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717    Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

35 U.S.C. 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). See MPEP § 717.01et seq. for more information on declarations filed under 37 CFR 1.130.

Additionally, 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). See MPEP § 717.02 et seq. for more information on the prior art exclusion under 35 U.S.C. 102(b)(2)(C).

The AIA does not define the term "disclosure," and 35 U.S.C. 102(a) does not use the term "disclosure." 35 U.S.C. 102(b)(1) and 102(b)(2), however, each state conditions under which a "disclosure" that otherwise falls within 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2). Thus, the Office is treating the term "disclosure" as a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).

For more information on the provisions of 35 U.S.C. 102 in general, see MPEP § 2150et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(1), see MPEP § 2153et seq. For more information on the prior art exceptions under 35 U.S.C. 102(b)(2), see MPEP § 2154.02et seq.

717.01   Affidavit or Declaration Under 37 CFR 1.130 [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 715 et seq. for affidavits or declarations under 37 CFR 1.131(a), MPEP § 718for affidavits or declarations under 37 CFR 1.131(c), and MPEP § 716.10for affidavits or declarations of attribution under 37 CFR 1.132.]

37 C.F.R. 1.130  Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.

  • (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
  • (b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
    • (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
  • (c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401et seq. of this title
  • (d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
    • (1) A claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; or
    • (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013.

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37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b). In other words, 37 CFR 1.130, like 37 CFR 1.131 and 37 CFR 1.132, provides a mechanism for the submission of evidence to disqualify a disclosure as prior art or otherwise traverse a rejection. An applicant’s or patent owner’s compliance with 37 CFR 1.130 means that the applicant or patent owner is entitled to have the evidence considered in determining the patentability of the claim(s) at issue. It does not mean that the applicant or patent owner is entitled as a matter of right to have the rejection of, or objection to, the claim(s) withdrawn. See Changes To Implement the Patent Business Goals, 65 FR 54604, 54640 (Sept. 8, 2000) (discussing procedural nature of 37 CFR 1.131 and 37 CFR 1.132).

37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a) pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1) and 102(b)(2).

37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2).

37 CFR 1.130(c) provides that the provisions of 37 CFR 1.130 are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35 U.S.C. 102(b)(1).

37 CFR 1.130(d) provides that the provisions of 37 CFR 1.130 apply to any application for patent, and to any patent issuing thereon, that is subject to 35 U.S.C. 102 and 103.

I.   SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS CAN BE USED

Affidavits or declarations under 37 CFR 1.130 may be used, for example:

  • (A) When a claim is under a prior art rejection, to disqualify a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.
  • (B) When a claim is under a prior art rejection, to disqualify a disclosure (e.g., reference, activity, or portion thereof) that is relied upon as prior art under 35 U.S.C. 102(a)(1) or (2) by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, subject to certain restrictions, as discussed below in subsection II.

If effective, the disqualification of the disclosure as prior art under 35 U.S.C. 102(a) will make the disclosure unavailable to be applied in a rejection under either 35 U.S.C. 102(a) or 35 U.S.C. 103. For example, an applicant or patent owner may overcome a 35 U.S.C. 103 rejection based on a combination of references by disqualifying only one of the references (or portion thereof) applied in the rejection. The U.S. patents or U.S. patent application publications may continue to be applied under the judicially created doctrine of non-statutory double patenting, statutory double patenting and may serve as evidence of the level of ordinary skill or evidence relevant to an enablement inquiry.

II.   SITUATIONS WHERE 37 CFR 1.130 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE

An affidavit or declaration under 37 CFR 1.130 is not appropriate in the following situations:

  • (A) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination. In this case, an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401et seq.

    • The provisions of 37 CFR 1.130, however, would be available if: (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document); (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or (3) the rejection is based upon a U.S. patent or U.S. patent application and while the patent or pending application does claim an invention that is the same or substantially the same as the applicant’s claimed invention, the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent under examination (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation, the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).
  • (B) If the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. A disclosure made more than one year before the effective filing date of the claimed invention is prior art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35 U.S.C. 102(b)(1). Note that the provisions of 37 CFR 1.130 are available to overcome a rejection under 35 U.S.C. 102(a)(2) which is based on subject matter in an application or patent that was effectively filed, but not published or made publicly available, more than one year before the effective filing date of the claimed invention under examination, where the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. See also, MPEP § 2155.06.

III.   SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT REQUIRED

  • (A) A declaration under 37 CFR 1.130(a) is not required when a public disclosure, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), is by one or more joint inventor(s) or the entire inventive entity of the application under examination and does not name anyone else. For example, if an application names A, B, and C as the inventive entity, a journal publication names as authors A and B, and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should not be applied in a prior art rejection because it is apparent that the disclosure is a grace period disclosure. Where a disclosure involves a patent document, a declaration under 37 CFR 1.130(a) is not required where the inventive entity of the patent document, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), only includes one or more joint inventor(s) or the entire inventive entity of the application under examination. For example, if the application names A, B, and C as the inventive entity, the patent document names A and B as the inventive entity, and the public availability date of the patent document is one year or less before the effective filing date of the claimed invention under examination, then the patent document should not be applied in a prior art rejection under 35 U.S.C. 102(a)(1) because it is apparent that the patent document disclosure is a grace period disclosure.
  • (B) A declaration under 37 CFR 1.130(a) is not required when the inventive entity of a U.S. patent, U.S. patent application publication or a WIPO publication that designates the United States, subject to the exceptions of 35 U.S.C. 102(b)(2)(A), only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination. For example, if the application under examination names as the inventive entity A, B, and C, and the 35 U.S.C. 102(a)(2) reference names A and B as the inventive entity, then the reference should not be applied in a prior art rejection because it is apparent that the subject matter disclosed was obtained from one or more members of the inventive entity, either directly or indirectly. The exceptions under 35 U.S.C. 102(b)(1)(A) and 35 U.S.C. 102(b)(2)(A) both have to do with disclosures of material that originated with the inventor or a joint inventor. However, the 35 U.S.C. 102(b)(2)(A) exception is not limited to the grace period.
  • (C) A declaration under 37 CFR 1.130(a) is not required if the specification of the application under examination identifies the disclosure or the subject matter disclosed, that is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) as having been made by or having originated from one or more members of the inventive entity of the application under examination. See 37 CFR 1.77(b)(6) and MPEP § 2153.01(a).

IV.   PRIOR ART DATE OF THE DISCLOSURE UNDER AIA 35 U.S.C. 102(a)

For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(1), see MPEP § 2152.02(a)et seq.

For determining the prior art date of a disclosure under AIA 35 U.S.C. 102(a)(2), see MPEP § 2154.01et seq.

V.   FORM PARAGRAPHS

¶ 7.67.aia    Affidavit or Declaration Under 37 CFR 1.130: Effective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)

The [1] under 37 CFR 1.130 [2] filed on [3] is sufficient to overcome the rejection of claim [4] based on [5]. [6]

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. In bracket 1, insert either --affidavit-- or --declaration--.
  • 3. In bracket 2, insert either --(a)-- or --(b)--.
  • 4. In bracket 3, insert the filing date of the affidavit or declaration
  • 5. In bracket 4, insert the affected claim or claims.
  • 6. In bracket 5, insert the specific reference applied under 35 U.S.C. 102 or 103 that the affidavit or declaration has disqualified as prior art.
  • 7. In bracket 6, insert the explanation of how the affidavit/declaration provides evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).

