MPEP § 2305 — MPEP § 2305
Current through: 2022-07-01

2305-Requiring a Priority Showing 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2300 

 Section 2305 
 

 
 
 
 
 
 2305 Requiring a Priority Showing [R-08.2017]

 
 37 CFR 41.202 Suggesting an interference. 

 *****

 
 (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.
 

 
 

 
 *****

 
 (e) Sufficiency of showing. 
 (1) A showing of priority under this section is
 not sufficient unless it would, if unrebutted, support a determination of
 priority in favor of the party making the showing.
 

 (2) When testimony or production necessary to show priority is
 not available without authorization under §
 41.150(c) or § 41.156(a) , the showing
 shall include:
 
 (i) Any necessary interrogatory, request for admission,
 request for production, or deposition request, and
 

 (ii) A detailed proffer of what the response to the
 interrogatory or request would be expected to be and an explanation of
 the relevance of the response to the question of priority.
 

 
 

 
 

 
 *****

 

 Whenever the application has an earliest constructive
 reduction-to-practice that is later than the earliest constructive reduction-to-practice of
 a published application having allowed claims or a patent with which it interferes, the
 applicant must make a priority showing under 37 CFR 41.202(d)(1) .
 

 There are two typical situations in which a showing under
 37 CFR
 41.202(d)(1) is filed without a requirement from the examiner. First,
 the applicant may be complying with 37 CFR 41.202(a)(2) in order to suggest
 an interference under 37
 CFR 41.202(a) or as part of complying with a requirement under
 37 CFR
 41.202(c) . Second, the applicant may file the showing to overcome a
 rejection based on pre-AIA 35 U.S.C. 102(a) or 102(e) when an affidavit is not
 permitted under 37
 CFR 1.131(a)(1) because the applicant is claiming interfering subject
 matter.
 

 If no showing has been filed, and the application’s earliest constructive
 reduction-to-practice is later than the earliest constructive reduction-to-practice of a
 patent or published application, then the examiner must require a showing of priority. This
 showing is necessary because an insufficient showing (including no showing at all) can
 trigger a prompt judgment against the applicant in an interference. See 37 CFR 41.202(d)(2) .
 The applicant may choose to comply with a requirement under 37 CFR 41.202(d)(1) 
 by suggesting an interference under 37 CFR 41.202(a) .
 

 
 Example 

 Application L has claims that interfere with claims of patent M.
 Application L was filed in June 2001. The application that resulted in patent M was
 filed in November 2001, but has an earliest constructive reduction-to-practice in a
 foreign application filed in December 2000. Assuming no rejection is available under
 pre-AIA 35 U.S.C.
 102(e) , the examiner must require a showing under
 37 CFR
 41.202(d)(1) in application L.
 

 
 I. RELATIONSHIP TO 37 CFR 1.131 AFFIDAVIT Ordinarily an applicant may use an affidavit of prior invention under
 37 CFR
 1.131 to overcome a rejection under pre-AIA 35 U.S.C.
 102(a) or 102(e) . An exception to the rule
 arises when the reference is a patent or application published under 35 U.S.C. 122(b) 
 and the reference has claims directed to the same patentable invention as the
 application claims being rejected. See 37 CFR 1.131(a)(1) . The reason for
 this exception is that priority is determined in an interference when the claims
 interfere. See pre-AIA
 35 U.S.C. 135(a) . In such a case, the applicant must make the
 priority showing under 37 CFR 41.202(d) instead. In determining whether a
 37 CFR
 1.131 affidavit is permitted or not, the examiner should keep the
 purpose of the exception in mind. If an interference would not be possible at the time
 the affidavit would be submitted, then the affidavit should be permitted. This situation
 could arise two ways. 
 

 First, the claims that matter for the purposes of 37 CFR 1.131 
 are not the published claims but the currently existing claims. For example, if the
 claims that were published in a published application have been significantly modified
 during subsequent examination, they may no longer interfere with the rejected claims.
 Similarly, the patent claims may have been subsequently corrected or amended in a
 reissue application or a reexamination. Since an interference no longer exists between
 the current claims in the patent or published application and the rejected claims, an
 affidavit under 37
 CFR 1.131 may be submitted.
 

 Similarly, if a published application contains claims to the same
 invention, but the claims in the published application are not in condition for
 allowance, then no interference is yet possible. See 37 CFR 41.102 . Since the claims in
 the published application might never be allowed in their present form, it is not
 appropriate to proceed as though an interference would be inevitable. Consequently, an
 affidavit under 37
 CFR 1.131 may be submitted.
 

 II. NOT A PRIORITY STATEMENT A priority showing under 37 CFR 41.202(d)(1) , which is
 presented during examination, is not the same as a priority statement under
 37 CFR
 41.204(a) , which is filed during an interference. A priority
 statement is a notice of what a party intends to prove on the issue of priority during
 an interference. A priority showing under 37 CFR 41.202(d)(1) must, however,
 actually prove priority assuming that the opposing party did not oppose the showing. See
 also 37 CFR
 41.202(e)(1) . Generally speaking, while a priority statement might
 be more detailed in some respects, it will not be sufficient to make the necessary
 showing of priority for the purposes of 37 CFR 41.202 .
 

 An applicant presenting a priority showing must establish through the
 showing that it would prevail on priority if an interference is declared and the
 opponent does not oppose the showing. The requirement for a priority showing is intended
 to spare a senior party patentee the burden of an interference if the junior party
 applicant cannot establish that it would prevail in an interference even if the senior
 party does nothing. See Kistler v. Weber, 412 F.2d 280, 283-85, 162
 USPQ 214, 217-19 (CCPA 1969) and Edwards v. Strazzabosco, 58 USPQ2d
 1836 (Bd. Pat. App. & Inter. 2001).
 

 The consequence of an inadequate showing may be serious for the
 applicant. If an interference is declared and the Board finds the priority showing
 insufficient (thereby issuing an order to show cause why judgment should not be entered
 against the applicant), the applicant will not be allowed to present additional evidence
 to make out a priority showing unless the applicant can show good cause why any
 additional evidence was not presented in the first instance with the priority showing
 before the examiner. See 37 CFR 41.202(d)(2) ; Huston
 v. Ladner, 973 F.2d 1564, 23 USPQ2d 1910 (Fed. Cir. 1992); Hahn v.
 Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989); and Edwards
 v. Strazzabosco, 58 USPQ2d 1836 (Bd. Pat. App. & Inter. 2001). The
 principles which govern review of a priority showing are discussed in
 Basmadjian v. Landry, 54 USPQ2d 1617 (Bd. Pat. App. & Inter.
 1997) (citing former 37 CFR 1.608(b)).
 

 [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