[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.]

5. If the commonly assigned application or patent is prior art under 35 U.S.C. 102(a)(2), a rejection may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.

2. A rejection under 35 U.S.C. 102(a)(2) / 103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.

2. A rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) using form paragraph 7.21.fti, 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

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.

3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.

3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.

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.

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 is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.

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.

The guidance provided in this section pertains only to a double patenting analysis when the subject matter in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c). The guidance as to the application of the prior art exception in 35 U.S.C. 102(b)(2)(C) or the prior art disqualification in pre-AIA 35 U.S.C. 103(c) in this section as well as MPEP §§ 717.02 et seq., 2146.02, and 2154.02(c) is not determinative as to whether there is a common applicant, assignee, or owner in a double patenting analysis. Specifically, the “same person” requirement in 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) that “the subject matter disclosed and the claimed invention” be “owned by the same person or subject to an obligation of assignment to the same person” strictly requires that each owner be the same. For purposes of whether there is a common applicant in a double patenting analysis, the examiner will need to determine the ownership at the time of examination. This analysis is different from the analysis required by 35 U.S.C. 102(b)(2)(C), which requires determining ownership not later than the effective filing date of the claimed invention, and pre-AIA 35 U.S.C. 103(c), which requires determining ownership at the time the claimed invention was made.

The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which amended pre-AIA 35 U.S.C. 103(c), was enacted on December 10, 2004. The CREATE Act permits an applicant or patentee, who is a party to a joint research agreement, to disqualify prior art that is applied in a rejection under pre-AIA 35 U.S.C. 103(a) and that is otherwise available as prior art only under pre-AIA 35 U.S.C. 102(e), (f) or (g). Congress recognized that this amendment to pre-AIA 35 U.S.C. 103(c) would result in situations in which there would be double patenting between patents or applications not owned by the same party. See H.R. Rep. No. 108-425, at 5-6 (2003).

The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which amended pre-AIA 35 U.S.C. 103(c), was enacted on December 10, 2004. The CREATE Act permits an applicant or patentee, who is a party to a joint research agreement, to disqualify prior art that is applied in a rejection under pre-AIA 35 U.S.C. 103(a) and that is otherwise available as prior art only under pre-AIA 35 U.S.C. 102(e), (f) or (g). Congress recognized that this amendment to pre-AIA 35 U.S.C. 103(c) would result in situations in which there would be double patenting between patents or applications not owned by the same party. See H.R. Rep. No. 108-425, at 5-6 (2003).

Pursuant to the CREATE Act, non-commonly owned applications or patents that are subject to a joint research agreement may be treated as if they are “commonly owned,” i.e., owned or subject to assignment by the same person, for the purposes of determining obviousness if certain conditions are met. See pre-AIA 35 U.S.C. 103(c)(2). The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See pre-AIA 35 U.S.C. 103(c)(3). See also MPEP § 2146.02.

Pursuant to the CREATE Act, non-commonly owned applications or patents that are subject to a joint research agreement may be treated as if they are “commonly owned,” i.e., owned or subject to assignment by the same person, for the purposes of determining obviousness if certain conditions are met. See pre-AIA 35 U.S.C. 103(c)(2). The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See pre-AIA 35 U.S.C. 103(c)(3). See also MPEP § 2146.02.

Two inventions come within the provisions of pre-AIA 35 U.S.C. 103(c)(2), for pre-AIA applications pending on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination issued after December 10, 2004 and is subject to pre-AIA law, when:

• (A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
• (B) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
• (C) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
• (D) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

A determination of priority is not required when two inventions are commonly owned as set forth in 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c)(1).

Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on or before the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention cannot be used as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.

Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on or before the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention cannot be used as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.

If it is determined that the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) do NOT apply to a reference disclosure, the examiner should make (A) any appropriate double patenting rejection(s), and (B) the appropriate prior art rejection(s) under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the application being examined. See the charts in MPEP § 804. Rejections under 35 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated solely by filing a terminal disclaimer.

If the prior art disqualification under pre-AIA 35 U.S.C. 103(c) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under pre-AIA 35 U.S.C. 103(a) for an obviousness rejection. The prior art disqualification under pre-AIA 35 U.S.C. 103(c) does not apply to subject matter that qualifies as anticipatory prior art under pre-AIA 35 U.S.C. 102 and also cannot be used to overcome a double patenting rejection, whether statutory or nonstatutory.

2. A rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) using form paragraph 7.21.fti, 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.

4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) prevents the reference from being disqualified under pre-AIA 35 U.S.C. 103(c), form paragraph 7.20.01.fti must follow this form paragraph.

