2146.01 Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) [R-07.2022]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. 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 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 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. In addition, this provision applies to all patent applications, including utility, design, plant and reissue applications, 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. The AIA provides that applications subject to the AIA prior art provisions are not subject to either the 1999 or 2004 changes, but are subject to 35 U.S.C. 102(c). 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). Similarly patents issued from applications subject to the current 35 U.S.C. 102 are not subject to either the 1999 or 2004 changes, but are subject to 35 U.S.C. 102(c). See MPEP § 2159.

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 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. 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. By contrast current 35 U.S.C. 102(c) operates to except similar prior art from being applied in either an obviousness rejection or an anticipation rejection. See MPEP § 2156.

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 35 U.S.C. 103. 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.