What is the one-year rule in pre-AIA 35 U.S.C. 135(b)?
The one-year rule in pre-AIA 35 U.S.C. 135(b) sets time limits for making claims that are the same as, or for substantially the same subject matter as, claims in an issued patent or published application. Specifically: For issued patents: A claim cannot be made in any application unless it’s made prior to one year from…
Read MoreWhat is the significance of the one-year rule in interference proceedings?
The one-year rule in interference proceedings, as outlined in pre-AIA 35 U.S.C. 135(b), imposes time limitations on when certain claims can be made in relation to issued patents or published applications. MPEP § 2304.02(c) explains: “If an application claim interferes with a claim of a patent, and the claim was added to the application by…
Read MoreWhat are the notification requirements when a reexamination is requested during an interference?
When a reexamination is requested for a patent involved in an interference proceeding, there are specific notification requirements: Under 37 CFR 41.8(a), the patent owner must notify the Board that a request for reexamination was filed within 20 days of receiving notice of the request. If the patent owner files the request for reexamination, the…
Read MoreAre lost counts in an interference considered statutory prior art?
Lost counts in an interference are not automatically considered statutory prior art. The MPEP clarifies: “Loss of an interference count alone does not make its subject matter statutory prior art to losing party; however, lost count subject matter that is available as prior art under 35 U.S.C. 102 may be used alone or in combination…
Read MoreWhat are the key requirements for completing examination before initiating an interference?
According to MPEP 2303, before initiating an interference, the following requirements must be met: All pending claims must be allowed, finally rejected, or canceled. Any appeals from final rejections must be completed, including judicial review. All petitions must be decided. Additionally, the section emphasizes that “Two grounds of unpatentability receive particularly close scrutiny before an…
Read MoreWhat happens when a patent in inter partes reexamination becomes involved in an interference?
When a patent undergoing inter partes reexamination becomes involved in an interference proceeding, the general policy is that the reexamination will not be delayed or stayed. This is due to the requirement in 35 U.S.C. 314(c) that all reexamination proceedings be conducted with “special dispatch” within the Office. As stated in the MPEP: In general,…
Read MoreWhat can an applicant do if they only have indirect evidence of an interfering application?
If an applicant only has indirect evidence of an interfering application, they can still attempt to identify it for interference purposes. The MPEP 2304.02(a) provides guidance on this situation: “Occasionally, an applicant will believe another interfering application exists based only on indirect evidence, for instance through a journal article, a ‘patent pending’ notice, or a…
Read MoreHow are corresponding claims identified in an interference proceeding?
In an interference proceeding, corresponding claims are identified based on their relationship to the count. The MPEP 2304.02(b) states: “Claims corresponding to a count are those claims which define the same patentable invention as the count.” To determine if a claim corresponds to a count, examiners typically consider whether: The claim could have been anticipated…
Read MoreWhat information is required to identify another application or patent for interference?
To identify another application or patent for interference, the following information is typically required: Application serial number (for applications) Patent number (for patents) The MPEP 2304.02(a) states: “Usually an applicant seeking an interference will know the application serial number or the patent number of the application or patent, respectively, with which it seeks an interference.…
Read MoreHow can an applicant suggest an interference with another application or patent?
An applicant, including a reissue applicant, can suggest an interference with another application or patent by providing sufficient information to identify the other application or patent. According to 37 CFR 41.202(a)(1), the suggestion must: “Provide sufficient information to identify the application or patent with which the applicant seeks an interference” Typically, this involves providing the…
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