MPEP § 2304 — MPEP § 2304
Current through: 2022-07-01

2304-Suggesting an Interference 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2300 

 Section 2304 
 

 
 
 
 
 
 2304 Suggesting an Interference [R-08.2017]

 The suggestion for an interference may come from an applicant or from an
 examiner. Who suggests the interference determines what must be done and shown prior to
 declaration of an interference. In either circumstance, the examiner must consult with an
 Interference Practice Specialist (IPS), who may then refer the suggested interference to
 the Board.
 

 
 2304.01 Preparation of an Application for Interference [R-01.2024]

 
 2304.01(a) Interference Search [R-01.2024]

 When an application is in condition for allowance, an interference
 search must be made by using the most efficient and effective manner based on the
 claimed subject matter in the broadest claim (e.g., by performing a text search, or a
 classified search, or a combination of text search and classified search, of the
 “US-PGPUB” database). Examiners are reminded that some applications, such as
 continuation-in-part applications, may contain claims entitled to different effective
 filing dates (see MPEP
 §§ 2133.01 and 2152.01 ), and that each effective filing date should be
 considered when performing the interference search. If the application contains a
 claim directed to a nucleotide and/or amino acids sequence, the examiner must submit
 a request to STIC to perform an interference search of the sequence. If the search
 results identify any potential interfering subject matter, the examiner will review
 the application(s) with the potential interfering subject matter to determine whether
 interfering subject matter exists. If interfering subject matter does exist, the
 examiner will follow the guidance set forth in this chapter. If there is no
 interfering subject matter then the examiner should prepare the application for
 issuance. The interference search must be made of record in the application file. See
 MPEP §
 719.05 , subsection III. 
 

 The search for interfering applications must not be limited to only
 the classes or subgroups in which the application is classified, but must be extended
 to all classes in which it has been necessary to search in the examination of the
 application. See MPEP
 § 1302.08 . An interference search of those applications
 held under Secrecy Order, which are reviewed by Licensing and Review, may be
 required. Inspection of pertinent prints, drawings, brief cards, and applications
 will be done on request by an examiner associated with Licensing and Review.
 

 

 
 2304.01(b) Obtaining Control Over Involved Files [R-08.2017]

 Ordinarily applications that are believed to interfere should be
 assigned to the same examiner.
 

 I. IN DIFFERENT TECHNOLOGY CENTERS If the interference would be between two applications, and the
 applications are assigned to different Technology Centers (TCs), then one
 application must be reassigned. Ordinarily the applications should both be
 assigned to the TC where the commonly claimed invention would be classified. After
 termination of the interference, further transfer may be appropriate depending on
 the outcome of the interference.
 

 II. PAPERS NOT CONVERTED TO IMAGE FILE WRAPPER FILES Although the official records for most applications
 have been converted into Image File Wrapper (IFW) files, some records exist only
 in paper form, particularly older benefit application files. Even IFW files may
 have artifact records that have not been converted. Complete patent and benefit
 files are necessary for determining whether benefit should be accorded for
 purposes of pre-AIA 35 U.S.C. 102(g)(1) . A
 suggested interference must not be referred to the Board if all files, including
 benefit files, are not available to the examiner in either IFW format or
 paper.
 

 If a paper file wrapper has been lost, it must be
 reconstructed before the interference is referred to the Board.
 

 III. PATENT COOPERATION TREATY APPLICATION FILES Generally, a separate application file for a Patent
 Cooperation Treaty (PCT) application is not required for according benefit because
 the PCT application is included in a national stage application file that is
 itself either the application involved in the interference or a benefit file.
 Occasionally, however, the PCT application file itself is required for benefit.
 For instance, if benefit is claimed to the PCT application, but not to a national
 stage application in which it is included, then the PCT application file must be
 obtained.
 

 

 
 2304.01(c) Translation of Foreign Benefit Application [R-01.2024]

 A certified translation of every foreign benefit application or
 Patent Cooperation Treaty (PCT) application not filed in English is required. See
 35 U.S.C.
 119(b)(3) and 372(b)(3) and 37 CFR
 1.55(g)(3)(i) and 41.154(b) . If no certified
 translation is in the official record for the application, the examiner must require
 the applicant to file a certified translation. The applicant should provide the
 required translation if applicant wants the application to be accorded benefit of the
 non-English language application. Any showing of priority that relies on a
 non-English language application is prima facie insufficient if no
 certified translation of the application is on file. See 37 CFR
 41.154(b) and 41.202(e) .
 

