How does the USPTO handle applications with different inventors but common assignees?
The USPTO has specific procedures for handling applications with different inventors but common assignees, especially when dealing with potentially overlapping inventions. MPEP 817 provides guidance on this issue, particularly in the context of the First Inventor to File (FITF) provisions of the America Invents Act (AIA).
Form Paragraph 8.28.aia addresses situations where inventions are not patentably distinct but common ownership has not been established:
“Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].”
In such cases, the examiner may make a rejection under 35 U.S.C. 102(a)(2)/103 and a nonstatutory double patenting rejection. The applicant can overcome these rejections by:
- Amending the claims to be patentably distinct
- Filing a terminal disclaimer
- Providing evidence of common ownership not later than the effective filing date of the claimed invention
It’s important to note that the USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership, as stated in Form Paragraph 8.27.aia:
“The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411).”
Applicants and practitioners should be aware of these procedures to properly navigate situations involving different inventors but common assignees.
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