When can a provisional rejection be made under AIA 35 U.S.C. 102(a)(2)?

A provisional rejection under AIA 35 U.S.C. 102(a)(2) can be made in certain circumstances involving copending U.S. patent applications. The MPEP outlines two main scenarios:

1. Applications with common inventors, applicants, or assignees:

   A provisional rejection can be made if:

   • The applications have at least one common inventor, common applicant, or are commonly assigned.
   • The first application, upon publication or issuance, would qualify as prior art under 35 U.S.C. 102(a)(2) to the second application.
2. Redacted applications:

   A provisional rejection may be made if:

   • The earlier filed, pending application has been published as redacted under 37 CFR 1.217.
   • The subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.

The MPEP states: Since the first application is not published or issued at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(a)(2) or 103.

It’s important to note that if there is no common assignee, applicant, or inventor, and the application was not published, the confidential status of applications under 35 U.S.C. 122(a) must be maintained, and no rejection can be made based on the unpublished application.

To learn more:

• AIA
• provisional rejection
• copending applications
• redacted applications