Guidelines Setting Forth a Modified Policy
Concerning the Evidence of Common Ownership, or an
Obligation of Assignment to the Same Person, as
Required by 35 U.S.C. 103(c)
I. Summary
An earlier Official Gazette notice set forth the position of the United
States Patent and Trademark Office (USPTO) regarding interpretation and
implementation of the changes made to 35 U.S.C. 103(c) by the American
Inventors Protection Act of 1999 (hereinafter "AIPA").1 See "Guidelines
Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and
the Interpretation of the Term `Original Application' in the American
Inventors Protection Act of 1999," 1233 O.G. 54 (April 11, 2000)
(hereinafter "the Guidelines"). The Guidelines suggested several different
forms of evidence, based on 37 CFR 1.104(a)(5), to show common ownership
or an obligation of assignment to the same person, of the application and
the reference at the time the invention was made. In a rule change to
implement the eighteen-month publication provisions of the AIPA, 37 CFR
1.104(a)(5) was removed. See "Changes to Implement Eighteen-Month
Publication of Patent Applications; Final Rule," 65 FR 57023, 57033, 57056
(September 20, 2000).
This notice sets forth a modified policy concerning evidence of common
ownership, or an obligation of assignment to the same person, at the time
the invention was made. Henceforth, applications and references (whether
patents, patent applications, patent application publications, etc.) will
be considered by the examiner to be owned by, or subject to an obligation
of assignment to, the same person, at the time the invention was made, if
the applicant(s) or the attorney or agent of record makes a statement to
the effect that the application and the reference were, at the time the
invention was made, owned by, or subject to an obligation of assignment to,
the same person.
This new (modified) policy will apply when an applicant seeks to exclude
a reference available under 35 U.S.C. 102(e), (f) and/or (g) pursuant to 35
U.S.C. 103(c). This policy applies for applications filed on or after
November 29, 1999 where a reference available under 35 U.S.C. 102(e) is
sought to be excluded, and any application where a reference available
under only 35 U.S.C. 102 (f) and/or (g) is sought to be excluded.
A reference excluded under amended 35 U.S.C.103(c) may continue to serve
as the basis of a rejection under 35 USC 102(e), and serve as part of the
basis of a double patenting rejection.
II. Background
The AIPA amended 35 U.S.C. 103(c) to add that subject matter that only
qualifies as prior art under 35 U.S.C. 102(e) and that was commonly owned,
or subject to an obligation of assignment to the same person, at the time
the invention was made cannot be applied in a rejection under 35 U.S.C.
103(a). Section 4807 of the AIPA amended 35 U.S.C. 103(c) to read as
follows:
"(c) Subject matter developed by another person, which qualifies as
prior art only under one or more of subsections (e), (f), and (g) of
section 102 of this title, shall not preclude patentability under
this section where the subject matter and the claimed invention were,
at the time the invention was made, owned by the same person or
subject to an obligation of assignment to the same person."
This change to 103(c) applies to any patent application filed on or
after the date of enactment, November 29, 1999. See AIPA 4807(b). This
amendment to 103(c) does not apply to any application filed before
November 29, 1999, any request for examination under 37 CFR 1.129 of such
an application, nor any request for continued examination under 37 CFR
1.114 of such an application.
For the implementation of the change to 35 U.S.C. 103(c), the Guidelines
stated that:
Applications and patents will be considered by the examiner to be owned
by, or subject to an obligation of assignment to, the same person, at the
time the invention was made, if:
(a) the applicant provides evidence that the application and patent
files refer to assignments recorded in the PTO in accordance with 37
CFR 3.11 which convey the entire rights in the applications to the
same person(s) or organization(s) at the time of the invention;
(b) copies of unrecorded assignments which convey the entire rights
in the applications to the same person(s) or organization(s) at the
time of the invention are filed in each of the applications and
patents;
(c) an affidavit or declaration by the common owner is filed which
states that there was common ownership at the time the invention
was made and explains why the affiant believes there was common
ownership; or
(d) other evidence is submitted which establishes common ownership of
the applications and patents at the time the invention was made,
e.g., a court decision determining the owner.
The listing of the above-mentioned types of evidence was based on 37 CFR
1.104(a)(5), which has now been removed. See "Changes to Implement
Eighteen-Month Publication of Patent Applications; Final Rule," 65 FR
57023, 57033, 57056 (September 20, 2000).
III. Modified Policy on Evidence to Establish Common Ownership or an
Obligation for Assignment to the Same Person
The policy on what evidence is needed to establish common ownership, or
an obligation to the same person, set forth in the Guidelines (restated
above) is hereby replaced by the following policy:
Applications and references (whether patents, patent applications,
patent application publications, etc.) will be considered by the
examiner to be owned by, or subject to an obligation of assignment to
the same person, at the time the invention was made, if the
applicant(s) or an attorney or agent of record makes a statement to
the effect that the application and the reference were, at the time
the invention was made, owned by, or subject to an obligation of
assignment to, the same person.
This policy is being changed in order to simplify the examination and
processing of requests for the exclusion of prior art under 35 U.S.C.
103(c). The applicant(s) or the representative(s) of record have the best
knowledge of the ownership of their application(s) and reference(s), and
their statement of such is sufficient evidence because of their paramount
obligation of candor and good faith to the USPTO.
The statement concerning common ownership should be clear and
conspicuous (e.g. on a separate piece of paper or in a separately labeled
section) in order to ensure that the examiner quickly notices the
statement. Applicants may, but are not required to, submit further
evidence, such as assignment records, affidavits or declarations by the
common owner, or court decisions, in addition to the above-mentioned
statement concerning common ownership.
