How can a provisional rejection under 35 U.S.C. 102(a)(2) be overcome?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. A provisional rejection under 35 U.S.C. 102(a)(2) can be overcome in several ways. According to MPEP 2154.01(d) : “A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.” This means that applicants can use strategies such as showing earlier invention date, demonstrating common ownership, or filing a joint research agreement statement. Additionally, they have the option to abandon both applications and file a new, combined application. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Provisional Rejection Can Be Overcome Like Regular Rejection MPEP 2154.01(d) Permitted Provisional Rejection Overcome by New Application MPEP 2154.01(d) Permitted Provisional Rejection Based on Redacted Earlier Filed Application MPEP 2154.01(d) Permitted Form Paragraph for Provisional Rejection Under 102(a)(2) MPEP 2154.01(d) Recommended Provisional Rejection for Earlier Copending Application MPEP 2154.01(d) Recommended Types of Patent Documents as Prior Art Under AIA 102(a)(2) MPEP 2154 Provisional Anticipation or Obviousness Must Be Based on Copending Application MPEP 2154.01(d) Required Issued Patent Can Be Used As Rejection Reference In Still Pending Application MPEP 2154.01(d) Permitted Provisional Anticipation or Obviousness Based on Common Inventor Application MPEP 2154.01(d) Permitted Confidentiality Requirement for Unpublished Applications MPEP 2154.01(d) Required Other Related FAQs 5 FAQs Collapse What happens if cop...