MPEP § 717.02(d) — Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) (Annotated Rules)
§717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
This page consolidates and annotates all enforceable requirements under MPEP § 717.02(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.
Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
This section addresses Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C). Primary authority: 35 U.S.C. 102(b)(2)(C). Contains: 1 guidance statement.
Key Rules
AIA vs Pre-AIA Practice
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on subject matter disclosed in a reference that has since been excepted under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
AIA Effective Dates
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
Grace Period – Earlier Filed Application (102(b)(2))
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 – 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
AIA Grace Period Exceptions (MPEP 2153)
The following form paragraphs should be used in addressing the prior art exception under 35 U.S.C. 102(b)(2)(C):
Common Ownership Exception – 102(b)(2)(C)
2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to except subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
Anticipation/Novelty
2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to except subject matter disclosed in the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the attempt is ineffective.
35 U.S.C. 102 – Novelty / Prior Art
3. In bracket 1, identify the reference which discloses subject matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C).
Transmittal Content
4. In bracket 2, identify the reason(s) why the attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
Application Transmittal
4. In bracket 2, identify the reason(s) why the attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
Citations
| Primary topic | Citation |
|---|---|
| Grace Period – Earlier Filed Application (102(b)(2)) | 35 U.S.C. § 100 |
| AIA Effective Dates AIA vs Pre-AIA Practice | 35 U.S.C. § 102 |
| AIA vs Pre-AIA Practice | 35 U.S.C. § 102(a)(1) |
| Anticipation/Novelty Common Ownership Exception – 102(b)(2)(C) | 35 U.S.C. § 102(a)(2) |
| 35 U.S.C. 102 – Novelty / Prior Art AIA Grace Period Exceptions (MPEP 2153) Anticipation/Novelty Application Transmittal Common Ownership Exception – 102(b)(2)(C) Transmittal Content | 35 U.S.C. § 102(b)(2)(C) |
| Application Transmittal Transmittal Content | 37 CFR § 1.71(g)(1) |
| Grace Period – Earlier Filed Application (102(b)(2)) | MPEP § 2146 |
| Grace Period – Earlier Filed Application (102(b)(2)) | MPEP § 2159 |
| – | MPEP § 707.07(f) |
| AIA Effective Dates AIA vs Pre-AIA Practice | Form Paragraph § 7.03 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.20 |
| – | Form Paragraph § 7.38.01 |
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 § 717.02(d) — Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
Source: USPTO717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 – 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
The following form paragraphs should be used in addressing the prior art exception under 35 U.S.C. 102(b)(2)(C):
¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)
Applicant has provided a submission in this file that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although subject matter disclosed in the reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
- 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on subject matter disclosed in a reference that has since been excepted under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
- 3. In bracket 1, identify the common assignee.
- 4. In bracket 2, identify the reference which discloses the subject matter that has been excepted.
¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Examiner Note:
- 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).
¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision
Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the reference is not excepted as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required submission in order to properly except the subject matter under 35 U.S.C. 102(b)(2)(C). See MPEP § 2154.02(c).
In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A) to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
- 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to except subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
- 3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
- 4. In bracket 2, identify the common assignee.
¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)
Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly except the subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Examiner Note:
- 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to except subject matter disclosed in the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the attempt is ineffective.
- 3. In bracket 1, identify the reference which discloses subject matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C).
- 4. In bracket 2, identify the reason(s) why the attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).
Use form paragraph 7.38.01 or 7.38.02 where the submission is persuasive. See MPEP § 707.07(f).