data/2100/s2146.html.txt

[
# 2146 Pre-AIA 35 U.S.C. 103(c) [R-10.2019]


*[Editor Note: This MPEP section is **not applicable** to applications
 subject to examination under the first inventor to file provisions of the AIA as
 explained in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§ 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq.,
 **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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](mpep-9015-appx-l.html#d0e302383)**, 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)](mpep-9015-appx-l.html#d0e302450)** applies only
 to consideration of prior art for purposes of obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. It
 does not apply to or affect subject matter which is applied in a rejection under
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#d0e302383)** other than (e),
 (f), or (g) (e.g., **[pre-AIA 35 U.S.C. 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)**) it will not be disqualified as
 prior art under **[pre-AIA
 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**.
 


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)](mpep-9015-appx-l.html#d0e302450)**. Absent such disqualification, the appropriate rejection under
 **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302450)** applying prior art under **[pre-AIA 35 U.S.C. 102(e), (f), or (g)](mpep-9015-appx-l.html#d0e302383)**
 should be made. See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** for information pertaining
 to establishing prior art exclusions 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](mpep-9015-appx-l.html#d0e302450)**. The term
 "another" as used in **[pre-AIA 35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** 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](s2146.html#ch2100_d2c184_12765_27)**.
 


For a discussion of the three conditions of **[AIA 35 U.S.C.
 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** that must be satisfied for a claimed invention and subject
 matter disclosed which might otherwise qualify as prior art to be treated as having been
 owned by the same person or subject to an obligation of assignment to the same person in
 applying the joint research agreement provisions of **[AIA 35 U.S.C.
 102(b)(2)(C)](mpep-9015-appx-l.html#al_d1d85b_11e7d_1bf)**, see **[MPEP §
 2156](s2156.html#ch2100_d20034_1b4ea_2c0)**. See also **[MPEP §
 717.02](s717.html#ch700_d1ffd5_1b424_139)***et seq.*

**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)](mpep-9015-appx-l.html#d0e302383)** or **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)** is not to
 be considered when determining whether an invention sought to be patented is obvious
 under **[pre-AIA 35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, 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](mpep-9015-appx-l.html#d0e302450)** via **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** in the Intellectual Property and High Technology
 Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)) did not
 affect the exclusion under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302521)** 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](mpep-9015-appx-l.html#d0e302383)**. The amendment to **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302521)**, 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)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302521)**, 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)](mpep-9015-appx-l.html#d0e302521)**. See **[MPEP § 2146.01](s2146.html#ch2100_d2c184_126fa_f3)** for additional
 information regarding disqualified prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)**/**[103](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302521)** are
 applicable. Therefore, only prior art under **[pre-AIA 35 U.S.C. 102(f) or (g)](mpep-9015-appx-l.html#d0e302383)** used
 in a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** may be disqualified under the commonly
 assigned/owned prior art provision **[pre-AIA of 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)**.
 


**[Pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302521)**, 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)](mpep-9015-appx-l.html#d0e302383)**, and which is being relied upon in a rejection under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**. If the rejection is anticipation under **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302521)** cannot be
 relied upon to overcome or prevent a double patenting rejection. See **[37 CFR 1.78(c)](mpep-9020-appx-r.html#aia_d0e320662)**
 and **[MPEP §
 804](s804.html#d0e98894)**. 
 

**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)](mpep-9015-appx-l.html#d0e302383)** or
 **[pre-AIA 35 U.S.C.
 102(g)](mpep-9015-appx-l.html#d0e302383)**, 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)](mpep-9015-appx-l.html#d0e302383)** or
 **[pre-AIA 35 U.S.C.
 102(g)](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#d0e302450)** rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)**. Applicants
 in such cases have an obligation pursuant to **[37 CFR 1.56](mpep-9020-appx-r.html#d0e319407)** 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](mpep-9015-appx-l.html#d0e302450)** rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)**. 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)](mpep-9015-appx-l.html#d0e302921)**-**[(d)](mpep-9015-appx-l.html#d0e302947)** priority based upon the foreign
 filed applications is appropriate and **[35 U.S.C. 119(a)](mpep-9015-appx-l.html#d0e302921)**-**[(d)](mpep-9015-appx-l.html#d0e302947)** priority can
 be accorded based upon each of the foreign filed applications.
 


For rejections under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** using prior
 art under **[pre-AIA 35
 U.S.C. 102(f) or (g)](mpep-9015-appx-l.html#d0e302383)** in applications pending on or after December
 10, 2004, see **[MPEP § 2146.01](s2146.html#ch2100_d2c184_126fa_f3)**.
 



# 2146.01 Prior Art Disqualification Under Pre-AIA 35
 U.S.C. 103(c) [R-10.2019]


*[Editor Note: This MPEP section is **not applicable** to applications
 subject to examination under the first inventor to file provisions of the AIA as
 explained in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP
 § 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§
 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq., **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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](mpep-9015-appx-l.html#d0e302383)**, 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 EXCLUSION 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](mpep-9015-appx-l.html#d0e302450)**
 via **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and  **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**, see **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. Therefore, the provision of **[pre-AIA 35
 U.S.C.103(c)(1)](mpep-9015-appx-l.html#d0e302450)** is effective for all applications 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and  **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. In addition, this provision
 applies to all patent applications, including utility, design, plant and reissue
 applications, except those applications subject to the current **[35 U.S.C.
 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and  **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. The amendment to
 **[pre-AIA 35
 U.S.C. 103(c)(1)](mpep-9015-appx-l.html#d0e302450)** does not affect any application filed before
 November 29, 1999 and issued as a patent prior to December 10, 2004. The AIA provides
 that applications subject to the AIA prior art provisions are not subject to either
 the 1999 or 2004 changes, but are subject to **[35 U.S.C.
 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)**. See **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**.
 


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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** to determine whether **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)** that are
 applicable to the disqualifying commonly assigned/owned prior art provisions of
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302383)**
 used in a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** may be
 excluded under the commonly assigned/owned prior art provisions of **[35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)**. Similarly patents issued from applications subject to
 the current **[35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** are not subject to
 either the 1999 or 2004 changes, but are subject to **[35 U.S.C.
 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)**. See **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**.
 


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](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** which was not able to be disqualified under
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** applies only to prior art usable in an obviousness
 rejection under 35 U.S.C. 103. Subject matter that qualifies as anticipatory prior
 art under **[pre-AIA
 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302450)**, should still be made as appropriate. See
 **[37 CFR
 1.78(c)](mpep-9020-appx-r.html#aia_d0e320662)** and **[MPEP § 804](s804.html#d0e98894)**. By contrast current
 **[35
 U.S.C. 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** operates to except similar prior art from being
 applied in either an obviousness rejection or an anticipation rejection. See
 **[MPEP
 § 2156](s2156.html#ch2100_d20034_1b4ea_2c0)**.
 


