What is the relevance of the inventive entity in pre-AIA 35 U.S.C. 102(e) rejections?

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 inventive entity plays a crucial role in applying pre-AIA 35 U.S.C. 102(e) rejections. The MPEP states:

“In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different from that of the cited reference.”

Importantly, for applications with joint inventors, the MPEP clarifies:

“Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different; put another way, a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the cited reference.”

This means that a pre-AIA 35 U.S.C. 102(e) rejection can be made even if some inventors are shared between the application and the reference, as long as at least one inventor is different.