MPEP § 2146 — MPEP § 2146
Current through: 2022-07-01

2146-Pre-AIA 35 U.S.C. 103(c) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2146 
 

 
 
 
 
 
 2146 Pre-AIA 35 U.S.C. 103(c) [R-01.2024]

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA as
 set forth in 35 U.S.C. 100 (note) . See MPEP §
 2159 et seq. to determine whether an application is subject to
 examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to those
 provisions. See MPEP §§ 717.02 et seq.,
 2154.02(c) and 2156 
 for the examination of applications subject to the first inventor to file provisions of
 the AIA involving, inter alia, commonly owned subject matter or a joint research
 agreement.] 

 
 Pre-AIA 35 U.S.C. 103 
 Conditions of patentability; non-obvious subject matter. 

 *****

 
 (c)
 
 (1) Subject matter developed by another person, which
 qualifies as prior art only under one or more of subsections (e), (f), and
 (g) of section 102 , shall not preclude patentability under
 this section where the subject matter and the claimed invention were, at the
 time the claimed invention was made, owned by the same person or subject to
 an obligation of assignment to the same person.
 

 (2) For purposes of this subsection, subject matter developed
 by another person and a claimed invention shall be deemed to have been owned
 by the same person or subject to an obligation of assignment to the same
 person if — 
 
 (A) the claimed invention was made by or on behalf of
 parties to a joint research agreement that was in effect on or before
 the date the claimed invention was made;
 

 (B) the claimed invention was made as a result of
 activities undertaken within the scope of the joint research
 agreement; and 
 

 (C) the application for patent for the claimed invention
 discloses or is amended to disclose the names of the parties to the
 joint research agreement. 
 

 
 

 (3) For purposes of paragraph (2), the term “joint research
 agreement” means a written contract, grant, or cooperative agreement entered
 into by two or more persons or entities for the performance of experimental,
 developmental, or research work in the field of the claimed invention.
 

 
 

 
 

 It is important to recognize that pre-AIA 35 U.S.C. 103(c) applies only
 to consideration of prior art for purposes of obviousness under 35 U.S.C. 103(a) . It
 does not apply to or affect subject matter which is applied in a rejection under
 35 U.S.C.
 102 or a double patenting rejection. In addition, if the subject
 matter qualifies as prior art under any subsection of pre-AIA 35 U.S.C. 102 other than
 (e) , (f) , or (g) (e.g., pre-AIA 35 U.S.C. 102(a) or
 (b) ) it will not be disqualified as prior art under pre-AIA 35 U.S.C.
 103(c) .
 

 A patent applicant or patentee urging that subject matter is disqualified
 has the burden of establishing that the prior art is disqualified under pre-AIA 35 U.S.C.
 103(c) . Absent such disqualification, the appropriate rejection under
 pre-AIA 35 U.S.C.
 103(a) applying prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) 
 should be made. See MPEP § 2146.02 for information pertaining
 to establishing prior art disqualifications due to common ownership or joint research
 agreements.
 

 The term “subject matter” will be construed broadly, in the same manner the
 term is construed in the remainder of pre-AIA 35 U.S.C. 103 . The term
 “another” as used in pre-AIA 35 U.S.C. 103 means any inventive entity other than the
 inventor and would include the inventor and any other persons. The term “developed” is to
 be read broadly and is not limited by the manner in which the development occurred. The
 term “commonly owned” means wholly owned by the same person(s) or organization(s) at the
 time the invention was made. The term “joint research agreement” means a written contract,
 grant, or cooperative agreement entered into by two or more persons or entities for the
 performance of experimental, developmental, or research work in the field of the claimed
 invention. See MPEP § 2146.02 .
 

 I. APPLICABILITY OF PRE-AIA 35 U.S.C.
 103(c) Prior to November 29, 1999, pre-AIPA 35 U.S.C. 103(c) provided that
 subject matter developed by another which qualifies as prior art only under
 pre-AIA 35 U.S.C.
 102(f) or pre-AIA 35 U.S.C. 102(g) is not to
 be considered when determining whether an invention sought to be patented is obvious
 under pre-AIA 35
 U.S.C. 103 , provided the subject matter and the claimed invention
 were commonly owned at the time the invention was made. See subsection II, below, for a
 discussion of pre-AIPA 35 U.S.C. 103(c) for applications filed prior to November 29,
 1999.
 

 Effective November 29, 1999, subject matter which was prior art under
 former 35 U.S.C.
 103(a) via pre-AIA 35 U.S.C. 102(e) was
 disqualified as prior art against the claimed invention if that subject matter and the
 claimed invention “were, at the time the invention was made, owned by the same person or
 subject to an obligation of assignment to the same person.” This amendment to
 pre-AIA 35 U.S.C.
 103(c) was made pursuant to section 4807 of the American Inventors
 Protection Act of 1999 (AIPA); see Public Law 106-113, 113 Stat. 1501, 1501A-591 (1999).
 The changes to pre-AIA
 35 U.S.C. 102(e) in the Intellectual Property and High Technology
 Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)) did not
 affect the prior art disqualification under pre-AIA 35 U.S.C. 103(c) as amended
 on November 29, 1999. Subsequently, the Cooperative Research and Technology Enhancement
 Act of 2004 (CREATE Act) (Public Law 108-453, 118 Stat. 3596 (2004)) further amended
 pre-AIA 35 U.S.C.
 103(c) to provide that subject matter developed by another person
 shall be treated as owned by the same person or subject to an obligation of assignment
 to the same person for purposes of determining obviousness if three conditions are met: 
 

 
 (A) the claimed invention was made by or on behalf of parties to a
 joint research agreement that was in effect on or before the date the claimed
 invention was made;
 

 (B) the claimed invention was made as a result of activities
 undertaken within the scope of the joint research agreement; and
 

 (C) the application for patent for the claimed invention discloses or
 is amended to disclose the names of the parties to the joint research agreement
 (hereinafter “joint research agreement disqualification”).
 

 
 These changes to pre-AIA 35 U.S.C. 103(c) apply to
 all patents (including reissue patents) granted on or after December 10, 2004 that are
 subject to pre-AIA 35
 U.S.C. 102 . The amendment to pre-AIA 35 U.S.C. 103(c) made by the
 AIPA to change “subsection (f) or (g)” to “one of more of subsections (e), (f), or (g)”
 applies to applications filed on or after November 29, 1999. It is to be noted that, for
 all applications (including reissue applications), if the application is pending on or
 after December 10, 2004, the 2004 changes to pre-AIA 35 U.S.C. 103(c) , which
 effectively include the 1999 changes, apply; thus, the November 29, 1999 date of the
 prior revision to pre-AIA 35 U.S.C. 103(c) is no longer relevant. In a
 reexamination proceeding, however, one must look at whether or not the patent being
 reexamined was granted on or after December 10, 2004 to determine whether
 pre-AIA 35 U.S.C.
 103(c) , as amended by the CREATE Act, applies. For a reexamination
 proceeding of a patent granted prior to December 10, 2004 on an application filed on or
 after November 29, 1999, it is the 1999 changes to pre-AIPA 35 U.S.C. 103(c) that are
 applicable to the disqualifying commonly assigned/owned prior art provisions of
 pre-AIA 35 U.S.C.
 103(c) . See MPEP § 2146.01 for additional
 information regarding disqualified prior art under pre-AIA 35 U.S.C.
 102(e) / 103 . For a reexamination proceeding
 of a patent granted prior to December 10, 2004 on an application filed prior to November
 29, 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are
 applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) used
 in a rejection under pre-AIA 35 U.S.C. 103(a) may be disqualified under the commonly
 assigned/owned prior art provision pre-AIA of 35 U.S.C. 103(c) .
 

 Pre-AIA 35 U.S.C.
 103(c) , as amended by the CREATE Act, applies only to subject
 matter which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or
 (g) , and which is being relied upon in a rejection under
 35 U.S.C.
 103(a) . If the rejection is anticipation under pre-AIA 35 U.S.C. 102(e), (f), or
 (g) , pre-AIA 35 U.S.C. 103(c) cannot be
 relied upon to disqualify the subject matter in order to overcome or prevent the
 anticipation rejection. Likewise, pre-AIA 35 U.S.C. 103(c) cannot be
 relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78(c) 
 and MPEP §
 804 . 
 

 II. FOR APPLICATIONS FILED PRIOR TO NOVEMBER
 29, 1999, AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004 For applications filed prior to November 29, 1999, and granted as
 patents prior to December 10, 2004, the subject matter that is disqualified as prior art
 under pre-AIPA 35 U.S.C. 103(c) is strictly limited to subject matter that A) qualifies
 as prior art only under pre-AIA 35 U.S.C. 102(f) or
 pre-AIA 35 U.S.C.
 102(g) , and B) was commonly owned with the
 claimed invention at the time the invention was made. If the subject matter that
 qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or
 pre-AIA 35 U.S.C.
 102(g) was not commonly owned at the time
 of the invention, the subject matter is not disqualified as prior
 art under pre-AIPA 35 U.S.C. 103(c) in effect on December 9, 2004. See OddzOn
 Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04, 43 USPQ2d 1641,
 1646 (Fed. Cir. 1997) (“We therefore hold that subject matter derived from another not
 only is itself unpatentable to the party who derived it under § 102(f), but, when
 combined with other prior art, may make a resulting obvious invention unpatentable to
 that party under a combination of §§ 102(f) and 103.”). 
 

