How does common ownership affect prior art under 35 U.S.C. 102(b)(2)(C)?

Common ownership can significantly affect prior art considerations under 35 U.S.C. 102(b)(2)(C). The MPEP states:

“35 U.S.C. 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application from constituting prior art under 35 U.S.C. 102(a)(2) if 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.'”

Key aspects of this exception:

  • It applies only to potential prior art under 35 U.S.C. 102(a)(2)
  • Common ownership must exist no later than the effective filing date of the claimed invention
  • It can be used to disqualify references that would otherwise be prior art
  • It’s similar to pre-AIA 35 U.S.C. 103(c), but with important differences

Applicants should be aware of this exception as it can be a valuable tool for overcoming certain prior art rejections, especially in cases involving related applications or patents within the same organization.

To learn more:

Topics: MPEP 2100 - Patentability, MPEP 2152.05 - Determining Whether To Apply 35 U.S.C. 102(A)(1) Or 102(A)(2), Patent Law, Patent Procedure
Tags: 102(B)(2)(C), AIA, common ownership, prior art exceptions