¶ 7.68.aia    Affidavit or Declaration Under 37 CFR 1.130: Ineffective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)

The [1] under 37 CFR 1.130[2] filed [3] is insufficient to overcome the rejection of claim [4] based upon [5] as set forth in the last Office action because [6]:

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .
  • 2. In bracket 1, insert either --affidavit-- or --declaration--.
  • 3. In bracket 3, insert the filing date of the affidavit or declaration.
  • 4. In bracket 3, insert the filing date of the affidavit or declaration.
  • 5. In bracket 4, insert the affected claim or claims.
  • 6. In bracket 5, insert the rejection that has not been overcome, including statutory grounds.
  • 7. In bracket 6, insert the explanation of how the affidavit or declaration fails to provide evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2).

717.01(a)   Declarations or Affidavits under 37 CFR 1.130(a) – Attribution

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

37 CFR 1.130(a) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(a) pertains to the provisions of subparagraph (A) of 35 U.S.C. 102(b)(1)) and 102(b)(2). 35 U.S.C. 102(b)(1)(A) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, and 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

717.01(a)(1)   Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

In making a submission under 37 CFR 1.130(a), the applicant or patent owner is attempting to show that: (1) the disclosure was made by the inventor or a joint inventor; or (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. In other words, the affidavits or declarations are seeking to attribute an activity, a reference, or part of a reference to the inventor(s) to show that the disclosure is not available as prior art under 35 U.S.C. 102(a). Such declarations or affidavits will be similar to affidavits or declarations under 37 CFR 1.132 for application subject to pre-AIA 35 U.S.C. 102(a) or 102(e). See MPEP § 716.10 and In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982). Affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 remain as affidavits or declarations under 37 CFR 1.32. Thus, the Office will treat affidavits or declarations of attribution for applications subject to the current 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.130, and affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C. 102 as affidavits or declarations under 37 CFR 1.132, regardless of whether the affidavit or declaration is designated as an affidavit or declaration under 37 CFR 1.130, 1.131, or 1.132.

In evaluating whether a declaration under 37 CFR 1.130(a) is effective, Office personnel will consider the following criteria:

  • (A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A). The exceptions in 35 U.S.C. 102(b) do not apply:

    • (1) If the disclosure was made more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date. For example, if a public disclosure by the inventor or which originated with the inventor is not within the grace period of 35 U.S.C. 102(b)(1), it would qualify as prior art under 35 U.S.C. 102(a)(1), and could not be disqualified under 35 U.S.C. 102(b)(1).
    • (2) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.

See MPEP § 717.01, subsection II., for more information on when the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) are not available.

  • (B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that (1) the disclosure was made by the inventor or a joint inventor, or (2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Some factors to consider are the following:

    • (1) Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
    • (2) A mere statement from the inventor or a joint inventor, without any accompanying reasonable explanation, may not be sufficient where there is evidence to the contrary, such as a contrary statement from another named author that was filed in another application on behalf of another party. See Ex parte Kroger, 218 USPQ 370 (Bd. App. 1982) (affirming rejection notwithstanding declarations by the alleged actual inventors as to their inventorship in view of a non-applicant author submitting a letter declaring the non-applicant author’s inventorship).
    • (C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c)
    • (D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f) .
    • (E) There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an "enabling" disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.

The evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter disclosed from the inventor or a joint inventor requires case-by-case analysis, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor originated disclosure. See MPEP §§ 2155.01 and 2155.03 for more information. This determination is similar to the current process for disqualifying a publication as not being by “others” discussed in MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only that the disclosure originated from an inventor or a joint inventor.

37 CFR 1.130 does not contain a provision that "[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained" in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130 does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130 must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(c) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.

717.01(b)   Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

37 CFR 1.130(b) provides that when any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 37 CFR 1.130(b) pertains to the provisions of subparagraph (B) of 35 U.S.C. 102(b)(1) and 102(b)(2). 35 U.S.C. 102(b)(1)(B) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under 35 U.S.C. 102(a)(1) if the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

717.01(b)(1)   Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

In making a submission under 37 CFR 1.130(b), the applicant or patent owner is attempting to show that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

In evaluating whether a declaration under 37 CFR 1.130(b) is effective to disqualify a disclosure on which the rejection is based, Office personnel will consider the following criteria:

  • (A) Whether the disclosure, which was applied in the rejection and is addressed in the affidavit or declaration, is subject to the exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B). The exceptions in35 U.S.C. 102(b) do not apply:
    • (1) If the disclosure was made more than one year before the effective filing date of the claimed invention. See MPEP § 2152.01 to determine the effective filing date.
    • (2) When the disclosure that is applied in a rejection is (1) a U.S. patent or U.S. patent application publication that (2) claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and (3) the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent.