 Form paragraph 23.19 may be used to notify
 applicant that a certified English translation of the priority document is
 required.
 

 ¶ 23.19 Foreign Priority Not Substantiated

 Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a) -(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted
 in reply to this action, 37 CFR 41.154(b) and 41.202(e) .
 

 Failure to provide a certified translation may result in no benefit being accorded for the non-English application.

 

 

 
 2304.01(d) Sorting Claims [R-08.2017]

 An applicant may be entitled to a day-for-day patent term adjustment
 for any time spent in an interference. If an applicant has several related
 applications with interfering claims intermixed with claims that do not interfere,
 the examiner should consider whether the interfering claims should be consolidated in
 a single application or whether an application should be restricted to claims that do
 not interfere. This way examination can proceed for any claims that do not interfere
 without the delay that will result from the interference.
 

 Interfering claims of applications with either the same assignee or
 the same inventive entity are “patentably indistinct claims” within the meaning of
 37 CFR
 1.78(f) . The examiner may require consolidation of such claims
 into a single application that provides support for the patentably indistinct claims.
 See 35 U.S.C.
 132(a) .
 

 Similarly, the examiner should require an applicant to restrict an
 application to the interfering claims in accordance with pre-AIA 35 U.S.C.
 121 , in which case the applicant may file a divisional
 application for the claims that do not interfere.
 

 Sorting of claims may not be appropriate in all cases. For instance,
 a claim should not be consolidated into an application that does not provide support
 under 35
 U.S.C. 112(a) for the claim.
 

 

 

 
 2304.02 Applicant Suggestion [R-10.2019]

 
 37 CFR 41.202 Suggesting an interference. 

 
 (a) Applicant . An applicant, including a reissue applicant, may
 suggest an interference with another application or a patent. The suggestion
 must:
 
 (1) Provide sufficient information to identify the
 application or patent with which the applicant seeks an interference,
 

 (2) Identify all claims the applicant believes interfere,
 propose one or more counts, and show how the claims correspond to one or
 more counts,
 

 (3) For each count, provide a claim chart comparing at least
 one claim of each party corresponding to the count and show why the
 claims interfere within the meaning of §
 41.203(a) ,
 

 (4) Explain in detail why the applicant will prevail on
 priority,
 

 (5) If a claim has been added or amended to provoke an
 interference, provide a claim chart showing the written description for
 each claim in the applicant’s specification, and
 

 (6) For each constructive reduction to practice for which
 the applicant wishes to be accorded benefit, provide a chart showing
 where the disclosure provides a constructive reduction to practice within
 the scope of the interfering subject matter.
 

 
 

 
 *****

 
 (d) Requirement to show priority under 35 U.S.C. 102(g) .
 
 (1) When an applicant has an earliest
 constructive reduction to practice that is later than the apparent
 earliest constructive reduction to practice for a patent or published
 application claiming interfering subject matter, the applicant must show
 why it would prevail on priority.
 

 (2) If an applicant fails to show priority under paragraph
 (d)(1) of this section, an administrative patent judge may nevertheless
 declare an interference to place the applicant under an order to show
 cause why judgment should not be entered against the applicant on
 priority. New evidence in support of priority will not be admitted except
 on a showing of good cause. The Board may authorize the filing of motions
 to redefine the interfering subject matter or to change the benefit
 accorded to the parties.
 

 
 

 
 *****

 

 When an applicant suggests an interference under 37 CFR 41.202(a) ,
 an examiner must review the suggestion for formal sufficiency. As explained in
 MPEP §
 2304.02(c) , the examiner is generally not responsible for
 determining the substantive adequacy of any priority showing. The examiner may, however,
 offer pertinent observations on any showing when the suggested interference is referred
 to the Board. The observations may be included as an attachment to the Form PTO-850.
 

 Form paragraphs 23.06 to 23.06.06 may be used
 to acknowledge applicant’s suggestion for interference under 37 CFR 41.202(a) 
 that failed to comply with one or more of paragraphs (a)(1) to (a)(6) of
 37 CFR
 41.202 .
 

 ¶ 23.06 Applicant Suggesting an Interference 

 Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1] .
 

 Examiner Note:
 
 1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202 . 
 

