717.02(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) [R-11.2013]
[Editor Note: This MPEP section is only 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) and MPEP § 2159. See MPEP § 706.02(l) et seq. for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]
I. COMMON OWNERSHIP
In order to invoke common ownership to disqualify a disclosure as prior art, the applicant (or the applicant's representative of record) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. 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) ). The statement must be signed in accordance with 37 CFR 1.33(b).
The term "commonly owned" is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by the same person(s) or organization(s)/business entity(ies). If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be 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. See MPEP § 706.02(l)(2) for more information on the definition of common ownership.
The applicant may, but is not required to, present evidence (e.g., such as assignment records, affidavits or declarations by the common owner, or court decisions) supporting the existence of the common ownership, in addition to the above-mentioned statement concerning common ownership.
For invoking the commonly owned exceptions in pre-AIA applications, see MPEP § 706.02(l) et seq.
II. JOINT RESEARCH AGREEMENT
In order to invoke a joint research agreement to disqualify a disclosure as prior art, the applicant (or the applicant's representative of record) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under 35 U.S.C. 102(c). The statement must also assert that the agreement was in effect on or before the effective filing date of the claimed invention, 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) ). The statement must be signed in accordance with 37 CFR 1.33(b). When relying on the provisions of pre-AIA 35 U.S.C. 103(c), the applicant or his attorney or agent of record could provide a similar statement to disqualify the cited prior art as to the issue of obviousness.
If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g).
As is the case with establishing common ownership, the applicant may, but is not required to, present evidence supporting the existence of the joint research agreement.
For invoking the joint research agreement exceptions in pre-AIA applications, see MPEP § 706.02(l) et seq.