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
• A claim should not be required if the applicant states the subject matter is not their invention
• Claims from published applications should only be required if they have been allowed

The MPEP advises: “Given the cost and complexity of interferences, a requirement to add a claim under 37 CFR 41.202(c) should not be lightly made.” Examiners are instructed to consult with an Interference Practice Specialist before making such a requirement.

To learn more:

• Examiner Suggestion
• Patent Interference
• Claim Requirements
• Interference Criteria