How can an applicant show common ownership to invoke the prior art exception?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), an applicant must demonstrate common ownership. According to MPEP 717.02(a):

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement.

To show common ownership, an applicant can:

• Provide a clear statement of common ownership
• Submit evidence of assignment records
• Demonstrate an obligation of assignment to the same person

The statement or evidence should establish that the common ownership existed not later than the effective filing date of the claimed invention. It’s crucial to make this statement or provide evidence in a clear and noticeable manner to ensure the examiner properly considers the prior art exception.