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)](mpep-9015-appx-l.html#d0e302450)**. There must be a statement that the common
 ownership was "at the time the invention was made."
 


See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** for information
 regarding establishing common ownership. See **[MPEP §
 2146.03](s2146.html#ch2100_d2c184_127cc_34b)** for examination procedure with respect to
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 
 

**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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. Specifically, the
 CREATE Act amended **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9015-appx-l.html#d0e302383)** shall not preclude patentability under
>  **[35 U.S.C.
>  103](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)**, 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302383)**, and which is being relied upon in a rejection under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**. If the rejection is anticipation under **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** cannot
 be relied upon to overcome or prevent a double patenting rejection. See
 **[37 CFR
 1.78(c)](mpep-9020-appx-r.html#aia_d0e320662)** and **[MPEP § 804](s804.html#d0e98894)**.
 


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)](mpep-9015-appx-l.html#d0e302450)** 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-10.2019]


*[Editor Note: This MPEP section is not applicable to applications subject to
 examination under the first inventor to file provisions of the AIA as explained in
 **[35
 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§
 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq., **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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)](mpep-9015-appx-l.html#d0e302450)**, the subject matter which would otherwise qualify as
 **[pre-AIA 35 U.S.C.
 102(e), (f), or (g)](mpep-9015-appx-l.html#d0e302383)** 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](s2146.html#d0e213206)** for
 rejections under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)** and prior art disqualified
 under **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** in applications granted as patents prior to December
 10, 2004. See **[MPEP § 2146.01](s2146.html#ch2100_d2c184_126fa_f3)** for rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, and prior art disqualified under **[pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)**.
 

**I.** **DEFINITION OF COMMON OWNERSHIP**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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302383)** 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 exclude the use of a reference under
 **[pre-AIA
 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**, 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 exclude the use of Reference Z under
 **[pre-AIA
 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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 exclusion 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 excluded as prior art under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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 a request for the exclusion of Reference Z as prior art under **[pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)**, an
 applicant’s admission that subject matter was developed prior to applicant’s
 invention would not make the subject matter prior art to applicant if the subject
 matter qualifies as prior art only under sections **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, 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 **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.
 


The burden of establishing that subject matter is disqualified as
 prior art under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)**, would have the burden of establishing that it
 was commonly owned at the time the claimed invention was made. The patentee in
 litigation would likewise properly bear the same burden placed upon the applicant
 before the U.S. Patent and Trademark Office. 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)](mpep-9015-appx-l.html#d0e302450)**, the
 Director has reinstituted in appropriate circumstances the practice of rejecting
 claims in commonly owned applications of different inventive entities on the grounds
 of 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
 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](s804.html#d0e98894)** and **[1490](s1490.html#d0e146976)**, 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 subject matter and invention at time invention
 was made, license to another may be made without the subject matter becoming prior
 art.
 



**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)](mpep-9015-appx-l.html#d0e302383)** in view of **[pre-AIA 35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**?
 


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)](mpep-9015-appx-l.html#d0e302450)**.
 



**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 project with University A. Under
 the terms of the joint research project, 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 project 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)](mpep-9015-appx-l.html#d0e302383)** as they apply through
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** as they apply through **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302450)** based on
 prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**, **[(f)](mpep-9015-appx-l.html#d0e302383)** or **[(g)](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#d0e302559)**, 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** as **[pre-AIA 35 U.S.C. 104](mpep-9015-appx-l.html#d0e302559)** 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)](mpep-9015-appx-l.html#d0e302921)** and
 **[35 U.S.C.
 365](mpep-9015-appx-l.html#d0e307034)**.
 

**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)](mpep-9020-appx-r.html#aia_d0e317540)**. 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)](mpep-9015-appx-l.html#d0e302450)**," 1241 OG 96 (December 26, 2000). The applicant(s) or
 the representative(s) of record 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)**. In her 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)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9020-appx-r.html#d0e336097)**, 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)](mpep-9015-appx-l.html#d0e302450)**, the
 burden of overcoming the rejection by invoking the joint research agreement
 provisions of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** as amended by the CREATE Act is on
 the applicant or the patentee. **[Pre-AIA 35 U.S.C. 103(c)(3)](mpep-9015-appx-l.html#d0e302450)**
 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9020-appx-r.html#aia_aia_d0e313917)**.
	+ (2) An amendment under paragraph (g)(1) of this section
	 must be accompanied by the processing fee set forth in
	 **[§ 1.17(i)](mpep-9020-appx-r.html#eff_20130320_d0e315199)** 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](mpep-9020-appx-r.html#d0e329128)** 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](mpep-9020-appx-r.html#d0e322625)**.
	+ (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](mpep-9015-appx-l.html#d0e305404)** and **[§ 1.323](mpep-9020-appx-r.html#d0e326640)** 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)](mpep-9015-appx-l.html#d0e302407)** 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)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302407)** 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)](mpep-9015-appx-l.html#d0e302521)** in effect prior to March 16, 2013,
		 on the basis of a joint research agreement under
		 **[35 U.S.C.
		 103(c)(2)](mpep-9015-appx-l.html#d0e302529)** 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)](mpep-9015-appx-l.html#al_d1d85b_11e10_359)** and **[§ 1.9(e)](mpep-9020-appx-r.html#aia_aia_d0e313917)**, 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)](mpep-9015-appx-l.html#d0e302521)** in effect on November 28,
	 1999.


\*\*\*\*\*



**[37 CFR
 1.71(g)](mpep-9020-appx-r.html#d0e320131)** 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)](mpep-9020-appx-r.html#d0e320131)** 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)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** or **[pre-AIA 35 U.S.C.
 103(c)(2)(C)](mpep-9015-appx-l.html#d0e302450)**.
 


**[37
 CFR1.71(g)(2)](mpep-9020-appx-r.html#d0e320131)** provides that an amendment under
 **[37 CFR
 1.71(g)(1)](mpep-9020-appx-r.html#d0e320131)** must be accompanied by the processing fee set forth
 in **[37
 CFR 1.17(i)](mpep-9020-appx-r.html#eff_20130320_d0e315199)** 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](mpep-9020-appx-r.html#d0e329128)** 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](mpep-9020-appx-r.html#d0e322625)**.
 


