¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
Examiner Note:
1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent has an earlier effective filing date in accordance with 35 U.S.C. 100(i), a rejection under 35 U.S.C. 102(a)(2) may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.