    See MPEP § 717.01, subsection II., for more information on when the exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B). are not available.

In the situation where the previous public disclosure by the inventor (or which originated with the inventor) was not within the grace period but was effective to disqualify an intervening disclosure as prior art by invoking the exception of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B), the previous public disclosure by, or originating with, the inventor would qualify as prior art under 35 U.S.C. 102(a)(1) and could not be disqualified under 35 U.S.C. 102(b)(1)(A).

  • (B) Whether the affidavit or declaration shows sufficient facts, in weight and character, to establish that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by: (1) the inventor or a joint inventor; or (2) another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Some factors to consider are the following:
    • (1) The declaration or affidavit must identify the subject matter publicly disclosed and provide the date of the public disclosure of such subject matter by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (2) If the subject matter publicly disclosed on the earlier date by the inventor or a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication. See 37 CFR 1.130(b)(1). The Office requires a copy to determine not only whether the inventor is entitled to disqualify the disclosure under 35 U.S.C. 102(b), but also because if the rejection is based on a U.S. patent application publication or WIPO publication of an international application to another and such application is also pending before the Office, this prior disclosure may be prior art under 35 U.S.C. 102(a) to the other earlier filed application, and this information may be useful in examination of both applications.
    • (3) If the subject matter publicly disclosed on the earlier date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on the earlier date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (4) If the subject matter publicly disclosed on the earlier date is the same as the subject matter in the disclosure applied in a prior art rejection. See MPEP § 717.01(b)(2).
    • (C) Whether the formal requirements of a declaration or affidavit are met. See MPEP § 717.01(c).
    • (D) Whether the affidavit or declaration is timely presented. See MPEP § 717.01(f).
    • There is no requirement under 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor (e.g., patenting, publication, public use, sale activity) be the same as the mode of disclosure of the intervening grace period disclosure.
    • There is also no requirement that the disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See In re Kao, 639 F.3d 1057, 1066, 98 UQPQ2d 1799, 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one chooses to describe it).
    • There is no requirement that the affidavit or declaration demonstrate that the disclosure by the inventor, a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from an inventor or a joint inventor was an enabling disclosure of the subject matter within the meaning of 35 U.S.C. 112(a). See MPEP § 2155.04.
    • Any remaining portion of an intervening grace period disclosure that was not previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor is available as prior art under 35 U.S.C. 102(a)(1). For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under 35 U.S.C. 102(a)(1).

    The evidence necessary to show that the subject matter of a disclosure was previously disclosed by, or originated with, an inventor or a joint inventor requires case-by-case analysis.

37 CFR 1.130 does not contain a provision that "[o]riginal exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained" in contrast to the requirement for such exhibits in 37 CFR 1.131(b), because in some situations an affidavit or declaration under 37 CFR 1.130 does not necessarily need to be accompanied by such exhibits (e.g., a statement by the inventor or a joint inventor may be sufficient). However, in situations where additional evidence is required, such exhibits must accompany an affidavit or declaration under 37 CFR 1.130. In addition, an affidavit or declaration under 37 CFR 1.130 must be accompanied by any exhibits that the applicant or patent owner wishes to rely upon. See MPEP § 717.01(d) for more information on the formal requirements for a declaration or affidavit and any attached exhibits.

