What information should a patent examiner be prepared to discuss in an interference suggestion?

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.

According to MPEP 2304.04(a), when suggesting an interference, a patent examiner should be prepared to discuss several key points:

1. Why the claims interfere
2. Whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art
3. Whether an applicant or patentee is entitled to claim the benefit of an application as a constructive reduction-to-practice

The MPEP states: “The examiner should be prepared to discuss why claims interfere, whether the subject matter of other claims would have been anticipated or rendered obvious if the interfering claims are treated as prior art, and whether an applicant or patentee is entitled to claim the benefit of an application as a constructive reduction-to-practice.”