MPEP 2304.02(c)
Explaining Priority

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

Previous: §2304.02(b) | Next: §2304.02(d)

2304.02(c)    Explaining Priority [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:
    • (4) Explain in detail why the applicant will prevail on priority,
    • *****
    • (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.

*****

  • (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.

*****

A description in an application that would have anticipated the subject matter of a count is called a constructive reduction-to-practice of the count. One disclosed embodiment is enough to have anticipated the subject matter of the count. If the application is relying on a chain of benefit disclosures under any of pre-AIA 35 U.S.C. 119, 120, 121 and 35 U.S.C. 365, then the anticipating disclosure must be continuously disclosed through the entire benefit chain or no benefit may be accorded. See Tas v. Beachy, 626 Fed. App'x. 999, 1002 (Fed. Cir. 2015) (nonprecedential) (when a party to an interference seeks the benefit of an earlier-filed U.S. patent application, the earlier application must contain a written description of the subject matter of the interference Count, and must meet the enablement requirement.); Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998).

If the application has an earlier constructive reduction-to-practice than the apparent earliest constructive reduction-to-practice of the other application or patent, then the applicant may simply explain its entitlement to its earlier constructive reduction-to-practice. Otherwise, the applicant must (A) antedate the earliest constructive reduction-to-practice of the other application or patent, (B) demonstrate why the other application or patent is not entitled to its apparent earliest constructive reduction-to-practice, or (C) provide some other reason why the applicant should be considered the prior inventor.

The showing of priority may look similar to showings under 37 CFR 1.130 -1.132, although there are differences particularly in the scope of what must be shown. In any case, with the exception discussed below, the examiner is not responsible for examining the substantive sufficiency of the showing.

I.    REJECTION UNDER PRE-AIA 35 U.S.C. 102(a) or 102(e)

If an application claim is subject to a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR 41.202(a) rather than a declaration under 37 CFR 1.130 -1.132, then the examiner must review the suggestion to verify that the applicant’s showing, taken at face value, is sufficient to overcome the rejection. If the examiner determines that the showing is not sufficient, then the examination is not completed, and in accordance with 37 CFR 41.102, the rejection should be maintained and the suggestion should not be referred to the Board for an interference.

II.    COMPLIANCE WITH PRE-AIA 35 U.S.C. 135(b)

35 U.S.C. 135 (pre-AIA) Interferences.

*****

  • (b)(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
  • (2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

*****

If an application claim interferes with a claim of a patent, 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 pre-AIA 35 U.S.C. 135(b)(1), 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. When the requisite relationship between post- and pre-critical date claims is otherwise established, the condition of pre-AIA 35 U.S.C. 135(b)(1) is met and there is no requirement of diligent prosecution. See In re Commonwealth Scientific, 632 Fed. App'x. 1024, 1026 (Fed. Cir. 2015) (nonprecedential) ("Application of § 1.5(b)(1) does not turn on the patent applicant’s prosecution decisions or require diligence in prosecution."). 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. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).

Similarly, in a subsequently filed application relative to an application published under 35 U.S.C. 122(b), if applicant does not appear to have a claim that is for "substantially the same subject matter" prior to one year after publication, in accordance with 35 U.S.C. 135(b)(2), an interference will not be declared. See Loughlin v. Ling, 684 F.3d 1289, 1294, 103 USPQ2d 1413, 1417 (Fed. Cir. 2012)("an application filed" in § 1.5(b)(2) includes the benefit provision of §1.0 ).

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. See In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002). 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, the interfering claim should be rejected under pre-AIA 35 U.S.C. 135(b). See In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997).

Form paragraph 23.14 may be used to reject a claim as not being made prior to one year of the patent issue date. Form paragraph 23.14.01 may be used to reject a claim as not being made prior to one year from the application publication date.

¶ 23.14    Claims Not Copied Within One Year of Patent Issue Date

Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.

¶ 23.14.01    Claims Not Copied Within One Year Of Application Publication Date

Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.

Examiner Note:

1. In bracket 2, insert the publication number of the published application.

2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.