What are the requirements for filing an affidavit or declaration under 37 CFR 1.131(a)?
An affidavit or declaration under 37 CFR 1.131(a) may be necessary even when there is common ownership between a reference and an application. According to MPEP 715.01(b): The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by…
Read MoreHow does the prior art exception affect double patenting rejections?
The prior art exception under 35 U.S.C. 102(b)(2)(C) can have implications for double patenting rejections. According to MPEP 717.02(c): Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application. Double patenting rejections may arise…
Read MoreWhat is the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
The prior art exception under AIA 35 U.S.C. 102(b)(2)(C) allows certain disclosures to be excluded as prior art if they meet specific criteria. According to MPEP 717.02(c), this exception applies when: The subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same…
Read MoreWhat is the prior art exception under 35 U.S.C. 102(b)(2)(C)?
The prior art exception under 35 U.S.C. 102(b)(2)(C) allows certain disclosures to be excepted as prior art if they were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. This exception applies to disclosures that would otherwise…
Read MoreHow do examiners handle applications where common ownership or a joint research agreement has not been established?
According to MPEP 717.02(c), when examining applications where common ownership or a joint research agreement has not been established, examiners will: Assume the subject matter disclosed in the reference is not excepted under 35 U.S.C. 102(b)(2)(C) Examine the application on all grounds other than the possible exception Consider the applicability of references under 35 U.S.C.…
Read MoreHow do examiners handle applications where common ownership or a joint research agreement has been established?
When common ownership or a joint research agreement has been established, examiners follow a specific procedure as outlined in MPEP 717.02(c): Examine the applications on all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2). Examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a…
Read MoreHow can an applicant overcome prior art rejections using a 37 CFR 1.132 affidavit?
An applicant can overcome certain prior art rejections using a 37 CFR 1.132 affidavit by proving that the subject matter relied upon in the reference or activity was the inventor’s or at least one joint inventor’s own invention. This is particularly useful in situations where the reference qualifies as prior art only under specific sections…
Read MoreHow does the AIA affect the treatment of common ownership in patent applications?
The America Invents Act (AIA) has significantly changed how common ownership is treated in patent applications. While MPEP 715.01(b) primarily deals with pre-AIA law, it provides guidance on the transition: For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c). This reference to MPEP § 2154.02(c) indicates that for AIA applications, different rules…
Read MoreHow does common ownership affect prior art under AIA 35 U.S.C. 102(b)(2)(C)?
Common ownership can disqualify certain disclosures as prior art under the AIA. Specifically, 35 U.S.C. 102(b)(2)(C) provides an exception for commonly owned subject matter. The MPEP states: 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent, U.S. patent application publication, or WIPO published application shall not be prior art to a claimed…
Read MoreHow does AIA 35 U.S.C. 102(b)(2)(C) handle common ownership situations?
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…
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