**[37 CFR
 1.71(g)(3)](mpep-9020-appx-r.html#d0e320131)** provides that if an amendment under
 **[37 CFR
 1.71(g)(1)](mpep-9020-appx-r.html#d0e320131)** 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)](mpep-9020-appx-r.html#d0e320131)** 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](mpep-9015-appx-l.html#d0e305404)** and
 **[37 CFR
 1.323](mpep-9020-appx-r.html#d0e326640)** for the amendment to be effective. The requirements of
 **[37 CFR
 1.71(g)(3)](mpep-9020-appx-r.html#d0e320131)** (correction of the patent by a certificate of
 correction under **[35
 U.S.C. 255](mpep-9015-appx-l.html#d0e305404)** and **[37 CFR 1.323](mpep-9020-appx-r.html#d0e326640)**) 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)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9020-appx-r.html#d0e322826)**, **[1.121](mpep-9020-appx-r.html#d0e323020)**, and **[1.312](mpep-9020-appx-r.html#d0e326304)**. For
 example, if an amendment under **[37 CFR 1.71(g)](mpep-9020-appx-r.html#d0e320131)** is submitted in an
 application under final rejection to overcome a rejection under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302450)** based upon a U.S. patent which qualifies as prior art
 only under **[pre-AIA
 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**, the examiner may refuse to enter the
 amendment under **[37
 CFR 1.71(g)](mpep-9020-appx-r.html#d0e320131)** if it is not accompanied by an appropriate terminal
 disclaimer (**[37 CFR
 1.321(d)](mpep-9020-appx-r.html#d0e326459)**). This is because such an amendment may necessitate
 the reopening of prosecution (e.g., for entry of a double patenting rejection).
 


If an amendment under **[37 CFR 1.71(g)](mpep-9020-appx-r.html#d0e320131)** is submitted to
 overcome a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)**, and the examiner withdraws the
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**, the examiner may need to issue an
 Office action containing a new 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)](mpep-9020-appx-r.html#d0e321609)** with the fee set
 forth in **[37 CFR 1.17(p)](mpep-9020-appx-r.html#eff_20130320_d0e315199)**. The Office action
 is properly made final because the new 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)(4)](mpep-9020-appx-r.html#d0e322124)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9020-appx-r.html#d0e313174)**). The statement must be signed in accordance with
 **[37 CFR
 1.33(b)](mpep-9020-appx-r.html#d0e317491)**. 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** prior art as if they are commonly owned for purposes of
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.
 


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)](mpep-9015-appx-l.html#d0e302450)** to
 disqualify University B’s application as prior art in a rejection under
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.
 



**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)](mpep-9015-appx-l.html#d0e302450)** to disqualify University B’s
 application as prior art in a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**
 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)](mpep-9015-appx-l.html#d0e302450)** to
 disqualify University B’s application as prior art in a rejection under
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** 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-10.2019]


*[Editor Note: This MPEP section is not applicable to applications subject to
 examination under the first inventor to file provisions of the AIA as explained in
 **[35
 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§
 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq., **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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)](mpep-9015-appx-l.html#d0e302383)** is not disqualified as
 prior art if the reference is disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302383)** (e.g., not **[pre-AIA 35 U.S.C. 102(a) or
 (b)](mpep-9015-appx-l.html#d0e302383)**), and
* (C) the reference was used in an obviousness rejection under
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.


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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)**, via the CREATE Act, the applicant must comply with the
 statute and the rules of practice in effect.
 


See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** 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)](mpep-9015-appx-l.html#d0e302450)**, the
 examiner will:
 


* (A) assume the reference is not disqualified under
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**;
* (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](mpep-9015-appx-l.html#d0e302450)** rejection based on prior art under **[pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g)](mpep-9015-appx-l.html#d0e302383)**;
* (C) consider the applicability of any references under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g)](mpep-9015-appx-l.html#d0e302383)**, including provisional rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** (see **[MPEP §
 2146.03(a)](s2146.html#ch2100_d2c184_12851_21a)**); and
* (D) apply the best references against the claimed invention by
 rejections under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
 **[103](mpep-9015-appx-l.html#d0e302450)**, including any rejections under **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g)](mpep-9015-appx-l.html#d0e302383)**, until such time that the reference is
 disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**.
When applying any references that qualify as prior
 art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** in a rejection under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** against the claims, the examiner should anticipate that
 the reference may be disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** and
 consider making an appropriate additional, alternative rejection. See
 **[MPEP § 2120](s2120.html#ch2100_d2c183_20d28_209)**, subsection I. If a statement of common
 ownership or assignment is filed in reply to the **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** 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)](s706.html#d0e68889)**. If the reference is disqualified under the
 joint research agreement provision of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** and a
 new subsequent double patenting rejection based upon the disqualified reference is
 applied, the next Office action, which contains the new 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)](mpep-9020-appx-r.html#d0e321609)** with the fee
 set forth in **[37 CFR 1.17(p)](mpep-9020-appx-r.html#eff_20130320_d0e315199)**). The Office
 action is properly made final because the new 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)](mpep-9015-appx-l.html#d0e302450)** the
 examiner will:
 


* (A) examine the applications as to all grounds, except
 **[pre-AIA 35
 U.S.C. 102(e), (f) and (g)](mpep-9015-appx-l.html#d0e302383)** including provisional
 rejections based on provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)**, as they apply through **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**;
* (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](mpep-9020-appx-r.html#d0e326459)**).

**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](mpep-9015-appx-l.html#d0e303023313)** benefit to the earlier application, subject to the
 conditions discussed in **[MPEP § 804](s804.html#d0e98894)***et seq.* In addition, double patenting rejection may arise as a
 result of the amendment to **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** by the
 CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). Congress recognized that this
 amendment to **[35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302450)** 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 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](s804.html#d0e98894)** 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](mpep-9020-appx-r.html#d0e326459)**, 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 double patenting rejection based on a non-commonly
 owned patent (treated as if commonly owned pursuant to the CREATE Act), the double
 patenting rejection may be obviated by filing a terminal disclaimer in accordance
 with **[37 CFR
 1.321(d)](mpep-9020-appx-r.html#d0e326459)**. See **[MPEP §§ 804](s804.html#d0e98894)**, **[804.02](s804.html#d0e101356)** and
 **[1490](s1490.html#d0e146976)**, subsection VI.
 



