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

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(b) Declarations or Affidavits under 37 CFR 1.130(b) – 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.]

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(c) Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations [R-07.2015]

[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

Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130. In accordance with 37 CFR 1.130, however, it is the applicant or patent owner who may submit (i.e., file) 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 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 [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.]

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 [R-11.2013]

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 [R-07.2022]

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 the next succeeding action, and an indication of such should be made on the Office Action Summary, Notice of Allowability, or Advisory Action cover sheet, as appropriate.

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(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

I. COMMON OWNERSHIP

In order to invoke common ownership to except a disclosure as prior art, the applicant (or the patent owner) 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).

A. Definition of Common Ownership

The term "commonly owned" is intended to mean that the subject matter that would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by, or under an obligation to assign to, 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.

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by or subject to an obligation of assignment to the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as “Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B” would be sufficient to establish common ownership.

There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).

For applications owned by a joint venture of two or more entities, both the application and the disclosure to which the exception applies must have been owned by, or subject to an obligation of assignment to, the joint venture not later than the effective filing date of the claimed invention in the application. For example, if Company A and Company B formed a joint venture, Company C, both Application X and the relevant disclosure in Patent Z must have been owned by, or subject to an obligation of assignment to, Company C not later than the effective filing date of the claimed invention in Application X in order for the relevant disclosure in Patent Z to be properly excepted as prior art under 35 U.S.C. 102(b)(2)(C). If Company A by itself always owned the relevant disclosure in Patent Z and Company C by itself always owned Application X, then the 35 U.S.C. 102(b)(2)(C) exception would not apply to the relevant disclosure in Patent Z.

As long as principal ownership rights to either the disclosed subject matter or the claimed invention under examination reside in different persons or organizations, common ownership does not exist. A license of the claimed invention under examination to another by the owner where basic ownership rights are retained would not defeat ownership.

B. Requirements to Establish Common Ownership

The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed invention in order to except that subject matter as prior art by invoking a prior art exception. A statement of present common ownership is not sufficient.

The question of whether common ownership exists not later than the effective filing date of the claimed invention is to be determined on the facts of the particular case in question. Actual ownership of the disclosed subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the disclosed subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence not later than the effective filing date of the claimed invention in order for the 35 U.S.C. 102(b)(2)(C) exception to apply to the disclosed subject matter. A moral or unenforceable obligation would not provide the basis for common ownership.

Applications and subject matter disclosed in references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by or subject to an obligation of assignment to the same person. Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organization(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) 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, not later than the effective filing date of the claimed invention in Application X, owned by Company Z."

This statement alone is sufficient to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). Once common ownership is established, the subject matter disclosed in Patent A may not be used in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 against the claims of Application X. Patent A, however, could still be used as the basis for a double patenting rejection, if appropriate. See MPEP § 804 for more information on double patenting rejections.

The applicant may, but is not required to, present evidence (e.g., 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.

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

Applicant(s) or patent owner(s) may submit, in addition to the statement regarding common ownership, the following objective evidence:

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

II. JOINT RESEARCH AGREEMENT

In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) 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).

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)(1). Specifically, 37 CFR 1.71(g)(1) provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement as required by 35 U.S.C. 102(c).

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: (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 establish that the prior art exception under 35 U.S.C. 102(b)(2)(C) applies in view of a joint research agreement.

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 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 rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or international patent application publication under the PCT, which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter in the 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.

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the subject matter disclosed in the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 102(c), 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). As 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.

If the applicant excepts as prior art the subject matter relied upon by the examiner by invoking the exception under 35 U.S.C. 102(b)(2)(C) and by following the procedures set forth in the rules, the examiner will treat the application under examination and the excepted subject matter in the 35 U.S.C. 102(a)(2) reference as if they are “owned by the same person or subject to an obligation of assignment to the same person” for purposes of 35 U.S.C. 102(b)(2)(C).

The following examples are provided for illustration only:

For invoking the joint research agreement provisions in pre-AIA applications, see MPEP §§ 2146 - 2146.03.

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

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

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

37 CFR 1.104(c)(4)(i) provides that subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

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

I. WHEN THE EXCEPTION CAN BE USED

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

II. WHEN THE EXCEPTION DOES NOT APPLY

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

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

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

III. REQUIREMENTS TO ESTABLISH COMMON OWNERSHIP

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

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

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

The applicant(s) or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate piece of paper or in a separately labeled section) in order to ensure that the examiner quickly notices the statement. Applicants may, but are not required to, submit further evidence, such as assignment records, affidavits or declarations by the common owner, or court decisions, in addition to the above-mentioned statement concerning common ownership.

