Question 1

How does the AIA 35 U.S.C. 102(b)(2)(C) exception differ from pre-AIA 35 U.S.C. 103(c)?

Accepted Answer

How does the AIA 35 U.S.C. 102(b)(2)(C) exception differ from pre-AIA 35 U.S.C. 103(c)?

The AIA 35 U.S.C. 102(b)(2)(C) exception and the pre-AIA 35 U.S.C. 103(c) have some key differences:

Scope of Application: AIA 35 U.S.C. 102(b)(2)(C) applies to both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections, while pre-AIA 35 U.S.C. 103(c) only applied to obviousness rejections.
Timing of Common Ownership: Under AIA, common ownership must exist not later than the effective filing date of the claimed invention. Pre-AIA required common ownership at the time the claimed invention was made.
Subject Matter Covered: AIA covers a broader range of subject matter, including patents, patent application publications, and WIPO published applications. Pre-AIA was more limited in scope.

The AIA 35 U.S.C. 102(b)(2)(C) exception is significantly different from the pre-AIA 35 U.S.C. 103(c) exception in that the AIA 35 U.S.C. 102(b)(2)(C) exception applies to anticipation rejections (35 U.S.C. 102) and obviousness rejections (35 U.S.C. 103), whereas the pre-AIA 35 U.S.C. 103(c) exception applied only to obviousness rejections.

Understanding these differences is crucial for patent practitioners dealing with applications filed before and after the AIA implementation date.

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Question 2

Can the 35 U.S.C. 102(b)(2)(C) exception be used to overcome a double patenting rejection?

Accepted Answer

No, the 35 U.S.C. 102(b)(2)(C) exception cannot be used to overcome a double patenting rejection. The MPEP clearly states:

The 35 U.S.C. 102(b)(2)(C) exception is not effective to remove a disclosure applied as a basis for a double patenting rejection.

This means that even if subject matter is excepted as prior art under 35 U.S.C. 102(b)(2)(C), it can still be used as the basis for a double patenting rejection, either statutory or nonstatutory (obviousness-type).

It's important to note that if an amendment under 37 CFR 1.71(g) is submitted to overcome a prior art rejection based on excepted subject matter, the examiner may need to issue a new double patenting rejection. In such cases, the Office action can be made final if no other new grounds of rejection are introduced.

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Question 3

How does the AIA 35 U.S.C. 102(b)(2)(C) exception work for commonly owned disclosures?

Accepted Answer

The AIA 35 U.S.C. 102(b)(2)(C) exception provides a way to disqualify certain prior art references based on common ownership. Key aspects include:

It applies to subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application.
The subject matter and the claimed invention must have been owned by the same person or subject to an obligation of assignment to the same person no later than the effective filing date of the claimed invention.
This exception can be used to overcome rejections based on prior art under 35 U.S.C. 102(a)(2).

As stated in MPEP 2154.02(c): 'The common ownership must exist not later than the effective filing date of the claimed invention. A statement of common ownership made in accordance with 37 CFR 1.104(c)(4)(i) is sufficient to establish common ownership under AIA 35 U.S.C. 102(b)(2)(C).'

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35 U.S.C. 102(b)(2)(C)

Question 4

How does AIA 35 U.S.C. 102(b)(2)(C) handle common ownership situations?

Accepted Answer

How does AIA 35 U.S.C. 102(b)(2)(C) handle common ownership situations?

AIA 35 U.S.C. 102(b)(2)(C) provides an important exception for commonly owned patent applications and patents. According to MPEP 717:

"AIA 35 U.S.C. 102(b)(2)(C) provides that subject matter disclosed in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person."

This exception works as follows:

It applies to potential prior art under AIA 35 U.S.C. 102(a)(2), which includes U.S. patents, U.S. patent application publications, and WIPO published applications.
The subject matter in the potential prior art and the claimed invention must be commonly owned or subject to an obligation of assignment to the same entity.
This common ownership or obligation of assignment must exist no later than the effective filing date of the claimed invention.

This provision is particularly useful for companies or research institutions that may have multiple related patent applications or patents. It prevents their own earlier-filed applications from being used as prior art against their later applications, provided they meet the common ownership requirement.

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35 U.S.C. 102(b)(2)(C)

Question 5

What is the 35 U.S.C. 102(b)(2)(C) exception?

Accepted Answer

The 35 U.S.C. 102(b)(2)(C) exception is a prior art exception that can be invoked to disqualify certain disclosures as prior art under 35 U.S.C. 102(a)(2). As stated in the MPEP:

It is important to recognize that the 35 U.S.C. 102(b)(2)(C) exception can only be invoked in regard to a disclosure that is applied in a rejection as prior art under 35 U.S.C. 102(a)(2) (disclosures in a U.S. patent, U.S. patent application, or WIPO published international application effectively filed before the effective filing date of the claimed invention).

This exception applies to commonly owned subject matter or subject matter resulting from a joint research agreement.

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Question 6

What are the requirements for invoking a joint research agreement exception under AIA 35 U.S.C. 102(c)?

Accepted Answer

To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met:

The subject matter disclosed must have been developed and the claimed invention must have been made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
The application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement.

As stated in the MPEP: "If these conditions are met, the joint research agreement prior art is not available as prior art under AIA 35 U.S.C. 102(a)(2)."

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 2100 – Patentability (1)

What are the requirements for invoking a joint research agreement exception under AIA 35 U.S.C. 102(c)?

MPEP 2156 – Joint Research Agreements (1)

What are the requirements for invoking a joint research agreement exception under AIA 35 U.S.C. 102(c)?

Patent Law (1)

What are the requirements for invoking a joint research agreement exception under AIA 35 U.S.C. 102(c)?

Patent Procedure (1)

What are the requirements for invoking a joint research agreement exception under AIA 35 U.S.C. 102(c)?