804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement
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[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre AIA 35 U.S.C. 102 for the law otherwise applicable.]
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(b) Exceptions.- *****
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— *****
(C) 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.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
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[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.]
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(c)
(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —(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.(3) For purposes of paragraph (2), the term “joint research agreement” means 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.
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(g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
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(c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
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I. DOUBLE PATENTING
Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting.
Claims may also be rejected on the grounds of nonstatutory double patenting in certain non-commonly owned applications that claim inventions resulting from activities undertaken within the scope of a joint research agreement.
- This prevents the parties to the joint research agreement from obtaining two or more patents with different expiration dates covering nearly identical subject matter.
Nonstatutory double patenting rejections can be overcome in certain circumstances by disclaiming the terminal portion of the term of the later 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 life.
II. IDENTIFYING COMMONLY OWNED AND NON-COMMONLY OWNED INVENTIONS SUBJECT TO A JOINT RESEARCH AGREEMENT
A. Common Ownership by the Same Person(s) or Organization(s)
Applications or patents are “commonly owned” if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies), at the time the claimed invention was filed or made, respectively.
Under pre-AIA 35 U.S.C. 103(c)(1), two inventions of different inventive entities come within the common ownership provisions when:
- (A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
- (B) the earlier invention qualifies as prior art for purposes of obviousness under 35 U.S.C. 103 against the later invention only under subsections (f) or (g) of 35 U.S.C. 102, or under 35 U.S.C. 102(e) for applications pending on or after December 10, 2004, for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination was filed on or after November 29, 1999; and
- (C) the inventions were, at the time the later invention was made, owned by the same person or subject to an obligation of assignment to the same person.
B. Non-Commonly Owned Inventions Subject to a Joint Research Agreement
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) which amended pre-AIA 35 U.S.C. 103(c), was enacted on December 10, 2004.
- The CREATE Act permits an applicant or patentee, who is a party to a joint research agreement, to disqualify prior art that is applied in a rejection under pre-AIA 35 U.S.C. 103(a) and that is otherwise available as prior art only under pre-AIA 35 U.S.C. 102(e), (f) or (g).
- Congress recognized that this amendment to pre-AIA 35 U.S.C. 103(c) would result in situations in which there would be double patenting between patents or applications not owned by the same party.
Pursuant to the CREATE Act, non-commonly owned applications or patents that are subject to a joint research agreement may be treated as if they are “commonly owned,” i.e., owned or subject to assignment by the same person, for the purposes of determining obviousness if certain conditions are met.
Two inventions come within the provisions of pre-AIA 35 U.S.C. 103(c)(2), for pre-AIA applications pending on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination issued after December 10, 2004 and is subject to pre-AIA law, when:
- (A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
- (B) 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;
- (C) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- (D) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
C. Timing of Double Patenting Rejections
The examiner should make both a double patenting rejection based on common ownership and a rejection based on prior art when the facts support both rejections.
- Until applicant has established that a reference is disqualified as prior art under the joint research agreement defined in 35 U.S.C. 102(c) and pre-AIA 35 U.S.C. 103(c)(2) and (3), the examiner should NOT apply a double patenting rejection based on a joint research agreement.
III. DETERMINING INVENTION PRIORITY
A determination of priority is not required when two inventions are commonly owned as set forth in 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c)(1).
Where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made).
An application in which a requirement to name the prior inventor has been made will not be held abandoned where a timely response indicates that the other application is abandoned or will be permitted to become abandoned and will not be filed as a continuing application.
