What references should an examiner include in the first action after an interference?
In the first action after an interference or derivation proceeding, the examiner has specific responsibilities regarding references. The MPEP states: Moreover, in the first action after termination of an interference or derivation, the examiner should make of record in each application all references not already of record which were pertinent to any preliminary motions and…
Read MoreWhat happens to an application after an interference proceeding ends?
After an interference proceeding ends, jurisdiction over the application returns to the patent examiner. The examiner’s actions depend on whether there are recommendations in the interference judgment: If there are recommendations, the examiner must reopen prosecution to consider them. If there are no recommendations, the examiner should update the search and may choose to reopen…
Read MoreWhen should an examiner reject claims after an interference judgment?
An examiner should reject claims after an interference judgment if allowing them would conflict with the judgment’s outcome. The MPEP provides clear guidance on this: If a party loses on an issue in the interference, the examiner should reject any claim for which allowance would be inconsistent with the interference judgment. This means that the…
Read MoreWhat is Form Paragraph 23.02 used for in patent examination?
Form Paragraph 23.02 is used by patent examiners to formally resume ex parte prosecution after an interference proceeding has concluded. The MPEP states: Form paragraph 23.02 may be used to resume ex parte prosecution. The form paragraph typically includes: The interference number A statement that the interference has been terminated The outcome of the interference…
Read MoreAre examiners required to implement recommendations from an interference judgment?
Yes, patent examiners are required to implement recommendations from an interference judgment. The MPEP clearly states: The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction. This means that if the interference judgment includes specific recommendations…
Read MoreDoes an interference judgment prevent an examiner from making new rejections?
No, an interference judgment does not prevent an examiner from making new rejections. The MPEP clearly states: An interference judgment simply resolves any question of priority between the two parties to the interference. The judgment does not prevent the examiner from making a rejection in further examination in the same application or a different application.…
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