What is the effect of a proper common ownership statement on prior art rejections?

What is the effect of a proper common ownership statement on prior art rejections?

A properly filed common ownership statement can have a significant impact on prior art rejections. The MPEP 717.02(c) states:

“If the applicant disqualifies the subject matter relied upon by the examiner in accordance with 35 U.S.C. 102(b)(2)(C) and the procedures set forth in MPEP § 717.02, the examiner will treat the application under examination as if the disqualified prior art was not in the prior art.”

This means that if the common ownership statement successfully establishes the exception under AIA 35 U.S.C. 102(b)(2)(C), the examiner must disregard the previously cited prior art for the purposes of 35 U.S.C. 102 and 103 rejections. However, the disqualified prior art may still be used for other purposes, such as double patenting rejections or to show the state of the art.

To learn more:

• common ownership
• prior art rejections
• AIA 35 U.S.C. 102(b)(2)(C)
• patent examination

To learn more:

• AIA 35 U.S.C. 102(b)(2)(C)