MPEP Q & A 90: Conditions an Examiner Should Check for Before Requiring Applicant to Add Claim to Provoke Interference

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Question:

What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference?

Answer:

The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke an interference include:

  •  that the application is otherwise completed
  •  that the required claim does not encompass prior art or would not otherwise be barred
  •  that the applicant has not stated that the commonly described subject matter is not the applicant’s invention
  •  that the application provides adequate support under 35 U.S.C. 112, 1st paragraph for the subject matter of the required claim
  •  a claim based on a claim from a published application has been allowed

Chapter Details:

The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers interference proceedings.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2304 of the MPEP.  The following is a brief summary of section 2304.

2304 Suggesting an Interference

An interference may be suggested by an applicant or an examiner. This section explains what happens depending on whether an applicant or an examiner calls the interference. It discusses the preliminary activities that need to happen before referring an interference to the Board. For instance, an interference search must be performed on each application in condition for allowance.

In addition, this section covers the difference between the proceedings when an applicant suggests an interference vs. when the examiner suggests an interference. For example, when an applicant suggests an interference, the examiner will need to review the suggestion to ensure it meets the requirements. A patentee may not suggest an interference. The only way is for the patentee to become an applicant by filing a reissue application. Further details for suggesting an interference are covered in this section.

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