 2. In bracket 1, insert the date of applicant’s communication.

 3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04 .
 
 
 

 ¶ 23.06.01 Failure to Identify the Other Application or Patent

 Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an
 interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a) .
 

 

 ¶ 23.06.02 Failure to Identify the Counts and Corresponding Claims

 Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or
 (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b) .
 

 

 ¶ 23.06.03 Failure to Provide Claim Chart Comparing At Least One Claim

 Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c) .
 

 

 ¶ 23.06.04 Failure to Explain in Detail Why Applicant Will Prevail on Priority

 Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c) .
 

 

 ¶ 23.06.05 Claim Added/Amended; Failure to Provide Claim Chart Showing Written Description

 Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the
 applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d) .
 

 

 ¶ 23.06.06 Time Period for Reply

 Applicant is given TWO (2) MONTHS from the mailing date of
 this communication to correct the deficiency(ies). EXTENSIONS OF THIS TIME PERIOD MAY BE
 GRANTED UNDER 37 CFR
 1.136(a) but in no case can any extension carry the date for reply to
 this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
 

 

 

 
 2304.02(a) Identifying the Other Application or Patent [R-08.2012]

 
 37 CFR 41.202 Suggesting an interference. 

 
 (a) Applicant . An applicant, including a reissue applicant,
 may suggest an interference with another application or a patent. The
 suggestion must:
 
 (1) Provide sufficient information to identify the
 application or patent with which the applicant seeks an
 interference,
 

 
 

 
 *****

 

 Usually an applicant seeking an interference will know the
 application serial number or the patent number of the application or patent,
 respectively, with which it seeks an interference. If so, providing that number will
 fully meet the identification requirement of 37 CFR 41.202(a)(1) .
 

 Occasionally, an applicant will believe another interfering
 application exists based only on indirect evidence, for instance through a journal
 article, a “patent pending” notice, or a foreign published application. In such
 cases, information about likely named inventors and likely assignees may lead to the
 right application. The applicant should be motivated to help the examiner identify
 the application since inadequate information may prevent the declaration of the
 suggested interference.
 

 

 
 2304.02(b) Counts and Corresponding Claims [R-08.2017]

 
 37 CFR 41.202 Suggesting an interference. 

 
 (a) Applicant . An applicant, including a reissue applicant,
 may suggest an interference with another application or a patent. The
 suggestion must:
 
 *****

 (2) Identify all claims the applicant believes interfere,
 propose one or more counts, and show how the claims correspond to one
 or more counts,
 

 (3) For each count, provide a claim chart comparing at
 least one claim of each party corresponding to the count and show why
 the claims interfere within the meaning of §
 41.203(a) ,
 

 
 

 
 *****

 

 The applicant must identify at least one patentable claim from every
 application or patent that interferes for each count. A count is just a description
 of the interfering subject matter, which the Board uses to determine what evidence
 may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1) .
 

 The examiner must confirm that the applicant has (A) identified at
 least one patentable count, (B) identified at least one patentable claim from each
 party for each count, and (C) has provided a claim chart comparing at least one set
 of claims for each count. The examiner need not agree with the applicant’s
 suggestion. The examiner’s role is to confirm that there are otherwise patentable
 interfering claims and that the formalities of 37 CFR 41.202 are met.
 

 

 
 2304.02(c) Explaining Priority [R-08.2017]

 
 37 CFR 41.202 Suggesting an interference. 

 
 (a) Applicant. An applicant, including a reissue applicant,
 may suggest an interference with another application or a patent. The
 suggestion must:
 
 (4) Explain in detail why the applicant will prevail on
 priority,
 

 *****

 (6) For each constructive reduction to practice for which
 the applicant wishes to be accorded benefit, provide a chart showing
 where the disclosure provides a constructive reduction to practice
 within the scope of the interfering subject matter.
 

 
 

 
 *****

 
 (d) Requirement to show priority under 35 U.S.C. 102(g). 
 (1) When an applicant has an earliest
 constructive reduction to practice that is later than the apparent
 earliest constructive reduction to practice for a patent or published
 application claiming interfering subject matter, the applicant must
 show why it would prevail on priority.
 