Finally, neither 35 U.S.C. 102(b)(1)(B) nor 102(b)(2)(B) discusses "the claimed invention" with respect to either the subject matter of the previous inventor-originated disclosure or the subject matter of the subsequent intervening disclosure. Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) is applicable to subject matter in an intervening disclosure does not involve a comparison of the subject matter of the claimed invention to either the subject matter of the previous inventor-originated disclosure or to the subject matter of the subsequent intervening disclosure.

717.01(b)(2)   Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

I.   “Same” is not “Obvious”

The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, of another who obtained directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.

II.   Only a portion may be disqualified as prior art

Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is disqualified as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).

III.   Manner or modes of disclosures are not relevant

The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2) encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.

There is also no requirement that the mode (e.g., patenting, publication, public use, sale activity) of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure. For example, the inventor or a joint inventor may have publicly disclosed the subject matter in question via a slide presentation at a scientific meeting, while the intervening disclosure of the subject matter may have been made in a journal article.

A difference in the mode of disclosure or differences in the words used to describe the subject matter will not preclude the inventor from submitting an affidavit or declaration under 37 CFR 1.130(b) to disqualify the intervening disclosure as prior art.

IV.   Species/Genus, Genus/Species, and Species/Species Disclosures

The exception to 35 U.S.C. 102(a)(2) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening U.S. patent, U.S. patent application publication, or WIPO published application is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent, U.S. patent application publication, or WIPO published application disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent, U.S. patent application publication, or WIPO published application is not available as prior art under 35 U.S.C. 102(a)(2). Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a species, the disclosure of the species in the subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2).

717.01(c)   Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

I.   WHO MAY MAKE AFFIDAVIT OR DECLARATION

In accordance with 37 CFR 1.130, the applicant or patent owner may submit an affidavit or declaration. When an assignee, obligated assignee, or person showing sufficient proprietary interest is the applicant under 35 U.S.C. 118 rather than the inventor, the inventor may sign an affidavit or declaration under 37 CFR 1.130 to disqualify a disclosure of the invention as prior art, but the declaration must be filed by a party having authority to take action in the application. Authority to file papers in an application generally does not lie with the inventor if the inventor is not the applicant.

II.   FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS AND ATTACHED EXHIBITS

An affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths. See MPEP § 602et seq. for additional information regarding formal requirements of affidavits.

37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.

Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.130, must comply with the requirements of 37 CFR 1.91 to be entered into an application file. Exhibits that do not comply with the requirements of 37 CFR 1.91 will be disposed of or returned to applicant at the discretion of the Office. See also MPEP § 608.03(a).

717.01(d)   U.S. Patent or Application Publication Claiming Same Invention

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

When a rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401et seq. of this title. See 37 CFR 1.130(c). Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties. Thus, the provisions of 37 CFR 1.130 are not available in certain situations to avoid the issuance of two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451–52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 "clearly contemplate—where different inventive entities are concerned—that only one patent should issue for inventions which are either identical to or not patentably distinct from each other" ) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). See the Trial Practice Guide for information on derivation proceedings.

The provisions of 37 CFR 1.130, however, would be available if: (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document); (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or (3) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).

717.01(e)   Passed Upon (or Decided by) by Primary Examiner

The question of sufficiency of affidavits or declarations under 37 CFR 1.130 should be reviewed and decided by a primary examiner.

Review of questions of formal sufficiency and propriety are by petition filed under 37 CFR 1.181. Such petitions are answered by the Technology Center Directors (MPEP § 1002.02(c)).

Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP §1201.

717.01(f)   Seasonable (or Timely) Presentation

Affidavits or declarations under 37 CFR 1.130 must be timely presented in order to be admitted. Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted:

  • (A) prior to a final rejection;
  • (B) before appeal in an application not having a final rejection;
  • (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e); or
  • (D) after the prosecution is closed (e.g., after a final rejection, after appeal, or after allowance) if applicant files the affidavit or other evidence with a request for continued examination (RCE) under 37 CFR 1.114 in a utility or plant application filed on or after June 8, 1995; or a continued prosecution application (CPA) under 37 CFR 1.53(d) in a design application.