1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application that would be prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a patent and also has either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03(a).

9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

• evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
• the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03.

The guidance provided in this section pertains only to a double patenting analysis when the subject matter in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c). The guidance as to the application of the prior art exception in 35 U.S.C. 102(b)(2)(C) or the prior art disqualification in pre-AIA 35 U.S.C. 103(c) in this section as well as MPEP §§ 717.02 et seq., 2146.02, and 2154.02(c) is not determinative as to whether there is a common applicant, assignee, or owner in a double patenting analysis. Specifically, the “same person” requirement in 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) that “the subject matter disclosed and the claimed invention” be “owned by the same person or subject to an obligation of assignment to the same person” strictly requires that each owner be the same. For purposes of whether there is a common applicant in a double patenting analysis, the examiner will need to determine the ownership at the time of examination. This analysis is different from the analysis required by 35 U.S.C. 102(b)(2)(C), which requires determining ownership not later than the effective filing date of the claimed invention, and pre-AIA 35 U.S.C. 103(c), which requires determining ownership at the time the claimed invention was made.

The guidance provided in this section pertains only to a double patenting analysis when the subject matter in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c). The guidance as to the application of the prior art exception in 35 U.S.C. 102(b)(2)(C) or the prior art disqualification in pre-AIA 35 U.S.C. 103(c) in this section as well as MPEP §§ 717.02 et seq., 2146.02, and 2154.02(c) is not determinative as to whether there is a common applicant, assignee, or owner in a double patenting analysis. Specifically, the “same person” requirement in 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) that “the subject matter disclosed and the claimed invention” be “owned by the same person or subject to an obligation of assignment to the same person” strictly requires that each owner be the same. For purposes of whether there is a common applicant in a double patenting analysis, the examiner will need to determine the ownership at the time of examination. This analysis is different from the analysis required by 35 U.S.C. 102(b)(2)(C), which requires determining ownership not later than the effective filing date of the claimed invention, and pre-AIA 35 U.S.C. 103(c), which requires determining ownership at the time the claimed invention was made.

Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) not later than the effective filing date of the claimed invention. Applications or patents are “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 717.02(a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections and also may not be used as a secondary teaching in a nonstatutory double patenting rejection. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) not later than the effective filing date of the claimed invention. Applications or patents are “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 717.02(a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections and also may not be used as a secondary teaching in a nonstatutory double patenting rejection. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) not later than the effective filing date of the claimed invention. Applications or patents are “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 717.02(a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections and also may not be used as a secondary teaching in a nonstatutory double patenting rejection. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) not later than the effective filing date of the claimed invention. Applications or patents are “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 717.02(a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections and also may not be used as a secondary teaching in a nonstatutory double patenting rejection. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) not later than the effective filing date of the claimed invention. Applications or patents are “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 717.02(a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections and also may not be used as a secondary teaching in a nonstatutory double patenting rejection. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

Pursuant to the CREATE Act, non-commonly owned applications or patents that are subject to a joint research agreement may be treated as if they are “commonly owned,” i.e., owned or subject to assignment by the same person, for the purposes of determining obviousness if certain conditions are met. See pre-AIA 35 U.S.C. 103(c)(2). The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See pre-AIA 35 U.S.C. 103(c)(3). See also MPEP § 2146.02.

Two inventions come within the provisions of pre-AIA 35 U.S.C. 103(c)(2), for pre-AIA applications pending on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination issued after December 10, 2004 and is subject to pre-AIA law, when:
…
(D) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on or before the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention cannot be used as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.

Further, if a copending application has an effectively filed date under 35 U.S.C. 102(d) that is earlier than the effective filing date of claims under examination, the examiner should consider making a provisional rejection based on the copending application, under 35 U.S.C. 102(a)(2), using form paragraph 7.15.01.aia or under 35 U.S.C. 103 using form paragraph 7.21.01.aia. Similarly for pre-AIA applications, rejections should be considered under pre-AIA 35 U.S.C. 102(e) or 102(e) / 103(a), using form paragraph 7.15.01.fti or 7.21.01.fti. Rejections under 35 U.S.C. 102 or 103 cannot be obviated solely by the filing of a terminal disclaimer.

1. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.

1. This form paragraph is used to reject over a patent or patent application publication that is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common (joint) inventor.

1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application that would be prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a patent and also has either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03(a).

2. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.

1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03.

