MPEP 2304.02
Applicant Suggestion

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2304.02    Applicant Suggestion [R-08.2017]

37 C.F.R. 41.202 Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
    • (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
    • (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
    • (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
    • (4) Explain in detail why the applicant will prevail on priority,
    • (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
    • (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.

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  • (d) Requirement to show priority under 35 U.S.C. 102(g).
    • (1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
    • (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.

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When an applicant suggests an interference under 37 CFR 41.202(a), an examiner must review the suggestion for formal sufficiency. As explained in MPEP § 2304.02(c), the examiner is generally not responsible for determining the substantive adequacy of any priority showing. The examiner may, however, offer pertinent observations on any showing when the suggested interference is referred to the Board. The observations may be included as an attachment to the Form PTO-850.

Form paragraphs 23.06 to 23.06.06 may be used to acknowledge applicant’s suggestion for interference under 37 CFR 41.202(a) that failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.

¶ 23.06    Applicant Suggesting an Interference

Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1].

Examiner Note:

1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.

2. In bracket 1, insert the date of applicant’s communication.

3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04.

¶ 23.06.01    Failure to Identify the Other Application or Patent

Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a).

¶ 23.06.02    Failure to Identify the Counts and Corresponding Claims

Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b).

¶ 23.06.03    Failure to Provide Claim Chart Comparing At Least One Claim

Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c).

¶ 23.06.04    Failure to Explain in Detail Why Applicant Will Prevail on Priority

Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c).

¶ 23.06.05    Claim Added/Amended; Failure to Provide Claim Chart Showing Written Description

Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d).

¶ 23.06.06    Time Period for Reply

Applicant is given TWO MONTHS from the mailing date of this communication to correct the deficiency(ies). EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).