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804.03 Treatment of Commonly Owned Cases of Different Inventive Entities - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
804.03 Treatment of Commonly Owned Cases of Different Inventive Entities
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
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(c) 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 of this title, shall not preclude patentability under this section where the 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.
37 CFR 1.78 Claiming benefit of earlier filing date and cross references to other applications.
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(c) If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same party and contain conflicting claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the Office may require the assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and, if not, indicate which named inventor is the prior inventor.
37 CFR 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b), and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104.
(b) When an application or a patent under reexamination claims an invention which is not patentably distinct from an invention claimed in a commonly owned patent with the same or a different inventive entity, a double patenting rejection will be made in the application or a patent under reexamination. A judicially created double patenting rejection may be obviated by filing a terminal disclaimer in accordance with § 1.321(c).
I. DOUBLE PATENTING
The Office has withdrawn the Commissioner's Notice of January 9, 1967, Double Patenting, 834 O.G. 1615 (Jan. 31, 1967), to the extent that it does not authorize a double patenting rejection where different inventive entities are present. The examiner may reject claims in commonly owned applications of different inventive entities on the ground of double patenting. This 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 In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well established that claims in different applications need be more than merely different in form or content and that patentable distinction must exist to entitle applicants to a second patent) and In re Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).
Double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the 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. 37 CFR 1.130(b).
II. IDENTIFYING COMMONLY OWNED CASES OR DETERMINING INVENTION PRIORITY
A determination of priority is not required when two inventions come within the provisions of 35 U.S.C. 103(c). Two inventions of different inventive entities come within the provisions of 35 U.S.C. 103(c) when:
(A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102;
(B) the earlier invention qualifies as prior art for purposes of obviousness under 35 U.S.C. 103 against the later invention only under subsection (f) or (g) of 35 U.S.C. 102, or 35 U.S.C. 102(e) for applications filed on or after November 29, 1999; and
(C) the inventions were, at the time the later invention was made, owned by the same person or subject to an obligation of assignment to the same person.
Pursuant to 37 CFR 1.78(c), where an application or a patent under reexamination and at least one other application of different inventive entities are owned by the same party and contain conflicting claims, the examiner may require the assignee to state whether the claimed inventions come within the provisions of 35 U.S.C. 103(c) (i.e., indicate whether common ownership or an obligation of assignment to the same person existed at the time the later invention was made). If the assignee states that the provisions of 35 U.S.C. 103(c) do not apply to the conflicting claimed inventions, the assignee is required to indicate which named inventor is the prior inventor. Form paragraphs 8.27, 8.28 and 8.28.01 may be used to require the applicant to identify the prior inventor under 37 CFR 1.78(c). In order to avoid abandonment, the assignee must comply with the requirement under 37 CFR 1.78(c) by naming the prior inventor unless the conflicting claims are eliminated in all but one application. If, however, the two inventions come within the provisions of 35 U.S.C. 103(c), it is not necessary to determine priority of invention since the earlier invention is disqualified as prior art against the later invention and since double patenting rejections can be used to ensure that the patent terms expire together. Accordingly, a response to a requirement under 37 CFR 1.78(c) which states that the inventions of different inventive entities come within the provisions of 35 U.S.C. 103(c), is complete without any further inquiry under 37 CFR 1.78(c) as to the prior inventor.
Before making the requirement to identify the prior inventor under 37 CFR 1.78(c), with its threat to hold the application abandoned if the statement is not made by the assignee, the examiner must make sure that claims are present in each application which are conflicting as defined in MPEP § 804. See In re Rekers, 203 USPQ 1034 (Comm'r Pat. 1979).
In some situations the application file wrappers may reflect which invention is the prior invention, e.g., by reciting that one invention is an improvement of the other invention. See Margolis v. Banner, 599 F.2d 435, 202 USPQ 365 (CCPA 1979) (Court refused to uphold a holding of abandonment for failure to name the prior inventor since the record showed what was invented by the different inventive entities and who was the prior inventor.).
An application in which a requirement to name the prior inventor has been made will not be held abandoned where a timely response indicates that the other application is abandoned or will be permitted to become abandoned and will not be filed as a continuing application. Such a response will be considered sufficient since it renders the requirement to identify the prior inventor moot because the existence of conflicting claims is eliminated. Also note that the conflict between two or more pending applications can be avoided by abandoning the applications and filing a continuation-in-part application merging the conflicting inventions into a single application.
A. Excluding A Prior Art Reference Where Common Ownership Or Assignment Obligation Exists
In order to be disqualified as prior art under 35 U.S.C. 103(c), the subject matter that would otherwise be prior art to the claimed invention and the claimed invention must be commonly owned at the time the claimed invention was made. For applications filed prior to November 29, 1999, the subject matter that is disqualified as prior art under 35 U.S.C. 103 is strictly limited to subject matter that qualifies as prior art only under 35 U.S.C. 102(f) or 35 U.S.C. 102(g) and was commonly owned with the claimed invention at the time the claimed invention was made. For applications filed on or after November 29, 1999, the subject matter which was prior art under 35 U.S.C. 103 via 35 U.S.C. 102(e) is also disqualified as prior art against the claimed invention if that subject matter and the claimed invention were commonly owned at the time the claimed invention was made. 35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103.
