717.02(c) Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA.
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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 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 submission is filed 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, 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, 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); 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).
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.
- 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.
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.
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.
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.