 Inventors of subject matter not commonly owned at the time of the
 invention, but currently commonly owned, may file as joint inventors in a single
 application. However, the claims in such an application are not protected from a
 35 U.S.C.
 103(a) rejection based on prior art under pre-AIA 35 U.S.C.
 102(f) or pre-AIA 35 U.S.C. 102(g) . Applicants
 in such cases have an obligation pursuant to 37 CFR 1.56 to point out the
 inventor and invention dates of each claim and the lack of common ownership at the time
 the later invention was made to enable the examiner to consider the applicability of a
 35 U.S.C.
 103(a) rejection based on prior art under pre-AIA 35 U.S.C.
 102(f) or pre-AIA 35 U.S.C. 102(g) . The
 examiner will assume, unless there is evidence to the contrary, that applicants are
 complying with their duty of disclosure.
 

 Foreign applicants will sometimes combine the subject matter of two or
 more related applications with different inventors into a single U.S. application naming
 joint inventors. The examiner will make the assumption, absent contrary evidence, that
 the applicants are complying with their duty of disclosure if no information is provided
 relative to invention dates and common ownership at the time the later invention was
 made. Such a claim for 35 U.S.C. 119(a) - (d) priority based upon the foreign
 filed applications is appropriate and 35 U.S.C. 119(a) - (d) priority can
 be accorded based upon each of the foreign filed applications.
 

 For rejections under pre-AIA 35 U.S.C. 103(a) using prior
 art under pre-AIA 35
 U.S.C. 102(f) or (g) in applications pending on or after December
 10, 2004, see MPEP § 2146.01 .
 

 
 2146.01 Prior Art Disqualification Under Pre-AIA 35
 U.S.C. 103(c) [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA
 as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP §§ 717.02 et seq.,
 2154.02(c) and 2156 
 for the examination of applications subject to the first inventor to file provisions
 of the AIA involving, inter alia, commonly owned subject matter or a joint research
 agreement.] 

 
 35 U.S.C. 103 (pre-AIA) 
 Conditions for patentability; non-obvious
 subject matter. 

 *****

 
 (c)
 
 (1) Subject matter developed by another person, which
 qualifies as prior art only under one or more of subsections
 (e) , (f) , and
 (g) of section 102 , shall
 not preclude patentability under this section where the subject matter
 and the claimed invention were, at the time the claimed invention was
 made, owned by the same person or subject to an obligation of assignment
 to the same person.
 

 (2) For purposes of this subsection, subject matter developed
 by another person and a claimed invention shall be deemed to have been
 owned by the same person or subject to an obligation of assignment to the
 same person if — 
 
 (A) the claimed invention was made by or on behalf of
 parties to a joint research agreement that was in effect on or
 before the date the claimed invention was made;
 

 (B) the claimed invention was made as a result of
 activities undertaken within the scope of the joint research
 agreement; and 
 

 (C) the application for patent for the claimed
 invention discloses or is amended to disclose the names of the
 parties to the joint research agreement. 
 

 
 

 (3) For purposes of paragraph (2), the term “joint research
 agreement” means a written contract, grant, or cooperative agreement
 entered into by two or more persons or entities for the performance of
 experimental, developmental, or research work in the field of the claimed
 invention.
 

 
 

 
 
 I. COMMON OWNERSHIP OR ASSIGNEE PRIOR ART DISQUALIFICATION UNDER PRE-AIA 35
 U.S.C. 103(c) Enacted on November 29, 1999, the American Inventors Protection Act
 (AIPA) added subject matter which was prior art under former 35 U.S.C.
 103(a) via pre-AIA 35 U.S.C. 102(e) as
 disqualified prior art against the claimed invention if that subject matter and the
 claimed invention “were, at the time the invention was made, owned by the same person
 or subject to an obligation of assignment to the same person.” The 1999 change to
 pre-AIA 35
 U.S.C. 103(c) applied to all utility, design and plant patent
 applications filed on or after November 29, 1999. The Cooperative Research and
 Technology Enhancement Act of 2004 (CREATE Act), in part, redesignated the former 35
 U.S.C. 103(c) to pre-AIA 35 U.S.C. 103(c)(1) and made this provision effective
 to all applications in which the patent is granted on or after December 10, 2004, but
 the AIA provides that certain applications are subject to the current
 35
 U.S.C. 102 and 103 , see MPEP §
 2159 . Therefore, the provision of pre-AIA 35
 U.S.C.103(c)(1) is effective for all applications (utility,
 design, plant and reissue) pending on or after December 10, 2004, including
 applications filed prior to November 29, 1999, except those applications subject to
 the current 35 U.S.C. 102 and
 
 103 . The amendment to pre-AIA 35 U.S.C. 103(c)(1) does
 not affect any application filed before November 29, 1999 and issued as a patent
 prior to December 10, 2004. See MPEP § 2159 .
 

 In a reexamination proceeding, however, one must look at whether or
 not the patent being reexamined was granted on or after December 10, 2004, and
 whether the patent is subject the current 35 U.S.C.
 102 to determine whether pre-AIA 35 U.S.C. 103(c) , as
 amended by the CREATE Act, applies. For a reexamination proceeding of a patent
 granted prior to December 10, 2004, on an application filed on or after November 29,
 1999, it is the 1999 changes to pre-AIA 35 U.S.C. 103(c) that are
 applicable to the disqualifying commonly assigned/owned prior art provisions of
 pre-AIA 35
 U.S.C. 103(c) . For a reexamination proceeding of a patent
 granted prior to December 10, 2004, on an application filed prior to November 29,
 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are
 applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) 
 used in a rejection under pre-AIA 35 U.S.C. 103(a) may be
 disqualified under the commonly assigned/owned prior art provisions of
 35 U.S.C.
 103(c) .
 

 For reissue applications, the doctrine of recapture may prevent the
 presentation of claims in the reissue applications that were amended or cancelled
 from the application which matured into the patent for which reissue is being sought,
 if the claims were amended or cancelled to overcome a rejection under
 35 U.S.C.
 103(a) based on prior art under pre-AIA 35 U.S.C.
 102(e) which was not able to be disqualified under
 pre-AIA 35
 U.S.C. 103(c) in the application that issued as a patent. If an
 examiner determines that this situation applies in the reissue application under
 examination, a consultation with the Office of Patent Legal Administration should be
 initiated via the Technology Center Quality Assurance Specialist.
 

 Pre-AIA 35 U.S.C.
 103(c) applies only to prior art usable in an obviousness
 rejection under 35
 U.S.C. 103(a) . Subject matter that qualifies as anticipatory
 prior art under pre-AIA 35 U.S.C. 102 is not affected, and may still be used
 to reject claims as being anticipated. In addition, double patenting rejections,
 based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C.
 103(c) , should still be made as appropriate. See
 37 CFR
 1.78(c) and MPEP § 804 .
 

 The burden of establishing that subject matter is disqualified as
 prior art is placed on applicant once the examiner has established a prima
 facie case of obviousness based on the subject matter. For example, the
 fact that the reference and the application have the same assignee is
 not , by itself, sufficient to disqualify the prior art
 under pre-AIA 35
 U.S.C. 103(c) . There must be a statement that the common
 ownership was “at the time the invention was made.”
 

 See MPEP § 2146.02 for information
 regarding establishing common ownership. See MPEP §
 2146.03 for examination procedure with respect to
 pre-AIA 35
 U.S.C. 103(c) . 
 

 II. JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER PRE-AIA 35 U.S.C. 103(c) BY
 THE CREATE ACT The CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)) was
 enacted on December 10, 2004, and is effective for applications for which the patent
 is granted on or after December 10, 2004, except those patents subject to the current
 35
 U.S.C. 102 and 35 U.S.C. 103 . Specifically, the
 CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that:
 

 
 - subject matter developed by another person, which qualifies as
 prior art only under one or more of subsections (e) ,
 (f) , and (g) of pre-AIA 35 U.S.C.
 102 shall not preclude patentability under 35 U.S.C.
 103 where the subject matter and the claimed invention were,
 at the time the claimed invention was made, owned by the same person or subject to
 an obligation of assignment to the same person;
 

 
 
 - for purposes of 35 U.S.C.
 103 , subject matter developed by another person and a
 claimed invention shall be deemed to have been owned by the same person or subject
 to an obligation of assignment to the same person if
 

 
 - the claimed invention was made by or on behalf of parties
 to a joint research agreement that was in effect on or before the date the
 claimed invention was made,
 

 
 
 - the claimed invention was made as a result of activities
 undertaken within the scope of the joint research agreement, and
 

 
 
 - the application for patent for the claimed invention
 discloses or is amended to disclose the names of the parties to the joint
 research agreement;
 

 
 
 
 - for purposes of pre-AIA 35 U.S.C. 103(c) , the
 term “joint research agreement” means a written contract, grant, or cooperative
 agreement entered into by two or more persons or entities for the performance of
 experimental, development, or research work in the field of the claimed
 invention.
 

 
 The effective date provision of the CREATE Act provided that its
 amendments shall apply to any patent (including any reissue patent) granted on or
 after December 10, 2004, except those patents subject to the current
 35
 U.S.C. 102 and 103 . The CREATE Act also provided
 that its amendment shall not affect any final decision of a court or the Office
 rendered before December 10, 2004, and shall not affect the right of any party in any
 action pending before the Office or a court on December 10, 2004, to have that
 party’s rights determined on the basis of the provisions of title 35, United States
 Code, in effect on December 9, 2004. Since the CREATE Act also includes the amendment
 to pre-AIA 35
 U.S.C. 103(c) made by section 4807 of the AIPA (see Public Law
 106-113, 113 Stat. 1501, 1501A-591 (1999)), the change of “subsection (f) or (g)” to
 “one or more of subsections (e), (f), or (g)” in pre-AIA 35 U.S.C. 103(c) is now
 also applicable to applications filed prior to November 29, 1999, that were pending
 on December 10, 2004.
 

