What is the difference between losing on a compound claim versus a method claim in patent interference?

The MPEP 2308.03(a) provides an example that illustrates the difference between losing on a compound claim versus a method claim in patent interference:

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

This distinction is crucial because:

• Losing on a compound claim means the applicant cannot claim rights to the chemical structure itself.
• Losing on a method claim means the applicant cannot claim rights to specific ways of using the compound.
• Winning on one type of claim while losing on another allows the applicant to continue pursuing patent protection for the aspect they won, even if they lost rights to the other aspect.

To learn more:

• compound claims
• method claims
• patent interference
• USPTO procedures