MPEP § 2304.02(b) — Counts and Corresponding Claims (Annotated Rules)
§2304.02(b) Counts and Corresponding Claims
This page consolidates and annotates all enforceable requirements under MPEP § 2304.02(b), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Counts and Corresponding Claims
This section addresses Counts and Corresponding Claims. Primary authority: 35 U.S.C. 102(g)(1) and 37 CFR 41.202. Contains: 2 requirements and 4 other statements.
Key Rules
Declaration of Interference
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
…
(2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.
The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.
Reissue Patent Practice
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
- *****
- (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
- (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
Interference Proceedings (Pre-AIA)
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
…
(3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
Assignee as Applicant Signature
The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).
Requirements for Declaring Interference
The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).
PTAB Contested Case Procedures
The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.
Citations
| Primary topic | Citation |
|---|---|
| Assignee as Applicant Signature Requirements for Declaring Interference | 35 U.S.C. § 102(g)(1) |
| Declaration of Interference PTAB Contested Case Procedures | 37 CFR § 41.202 |
| Interference Proceedings (Pre-AIA) Reissue Patent Practice | 37 CFR § 41.203(a) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2304.02(b) — Counts and Corresponding Claims
Source: USPTO2304.02(b) Counts and Corresponding Claims [R-08.2017]
37 CFR 41.202 Suggesting an interference.
- (a) Applicant. An applicant, including a reissue applicant,
may suggest an interference with another application or a patent. The
suggestion must:
- *****
- (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
- (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
*****
The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).
The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.