 Pre-AIA 35 U.S.C.
 103(c) , as amended by the CREATE Act, continues to apply only
 to subject matter which qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f), or
 (g) , and which is being relied upon in a rejection under
 pre-AIA 35
 U.S.C. 103(a) . If the rejection is anticipation under
 pre-AIA 35
 U.S.C. 102(e), (f), or (g) , pre-AIA 35 U.S.C. 103(c) cannot
 be relied upon to disqualify the subject matter in order to overcome or prevent the
 anticipation rejection. Likewise, pre-AIA 35 U.S.C. 103(c) cannot
 be relied upon to overcome or prevent a double patenting rejection. See
 37 CFR
 1.78(c) and MPEP § 804 .
 

 Because the CREATE Act applies only to patents granted on or after
 December 10, 2004, the recapture doctrine may prevent the presentation of claims in
 the reissue applications that had been amended or cancelled (e.g., to avoid a
 rejection under pre-AIA 35 U.S.C. 103(a) based on subject matter that may now
 be disqualified under the CREATE Act) during the prosecution of the application which
 resulted in the patent being reissued.
 

 

 
 2146.02 Establishing Common Ownership or Joint Research
 Agreement Under Pre-AIA 35 U.S.C. 103(c) [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA
 as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP §§ 717.02 et seq.,
 2154.02(c) and 2156 
 for the examination of applications subject to the first inventor to file provisions
 of the AIA involving, inter alia, commonly owned subject matter or a joint research
 agreement.] 

 In order to be disqualified as prior art under pre-AIA 35 U.S.C.
 103(c) , the subject matter which would otherwise qualify as
 pre-AIA 35 U.S.C.
 102(e), (f), or (g) prior art to the claimed invention and the
 claimed invention must be commonly owned, or subject to an obligation of assignment to
 the same person, at the time the claimed invention was made or be subject to a joint
 research agreement at the time the invention was made. See MPEP § 2146 for
 rejections under pre-AIA 35 U.S.C. 103(a) based on prior art under
 pre-AIA 35 U.S.C.
 102(f) or 102(g) and prior art disqualified
 under pre-AIA 35
 U.S.C. 103(c) in applications granted as patents prior to December
 10, 2004. See MPEP § 2146.01 for rejections under
 pre-AIA 35 U.S.C.
 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e), (f), or
 (g) , and prior art disqualified under pre-AIA 35 U.S.C.
 103(c) .
 

 I. DEFINITION OF COMMON OWNERSHIP UNDER PRE-AIA 35 U.S.C. 103(c) The term “commonly owned” is intended to mean that the subject matter
 which would otherwise pre-AIA 35 U.S.C. 102(e), (f), or
 (g) prior art to the claimed invention and the claimed
 invention are entirely or wholly owned by, or under an obligation to assign to, the
 same person(s) or organization(s)/business entity(ies). For purposes of
 pre-AIA 35
 U.S.C. 103(c) , common ownership must be at the time the claimed
 invention was made. If the person(s) or organization(s) owned less than 100 percent
 of the subject matter which would otherwise pre-AIA 35 U.S.C. 102(e), (f), or
 (g) prior art to the claimed invention, or less than 100
 percent of the claimed invention, then common ownership would not exist. Common
 ownership requires that the person(s) or organization(s)/business entity(ies) own 100
 percent of the subject matter and 100 percent of the claimed invention. 
 

 Specifically, if an invention claimed in an application is owned by
 more than one entity and those entities seek to disqualify the use of a reference as
 prior art under pre-AIA 35 U.S.C. 103(c) , then the reference must be owned by,
 or subject to an obligation of assignment to, the same entities that owned the
 application, at the time the later invention was made. For example, assume Company A
 owns twenty percent of patent Application X and Company B owns eighty percent of
 patent Application X at the time the invention of Application X was made. In
 addition, assume that Companies A and B seek to disqualify Reference Z as prior art
 under pre-AIA
 35 U.S.C. 103(c) . Reference Z must have been co-owned, or have
 been under an obligation of assignment to both companies, on the date the invention
 was made in order for the disqualification to be properly requested. A statement such
 as “Application X and Patent Z were, at the time the invention of Application X was
 made, jointly owned by Companies A and B” would be sufficient to establish common
 ownership. 
 

 For applications owned by a joint venture of two or more entities,
 both the application and the reference must have been owned by, or subject to an
 obligation of assignment to, the joint venture at the time the invention was made.
 For example, if Company A and Company B formed a joint venture, Company C, both
 Application X and Reference Z must have been owned by, or subject to an obligation of
 assignment to, Company C at the time the invention was made in order for Reference Z
 to be properly disqualified as prior art under pre-AIA 35 U.S.C. 103(c) . If
 Company A by itself owned Reference Z at the time the invention of Application X was
 made and Application X was owned by Company C on the date the invention was made,
 then disqualification of Reference Z as prior art under pre-AIA 35 U.S.C.
 103(c) would not be proper.
 

 As long as principal ownership rights to either the subject matter or
 the claimed invention under examination reside in different persons or organizations,
 common ownership does not exist. A license of the claimed invention under examination
 to another by the owner where basic ownership rights are retained would not defeat
 ownership. 
 

 The requirement for common ownership at the time the claimed
 invention was made is intended to preclude obtaining ownership of subject matter
 after the claimed invention was made in order to disqualify that subject matter as
 prior art against the claimed invention. 
 

 The question of whether common ownership exists at the time the
 claimed invention was made is to be determined on the facts of the particular case in
 question. Actual ownership of the subject matter and the claimed invention by the
 same individual(s) or organization(s) or a legal obligation to assign both the
 subject matter and the claimed invention to the same individual(s) or
 organization(s)/business entity(ies) must be in existence at the time the claimed
 invention was made in order for the subject matter to be disqualified as prior art. A
 moral or unenforceable obligation would not provide the basis for common
 ownership.
 

 Under pre-AIA 35 U.S.C. 103(c) , an
 applicant’s admission that subject matter was developed prior to the invention would
 not make the subject matter prior art to the application for obviousness analysis if
 the subject matter qualifies as prior art only under sections pre-AIA 35 U.S.C. 102(e), (f), or
 (g) , and if the subject matter and the claimed invention were
 commonly owned at the time the invention was made. See In re Fout, 
 675 F.2d 297, 213 USPQ 532 (CCPA 1982), for a decision involving an applicant’s
 admission which was used as prior art against their application. If the subject
 matter and invention were not commonly owned, an admission that the subject matter is
 prior art would be usable under pre-AIA 35 U.S.C. 103 .
 

 The burden of establishing that subject matter is disqualified as
 prior art under pre-AIA 35 U.S.C. 103(c) is intended to be placed and reside
 upon the person or persons urging that the subject matter is disqualified. For
 example, a patent applicant urging that subject matter is disqualified as prior art
 under pre-AIA 35
 U.S.C. 103(c) , would have the burden of establishing that it
 was commonly owned at the time the claimed invention was made. To place the burden
 upon the patent examiner or the defendant in litigation would not be appropriate
 since evidence as to common ownership at the time the claimed invention was made
 might not be available to the patent examiner or the defendant in litigation, but
 such evidence, if it exists, should be readily available to the patent applicant or
 the patentee.
 

 In view of pre-AIA 35 U.S.C. 103(c) , the
 Director has reinstituted in appropriate circumstances the practice of rejecting
 claims in commonly owned applications of different inventive entities on the grounds
 of nonstatutory double patenting. Such rejections can be overcome in appropriate
 circumstances by the filing of terminal disclaimers. This practice has been
 judicially authorized. See In re Bowers, 359 F.2d 886, 149 USPQ 57
 (CCPA 1966). The use of nonstatutory double patenting rejections which then could be
 overcome by terminal disclaimers precludes patent protection from being improperly
 extended while still permitting inventors and their assignees to obtain the
 legitimate benefits from their contributions. See also MPEP §§ 804 and
 1490 , subsection VI.
 

 The following examples are provided for illustration only:

 Example 1 Parent Company owns 100% of Subsidiaries A and B 

 - inventions of A and B are commonly owned by the Parent
 Company.
 

 

 Example 2 Parent Company owns 100% of Subsidiary A and 90% of Subsidiary
 B
 

 - inventions of A and B are not commonly owned by the Parent
 Company.
 

 

 Example 3 If same person owns the reference subject matter and the
 invention, at time invention was made, the reference subject matter and the
 invention are commonly owned even if that person grants a license for reference
 the subject matter to another.
 

 

 Example 4 Different Government inventors retaining certain rights (e.g.
 foreign filing rights) in separate inventions owned by Government precludes common
 ownership of inventions.
 

 

 Example 5 Company A and Company B form joint venture Company C. Employees of
 A, while working for C with an obligation to assign inventions to C, invent
 invention #1; employees of B while working for C with an obligation to assign
 inventions to C, invent invention #2, with knowledge of #1. 
 

 Question: Are #1 and #2 commonly owned at the time the later
 invention was made so as to preclude a rejection under pre-AIA 35 U.S.C. 102(e), (f)
 or (g) in view of pre-AIA 35 U.S.C. 103(a) ?
 

 Answer: Yes- If the required submission of common ownership is
 made of record in the patent application file. If invention #1 was invented by
 employees of Company A not working for Company C and Company A
 maintained sole ownership of invention #1 at the time invention #2 was made,
 inventions #1 and #2 would not be commonly owned as required by pre-AIA 35 U.S.C.
 103(c) .
 