# 2146.03(a) Provisional Rejection (Obviousness) Under 35
 U.S.C. 103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-10.2019]


*[Editor Note: This MPEP section is
 not applicable to applications subject to examination under the first inventor to
 file provisions of the AIA as explained in **[35 U.S.C. 100
 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §
 2154](s2154.html#ch2100_d20033_274f5_338)** 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)](mpep-9015-appx-l.html#d0e303063)**, and the filing dates differ, a provisional
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302383)** based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** should be made in the later filed application
 unless the application has been excluded under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. See
 **[MPEP
 § 2146.03](s2146.html#ch2100_d2c184_127cc_34b)** for examination procedure with respect to
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. See also **[MPEP § 2136.01](s2136.html#d0e205680)** 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](mpep-9015-appx-l.html#d0e303054)** must be maintained. Such a rejection alerts the applicant
 that the applicant can expect an actual 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 of the obviousness type under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302383)** based on provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** are rejections applied to copending applications having
 different effective filing dates wherein each application has a common assignee or a
 common inventor. The earlier filed application, if patented or published, would
 constitute prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**. 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](mpep-9015-appx-l.html#d0e303023313)** 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](mpep-9015-appx-l.html#d0e303023313)** if the
 earlier filed application does not contain a disclosure which complies with
 **[35 U.S.C.
 112](mpep-9015-appx-l.html#d0e302824)** 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](mpep-9020-appx-r.html#d0e323552)** 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)](s715.html#d0e90674)**, **[715.01(c)](s715.html#d0e90779)**, and
 **[716.10](s716.html#d0e93797)**);
* (D) Filing an affidavit or declaration under **[37 CFR
 1.131(a)](mpep-9020-appx-r.html#aia_d0e323504)** showing a date of invention prior to the
 effective U.S. filing date of the copending application. See
 **[MPEP
 § 715](s715.html#d0e89737)**; 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)](mpep-9015-appx-l.html#d0e302521)**
 (i.e., joint research agreement disqualification).


Where the applications are claiming interfering subject matter as
 defined in **[37 CFR
 41.203(a)](mpep-9020-appx-r.html#d0e359662)**, a terminal disclaimer and an affidavit or
 declaration under **[37 CFR 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** may be used to
 overcome a rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** in a common
 ownership situation if the earlier filed application has been published or matured
 into a patent. See **[MPEP
 § 718](s718.html#d0e93900)**. 
 


If a provisional rejection is made and the copending applications are
 combined into a single application and the resulting single application is subject to
 a restriction requirement, the divisional application would not be subject to a
 provisional or actual rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302383)** since the
 provisions of **[35
 U.S.C. 121](mpep-9015-appx-l.html#d0e303040)** preclude the use of a patent issuing therefrom as a
 reference against the other application. Additionally, the resulting
 continuation-in-part is entitled to **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** 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 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](mpep-9015-appx-l.html#d0e302450)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)**; provisional
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 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)](mpep-9015-appx-l.html#d0e302383)**. Provisional double patenting rejection
 made. 
  |
| 3. B’s patent issues. | A’s claims rejected over B’s patent under
 **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302383)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** and double
 patenting.
  |
| 4. A files **[37 CFR
 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** affidavit to disqualify B’s patent as
 prior art where interfering subject matter as defined in
 **[37
 CFR 41.203(a)](mpep-9020-appx-r.html#d0e359662)** is being claimed. Terminal disclaimer
 filed under **[37 CFR 1.321(c)](mpep-9020-appx-r.html#aia_d0e326532)**. 
  | Rejection under **[35
 U.S.C.103](mpep-9015-appx-l.html#d0e302450)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** may be overcome and
 double patenting rejection may be overcome if inventions X and XY are
 commonly owned and all requirements of **[37 CFR
 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** and **[1.321](mpep-9020-appx-r.html#aia_d0e326459)** are met.
  |


In situation (2.) above, the result is a
 provisional rejection under **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** made in the later-filed application based on provisional
 prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**. 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** 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)](mpep-9015-appx-l.html#d0e302383)** made; provisional double patenting rejection
 made; no **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302420)** or **[102(g)](mpep-9015-appx-l.html#d0e302424)** 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](mpep-9015-appx-l.html#d0e302383)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** in view of
 **[35
 U.S.C. 121](mpep-9015-appx-l.html#d0e303040)**.
  |


The following examples are illustrative of rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** 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)](mpep-9015-appx-l.html#d0e302407)** and a provisional double patenting rejection
 are made.
  |
| 3. B’s patent issues. | A’s claims are rejected under
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** based
 on B’s patent under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** and 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)](mpep-9020-appx-r.html#d0e326459)**.
  | Rejection of A’s claims under
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** based
 on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** will be withdrawn and 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](mpep-9020-appx-r.html#d0e326459)** are met.
  |


In situation (2.) above, the result is a
 provisional rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**
 made in the later-filed application based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** (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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection of B’s claims based on A’s
 application as provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** cannot be made; provisional double patenting
 rejection is made; no **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)** is
 made.
  |
| 3. B files a terminal disclaimer under
 **[37
 CFR 1.321(c)](mpep-9020-appx-r.html#d0e326459)**.
  | The provisional double patenting
 rejection made in B’s application would be obviated if all requirements
 of **[37
 CFR 1.321](mpep-9020-appx-r.html#d0e326459)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)**.
  | Provisional **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302383)** rejection of B’s claims based on A’s
 application as provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** cannot be made; provisional double
 patenting rejection is made; no **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection based on prior art under
 **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** or **[35 U.S.C.
 102(g)](mpep-9015-appx-l.html#d0e302424)** made. 
  |
| 3. B files a terminal disclaimer under
 **[37 CFR 1.321](mpep-9020-appx-r.html#d0e326459)**.
  | The provisional double patenting
 rejection made in B’s application would be obviated if all
 requirements of **[37 CFR 1.321](mpep-9020-appx-r.html#d0e326459)** are
 met.
  |





[[top]](#top)


, 
# 2146.01 Prior Art Disqualification Under Pre-AIA 35
 U.S.C. 103(c) [R-10.2019]


*[Editor Note: This MPEP section is **not applicable** to applications
 subject to examination under the first inventor to file provisions of the AIA as
 explained in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP
 § 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§
 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq., **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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](mpep-9015-appx-l.html#d0e302383)**, 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 EXCLUSION 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](mpep-9015-appx-l.html#d0e302450)**
 via **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and  **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**, see **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. Therefore, the provision of **[pre-AIA 35
 U.S.C.103(c)(1)](mpep-9015-appx-l.html#d0e302450)** is effective for all applications 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and  **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. In addition, this provision
 applies to all patent applications, including utility, design, plant and reissue
 applications, except those applications subject to the current **[35 U.S.C.
 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and  **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. The amendment to
 **[pre-AIA 35
 U.S.C. 103(c)(1)](mpep-9015-appx-l.html#d0e302450)** does not affect any application filed before
 November 29, 1999 and issued as a patent prior to December 10, 2004. The AIA provides
 that applications subject to the AIA prior art provisions are not subject to either
 the 1999 or 2004 changes, but are subject to **[35 U.S.C.
 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)**. See **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**.
 