 (2) If an applicant fails to show priority under
 paragraph (d)(1) of this section, an administrative patent judge may
 nevertheless declare an interference to place the applicant under an
 order to show cause why judgment should not be entered against the
 applicant on priority. New evidence in support of priority will not be
 admitted except on a showing of good cause. The Board may authorize
 the filing of motions to redefine the interfering subject matter or to
 change the benefit accorded to the parties.
 

 
 

 
 *****

 

 A description in an application that would have anticipated the
 subject matter of a count is called a constructive reduction-to-practice of the
 count. One disclosed embodiment is enough to have anticipated the subject matter of
 the count. If the application is relying on a chain of benefit disclosures under any
 of pre-AIA 35
 U.S.C. 119 , 120 ,
 121 and 35 U.S.C. 365 , then the
 anticipating disclosure must be continuously disclosed through the entire benefit
 chain or no benefit may be accorded. See Tas v. Beachy, 626 Fed.
 App'x. 999, 1002 (Fed. Cir. 2015) (nonprecedential) (when a party to an interference
 seeks the benefit of an earlier-filed U.S. patent application, the earlier
 application must contain a written description of the subject matter of the
 interference Count, and must meet the enablement requirement.); Hyatt v.
 Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998). 
 

 If the application has an earlier constructive reduction-to-practice
 than the apparent earliest constructive reduction-to-practice of the other
 application or patent, then the applicant may simply explain its entitlement to its
 earlier constructive reduction-to-practice. Otherwise, the applicant must (A)
 antedate the earliest constructive reduction-to-practice of the other application or
 patent, (B) demonstrate why the other application or patent is not entitled to its
 apparent earliest constructive reduction-to-practice, or (C) provide some other
 reason why the applicant should be considered the prior inventor.
 

 The showing of priority may look similar to showings under
 37 CFR
 1.130 - 1.132 , although there are
 differences particularly in the scope of what must be shown. In any case, with the
 exception discussed below, the examiner is not responsible for examining the
 substantive sufficiency of the showing.
 

 I. REJECTION UNDER PRE-AIA 35 U.S.C. 102(a) or 102(e) If an application claim is subject to a rejection under
 pre-AIA 35
 U.S.C. 102(a) or 102(e) and the applicant files
 a suggestion under 37 CFR 41.202(a) rather than a
 declaration under 37 CFR 1.130 - 1.132 , then
 the examiner must review the suggestion to verify that the applicant’s showing,
 taken at face value, is sufficient to overcome the rejection. If the examiner
 determines that the showing is not sufficient, then the examination is not
 completed, and in accordance with 37 CFR 41.102 , the rejection
 should be maintained and the suggestion should not be referred to the Board for an
 interference.
 

 II. COMPLIANCE WITH PRE-AIA 35 U.S.C. 135(b) 
 35 U.S.C. 135 (pre-AIA) 
 Interferences. 

 *****

 
 (b)(1) A claim which is the same as, or for the
 same or substantially the same subject matter as, a claim of an issued
 patent may not be made in any application unless such a claim is made prior
 to one year from the date on which the patent was granted. 
 

 
 
 (2) A claim which is the same as, or for the same
 or substantially the same subject matter as, a claim of an application
 published under section 122(b) may be made in an application filed after the
 application is published only if the claim is made before 1 year after the
 date on which the application is published.
 

 
 *****

 

 If an application claim interferes with a claim of a patent, and the
 claim was added to the application by an amendment filed more than one year after
 issuance of the patent, or the application was not filed until more than one year
 after issuance of the patent (but the patent is not a statutory bar), then under the
 provisions of pre-AIA 35 U.S.C. 135(b)(1) , an interference will not be
 declared unless at least one of the claims which were in the application, or in a
 parent application, prior to expiration of the one-year period was for “substantially
 the same subject matter” as at least one of the claims of the patent. When the
 requisite relationship between post- and pre-critical date claims is otherwise
 established, the condition of pre-AIA 35 U.S.C. 135(b)(1) is
 met and there is no requirement of diligent prosecution. See In re
 Commonwealth Scientific, 632 Fed. App'x. 1024, 1026 (Fed. Cir. 2015)
 (nonprecedential) (“Application of § 135(b)(1) does not turn on the
 patent applicant’s prosecution decisions or require diligence in prosecution.”). Note
 that the expression “prior to one year from the date on which the patent was granted”
 in 35 U.S.C.
 135(b) includes the one-year anniversary date of the issuance
 of a patent. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226
 (CCPA 1964). 
 

