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706.02(l)(3) Examination Procedure With Respect to 35 U.S.C. 103(c) [R-2] - 700 Examination of Applications
706.02(l)(3) Examination Procedure With Respect to 35 U.S.C. 103(c) [R-2]
Examiners are reminded that a reference used in an anticipatory rejection under 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if evidence is provided to show common ownership by, or an obligation of assignment to, the same person at the time the invention was made. Such a commonly owned reference is only disqualified when
(A) proper evidence is filed,
(B) the reference only qualifies as prior art 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, (e.g. not 35 U.S.C. 102(a) or (b)) and
(C) the reference was used in an obviousness rejection under 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 an attorney or agent of record makes 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).
See MPEP § 706.02(l)(2) for additional information pertaining to establishing common ownership.
>I. <EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP HAS NOT BEEN ESTABLISHED
If the application file being examined does not establish that it and the reference patent(s) or application(s) are owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, the examiner will:
(A) assume the application(s) and patent(s) are not commonly owned;
(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 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 35 U.S.C. 102(e), (f) and/or (g), including provisional rejections under 35 U.S.C. 102(e)/ 103; and
(D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 103, including any rejections under 35 U.S.C. 103 based on 35 U.S.C. 102(e), (f) and/or (g), until such time that a statement is made that the application(s) and patent(s) were commonly owned, at the time the invention was made. When applying any 35 U.S.C. 102(e)/103 references against the claims in applications filed on or after November 29, 1999, the examiner should anticipate that a statement of common ownership may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e). See MPEP § 706.02(l)(1). If such a statement is filed in reply to the 35 U.S.C. 102(e)/ 103 rejection 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).
>II. < EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES FILED ON OR AFTER NOVEMBER 29, 1999 WHERE COMMON OWNERSHIP HAS BEEN ESTABLISHED
If the application being examined establishes that it and any reference patent or application were owned by, or subject to an obligation or assignment to, the same person, at the time the invention was made, the examiner will:
(A) examine the applications as to all grounds except 35 U.S.C. 102(e), (f) and (g) as they apply through 35 U.S.C. 103, including provisional rejections under 35 U.S.C. 102(e)/ 103;
(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.
>III. <EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES FILED PRIOR TO NOVEMBER 29, 1999 WHERE COMMON OWNERSHIP HAS BEEN ESTABLISHED
In applications filed prior to November 29, 1999, the disclosure of an earlier filed patent application which issues as a patent continues to be prior art under 35 U.S.C. 102(e) against a later invented and filed application of another inventor even though the patent and the later invention were owned by, or subject to, an obligation of assignment to the same person at the time the later invention was made. See MPEP § 706.02(l)(1).
If the application being examined establishes that it and any reference patent or application were owned by, or subject to an obligation or assignment to, the same person, at the time the invention was made, the examiner will:
(A) examine the applications as to all grounds except 35 U.S.C. 102(f) and (g) as they apply through 35 U.S.C. 103;
(B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate; and
(C) examine the later filed application under 35 U.S.C. 102(e) as it applies through 35 U.S.C. 103 and make a provisional rejection under 35 U.S.C. 102(e)/35 U.S.C. 103 in the later filed application, if appropriate; and
(D) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate, and permit the applicant of the later filed application to file an affidavit or declaration under 37 CFR 1.131, or a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 if the same patentable invention is being claimed and the commonly owned application has issued as a patent (see MPEP § 715.05 and § 718), or an affidavit or declaration under 37 CFR 1.132 showing the invention is not "by another," to overcome the provisional or actual 35 U.S.C. 102(e)/35 U.S.C. 103 rejection, if appropriate. An affidavit or declaration under 37 CFR 1.130 cannot be used to overcome a provisional 35 U.S.C. 102(e)/ 103 rejection. See MPEP § 718.
>IV. < 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. A rejection based on a pending application would be a provisional rejection. The practice of rejecting claims on the ground of 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 double patenting issues. In accordance with established patent law doctrines, 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. See MPEP § 804 and § 804.02.
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