MPEP § 2303 — MPEP § 2303
Current through: 2022-07-01

2303-Completion of Examination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2300 

 Section 2303 
 

 
 
 
 
 
 2303 Completion of Examination [R-08.2017]

 
 37 CFR 41.102 Completion of examination. 

 Before a contested case is initiated, except as the Board may
 otherwise authorize, for each involved application and patent:
 

 
 (a) Examination or reexamination must be completed, and

 (b) There must be at least one claim that:
 
 (1) Is patentable but for a judgment in the contested case,
 and
 

 (2) Would be involved in the contested case.

 
 

 
 

 An interference should rarely be suggested until examination is completed
 on all other issues. Each pending claim must be allowed, finally rejected, or canceled. Any
 appeal from a final rejection must be completed, including any judicial review. Any
 petition must be decided.
 

 
 Example 1 

 An applicant has one allowed claim directed to invention A, which is
 the same invention of another inventor within the meaning of pre-AIA 35 U.S.C.
 102(g)(1) and pre-AIA 35 U.S.C. 291 , and has
 rejected claims directed to different invention B. If the rejection is contested, the
 application is not yet ready for an interference. Restriction of the application to
 invention A, followed by cancellation of the claims directed to invention B would remove
 this impediment to declaring an interference.
 

 

 
 Example 2 

 A patent has a claim to a species. An applicant has claims to the
 species and to a genus that includes the species. The examiner has allowed the species
 claim, but rejected the genus claim. The applicant suggests an interference with the
 patent. The interference will generally not be declared until the applicant resolves the
 status of the genus claim by, for example, appealing the rejection or canceling the
 rejected claim. An applicant may expedite the process of having the interference
 declared by canceling the genus claim from the application.
 

 

 Two grounds of unpatentability receive particularly close scrutiny before
 an interference is declared. Enforcement of the written description requirement under
 35 U.S.C.
 112(a) , and the late claiming bars under pre-AIA 35 U.S.C.
 135(b) are important to preserve the efficiency and integrity of
 interferences. See 37 CFR
 41.201 , “Threshold issue.” See, e.g., Berman v.
 Housey, 291 F.3d 1345, 1354, 63 USPQ2d 1023, 1029 (Fed. Cir. 2002).
 

 RESTRICTION IN APPLICATIONS WITH INTERFERING CLAIMS Ordinarily restrictions are limited to situations where (A) the
 inventions are independent or distinct as claimed, and (B) there would be a serious
 burden on the examiner if restriction is not required (see MPEP § 803 ). Potential
 interferences present an additional situation in which a restriction requirement may be
 appropriate. Specifically, restriction of interfering claims from non-interfering
 claims, or from unpatentable claims whose further prosecution would unduly delay
 initiation of an interference, can be an appropriate use of restrictions under
 35 U.S.C.
 121 . An Interference Practice Specialist (IPS) should be consulted
 in making and resolving restrictions under this heading. An applicant may, of course,
 also choose to cancel claims and refile them in a continuation application without
 waiting for the restriction requirement.
 

 A. Non-Interfering Claims Patent term adjustments may be available for patents whose issuance
 has been delayed for an interference. See pre-AIA 35 U.S.C.
 154(b)(1)(C)(i) . A claim that does not interfere, by definition,
 is directed to a patentably distinct invention compared to a claim that does
 interfere. Leaving a non-interfering claim in an application going into an
 interference creates an unwarranted delay in the issuance of claims to the
 non-interfering subject matter. As far as the public and the Office are concerned,
 there is no justification for not issuing the non-interfering claims promptly. An
 exception exists if the claims are already term limited, as would be the case for an
 application subject to a terminal disclaimer or a reissue application (see
 pre-AIA
 35 U.S.C. 154(b)(1)(C) (referring to issuance of the original
 patent)).
 

 If an application contains both interfering and non-interfering
 claims, a restriction requirement should be made between the two. If the applicant
 traverses the restriction requirement, depending on the reasons for the traversal,
 the restriction may be maintained or the traversal may be treated as a concession
 that the non-interfering claims should be designated as corresponding to the
 count.
 

 B. Unpatentable Claims Ordinarily restriction of claims simply because they are not
 patentable would not be appropriate. If, however, (A) prosecution of the unpatentable
 claims to completion would unduly delay initiation of the interference and (B) the
 delay would create prejudice to another stakeholder, such as another applicant or the
 public, a restriction requirement may be appropriate. Approval of an IPS is required
 before this restriction requirement may be made.
 

 

 
 Example 

 An applicant has both broad and narrow claims. The narrow claims
 are plainly supported, but the support for the broad claims is contested. A patent
 with claims to the narrow invention issues to another inventor with a much later
 earliest effective filing date. Delay of the interference until the patentability
 of the broader claims is resolved may unduly prejudice the patentee and the public
 by leaving a cloud of doubt hanging over the patent claims.
 

 

 
 If the unpatentable application claims are eventually prosecuted
 to allowance, the examiner should consult with the IPS regarding the status of the
 interference in case the claims would be affected by the outcome of the
 interference.
 

