What criteria should guide an examiner in requiring a claim for interference?
When considering whether to require an applicant to add a claim for interference under 37 CFR 41.202(c), examiners should follow these principles: Examination of the application should be otherwise completed The required claim must not encompass prior art or be barred The application must provide adequate support under 35 U.S.C. 112(a) for the subject matter…
Read MoreWhat is a count in patent interference proceedings?
A count in patent interference proceedings is a description of the interfering subject matter. As stated in the MPEP 2304.02(b): “A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).” In other words, the count…
Read MoreWhat is a count in a patent interference proceeding?
In patent interference proceedings, a count is a crucial concept. The MPEP 2301.02 defines a count as follows: “Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.” In simpler terms,…
Read MoreCan a losing party in a patent interference pursue claims in a continuing application?
A losing party in a patent interference may pursue claims in a continuing application, but with significant limitations due to estoppel. According to MPEP 2308.03, the following restrictions apply: Claims that would have been anticipated or rendered obvious by the subject matter of the lost count are barred due to estoppel on the merits. Claims…
Read MoreHow is constructive reduction to practice defined in patent interferences?
Constructive reduction to practice is a key concept in patent interference proceedings. The MPEP 2301.02 provides the following definition: “Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in a patent application of the subject matter of a count.” Furthermore, the MPEP introduces the concept of earliest constructive reduction to…
Read MoreWhat are the consequences of an inadequate priority showing?
An inadequate priority showing can have serious consequences for the applicant in an interference proceeding. The MPEP warns: “The consequence of an inadequate showing may be serious for the applicant. If an interference is declared and the Board finds the priority showing insufficient (thereby issuing an order to show cause why judgment should not be…
Read MoreWhat are the potential consequences of engaging in ex parte communications during a patent interference?
Engaging in ex parte communications during a patent interference can lead to serious consequences. According to MPEP 2307.01: “Board action may include a sanction in the interference or referral of a patent practitioner to the Office of Enrollment and Discipline.” This means that the consequences can be twofold: Sanctions in the interference: The Board may…
Read MoreWhat is the difference between losing on a compound claim versus a method claim in patent interference?
The MPEP 2308.03(a) provides an example that illustrates the difference between losing on a compound claim versus a method claim in patent interference: “The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue…
Read MoreCan I communicate with the examiner about my application once an interference is declared?
Once an interference is declared, you should not communicate with the examiner about your application without prior authorization from the Board. The MPEP 2307.01 clearly states: “Once an interference is declared, any attempt by a party to communicate with the Board through the examiner or to have the examiner act in an involved patent or…
Read MoreCan a party claim the same invention after losing an interference?
If a party loses an interference proceeding and subsequently attempts to claim the same invention as the count in the lost interference, their claims will be rejected. The MPEP 2308.03(c) provides clear guidance on this matter: “If a party that lost the earlier interference is again claiming the same invention as the count, the interfering…
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