717.02(c) Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [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.]

Examiners are reminded that a disclosure that is prior art under 35 U.S.C. 102(a)(1) is not excepted as prior art even if the reference is excepted under 35 U.S.C. 102(b)(2)(C).

Generally, subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO publication reference that is prior art under 35 U.S.C. 102(a)(2) is only excepted when:

• (A) a proper submission is filed (see MPEP § 717.02(b) for more information) establishing:
  • (1) Common ownership. A proper submission may be a clear and conspicuous a statement to the effect that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment to, the same person; or
  • (2) A joint research agreement. A proper submission may be (a) amendment to 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), and (b) a clear and conspicuous statement to the effect that subject matter disclosed in the prior art was developed and the claimed invention was made by or on the behalf of one or more 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;
• (B) the reference only qualifies as prior art under 35 U.S.C. 102(a)(2) (e.g., not under 35 U.S.C. 102(a)(1)); and
• (C) the reference was used in an anticipation rejection under 35 U.S.C. 102(a)(2) or obviousness rejection under 35 U.S.C. 103 (e.g., not a double patenting rejection).

See MPEP § 717.02(b) for additional information pertaining to establishing common ownership or a joint research agreement.

I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED

If the application file being examined has not established that the subject matter disclosed in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C), the examiner will:

• (A) assume the subject matter disclosed in the reference is not excepted under 35 U.S.C. 102(b)(2)(C);
• (B) examine the application on all grounds other than any possible exception of the subject matter disclosed in the reference patent(s) or application(s) arising from a possible prior art rejection based on prior art under 35 U.S.C. 102(a)(2);
• (C) consider the applicability of any references under either 35 U.S.C. 102(a)(2) or 103 based on prior art under 35 U.S.C. 102(a)(2), including provisional rejections under 35 U.S.C. 102(a)(2) and under 35 U.S.C. 103 based on provisional prior art under 35 U.S.C. 102(a)(2); and
• (D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 35 U.S.C. 103, including any rejections based on prior art under 35 U.S.C. 102(a)(2), until such time that the subject matter disclosed in the reference is shown to be excepted under 35 U.S.C. 102(b)(2)(C). When applying any disclosures that only qualify as prior art under 35 U.S.C. 102(a)(2) in a prior art rejection against the claims, the examiner should anticipate that the subject matter disclosed in the reference may be excepted under 35 U.S.C. 102(b)(2)(C) and consider whether other rejections based on alternative prior art should be made in case the subject matter is excepted as prior art. See MPEP § 717.02(b). If the disclosure applied in the rejection is properly excepted as prior art under 35 U.S.C. 102(a)(2) and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made, except as provided in MPEP § 706.07(a) and this section. If the subject matter disclosed in the reference is excepted as prior art under the joint research agreement provision of 35 U.S.C. 102(c) and a new subsequent double patenting rejection based upon the excepted subject matter is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (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.

II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED

If the application being examined has established that the disclosure is excepted as prior art under 35 U.S.C. 102(b)(2)(C) the examiner will:

• (A) examine the applications as to all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2);
• (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate in view of the excepted subject matter disclosed in the reference; and
• (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).

III. DOUBLE PATENTING REJECTIONS

Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application, subject to the conditions discussed in MPEP § 804et seq. In addition, double patenting rejection may arise as a result of the joint research agreement exception. Congress recognized that deeming a joint research agreement as common ownership would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003)). For purposes of double patenting analysis, the U.S. application or patent and the subject matter excepted under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) will be treated as if commonly owned.

A rejection based on a pending U.S. application would be a provisional double patenting rejection. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the reference patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent term. For a double patenting rejection based on a non-commonly owned U.S. patent (treated as if commonly owned, which is similar to treatment under the CREATE Act), the nonstatutory double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804 and 804.02.