 Similarly, in a subsequently filed application relative to an
 application published under 35 U.S.C. 122(b) , if applicant
 does not appear to have a claim that is for “substantially the same subject matter”
 prior to one year after publication, in accordance with 35 U.S.C.
 135(b)(2) , an interference will not be declared. See
 Loughlin v. Ling, 684 F.3d 1289, 1294, 103 USPQ2d 1413, 1417
 (Fed. Cir. 2012)(“an application filed” in § 135(b)(2) includes the benefit
 provision of § 120 ).
 

 The obviousness test is not the standard for determining whether the
 subject matter is the same or substantially the same. Rather the determination turns
 on the presence or absence of a different material limitation in the claim. These
 tests are distinctly different. The analysis focuses on the interfering claim to
 determine whether all material limitations of the interfering claim necessarily occur
 in a prior claim. See In re Berger, 279 F.3d 975, 61 USPQ2d 1523
 (Fed. Cir. 2002). If none of the claims which were present in the application, or in
 a parent application, prior to expiration of the one-year period meets the
 “substantially the same subject matter” test, the interfering claim should be
 rejected under pre-AIA 35 U.S.C. 135(b) . See In re McGrew, 
 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997). 
 

 Form paragraph 23.14 may be used to reject a claim
 as not being made prior to one year of the patent issue date. Form paragraph
 23.14.01 may be used to reject a claim as not being
 made prior to one year from the application publication date.
 

 ¶ 23.14 Claims Not Copied Within One Year of Patent Issue Date 

 Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not
 being made prior to one year from the date on which U.S. Patent No. [2] was
 granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635
 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as
 a basis for ex parte rejections.
 

 

 ¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date 

 Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being
 made prior to one year from the date on which [2] was published under
 35 U.S.C.
 122(b) . See In re McGrew, 120 F.3d 1236, 1238, 43
 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) 
 may be used as a basis for ex parte rejections.
 

 Examiner Note:
 
 1. In bracket 2, insert the
 publication number of the published application.
 

 2. This form paragraph should only
 be used if the application being examined was filed after the publication date of the
 published application.
 
 
 

 

 
 2304.02(d) Adequate Written Description [R-08.2017]

 
 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:
 *****

 

 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:
 

 *****

 (2) 

 *****

 
 
 (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) .
 

 
 

 

 
 37 CFR 41.202 Suggesting an interference. 

 
 (a) Applicant . An applicant, including a reissue applicant,
 may suggest an interference with another application or a patent. The
 suggestion must:
 
 *****

 (5) If a claim has been added or amended to provoke an
 interference, provide a claim chart showing the written description
 for each claim in the applicant’s specification, and
 

 
 

 
 *****

 

 An applicant is not entitled to an interference simply because
 applicant wants one. The interfering claim must be allowable, particularly with
 respect to the written description supporting the interfering claim. However, the
 written description requirement does not demand, as a matter of law, actual examples
 or an actual reduction to practice. The written description requirement is met so
 long as the application or priority application sufficiently described the subject
 matter to a person skilled in the art. See Tas v. Beachy, 626 Fed.
 App'x. 999, 1005 (Fed. Cir. 2015) (nonprecedential).
 

 Historically, an applicant provoked an interference by copying a
 claim from its opponent. The problem this practice created was that differences in
 the underlying disclosures might leave the claim allowable to one party, but not to
 the other; or despite identical claim language differences in the disclosures might
 require that the claims be construed differently.
 

 Rather than copy a claim verbatim, the better practice is to add (or
 amend to create) a fully supported claim and then explain why, despite any apparent
 differences, the claims define the same invention. See 37 CFR
 41.203(a) . The problem of inadequate written description in
 claims added or amended to provoke an interference is so great that the issue has
 been singled out for heightened scrutiny early in the course of an interference. See
 37 CFR
 41.201 , under “Threshold issue.” When an applicant copies a
 claim from another application or patent, the applicant’s claims are construed in
 view of the originating specification when the other party challenges the sufficiency
 of written description support. 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).
 
 

 

 

 
 2304.03 Patentee Suggestion [R-08.2017]

 
 37 CFR 41.202 Suggesting an interference. 

 *****

 
 (b) Patentee . A patentee cannot suggest an interference under
 this section but may, to the extent permitted under § 1.291 
 of this title, alert the examiner of an application claiming interfering
 subject matter to the possibility of an interference.
 