For example, an attorney or agent of record receives an Office action
for Application X in which all the claims are rejected under 35 U.S.C.
103(a) using Patent A in view of Patent B. In her response to the Office
action, the attorney or agent of record for Application X states, in a
clear and conspicuous manner, that:
"Application X and Patent A were, at the time the invention of
Application X was made, owned by Company Z."
This statement alone is sufficient evidence to disqualify Patent A from
being used in a rejection under 35 U.S.C. 103(a) against the claims of
Application X.
In rare instances, the examiner may have independent evidence that
raises a material doubt as to the accuracy of applicant's representation of
either (1) the common ownership of, or (2) the existence of an obligation
to commonly assign, the application being examined and the applied US
patent or US patent application publication reference. In such cases, the
examiner may explain why the accuracy of the representation is doubted,
and require objective evidence of common ownership of, or the existence of
an obligation to assign, the application being examined and the applied
reference as of the date of invention of the application being examined.
IV. The Interpretation of the Phrase "Same Person"
The phrase "same person" includes persons, organization(s) or
corporation(s). If an invention claimed in an application is owned by more
than one entity and those entities seek to exclude a reference's use under
35 U.S.C. 103, then the reference must be owned by, or subject to an
obligation of assignment to, the same entities that owned the application,
at the time the invention was made. For example, assume Company A owns
twenty percent of patent Application X and Company B owns eighty percent of
patent Application X at the time the invention of Application X was made.
In addition, assume that Companies A and B seek to exclude Reference Z's
use under 35 U.S.C. 103(a). Reference Z must have been co-owned, or been
under an obligation of assignment to both companies, on the date the
invention was made in order for the exclusion to be properly requested. A
statement such as "Application X and Patent Z were, at the time the
invention of Application X was made, jointly owned by Companies A and B"
would be sufficient evidence of common ownership.
For applications owned by a joint venture of two or more entities, both
the application and the reference must have been owned by, or subject to an
obligation of assignment to, the joint venture at the time the invention
was made. For example, if Company A and Company B formed a joint venture,
Company C, both Application X and Reference Z must have been owned by, or
subject to an obligation of assignment to, Company C at the time the
invention was made in order for Reference Z to be properly excluded as
prior art under 35 U.S.C. 103(c). If Company A by itself owned Reference Z
at the time the invention of Application X was made, a request for the
exclusion of Reference Z as prior art under 35 U.S.C. 103(c) would not be
proper.
V. Implementation and Effective Date of the Modified Policy
As stated above, this new (modified) policy will apply when an applicant
seeks to exclude a reference available under 35 U.S.C. 102(e), (f) and/or
(g) pursuant to 35 U.S.C. 103(c). This policy applies for applications
filed on or after November 29, 1999 where a reference available under 35
U.S.C. 102(e) is sought to be excluded, and any application where a
reference available under only 35 U.S.C. 102 (f) and/or (g) is sought to be
excluded.
The policy changes made by this notice are effective on the date of
publication of this notice, and shall be applied in any Office action
mailed on or after that date. If a reply by applicant filed before that
date has already been acted on by the Office, and applicant seeks
reconsideration in view of this notice, applicant should reassert the
evidence, e.g., a statement signed by a registered practitioner or by the
applicant, concerning entitlement to prior art exclusion in the previously
submitted reply in a timely submitted reply. This may be done by calling
attention to the contents of the previous reply or by incorporating the
previously submitted evidence in the next reply.
If an Office action includes a non-final rejection to certain claims
which is obviated by a reply based on a proper claim of entitlement to the
new exclusion, then a subsequent Office action should not be made final if
the action relies on newly applied prior art against the same claims.
If a final rejection of certain claims is obviated by a timely reply based
on a proper claim of entitlement to the new exclusion, then the Office
should acknowledge the reply by modifying the status of the claims.
For example, if the only rejection in the final rejection is obviated by
evidence demonstrating entitlement to exclude prior art under amended 35
USC 103(c) in the reply, the Office should indicate that the claims are
allowable, or prosecution should be reopened should the claims be
considered unpatentable in view of newly applied prior art. Applicant's
evidence concerning the exclusion are entitled to being considered even
after a final rejection has been made, since if the exclusion is
established, the propriety of the rejection is obviated as a matter of law.
Applicants should be aware, however, that the failure to submit evidence of
entitlement to exclude prior art following the first Office action
including the use of such prior art in a rejection under 35 U.S.C. 103(a)
may be considered by the Office as conduct that is considered to be a
failure to engage in reasonable efforts to conclude prosecution if such
prior art is thereafter excluded under 35 USC 103(c). See 37 CFR 1.704(c)
and See, Discussion of Comment 19, Changes To Implement Patent Term
Adjustment Under Twenty-Year Patent Term; Final Rule, 65 F. R. 56365, 79
(September 18, 2000).
FOR FURTHER INFORMATION CONTACT: Jeanne Clark or Robert Clarke, Legal
Advisors in the Office of Patent Legal Administration, by telephone at
(703) 305-1622, by fax at (703) 305-1013, or by e-mail addressed to
Jeanne.Clark@USPTO.gov or Robert.Clarke@USPTO.gov.
Stephen G. Kunin
Deputy Commissioner
for Patent Examination Policy
1 The American Inventors Protection Act of 1999 is a part of the conference
report (H. Rep. 106-479) on H.R. 3194, Consolidated Appropriations Act,
Fiscal Year 2000. The text of the American Inventors Protection Act of
1999 is contained in title IV of S. 1948, the Intellectual Property and
Communications Omnibus Reform Act of 1999 (Public Law 106-113). The
American Inventors Protection Act of 1999 was enacted on November 29, 1999.