For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected under 35 U.S.C. 103 using Patent A in view of Patent B wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:

Application X and the subject matter disclosed in Patent A were, at the time the invention of Application X was effectively filed, owned by Company Z.

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

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s representation of either (1) the common ownership of, or (2) the existence of an obligation to commonly assign, the application being examined and the applied subject matter disclosed in the U.S. patent, U.S. patent application publication, or WIPO publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted and require objective evidence of common ownership of, or the existence of an obligation to assign, the application being examined and the applied subject matter disclosed in the reference as of the effective filing date of the application being examined. As mentioned above, applicant(s) may submit, in addition to the above-mentioned statement regarding common ownership, the following objective evidence:

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

IV. REQUIREMENTS TO ESTABLISH A JOINT RESEARCH AGREEMENT

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

To overcome a rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 based upon subject matter (whether disclosed in a U.S. patent document or publication or WIPO publication) which qualifies as prior art under only 35 U.S.C. 102(a)(2), the applicant must amend the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g). The requirements of 37 CFR 1.71(g) are further discussed below. In addition to amending the specification to disclose the names of the parties to the joint research agreement, the applicant must submit the required statement to invoke the prior art exception of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.104(c)(4) sets forth the requirements for the statement, which includes a statement to the effect that the subject matter disclosed in the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

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

37 CFR 1.71(g) provides for the situation in which an application discloses or is amended to disclose the names of the parties to a joint research agreement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c). 37 CFR 1.71(g)(1) specifically provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement because this information is required by 35 U.S.C. 102(c)(3).

37 CFR 1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.

37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to take advantage of 35 U.S.C. 102(c).

The submission of such an amendment remains subject to the rules of practice (e.g., 37 CFR 1.116, 1.121, and 1.312). For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a prior art rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).

If an amendment under 37 CFR 1.71(g) is submitted to overcome a prior art rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO publication which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the prior art rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.

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

The following examples are provided for illustration only:

717.02(c) Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

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

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

• (A) a proper submission is filed (see MPEP § 717.02(b) for more information) establishing:
  • (1) Common ownership. A proper submission may be a clear and conspicuous a statement to the effect that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment to, the same person; or
  • (2) A joint research agreement. A proper submission may be (a) amendment to the specification of the application under examination to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g), and (b) a clear and conspicuous statement to the effect that subject matter disclosed in the prior art was developed and the claimed invention was made by or on the behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement;
• (B) the reference only qualifies as prior art under 35 U.S.C. 102(a)(2) (e.g., not under 35 U.S.C. 102(a)(1)); and
• (C) the reference was used in an anticipation rejection under 35 U.S.C. 102(a)(2) or obviousness rejection under 35 U.S.C. 103 (e.g., not a double patenting rejection).

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

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

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

• (A) assume the subject matter disclosed in the reference is not excepted under 35 U.S.C. 102(b)(2)(C);
• (B) examine the application on all grounds other than any possible exception of the subject matter disclosed in the reference patent(s) or application(s) arising from a possible prior art rejection based on prior art under 35 U.S.C. 102(a)(2);
• (C) consider the applicability of any references under either 35 U.S.C. 102(a)(2) or 103 based on prior art under 35 U.S.C. 102(a)(2), including provisional rejections under 35 U.S.C. 102(a)(2) and under 35 U.S.C. 103 based on provisional prior art under 35 U.S.C. 102(a)(2); and
• (D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 35 U.S.C. 103, including any rejections based on prior art under 35 U.S.C. 102(a)(2), until such time that the subject matter disclosed in the reference is shown to be excepted under 35 U.S.C. 102(b)(2)(C). When applying any disclosures that only qualify as prior art under 35 U.S.C. 102(a)(2) in a prior art rejection against the claims, the examiner should anticipate that the subject matter disclosed in the reference may be excepted under 35 U.S.C. 102(b)(2)(C) and consider whether other rejections based on alternative prior art should be made in case the subject matter is excepted as prior art. See MPEP § 717.02(b). If the disclosure applied in the rejection is properly excepted as prior art under 35 U.S.C. 102(a)(2) and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made, except as provided in MPEP § 706.07(a) and this section. If the subject matter disclosed in the reference is excepted as prior art under the joint research agreement provision of 35 U.S.C. 102(c) and a new subsequent double patenting rejection based upon the excepted subject matter is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.

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

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

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

III. DOUBLE PATENTING REJECTIONS

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

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

717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 - 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

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

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