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

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.

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Topics: MPEP 2100 - Patentability, MPEP 2154.01(D) - Provisional Rejections Under 35 U.S.C. 102(A)(2); Reference Is A Copending U.S. Patent Application, Patent Law, Patent Procedure
Tags: 35 U.S.C. 102(A)(2), Overcoming Rejection, Provisional Rejection