2303.02 Other Outstanding Issues with Patents [R-08.2017]
Patents that are undergoing reexamination or reissue are subject to the requirement of 37 CFR 41.102 that examination be completed. Patents may, however, be the subject of other proceedings before the Office. For instance, a patent may be the subject of a petition to accept a late maintenance fee in accordance with 35 U.S.C. 41(c), or a request for disclaimer or correction. See pre-AIA 35 U.S.C. 253, 35 U.S.C. 254, 35 U.S.C. 255, and pre-AIA 35 U.S.C. 256. Such issues ordinarily must be resolved before an interference is suggested because they may affect whether or how an interference may be declared. Similarly, any administrative trial ordinarily must be resolved before an interference is suggested.
Example 1
A patent maintenance fee has not been timely paid. By operation of law, 35 U.S.C. 41(b), the patent is considered to be expired. An interference cannot be declared with an expired patent. See pre-AIA 35 U.S.C. 135(a). Consequently, if a petition to accept delayed payment is not granted in accordance with 37 CFR 1.378, then no interference can be declared.
Example 2
A statutory disclaimer under pre-AIA 35 U.S.C. 253, is filed for the sole patent claim directed to the same invention as the claims of the applicant. Since the patentee and applicant must both have claims to the same invention, in accordance with pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Example 3
Similar to Example 2, a request for correction under 35 U.S.C. 254 or 255, is filed that results in a change to the sole patent claim such that it is no longer directed to the same invention as any claim of the applicant. Again, since the patentee and applicant must both have claims to the same invention, pre-AIA 35 U.S.C. 102(g)(1), no interference can be declared.
Example 4
Inventorship is corrected such that the inventors for the patent and the application are the same. Because pre-AIA 35 U.S.C. 102(g)(1) requires the interference to be with “another inventor,” the correction eliminates the basis for an interference. Other rejections, such as a double-patenting rejection may be appropriate.