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-07.2022]

[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 prior art. 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 of record) 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 of record) 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.