What happens if an applicant refuses to add a required claim for interference?
If an applicant refuses to add a claim required under 37 CFR 41.202(c), there are significant consequences. According to MPEP 2304.04(b):
“Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim.”
This means that the applicant would be barred from claiming not only the subject matter of the required claim but also any subject matter that would have been anticipated or rendered obvious if the required claim were treated as prior art.
The MPEP further explains:
“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.”
It’s important to note that while refusing to add the claim has serious consequences for the scope of patent protection, it does not result in abandonment of the application.
To learn more: