717.02(b) Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked [R-10.2019]

[Editor Note: This MPEP section is only 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 §§ 2146 – 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

37 CFR 1.104(c)(4) includes the provisions that pertain to commonly owned or joint research agreement subject matter for applications and patents subject to 35 U.S.C. 102 and 35 U.S.C. 103. Specifically, 37 CFR 1.104(c)(4) implements the provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) in the AIA. Thus, 37 CFR 1.104(c)(4) is applicable to applications and patents that are subject to 35 U.S.C. 102 and 35 U.S.C. 103.

37 CFR 1.104(c)(4)(i) provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter 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.

37 CFR 1.104(c)(4)(ii) addresses joint research agreements and provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if: (1) the applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement (within the meaning of 35 U.S.C. 100(h) and 37 CFR 1.9(e)) that was in effect on or before the effective filing date of the claimed invention and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (2) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

I. WHEN THE EXCEPTION CAN BE USED

It is important to recognize that the 35 U.S.C. 102(b)(2)(C) exception can only be invoked in regard to a disclosure that is applied in a rejection as prior art under 35 U.S.C. 102(a)(2) (disclosures in a U.S. patent, U.S. patent application, or WIPO published international application effectively filed before the effective filing date of the claimed invention). It is also important to recognize that the 35 U.S.C. 102(b)(2)(C) exception applies when the rejection is under 35 U.S.C. 102(a)(2) (anticipation) or 35 U.S.C. 103 (obviousness). In other words, the AIA expanded the previous commonly owned prior art exception under the CREATE Act to now apply to anticipation rejections and not just obviousness rejections.

II. WHEN THE EXCEPTION DOES NOT APPLY

The 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under 35 U.S.C. 102(a)(1) (disclosures publicly made before the effective filing date of the claimed invention). In other words, the prior art exception under 35 U.S.C. 102(b)(2)(C) only disqualifies the disclosure as prior art under 35 U.S.C. 102(a)(2). Thus, if the issue date of a U.S. patent or publication date of a U.S. patent application publication or WIPO published international application is before the effective filing date of the claimed invention, it may be prior art under 35 U.S.C. 102(a)(1), regardless of the fact that the subject matter disclosed and the claimed invention are commonly owned or resulted from a joint research agreement.

The 35 U.S.C. 102(b)(2)(C) exception is not effective to remove a disclosure applied as a basis for a double patenting rejection. In other words, disclosures excepted as prior art under 35 U.S.C. 102(b)(2)(C) could be the basis for statutory double patenting or nonstatutory (sometimes referred to as obviousness-type) double patenting rejections. See MPEP § 717.02(c), subsection III.

In addition, the prior art exception under 35 U.S.C. 102(b)(2)(C) is not effective to remove a disclosure as evidence of enablement or inherency. See MPEP § 2131.01.

III. REQUIREMENTS TO ESTABLISH COMMON OWNERSHIP

It is important to recognize what submission is sufficient to establish common ownership. The common ownership must be shown to exist not later than the effective filing date of the claimed invention. A statement of present common ownership is not sufficient (unless such statement was filed on the effective filing date of the claimed invention). In re Onda, 229 USPQ 235 (Comm’r Pat. 1985).

The following statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organizations(s):

Application [the application serial number] and the subject matter disclosed in the reference(s) [the patent identifier of the commonly owned applied art (whether U.S. patents, U.S. patent applications, U.S. patent application publications, or WIPO patent publications) that was relied upon in the rejection(s)] were, at the time the invention was effectively filed, owned by [the name of the person(s), organization(s), and/or business entity(ies) that own the application and the commonly owned applied art].

The applicant(s) or the representative(s) of record 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 or in a separately labeled section) in order to ensure that the examiner quickly notices the statement. Applicants 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 35 U.S.C. 103 using Patent A in view of Patent B wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In her 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 the subject matter disclosed in Patent A were, at the time the invention of Application X was effectively filed, owned by Company Z.

This statement alone is sufficient to except the subject matter disclosed in Patent A from being used in a rejection under 35 U.S.C. 103 against the claims of Application X. Note that such a statement would also be effective to preclude the excepted subject matter disclosed in Patent A from being used in an anticipation rejection under 35 U.S.C. 102(a)(2). It would not, however, be effective to preclude Patent A from being used in either an anticipation or obviousness rejection if Patent A was prior art under 35 U.S.C. 102(a)(1) (e.g., the patent issued before the effective filing date of the claimed invention and is not subject to any exception in 35 U.S.C. 102(b)(1)).

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 subject matter disclosed in the U.S. patent, U.S. patent application publication, or WIPO publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted and require objective evidence of common ownership of, or the existence of an obligation to assign, the application being examined and the applied subject matter disclosed in the reference as of the effective filing date of the application being examined. As mentioned above, applicant(s) may submit, in addition to the above-mentioned statement regarding common ownership, the following objective evidence:

• (A) Reference to assignments recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3 which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s);
• (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications;
• (C) An affidavit or declaration by the common owner which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which 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 establishes common ownership of the application and the commonly owned applied art.

IV. REQUIREMENTS TO ESTABLISH A JOINT RESEARCH AGREEMENT

Once an examiner has established a prima facie case of unpatentability under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103, the burden of overcoming the rejection by invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) is on the applicant or the patentee.

To overcome a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 based upon subject matter (whether disclosed in a U.S. patent document or publication or WIPO publication) which qualifies as prior art under only 35 U.S.C. 102(a)(2), the applicant must amend the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g). The requirements of 37 CFR 1.71(g) are further discussed below. In addition to amending the specification to disclose the names of the parties to the joint research agreement, the applicant must submit the required statement to invoke the prior art exception of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.104(c)(4) sets forth the requirements for the statement, which includes a statement to the effect that the subject matter disclosed in 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 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, 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).

Like the common ownership or assignment provision, the joint research agreement must be shown to be in effect on or before the effective filing date of the claimed invention. The joint research agreement is NOT required to be in effect on or before the prior art date of the reference that discloses the subject matter that is sought to be excepted. 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. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the existence of the joint research agreement.

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 to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 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)(3).

37 CFR 1.71(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. 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 35 U.S.C. 102(c).

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 prior art rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), 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 double patenting rejection).

If an amendment under 37 CFR 1.71(g) is submitted to overcome a prior art rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO publication which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the prior art rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter. 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 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.

If the applicant excepts as prior art the subject matter relied upon by the examiner in accordance with 35 U.S.C. 102(b)(2)(C) and 102(c) and the procedures set forth in the rules, the examiner will treat the application under examination and the disclosure applied in the prior art rejection as if they are commonly owned for purposes of 35 U.S.C. 102(b)(2)(C).

The following examples are provided for illustration only: