How does the cancellation of a claim lost in interference affect the patent application?

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.

The cancellation of a claim lost in interference can significantly affect a patent application. While MPEP 1302.04(d) briefly mentions this process, stating “Cancellation of Claim Lost in Interference [R-08.2012] See MPEP Chapter 2300“, the full impact is detailed in MPEP Chapter 2300.

When a claim is lost in interference and subsequently cancelled:

• The scope of the patent application is narrowed, as the lost claim can no longer be part of the issued patent.
• The applicant may need to revise other claims or the specification to ensure consistency with the remaining claims.
• The prosecution history will reflect the interference proceeding and its outcome, which becomes part of the patent’s public record.
• In some cases, the loss of a key claim might impact the overall patentability or value of the invention.

It’s crucial for applicants to work closely with their patent attorneys to assess the impact of lost claims and determine the best strategy for proceeding with the application.