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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** to determine whether **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)** that are
 applicable to the disqualifying commonly assigned/owned prior art provisions of
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302383)**
 used in a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** may be
 excluded under the commonly assigned/owned prior art provisions of **[35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)**. Similarly patents issued from applications subject to
 the current **[35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** are not subject to
 either the 1999 or 2004 changes, but are subject to **[35 U.S.C.
 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)**. See **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**.
 


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](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** which was not able to be disqualified under
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** applies only to prior art usable in an obviousness
 rejection under 35 U.S.C. 103. Subject matter that qualifies as anticipatory prior
 art under **[pre-AIA
 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302450)**, should still be made as appropriate. See
 **[37 CFR
 1.78(c)](mpep-9020-appx-r.html#aia_d0e320662)** and **[MPEP § 804](s804.html#d0e98894)**. By contrast current
 **[35
 U.S.C. 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** operates to except similar prior art from being
 applied in either an obviousness rejection or an anticipation rejection. See
 **[MPEP
 § 2156](s2156.html#ch2100_d20034_1b4ea_2c0)**.
 


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)](mpep-9015-appx-l.html#d0e302450)**. There must be a statement that the common
 ownership was "at the time the invention was made."
 


See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** for information
 regarding establishing common ownership. See **[MPEP §
 2146.03](s2146.html#ch2100_d2c184_127cc_34b)** for examination procedure with respect to
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 
 

**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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. Specifically, the
 CREATE Act amended **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9015-appx-l.html#d0e302383)** shall not preclude patentability under
>  **[35 U.S.C.
>  103](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)**, 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302383)**, and which is being relied upon in a rejection under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**. If the rejection is anticipation under **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)** cannot
 be relied upon to overcome or prevent a double patenting rejection. See
 **[37 CFR
 1.78(c)](mpep-9020-appx-r.html#aia_d0e320662)** and **[MPEP § 804](s804.html#d0e98894)**.
 


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)](mpep-9015-appx-l.html#d0e302450)** 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-10.2019]


*[Editor Note: This MPEP section is not applicable to applications subject to
 examination under the first inventor to file provisions of the AIA as explained in
 **[35
 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§
 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq., **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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)](mpep-9015-appx-l.html#d0e302450)**, the subject matter which would otherwise qualify as
 **[pre-AIA 35 U.S.C.
 102(e), (f), or (g)](mpep-9015-appx-l.html#d0e302383)** 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](s2146.html#d0e213206)** for
 rejections under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)** and prior art disqualified
 under **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** in applications granted as patents prior to December
 10, 2004. See **[MPEP § 2146.01](s2146.html#ch2100_d2c184_126fa_f3)** for rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, and prior art disqualified under **[pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)**.
 

**I.** **DEFINITION OF COMMON OWNERSHIP**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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302383)** 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 exclude the use of a reference under
 **[pre-AIA
 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**, 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 exclude the use of Reference Z under
 **[pre-AIA
 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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 exclusion 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 excluded as prior art under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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 a request for the exclusion of Reference Z as prior art under **[pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)**, an
 applicant’s admission that subject matter was developed prior to applicant’s
 invention would not make the subject matter prior art to applicant if the subject
 matter qualifies as prior art only under sections **[pre-AIA 35 U.S.C. 102(e), (f), or
 (g)](mpep-9015-appx-l.html#d0e302383)**, 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 **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.
 


The burden of establishing that subject matter is disqualified as
 prior art under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302450)**, would have the burden of establishing that it
 was commonly owned at the time the claimed invention was made. The patentee in
 litigation would likewise properly bear the same burden placed upon the applicant
 before the U.S. Patent and Trademark Office. 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)](mpep-9015-appx-l.html#d0e302450)**, the
 Director has reinstituted in appropriate circumstances the practice of rejecting
 claims in commonly owned applications of different inventive entities on the grounds
 of 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
 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](s804.html#d0e98894)** and **[1490](s1490.html#d0e146976)**, 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 subject matter and invention at time invention
 was made, license to another may be made without the subject matter becoming prior
 art.
 



**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)](mpep-9015-appx-l.html#d0e302383)** in view of **[pre-AIA 35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**?
 


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)](mpep-9015-appx-l.html#d0e302450)**.
 



**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 project with University A. Under
 the terms of the joint research project, 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 project 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)](mpep-9015-appx-l.html#d0e302383)** as they apply through
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** as they apply through **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302450)** based on
 prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**, **[(f)](mpep-9015-appx-l.html#d0e302383)** or **[(g)](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#d0e302559)**, 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** as **[pre-AIA 35 U.S.C. 104](mpep-9015-appx-l.html#d0e302559)** 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)](mpep-9015-appx-l.html#d0e302921)** and
 **[35 U.S.C.
 365](mpep-9015-appx-l.html#d0e307034)**.
 

**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)](mpep-9020-appx-r.html#aia_d0e317540)**. 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)](mpep-9015-appx-l.html#d0e302450)**," 1241 OG 96 (December 26, 2000). The applicant(s) or
 the representative(s) of record 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)**. In her 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)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9020-appx-r.html#d0e336097)**, 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)](mpep-9015-appx-l.html#d0e302450)**, the
 burden of overcoming the rejection by invoking the joint research agreement
 provisions of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** as amended by the CREATE Act is on
 the applicant or the patentee. **[Pre-AIA 35 U.S.C. 103(c)(3)](mpep-9015-appx-l.html#d0e302450)**
 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9020-appx-r.html#aia_aia_d0e313917)**.
	+ (2) An amendment under paragraph (g)(1) of this section
	 must be accompanied by the processing fee set forth in
	 **[§ 1.17(i)](mpep-9020-appx-r.html#eff_20130320_d0e315199)** 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](mpep-9020-appx-r.html#d0e329128)** 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](mpep-9020-appx-r.html#d0e322625)**.
	+ (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](mpep-9015-appx-l.html#d0e305404)** and **[§ 1.323](mpep-9020-appx-r.html#d0e326640)** 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)](mpep-9015-appx-l.html#d0e302407)** 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)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302407)** 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)](mpep-9015-appx-l.html#d0e302521)** in effect prior to March 16, 2013,
		 on the basis of a joint research agreement under
		 **[35 U.S.C.
		 103(c)(2)](mpep-9015-appx-l.html#d0e302529)** 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)](mpep-9015-appx-l.html#al_d1d85b_11e10_359)** and **[§ 1.9(e)](mpep-9020-appx-r.html#aia_aia_d0e313917)**, 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)](mpep-9015-appx-l.html#d0e302521)** in effect on November 28,
	 1999.


