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

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.

To learn more:

• Patent Interference
• Claim Addition
• Applicant Response
• Examiner Requirement