What is the significance of “written description” in interference proceedings?
The “written description” requirement is crucial in interference proceedings as it determines whether an applicant has demonstrated possession of the claimed invention. According to MPEP 2304.02(d), “The purpose of the written description requirement is to ensure that the specification reasonably conveys to those skilled in the art that the inventor had possession of the claimed…
Read MoreWhy are interferences not declared for applications under secrecy orders?
Interferences are not declared for applications under secrecy orders primarily due to confidentiality concerns. The MPEP 2306 explains: “Once an interference is declared, an opposing party is entitled to access to the application and benefit applications pursuant to 37 CFR 41.109. See MPEP § 2307.02. Consequently, an interference should not be suggested for an application…
Read MoreWhat is an Interference Practice Specialist (IPS) and when should an examiner consult one?
An Interference Practice Specialist (IPS) is an expert in each Technology Center (TC) who must be consulted when suggesting an interference to the Board. Examiners should consult an IPS when they first become aware of a potential interference or when any interference issue arises during prosecution of an application. According to the MPEP, Examiners are…
Read MoreWhen is a priority showing required in patent applications?
A priority showing is required in the following circumstances: When complying with 37 CFR 41.202(a)(2) to suggest an interference To overcome a rejection based on pre-AIA 35 U.S.C. 102(a) or 102(e) when an affidavit is not permitted under 37 CFR 1.131(a)(1) When the examiner requires it due to the application’s earliest constructive reduction-to-practice being later…
Read MoreWhat is an interfering claim in a patent application?
An interfering claim in a patent application refers to a claim that covers the same subject matter as a claim in another application or patent by a different inventor. According to MPEP 2304.04(a), “If the applicant already has a claim to the same subject matter as a claim in the application or patent of another…
Read MoreHow does the USPTO handle applications not under secrecy orders that interfere with applications under secrecy orders?
The USPTO has a specific procedure for handling applications not under secrecy orders that interfere with applications under secrecy orders. According to MPEP 2306: “If an application not under a secrecy order has allowable claims that interfere with allowable claims of an application that is under a secrecy order, then the application that is not…
Read MoreWhat is a “threshold issue” in patent interference proceedings?
A threshold issue in patent interference proceedings is a critical concept defined in 37 CFR 41.201. The MPEP states: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference.” One important threshold issue specifically mentioned is: “Unpatentability for lack of written description under…
Read MoreWhen might suspension of examination be necessary during an interference?
Suspension of examination might be necessary during an interference if the claims in a related application would be barred in the event the applicant loses the interference. The MPEP 2307.03 states: “Suspension may be necessary if the claims would be barred by a loss in the interference.” To determine if suspension is needed, the Interference…
Read MoreCan an applicant suggest an interference for an application under a secrecy order?
Yes, an applicant can suggest an interference for an application under a secrecy order, but the USPTO will not act on it immediately. According to MPEP 2306: “An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the…
Read MoreHow does an applicant suggest an interference in patent proceedings?
Suggesting an interference in patent proceedings is a specific process outlined in 37 CFR 41.202. An applicant, including a reissue applicant, can suggest an interference with another application or patent. The suggestion must include several elements, but particularly relevant to the written description requirement is: “If a claim has been added or amended to provoke…
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