2304.01 Preliminaries to Referring an Interference to the Board [R-4]
2304.01(a) Interference Search [R-4]
When an application is in condition for allowance, an interference search must be made by performing a text search of the "US-PGPUB" database in EAST or WEST directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists. If interfering subject matter does exist, the examiner will follow the guidance set forth in this chapter. If there is no interfering subject matter then the examiner should prepare the application for issuance. A printout of only the database(s) searched, the query(ies) used in the interference search, and the date the interference search was performed must be made of record in the application file. The results of the interference search must not be placed in the application file.
The search for interfering applications must not be limited to the class or subclass in which the application is classified, but must be extended to all classes, in and out of the Technology Center (TC), in which it has been necessary to search in the examination of the application. See MPEP § 1302.08.
2304.01(b) Obtaining Control Over Involved Files [R-4]
Ordinarily applications that are believed to interfere should be assigned to the same examiner.
I. IN DIFFERENT TECHNOLOGY CENTERS
If the interference would be between two applications, and the applications are assigned to different Technology Centers (TCs), then one application must be reassigned. Ordinarily the applications should both be assigned to the TC where the commonly claimed invention would be classified. After termination of the interference, further transfer may be appropriate depending on the outcome of the interference.
II. PAPERS NOT CONVERTED TO IMAGE FILE WRAPPER FILES
Although the official records for most applications have been converted into Image File Wrapper (IFW) files, some records exist only in paper form, particularly older benefit application files. Even IFW files may have artifact records that have not been converted. Complete patent and benefit files are necessary for determining whether benefit should be accorded for purposes of 35 U.S.C. 102 (g)(1). A suggested interference must not be referred to the Board of Patent Appeals and Interferences (Board) if all files, including benefit files, are not available to the examiner in either IFW format or paper.
If a paper file wrapper has been lost, it must be reconstructed before the interference is referred to the Board.
III. PATENT COOPERATION TREATY APPLICATION FILES
Generally, a separate application file for a Patent Cooperation Treaty (PCT) application is not required for according benefit because the PCT application is included in a national stage application file that is itself either the application involved in the interference or a benefit file. Occasionally, however, the PCT application file itself is required for benefit. For instance, if benefit is claimed to the PCT application, but not to a national stage application in which it is included, then the PCT application file must be obtained.
2304.01(c) Translation of Foreign Benefit Application [R-4]
A certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English is required. 35 U.S.C. 119 (b)(3) and 372 (b)(3) and 37 CFR 1.55 (a)(4). If no certified translation is in the official record for the application, the examiner must require the applicant to file a certified translation. The applicant should provide the required translation if applicant wants the application to be accorded benefit of the non-English language application. Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file. 37 CFR 41.154 (b) and 41.202 (e).
Form paragraph 23.19 may be used to notify applicant that a certified English translation of the priority document is required.
¶ 23.19 Foreign Priority Not Substantiated
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a) -(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
2304.01(d) Sorting Claims [R-4]
An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.
Interfering claims of an applicant are "conflicting claims" within the meaning of 37 CFR 1.78 (b). The examiner may require consolidation of such claims into any disclosure of the applicant that provides support for the claims. 35 U.S.C. 132 (a).
Similarly, the examiner should require an applicant to restrict an application to the interfering claims, 35 U.S.C. 121, in which case the applicant may file a divisional application for the claims that do not interfere.
Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112, first paragraph for the claim.