What are the requirements for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)?
What are the requirements for invoking the prior art exception under 35 U.S.C. 102(b)(2)(C)?
To invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), specific requirements must be met. According to MPEP 717.02(a):
“The applicant or patent owner may establish common ownership by providing a statement to the effect that the subject matter and the claimed invention were, not later than the effective filing date of the claimed invention, owned by the same person or subject to an obligation of assignment to the same person.”
The requirements for invoking this exception include:
- Establishing common ownership or obligation of assignment to the same person.
- Providing a statement or evidence of common ownership.
- Ensuring the common ownership existed not later than the effective filing date of the claimed invention.
- If applicable, disclosing the names of parties to a joint research agreement.
- Submitting the statement or evidence in a timely manner, typically before the next Office action or final rejection.
Meeting these requirements can help overcome rejections based on prior art that falls under the exception of 35 U.S.C. 102(b)(2)(C).
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