 

 Example 6 Company A owns 40% of invention #1 and 60% of invention #2, and
 Company B owns 60% of invention #1 and 40% of invention #2 at the time invention
 #2 was made.
 

 -inventions #1 and #2 are commonly owned.

 

 Example 7 Company B has a joint research agreement with University A. Under
 the terms of the joint research agreement, University A has agreed that all of its
 patents will be jointly owned by Company B and University A. Professor X, who
 works for University A, has an employee agreement with University A assigning all
 his patents only to University A. After the joint research agreement is executed,
 University A files patent application #1 for the invention of Professor X, before
 Company B files patent application #2 on a similar invention. 
 

 - inventions #1 and #2 are commonly owned because Professor X’s
 obligation to assign patents to University A who has an obligation to assign
 patents to the A-B joint venture legally establishes Professor X’s obligation to
 assign patents to the A-B joint venture.
 

 

 Example 8 Inventor X working at Company A invents and files patent
 application #1 on technology T, owned by Company A. After application #1 is filed,
 Company A spins off a 100% owned Subsidiary B for technology T including the
 transfer of the ownership of patent application #1 to Subsidiary B. After
 Subsidiary B is formed, inventor Y (formerly a Company A employee, but now an
 employee of Subsidiary B obligated to assign to Subsidiary B) jointly files
 application #2 with inventor X (now also an employee of Subsidiary B with an
 obligation to assign to Subsidiary B), which is directed to a possibly nonobvious
 improvement to technology T. 
 

 - the inventions of applications #1 and #2 are commonly owned
 since Subsidiary B is a wholly owned subsidiary of Company A.
 

 

 The examiner must examine the application as to all grounds except
 pre-AIA 35
 U.S.C. 102(e), (f) and (g) as they apply through
 pre-AIA 35
 U.S.C. 103(a) only if the application file(s) establishes
 common ownership at the time the later invention was made. Thus, it is necessary to
 look to the time at which common ownership exists. If common ownership does not exist
 at the time the later invention was made, the earlier invention is not disqualified
 as potential prior art under pre-AIA 35 U.S.C. 102(e), (f) and
 (g) as they apply through pre-AIA 35 U.S.C. 103(a) . An
 invention is “made” when conception is complete as defined in Mergenthaler
 v. Scudder, 11 App. D.C. 264, 81 OG 1417, 1897 C.D. 724 (D.C. Cir.
 1897); In re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958). See
 Pfaff v. Wells Elecs., 525 U.S. 55, 48 USPQ2d 1641, 1647 (1998)
 (“the invention must be ready for patenting . . . . by proof that prior to the
 critical date the inventor had prepared drawings or other descriptions of the
 invention that were sufficiently specific to enable a person skilled in the art to
 practice the invention.”) Common ownership at the time the invention was made
 for purposes of obviating a rejection under pre-AIA 35 U.S.C. 103(a) based on
 prior art under pre-AIA 35 U.S.C. 102(e) , (f) or (g) may be
 established irrespective of whether the invention was made in the United States or
 abroad. The provisions of pre-AIA 35 U.S.C. 104 , however,
 will continue to apply to other proceedings in the U.S. Patent and Trademark Office,
 e.g. in an interference proceeding, with regard to establishing a date of invention
 by knowledge or use thereof, or other activity with respect thereto, in a foreign
 country, except the provisions do not apply to applications subject to the current
 35
 U.S.C. 102 as pre-AIA 35 U.S.C. 104 was
 repealed effective March 16, 2013. The foreign filing date will continue to be used
 for interference purposes under 35 U.S.C. 119(a) - (d) and
 35 U.S.C.
 365 .
 

 II. REQUIREMENTS TO ESTABLISH COMMON OWNERSHIP It is important to recognize what constitutes a sufficient submission
 to establish common ownership at the time the invention was made. Common ownership
 must be shown to exist at the time the later invention was made. A statement of
 present common ownership is not sufficient. In re Onda, 229 USPQ
 235 (Comm’r Pat. 1985).
 

 Applications and references (whether patents, patent applications,
 patent application publications, etc.) will be considered by the examiner to be owned
 by, or subject to an obligation of assignment to the same person, at the time the
 invention was made, if the applicant(s) or patent owner(s) make(s) a statement to the
 effect that the application and the reference were, at the time the invention was
 made, owned by, or subject to an obligation of assignment to, the same person. The
 statement must be signed in accordance with 37 CFR 1.33(b) . See “Guidelines
 Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an
 Obligation of Assignment to the Same Person, as Required by 35 U.S.C.
 103(c) ,” 1241 OG 96 (December 26, 2000). The applicant(s) or
 the representative(s) have the best knowledge of the ownership of their
 application(s) and reference(s), and their statement of such is sufficient because of
 their paramount obligation of candor and good faith to the USPTO. 
 

 The statement concerning common ownership should be clear and
 conspicuous (e.g., on a separate piece of paper) to ensure the examiner notices the
 statement. Applicants or patent owners may, but are not required to, submit further
 evidence, such as assignment records, affidavits or declarations by the common owner,
 or court decisions, in addition to the above-mentioned statement
 concerning common ownership.
 

 For example, an attorney or agent of record receives an Office action
 for Application X in which all the claims are rejected under pre-AIA 35 U.S.C.
 103(a) using Patent A in view of Patent B wherein Patent A is
 only available as prior art under pre-AIA 35 U.S.C. 102(e), (f), and/or
 (g) . In response to the Office action, the attorney or agent of
 record for Application X states, in a clear and conspicuous manner, that:
 

 
 “Application X and Patent A were, at the time the
 invention of Application X was made, owned by Company Z.”
 

 
 This statement alone is sufficient to disqualify Patent A from being
 used in a rejection under pre-AIA 35 U.S.C. 103(a) against
 the claims of Application X. 
 

 In rare instances, the examiner may have independent evidence that
 raises a material doubt as to the accuracy of applicant’s representation of either
 (1) the common ownership of, or (2) the existence of an obligation to commonly
 assign, the application being examined and the applied U.S. patent or U.S. patent
 application publication reference. In such cases, the examiner may explain why the
 accuracy of the representation is doubted. The examiner may also require objective
 evidence of common ownership of, or the existence of an obligation to assign, the
 application being examined and the applied reference as of the date of invention of
 the application being examined. Examiners should note that the execution dates in
 assignment documents may not reflect the date a party was under an obligation to
 assign the claimed invention.
 

 As mentioned above, applicant(s) or patent owner(s) may
 submit, in addition to the above-mentioned statement regarding
 common ownership, the following objective evidence:
 

 
 (A) Reference to assignments, which are recorded in the U.S. Patent
 and Trademark Office in accordance with 37 CFR Part 3 , and which
 convey the entire rights in the applications to the same person(s) or
 organization(s);
 

 (B) Copies of unrecorded assignments which convey the entire rights
 in the applications to the same person(s) or organization(s), and which are
 filed in each of the applications;
 

 (C) An affidavit or declaration by the common owner, which is filed
 in the application or patent, and which states that there is common ownership,
 states facts which explain why the affiant or declarant believes there is
 common ownership, and is properly signed (i.e., the affidavit or declaration
 may be signed by an official of the corporation or organization empowered to
 act on behalf of the corporation or organization when the common owner is a
 corporation or other organization); and
 

 (D) Other evidence, which is submitted in the application or
 patent, and which establishes common ownership. 
 

 III. REQUIREMENTS TO ESTABLISH A JOINT RESEARCH AGREEMENT Once an examiner has established a prima facie 
 case of obviousness under pre-AIA 35 U.S.C. 103(a) , the
 burden of overcoming the rejection by invoking the joint research agreement
 provisions of pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act is on
 the applicant or the patentee. Pre-AIA 35 U.S.C. 103(c)(3) 
 defines a “joint research agreement” as a written contract, grant, or cooperative
 agreement entered into by two or more persons or entities for the performance of
 experimental, developmental, or research work in the field of the claimed invention,
 that was in effect on or before the date the claimed invention (under examination or
 reexamination) was made.
 

 Like the common ownership or assignment provision, the joint research
 agreement must be shown to be in effect on or before the time the later invention was
 made. The joint research agreement may be in effect prior to the effective date
 (December 10, 2004) of the CREATE Act. In addition, the joint research agreement is
 NOT required to be in effect on or before the prior art date of the reference that is
 sought to be disqualified.
 

 To overcome a rejection under pre-AIA 35 U.S.C. 103(a) based
 upon subject matter (whether a patent document, publication, or other evidence) which
 qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or
 (g) via the CREATE Act, the applicant must comply with the
 statute and the rules of practice in effect.
 

 
 37 CFR 1.71 Detailed description and specification of
 the invention. 

 *****

 
 (g)
 
 (1) The specification may disclose or be amended to
 disclose the names of the parties to a joint research agreement as
 defined in § 1.9(e) .
 

 (2) An amendment under paragraph (g)(1) of this section
 must be accompanied by the processing fee set forth in
 § 1.17(i) if not
 filed within one of the following time periods: 
 
 (i) Within three months of the filing date of a
 national application;
 

 (ii) Within three months of the date of entry of the
 national stage as set forth in §
 1.491 in an international application;
 
 

 (iii) Before the mailing of a first Office action on
 the merits; or
 

 (iv) Before the mailing of a first Office action
 after the filing of a request for continued examination under
 § 1.114 .
 