\*\*\*\*\*



**[37 CFR
 1.71(g)](mpep-9020-appx-r.html#d0e320131)** 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)](mpep-9020-appx-r.html#d0e320131)** 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)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** or **[pre-AIA 35 U.S.C.
 103(c)(2)(C)](mpep-9015-appx-l.html#d0e302450)**.
 


**[37
 CFR1.71(g)(2)](mpep-9020-appx-r.html#d0e320131)** provides that an amendment under
 **[37 CFR
 1.71(g)(1)](mpep-9020-appx-r.html#d0e320131)** must be accompanied by the processing fee set forth
 in **[37
 CFR 1.17(i)](mpep-9020-appx-r.html#eff_20130320_d0e315199)** 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](mpep-9020-appx-r.html#d0e329128)** 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](mpep-9020-appx-r.html#d0e322625)**.
 


**[37 CFR
 1.71(g)(3)](mpep-9020-appx-r.html#d0e320131)** provides that if an amendment under
 **[37 CFR
 1.71(g)(1)](mpep-9020-appx-r.html#d0e320131)** 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)](mpep-9020-appx-r.html#d0e320131)** 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](mpep-9015-appx-l.html#d0e305404)** and
 **[37 CFR
 1.323](mpep-9020-appx-r.html#d0e326640)** for the amendment to be effective. The requirements of
 **[37 CFR
 1.71(g)(3)](mpep-9020-appx-r.html#d0e320131)** (correction of the patent by a certificate of
 correction under **[35
 U.S.C. 255](mpep-9015-appx-l.html#d0e305404)** and **[37 CFR 1.323](mpep-9020-appx-r.html#d0e326640)**) 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)](mpep-9015-appx-l.html#d0e302450)** 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](mpep-9020-appx-r.html#d0e322826)**, **[1.121](mpep-9020-appx-r.html#d0e323020)**, and **[1.312](mpep-9020-appx-r.html#d0e326304)**. For
 example, if an amendment under **[37 CFR 1.71(g)](mpep-9020-appx-r.html#d0e320131)** is submitted in an
 application under final rejection to overcome a rejection under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302450)** based upon a U.S. patent which qualifies as prior art
 only under **[pre-AIA
 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**, the examiner may refuse to enter the
 amendment under **[37
 CFR 1.71(g)](mpep-9020-appx-r.html#d0e320131)** if it is not accompanied by an appropriate terminal
 disclaimer (**[37 CFR
 1.321(d)](mpep-9020-appx-r.html#d0e326459)**). This is because such an amendment may necessitate
 the reopening of prosecution (e.g., for entry of a double patenting rejection).
 


If an amendment under **[37 CFR 1.71(g)](mpep-9020-appx-r.html#d0e320131)** is submitted to
 overcome a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)**, and the examiner withdraws the
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**, the examiner may need to issue an
 Office action containing a new 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)](mpep-9020-appx-r.html#d0e321609)** with the fee set
 forth in **[37 CFR 1.17(p)](mpep-9020-appx-r.html#eff_20130320_d0e315199)**. The Office action
 is properly made final because the new 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)(4)](mpep-9020-appx-r.html#d0e322124)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9020-appx-r.html#d0e313174)**). The statement must be signed in accordance with
 **[37 CFR
 1.33(b)](mpep-9020-appx-r.html#d0e317491)**. 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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)** prior art as if they are commonly owned for purposes of
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.
 


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)](mpep-9015-appx-l.html#d0e302450)** to
 disqualify University B’s application as prior art in a rejection under
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.
 



**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)](mpep-9015-appx-l.html#d0e302450)** to disqualify University B’s
 application as prior art in a rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**
 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)](mpep-9015-appx-l.html#d0e302450)** to
 disqualify University B’s application as prior art in a rejection under
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** 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-10.2019]


*[Editor Note: This MPEP section is not applicable to applications subject to
 examination under the first inventor to file provisions of the AIA as explained in
 **[35
 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §§
 717.02](s717.html#ch700_d1ffd5_1b424_139)** et seq., **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** and **[2156](s2156.html#ch2100_d20034_1b4ea_2c0)**
 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)](mpep-9015-appx-l.html#d0e302383)** is not disqualified as
 prior art if the reference is disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. 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)](mpep-9015-appx-l.html#d0e302383)** (e.g., not **[pre-AIA 35 U.S.C. 102(a) or
 (b)](mpep-9015-appx-l.html#d0e302383)**), and
* (C) the reference was used in an obviousness rejection under
 **[pre-AIA 35
 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.


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)](mpep-9015-appx-l.html#d0e302450)** 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)](mpep-9015-appx-l.html#d0e302383)**, via the CREATE Act, the applicant must comply with the
 statute and the rules of practice in effect.
 


See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** 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)](mpep-9015-appx-l.html#d0e302450)**, the
 examiner will:
 


* (A) assume the reference is not disqualified under
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**;
* (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](mpep-9015-appx-l.html#d0e302450)** rejection based on prior art under **[pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g)](mpep-9015-appx-l.html#d0e302383)**;
* (C) consider the applicability of any references under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g)](mpep-9015-appx-l.html#d0e302383)**, including provisional rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** (see **[MPEP §
 2146.03(a)](s2146.html#ch2100_d2c184_12851_21a)**); and
* (D) apply the best references against the claimed invention by
 rejections under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
 **[103](mpep-9015-appx-l.html#d0e302450)**, including any rejections under **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C. 102(e),
 (f) and/or (g)](mpep-9015-appx-l.html#d0e302383)**, until such time that the reference is
 disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**.
When applying any references that qualify as prior
 art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** in a rejection under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** against the claims, the examiner should anticipate that
 the reference may be disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** and
 consider making an appropriate additional, alternative rejection. See
 **[MPEP § 2120](s2120.html#ch2100_d2c183_20d28_209)**, subsection I. If a statement of common
 ownership or assignment is filed in reply to the **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** 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)](s706.html#d0e68889)**. If the reference is disqualified under the
 joint research agreement provision of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** and a
 new subsequent double patenting rejection based upon the disqualified reference is
 applied, the next Office action, which contains the new 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)](mpep-9020-appx-r.html#d0e321609)** with the fee
 set forth in **[37 CFR 1.17(p)](mpep-9020-appx-r.html#eff_20130320_d0e315199)**). The Office
 action is properly made final because the new 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)](mpep-9015-appx-l.html#d0e302450)** the
 examiner will:
 


* (A) examine the applications as to all grounds, except
 **[pre-AIA 35
 U.S.C. 102(e), (f) and (g)](mpep-9015-appx-l.html#d0e302383)** including provisional
 rejections based on provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)**, as they apply through **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**;
* (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](mpep-9020-appx-r.html#d0e326459)**).

