When can a provisional rejection be made under pre-AIA 35 U.S.C. 102(e)?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be made when there is a common assignee, applicant, or inventor between the earlier filed, unpublished application and the later filed application. The MPEP states: Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible…
Read MoreHow does the USPTO handle applications with different inventors but common assignees?
The USPTO has specific procedures for handling applications with different inventors but common assignees, especially when dealing with potentially overlapping inventions. MPEP 817 provides guidance on this issue, particularly in the context of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). Form Paragraph 8.28.aia addresses situations where inventions are not…
Read MoreWhat guidance does MPEP 806.03 provide for voluntarily presented claims in different applications?
MPEP 806.03 offers specific guidance for situations where similar claims are voluntarily presented in different patent applications. The section states: “Where such claims are voluntarily presented in different applications having at least one common (joint) inventor or a common assignee (i.e., no restriction requirement was made by the Office), disclosing the same embodiments, see MPEP…
Read MoreWhat is the significance of common assignee in patent applications?
Common assignee in patent applications refers to when a reference patent or application publication and the current application are owned by the same entity. However, this common ownership does not automatically negate the need for certain legal procedures. As stated in MPEP 715.01(b): The mere fact that the reference patent or application publication which shows…
Read MoreHow does MPEP 715.01(a) handle references with a common assignee but different inventors?
MPEP 715.01(a) addresses situations where a reference and an application have a common assignee but different inventors. The section states: ‘If the reference is a U.S. patent or application publication of a pending or patented application and names at least one inventor in common with the instant application, a rejection may be overcome as described…
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