2303.01 Issuance and Suspension [R-08.2017]
Since applicants may be eligible for patent term adjustments to offset delays in examination, pre-AIA 35 U.S.C. 154(b)(1), it is important that suspensions should rarely, if ever, be used and that applications with allowed claims be issued to the greatest extent possible.
Example 1
A claim of patent A and a claim of application B, which is subject to pre-AIA 35 U.S.C. 102(g), interfere. Examination of application B is completed. An interference may not be declared between two patents. See pre-AIA 35 U.S.C. 135(a). Consequently, the interfering claim in application B should not be passed to issue, even if it has an earlier effective filing date than patent A. Instead, an interference should be suggested.
Example 2
Two applications, C and D, which are both subject to pre-AIA 35 U.S.C. 102(g), with interfering claims are pending. Examination of application C is completed and all claims are allowable. Examination of application D is not completed. Application C should be issued promptly. If application C has an earlier effective U.S. filing date when issued as patent C, or when published as application publication C, it may be available as prior art under pre-AIA 35 U.S.C. 102(e), or where applicable pre-AIA 35 U.S.C. 102(g), against application D. However, even if application C’s effective filing date is later than application D’s effective filing date, application C should issue, assuming application D has not published as an application publication. Until examination of application D is completed, it is not known whether application D should be in interference with application C, so suspension of application C will rarely, if ever, be justified.
Example 3
Two applications, E and F, which are both subject to pre-AIA 35 U.S.C. 102(g), with interfering claims are pending. Both are ready to issue. (Such ties should be extremely rare; suspensions must not be used to create such ties.) If the applications have their earliest effective filing dates within six months of each other, then an interference may be suggested. If, however, application E’s earliest effective filing date is more than six months before application F’s earliest effective filing date, then application E should issue. If application E (or the resulting patent E) is available as prior art (under pre-AIA 35 U.S.C. 102(a) or 102(e), or where applicable pre-AIA 35 U.S.C. 102(g)) against application F, then a rejection should be made. If not, a requirement under 37 CFR 41.202(d) to show priority should be made. See MPEP § 2305.