What is a provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e)?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. A provisional rejection under 35 U.S.C. 103(a) using provisional prior art under pre-AIA 35 U.S.C. 102(e) is a specific type of rejection made in certain patent examination situations. The MPEP explains: “ Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) should be made in the later filed application unless the application has been disqualified under pre-AIA 35 U.S.C. 103(c). “ This type of rejection is used to alert applicants to potential issues and give them an opportunity to address them before a non-provisional rejection is made. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Pre-AIA 35 U.S.C. 103(c) Applies Only to Specific Prior Art MPEP 2146 Pre-AIA 35 U.S.C. 103(c) Cannot Overcome Double Patenting MPEP 2146 Prohibited Pre-AIA Prior Art Under 103(c) Must Be Commonly Owned MPEP 2146 Prior Art Not Disqualified Under 103(c) MPEP 2146 Pre-AIA 102(f) and (g) Prior Art in Reexamination of Pre-2004 Patents MPEP 2146 Permitted Anticipatory Rejection Reference Not Disqualified Under Pre-AIA 103(c) MPEP 2146.03 Burden of Establishing Prior Art Disqualification MPEP 2146 Common Ownership Exclusion for Prior Art MPEP 2146 Prior Art Exclusion for Commonly Owned Inventions MPEP 2146 Reissue Patents Subject to Pre-AIA 35 U.S.C. 103(c) Changes MPEP 2146 Other Related FAQs 5 FAQs Collapse How does common ownership affect patent examination under pre-AIA 35 U.S.C. 103(c)? What is the impact of the CREATE Act on double patenting rejections? How does a joint research agree...