How can an applicant express disagreement with a requirement to add a claim for interference?

While an applicant must comply with a requirement to add a claim under 37 CFR 41.202(c), they can still express disagreement with the requirement. According to MPEP 2304.04(b), an applicant can express disagreement in several ways:

• Identifying a claim already in its application, or another of its applications, that provides a basis for the proposed interference;
• Adding an alternative claim and explaining why it would provide a better basis for the proposed interference (such as having better support in the applicant’s disclosure); or
• Explaining why the required claim is not patentable to the applicant.

The MPEP states:

“While complying with the requirement to add a claim, an applicant may also express disagreement with the requirement several ways…”

It’s important to note that the examiner may withdraw the requirement if persuaded by the reasons the applicant offers. This provides a mechanism for applicants to challenge the necessity or appropriateness of the interference requirement while still complying with the procedural requirements.

To learn more:

• Interference
• Patent Claims
• USPTO Procedures
• Patent Examination
• Applicant Response