How does the USPTO handle claim amendments during copending reexamination and interference?
How does the USPTO handle claim amendments during copending reexamination and interference? The USPTO handles claim amendments carefully during copending reexamination and interference proceedings: Claim amendments in reexamination that affect claims involved in the interference require special consideration. The Central Reexamination Unit (CRU) must consult with the Board of Patent Appeals and Interferences (BPAI) before…
Read MoreWhat are the time limits for suggesting an interference in a patent application?
The time limits for suggesting an interference in a patent application are specified in 37 CFR 41.202(c). According to MPEP 2304.02: “The suggestion of interference must be made within the time specified in 37 CFR 41.202(c).” The time limits are as follows: For an application not subject to pre-grant publication: prior to six months from…
Read MoreWhat are the time limits for adding a required claim for interference?
When an examiner requires an applicant to add a claim for interference purposes using Form Paragraph 23.04, specific time limits apply. According to MPEP 2304.04(b), the standard time limit is two months from the mailing date of the communication requiring the claim. The form paragraph states: “Applicant is given TWO (2) MONTHS from the mailing…
Read MoreWhat is the process for suggesting an interference in a patent application?
The process for suggesting an interference in a patent application involves the following steps: The applicant must file a suggestion of interference that complies with 37 CFR 41.202(a). The suggestion must be filed within the time specified in 37 CFR 41.202(c). The applicant must identify all claims the applicant believes interfere, propose one or more…
Read MoreHow is “substantially the same subject matter” determined for pre-AIA 35 U.S.C. 135(b)?
Determining “substantially the same subject matter” for pre-AIA 35 U.S.C. 135(b) is crucial for interference proceedings. The MPEP provides guidance on this determination: “The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different…
Read MoreCan a patent owner petition to stay a reexamination proceeding because of an interference?
Yes, a patent owner can petition to stay a reexamination proceeding because of an interference, but there are specific rules and timing considerations: Any petition filed prior to the first Office action in the reexamination proceeding will not be considered and will be returned or expunged. The patent owner may file a petition to stay…
Read MoreCan a single count in an interference involve multiple claims?
Yes, a single count in an interference can involve multiple claims. The MPEP 2304.02(b) clarifies this point: “When a count encompasses separate patentable inventions, the examiner should suggest multiple counts.” However, this statement implies that a single count can indeed encompass multiple claims as long as they define the same patentable invention. The examiner’s role…
Read MoreHow does restriction practice apply to potential interferences?
Restriction practice in the context of potential interferences is addressed in MPEP 2303. The section states: “Potential interferences present an additional situation in which a restriction requirement may be appropriate. Specifically, restriction of interfering claims from non-interfering claims, or from unpatentable claims whose further prosecution would unduly delay initiation of an interference, can be an…
Read MoreHow are reissue applications treated in the context of interferences?
MPEP 2303 discusses the treatment of reissue applications in interferences: “Applicants sometimes, however, file reissue applications to amend patent claims in response to events occurring in the interference. To maintain parity with other applicants, the Board does not permit reissue applicants to add claims that would not correspond to a count.“ This policy, based on…
Read MoreWhat happens if a request for reexamination is filed during an interference?
When a request for reexamination is filed during an interference, the following procedures apply: The request for reexamination will be processed in the normal manner, without delay or stay, especially if the third party requester is not a party to the interference. Under 37 CFR 41.8(a), the patent owner must notify the Board that a…
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