 
 *****

 

 A patentee may not suggest an interference unless it becomes an
 applicant by filing a reissue application. A patentee may, however, to the limited
 extent permitted under 37 CFR 1.291 , alert an examiner to the existence of interfering
 claims in an application. See MPEP §§ 1134 and 1901 .
 

 

 
 2304.04 Examiner Suggestion [R-08.2012]

 
 37 CFR 41.202 Suggesting an interference. 

 *****

 
 (c) Examiner . An examiner may require an applicant to add a
 claim to provoke an interference. Failure to satisfy the requirement within a
 period (not less than one month) the examiner sets will operate as a concession
 of priority for the subject matter of the claim. If the interference would be
 with a patent, the applicant must also comply with paragraphs (a)(2) through
 (a)(6) of this section. The claim the examiner proposes to have added must,
 apart from the question of priority under 35 U.S.C. 102(g) :
 
 (1) Be patentable to the applicant, and

 (2) Be drawn to patentable subject matter claimed by another
 applicant or patentee.
 

 
 

 
 *****

 

 
 2304.04(a) Interfering Claim Already in Application [R-08.2017]

 If the applicant already has a claim to the same subject matter as a
 claim in the application or patent of another inventor, then there is no need to
 require the applicant to add a claim to have a basis for an interference.
 

 The examiner may invite the applicant to suggest an interference
 pursuant to 37 CFR
 41.202(a) . An applicant may be motivated to do so in order to
 present its views on how the interference should be declared.
 

 If the applicant does not suggest an interference, then the examiner
 should work with an Interference Practice Specialist (IPS) to suggest an interference
 to the Board. The suggestion should include an explanation of why at least one claim
 of every application or patent defines the same invention within the meaning of
 37 CFR
 41.203(a) . See MPEP § 2301.03 for a discussion of
 interfering subject matter. The examiner must also complete Form PTO-850.
 

 The examiner should be prepared to discuss why claims interfere,
 whether the subject matter of other claims would have been anticipated or rendered
 obvious if the interfering claims are treated as prior art, and whether an applicant
 or patentee is entitled to claim the benefit of an application as a constructive
 reduction-to-practice. The IPS may require the examiner to prepare a memorandum for
 the Board on any of these subjects. The IPS may require the examiner to participate
 in a conference with the Board to discuss the suggested interference.
 

 

 
 2304.04(b) Requiring a Claim [R-10.2019]

 
 35 U.S.C. 132 
 Notice of rejection;
 reexamination. 

 
 (a) Whenever, on examination, any claim for a patent is
 rejected, or any objection or requirement made, the Director shall notify
 the applicant thereof, stating the reasons for such rejection, or objection
 or requirement, together with such information and references as may be
 useful in judging of the propriety of continuing the prosecution of his
 application; and if after receiving such notice, the applicant persists in
 his claim for a patent, with or without amendment, the application shall be
 reexamined. No amendment shall introduce new matter into the disclosure of
 the invention.
 

 
 *****

 

 The examiner may, pursuant to 35 U.S.C. 132(a) , require an
 applicant to add a claim that would interfere with the claim of another application
 or patent. For example, the requirement may be made to obtain a clearer definition of
 the interfering subject matter or to establish whether the applicant will pursue
 claims to the interfering subject matter. When the requirement is based on a
 published application with allowed claims or a patent, the examiner must identify the
 published application or the patent in making the requirement.
 

 Given the cost and complexity of interferences, a requirement to add
 a claim under 37
 CFR 41.202(c) should not be lightly made. Before making the
 requirement, the examiner should consult with an Interference Practice Specialist
 (IPS). The following principles should guide the examiner in exercising discretion to
 make this requirement:
 

 
 (A) An interference should generally not be suggested if
 examination of the application is not otherwise completed.
 

 (B) The required claim must not encompass prior art or otherwise
 be barred.
 

 (C) The application must provide adequate support under
 35 U.S.C. 112(a) for the subject matter of the required
 claim.
 

 (D) A claim should not be required when the applicant expressly
 states that the commonly described subject matter is not the applicant’s
 invention.
 

 (E) A claim based on a claim from a published application should
 not be required unless the claim from the published application has been
 allowed.
 

 
 
 Example 1 

 A patent is pre-AIA 35 U.S.C. 102(b) prior
 art against any possible interfering claim. No interfering claim should be
 required.
 

