You are here:  Ed9 10.2019 Guidebook  » Appendix III: 35 U.S.C. 103

2146    Pre-AIA 35 U.S.C. 103(c)

MPEP SECTION SUMMARY This section focuses on pre-AIA 35 U.S.C. 103(c). Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via pre-AIA 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”

  This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

It is important to recognize that pre-AIA 35 U.S.C. 103(c) applies only to consideration of prior art for purposes of obviousness under 35 U.S.C. 103.

• It does not apply to or affect subject matter which is applied in a rejection under 35 U.S.C. 102 or a double patenting rejection.

I. APPLICABILITY OF PRE-AIA 35 U.S.C. 103(c)

Prior to November 29, 1999, pre-AIPA 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as "prior art" only under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under pre-AIA 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made.

Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via pre-AIA 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention "were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person."

Subsequently, the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) further amended pre-AIA 35 U.S.C. 103(c) to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met:

• (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
• (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
• (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement (hereinafter "joint research agreement disqualification").
  

II. FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999, AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004

Prior to November 29, 1999, pre-AIA 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as “prior art” only under subsections pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under pre-AIA 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made.

For applications filed prior to November 29, 1999, and granted as patents prior to December 10, 2004, the subject matter that is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) is strictly limited to subject matter that:

• qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g), and
  
• was commonly owned with the claimed invention at the time the invention was made.

If the subject matter that qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g) was not commonly owned at the time of the invention, the subject matter is not disqualified as prior art under pre-AIA 35 U.S.C. 103(c) in effect on December 9, 2004.

Inventors of subject matter not commonly owned at the time of the invention, but currently commonly owned, may file as joint inventors in a single application.

• However, the claims in such an application are not protected from a 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g).
• Applicants in such cases have an obligation pursuant to 37 CFR 1.56 to point out the inventor and invention dates of each claim and the lack of common ownership at the time the later invention was made to enable the examiner to consider the applicability of a 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g).
• The examiner will assume, unless there is evidence to the contrary, that applicants are complying with their duty of disclosure.

Foreign applicants will sometimes combine the subject matter of two or more related applications with different inventors into a single U.S. application naming joint inventors.

• The examiner will make the assumption, absent contrary evidence, that the applicants are complying with their duty of disclosure if no information is provided relative to invention dates and common ownership at the time the later invention was made.
• Such a claim for 35 U.S.C. 119(a)-(d) priority based upon the foreign filed applications is appropriate and 35 U.S.C. 119(a)-(d) priority can be accorded based upon each of the foreign filed applications.
  

 

» 2146.01 Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c)