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…
Read MoreHow can the prior art exception under 35 U.S.C. 102(b)(2)(C) be invoked for joint research agreements?
The prior art exception under 35 U.S.C. 102(b)(2)(C) can also be invoked for joint research agreements. The MPEP outlines the requirements: In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) must provide a statement that the disclosure of the…
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 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 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 MoreWhat is the relationship between AIA 35 U.S.C. 102(b)(2)(C) and joint research agreements?
What is the relationship between AIA 35 U.S.C. 102(b)(2)(C) and joint research agreements? AIA 35 U.S.C. 102(b)(2)(C) includes provisions for joint research agreements (JRAs) that can disqualify certain prior art. This relationship is important for collaborative research efforts. Key points include: Subject matter disclosed and claimed invention must have been made by or on behalf…
Read MoreHow does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements?
How does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements? The AIA 35 U.S.C. 102(b)(2)(C) exception applies to joint research agreements as follows: The subject matter disclosed and the claimed invention were made by or on behalf of parties to a joint research agreement. The agreement was in effect on or before…
Read MoreHow does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements?
How does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements? The AIA 35 U.S.C. 102(b)(2)(C) exception applies to joint research agreements as follows: The subject matter disclosed and the claimed invention were made by or on behalf of parties to a joint research agreement. The agreement was in effect on or before…
Read MoreWhat are the requirements for recording a joint research agreement with the USPTO?
Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must: Identify the document as a ‘joint research agreement’ in the description of interest conveyed Indicate the name of the owner of the application or patent Indicate the name…
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