2136.01 Status of Unpublished or Published as Redacted U.S. Application as a Reference Under Pre-AIA 35 U.S.C. 102(e) [R-10.2019]

[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.]

If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive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 pre-AIA 35 U.S.C. 102(e) of the later filed application can be made. In addition, a provisional rejection under pre-AIA 35 U.S.C. 102(e) may be made, in certain circumstances as 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. WHEN THERE IS NO COMMON ASSIGNEE, APPLICANT, OR INVENTOR, A U.S. APPLICATION MUST ISSUE AS A PATENT OR BE PUBLISHED AS A SIR OR AS AN APPLICATION PUBLICATION BEFORE IT IS AVAILABLE AS PRIOR ART UNDER PRE-AIA 35 U.S.C. 102(e)

In addition to U.S. patents and SIRs, certain U.S. application publications and certain international application publications are also available as prior art under pre-AIA 35 U.S.C. 102(e) as of their effective U.S. filing dates (which will include certain international filing dates).

If there is no common assignee, common applicant, or common 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of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under pre-AIA 35 U.S.C. 102(e). 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 If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met.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 pre-AIA 35 U.S.C. 102(e) in the still pending application as appropriate. See MPEP § 2136et seq.

II. WHEN THERE IS A COMMON ASSIGNEE, APPLICANT, OR INVENTOR, A PROVISIONAL PRE-AIA 35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE

Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible to provisionally reject a later application over an earlier filed, and unpublished, application under pre-AIA 35 U.S.C. 102(e) when there is a common assignee, applicant, or inventor. See, e.g., In re Irish, 433 F.2d 1342, 167 USPQ 764 (CCPA 1970). In addition, a provisional pre-AIA 35 U.S.C. 102(e) rejection may be made if the earlier filed copending U.S. 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. Such a provisional rejection “serves to put applicant on notice at the earliest possible time of the possible prior art relationship between copending applications” and gives applicant the fullest opportunity to overcome the rejection by amendment or submission of evidence. In addition, since both applications are pending and usually have the same assignee, more options are available to applicant for overcoming the provisional rejection than if the other application were already issued. Ex parte Bartfeld, 16 USPQ2d 1714 (Bd. Pat. App. & Int. 1990) aff’d on other grounds, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Note that provisional rejections over pre-AIA 35 U.S.C. 102(e) are only authorized when there is a common inventor or assignee, otherwise the copending application prior to publication must remain confidential.

Therefore, if (1) at least one common inventor or applicant exists between the applications or the applications are commonly assigned, and (2) the effective filing dates are different; then a provisional rejection of the later-filed application should be made. The provisional rejection is appropriate in circumstances where, if the earlier-filed application is published or becomes a patent, it would constitute actual prior art under 35 U.S.C. 102. Because the earlier-filed application is not published at the time of the rejection, the rejection must be provisionally made under pre-AIA 35 U.S.C. 102(e).

A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 2136.05. 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.fti should be used when making a provisional rejection under pre-AIA 35 U.S.C. 102(e).

III. PROVISIONAL REJECTION UNDER PRE-AIA 35 U.S.C. 103(a) CAN BE MADE USING PRIOR ART UNDER PRE-AIA 35 U.S.C. 102(e)

For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under pre-AIA 35 U.S.C. 103(a) using prior art under pre-AIA 35 U.S.C. 102(e) is not proper if the application contains evidence that the application and the prior art reference were owned by the same person, or subject to an obligation of assignment to the same person, at the time the invention was made. See pre-AIA 35 U.S.C. 103(c).

In addition, certain non-commonly owned references may be disqualified from being applied in a rejection under pre-AIA 35 U.S.C. 103(a) due to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which was enacted on December 10, 2004 and was effective for all patents granted on or after December 10, 2004.

See MPEP §§ 2146–2146.03 for information pertaining to prior art disqualified under pre-AIA 35 U.S.C. 103(c), evidence of common ownership, and examination procedure with respect to pre-AIA 35 U.S.C. 103(c); see MPEP § 2146.03(a) for a discussion of provisional rejections under pre-AIA 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e).

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 35 U.S.C. 103. It does not apply to or affect subject matter which is applied in a rejection under pre-AIA 35 U.S.C. 102 or a double patenting rejection (see 37 CFR 1.78(c) and MPEP § 804). In addition, if the subject matter qualifies as prior art under any other subsection of pre-AIA 35 U.S.C. 102 (e.g., pre-AIA 35 U.S.C. 102(a) or (b)) it will not be disqualified as prior art under pre-AIA 35 U.S.C. 103(c). See also MPEP § 2146et seq. for information relating to rejections under pre-AIA 35 U.S.C. 103 and evidence of joint research agreements.