MPEP § 2154.01(d) — Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application (Annotated Rules)
§2154.01(d) Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application
This page consolidates and annotates all enforceable requirements under MPEP § 2154.01(d), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application
This section addresses Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application. Primary authority: 35 U.S.C. 102(a)(2), 35 U.S.C. 122(b), and 35 U.S.C. 122(a). Contains: 1 requirement, 1 guidance statement, and 4 permissions.
Key Rules
Anticipation/Novelty
If a first application has (1) at least one common (joint) inventor or common applicant with a second application or the applications are commonly assigned, and (2) the first application, upon publication or issuance, would qualify as prior art under 35 U.S.C. 102(a)(2) to the second application, then a provisional anticipation or obviousness rejection of the second application may be made on the basis of the first application. 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.
If a first application has (1) at least one common (joint) inventor or common applicant with a second application or the applications are commonly assigned, and (2) the first application, upon publication or issuance, would qualify as prior art under 35 U.S.C. 102(a)(2) to the second application, then a provisional anticipation or obviousness rejection of the second application may be made on the basis of the first application. 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.
35 U.S.C. 102 – Novelty / Prior Art
A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.
A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.
By Another Inventor Requirement
If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made. In addition, a provisional rejection under 35 U.S.C. 102(a)(2) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.
Prior Art Under 102(a)(2) – Earlier Filed Applications (MPEP 2154)
If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made. In addition, a provisional rejection under 35 U.S.C. 102(a)(2) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.
AIA vs Pre-AIA Practice
Form paragraph 7.15.01.aia should be used when making a provisional rejection under 35 U.S.C. 102(a)(2).
Assignee as Applicant Signature
If there is no common assignee, common applicant, or common (joint) inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the first (earlier filed), unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the first application will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent has issued, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) in the still pending application as appropriate. See MPEP §§ 2120.01 and 2154.
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
If there is no common assignee, common applicant, or common (joint) inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the first (earlier filed), unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the first application will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent has issued, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) in the still pending application as appropriate. See MPEP §§ 2120.01 and 2154.
Access to Patent Application Files (MPEP 101-106)
If there is no common assignee, common applicant, or common (joint) inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the first (earlier filed), unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the first application will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent has issued, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) in the still pending application as appropriate. See MPEP §§ 2120.01 and 2154.
Access to Pending Applications
If there is no common assignee, common applicant, or common (joint) inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the first (earlier filed), unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the first application will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent has issued, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) in the still pending application as appropriate. See MPEP §§ 2120.01 and 2154.
Citations
| Primary topic | Citation |
|---|---|
| 35 U.S.C. 102 – Novelty / Prior Art AIA vs Pre-AIA Practice Access to Patent Application Files (MPEP 101-106) Access to Pending Applications Anticipation/Novelty Assignee as Applicant Signature By Another Inventor Requirement Prior Art Under 102(a)(2) – Earlier Filed Applications (MPEP 2154) Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102(a)(2) |
| Access to Patent Application Files (MPEP 101-106) Access to Pending Applications Assignee as Applicant Signature Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102(g) |
| Access to Patent Application Files (MPEP 101-106) Access to Pending Applications Assignee as Applicant Signature Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 122(a) |
| Access to Patent Application Files (MPEP 101-106) Access to Pending Applications Assignee as Applicant Signature Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 122(b) |
| By Another Inventor Requirement Prior Art Under 102(a)(2) – Earlier Filed Applications (MPEP 2154) | 37 CFR § 1.217 |
| Access to Patent Application Files (MPEP 101-106) Access to Pending Applications Assignee as Applicant Signature Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2120.01 |
| 35 U.S.C. 102 – Novelty / Prior Art | MPEP § 2152.06 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.15.01 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2154.01(d) — Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application
Source: USPTO2154.01(d) Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application [R-01.2024]
If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made. In addition, a provisional rejection under 35 U.S.C. 102(a)(2) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.
I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON (JOINT) INVENTOR OR COMMON APPLICANT OR ARE COMMONLY ASSIGNEDIf a first application has (1) at least one common (joint) inventor or common applicant with a second application or the applications are commonly assigned, and (2) the first application, upon publication or issuance, would qualify as prior art under 35 U.S.C. 102(a)(2) to the second application, then a provisional anticipation or obviousness rejection of the second application may be made on the basis of the first application. 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.
A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.
Form paragraph 7.15.01.aia should be used when making a provisional rejection under 35 U.S.C. 102(a)(2).
II. COPENDING APPLICATIONS HAVING NO COMMON (JOINT) INVENTOR, APPLICANT, OR ASSIGNEEIf there is no common assignee, common applicant, or common (joint) inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the first (earlier filed), unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the first application will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent has issued, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) in the still pending application as appropriate. See MPEP §§ 2120.01 and 2154.