All admitted affidavits and declarations are acknowledged and commented upon by the examiner in his or her next succeeding action.

For affidavits or declarations under 37 CFR 1.130 filed after appeal, see 37 CFR 41.33(d) and MPEP § 1206 and § 1211.03.

Review of an examiner’s refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).

717.02   Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) [R-11.2013]

[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 § 706.02(l) et seq. 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.]

35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be prior art under 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

35 U.S.C. 102(c) provides that a joint research agreement can establish common ownership if the following three conditions are satisfied in order to apply the provisions of 35 U.S.C. 102(b)(2)(C):

  • A. The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention. See 35 U.S.C. 102(c)(1). The AIA defines the term “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See 35 U.S.C. 100(h).
  • B. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement. See 35 U.S.C. 102(c)(2).
  • C. The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement. See 35 U.S.C. 102(c)(3).

Joint research agreement subject matter under 35 U.S.C. 102(c) is treated under 37 CFR 1.104(c)(4)(ii), and joint research agreement subject matter under pre-AIA 35 U.S.C. 103(c) is treated under 37 CFR 1.104(c)(5)(ii).

The provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 706.02(l)(1). The major differences between 35 U.S.C. 102(c)) and the CREATE Act are the following:

  • A. The new provision (35 U.S.C. 102(c)) is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focused on the date that the claimed invention was made; and
  • B. The CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only applied to obviousness rejections and not to anticipation rejections.

717.02(a)   Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C)

[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 § 706.02(l) et seq. 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.]

I.   COMMON OWNERSHIP

In order to invoke common ownership to disqualify a disclosure as prior art, the applicant (or the applicant's representative of record) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention 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. 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).

The term "commonly owned" is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by the same person(s) or organization(s)/business entity(ies). If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 706.02(l)(2) for more information on the definition of common ownership.

The applicant may, but is not required to, present evidence (e.g., such as assignment records, affidavits or declarations by the common owner, or court decisions) supporting the existence of the common ownership, in addition to the above-mentioned statement concerning common ownership.

For invoking the commonly owned exceptions in pre-AIA applications, see MPEP § 706.02(l)et seq.

II.   JOINT RESEARCH AGREEMENT

In order to invoke a joint research agreement to disqualify a disclosure as prior art, the applicant (or the applicant's representative of record) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under 35 U.S.C. 102(c). The statement must also assert that the agreement 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). When relying on the provisions of pre-AIA 35 U.S.C. 103(c), the applicant or his attorney or agent of record could provide a similar statement to disqualify the cited prior art as to the issue of obviousness.

If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g).

As is the case with establishing common ownership, the applicant may, but is not required to, present evidence supporting the existence of the joint research agreement.

For invoking the joint research agreement exceptions in pre-AIA applications, see MPEP § 706.02(l)et seq.

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

[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 § 706.02(l) et seq. 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 C.F.R. 1.104  Nature of examination.

*****

  • (c)
    • (4)
      • (i) 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.
      • ii 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:
        • (A) 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
        • (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the 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 of35 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 disqualified as prior art under 35 U.S.C. 102(b)(2)(C) could be the basis for statutory double patenting or non-statutory (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.   EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP

It is important to recognize what constitutes sufficient evidence 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 evidence to establish common ownership of, or an obligation for assignment to, the same person(s) or organizations(s):

Application [the application serial number] and 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 publication 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 evidence 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 Patent A were, at the time the invention of Application X was effectively filed, owned by Company Z."

This statement alone is sufficient evidence to disqualify 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 disqualify Patent A from being used in an anticipation rejection under 35 U.S.C. 102(a)(2). It would not, however, be effective to disqualify 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 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 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.   EVIDENCE REQUIRED 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 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 disqualification of 35 U.S.C. 3(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 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 is sought to be disqualified. 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 C.F.R. 1.71  Detailed description and specification of the invention.