To rely upon 35 U.S.C. 103(c), a statement of common ownership must be provided in the record of the application being examined. See MPEP § 706.02(l)(2) regarding evidence required to establish common ownership.
For applications filed prior to November 29, 1999, the subject matter which was prior art under 35 U.S.C. 103 via 35 U.S.C. 102(e) will not be disqualified as prior art under 35 U.S.C. 103(c). However, the prior art under 35 U.S.C. 102(e)/ 103(a) may be disqualified under 37 CFR 1.130 if: (A) the prior art and the application being examined are commonly owned; (B) the prior art does not anticipate the claimed invention of the application; (C) a terminal disclaimer pursuant to 37 CFR 1.321 is filed; and (D) an oath or declaration is filed stating that the application being examined and the prior art are currently owned by the same party, and that the inventor named in the application is the prior inventor under 35 U.S.C. 104. See MPEP § 718.
III. REJECTIONS UNDER 35 U.S.C. 102 AND 103 AND DOUBLE PATENTING
Form paragraphs 8.27, 8.28 and 8.28.01 may be used to require the applicant to name the prior inventor under 37 CFR 1.78(c).
¶ 8.27 Different Inventors, Common Assignee, Same Invention
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under 35 U.S.C. 102(g) and possibly 35 U.S.C. 102(f) of this single invention must be resolved.
Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP § 2302), the assignee is required to state which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under 35 U.S.C. 102(f) or (g) and not an extension of monopoly.
Failure to comply with this requirement will result in a holding of abandonment of this application.
Examiner Note
1. In bracket 3, insert the U.S. patent number or the copending application number.
2. The claims listed in brackets 1 and 2 must be for the same invention. If one invention is obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.
3. A provisional or actual statutory double patenting rejection may also be made using form paragraphs 8.31 or 8.32.
4. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under 35 U.S.C. 102(e) may also be made using form paragraph 7.15.01 or 7.15.02.
¶ 8.28 Different Inventors, Common Assignee, Obvious Inventions, No Evidence of Common Ownership at Time of Invention
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note
1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
2. If the conflicting claims are in a patent or a published application with an earlier U.S. filing date, make a rejection under 35 U.S.C. 102(e)/ 103(a) using form paragraph 7.21.02 in addition to this paragraph.
3. If the conflicting claims are in a commonly assigned, copending application with an earlier filing date, make a provisional 102(e)/ 103(a) rejection using form paragraph 7.21.01 in addition to this paragraph.
4. In bracket 3, insert the number of the conflicting patent or application.
5. An obviousness double patenting rejection may also be included in the action using form paragraphs 8.34 to 8.36.
6. In bracket 4, explain why the claims in the conflicting cases are not considered to be distinct.
7. Form paragraph 8.28.01 MUST follow this paragraph.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications filed on or after November 29, 1999.
¶ 8.28.01 Advisory Information Relating to Paragraph 8.28
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP § 2302). Commonly assigned [1], discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee is required under 35 U.S.C. 103(c) and 37 CFR 1.78(c) to either show that the conflicting inventions were commonly owned at the time the invention in this application was made or to name the prior inventor of the conflicting subject matter. Failure to comply with this requirement will result in a holding of abandonment of the application.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications filed on or after November 29, 1999.
Examiner Note
This form paragraph should follow paragraph 8.28 and should only be used ONCE in an Office action.
If it is determined that the provisions of 35 U.S.C. 103(c) apply to the commonly owned conflicting inventions of different inventive entities and thereby overcoming the obviousness rejection(s), double patenting rejection(s) should be made as appropriate. If, however, it is determined that the provisions of 35 U.S.C. 103(c) do NOT apply because the inventions were not commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and there is evidence of record to indicate that a patent or application is prior art against the application being examined, the examiner should make (A) the appropriate double patenting rejection(s), and (B) the appropriate prior art rejection(s) under 35 U.S.C. 102 and/or 35 U.S.C. 103 in the application being examined. See Charts I-A, I-B, II-A, II-B, III-A and III-B in MPEP § 804. Rejections under 35 U.S.C. 102 or 35 U.S.C. 103 cannot be obviated solely by filing a terminal disclaimer.
¶ 7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and (g)
Claim [1] rejected under 35 U.S.C. 102[2] as being [3] by [4].
Examiner Note
1. In bracket 2, insert the appropriate paragraph letter or letters of 35 U.S.C. 102 in parentheses. If paragraph (e) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.02.
2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
3. In bracket 4, insert the prior art relied upon.
4. This rejection must be preceded either by form paragraph 7.07 and form paragraphs 7.08, 7.09, and 7.14 as appropriate, or by form paragraph 7.103.
