What are the requirements for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)?

What are the requirements for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)? To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), specific requirements must be met. According to MPEP 717.02(a): “The applicant or patent owner may establish common ownership by providing a statement to the effect that the subject matter and the…

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How 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…

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How 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.…

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How 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…

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How 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…

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How 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…

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