How does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
How does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
The examiner follows a specific procedure to determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C). According to MPEP 717.02(c):
“If the applicant provides a proper statement asserting common ownership or an obligation to assign not later than the effective filing date of the claimed invention, or published subject matter and the claimed invention were made by or on behalf of parties to a joint research agreement, the examiner should fully consider the statement and not apply a prior art rejection based on the subject matter disclosed in the reference unless the reference is available as prior art under another subsection of AIA 35 U.S.C. 102(a).”
The examiner’s determination involves:
- Reviewing the applicant’s statement asserting common ownership or joint research agreement
- Verifying that the statement meets the requirements outlined in MPEP 717.02(b)
- Checking if the reference qualifies as prior art under any other subsection of AIA 35 U.S.C. 102(a)
- If the statement is proper and the reference doesn’t qualify under other subsections, the examiner will not apply the reference as prior art under 102(a)(2)
This process ensures that the prior art exception is appropriately applied during patent examination.
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