How do interference and derivation proceedings affect patent term adjustment?
Interference and derivation proceedings can impact patent term adjustment (PTA) in two ways, as outlined in MPEP 2731: They can create a basis for PTA under 35 U.S.C. 154(b)(1)(C)(i) They can reduce the amount of B-delay awarded under 35 U.S.C. 154(b)(1)(B)(ii) Regarding the first point, MPEP 2731 states: “37 CFR 1.703(c) pertains to the provisions…
Read MoreWhat is the significance of In re Oguie in patent disclaimer cases?
The case of In re Oguie is significant in patent disclaimer cases, particularly those involving failure to present claims for interference. According to MPEP 2304.04(c), both Form Paragraphs 7.48.aia and 7.48.fti cite this case: “This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See…
Read MoreWhat steps should an examiner take if potential interfering subject matter is identified?
When an examiner identifies potential interfering subject matter during an interference search, they must follow a specific procedure. According to MPEP 2304.01(a): “If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists. If interfering subject matter does…
Read MoreHow are applications with different filing dates handled in potential interference situations?
The MPEP provides specific guidance for handling applications with different filing dates in potential interference situations: For applications with earliest effective filing dates within six months of each other: The MPEP states, When two applications are in condition for allowance and the earliest effective filing dates of the applications are within six months of each…
Read MoreHow are interfering claims between a patent and a pending application handled?
When a claim of an issued patent and a claim of a pending application interfere, the pending application’s claim should not be allowed to issue. Instead, an interference should be suggested. This is because an interference cannot be declared between two patents. MPEP 2303.01 provides an example: “A claim of patent A and a claim…
Read MoreHow do genus and species claims interact in interference proceedings?
In interference proceedings, the interaction between genus and species claims can be complex. The MPEP 2301.03 provides several examples to illustrate this interaction: When one party claims a genus and another claims a species within that genus, the species claim would typically anticipate the genus claim, but the genus claim would not anticipate the species…
Read MoreHow does failing to present claims for interference affect a patent application?
Failing to present claims for interference can have serious consequences for a patent application. According to MPEP 2304.04(c): “Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law,…
Read MoreCan an examiner reject claims authorized by the PTAB during an interference?
Yes, an examiner can reject claims that were authorized by the Patent Trial and Appeal Board (PTAB) during an interference, even after they have been entered into the application. The MPEP 2308.02 clearly states: “The decision authorizing entry of the added or amended claim does not prevent the examiner from rejecting the claim during further…
Read MoreCan examination continue in related cases during an interference proceeding?
Yes, examination can continue in related cases during an interference proceeding. According to MPEP 2307.03, “examination may continue in related cases, including any benefit files.” However, the examiner is prohibited from acting on the patent or application directly involved in the interference, as stated in 37 CFR 41.103. Once the examination of related cases is…
Read MoreWhat is the definition of “interfering subject matter” in patent law?
“Interfering subject matter” in patent law refers to claimed inventions or claimed subject matter that are not patentably distinct from each other. According to MPEP 2301.03, interfering subject matter is defined as follows: “Interfering subject matter” is defined as (A) those portions of an application claim that are patentably indistinct from the subject matter of…
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