USPTO Announces New Interference Search Procedure

On July 19, 2005, the U.S. Patent and Trademark office announced a new procedure, effective June 21, 2005, for conducting "intereference searches" in order to ascertain whether any other applicant is claiming substantially the same subject matter as is being allowed in application being searched. Under the new procedure,

[w]hen an application is in condition for allowance, examiners will make an interference search by performing a text search of the U.S. patent application publication database directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to nucleotide or peptide sequence, an interference search of the sequence database will be made. 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 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 will be made of record in the application file. The results of the interference search will not be placed in the application file.

The new interference search procedure will be incorporated in the upcoming revision of the MPEP. The Office recognizes that for interference purposes, a text search should encompass the claims of all pending U.S. applications and recently issued U.S. patents within a certain range of effective filing dates. However, since the Image File Wrapper (IFW) system does not provide for a text-searchable database encompassing unpublished pending applications, examiners currently can only perform a text search of the PGPub database as set forth above.

It is expected that in the future, there will be a new system that will permit text searches of pending unpublished applications. Once the new system is fully implemented, the interference search procedure will be revised accordingly and notice will be given as to any changes made.

Under the old intereference search procedures, examiners merely inspected all the pending prints and drawings (or all the claims if the invention is not susceptible of illustration) in the "interference files" of the relevant subclasses of the class in which the application is classified, and all other pertinent classes, whether in his or her Technology Center (TC) or elsewhere. When any of the drawings or claims shows such a condition to be likely, the corresponding file was then reviewed.

The "first-to-invent" aspect of the U.S. patent system has long been a bone of contention for the international harmonization of the patent system. Under the current U.S. procedure, interferences will not be declared between pending applications if there is a difference of more than 3 months in the effective filing dates of the oldest and the next oldest applications, in the case of inventions of a simple character, or a difference of more than 6 months in the effective filing dates of the applications in other cases, except in exceptional situations, as determined and approved by the Director. One such exceptional situation would be where one application has the earliest effective filing date based on foreign priority and the other application has the earliest effective United States filing date.

Each of the interefering applications must contain a claim to the same patentable invention (as defined in 37 CFR 1.601(n)) and each of those claims must be clearly readable upon the disclosure of that party and allowable in its application. If the applications each contain at least one claim drawn to the same patentable invention (37 CFR 1.601(n)), the examiner proceeds to propose the interference; otherwise, "one or more claims must be suggested to some or all of the parties" under MPEP § 2305. However, since two applications do not have to contain an identical claim in order to be placed in interference, the suggestion of a claim is not normally necessary.

Once an interference is declared involving an application, ex parte prosecution of the application is suspended, and the applicant need not reply to any USPTO action outstanding as of the date the interference is declared.