date as defined in 35 U.S.C.
 100(i) that occurs before March 16, 2013; or (2) is ever
 designated as a continuation, divisional, or continuation-in-part of an application that
 contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also
 applies to any patent resulting from an application to which pre-AIA 35 U.S.C.
 102(g) applied. See MPEP §§ 2138 and 2159.03 .
 

 Thus, if an application contains, or contained at any
 time, a claim having an effective filing date that occurs before March 16, 2013, and
 also contains, or contained at any time, a claim having an effective filing date that is
 on or after March 16, 2013, each claim may still be subject to an interference in
 accordance with pre-AIA 35 U.S.C. 102(g) while the application is also subject to
 AIA 35 U.S.C.
 102 and 103 . Pub. L. 112-29, § 3(n)(2), 125
 Stat. at 293. 
 

 Where an application not subject to pre-AIA 35 U.S.C.
 102(g) interferes with a patent subject to pre-AIA 35 U.S.C.
 102(g) , the examiner should consult with an Interference Practice
 Specialist.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 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