 
 

 (3) If an amendment under paragraph (g)(1) of this section
 is filed after the date the issue fee is paid, the patent as issued
 may not necessarily include the names of the parties to the joint
 research agreement. If the patent as issued does not include the names
 of the parties to the joint research agreement, the patent must be
 corrected to include the names of the parties to the joint research
 agreement by a certificate of correction under 35 U.S.C.
 255 and § 1.323 for the
 amendment to be effective. 
 

 
 

 
 

 
 37 CFR 1.104 Nature of examination. 

 *****

 
 (c) Rejection of claims .
 
 *****

 (5) 
 
 (i) Subject matter which qualifies as prior art
 under 35 U.S.C. 102(e), (f), or
 (g) in effect prior to March 16, 2013, and
 a claimed invention in an application filed on or after November
 29, 1999, or any patent issuing thereon, in an application filed
 before November 29, 1999, but pending on December 10, 2004, or
 any patent issuing thereon, or in any patent granted on or after
 December 10, 2004, will be treated as commonly owned for
 purposes of 35 U.S.C.
 103(c) in effect prior to March 16, 2013,
 if the applicant or patent owner provides a statement to the
 effect that the subject matter and the claimed invention, at the
 time the claimed invention was made, were owned by the same
 person or subject to an obligation of assignment to the same
 person. 
 

 (ii) Subject matter which qualifies as prior art
 under 35 U.S.C. 102(e), (f), or
 (g) in effect prior to March 16, 2013, and
 a claimed invention in an application pending on or after
 December 10, 2004, or in any patent granted on or after December
 10, 2004, will be treated as commonly owned for purposes of
 35 U.S.C.
 103(c) in effect prior to March 16, 2013,
 on the basis of a joint research agreement under
 35 U.S.C.
 103(c)(2) in effect prior to March 16,
 2013, if: 
 
 (A) The applicant or patent owner
 provides a statement to the effect that the subject matter
 and the claimed invention were made by or on behalf of the
 parties to a joint research agreement, within the meaning
 of 35 U.S.C.
 100(h) and § 1.9(e) , which was in effect on or
 before the date the claimed invention was made, and that
 the claimed invention was made as a result of activities
 undertaken within the scope of the joint research
 agreement; and 
 

 (B) The application for patent
 for the claimed invention discloses or is amended to
 disclose the names of the parties to the joint research
 agreement.
 

 
 

 
 

 (6) Patents issued prior to December 10,
 2004, from applications filed prior to November 29, 1999, are subject
 to 35 U.S.C. 103(c) in effect on November 28,
 1999.
 

 
 

 
 *****

 

 37 CFR
 1.71(g) provides for the situation in which an application
 discloses or is amended to disclose the names of the parties to a joint research
 agreement. 37 CFR
 1.71(g)(1) specifically provides that the specification may
 disclose or be amended to disclose the name of each party to the joint research
 agreement because this information is required by 35 U.S.C.
 102(c) or pre-AIA 35 U.S.C.
 103(c)(2)(C) .
 

 37
 CFR1.71(g)(2) provides that an amendment under
 37 CFR
 1.71(g)(1) must be accompanied by the processing fee set forth
 in 37
 CFR 1.17(i) if it is not filed within one of the following time
 periods: (1) within three months of the filing date of a national application; (2)
 within three months of the date of entry of the national stage as set forth in
 37 CFR
 1.491 in an international application; (3) before the mailing
 of a first Office action on the merits; or (4) before the mailing of a first Office
 action after the filing of a request for continued examination under
 37 CFR
 1.114 .
 

 37 CFR
 1.71(g)(3) provides that if an amendment under
 37 CFR
 1.71(g)(1) is filed after the date the issue fee is paid, the
 patent as issued may not necessarily include the names of the parties to the joint
 research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued
 does not include the names of the parties to the joint research agreement, the patent
 must be corrected to include the names of the parties to the joint research agreement
 by a certificate of correction under 35 U.S.C. 255 and
 37 CFR
 1.323 for the amendment to be effective. The requirements of
 37 CFR
 1.71(g)(3) (correction of the patent by a certificate of
 correction under 35
 U.S.C. 255 and 37 CFR 1.323 ) also apply in the
 situation in which such an amendment is not filed until after the date the patent was
 granted (in a patent granted on or after December 10, 2004). It is unnecessary to
 file a reissue application or request for reexamination of the patent to submit the
 amendment and other information necessary to take advantage of pre-AIA 35 U.S.C.
 103(c) as amended by the CREATE Act. See H.R. Rep. No. 108-425,
 at 9 (“[t]he omission of the names of parties to the agreement is not an error that
 would justify commencement of a reissue or reexamination proceeding”).
 

 The submission of such an amendment remains subject to the rules of
 practice: e.g., 37
 CFR 1.116 , 1.121 , and 1.312 . For
 example, if an amendment under 37 CFR 1.71(g) is submitted in an
 application under final rejection to overcome a rejection under pre-AIA 35 U.S.C.
 103(a) based upon a U.S. patent which qualifies as prior art
 only under pre-AIA
 35 U.S.C. 102(e) , the examiner may refuse to enter the
 amendment under 37
 CFR 1.71(g) if it is not accompanied by an appropriate terminal
 disclaimer ( 37 CFR
 1.321(d) ). This is because such an amendment may necessitate
 the reopening of prosecution (e.g., for entry of a nonstatutory double patenting
 rejection).
 

 If an amendment under 37 CFR 1.71(g) is submitted to
 overcome a rejection under pre-AIA 35 U.S.C. 103(a) based
 upon a U.S. patent or U.S. patent application publication which qualifies as prior
 art only under pre-AIA 35 U.S.C. 102(e) , and the examiner withdraws the
 rejection under pre-AIA 35 U.S.C. 103(a) , the examiner may need to issue an
 Office action containing a new nonstatutory double patenting rejection based upon the
 disqualified patent or patent application publication. In these situations, such
 Office action can be made final, provided that the examiner introduces no other new
 ground of rejection that was not necessitated by either amendment or an information
 disclosure statement filed during the time period set forth in 37 CFR 1.97(c) 
 with the fee set forth in 37 CFR 1.17(p) . The Office action
 is properly made final because the new nonstatutory double patenting rejection was
 necessitated by amendment of the application by applicant. This is the case
 regardless of whether the claims themselves have been amended.
 

 In addition to amending the specification to disclose the names of
 the parties to the joint research agreement, applicant must submit the required
 statement to invoke the prior art disqualification under the CREATE Act.
 37 CFR
 1.104(c)(5) sets forth the requirement for the statement, which
 includes a statement to the effect that the prior art and the claimed invention were
 made by or on the behalf of parties to a joint research agreement, within the meaning
 of pre-AIA 35
 U.S.C. 103(c)(3) , which was in effect on or before the date the
 claimed invention was made, and that the claimed invention was made as a result of
 activities undertaken within the scope of the joint research agreement. The statement
 should either be on or begin on a separate sheet and must not be directed to other
 matters ( 37 CFR
 1.4(c) ). The statement must be signed in accordance with
 37 CFR
 1.33(b) . As is the case with establishing common ownership, the
 applicant or patent owner may, but is not required to, present evidence supporting
 the existence of the joint research agreement.
 

 If the applicant disqualifies the subject matter relied upon by the
 examiner in accordance with pre-AIA 35 U.S.C. 103(c) as
 amended by the CREATE Act and the procedures set forth in the rules, the examiner
 will treat the application under examination and the pre-AIA 35 U.S.C. 102(e), (f), or
 (g) prior art as if they are commonly owned for purposes of
 pre-AIA 35
 U.S.C. 103(a) .
 

 The following examples are provided for illustration only:

 Example 1 Company A and University B have a joint research agreement (JRA)
 in place prior to the date Company A’s invention X' was made. Professor BB from
 University B communicates invention X to Company A. On November 12, 2004,
 University B filed a patent application on invention X. On December 13, 2004,
 Company A filed a patent application disclosing and claiming invention X', which
 is an obvious variant of invention X. Invention X' was made as a result of the
 activities undertaken within the scope of the JRA. University B retains ownership
 of invention X and Company A retains ownership of invention X', without any
 obligation to assign the inventions to a common owner. Company A could invoke the
 joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) to
 disqualify University B’s application as prior art in a rejection under
 pre-AIA 35
 U.S.C. 103(a) .
 

 

 Example 2 Professor BB from University B communicates invention X to Company
 A. On November 12, 2004, University B filed a patent application on invention X.
 On December 13, 2004, Company A filed a patent application disclosing and claiming
 invention X', which is an obvious variant of invention X. Company A and University
 B have a joint research agreement (JRA), which goes into effect on December 20,
 2004. University B retains ownership of invention X and Company A retains
 ownership of invention X', without any obligation to assign the inventions to a
 common owner. Company A could not invoke the joint research agreement
 provisions of pre-AIA 35 U.S.C. 103(c) to disqualify University B’s
 application as prior art in a rejection under pre-AIA 35 U.S.C. 103(a) 
 because the JRA was not in effect until after the later invention was made.
 

 

 Example 3 Company A and University B have a joint research agreement (JRA)
 in place prior to the date invention X' was made but the JRA is limited to
 activities for invention Y, which is distinct from invention X. Professor BB from
 University B communicates invention X to Company A. On November 12, 2004,
 University B filed a patent application on invention X. On December 13, 2004,
 Company A filed a patent application disclosing and claiming invention X', which
 is an obvious variant of invention X. University B retains ownership of invention
 X and Company A retains ownership of invention X', without any obligation to
 assign the inventions to a common owner. Company A could not invoke
 the joint research agreement provisions of pre-AIA 35 U.S.C. 103(c) to
 disqualify University B’s application as prior art in a rejection under
 pre-AIA 35
 U.S.C. 103(a) because the claimed invention was not made as
 a result of the activities undertaken within the scope of the JRA.
 

