What principles should guide an examiner in requiring a claim for interference?

According to MPEP 2304.04(b), examiners should follow several principles when considering whether to require an applicant to add a claim for interference:

• An interference should generally not be suggested if examination of the application is not otherwise completed.
• The required claim must not encompass prior art or otherwise be barred.
• The application must provide adequate support under 35 U.S.C. 112(a) for the subject matter of the required claim.
• A claim should not be required when the applicant expressly states that the commonly described subject matter is not the applicant’s invention.
• A claim based on a claim from a published application should not be required unless the claim from the published application has been allowed.

The MPEP emphasizes:

“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).”

These principles help ensure that interference proceedings are initiated only when necessary and appropriate.

To learn more:

• Interference
• Patent Claims
• USPTO Procedures
• Patent Examination
• Examiner Guidelines