How does estoppel on the merits work in patent interference cases?
Estoppel on the merits in patent interference cases prevents a losing party from seeking claims that are anticipated or obvious based on the subject matter of the lost count. According to MPEP 2308.03:
“A losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the subject matter of the lost count.”
This means that if an applicant loses on priority for a specific subject matter, they cannot later claim that same subject matter or obvious variations of it. For example, if an applicant loses on a count drawn to subject matter X, they cannot file a continuing application with a claim to subject matter X or a claim that would be obvious in view of X.
To learn more:
Topics:
MPEP 2300 - Interference And Derivation Proceedings,
MPEP 2308.03 - Estoppel Within The Office,
Patent Law,
Patent Procedure