What is the impact of the CREATE Act on double patenting rejections?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 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. The CREATE Act has a significant impact on double patenting rejections in patent examination. The MPEP explains: “ Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003). “ As a result, applications or patents and subject matter disqualified under pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned for double patenting analysis. This can lead to double patenting rejections in situations where they might not have occurred before the CREATE Act. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Commonly Owned Subject Matter for Double Patenting MPEP 2146.03 Double Patenting Rejection Due to CREATE Act Amendment MPEP 2146.03 Permitted 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 Double Patenting Between Non-Commonly Owned Applications MPEP 2146.03 Prior Art Not Disqualified Under 103(c) MPEP 2146 Commonly Owned Prior Art Requirement MPEP 2146 Subject Matter Developed by Another Person Treated as Owned for Obviousness Determination MPEP 2146 Required 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)? How does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)? How can a provisional rejection under 35 U.S.C. 103(a) based on provis...