What is the significance of common ownership in overcoming prior art rejections?
Common ownership can be significant in overcoming certain prior art rejections, particularly those based on pre-AIA 35 U.S.C. 102(e), (f), or (g) in combination with 35 U.S.C. 103. If the applicant can show that the claimed invention and the subject matter of the prior art were commonly owned at the time the invention was made,…
Read MoreHow does common ownership affect rejections under pre-AIA 35 U.S.C. 102(e)/103?
Common ownership can have a significant impact on rejections under pre-AIA 35 U.S.C. 102(e)/103. According to MPEP 715.01(b): Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f)/103 or pre-AIA 35 U.S.C. 102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e)/103 using the reference, a showing…
Read MoreHow does common ownership affect the AIA 35 U.S.C. 102(b)(2)(C) exception?
Common ownership plays a crucial role in the AIA 35 U.S.C. 102(b)(2)(C) exception. The MPEP 717.02(b) states: 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, the…
Read MoreHow is common ownership defined for the purposes of 35 U.S.C. 102(b)(2)(C)?
Common ownership, as defined for the purposes of 35 U.S.C. 102(b)(2)(C), refers to the complete ownership of both the subject matter that would otherwise be prior art and the claimed invention by the same person(s) or organization(s). The MPEP states: The term ‘commonly owned’ is intended to mean that the subject matter that would otherwise…
Read MoreHow does the USPTO handle common ownership statements filed after rejection?
How does the USPTO handle common ownership statements filed after rejection? The USPTO allows applicants to file common ownership statements even after a rejection has been made. According to MPEP 717.02(c): “If the applicant files the statement of common ownership to invoke a joint research agreement or common ownership exception after a rejection has been…
Read MoreWhat is the 35 U.S.C. 102(b)(2)(C) exception?
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…
Read MoreWhat are the timing requirements for common ownership under 35 U.S.C. 102(b)(2)(C)?
The timing of common ownership is crucial for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C). The MPEP clarifies: The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed…
Read MoreWhat is the role of terminal disclaimers in overcoming rejections under MPEP 715.05?
MPEP 715.05 discusses the use of terminal disclaimers in conjunction with affidavits or declarations to overcome certain rejections. Specifically: “Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not…
Read MoreHow can an applicant show common ownership to invoke the prior art exception?
How can an applicant show common ownership to invoke the prior art exception? To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), an applicant must demonstrate common ownership. According to MPEP 717.02(a): The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement.…
Read MoreWhat are the requirements for establishing a prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
To establish a prior art exception under AIA 35 U.S.C. 102(b)(2)(C), applicants must file a proper submission. According to MPEP 717.02(c), this can be done in two ways: Common ownership: A clear and conspicuous statement that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed…
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