[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

1. (A) a proper submission is filed,
2. (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
3. (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:

1. (A) assume the reference is not disqualified under pre-AIA 35 U.S.C. 103(c);
2. (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);
3. (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
4. (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).

5. 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:

1. (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);
2. (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate; and
3. (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.

[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:

1. (A) Arguing patentability over the earlier filed application;
2. (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));
3. (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);
4. (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
5. (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.

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.

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.

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.

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.