2146.01 Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) [R-01.2024]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

I. COMMON OWNERSHIP OR ASSIGNEE PRIOR ART DISQUALIFICATION UNDER PRE-AIA 35 U.S.C. 103(c)

Enacted on November 29, 1999, the American Inventors Protection Act (AIPA) added subject matter which was prior art under former 35 U.S.C. 103(a) via pre-AIA 35 U.S.C. 102(e) as disqualified prior art against the claimed invention if that 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.” The 1999 change to pre-AIA 35 U.S.C. 103(c) applied to all utility, design and plant patent applications filed on or after November 29, 1999. The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act), in part, redesignated the former 35 U.S.C. 103(c) to pre-AIA 35 U.S.C. 103(c)(1) and made this provision effective to all applications in which the patent is granted on or after December 10, 2004, but the AIA provides that certain applications are subject to the current 35 U.S.C. 102 and 103, see MPEP § 2159. Therefore, the provision of pre-AIA 35 U.S.C.103(c)(1) is effective for all applications (utility, design, plant and reissue) pending on or after December 10, 2004, including applications filed prior to November 29, 1999, except those applications subject to the current 35 U.S.C. 102 and 103. The amendment to pre-AIA 35 U.S.C. 103(c)(1) does not affect any application filed before November 29, 1999 and issued as a patent prior to December 10, 2004. See MPEP § 2159.

In a reexamination proceeding, however, one must look at whether or not the patent being reexamined was granted on or after December 10, 2004, and whether the patent is subject the current 35 U.S.C. 102 to determine whether pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, applies. For a reexamination proceeding of a patent granted prior to December 10, 2004, on an application filed on or after November 29, 1999, it is the 1999 changes to pre-AIA 35 U.S.C. 103(c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of pre-AIA 35 U.S.C. 103(c). For a reexamination proceeding of a patent granted prior to December 10, 2004, on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) used in a rejection under pre-AIA 35 U.S.C. 103(a) may be disqualified under the commonly assigned/owned prior art provisions of 35 U.S.C. 103(c).

For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue is being sought, if the claims were amended or cancelled to overcome a rejection under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e) which was not able to be disqualified under pre-AIA 35 U.S.C. 103(c) in the application that issued as a patent. If an examiner determines that this situation applies in the reissue application under examination, a consultation with the Office of Patent Legal Administration should be initiated via the Technology Center Quality Assurance Specialist.

Pre-AIA 35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103(a). Subject matter that qualifies as anticipatory prior art under pre-AIA 35 U.S.C. 102 is not affected, and may still be used to reject claims as being anticipated. In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP § 804.

The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject matter. For example, the fact that the reference and the application have the same assignee is not, by itself, sufficient to disqualify the prior art under pre-AIA 35 U.S.C. 103(c). There must be a statement that the common ownership was “at the time the invention was made.”

See MPEP § 2146.02 for information regarding establishing common ownership. See MPEP § 2146.03 for examination procedure with respect to pre-AIA 35 U.S.C. 103(c).

II. JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER PRE-AIA 35 U.S.C. 103(c) BY THE CREATE ACT

The CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)) was enacted on December 10, 2004, and is effective for applications for which the patent is granted on or after December 10, 2004, except those patents subject to the current 35 U.S.C. 102 and 35 U.S.C. 103. Specifically, the CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that:

- subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of pre-AIA 35 U.S.C. 102 shall not preclude patentability under 35 U.S.C. 103 where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person;

- for purposes of 35 U.S.C. 103, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if

• - the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made,

• - the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and

• - the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement;

- for purposes of pre-AIA 35 U.S.C. 103(c), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, development, or research work in the field of the claimed invention.

The effective date provision of the CREATE Act provided that its amendments shall apply to any patent (including any reissue patent) granted on or after December 10, 2004, except those patents subject to the current 35 U.S.C. 102 and 103. The CREATE Act also provided that its amendment shall not affect any final decision of a court or the Office rendered before December 10, 2004, and shall not affect the right of any party in any action pending before the Office or a court on December 10, 2004, to have that party’s rights determined on the basis of the provisions of title 35, United States Code, in effect on December 9, 2004. Since the CREATE Act also includes the amendment to pre-AIA 35 U.S.C. 103(c) made by section 4807 of the AIPA (see Public Law 106-113, 113 Stat. 1501, 1501A-591 (1999)), the change of “subsection (f) or (g)” to “one or more of subsections (e), (f), or (g)” in pre-AIA 35 U.S.C. 103(c) is now also applicable to applications filed prior to November 29, 1999, that were pending on December 10, 2004.

Pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, continues to apply only to subject matter which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g), and which is being relied upon in a rejection under pre-AIA 35 U.S.C. 103(a). If the rejection is anticipation under pre-AIA 35 U.S.C. 102(e), (f), or (g), pre-AIA 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. Likewise, pre-AIA 35 U.S.C. 103(c) cannot be relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78(c) and MPEP § 804.

Because the CREATE Act applies only to patents granted on or after December 10, 2004, the recapture doctrine may prevent the presentation of claims in the reissue applications that had been amended or cancelled (e.g., to avoid a rejection under pre-AIA 35 U.S.C. 103(a) based on subject matter that may now be disqualified under the CREATE Act) during the prosecution of the application which resulted in the patent being reissued.

2146.02 Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) [R-01.2024]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

In order to be disqualified as prior art under pre-AIA 35 U.S.C. 103(c), the subject matter which would otherwise qualify as pre-AIA 35 U.S.C. 102(e), (f), or (g) prior art to the claimed invention and the claimed invention must be commonly owned, or subject to an obligation of assignment to the same person, at the time the claimed invention was made or be subject to a joint research agreement at the time the invention was made. See MPEP § 2146 for rejections under pre-AIA 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g) and prior art disqualified under pre-AIA 35 U.S.C. 103(c) in applications granted as patents prior to December 10, 2004. See MPEP § 2146.01 for rejections under pre-AIA 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g), and prior art disqualified under pre-AIA 35 U.S.C. 103(c).

I. DEFINITION OF COMMON OWNERSHIP UNDER PRE-AIA 35 U.S.C. 103(c)

The term “commonly owned” is intended to mean that the subject matter which would otherwise pre-AIA 35 U.S.C. 102(e), (f), or (g) prior art to the claimed invention and the claimed invention are entirely or wholly owned by, or under an obligation to assign to, the same person(s) or organization(s)/business entity(ies). For purposes of pre-AIA 35 U.S.C. 103(c), common ownership must be at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise pre-AIA 35 U.S.C. 102(e), (f), or (g) prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention.

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to disqualify the use of a reference as prior art under pre-AIA 35 U.S.C. 103(c), 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 later 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 disqualify Reference Z as prior art under pre-AIA 35 U.S.C. 103(c). Reference Z must have been co-owned, or have been under an obligation of assignment to both companies, on the date the invention was made in order for the disqualification 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 to establish 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 disqualified as prior art under pre-AIA 35 U.S.C. 103(c). If Company A by itself owned Reference Z at the time the invention of Application X was made and Application X was owned by Company C on the date the invention was made, then disqualification of Reference Z as prior art under pre-AIA 35 U.S.C. 103(c) would not be proper.

As long as principal ownership rights to either the subject matter or the claimed invention under examination reside in different persons or organizations, common ownership does not exist. A license of the claimed invention under examination to another by the owner where basic ownership rights are retained would not defeat ownership.

The requirement for common ownership at the time the claimed invention was made is intended to preclude obtaining ownership of subject matter after the claimed invention was made in order to disqualify that subject matter as prior art against the claimed invention.

The question of whether common ownership exists at the time the claimed invention was made is to be determined on the facts of the particular case in question. Actual ownership of the subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence at the time the claimed invention was made in order for the subject matter to be disqualified as prior art. A moral or unenforceable obligation would not provide the basis for common ownership.

Under pre-AIA 35 U.S.C. 103(c), an applicant’s admission that subject matter was developed prior to the invention would not make the subject matter prior art to the application for obviousness analysis if the subject matter qualifies as prior art only under sections pre-AIA 35 U.S.C. 102(e), (f), or (g), and if the subject matter and the claimed invention were commonly owned at the time the invention was made. See In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982), for a decision involving an applicant’s admission which was used as prior art against their application. If the subject matter and invention were not commonly owned, an admission that the subject matter is prior art would be usable under pre-AIA 35 U.S.C. 103.

The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) is intended to be placed and reside upon the person or persons urging that the subject matter is disqualified. For example, a patent applicant urging that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c), would have the burden of establishing that it was commonly owned at the time the claimed invention was made. To place the burden upon the patent examiner or the defendant in litigation would not be appropriate since evidence as to common ownership at the time the claimed invention was made might not be available to the patent examiner or the defendant in litigation, but such evidence, if it exists, should be readily available to the patent applicant or the patentee.

