Chapter 2300 Flashcards
What is an interference?
a proceeding before the Board to determine priority of invention
How is an interference initiated?
when an applicant “suggests” an interference OR
the examiner requires the applicant to provoke an interference by adding a claim that will conflict with another’s patent or application
Who has jurisdiction over the application once interference is in session?
The Board has jurisdiction over the application or patent files until interference is terminated, which only occurs 2 months after a final Board judgment in the interference
How is priority of invention determined?
the first to conceive and reduce to practice the invention ALWAYS wins
the first to conceive and last to reduce to practice wins ONLY IF he worked on the invention with reasonable diligence from a date just prior to the other part’s conception to the date of his own reduction to practice
What is actual reduction to practice?
the party constructed a physical embodiment of the invention or performed the inventive process
the embodiment or process operated for its intended purpose
the same evidence sufficient for a constructive reduction to practice may be insufficient to establish actual reduction to practice, which requires that the invention has been sufficiently tested to demonstrate that it will work for its intended purpose
What is constructive reduction to practice?
When an applicant files a patent application covering the invention
Therefore, once an applicant files a patent application covering the invention, he has conceived and reduced to practice his invention
What is applicant suggestion?
an applicant can suggest an interference between conflicting claims, and in this case, the examiner only reviews the suggestion for formal sufficiency
if the requirements have been met, the matter proceeds to the Board for a determination of priority
What is patentee suggestion?
the patent holder CANNOT suggest interference
the patentee who learns of claims that may potentially conflict with his issued patent may alert the examiner through other means
a patentee can alert the examiner through a third-party submission under Rule 99 or a protest under Rule 291
What is examiner suggestion?
the examiner can suggest interference
the examiner may require an applicant to provoke an interference by adding a claim that will conflict with another application or patent
when the examiner realizes another application is directed towards the same patentable invention or obvious variation thereof. if the filing date of applications are within 6 months of each other, then the interference may be proper. if outside of this timeframe, then the examiner may issue a provisional Section 102(e) rejection of the claims in the application with the later filing date because he earlier filed application will become prior art under when it’s published
