How can an applicant establish common ownership to disqualify prior art under pre-AIA 35 U.S.C. 103(c)?
An applicant can establish common ownership to disqualify prior art under pre-AIA 35 U.S.C. 103(c) by submitting a clear and conspicuous statement that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. This statement must be signed in accordance with 37 CFR 1.33(b).
The MPEP provides an example: For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected under pre-AIA 35 U.S.C. 103(a) using Patent A in view of Patent B wherein Patent A is only available as prior art under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that: “Application X and Patent A were, at the time the invention of Application X was made, owned by Company Z.” This statement alone is sufficient to disqualify Patent A from being used in a rejection under pre-AIA 35 U.S.C. 103(a) against the claims of Application X.
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