In view of pre-AIA 35 U.S.C. 103(c), the Director has reinstituted in appropriate circumstances the practice of rejecting claims in commonly owned applications of different inventive entities on the grounds of nonstatutory double patenting. Such rejections can be overcome in appropriate circumstances by the filing of terminal disclaimers. This practice has been judicially authorized. See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA 1966). The use of nonstatutory double patenting rejections which then could be overcome by terminal disclaimers precludes patent protection from being improperly extended while still permitting inventors and their assignees to obtain the legitimate benefits from their contributions. See also MPEP §§ 804 and 1490, subsection VI.

The following examples are provided for illustration only:

The examiner must examine the application as to all grounds except pre-AIA 35 U.S.C. 102(e), (f) and (g) as they apply through pre-AIA 35 U.S.C. 103(a) only if the application file(s) establishes common ownership at the time the later invention was made. Thus, it is necessary to look to the time at which common ownership exists. If common ownership does not exist at the time the later invention was made, the earlier invention is not disqualified as potential prior art under pre-AIA 35 U.S.C. 102(e), (f) and (g) as they apply through pre-AIA 35 U.S.C. 103(a). An invention is “made” when conception is complete as defined in Mergenthaler v. Scudder, 11 App. D.C. 264, 81 OG 1417, 1897 C.D. 724 (D.C. Cir. 1897); In re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958). See Pfaff v. Wells Elecs., 525 U.S. 55, 48 USPQ2d 1641, 1647 (1998) (“the invention must be ready for patenting . . . . by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.”) Common ownership at the time the invention was made for purposes of obviating a rejection under pre-AIA 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) may be established irrespective of whether the invention was made in the United States or abroad. The provisions of pre-AIA 35 U.S.C. 104, however, will continue to apply to other proceedings in the U.S. Patent and Trademark Office, e.g. in an interference proceeding, with regard to establishing a date of invention by knowledge or use thereof, or other activity with respect thereto, in a foreign country, except the provisions do not apply to applications subject to the current 35 U.S.C. 102 as pre-AIA 35 U.S.C. 104 was repealed effective March 16, 2013. The foreign filing date will continue to be used for interference purposes under 35 U.S.C. 119(a) - (d) and 35 U.S.C. 365.

II. REQUIREMENTS TO ESTABLISH COMMON OWNERSHIP

It is important to recognize what constitutes a sufficient submission to establish common ownership at the time the invention was made. Common ownership must be shown to exist at the time the later invention was made. A statement of present common ownership is not sufficient. In re Onda, 229 USPQ 235 (Comm’r Pat. 1985).

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 patent owner(s) make(s) 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. The statement must be signed in accordance with 37 CFR 1.33(b). See “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),” 1241 OG 96 (December 26, 2000). The applicant(s) or the representative(s) have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient 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) to ensure the examiner notices the statement. Applicants or patent owners 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 pre-AIA 35 U.S.C. 103(a) using Patent A in view of Patent B wherein Patent A is only available as prior art under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). In 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 to disqualify Patent A from being used in a rejection under pre-AIA 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 U.S. patent or U.S. patent application publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted. The examiner may also 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. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

As mentioned above, applicant(s) or patent owner(s) may submit, in addition to the above-mentioned statement regarding common ownership, the following objective evidence:

• (A) Reference to assignments, which are recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3, and which convey the entire rights in the applications to the same person(s) or organization(s);
• (B) Copies of unrecorded assignments which convey the entire rights in the applications to the same person(s) or organization(s), and which are filed in each of the applications;
• (C) An affidavit or declaration by the common owner, which is filed in the application or patent, and which states that there is common ownership, states facts which explain why the affiant or declarant believes there is common ownership, and is properly signed (i.e., the affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization); and
• (D) Other evidence, which is submitted in the application or patent, and which establishes common ownership.

III. REQUIREMENTS TO ESTABLISH A JOINT RESEARCH AGREEMENT

Once an examiner has established a prima facie case of obviousness under pre-AIA 35 U.S.C. 103(a), the burden of overcoming the rejection by invoking the joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act is on the applicant or the patentee. Pre-AIA 35 U.S.C. 103(c)(3) defines a “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention, that was in effect on or before the date the claimed invention (under examination or reexamination) was made.

Like the common ownership or assignment provision, the joint research agreement must be shown to be in effect on or before the time the later invention was made. The joint research agreement may be in effect prior to the effective date (December 10, 2004) of the CREATE Act. In addition, the joint research agreement is NOT required to be in effect on or before the prior art date of the reference that is sought to be disqualified.

To overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon subject matter (whether a patent document, publication, or other evidence) which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g) via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.

37 CFR 1.71(g) provides for the situation in which an application discloses or is amended to disclose the names of the parties to a joint research agreement. 37 CFR 1.71(g)(1) specifically provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement because this information is required by 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2)(C).

37 CFR1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.

37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted (in a patent granted on or after December 10, 2004). It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to take advantage of pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act. See H.R. Rep. No. 108-425, at 9 (“[t]he omission of the names of parties to the agreement is not an error that would justify commencement of a reissue or reexamination proceeding”).

The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a U.S. patent which qualifies as prior art only under pre-AIA 35 U.S.C. 102(e), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a nonstatutory double patenting rejection).

If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a U.S. patent or U.S. patent application publication which qualifies as prior art only under pre-AIA 35 U.S.C. 102(e), and the examiner withdraws the rejection under pre-AIA 35 U.S.C. 103(a), the examiner may need to issue an Office action containing a new nonstatutory double patenting rejection based upon the disqualified patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new nonstatutory double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art disqualification under the CREATE Act. 37 CFR 1.104(c)(5) sets forth the requirement for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of pre-AIA 35 U.S.C. 103(c)(3), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As is the case with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.

If the applicant disqualifies the subject matter relied upon by the examiner in accordance with pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act and the procedures set forth in the rules, the examiner will treat the application under examination and the pre-AIA 35 U.S.C. 102(e), (f), or (g) prior art as if they are commonly owned for purposes of pre-AIA 35 U.S.C. 103(a).

The following examples are provided for illustration only:

2146.03 Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c) [R-01.2024]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if the reference is disqualified under pre-AIA 35 U.S.C. 103(c). Generally, such a reference is only disqualified when

• (A) a proper submission is filed,
• (B) the reference only qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) (e.g., not pre-AIA 35 U.S.C. 102(a) or (b)), and
• (C) the reference was used in an obviousness rejection under pre-AIA 35 U.S.C. 103(a).

Applications and patents will be considered 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 patent owner(s) make(s) 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(s) or organization(s). In order to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a reference which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g), via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.

See MPEP § 2146.02 for additional information pertaining to establishing common ownership.

I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED

If the application file being examined has not established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c), the examiner will:

• (A) assume the reference is not disqualified under pre-AIA 35 U.S.C. 103(c);
• (B) examine the application on all grounds other than any conflict between the reference patent(s) or application(s) arising from a possible 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g);
• (C) consider the applicability of any references under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g), including provisional rejections under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) (see MPEP § 2146.03(a)); and
• (D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 103(a), including any rejections under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g), until such time that the reference is disqualified under pre-AIA 35 U.S.C. 103(c).

When applying any references that qualify as prior art under pre-AIA 35 U.S.C. 102(e) in a rejection under 35 U.S.C. 103(a) against the claims, the examiner should anticipate that the reference may be disqualified under pre-AIA 35 U.S.C. 103(c) and consider making an appropriate additional, alternative rejection. See MPEP § 2120, subsection I. If a statement of common ownership or assignment is filed in reply to the 35 U.S.C. 103(a) rejection based on prior art under pre-AIA 35 U.S.C. 102(e) and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP § 706.07(a). If the reference is disqualified under the joint research agreement provision of pre-AIA 35 U.S.C. 103(c) and a new subsequent nonstatutory double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new nonstatutory double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new nonstatutory double patenting rejection was necessitated by amendment of the application by applicant.

II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED

If the application being examined has established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) the examiner will:

• (A) examine the applications as to all grounds, except pre-AIA 35 U.S.C. 102(e), (f) and (g) including provisional rejections based on provisional prior art under pre-AIA 35 U.S.C. 102(e), as they apply through 35 U.S.C. 103(a);
• (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate; and
• (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).

III. DOUBLE PATENTING REJECTIONS

Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application, subject to the conditions discussed in MPEP § 804et seq. In addition, a double patenting rejection may arise as a result of the amendment to pre-AIA 35 U.S.C. 103(c) by the CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003). For purposes of double patenting analysis, the application or patent and the subject matter disqualified under pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned.

A rejection based on a pending application would be a provisional rejection. The practice of rejecting claims on the ground of nonstatutory double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on nonstatutory double patenting issues. In accordance with established patent law doctrines, nonstatutory double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. For a nonstatutory double patenting rejection based on a non-commonly owned patent (treated as if commonly owned pursuant to the CREATE Act), the nonstatutory double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804, 804.02 and 1490, subsection VI.