How can a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) be overcome?

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.

There are several ways to overcome a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The MPEP outlines the following methods:

• Arguing patentability over the earlier filed application
• Combining the subject matter of the copending applications into a single application
• Filing an affidavit or declaration under 37 CFR 1.132
• Filing an affidavit or declaration under 37 CFR 1.131(a)
• Showing common ownership or joint research agreement

For applications pending on or after December 10, 2004, the MPEP states:

“For an application that is pending on or after December 10, 2004, a showing that (1) the prior art and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person, or (2) the subject matter is disqualified under pre-AIA 35 U.S.C. 103(c) (i.e., joint research agreement disqualification).“