Issuance and Suspension

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

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

.