*****

  • (g)
    • (1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in ,§ 1.9(e).
    • (2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:
      • (i) Within three months of the filing date of a national application;
      • (ii) Before the mailing of a first Office action on the merits; or
      • (ii) Before the mailing of a first Office action on the merits; or
      • (iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
    • (3) If an amendment under paragraph (g)(1) of this section 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. 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 § 1.323 for the amendment to be effective.

*****

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 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 disqualified patent or patent application publication. 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 disqualifies 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:

Example 1

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of invention X’. Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103.

Example 2

Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on May 1, 2013. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the JRA was not in effect until after the claimed invention was effectively filed.

Example 3

Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a provisional U.S. patent application disclosing invention X’. On June 13, 2013, Company A filed a U.S. patent application claiming the benefit of the prior provisional application and also disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on May 1, 2013. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the JRA was not in effect until after the claimed invention was effectively filed as the relied upon provisional application which was filed before the JRA fully supported the invention X’ and therefore the invention was effectively filed before the JRA.

Example 4

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of invention X’ but the JRA is limited to activities for invention Y, which is distinct from invention X. Professor BB from University B communicates invention X to Company A. On November 12, 2012, University B filed a U.S. patent application on invention X. On April 13, 2013, Company A filed a U.S. patent application disclosing and claiming invention X’, which is an obvious variant of invention X. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions 35 U.S.C. 102(b)(2)(C) and 102(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 because the claimed invention was not made as a result of the activities undertaken within the scope of the JRA.

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

[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 § 706.02(l) et seq. 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 disqualified as prior art even if evidence is provided to show that the reference is disqualified under 35 U.S.C. 102(b)(2)(C).

Generally, 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 disqualified when:

  • (A) proper evidence is filed (see MPEP § 717.02(b) for more information) establishing:
    • (1) Common ownership. Proper evidence 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. Proper evidence 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 reference is disqualified as prior art under 35 U.S.C. 102(b)(2)(C), the examiner will:

  • (A) assume the reference is not disqualified under 35 U.S.C. 102(b)(2)(C);
  • (B) examine the application on all grounds other than any possible disqualification of 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 reference is disqualified 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 reference may be disqualified 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 reference is disqualified. See MPEP § 717.02(b) . If the disclosure applied in the rejection is properly disqualified 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 reference is disqualified under the joint research agreement provision of 35 U.S.C. 102(c)and a new subsequent double patenting rejection based upon the disqualified reference 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 disqualified 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 disqualified 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 disqualified 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. 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 disqualified 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 non-statutory 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.

717.02(d)   Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)

[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 § 706.02(l) et seq. 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.]

The following form paragraphs should be used in addressing the prior art exception under 35 U.S.C. 102(b)(2)(C):

¶ 7.20.01.aia    103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)

Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although reference [2] has been disqualified as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be disqualified under 35 U.S.C. 102(b)(2)(C).

Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on a reference that has since been disqualified under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
  • 3. In bracket 1, identify the common assignee.
  • 4. In bracket 2, identify the reference which has been disqualified.

¶ 7.20.02.aia    Joint Inventors, Common Ownership Presumed

This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).

¶ 7.20.04.aia    102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision

Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, is not disqualified as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required evidence in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See generally MPEP § 706.02(l).

In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A)to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, in anticipation rejections or obviousness rejections, where an attempt has been made to disqualify the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
  • 3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
  • 4. In bracket 2, identify the common assignee

¶ 7.20.05.aia    102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Disqualified Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)

Applicant has attempted to disqualify reference [1] under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and1.104(c)(4)(ii).

In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to disqualify the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the disqualification attempt is ineffective.
  • 3. In bracket 1, identify the reference which is sought to be disqualified via 35 U.S.C. 102(b)(2)(C).
  • 4. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).

Use form paragraph 7.38.01 or 7.38.02 where the submission is persuasive. See MPEP § 707.07(f).

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Last Modified: 03/27/2014 10:10:36