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2154    Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed Invention

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY AIA 35 U.S.C. 102(a)(2) sets forth three types of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.

AIA 35 U.S.C. 102(a)(2) sets forth three types of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section discusses prior art under AIA 35 U.S.C. 102(a)(2). These are termed U.S. patent documents. They include U.S. patents, U.S. patent application publications, and certain WIPO published applications.

AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor:

• U.S. patents;
• U.S. patent application publications; and
• certain WIPO published applications.

These documents are referred to collectively as “U.S. patent documents.”

• These documents may have different prior art effects under pre-AIA 35 U.S.C. 102(e) than under AIA 35 U.S.C. 102(a)(2).
• Note that a U.S. patent document may also be prior art under AIA 35 U.S.C. 102(a)(1) if its issue or publication date is before the effective filing date of the claimed invention in question.

If the issue date of the U.S. patent or publication date of the U.S. patent application publication or WIPO published application is not before the effective filing date of the claimed invention, it may be applicable as prior art under AIA 35 U.S.C. 102(a)(2) if it was “effectively filed” before the effective filing date of the claimed invention in question with respect to the subject matter relied upon to reject the claim.

2154.01(a)   WIPO Published Applications

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section provides details on WIPO published applications as prior art.

The WIPO publication of a PCT international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C. 374.

• Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States.
• Accordingly, a U.S. patent, a U.S. patent application publication, or a WIPO published application that names another inventor and was effectively filed before the effective filing date of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2).
  • This differs from the treatment of a WIPO published application under pre-AIA 35 U.S.C. 102(e), where a WIPO published application is treated as a U.S. patent application publication only if the PCT application was filed on or after November 29, 2000, designated the United States, and is published under PCT Article 21(2) in the English language.

2154.01(b)   Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d)

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section discusses determining when subject matter was effectively filed under AIA 35 U.S.C. 102(d).

AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date, or the filing date of a prior application to which there is a priority or benefit claim (AIA 35 U.S.C. 102(d)(2)).

A U.S. patent document “is entitled to claim” priority to, or the benefit of, a prior-filed application if it fulfills the ministerial requirements of:

• containing a priority or benefit claim to the prior-filed application;
• being filed within the applicable filing period requirement (copending with or within twelve months of the earlier filing, as applicable); and
• having a common inventor or being by the same applicant.

The AIA draws a distinction between actually being entitled to priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention, and merely being entitled to claim priority to, or the benefit of, a prior-filed application according to the use of “effectively filed” in AIA 35 U.S.C. 102(d).

• As a result of this distinction, the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was “effectively filed” for prior art purposes.
• Thus, as was the case even prior to the AIA, there is no need to evaluate whether any claim of a U.S. patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365 when applying such a document as prior art.

AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection.

• However, AIA 35 U.S.C. 102(d) does not require that this description meet the enablement requirements of 35 U.S.C. 112(a).
• As discussed previously with respect to AIA 35 U.S.C. 102(a)(1), the Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under AIA 35 U.S.C. 102.

The AIA also eliminates the so-called Hilmer doctrine.

• Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date.

In contrast, AIA 35 U.S.C. 102(d) provides that if the U.S. patent document claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.

• Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, the U.S. patent document is effective as prior art as of the filing date of the earliest such application, regardless of where filed.
• When examining an application to which the AIA changes in 35 U.S.C. 102 and 103 do not apply, Office personnel will continue to apply the Hilmer doctrine, and foreign priority dates may not be used in determining pre-AIA 35 U.S.C. 102(e) prior art dates.
• Note that the international filing date of a published PCT application may be the pre-AIA 35 U.S.C. 102(e) prior art date under pre-AIA law under certain circumstances.

2154.01(c)   Requirement Of “Names Another Inventor”

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section addresses the requirement of 'names another inventor' in AIA 35 U.S.C. 102(a)(2). Essentially, there must be a difference in the inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination in order to satisfy the 'names another inventor' requirement.

To qualify as prior art under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) must “name[ ] another inventor.”

• This means that if there is any difference in inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination, the U.S. patent document satisfies the “names another inventor” requirement of AIA 35 U.S.C. 102(a)(2).
• Thus, in the case of joint inventors, only one joint inventor needs to be different for the inventive entities to be different.
• Even if there are one or more joint inventors in common in a U.S. patent document and the later-filed application under examination or patent under reexamination, the U.S. patent document qualifies as prior art under AIA 35 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.

2154.01(d) Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application

MPEP SECTION SUMMARY This section covers provisional rejections under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) where the reference is a copending U.S. patent application. It covers instances where the copending U.S. applications have at least one common inventor or are commonly assigned and instances where copending applications have no common inventor or assignee.

If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) of the later filed application can be made.

• In addition, a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.

I.   COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED

If (1) at least one common inventor exists between the applications or the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made.

