2154.01(a) WIPO Published Applications [R-01.2024]

[Editor Note: This MPEP section is only 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 § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

The WIPO publication of a PCT international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C. 374. Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States. Accordingly, a U.S. patent, a U.S. patent application publication, or a WIPO published application that names another inventor and was effectively filed before the effective filing date of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2), unless an exception under AIA 35 U.S.C. 102(b)(2) applies. This differs from the treatment of a WIPO published application under pre-AIA 35 U.S.C. 102(e), where a WIPO published application is treated as a U.S. patent application publication only if the PCT application was filed on or after November 29, 2000, designated the United States, and is published under PCT Article 21(2) in the English language. See MPEP § 2136.03, subsection II.

2154.01(b) Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d) [R-01.2024]

[Editor Note: This MPEP section is only 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 § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the filing date of a prior application to which there is a priority or benefit claim (AIA 35 U.S.C. 102(d)(2)). For prior art determinations under AIA 35 U.S.C. 102, a reference patent document need only meet the “ministerial requirements” of 35 U.S.C. 119 and 120, and the provisional or other earlier application(s) to which the reference patent document claims a right of priority or benefit must “describe[] the subject matter” relied upon in the reference patent document as prior art. Penumbra, Inc. v. RapidPulse, Inc., 2023 USPQ2d 292, IPR2021-01466, Paper 34 (March 10, 2023) (precedential as to section II.E.3). The “ministerial requirements” of 35 U.S.C. 119 and 120 are: (1) containing a priority or benefit claim to the prior-filed application; (2) being filed within the applicable filing period requirement (copending with or within twelve months of the earlier filing, as applicable); and (3) having a common inventor or joint inventor or being by the same applicant. See MPEP § 211et. seq.

The AIA draws a distinction between actually being entitled to priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or the benefit of, a prior-filed application according to the use of “effectively filed” in AIA 35 U.S.C. 102(d). As a result of this distinction, the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was “effectively filed” for prior art purposes. Thus, there is no need to evaluate whether any claim of a U.S. patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120, 121, 365, or 386 when applying such a document as prior art. “[T]he requirement that one of the claims in the patent [document] . . . be supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph (or AIA 35 U.S.C. § 112(a)) is not applicable when examining an application subject to the first inventor to file provisions of the AIA.” Penumbra, 2023 USPQ2d at 15 (emphasis added) (quoting Memorandum re: Critical Reference Date Under pre-AIA 35 U.S.C. § 102(e) (April 5, 2018)). In other words, the requirement stated in Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) does not apply to AIA 35 U.S.C. 102(d). See MPEP § 2136.03 for the reference date under pre-AIA 35 U.S.C. 102(e) of U.S. patents, U.S. application publications, and international application publications entitled to the benefit of the filing date of prior application under 35 U.S.C. 119(e), 120, 121, or 365(c).

AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection. However, AIA 35 U.S.C. 102(d) does not require that this description meet the enablement requirements of 35 U.S.C. 112(a). As discussed previously with respect to AIA 35 U.S.C. 102(a)(1), the Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under AIA 35 U.S.C. 102.

The AIA also eliminates the so-called Hilmer doctrine. Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). In contrast, AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, the U.S. patent document is effective as prior art as of the filing date of the earliest such application, regardless of where filed. When examining an application to which the AIA changes in 35 U.S.C. 102 and 103 do not apply, Office personnel will continue to apply the Hilmer doctrine, and foreign priority dates may not be used in determining pre-AIA 35 U.S.C. 102(e) prior art dates. Note that the international filing date of a published PCT application may be the pre-AIA 35 U.S.C. 102(e) prior art date under pre-AIA law under certain circumstances. See MPEP § 2136.

2154.01(c) Requirement Of “Names Another Inventor” [R-11.2013]

[Editor Note: This MPEP section is only 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 § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

To qualify as prior art under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) must “name[ ] another inventor.” This means that if there is any difference in inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination, the U.S. patent document satisfies the “names another inventor” requirement of AIA 35 U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one joint inventor needs to be different for the inventive entities to be different. Even if there are one or more joint inventors in common in a U.S. patent document and the later-filed application under examination or patent under reexamination, the U.S. patent document qualifies as prior art under AIA 35 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.

2154.01(d) Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application [R-01.2024]

If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made. In addition, a provisional rejection under 35 U.S.C. 102(a)(2) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.

I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON (JOINT) INVENTOR OR COMMON APPLICANT OR ARE COMMONLY ASSIGNED

If a first application has (1) at least one common (joint) inventor or common applicant with a second application or the applications are commonly assigned, and (2) the first application, upon publication or issuance, would qualify as prior art under 35 U.S.C. 102(a)(2) to the second application, then a provisional anticipation or obviousness rejection of the second application may be made on the basis of the first application. Since the first application is not published or issued at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(a)(2) or 103.

A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.

Form paragraph 7.15.01.aia should be used when making a provisional rejection under 35 U.S.C. 102(a)(2).

II. COPENDING APPLICATIONS HAVING NO COMMON (JOINT) INVENTOR, APPLICANT, OR ASSIGNEE

If there is no common assignee, common applicant, or common (joint) inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the first (earlier filed), unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the first application will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent has issued, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) in the still pending application as appropriate. See MPEP §§ 2120.01 and 2154.

2154.02(a) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception) [R-01.2024]

[Editor Note: This MPEP section is only 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 § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

AIA 35 U.S.C. 102(b)(2)(A) provides an exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). This exception limits the use of an inventor's or at least one joint inventor’s own work as prior art, when the inventor's or at least one joint inventor’s own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The AIA 35 U.S.C. 102(b)(2)(A) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(A) exception.

Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) is excepted as prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration of attribution under 37 CFR 1.130(a) that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2). MPEP § 2155.03 discusses the use of affidavits or declarations of attribution under 37 CFR 1.130(a) to show that the disclosure was by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(2)(A) for an inventor-originated disclosure.

Applicants can include a statement regarding any inventor-originated disclosures made in U.S. patent documents in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that an inventor-originated disclosure made in a U.S. patent document is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(A) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(a). See MPEP §§ 717.01(a)(1) , 2155.01, and 2155.03. An applicant is not required to identify any inventor-originated disclosure made in a U.S. patent document or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated disclosure made in a U.S. patent document, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the inventor-originated disclosure made in the U.S. patent document is attributable to the inventor or a joint inventor, provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant should also provide a copy of the inventor-originated disclosure made in a U.S. patent document (e.g., a copy of a U.S. patent application). Applicants may not use 37 CFR 1.77(b)(6) to add information about inventor-originated disclosures made in U.S. patent documents to the specification after the date that the application is filed. Applicants should use 37 CFR 1.130(a) to submit such information after filing.

2154.02(b) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Prior Public Disclosure Exception) [R-01.2024]

[Editor Note: This MPEP section is only 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 § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

AIA 35 U.S.C. 102(b)(2)(B) provides a second exception to prior art under AIA 35 U.S.C. 102(a)(2). This provision excepts as prior art subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The AIA 35 U.S.C. 102(b)(2)(B) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.

Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”)) is excepted as prior art if the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. If a previous inventor-originated public disclosure is not within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could not be excepted under AIA 35 U.S.C. 102(b)(1). MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). The subject matter in the prior disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the same "subject matter" as the subject matter previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) to apply. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed. The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had publicly disclosed A, B, and C, and a subsequent intervening U.S. patent document discloses A, B, C, and D, then D of the intervening U.S. patent document remains available as prior art under AIA 35 U.S.C. 102(a)(2). In other words, the exception in AIA 35 U.S.C. 102(b)(2)(B) does not necessarily remove the entire disclosure in the intervening reference from being prior art.

In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent document. To hold otherwise would unfairly deprive an inventor of a patent merely because a third party became aware of the inventor’s public disclosure and then filed a patent application disclosing a genericized version of it. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2) because the “subject matter disclosed” requirement of AIA 35 U.S.C. 102(b)(2)(B) would not have been met.

Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent document. The only inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1) , 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

2154.02(c) Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment) [R-01.2024]

[Editor Note: This MPEP section is only 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 § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

AIA 35 U.S.C. 102(b)(2)(C) provides a third exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) from constituting prior art under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.” The AIA 35 U.S.C. 102(b)(2)(C) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(C) exception.

AIA 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership, and offer an avenue by which an applicant may avoid certain disclosures that are commonly owned or deemed commonly owned. However, there are significant differences between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c). If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent document that might otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) is not available as prior art under either AIA 35 U.S.C. 102 or 103. This differs from pre-AIA 35 U.S.C. 103(c) in which prior art can preclude patentability under pre-AIA 35 U.S.C. 102, even if the conditions of pre-AIA 35 U.S.C. 103(c) are met. The consequence of this distinction is that a published application or an issued patent that falls under the common ownership exception of AIA 35 U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or an obviousness rejection.

It is important to note the circumstances in which the AIA 35 U.S.C. 102(b)(2)(C) exception does not remove a U.S. patent document as a basis for a rejection. The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective filing date of the claimed invention). Thus, if the publication date or issue date of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership or the existence of an obligation to assign. Also, even if a U.S. patent or U.S. published application is not prior art under AIA 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C. 102(b)(2)(C), a double patenting rejection (either statutory under 35 U.S.C. 101 or non-statutory, sometimes called obviousness-type) may still be made on the basis of the claims of the U.S. patent or U.S. patent application publication. Furthermore, the U.S. patent document that does not qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may still be cited, in appropriate situations, to indicate the state of the art when making a lack of enablement rejection under 35 U.S.C. 112(a). A document does not need to qualify as prior art in order for its claims to provide the basis for a statutory or nonstatutory double patenting rejection. See, for example, MPEP § 804.03. However, a secondary reference used in a nonstatutory double patenting rejection must be prior art; thus, when the AIA 35 U.S.C. 102(b)(2)(C) exception applies, a document cannot be used in this capacity.

The Office revised the rules of practice to include provisions that pertain to commonly owned or joint research agreement subject matter (37 CFR 1.104(c)(4) and (c)(5)). 37 CFR 1.104(c)(4) applies to an application that is subject to AIA 35 U.S.C. 102 and 35 U.S.C. 103, and 37 CFR 1.104(c)(5) applies to an application that is subject to pre-AIA 35 U.S.C. 102 and 103. Commonly owned subject matter under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(4)(i), and commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(i). See MPEP § 2146.01.

A clear and conspicuous statement by the applicant (or the applicant's representative) that the claimed invention of the application under examination and the subject matter disclosed in the U.S. patent document applied as prior art were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention will be sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies. Likewise, when relying on the provisions of pre-AIA 35 U.S.C. 103(c), the applicant (or the applicant's representative) can provide a similar statement required to disqualify the cited prior art. The applicant may present supporting evidence such as copies of assignment documents, but is not required to do so. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the veracity of such a statement. The statement under AIA 35 U.S.C. 102(b)(2)(C) will generally be treated by Office personnel analogously to statements made under pre-AIA 35 U.S.C. 103(c). See MPEP § 2146.02, subsection II. In order to comply with the rules, a statement is required regardless of any assignment information that may have been recorded in the assignment database maintained by the Office.