The guidance provided in this section pertains only to a double patenting analysis when the subject matter in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c). The guidance as to the application of the prior art exception in 35 U.S.C. 102(b)(2)(C) or the prior art disqualification in pre-AIA 35 U.S.C. 103(c) in this section as well as MPEP §§ 717.02 et seq., 2146.02, and 2154.02(c) is not determinative as to whether there is a common applicant, assignee, or owner in a double patenting analysis. Specifically, the “same person” requirement in 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) that “the subject matter disclosed and the claimed invention” be “owned by the same person or subject to an obligation of assignment to the same person” strictly requires that each owner be the same. For purposes of whether there is a common applicant in a double patenting analysis, the examiner will need to determine the ownership at the time of examination. This analysis is different from the analysis required by 35 U.S.C. 102(b)(2)(C), which requires determining ownership not later than the effective filing date of the claimed invention, and pre-AIA 35 U.S.C. 103(c), which requires determining ownership at the time the claimed invention was made.

The guidance provided in this section pertains only to a double patenting analysis when the subject matter in the reference is excepted as prior art under 35 U.S.C. 102(b)(2)(C) or the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c). The guidance as to the application of the prior art exception in 35 U.S.C. 102(b)(2)(C) or the prior art disqualification in pre-AIA 35 U.S.C. 103(c) in this section as well as MPEP §§ 717.02 et seq., 2146.02, and 2154.02(c) is not determinative as to whether there is a common applicant, assignee, or owner in a double patenting analysis. Specifically, the “same person” requirement in 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) that “the subject matter disclosed and the claimed invention” be “owned by the same person or subject to an obligation of assignment to the same person” strictly requires that each owner be the same. For purposes of whether there is a common applicant in a double patenting analysis, the examiner will need to determine the ownership at the time of examination. This analysis is different from the analysis required by 35 U.S.C. 102(b)(2)(C), which requires determining ownership not later than the effective filing date of the claimed invention, and pre-AIA 35 U.S.C. 103(c), which requires determining ownership at the time the claimed invention was made.

Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on or before the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention cannot be used as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.

Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on or before the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention cannot be used as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.

Pursuant to 37 CFR 1.78(g), where an application or a patent under reexamination and at least one other application by different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed on or before the effective filing date) or pre-AIA 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). For example, if the assignee states that the provisions of pre-AIA 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia and 8.28.01.fti may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(g) or to take certain actions. In order to avoid abandonment, the assignee must comply with the requirements under 37 CFR 1.78(g) unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention cannot be used as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(g) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) is complete.

Form paragraphs 8.27.aia, 8.27.fti, 8.28.aia, 8.28.fti, 8.28.01.aia, and 8.28.01.fti may be used to require the applicant to resolve issues that may arise in applications that have different inventors but a common assignee and claim the same or patentably indistinct inventions.

9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.

9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.

1. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.

9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.

9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.

1. This form paragraph is used to reject over a patent or patent application publication that is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common (joint) inventor.

2. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.

1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03.

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.

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.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre AIA 35 U.S.C. 102 for the law otherwise applicable.]

Before making a requirement to identify the prior inventor in an application subject to pre-AIA 35 U.S.C. 102(f) or (g), and threatening to hold the application abandoned if the statement is not made by the assignee, the examiner must make sure that claims in the application under examination or patent under reexamination and the claims in the other application(s) are conflicting as defined in MPEP § 804. See In re Rekers, 203 USPQ 1034 (Comm’r Pat. 1979).

5. If the commonly assigned application or patent is prior art under pre-AIA 35 U.S.C. 102(e), a rejection may also be made using form paragraph 7.15.01.fti or 7.15.02.fti.

1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.

1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.

5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.

Further, if a copending application has an effectively filed date under 35 U.S.C. 102(d) that is earlier than the effective filing date of claims under examination, the examiner should consider making a provisional rejection based on the copending application, under 35 U.S.C. 102(a)(2), using form paragraph 7.15.01.aia or under 35 U.S.C. 103 using form paragraph 7.21.01.aia. Similarly for pre-AIA applications, rejections should be considered under pre-AIA 35 U.S.C. 102(e) or 102(e) / 103(a), using form paragraph 7.15.01.fti or 7.21.01.fti. Rejections under 35 U.S.C. 102 or 103 cannot be obviated solely by the filing of a terminal disclaimer.

8. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.

1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03.

The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which amended pre-AIA 35 U.S.C. 103(c), was enacted on December 10, 2004. The CREATE Act permits an applicant or patentee, who is a party to a joint research agreement, to disqualify prior art that is applied in a rejection under pre-AIA 35 U.S.C. 103(a) and that is otherwise available as prior art only under pre-AIA 35 U.S.C. 102(e), (f) or (g). Congress recognized that this amendment to pre-AIA 35 U.S.C. 103(c) would result in situations in which there would be double patenting between patents or applications not owned by the same party. See H.R. Rep. No. 108-425, at 5-6 (2003).

