37 CFR 41.201 — Definitions

Ninth Edition, Revision 01.2024

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) .

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (2)(ii) of the definition of “Threshold issue” revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; definition of "Constructive reduction to practice" and para. (2)(ii) of the definition of "Threshold issue" revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]