Other Outstanding Issues with Patents

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

, 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.

[top]