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…

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What 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…

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What 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,…

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How 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…

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What 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…

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What 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…

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What 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…

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