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.
An applicant can overcome a 35 U.S.C. 102(a)(2) rejection based on prior art with a common assignee by invoking the common ownership exception under 35 U.S.C. 102(b)(2)(C). According to MPEP 2152.06:
“An applicant may show that the subject matter of the reference and the claimed invention were, not later than the effective filing date of the claimed invention, owned by the same person or subject to an obligation of assignment to the same person.“
To invoke this exception, the applicant must provide a clear and conspicuous statement on the record. This statement should:
- Identify the subject matter of the reference and the claimed invention
- Declare that the subject matter and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention
It’s important to note that this exception only applies to 35 U.S.C. 102(a)(2) rejections and cannot be used to overcome 35 U.S.C. 102(a)(1) rejections.