• The provisional rejection is appropriate in circumstances where if the earlier filed application is published or becomes a patent it would constitute actual prior art under 35 U.S.C. 102.
• Since the earlier-filed application is not published at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e).
  
• A provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) rejection can be overcome.
• The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.

II.   COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE

If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e).

• For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper.

If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met.

• After the patent is published, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) in the still pending application as appropriate.

 

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers prior art exceptions under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2).

2154.02(a)   Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception)

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers prior art exceptions under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) which focuses on inventor-originated disclosure exceptions.

AIA 35 U.S.C. 102(b)(2)(A) provides an exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2).

• This exception limits the use of an inventor's own work as prior art, when the inventor's own work is disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.

Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) may be disqualified as prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.

• Thus, if the subject matter in a U.S. patent document upon which the rejection is based is by another who obtained the subject matter from the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2).

2154.02(b)   Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor or Inventor-Originated Prior Public Disclosure Exception)

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers prior art exceptions under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) which focuses on inventor or inventor-originated prior public disclosure exceptions.

AIA 35 U.S.C. 102(b)(2)(B) provides additional exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(2).

• These exceptions disqualify subject matter that was effectively filed by another after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.

Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”)) may be disqualified as prior art if the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.

• The previous public disclosure of the subject matter by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor must itself be a public disclosure (i.e., be either an inventor disclosure by the inventor or a joint inventor or be an inventor-originated disclosure by another who obtained the subject matter directly or indirectly from the inventor or joint inventor).
• If a previous public disclosure by the inventor or which originated with the inventor is not within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could not be disqualified under AIA 35 U.S.C. 102(b)(1).

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.”

• The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor).
• There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity).
• There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document.
• What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor).

The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed.

• The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2).

In addition, if subject matter of an intervening U.S. patent document 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 directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening U.S. patent document.

Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent document.

• 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 AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.

2154.02(c)   Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment)

 This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section discusses the prior art exception under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) which includes common ownership or obligation of assignment.

AIA 35 U.S.C. 102(b)(2)(C) provides an additional exception to the prior art provisions of AIA 35 U.S.C. 102(a)(2).

• The exception of AIA 35 U.S.C. 102(b)(2)(C) disqualifies subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) from constituting prior art under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, “were owned by the same person or subject to an obligation of assignment to the same person.”

If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent document that might otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) is not available as prior art under either AIA 35 U.S.C. 102 or 103.

• This differs from pre-AIA 35 U.S.C. 103(c) in which prior art can preclude patentability under pre-AIA 35 U.S.C. 102, even if the conditions of pre-AIA 35 U.S.C. 103(c) are met.
• The consequence of this distinction is that a published application or an issued patent that falls under the common ownership exception of AIA 35 U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or an obviousness rejection.

It is important to note the circumstances in which the AIA 35 U.S.C. 102(b)(2)(C) exception does not remove a U.S. patent document as a basis for a rejection.

• The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective filing date of the claimed invention).
• Thus, if the issue date of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership or the existence of an obligation to assign.
• Also, even if a U.S. patent or U.S. published application is not prior art under AIA 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C. 102(b)(2)(C), a double patenting rejection (either statutory under 35 U.S.C. 101 or non-statutory, sometimes called obviousness-type) may still be made on the basis of the U.S. patent or U.S. patent application publication.
• Furthermore, the U.S. patent document that does not qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may still be cited, in appropriate situations, to indicate the state of the art when making a lack of enablement rejection under 35 U.S.C. 112(a).
• A document need not qualify as prior art to be applied in the context of double patenting, (prior art disqualified under the CREATE Act may be the basis for a double patenting rejection), or enablement.

The Office revised the rules of practice to include provisions that pertain to commonly owned or joint research agreement subject matter applies to an application that is subject to AIA 35 U.S.C. 102 and 35 U.S.C. 103, and 37 CFR 1.104(c)(5) applies to an application that is subject to pre-AIA 35 U.S.C. 102 and 103.

A clear and conspicuous statement by the applicant (or the applicant's representative of record) that the claimed invention of the application under examination and the subject matter disclosed in the U.S. patent document applied as prior art were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention will be sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C) exception applies.

Likewise, when relying on the provisions of pre-AIA 35 U.S.C. 103(c), the applicant (or the applicant's representative of record) can provide a similar statement required to disqualify the cited prior art.

• The applicant may present supporting evidence such as copies of assignment documents, but is not required to do so.
• Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the veracity of such a statement.
• The statement under AIA 35 U.S.C. 102(b)(2)(C) will generally be treated by Office personnel analogously to statements made under pre-AIA 35 U.S.C. 103(c).

If the publication date (in addition to the issue date) of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership or the existence of an obligation to assign.

 

» 2156  Joint Research Agreements