How can an applicant respond to an examiner’s requirement to add a claim for interference?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When an examiner requires an applicant to add a claim for interference under 37 CFR 41.202(c), the applicant must comply but can also express disagreement. The MPEP outlines several ways an applicant can respond:

• Identify an existing claim in their application or another of their applications that provides a basis for the proposed interference
• Add an alternative claim and explain why it would provide a better basis for the proposed interference (e.g., better support in the applicant’s disclosure)
• Explain why the required claim is not patentable to the applicant

The MPEP notes: “The examiner may withdraw the requirement if persuaded by the reasons the applicant offers.” This allows for a dialogue between the examiner and applicant to determine the most appropriate course of action for the interference proceeding.