Before making a requirement to identify the prior inventor in an application subject to pre-AIA 35 U.S.C. 102(f) or (g), and threatening to hold the application abandoned if the statement is not made by the assignee, the examiner must make sure that claims in the application under examination or patent under reexamination and the claims in the other application(s) are conflicting as defined in MPEP § 804. See In re Rekers, 203 USPQ 1034 (Comm’r Pat. 1979).

3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b). In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b). In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.

5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01.fti instead of this paragraph.

2. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.

2. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.

2. This form paragraph is used to provisionally reject claims over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.

2. This form paragraph is used to provisionally reject claims over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.

See MPEP § 717.02 et seq. for information pertaining to establishment of common ownership and the existence of a joint research agreement pursuant to 35 U.S.C. 102(c), as well as examination practice relating to 35 U.S.C. 102(b)(2)(C). See MPEP § 2146 et seq. for information pertaining to establishment of common ownership and the existence of a joint research agreement pursuant to pre-AIA 35 U.S.C. 103(c), as well as examination practice relating to pre-AIA 35 U.S.C. 103(c).

Applications or patents are “commonly owned” pursuant to 35 U.S.C. 102(b)(2)(C) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) not later than the effective filing date of the claimed invention. Applications or patents are “commonly owned” pursuant to pre-AIA 35 U.S.C. 103(c)(1) if they were wholly or entirely owned by the same person(s), or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention. See MPEP § 717.02(a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be 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. If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections and also may not be used as a secondary teaching in a nonstatutory double patenting rejection. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

Under pre-AIA 35 U.S.C. 103(c)(1), two inventions of different inventive entities come within the common ownership provisions when:

• (A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
• (B) the earlier invention qualifies as prior art for purposes of obviousness under 35 U.S.C. 103 against the later invention only under subsections (f) or (g) of 35 U.S.C. 102, or under 35 U.S.C. 102(e) for applications pending on or after December 10, 2004, for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination was filed on or after November 29, 1999; and
• (C) the inventions were, at the time the later invention was made, owned by the same person or subject to an obligation of assignment to the same person.

If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for an anticipation and/or obviousness rejection, and also may not be used as a secondary reference in a nonstatutory double patenting rejection. However, the claims of a reference excepted under 35 U.S.C. 102(b)(2)(C) may still be the basis for a double patenting rejection, whether statutory or nonstatutory.

If the prior art disqualification under pre-AIA 35 U.S.C. 103(c) is properly invoked, the excepted subject matter disclosed in the commonly owned or joint research agreement reference is not available as prior art under pre-AIA 35 U.S.C. 103(a) for an obviousness rejection. The prior art disqualification under pre-AIA 35 U.S.C. 103(c) does not apply to subject matter that qualifies as anticipatory prior art under pre-AIA 35 U.S.C. 102 and also cannot be used to overcome a double patenting rejection, whether statutory or nonstatutory.

7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.

8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.

3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:

• a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
• a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
• a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention. If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).

3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following: If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).

• a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
• a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
• a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.

2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is by another and is one of the following: See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.

• a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
• a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
• a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.

2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is by another and is one of the following: See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.

• a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
• a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
• a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.

3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.

3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.

5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.

3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.

Claims may also be rejected on the grounds of nonstatutory double patenting in certain non-commonly owned applications that claim inventions resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2). This prevents the parties to the joint research agreement from obtaining two or more patents with different expiration dates covering nearly identical subject matter.

10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.

10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.

If it is determined that the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) do NOT apply to a reference disclosure, the examiner should make (A) any appropriate double patenting rejection(s), and (B) the appropriate prior art rejection(s) under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the application being examined. See the charts in MPEP § 804. Rejections under 35 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated solely by filing a terminal disclaimer.

Further, if a copending application has an effectively filed date under 35 U.S.C. 102(d) that is earlier than the effective filing date of claims under examination, the examiner should consider making a provisional rejection based on the copending application, under 35 U.S.C. 102(a)(2), using form paragraph 7.15.01.aia or under 35 U.S.C. 103 using form paragraph 7.21.01.aia. Similarly for pre-AIA applications, rejections should be considered under pre-AIA 35 U.S.C. 102(e) or 102(e) / 103(a), using form paragraph 7.15.01.fti or 7.21.01.fti. Rejections under 35 U.S.C. 102 or 103 cannot be obviated solely by the filing of a terminal disclaimer.

2. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.

3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application's prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. This is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well established that claims in different applications need be more than merely different in form or content and that patentable distinction must exist to entitle applicants to a second patent); see also In re Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).

Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. This is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well established that claims in different applications need be more than merely different in form or content and that patentable distinction must exist to entitle applicants to a second patent); see also In re Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).

Under pre-AIA 35 U.S.C. 103(c)(1), two inventions of different inventive entities come within the common ownership provisions when:
…
(C) the inventions were, at the time the later invention was made, owned by the same person or subject to an obligation of assignment to the same person.

Pursuant to the CREATE Act, non-commonly owned applications or patents that are subject to a joint research agreement may be treated as if they are “commonly owned,” i.e., owned or subject to assignment by the same person, for the purposes of determining obviousness if certain conditions are met. See pre-AIA 35 U.S.C. 103(c)(2). The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See pre-AIA 35 U.S.C. 103(c)(3). See also MPEP § 2146.02.

The examiner should make both a double patenting rejection based on common ownership and a rejection based on prior art when the facts support both rejections. Until applicant has established that a reference is excepted as prior art under the joint research agreement defined in 35 U.S.C. 102(c) or disqualified as prior art under the joint research agreement defined in pre-AIA 35 U.S.C. 103(c)(2) and (3), the examiner should NOT apply a double patenting rejection based on a joint research agreement. See MPEP §§ 706.07(a), 717.02(c), and 804, subsection VI, for information regarding when an Office action that includes a new subsequent double patenting rejection based upon a reference subject to a joint research agreement defined in 35 U.S.C. 102(c) and pre-AIA 35 U.S.C. 103(c)(2) and (3) may be made final.

The examiner should make both a double patenting rejection based on common ownership and a rejection based on prior art when the facts support both rejections. Until applicant has established that a reference is excepted as prior art under the joint research agreement defined in 35 U.S.C. 102(c) or disqualified as prior art under the joint research agreement defined in pre-AIA 35 U.S.C. 103(c)(2) and (3), the examiner should NOT apply a double patenting rejection based on a joint research agreement. See MPEP §§ 706.07(a), 717.02(c), and 804, subsection VI, for information regarding when an Office action that includes a new subsequent double patenting rejection based upon a reference subject to a joint research agreement defined in 35 U.S.C. 102(c) and pre-AIA 35 U.S.C. 103(c)(2) and (3) may be made final.

6. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.fti.

6. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.fti.

2. This form paragraph is used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2). These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.

2. This form paragraph is used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2). These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.

4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b). In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b). In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.

5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). See pre AIA 35 U.S.C. 102 for the law otherwise applicable.]

The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which amended pre-AIA 35 U.S.C. 103(c), was enacted on December 10, 2004. The CREATE Act permits an applicant or patentee, who is a party to a joint research agreement, to disqualify prior art that is applied in a rejection under pre-AIA 35 U.S.C. 103(a) and that is otherwise available as prior art only under pre-AIA 35 U.S.C. 102(e), (f) or (g). Congress recognized that this amendment to pre-AIA 35 U.S.C. 103(c) would result in situations in which there would be double patenting between patents or applications not owned by the same party. See H.R. Rep. No. 108-425, at 5-6 (2003).

The joint research agreement provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 2146.01. The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following:

• A. 35 U.S.C. 102(c) is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focuses on the date that the claimed invention was made; and
• B. The 2004 CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only apply to obviousness rejections and not to anticipation and double patenting rejections. This follows from the fact that the CREATE Act merely provides that a reference may not be applied to support obviousness rejections under pre-AIA 35 U.S.C. 103(a), while the prior art exceptions of 35 U.S.C. 102(b) establish that a reference is not prior art for any purpose.

The joint research agreement provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 2146.01. The major differences between 35 U.S.C. 102(c) and the CREATE Act are the following:
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B. The 2004 CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only apply to obviousness rejections and not to anticipation and double patenting rejections. This follows from the fact that the CREATE Act merely provides that a reference may not be applied to support obviousness rejections under pre-AIA 35 U.S.C. 103(a), while the prior art exceptions of 35 U.S.C. 102(b) establish that a reference is not prior art for any purpose.

If it is determined that the provisions of 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c) do NOT apply to a reference disclosure, the examiner should make (A) any appropriate double patenting rejection(s), and (B) the appropriate prior art rejection(s) under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the application being examined. See the charts in MPEP § 804. Rejections under 35 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated solely by filing a terminal disclaimer.

1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b). In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b). In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.

3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.