How does the USPTO handle prior art rejections when the reference names a different inventive entity with at least one common inventor?

When the USPTO handles prior art rejections where the reference names a different inventive entity with at least one common inventor, the following process is typically followed:

• The examiner will treat the reference as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g).
• The applicant can overcome this rejection by filing an affidavit or declaration under 37 CFR 1.131(a) to antedate the reference.
• Alternatively, the applicant can file an affidavit or declaration under 37 CFR 1.132 to show that the relevant portions of the reference originated with or were obtained from the inventor or at least one joint inventor.

As stated in MPEP 715.01(a): “When the reference in question is a noncommonly owned U.S. patent or patent application publication which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and which substantially shows or describes but does not claim the same patentable invention, an affidavit or declaration under 37 CFR 1.131(a) may be used to overcome only the prior art effect of the patent or publication.”

To learn more:

• prior art
• inventive entity
• common inventor
• affidavit
• declaration