 

 

 
 2146.03 Examination Procedure With Respect to Pre-AIA
 35 U.S.C. 103(c) [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA
 as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP §§ 717.02 et seq.,
 2154.02(c) and 2156 
 for the examination of applications subject to the first inventor to file provisions
 of the AIA involving, inter alia, commonly owned subject matter or a joint research
 agreement.] 

 Examiners are reminded that a reference used in an anticipatory
 rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as
 prior art if the reference is disqualified under pre-AIA 35 U.S.C. 103(c) . Generally,
 such a reference is only disqualified when 
 

 
 (A) a proper submission is filed, 

 (B) the reference only qualifies as prior art under
 pre-AIA 35
 U.S.C. 102(e), (f) or (g) (e.g., not pre-AIA 35 U.S.C. 102(a) or
 (b) ), and 
 

 (C) the reference was used in an obviousness rejection under
 pre-AIA 35
 U.S.C. 103(a) . 
 

 
 Applications and patents will be considered to be owned by, or subject
 to an obligation of assignment to, the same person, at the time the invention was made,
 if the applicant(s) or patent owner(s) make(s) a statement to the effect that the
 application and the reference were, at the time the invention was made, owned by, or
 subject to an obligation of assignment to, the same person(s) or organization(s). In
 order to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon
 a reference which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or
 (g) , via the CREATE Act, the applicant must comply with the
 statute and the rules of practice in effect.
 

 See MPEP § 2146.02 for additional
 information pertaining to establishing common ownership.
 

 I. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON
 OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED If the application file being examined has not established that the
 reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) , the
 examiner will:
 

 
 (A) assume the reference is not disqualified under
 pre-AIA 35
 U.S.C. 103(c) ;
 

 (B) examine the application on all grounds other than any conflict
 between the reference patent(s) or application(s) arising from a possible
 35 U.S.C.
 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g) ;
 

 (C) consider the applicability of any references under
 35 U.S.C.
 103 based on prior art under pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g) , including provisional rejections under
 35 U.S.C.
 103(a) based on provisional prior art under
 pre-AIA 35
 U.S.C. 102(e) (see MPEP §
 2146.03(a) ); and
 

 (D) apply the best references against the claimed invention by
 rejections under 35 U.S.C. 102 and
 103(a) , including any rejections under 35 U.S.C.
 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g) , until such time that the reference is
 disqualified under pre-AIA 35 U.S.C. 103(c) .
 
 

 When applying any references that qualify as prior
 art under pre-AIA 35 U.S.C. 102(e) in a rejection under
 35 U.S.C.
 103(a) against the claims, the examiner should anticipate
 that the reference may be disqualified under pre-AIA 35 U.S.C. 103(c) and
 consider making an appropriate additional, alternative rejection. See
 MPEP § 2120 , subsection I. If a statement of common
 ownership or assignment is filed in reply to the 35 U.S.C.
 103(a) rejection based on prior art under pre-AIA 35 U.S.C.
 102(e) and the claims are not amended, the examiner may not
 make the next Office action final if a new rejection is made. See
 MPEP §
 706.07(a) . If the reference is disqualified under the
 joint research agreement provision of pre-AIA 35 U.S.C. 103(c) and a
 new subsequent nonstatutory double patenting rejection based upon the disqualified
 reference is applied, the next Office action, which contains the new nonstatutory
 double patenting rejection, may be made final even if applicant did not amend the
 claims (provided that the examiner introduces no other new ground of rejection
 that was not necessitated by either amendment or an information disclosure
 statement filed during the time period set forth in 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) ). The Office action is properly made final because
 the new nonstatutory double patenting rejection was necessitated by amendment of
 the application by applicant.
 

 II. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON
 OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED If the application being examined has established that the reference
 is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) the
 examiner will:
 

 
 (A) examine the applications as to all grounds, except
 pre-AIA 35
 U.S.C. 102(e), (f) and (g) including provisional
 rejections based on provisional prior art under pre-AIA 35 U.S.C.
 102(e) , as they apply through 35 U.S.C.
 103(a) ;
 

 (B) examine the applications for double patenting, including
 statutory and nonstatutory double patenting, and make a provisional rejection,
 if appropriate; and
 

 (C) invite the applicant to file a terminal disclaimer to overcome
 any provisional or actual nonstatutory double patenting rejection, if
 appropriate (see 37 CFR 1.321 ).
 

 III. DOUBLE PATENTING REJECTIONS Commonly owned applications of different inventive entities may be
 rejected on the ground of double patenting, even if the later filed application
 claims 35 U.S.C.
 120 benefit to the earlier application, subject to the
 conditions discussed in MPEP § 804 et seq. In addition, a double patenting rejection may arise as a
 result of the amendment to pre-AIA 35 U.S.C. 103(c) by the
 CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). 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). For purposes of double patenting analysis, the
 application or patent and the 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.
 

 A rejection based on a pending application would be a provisional
 rejection. The practice of rejecting claims on the ground of nonstatutory double
 patenting in commonly owned applications of different inventive entities is in
 accordance with existing case law and prevents an organization from obtaining two or
 more patents with different expiration dates covering nearly identical subject
 matter. See MPEP §
 804 for guidance on nonstatutory double patenting issues.
 In accordance with established patent law doctrines, nonstatutory double patenting
 rejections can be overcome in certain circumstances by disclaiming, pursuant to the
 existing provisions of 37 CFR 1.321 , the terminal
 portion of the term of the later patent and including in the disclaimer a provision
 that the patent shall be enforceable only for and during the period the patent is
 commonly owned with the application or patent which formed the basis for the
 rejection, thereby eliminating the problem of extending patent life. For a
 nonstatutory double patenting rejection based on a non-commonly owned patent (treated
 as if commonly owned pursuant to the CREATE Act), the nonstatutory double patenting
 rejection may be obviated by filing a terminal disclaimer in accordance with
 37 CFR
 1.321(d) . See MPEP §§ 804 , 804.02 and
 1490 , subsection VI.
 

 
 2146.03(a) Provisional Rejection (Obviousness) Under 35
 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2154 et seq. for the
 examination of applications subject to the first inventor to file provisions of
 the AIA involving, inter alia, rejections based on U.S. patent
 documents.] 

 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) . See MPEP §
 2146.03 for examination procedure with respect to
 pre-AIA 35
 U.S.C. 103(c) . See also MPEP § 2136.01 for examination
 procedure in determining when provisional rejections are appropriate. Otherwise the
 confidential status of unpublished application, or any part thereof, under
 35 U.S.C.
 122 must be maintained. Such a rejection alerts the applicant
 that the applicant can expect a nonprovisional rejection on the same ground if one of
 the applications issues and also lets applicant know that action must be taken to
 avoid the rejection.
 

 This gives applicant the opportunity to analyze the propriety of the
 rejection and possibly avoid the loss of rights to desired subject matter.
 Provisional rejections under pre-AIA 35 U.S.C. 103(a) based on
 provisional prior art under pre-AIA 35 U.S.C. 102(e) are
 rejections applied to copending applications wherein each application has a common
 assignee or a common inventor. The application with the earlier pre-AIA 35 U.S.C.
 102(e) date, if patented or published, would constitute prior
 art against the other application. The rejection can be overcome by: 
 

 
 (A) Arguing patentability over the earlier filed application;

 (B) Combining the subject matter of the copending applications into
 a single application claiming benefit under 35 U.S.C.
 120 of the prior applications and abandoning the
 copending applications (note that a claim in a subsequently filed application
 that relies on a combination of prior applications may not be entitled to the
 benefit of an earlier filing date under 35 U.S.C. 120 if the
 earlier filed application does not contain a disclosure which complies with
 35 U.S.C.
 112 for the claim in the subsequently filed application.
 Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112
 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997)); 
 

 (C) Filing an affidavit or declaration under 37 CFR
 1.132 showing that any unclaimed invention disclosed in
 the copending application was derived from the inventor of the other
 application and is thus not invention “by another” (see MPEP §§
 715.01(a) , 715.01(c) , and
 716.10 ); 
 

 (D) Filing an affidavit or declaration under 37 CFR
 1.131(a) showing a date of invention prior to the
 pre-AIA 35
 U.S.C. 102(e) date of the copending application. See
 MPEP
 § 715 ; or 
 

 (E) For an application that is pending on or after December 10,
 2004, a showing that (1) the prior art and the claimed invention were, at the
 time the invention was made, owned by the same person or subject to an
 obligation of assignment to the same person, or (2) the subject matter is
 disqualified under pre-AIA 35 U.S.C. 103(c) 
 (i.e., common ownership or joint research agreement disqualification).
 

 
 Where the applications are claiming interfering subject matter as
 defined in 37 CFR
 41.203(a) , a terminal disclaimer and an affidavit or
 declaration under 37 CFR 1.131(c) may be used to
 overcome a rejection under 35 U.S.C. 103(a) in a common
 ownership situation if the earlier filed application has been published or matured
 into a patent. See MPEP
 § 718 . 
 

 If an obviousness rejection based on provisional pre-AIA 35 U.S.C.
 102(e) prior art is made and the copending applications are
 combined into a single application, and the resulting combined application is subject
 to a restriction requirement, a proper divisional application would not be subject to
 a provisional or nonprovisional rejection under 35 U.S.C. 103(a) in view of the
 combined application. This is because the provisions of 35 U.S.C. 121 
 would preclude the use of a patent issuing from the combined application as a
 reference against the divisional application. Additionally, the combined application
 would be a continuation-in-part application entitled to 35 U.S.C.
 120 benefit of each of the prior applications. This is
 illustrated in Example 2, below.
 