**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](mpep-9015-appx-l.html#d0e303023313)** benefit to the earlier application, subject to the
 conditions discussed in **[MPEP § 804](s804.html#d0e98894)***et seq.* In addition, double patenting rejection may arise as a
 result of the amendment to **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** by the
 CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). Congress recognized that this
 amendment to **[35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** 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)](mpep-9015-appx-l.html#d0e302450)** 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 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](s804.html#d0e98894)** 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](mpep-9020-appx-r.html#d0e326459)**, 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 double patenting rejection based on a non-commonly
 owned patent (treated as if commonly owned pursuant to the CREATE Act), the double
 patenting rejection may be obviated by filing a terminal disclaimer in accordance
 with **[37 CFR
 1.321(d)](mpep-9020-appx-r.html#d0e326459)**. See **[MPEP §§ 804](s804.html#d0e98894)**, **[804.02](s804.html#d0e101356)** and
 **[1490](s1490.html#d0e146976)**, subsection VI.
 



# 2146.03(a) Provisional Rejection (Obviousness) Under 35
 U.S.C. 103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-10.2019]


*[Editor Note: This MPEP section is
 not applicable to applications subject to examination under the first inventor to
 file provisions of the AIA as explained in **[35 U.S.C. 100
 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §
 2154](s2154.html#ch2100_d20033_274f5_338)** 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)](mpep-9015-appx-l.html#d0e303063)**, and the filing dates differ, a provisional
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302383)** based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** should be made in the later filed application
 unless the application has been excluded under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. See
 **[MPEP
 § 2146.03](s2146.html#ch2100_d2c184_127cc_34b)** for examination procedure with respect to
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. See also **[MPEP § 2136.01](s2136.html#d0e205680)** 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](mpep-9015-appx-l.html#d0e303054)** must be maintained. Such a rejection alerts the applicant
 that the applicant can expect an actual 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 of the obviousness type under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302383)** based on provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** are rejections applied to copending applications having
 different effective filing dates wherein each application has a common assignee or a
 common inventor. The earlier filed application, if patented or published, would
 constitute prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**. 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](mpep-9015-appx-l.html#d0e303023313)** 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](mpep-9015-appx-l.html#d0e303023313)** if the
 earlier filed application does not contain a disclosure which complies with
 **[35 U.S.C.
 112](mpep-9015-appx-l.html#d0e302824)** 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](mpep-9020-appx-r.html#d0e323552)** 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)](s715.html#d0e90674)**, **[715.01(c)](s715.html#d0e90779)**, and
 **[716.10](s716.html#d0e93797)**);
* (D) Filing an affidavit or declaration under **[37 CFR
 1.131(a)](mpep-9020-appx-r.html#aia_d0e323504)** showing a date of invention prior to the
 effective U.S. filing date of the copending application. See
 **[MPEP
 § 715](s715.html#d0e89737)**; 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)](mpep-9015-appx-l.html#d0e302521)**
 (i.e., joint research agreement disqualification).


Where the applications are claiming interfering subject matter as
 defined in **[37 CFR
 41.203(a)](mpep-9020-appx-r.html#d0e359662)**, a terminal disclaimer and an affidavit or
 declaration under **[37 CFR 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** may be used to
 overcome a rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** in a common
 ownership situation if the earlier filed application has been published or matured
 into a patent. See **[MPEP
 § 718](s718.html#d0e93900)**. 
 


If a provisional rejection is made and the copending applications are
 combined into a single application and the resulting single application is subject to
 a restriction requirement, the divisional application would not be subject to a
 provisional or actual rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302383)** since the
 provisions of **[35
 U.S.C. 121](mpep-9015-appx-l.html#d0e303040)** preclude the use of a patent issuing therefrom as a
 reference against the other application. Additionally, the resulting
 continuation-in-part is entitled to **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** 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 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](mpep-9015-appx-l.html#d0e302450)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)**; provisional
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 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)](mpep-9015-appx-l.html#d0e302383)**. Provisional double patenting rejection
 made. 
  |
| 3. B’s patent issues. | A’s claims rejected over B’s patent under
 **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302383)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** and double
 patenting.
  |
| 4. A files **[37 CFR
 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** affidavit to disqualify B’s patent as
 prior art where interfering subject matter as defined in
 **[37
 CFR 41.203(a)](mpep-9020-appx-r.html#d0e359662)** is being claimed. Terminal disclaimer
 filed under **[37 CFR 1.321(c)](mpep-9020-appx-r.html#aia_d0e326532)**. 
  | Rejection under **[35
 U.S.C.103](mpep-9015-appx-l.html#d0e302450)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** may be overcome and
 double patenting rejection may be overcome if inventions X and XY are
 commonly owned and all requirements of **[37 CFR
 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** and **[1.321](mpep-9020-appx-r.html#aia_d0e326459)** are met.
  |


In situation (2.) above, the result is a
 provisional rejection under **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** made in the later-filed application based on provisional
 prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**. 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** 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)](mpep-9015-appx-l.html#d0e302383)** made; provisional double patenting rejection
 made; no **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302420)** or **[102(g)](mpep-9015-appx-l.html#d0e302424)** 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](mpep-9015-appx-l.html#d0e302383)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** in view of
 **[35
 U.S.C. 121](mpep-9015-appx-l.html#d0e303040)**.
  |


The following examples are illustrative of rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** 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)](mpep-9015-appx-l.html#d0e302407)** and a provisional double patenting rejection
 are made.
  |
| 3. B’s patent issues. | A’s claims are rejected under
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** based
 on B’s patent under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** and 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)](mpep-9020-appx-r.html#d0e326459)**.
  | Rejection of A’s claims under
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** based
 on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** will be withdrawn and 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](mpep-9020-appx-r.html#d0e326459)** are met.
  |


In situation (2.) above, the result is a
 provisional rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**
 made in the later-filed application based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** (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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection of B’s claims based on A’s
 application as provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** cannot be made; provisional double patenting
 rejection is made; no **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)** is
 made.
  |
| 3. B files a terminal disclaimer under
 **[37
 CFR 1.321(c)](mpep-9020-appx-r.html#d0e326459)**.
  | The provisional double patenting
 rejection made in B’s application would be obviated if all requirements
 of **[37
 CFR 1.321](mpep-9020-appx-r.html#d0e326459)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)**.
  | Provisional **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302383)** rejection of B’s claims based on A’s
 application as provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** cannot be made; provisional double
 patenting rejection is made; no **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection based on prior art under
 **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** or **[35 U.S.C.
 102(g)](mpep-9015-appx-l.html#d0e302424)** made. 
  |
| 3. B files a terminal disclaimer under
 **[37 CFR 1.321](mpep-9020-appx-r.html#d0e326459)**.
  | The provisional double patenting
 rejection made in B’s application would be obviated if all
 requirements of **[37 CFR 1.321](mpep-9020-appx-r.html#d0e326459)** are
 met.
  |




