General
- Claims must not be identical, but they must have the same subject matter
- Inter partes proceeding between [2 patent applications] or [1 patent and 1 application]
- §1.131 cannot be used to “swear behind” a patent claiming the same invention; but it can be used to swear behind a patent disclosing same invention
- Senior party has earliest effective filing date and becomes the Defendant
- A party wins if they were first to conceive and diligent starting before the other party’s conception and later filing date
Provoking an Interference
- Applicant may provoke by: proposing a count (mock claim); presenting or identifying a claim (in an application) corresponding to count; identifying other pending application (issued patent); and explain why interference should be declared
- Applicant can copy a claim from another pending application or issued patent verbatim at the suggestion of examiner
- Timing – provoking an interference with an issued patent must normally be done less than one year from issue date; good faith EOT; if published and applicant’s filing date was after publication, the copying must be done less than one year from publication date
- When two applications are involved, examiner will not suggest copying if more than 3 months difference in filing dates if simple; and 6 months if not simple
- Once interference is filed, each party has access to opponent’s file
- If interfering applications or application/patent have the same inventive entity or common assignee, then double patenting rejection is proper
- Failure to comply with suggestion (usually non-extendable 1 month) acts as a disclaimer to uncopied subject matter
- Declarations must be filed only with an issued patent/pending application interference
- Parties may voluntarily settle before interference terminates by filing written agreement with PTO
Burden of Proof
- The issue in an interference between applications is normally priority of use, but the rights of the parties to registration may also be determined. The party whose application involved in the interference has the latest filing date is the junior party and has the burden of proof.
- When there are more than two parties to an interference, a party shall be a junior party to and shall have the burden of proof as against every other party whose application involved in the interference has an earlier filing date. If the involved applications of any parties have the same filing date, the application with the latest date of execution will be deemed to have the latest filing date and that applicant will be the junior party. The issue in an interference between an application and a registration shall be the same, but in the event the final decision is adverse to the registrant, a registration to the applicant will not be authorized so long as the interfering registration remains on the register.
- There is a higher standard of proof if the patent is already issued (clear and convincing) compared to if two applicants are pending (preponderance). See the PTO here, http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_657.htm
Above information said this:
Timing – provoking an interference with an issued patent must normally be done less than one year from issue date; good faith EOT; if published and applicant’s filing date was after publication, the copying must be done less than one year from publication date
I will elaborate a bit, because some review questions required the following information:
2304.02(c)
II. COMPLIANCE WITH 35 U.S.C. 135(b)
If an application claim interferes with a claim of a
patent or published application, and the claim was
added to the application by an amendment filed more
than one year after issuance of the patent, or the application
was not filed until more than one year after
issuance of the patent (but the patent is not a statutory
bar), then under the provisions of 35 U.S.C. 135(b),
an interference will not be declared unless at least one
of the claims which were in the application, or in a
parent application, prior to expiration of the one-year
period was for “substantially the same subject matter”
as at least one of the claims of the patent.
[. . .]
If none of the claims which were present in the
application, or in a parent application, prior to expiration
of the one-year period meets the “substantially
the same subject matter” test (but some claims meet the test AFTER the 1-yr. period), the interfering claim
should be rejected under 35 U.S.C. 135(b).
(note that this means you can get a 135(b) rejection during prosecution, without any interference being declared)
[. . .]
Note that the expression “prior to one year
from the date on which the patent was granted” in 35
U.S.C. 135(b) includes the one-year anniversary date
of the issuance of a patent.
Also note the standard for determining “substantially the same subject matter”…
The obviousness test is not the standard for determining
whether the subject matter is the same or substantially
the same. Rather the determination turns on
the presence or absence of a different material limitation
in the claim. These tests are distinctly different.
The analysis focuses on the interfering claim to determine
whether all material limitations of the interfering
claim necessarily occur in a prior claim.
I found the prior exam question dealing with this…
APRIL, 2003, Afternoon Session
47. John, unaware of the existence of Jane’s U.S. patent, which issued on Tuesday, July 11, 2000, files a patent application on Friday, January 11, 2001. John’s application and Jane’s patent are not commonly owned. On Thursday, July 11, 2001, in reply to an Office action rejecting all of his claims, John files an amendment canceling all of his claims and adding claims setting forth, for the first time, “substantially the same subject matter” as is claimed in Jane’s patent. The examiner rejects John’s claims on the basis of 35 USC 135(b). Which of the following statements accords with the USPTO rules and the procedures set forth in the MPEP?
(A) The rejection is improper because 35 USC 135(b) relates to interferences.
(B) The rejection is proper because 35 USC 135(b) is not limited to inter partes proceedings, but may be used as a basis for ex parte rejections.
(C) Since John’s claims would interfere with Jane’s unexpired patent, the proper procedure is for the examiner to declare an interference rather than to reject John’s claims.
(D) The rejection is proper merely by reason of the fact that John’s claims are broad enough to cover the patent claims.
(E) The rejection is improper inasmuch as John is claiming “substantially the same subject matter” as is claimed in the patent.
47. ANSWER: (B) is the most correct answer, and (A) and (C) are wrong. MPEP § 715.05 states “[i]f the patent is claiming the same invention as the application and its issue date is one year or more prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under 35 U.S.C. § 135(b) should be made. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed.Cir. 1997) (holding that application of 35 U.S.C. § 135(b) is not limited to inter partes interference proceedings, but may be used as a basis for ex parte rejections.)”. (D) is wrong. See MPEP § 2307 (“The fact that the application claim may be broad enough to cover the patent claim is not sufficient. In re Frey, 182 F.2d 184, 86 USPQ 99 (CCPA 1950)”). (E) is also wrong. See MPEP § 2307 (“If the claim presented or identified as corresponding to the proposed count was added to the application by an amendment filed more than one year after issuance of the patent…then under the provisions of 35 U.S.C. § 135(b), an interference will not be declared unless at least one of the claims which were in the application…prior to expiration of the one-year period was for ‘substantially the same subject matter’ as at least one of the claims of the patent.”).
This answer seems to conflict with the “prior to one year” definition above, but the concept is basically the same.
It appears the answer to that question is a bit out of date regarding the “prior to one year” definition. This is current:
715.05 U.S. Patent or Application Publication
Claiming Same Invention
When the reference in question is a noncommonly
owned U.S. patent or patent application
publication claiming the same invention as applicant
and its publication date is less than 1 year prior to the
presentation of claims to that invention in the application
being examined, applicant’s remedy, if any, must
be by way of 37 CFR *>41.202Chapter
2300The expression “prior to one year
from the date on which the patent was granted” in 35
U.S.C. 135(b) includes the one-year anniversary date
of the issuance of a patent. See Switzer v. Sockman,
333 F.2d 935, 142 USPQ 226 (CCPA 1964).<
Thus, if the amendment in question 47 happened on the 1 yr. anniversary, an interference would need to be called.
So, (C) is the answer now?
Mimi,
B is the answer .