 The following examples are illustrative of the application of
 35 U.S.C.
 103(a) in applications filed prior to November 29, 1999 for
 which a patent was granted prior to December 10, 2004:
 

 
 Example 1. Assumption: Employees A and B work for C, each with knowledge of the
 other’s work, and with obligation to assign inventions to C while employed.
 

 

 
 
 
 
 SITUATIONS 
 RESULTS 
 

 
 
 
 1. A invents X and later files
 application. 
 
 This is permissible. 
 

 
 2. B modifies X to XY. B files
 application before A’s filing. 
 
 No 35 U.S.C. 103(a) 
 rejection based on prior art under pre-AIA 35 U.S.C.
 102(f) or 102(g) ; provisional
 35 U.S.C. 103(a) 
 rejection made in A’s later-filed application based on B’s application as
 provisional prior art under pre-AIA 35 U.S.C.
 102(e) . Provisional nonstatutory double patenting
 rejection made. 
 
 

 
 3. B’s patent issues. 
 A’s claims rejected over B’s patent under
 35
 U.S.C. 103(a) based on prior art under
 pre-AIA 35 U.S.C. 102(e) and nonstatutory double
 patenting.
 
 

 
 4. A files 37 CFR
 1.131(c) affidavit to disqualify B’s patent as
 prior art where interfering subject matter as defined in
 37
 CFR 41.203(a) is being claimed. Terminal disclaimer
 filed under 37 CFR 1.321(c) . 
 
 Rejection under 35
 U.S.C.103(a) based on prior art under
 pre-AIA 35 U.S.C. 102(e) may be overcome and
 nonstatutory double patenting rejection may be overcome if inventions X
 and XY are commonly owned and all requirements of 37 CFR
 1.131(c) and 1.321 are met.
 
 

 
 
 In situation (2.) above, the result is a
 provisional rejection under 35 U.S.C.
 103(a) made in the later-filed application based on provisional
 prior art under pre-AIA 35 U.S.C. 102(e) . The rejection is provisional since
 the subject matter and the prior art are pending applications. 
 

 
 Example 2. Assumption: Employees A and B work for C, each with knowledge of the
 other’s work, and with obligation to assign inventions to C while employed.
 

 

 
 
 
 
 SITUATIONS 
 RESULTS 
 

 
 
 
 1. A invents X and files application. 
 This is permissible. 
 

 
 2. B modifies X to XY after A’s
 application is filed. B files application establishing that A and B were
 both under obligation to assign inventions to C at the time the
 inventions were made. 
 
 Provisional 35 U.S.C.
 103(a) rejection made in B’s later-filed
 application based on A’s application as provisional prior art under
 pre-AIA 35 U.S.C. 102(e) made; provisional
 nonstatutory double patenting rejection made; no 35 U.S.C.
 103(a) rejection based on prior art under
 pre-AIA 35 U.S.C. 102(f) or 102(g) made. 
 
 

 
 3. A and B jointly file continuing
 application claiming priority to both their earlier applications and
 abandon the earlier applications.
 
 Assume it is proper that restriction be
 required between X and XY.
 
 

 
 4. X is elected, a patent issues on X,
 and a divisional application is timely filed on XY. 
 
 No rejection of divisional application
 under 35 U.S.C. 103(a) based on prior art under
 pre-AIA 35 U.S.C. 102(e) in view of
 35
 U.S.C. 121 .
 
 

 
 
 The following examples are illustrative of rejections under
 35 U.S.C.
 103(a) based on prior art under pre-AIA 35 U.S.C.
 102(e) in applications that are pending on or after December
 10, 2004:
 

 
 Example 3. Assumption: Employees A and B work for C, each with knowledge of the
 other’s work, and with obligation to assign inventions to C while employed.
 Employee A’s application, which is pending on or after December 10, 2004, is being
 examined.
 

 

 
 
 
 
 SITUATIONS 
 RESULTS 
 

 
 
 
 1. A invents X and later files
 application.
 
 This is permissible. 
 

 
 2. B modifies X to XY. B files
 application before A’s filing. A files an application on invention
 X.
 
 Provisional 35 U.S.C.
 103(a) rejection of A’s later-filed application
 based on B’s application as provisional prior art under pre-AIA 35 U.S.C.
 102(e) and a provisional nonstatutory double
 patenting rejection are made.
 
 

 
 3. B’s patent issues. 
 A’s claims are rejected under
 35 U.S.C. 103(a) 
 based on B’s patent under pre-AIA 35 U.S.C.
 102(e) and nonstatutory double patenting.
 
 

 
 4. A files evidence of common ownership
 of inventions X and XY at the time invention XY was made to disqualify
 B’s patent as prior art. In addition, A files a terminal disclaimer under
 37
 CFR 1.321(c) .
 
 Rejection of A’s claims under
 35 U.S.C. 103(a) 
 based on prior art under pre-AIA 35 U.S.C.
 102(e) will be withdrawn and nonstatutory double
 patenting rejection will be obviated if inventions X and XY are commonly
 owned at the time invention XY was made and all requirements of
 37
 CFR 1.321 are met.
 
 

 
 
 In situation (2.) above, the result is a
 provisional rejection under 35 U.S.C.
 103(a) made in the later-filed application based on provisional
 prior art under pre-AIA 35 U.S.C. 102(e) (the earlier-filed application). The
 rejection is provisional since the subject matter and the prior art are pending
 applications. 
 

 
 Example 4. Assumption: Employees A and B work for C, each with knowledge of the
 other’s work, and with obligation to assign inventions to C while employed.
 Employee B’s application, which is pending on or after December 10, 2004, is being
 examined.
 

 

 
 
 
 
 SITUATIONS 
 RESULTS 
 

 
 
 
 1. A invents X and files application. 
 This is permissible. 
 

 
 2. B modifies X to XY after A’s
 application is filed. B files evidence in B’s application establishing
 that A and B were both under obligation to assign inventions to C at the
 time the invention XY was made.
 
 Provisional 35 U.S.C.
 103(a) rejection of B’s claims based on A’s
 application as provisional prior art under pre-AIA 35 U.S.C.
 102(e) cannot be made; provisional nonstatutory
 double patenting rejection is made; no 35 U.S.C.
 103(a) rejection based on prior art under
 pre-AIA 35 U.S.C. 102(f) or 102(g) is made.
 
 

 
 3. B files a terminal disclaimer under
 37
 CFR 1.321(c) .
 
 The provisional nonstatutory double
 patenting rejection made in B’s application would be obviated if all
 requirements of 37 CFR 1.321 are
 met.
 
 

 
 
 
 Example 5. Assumption: Employee A works for assignee I and Employee B works for
 assignee J. There is a joint research agreement, pursuant to pre-AIA 35 U.S.C.
 103(c) , between assignees I and J. Employees A and B each
 filed an application as set forth below. Employee B’s invention claimed in his
 application was made after the joint research agreement was entered into, and it
 was made as a result of activities undertaken within the scope of the joint
 agreement. Employee B’s application discloses assignees I and J as the parties to
 the joint research agreement. Employee B’s application, which is pending on or
 after December 10, 2004, is being examined.
 

 
 
 
 
 SITUATIONS 
 RESULTS 
 

 
 
 
 1. A invents X and files application. 
 This is permissible. 
 

 
 2. B modifies X to XY after A’s
 application is filed. B files evidence in B’s application establishing
 a joint research agreement in compliance with pre-AIA 35 U.S.C.
 103(c) .
 
 Provisional 35 U.S.C.
 103(a) rejection of B’s claims based on A’s
 application as provisional prior art under pre-AIA 35 U.S.C.
 102(e) cannot be made; provisional nonstatutory
 double patenting rejection is made; no 35 U.S.C.
 103(a) rejection based on prior art under
 pre-AIA 35 U.S.C. 102(f) or 35 U.S.C.
 102(g) made. 
 
 

 
 3. B files a terminal disclaimer under
 37 CFR 1.321 .
 
 The provisional nonstatutory double
 patenting rejection made in B’s application would be obviated if all
 requirements of 37 CFR 1.321 are
 met.
 