5. If 35 U.S.C. 102(e) is also being applied, this paragraph must be followed by either form paragraph 7.15.02 or 7.15.03.
¶ 7.19 Rejection,
35 U.S.C. 102(f), Applicant Not the InventorClaim [1] rejected under 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]
Examiner Note
1. This form paragraph must be preceded either by form paragraphs 7.07 and 7.13 or by form paragraph 7.103.
2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.
¶ 7.21 Rejection,
Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable over [2].
Examiner Note
1. This form paragraph must be preceded by either form paragraph 7.20 or form paragraph 7.103.
2. An explanation of the rejection applying the Graham v. Deere test must follow this form paragraph.
3. If this rejection relies upon art that is disqualified under 35 U.S.C. 102(f) or (g) based upon the common ownership of the invention, form paragraph 7.20.01 must follow this form paragraph.
4. If this rejection is a provisional 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under 35 U.S.C. 102(e) if patented, use paragraph 7.21.01 instead of this paragraph.
¶ 7.21.01 Provisional Rejection,
35 U.S.C. 103(a), Common Assignee or at Least One Common InventorClaim [1] provisionally rejected under 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e) if patented. This provisional rejection under 35 U.S.C. 103(a) is based upon a presumption of future patenting of the conflicting application. [4]
This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference 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. See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Examiner Note
1. This form paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee or at least one common inventor. This form paragraph should not be used in applications filed on or after November 29, 1999 when the application being examined establishes that it and any reference application were owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made. See MPEP § 706.02(l)(3).
2. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.
3. In bracket 3, insert either --assignee-- or --inventor--.
4. In bracket 4, insert explanation of obviousness.
5. If the claimed invention is also claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
6. If evidence indicates that the copending application is also prior art under 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified as prior art in a 35 U.S.C. 103(a) rejection based upon common ownership, a rejection should additionally be made under 35 U.S.C. 103(a) using form paragraph 7.21 (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28).
Further, if the conflicting applications have different effective U.S. filing dates, the examiner should consider making a provisional rejection in the later filed application, based on the earlier filed application, under 35 U.S.C. 102(e) or 102(e)/103(a), using form paragraph 7.15.01 or 7.21.01. Similarly, if an application has a later effective U.S. filing date than a conflicting issued patent, the examiner should consider making a rejection in the application, based on the patent, under 35 U.S.C. 102(e) or 102(e)/103(a), using form paragraph 7.15.02 or 7.21.02. Rejections under 35 U.S.C. 102 or 103 cannot be obviated solely by the filing of a terminal disclaimer. However, for applications filed on or after November 29, 1999, a rejection under 35 U.S.C. 102(e) can be overcome by submitting evidence of common ownership, or an obligation to assign to the same person, at the time the invention was made.
¶ 7.15.01 Provisional Rejection,
35 U.S.C. 102(e) - Common Assignee or At Least One Common InventorClaim [1] provisionally rejected under 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e), if patented. This provisional rejection under 35 U.S.C. 102(e) is based upon a presumption of future patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention. The copending application must have either a common assignee or at least one common inventor.
2. If the claims are obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.
3. In bracket 3, insert either --assignee-- or --inventor--.
4. In bracket 4, an appropriate explanation may be provided in support of the examiner's position on anticipation, if necessary.
5. If the claims of the copending application conflict with the claims of the instant application, a provisional double patenting rejection should also be given using form paragraphs 8.30 and 8.32.
6. If evidence is additionally of record to show that either invention is prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13 and/or 7.14 should also be made.
¶ 7.15.02 Rejection,
35 U.S.C. 102(e), Common Assignee or Inventor(s)Claim [1] rejected under 35 U.S.C. 102(e) as being anticipated by [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131.
Examiner Note
1. This form paragraph is used to reject over a patent with an earlier filing date that discloses but does not claim the same invention. The patent must have either a common assignee or a common inventor.
2. In bracket 3, insert either --assignee-- or --inventor--.
¶ 7.21.02 Rejection,
35 U.S.C. 103(a), Common Assignee or At Least One Common InventorClaim [1] rejected under 35 U.S.C. 103(a) as being obvious over [2].
The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention "by another"; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference 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. See MPEP § 706.02(l)(1) and § 706.02(l)(2). [4]
Examiner Note
1. This form paragraph is used to reject over a patent with an earlier filing date that discloses the claimed invention, and that only qualifies as prior art under 35 U.S.C. 102(e). If the patent qualifies as prior art under 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraphs 7.07 and either 7.08 or 7.09 should be used instead). The patent must have either a common assignee or at least one common inventor. This form paragraph should not be used in applications filed on or after November 29, 1999 when the application being examined establishes that it and any reference patent were owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made. See MPEP § 706.03(l)(3).
2. In bracket 3, insert either --assignee-- or --inventor--.
3. In bracket 4, insert explanation of obviousness.
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