 

 
 Example 2 

 The patent issued more than one year ago and the applicant did
 not previously have a claim to the same subject matter. Any added claim would most
 likely be time barred under pre-AIA 35 U.S.C. 135(b)(1) .
 No interfering claim should be required.
 

 

 
 Example 3 

 An application describes work that it attributes to another who
 is not named as an inventor in the application (“other inventor”), but also
 describes and claims an improvement to that work. The other inventor has received
 a patent for the original work. The application may in some sense have
 35
 U.S.C. 112(a) support for an interfering claim to the other
 inventor’s work. Nevertheless, the application expressly states that the commonly
 described subject matter is not the invention of the inventor named in the
 application. No interfering claim should be required.
 

 

 
 Example 4 

 An application has support for both a generic claim G and a
 species claim G1. The applicant only claims the genus G. A patent discloses and
 claims only G1. Under the facts of this example, there is no evidence that genus G
 would have rendered the species G1 obvious. If for some reason the patent is not
 available as a reference against the application, the examiner may require the
 applicant to add a claim to species G1 after consulting with an IPS.
 

 

 
 Example 5 

 Published application H and application I both support a claim to
 H1. Published application H contains a claim to H1, but application I does not.
 The claim to H1 in the published application is under rejection. Applicant I
 should not ordinarily be required to add the claim.
 

 

 Form paragraph 23.04 may be used to require
 applicant to add a claim to provoke interference. 
 

 ¶ 23.04 Requiring Applicant to Add Claim to Provoke
 Interference
 

 The following allowable claim from [1] is required to be
 added for the purpose of an interference:
 

 [2] 

 The claim must be copied exactly.

 Applicant is given TWO (2) MONTHS from the mailing date of this communication to
 add the claim. Refusal to add a required claim will operate as a concession of priority for
 the subject matter of the required claim, but will not result in abandonment of
 this application. See 37 CFR
 41.202(c) and MPEP § 2304.04(b) . EXTENSIONS OF THIS TIME
 PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for
 reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ). If
 the interference would be with a patent, applicant must also comply with 37 CFR 41.202(a)(2) to
 (a)(6) .
 

 Examiner Note:
 
 1. In bracket 1, insert the published application number if the
 claim is an allowed claim from a U.S. application publication or the patent number if
 the claim is from a U.S. patent.
 

 2. In bracket 2, insert the claim which applicant is required to
 add to provoke an interference.
 
 
 
 APPLICANT MUST ADD THE CLAIM If required to add a claim under 37 CFR
 41.202(c) , the applicant must do so. Refusal to add a
 required claim will operate as a concession of priority for the subject matter of
 the required claim. The applicant would then be barred from claiming, not only the
 subject matter of the required claim, but any subject matter that would have been
 anticipated or rendered obvious if the required claim were treated as prior art.
 See In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA
 1975).
 

 While complying with the requirement to add a claim, an applicant
 may also express disagreement with the requirement several ways, including:
 

 
 (A) Identifying a claim already in its application, or another
 of its applications, that provides a basis for the proposed
 interference;
 

 (B) Adding an alternative claim and explaining why it would
 provide a better basis for the proposed interference (such as having better
 support in the applicant’s disclosure); or
 

 (C) Explaining why the required claim is not patentable to the
 applicant.
 

 
 The examiner may withdraw the requirement if persuaded by the
 reasons the applicant offers.
 

 

 
 2304.04(c) Rejections Based on Disclaimer [R-10.2019]

 Claims may be rejected on the ground that applicant has disclaimed
 the subject matter involved. Such disclaimer may arise, for example, from the
 applicant’s failure to:
 

 
 (A) make claims suggested for interference with another application
 under 37 CFR
 41.202(c) (See MPEP § 2304.04(b) ),
 

 (B) copy a claim from a patent when suggested by the examiner
 ( MPEP §
 2304.04(b) ), or
 

 (C) respond or appeal, within the time limit fixed, to the
 examiner’s rejection of claims copied from a patent (see MPEP §
 2308 ).
 

 
 The rejection on disclaimer applies to all claims not patentably
 distinct from the disclaimed subject matter as well as to the claims directly
 involved.
 

 Rejections based on disclaimer should be made by using one of Form
 Paragraphs 7.48.aia , 7.48.fti and
 7.49 .
 