 

 
 
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2101-2102-[Reserved] 

 2103-Patent Examination Process 

 2104-Requirements of 35 U.S.C. 101 
 2104.01-Barred by Atomic Energy Act 

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

 2106.03-Eligibility Step 1: The Four Categories of Statutory Subject Matter 

 2106.04-Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception 
 2106.04(a)-Abstract Ideas 
 2106.04(a)(1)-Examples of Claims That Do Not Recite Abstract Ideas 

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

 2106.04(b)-Laws of Nature, Natural Phenomena & Products of Nature 

 2106.04(c)-The Markedly Different Characteristics Analysis 

 2106.04(d)-Integration of a Judicial Exception Into A Practical Application 
 2106.04(d)(1)-Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in
 Step 2A Prong Two 

 2106.04(d)(2)-Particular Treatment and Prophylaxis in Step 2A Prong Two 

 
 

 
 

 2106.05-Eligibility Step 2B: Whether a Claim Amounts to Significantly More 
 2106.05(a)-Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field 

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

 2106.05(d)-Well-Understood, Routine, Conventional Activity 

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

 2106.06-Streamlined Analysis 
 2106.06(a)-Eligibility is Self Evident 

 2106.06(b)-Clear Improvement to a Technology or to Computer Functionality 

 
 

 2106.07-Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility 
 2106.07(a)-Formulating a Rejection For Lack of Subject Matter Eligibility 
 2106.07(a)(1)-Form Paragraphs for use in Lack of Subject Matter Eligibility Rejections 

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

 2107-Guidelines for Examination of Applications for Compliance with the Utility Requirement 
 2107.01-General Principles Governing Utility Rejections 

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

 2111-Claim Interpretation; Broadest Reasonable Interpretation 
 2111.01-Plain Meaning 

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

 2111.04-“Adapted to,” “Adapted for,” “Wherein,” “Whereby,” and Contingent Clauses 

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

 2112-Requirements of Rejection Based on Inherency; Burden of Proof 
 2112.01-Composition, Product, and Apparatus Claims 

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

 2116-Novel, Nonobvious Starting Material or End Product 
 2116.01-Novel, Nonobvious Starting Material or End Product 

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

 2120-Rejection on Prior Art 
 2120.01-Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent 

 2120.02-Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b): Knowledge by Others, or Public Use, or On Sale 

 
 

 2121-Prior Art; General Level of Operability Required to Make a Prima Facie Case 
 2121.01-Use of Prior Art in Rejections Where Operability is in Question 

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

 2123-Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments 

 2124-Exception to the Rule That the Reference Must be Prior Art 
 2124.01-Tax Strategies Deemed Within the Prior Art 

 
 

 2125-Drawings as Prior Art 

 2126-Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b),
 and (d) 
 2126.01-Date of Availability of a Patent as a Reference 

 2126.02-Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When the Reference Is a “Patent” but Not a “Publication” 

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

 2128-“Printed Publications” as Prior Art 
 2128.01-Level of Public Accessibility Required 

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

 2131-Anticipation — Application of 35 U.S.C. 102 
 2131.01-Multiple Reference 35 U.S.C. 102 Rejections 

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

 2132-Pre-AIA 35 U.S.C. 102(a) 
 2132.01-Overcoming a Pre-AIA 35 U.S.C. 102(a) Rejection based on a Printed Publication or Patent 

 
 

 2133-Pre-AIA 35 U.S.C. 102(b) 
 2133.01-Rejections of Continuation-In-Part (CIP) Applications 

 2133.02-Rejections Based on Publications and Patents 
 2133.02(a)-Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent 

 
 

 2133.03-Rejections Based on “Public Use” or “On Sale” 
 2133.03(a)-“Public Use” 

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

 2133.03(e)-Permitted Activity; Experimental Use 
 2133.03(e)(1)-Commercial Exploitation 

 2133.03(e)(2)-Intent 

 2133.03(e)(3)-“Completeness” of the Invention 

 2133.03(e)(4)-Factors Indicative of an Experimental Purpose 

 2133.03(e)(5)-Experimentation and Degree of Supervision and Control 

 2133.03(e)(6)-Permitted Experimental Activity and Testing 

 2133.03(e)(7)-Activity of an Independent Third Party Inventor 

 
 

 
 

 
 

 2134-Pre-AIA 35 U.S.C. 102(c) 

 2135-Pre-AIA 35 U.S.C. 102(d) 
 2135.01-The Four Requirements of Pre-AIA 35 U.S.C. 102(d) 

 
 

 2136-Pre-AIA 35 U.S.C. 102(e) 
 2136.01-Status of Unpublished or Published as Redacted U.S. Application as a Reference Under Pre-AIA 35 U.S.C. 102(e) 

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

 2136.04-Different Inventive Entity; Meaning of “By Another” 

 2136.05-Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e) 
 2136.05(a)-Antedating a Pre-AIA 35 U.S.C. 102(e) Reference 

 2136.05(b)-Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work 

 
 

 
 

 2137-Pre-AIA 35 U.S.C. 102(f) 
 2137.01-[Reserved] 

 2137.02-[Reserved] 

 
 

 2138-Pre-AIA 35 U.S.C. 102(g) 
 2138.01-Interference Practice 

 2138.02-“The Invention Was Made in This Country” 

 2138.03-“By Another Who Has Not Abandoned, Suppressed, or Concealed It” 

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

 2139-Rejections Under Pre-AIA 35 U.S.C. 102 
 2139.01-Effective Filing Date of a Claimed Invention Under Pre-AIA 35 U.S.C. 102 

 2139.02-Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e) 

 2139.03-Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 102 

 
 

 2140-[Reserved] 

 2141-Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 
 2141.01-Scope and Content of the Prior Art 
 2141.01(a)-Analogous and Nonanalogous Art 

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

 2143-Examples of Basic Requirements of a Prima Facie Case of Obviousness 
 2143.01-Suggestion or Motivation To Modify the References 

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

 2144-Supporting a Rejection Under 35 U.S.C. 103 
 2144.01-Implicit Disclosure 

 2144.02-Reliance on Scientific Theory 

 2144.03-Reliance on Common Knowledge in the Art or “Well Known” Prior Art 

 2144.04-Legal Precedent as Source of Supporting Rationale 

 2144.05-Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions 

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

 2144.09-Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) 

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

 2146-Pre-AIA 35 U.S.C. 103(c) 
 2146.01-Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) 

 2146.02-Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) 

 2146.03-Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c) 
 2146.03(a)-Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) 

 
 

 
 

 2147-Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b) 

 2148-Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103 

 2149-[Reserved] 

 2150-Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America
 Invents Act 

 2151-Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA 

 2152-Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) 
 2152.01-Effective Filing Date of the Claimed Invention 

 2152.02-Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a Printed Publication, or in Public Use, on Sale, or Otherwise
 Available to the Public) 
 2152.02(a)-Patented 

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

 2152.02(f)-No Requirement of “By Others” 

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

 2152.05-Determining Whether To Apply 35 U.S.C. 102(a)(1) or 102(a)(2) 

 2152.06-Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection 

 2152.07-Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102 

 
 

 2153-Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) 
 2153.01-Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor-Originated Disclosure
 Exception) 
 2153.01(a)-Grace Period Inventor-Originated Disclosure Exception 

 2153.01(b)-[Reserved] 

 
 

 2153.02-Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor-Originated Prior Public Disclosure
 Exception) 

 
 

 2154-Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date
 of the Claimed Invention 
 2154.01-Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents” 
 2154.01(a)-WIPO Published Applications 

 2154.01(b)-Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d) 

 2154.01(c)-Requirement Of “Names Another Inventor” 

 2154.01(d)-Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application 

 
 

 2154.02-Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2) 
 2154.02(a)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception) 

 2154.02(b)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Prior Public Disclosure
 Exception) 

 2154.02(c)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment) 

 
 

 
 

 2155-Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections 
 2155.01-Showing That the Disclosure Was Made by the Inventor or a Joint Inventor 

 2155.02-Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor 

 2155.03-Showing That the Disclosure was Made, or That Subject Matter had Been Previously Publicly Disclosed, by Another Who Obtained
 the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor 

 2155.04-Enablement 

 2155.05-Who May File an Affidavit or Declaration Under 37 CFR 1.130 

 2155.06-Situations in Which an Affidavit or Declaration Is Not Available 

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

 2158-AIA 35 U.S.C. 103 
 2158.01-Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103 

 
 

 2159-Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of
 the AIA 
 2159.01-Applications Filed Before March 16, 2013 

 2159.02-Applications Filed on or After March 16, 2013 

 2159.03-Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013 

 2159.04-Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After
 March 16, 2013 

 
 

 2160-[Reserved] 

 2161-Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 
 2161.01-Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 
 

 2162-Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 2163-Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph,
 “Written Description” Requirement 
 2163.01-Support for the Claimed Subject Matter in Disclosure 

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

 2163.04-Burden on the Examiner with Regard to the Written Description Requirement 

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

 2163.07-Amendments to Application Which Are Supported in the Original Description 
 2163.07(a)-Inherent Function, Theory, or Advantage 

 2163.07(b)-Incorporation by Reference 

 
 

 
 

 2164-The Enablement Requirement 
 2164.01-Test of Enablement 
 2164.01(a)-Undue Experimentation Factors 

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

 2164.03-Relationship of Predictability of the Art and the Enablement Requirement 

 2164.04-Burden on the Examiner Under the Enablement Requirement 

 2164.05-Determination of Enablement Based on Evidence as a Whole 
 2164.05(a)-Specification Must Be Enabling as of the Filing Date 

 2164.05(b)-Specification Must Be Enabling to Persons Skilled in the Art 

 
 

 2164.06-Quantity of Experimentation 
 2164.06(a)-Examples of Enablement Issues-Missing Information 

 2164.06(b)-Examples of Enablement Issues — Biological and Chemical Cases 

 2164.06(c)-Examples of Enablement Issues – Computer Programming Cases 

 
 

 2164.07-Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101 

 2164.08-Enablement Commensurate in Scope With the Claims 
 2164.08(a)-Single Means Claim 

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

 2165-The Best Mode Requirement 
 2165.01-Considerations Relevant to Best Mode 

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

 2166-Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 2167-2170-[Reserved] 

 2171-Two Separate Requirements for Claims Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 

 2172-Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention 
 2172.01-Unclaimed Essential Subject Matter 

 
 

 2173-Claims Must Particularly Point Out and Distinctly Claim the Invention 
 2173.01-Interpreting the Claims 

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

 2173.05-Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 
 2173.05(a)-New Terminology 

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

 2173.05(d)-Exemplary Claim Language (“for example,” “such as”) 

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

 2173.05(p)-Claim Directed to Product-By- Process or Product and Process 

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

 2173.05(u)-Trademarks or Trade Names in a Claim 

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

 2174-Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs 

 2175-Form Paragraphs for Use in Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 

 2176-2180-[Reserved] 

 2181-Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation 

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

 2184-Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made 

 2185-Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs 

 2186-Relationship to the Doctrine of Equivalents 

 2187-Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph 

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:33