 
 C. Reissue Applications As explained above, reissue applications are not subject to patent
 term adjustments. Applicants sometimes, however, file reissue applications to amend
 patent claims in response to events occurring in the interference. To maintain parity
 with other applicants, the Board does not permit reissue applicants to add claims
 that would not correspond to a count. See Winter v. Fujita, 
 53 USPQ2d 1234, 1249 (Bd. Pat. App. & Inter. 1999). Since the burden lies with
 the reissue applicant to comply with Winter, the examiner need not
 require restriction of the non-interfering claims. Practice under
 Winter, however, may explain why some reissue applicants file
 more than one reissue application for the same patent.
 

 Form paragraph 23.01 may be used to acknowledge a
 request for interference that is premature since examination of the application has
 not been completed.
 

 ¶ 23.01 Request for Interference Premature; Examination Not Completed

 The request for interference filed [1] is acknowledged. However, examination of this application has not been completed as required by 37 CFR 41.102(a) . Consideration of a potential interference is premature. See MPEP § 2303 .
 

 

 
 2303.01 Issuance and Suspension [R-08.2017]

 Since applicants may be eligible for patent term adjustments to offset
 delays in examination, pre-AIA 35 U.S.C. 154(b)(1) , it is important that suspensions
 should rarely, if ever, be used and that applications with allowed claims be issued to
 the greatest extent possible.
 

 
 Example 1 

 A claim of patent A and a claim of application B, which is subject
 to pre-AIA 35
 U.S.C. 102(g) , interfere. Examination of application B is
 completed. An interference may not be declared between two patents. See
 pre-AIA 35
 U.S.C. 135(a) . Consequently, the interfering claim in
 application B should not be passed to issue, even if it has an earlier effective
 filing date than patent A. Instead, an interference should be suggested.
 

 

 
 Example 2 

 Two applications, C and D, which are both subject to
 pre-AIA 35
 U.S.C. 102(g) , with interfering claims are pending. Examination
 of application C is completed and all claims are allowable. Examination of
 application D is not completed. Application C should be issued promptly. If
 application C has an earlier effective U.S. filing date when issued as patent C, or
 when published as application publication C, it may be available as prior art under
 pre-AIA 35
 U.S.C. 102(e) , or where applicable pre-AIA 35 U.S.C.
 102(g) , against application D. However, even if application C’s
 effective filing date is later than application D’s effective filing date,
 application C should issue, assuming application D has not published as an
 application publication. Until examination of application D is completed, it is not
 known whether application D should be in interference with application C, so
 suspension of application C will rarely, if ever, be justified.
 

 

 
 Example 3 

 Two applications, E and F, which are both subject to
 pre-AIA 35
 U.S.C. 102(g) , with interfering claims are pending. Both are
 ready to issue. (Such ties should be extremely rare; suspensions must not be used to
 create such ties.) If the applications have their earliest effective filing dates
 within six months of each other, then an interference may be suggested. If, however,
 application E’s earliest effective filing date is more than six months before
 application F’s earliest effective filing date, then application E should issue. If
 application E (or the resulting patent E) is available as prior art (under
 pre-AIA 35
 U.S.C. 102(a) or 102(e) , or where applicable
 pre-AIA 35
 U.S.C. 102(g) ) against application F, then a rejection should
 be made. If not, a requirement under 37 CFR 41.202(d) to show priority
 should be made. See MPEP § 2305 .
 

 

 

 
 2303.02 Other Outstanding Issues with Patents [R-08.2017]

 Patents that are undergoing reexamination or reissue are subject to the
 requirement of 37 CFR
 41.102 that examination be completed. Patents may, however, be the
 subject of other proceedings before the Office. For instance, a patent may be the
 subject of a petition to accept a late maintenance fee in accordance with
 35 U.S.C.
 41(c) , or a request for disclaimer or correction. See
 pre-AIA 35 U.S.C.
 253 , 35 U.S.C. 254 , 35 U.S.C. 255 , and
 pre-AIA 35 U.S.C.
 256 . Such issues ordinarily must be resolved before an
 interference is suggested because they may affect whether or how an interference may be
 declared. Similarly, any administrative trial ordinarily must be resolved before an
 interference is suggested.
 

 
 Example 1 

 A patent maintenance fee has not been timely paid. By operation of
 law, 35 U.S.C.
 41(b) , the patent is considered to be expired. An interference
 cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a) .
 Consequently, if a petition to accept delayed payment is not granted in accordance
 with 37 CFR
 1.378 , then no interference can be declared.
 

 

 
 Example 2 

 A statutory disclaimer under pre-AIA 35 U.S.C. 253 , is filed
 for the sole patent claim directed to the same invention as the claims of the
 applicant. Since the patentee and applicant must both have claims to the same
 invention, in accordance with pre-AIA 35 U.S.C. 102(g)(1) , no
 interference can be declared.
 

 

 
 Example 3 

 Similar to Example 2, a request for correction under
 35 U.S.C.
 254 or 255 , is filed that results in a
 change to the sole patent claim such that it is no longer directed to the same
 invention as any claim of the applicant. Again, since the patentee and applicant must
 both have claims to the same invention, pre-AIA 35 U.S.C. 102(g)(1) , no
 interference can be declared.
 

 

 
 Example 4 

 Inventorship is corrected such that the inventors for the patent and
 the application are the same. Because pre-AIA 35 U.S.C. 102(g)(1) 
 requires the interference to be with “another inventor,” the correction eliminates
 the basis for an interference. Other rejections, such as a double-patenting rejection
 may be appropriate.
 

 

 

 [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 20:50:45