In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart:
Accord benefit means Board recognition that a patent application provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).
Constructive reduction to practice means a described and enabled anticipation under 35 U.S.C. 102(g)(1), in a patent application of the subject matter of a count. Earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must comply with the requirements of 35 U.S.C. 119-121, 365, or 386.
Count means the Board's description of the interfering subject matter that sets the scope of admissible proofs on priority. Where there is more than one count, each count must describe a patentably distinct invention.
Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim that has been designated as corresponding to the count.
Senior party means the party entitled to the presumption under § 41.207(a)(1) that it is the prior inventor. Any other party is a junior party.
Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include:
(1) No interference-in-fact, and
(2) In the case of an involved application claim first made after the publication of the movant's application or issuance of the movant's patent:
(i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or published application, or
(ii) Unpatentability for lack of written description under 35 U.S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012; 80 FR 17971, Apr. 2, 2015]
Notes of Decisions
Spine v. Biedermann Motech Gmbh, 684 F. Supp. 2d 68 (D.D.C. 2010).
· cites it 3× “” 37 C.F.R. § 41.201 . “Where there is more than one count, each count must describe a patent-ably distinct invention.”
Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017).
“” 37 C.F.R. § 41.201 . “When a party to an interference seeks the benefit *1345 of an earlier-filed United States patent application, the earlier application must meet the requirements of 35 U.”
Bamberg v. Dalvey, 815 F.3d 793 (Fed. Cir. 2016).
“See 37 CFR § 41.201 (2)(ii). The Board also denied Bamberg’s motion to amend because Bamberg failed to provide a claim chart as required by 37 C.”
Abbott GmbH & Co. v. Centocor Ortho Biotech, Inc., 870 F. Supp. 2d 206 (D. Mass. 2012).
“” 37 C.F.R. § 41.201 . It “corresponds to a patentable invention” and “may be identical to a single claim at issue or may be broader than the particular claims at issue.”
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 670 F.3d 1171 (Fed. Cir. 2012).
· cites it 2× “The only count, which is "the Board's description of the interfering subject matter that sets the scope of admissible proofs on priority," 37 C.F.R. § 41.201 , from the Interference relevant to this case states: An artificial vascular prosthesis comprising expanded, porous,…”
Tobinick v. Olmarker, 753 F.3d 1220 (Fed. Cir. 2014).
“See 37 C.F.R. § 41.201 (2)(ii). On appeal, the parties dispute the meaning of “administered locally” and whether Tobinick’s patent application contains written description support for this claim limitation.”
Cytologic, Inc. v. Biopheresis Gmbh, 682 F. Supp. 2d 1 (D.D.C. 2010).
“2002); see also 37 C.F.R. § 41.201 . “[Ejection 135(b) was enforced to codify a legal principle akin to laches, imposing ‘a statute of limitations, so to speak, on interferences so that the patentee might be more secure in his property right.”
Human Genome Sciences, Inc. v. Amgen, Inc., 553 F. Supp. 2d 353 (D. Del. 2008).
· cites it 4× “pdf)); 37 C.F.R. § 41.201 ("Count means the Board’s description of the interfering subject matter that sets the scope of admissible proofs on priority.”
McMullin v. Carroll, 153 F. App'x 738 (Fed. Cir. 2005).
· cites it 2× “Under the Board’s regulations, when an interference is declared between an issued patent and an application, one of the preliminary issues is whether the application contains written description support for the claims at issue in the interference. If it does not, the applicant…”
Stryker Spine v. Biedermann Motech GmbH, 750 F. Supp. 2d 107 (D.D.C. 2010).
· cites it 2× “” 37 C.F.R. § 41.201 . Therefore, a party moving to redefine the interfering subject matter by dividing an existing count into two separate counts must establish that the existing count embodies two patentably distinct inventions.”
Streck, Inc. v. Rsch. & Diagnostic Sys., Inc., 744 F. Supp. 2d 970 (D. Neb. 2010).
“37 C.F.R. § 41.201 . Count 1, the sole count in the Interference Action, is identical to claim 46 of R & D’s application and to claim 1 of the Streck '668 patent.”
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