, 
# 2146.03(a) Provisional Rejection (Obviousness) Under 35
 U.S.C. 103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-10.2019]


*[Editor Note: This MPEP section is
 not applicable to applications subject to examination under the first inventor to
 file provisions of the AIA as explained in **[35 U.S.C. 100
 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)**. See **[MPEP §
 2154](s2154.html#ch2100_d20033_274f5_338)** 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)](mpep-9015-appx-l.html#d0e303063)**, and the filing dates differ, a provisional
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302383)** based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** should be made in the later filed application
 unless the application has been excluded under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. See
 **[MPEP
 § 2146.03](s2146.html#ch2100_d2c184_127cc_34b)** for examination procedure with respect to
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)**. See also **[MPEP § 2136.01](s2136.html#d0e205680)** 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](mpep-9015-appx-l.html#d0e303054)** must be maintained. Such a rejection alerts the applicant
 that the applicant can expect an actual 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 of the obviousness type under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302383)** based on provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** are rejections applied to copending applications having
 different effective filing dates wherein each application has a common assignee or a
 common inventor. The earlier filed application, if patented or published, would
 constitute prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**. 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](mpep-9015-appx-l.html#d0e303023313)** 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](mpep-9015-appx-l.html#d0e303023313)** if the
 earlier filed application does not contain a disclosure which complies with
 **[35 U.S.C.
 112](mpep-9015-appx-l.html#d0e302824)** 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](mpep-9020-appx-r.html#d0e323552)** 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)](s715.html#d0e90674)**, **[715.01(c)](s715.html#d0e90779)**, and
 **[716.10](s716.html#d0e93797)**);
* (D) Filing an affidavit or declaration under **[37 CFR
 1.131(a)](mpep-9020-appx-r.html#aia_d0e323504)** showing a date of invention prior to the
 effective U.S. filing date of the copending application. See
 **[MPEP
 § 715](s715.html#d0e89737)**; 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)](mpep-9015-appx-l.html#d0e302521)**
 (i.e., joint research agreement disqualification).


Where the applications are claiming interfering subject matter as
 defined in **[37 CFR
 41.203(a)](mpep-9020-appx-r.html#d0e359662)**, a terminal disclaimer and an affidavit or
 declaration under **[37 CFR 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** may be used to
 overcome a rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** in a common
 ownership situation if the earlier filed application has been published or matured
 into a patent. See **[MPEP
 § 718](s718.html#d0e93900)**. 
 


If a provisional rejection is made and the copending applications are
 combined into a single application and the resulting single application is subject to
 a restriction requirement, the divisional application would not be subject to a
 provisional or actual rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302383)** since the
 provisions of **[35
 U.S.C. 121](mpep-9015-appx-l.html#d0e303040)** preclude the use of a patent issuing therefrom as a
 reference against the other application. Additionally, the resulting
 continuation-in-part is entitled to **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** 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 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](mpep-9015-appx-l.html#d0e302450)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)**; provisional
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 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)](mpep-9015-appx-l.html#d0e302383)**. Provisional double patenting rejection
 made. 
  |
| 3. B’s patent issues. | A’s claims rejected over B’s patent under
 **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302383)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** and double
 patenting.
  |
| 4. A files **[37 CFR
 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** affidavit to disqualify B’s patent as
 prior art where interfering subject matter as defined in
 **[37
 CFR 41.203(a)](mpep-9020-appx-r.html#d0e359662)** is being claimed. Terminal disclaimer
 filed under **[37 CFR 1.321(c)](mpep-9020-appx-r.html#aia_d0e326532)**. 
  | Rejection under **[35
 U.S.C.103](mpep-9015-appx-l.html#d0e302450)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** may be overcome and
 double patenting rejection may be overcome if inventions X and XY are
 commonly owned and all requirements of **[37 CFR
 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** and **[1.321](mpep-9020-appx-r.html#aia_d0e326459)** are met.
  |


In situation (2.) above, the result is a
 provisional rejection under **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** made in the later-filed application based on provisional
 prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**. 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** 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)](mpep-9015-appx-l.html#d0e302383)** made; provisional double patenting rejection
 made; no **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302420)** or **[102(g)](mpep-9015-appx-l.html#d0e302424)** 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](mpep-9015-appx-l.html#d0e302383)** based on prior art under
 **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** in view of
 **[35
 U.S.C. 121](mpep-9015-appx-l.html#d0e303040)**.
  |


The following examples are illustrative of rejections under
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)** based on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** 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)](mpep-9015-appx-l.html#d0e302407)** and a provisional double patenting rejection
 are made.
  |
| 3. B’s patent issues. | A’s claims are rejected under
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** based
 on B’s patent under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** and 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)](mpep-9020-appx-r.html#d0e326459)**.
  | Rejection of A’s claims under
 **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** based
 on prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** will be withdrawn and 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](mpep-9020-appx-r.html#d0e326459)** are met.
  |


In situation (2.) above, the result is a
 provisional rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**
 made in the later-filed application based on provisional prior art under
 **[pre-AIA 35
 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** (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](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection of B’s claims based on A’s
 application as provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** cannot be made; provisional double patenting
 rejection is made; no **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**
 rejection based on prior art under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** or **[102(g)](mpep-9015-appx-l.html#d0e302383)** is
 made.
  |
| 3. B files a terminal disclaimer under
 **[37
 CFR 1.321(c)](mpep-9020-appx-r.html#d0e326459)**.
  | The provisional double patenting
 rejection made in B’s application would be obviated if all requirements
 of **[37
 CFR 1.321](mpep-9020-appx-r.html#d0e326459)** 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)](mpep-9015-appx-l.html#d0e302450)**, 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)](mpep-9015-appx-l.html#d0e302450)**.
  | Provisional **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302383)** rejection of B’s claims based on A’s
 application as provisional prior art under **[pre-AIA 35 U.S.C.
 102(e)](mpep-9015-appx-l.html#d0e302407)** cannot be made; provisional double
 patenting rejection is made; no **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection based on prior art under
 **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** or **[35 U.S.C.
 102(g)](mpep-9015-appx-l.html#d0e302424)** made. 
  |
| 3. B files a terminal disclaimer under
 **[37 CFR 1.321](mpep-9020-appx-r.html#d0e326459)**.
  | The provisional double patenting
 rejection made in B’s application would be obviated if all
 requirements of **[37 CFR 1.321](mpep-9020-appx-r.html#d0e326459)** are
 met.
  |



]