Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
To learn more:
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
To learn more:
MPEP 2152.06 – Overcoming A 35 U.S.C. 102(A)(1) Or 102(A)(2) Rejection (1)
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
To learn more:
MPEP 2154.01(D) – Provisional Rejections Under 35 U.S.C. 102(A)(2); Reference Is A Copending U.S. Patent Application (1)
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
To learn more:
Patent Law (2)
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
To learn more:
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
To learn more:
Patent Procedure (2)
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.
MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned in this subsection may also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art.“
This means that benefit claims, priority claims, affidavits or declarations under 37 CFR 1.130, and establishing common ownership or a Joint Research Agreement can all be used to address both 102 and 103 rejections based on the same prior art.
To learn more:
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
To learn more: