37 CFR § 41.202 — Suggesting an interference. (MPEP Coverage Index) – BlueIron IP
37 CFR § 41.202 Suggesting an interference.
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 41.202, including 147 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The section covers the process of suggesting claims for purposes of interference by submitting a letter or Form PTO-850 to an applicant, ensuring they differ from those in another application and comply with specific requirements.
What this section covers
- Define what this section covers at a high level, including the process for suggesting claims for purposes of interference.
- Identify the core topic and scope of guidance in this section, focusing on letters to an applicant suggesting claims for purposes of interference.
Key obligations
- State the primary requirement practitioners must satisfy, which is to submit a letter or Form PTO-850 suggesting claims for purposes of interference.
- State an additional required element or condition if applicable, such as ensuring the claims differ from those in another application.
- State a key compliance obligation tied to authority (USC/CFR), which includes adhering to the specific requirements outlined in 37 CFR 41.202.
Practice notes
- Give a practical drafting or filing tip grounded in this section, such as ensuring the claims suggested are clearly and distinctly described.
- Call out a common pitfall or best practice relevant to this section, such as avoiding suggesting claims that are not truly different from those in the other application.
Official MPEP § 41.202 — Suggesting an interference.
Source: USPTOLast Modified: 10/30/2024 08:50:22
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:
- (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
- (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) ,
- (4) Explain in detail why the applicant will prevail on priority,
- (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
- (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
- (b) Patentee. A patentee cannot suggest an interference under this section but may, to the extent permitted under § 1.291 of this title, alert the examiner of an application claiming interfering subject matter to the possibility of an interference.
- (c)
Examiner. An examiner may require an applicant to
add a claim to provoke an interference. Failure to satisfy the
requirement within a period (not less than one month) the examiner
sets will operate as a concession of priority for the subject matter
of the claim. If the interference would be with a patent, the
applicant must also comply with paragraphs (a)(2) through (a)(6) of
this section. The claim the examiner proposes to have added must,
apart from the question of priority under
35 U.S.C.
102(g)
:
- (1) Be patentable to the applicant, and
- (2) Be drawn to patentable subject matter claimed by another applicant or patentee.
- (d)
Requirement to show priority under 35 U.S.C.
102(g).
(1) When an applicant has an earliest constructive
reduction to practice that is later than the apparent earliest
constructive reduction to practice for a patent or published
application claiming interfering subject matter, the applicant must
show why it would prevail on priority.
- (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.
- (e)
Sufficiency of showing. (1) A showing of priority
under this section is not sufficient unless it would, if unrebutted,
support a determination of priority in favor of the party making the
showing.
- (2) When testimony or production necessary to show
priority is not available without authorization under §
41.150(c)
or
§
41.156(a)
,
the showing shall include:
- (i) Any necessary interrogatory, request for admission, request for production, or deposition request, and
- (ii) A detailed proffer of what the response to the interrogatory or request would be expected to be and an explanation of the relevance of the response to the question of priority.
- (2) When testimony or production necessary to show
priority is not available without authorization under §
41.150(c)
or
§
41.156(a)
,
the showing shall include:
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]
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- Aia Overview
- Applicability
- Prior Art Aia
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- Duty Of Disclosure
- Disclosure Materiality
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- Examination Procedure
- Double Patenting
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- Interference Parties
- Interference Priority
- Reduction To Practice
- Patent Term
- Protest
- Protest Filing
- Protest Procedure
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- Reissue Claims
- Reissue Concurrent Proceedings
- Section 102
- Aia Vs Preaia 102
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- Signature Requirements
- Signature Assignee
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