 ¶ 7.48.aia Failure To Present Claims for Interference

 Claim [1] rejected under pre-AIA 35 U.S.C.
 [2] based upon claim [3] of Patent No. [4] . 
 

 Failure to present claims and/or take necessary steps for
 interference purposes after notification that interfering subject matter is claimed
 constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter
 of law, the patentee is the first inventor in this country. See In re
 Oguie , 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act, and the application also contains or contained at any time (1) a
 claim to an invention having an effective filing date as defined in 35 U.S.C.
 100(i) that is before March 16, 2013, or (2) a specific reference
 under 35
 U.S.C. 120 , 121 , or 365(c) to any
 patent or application that contains or contained at any time such a
 claim.
 

 2. This form paragraph should be used only after
 applicant has been notified that interference proceedings must be instituted before the
 claims can be allowed and applicant has refused to copy the claims.
 

 3. In bracket 2, insert --102(g)-- or
 --102(g)/103(a)--.
 

 4. In bracket 4, insert the patent number, and --in view
 of _____-- if another reference is also relied upon. When the rejection is under
 pre-AIA 35
 U.S.C. 102(g) / 103(a) , the examiner’s basis for a
 finding of obviousness should be included. Note that interferences may include obvious
 variants, see MPEP
 Chapter 2300 .
 

 5. This form paragraph must be preceded by form
 paragraph 7.14.aia , or by form paragraph
 7.103 .
 
 
 

 ¶ 7.48.fti Failure To Present Claims for Interference

 Claim [1] rejected under pre-AIA 35 U.S.C.
 [2] based upon claim [3] of Patent No. [4] . 
 

 Failure to present claims and/or take necessary steps for
 interference purposes after notification that interfering subject matter is claimed
 constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter
 of law, the patentee is the first inventor in this country. See In re
 Oguie , 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
 

 Examiner Note:
 
 1. This form paragraph should be used only after
 applicant has been notified that interference proceedings must be instituted before the
 claims can be allowed and applicant has refused to copy the claims.
 

 2. In bracket 2, insert --102(g)-- or
 --102(g)/103(a)--.
 

 3. In bracket 4, insert the patent number, and --in
 view of _____-- if another reference is also relied upon. When the rejection is under
 pre-AIA 35 U.S.C. 103(a) , the examiner’s basis for a finding of
 obviousness should be included. Note that interferences may include obvious variants,
 see MPEP Chapter
 2300 .
 
 
 

 ¶ 7.49 Rejection, Disclaimer, Failure To Appeal

 An adverse judgment against claim
 [1] has been entered by the Board. Claim [2] stand(s) finally
 disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s)
 presented for interference within the time for appeal or civil action specified in
 37
 CFR 90.3 . 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. See
 37 CFR
 41.127(a)(2) .
 

 

 

 

 
 2304.05 Common Ownership [R-08.2012]

 
 37 CFR 41.206 Common interests in the
 invention. 

 An administrative patent judge may decline to declare, or if already
 declared the Board may issue judgment in, an interference between an application and
 another application or patent that are commonly owned.
 

 

 An interference is rarely appropriate between two applications or an
 application and patent that belong to the same owner. The owner should ordinarily be
 able to determine priority and is obligated under 37 CFR 1.56 to inform the examiner
 about which application or patent is entitled to priority. The examiner may require an
 election of priority between the application and other application or patent. See
 35 U.S.C.
 132(a) .
 

 In making the election, the owner must eliminate the commonly claimed
 subject matter. This may be accomplished by canceling the interfering application
 claims, disclaiming the interfering patent claims, amending the application claims such
 that they no longer interfere, or filing a reissue application to amend the patent
 claims such that they no longer interfere.
 

 
 Example 1 

 Two corporations have applications that claim the same invention.
 After a merger of the corporations, the resulting corporation owns both applications.
 The new corporation is obligated to investigate priority. Once the corporation has
 had an opportunity to determine which application is entitled to priority, the
 corporation must elect between the applications or otherwise eliminate the need for
 an interference.
 

 

 
 Example 2 

 J files an application in which J is the sole inventor and assignee.
 K files an application in which J and K are named as inventors and co-assignees.
 Although J is an owner of both applications, an interference may nevertheless be
 necessary if J and K disagree about which application is entitled to priority.
 

 

 

 [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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 03/09/2026 20:49:35