Editing MPEP 706
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{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}} | {{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}} | ||
{{Ellipsis}} | {{Ellipsis}} | ||
(c) | (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 of this title, 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. | |||
|} | |} | ||
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* The term "commonly owned" means wholly owned by the same person(s) or organization(s) at the time the invention was made. | * The term "commonly owned" means wholly owned by the same person(s) or organization(s) at the time the invention was made. | ||
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 | |||
Prior to November 29, 1999, 35 U.S.C. 103(c) provided | Prior to November 29, 1999, 35 U.S.C. 103(c) provided | ||
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applications. | applications. | ||
'''706.02(l)(1) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under 35 U.S.C. 102(e), (f), or (g); Prior Art Disquali- fication Under 35 U.S.C. 103(c)''' | |||
{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}} | {{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}} | ||
{{Ellipsis}} | {{Ellipsis}} | ||
(c) | (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 of this title, 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 35 | |||
U.S.C. 103(c) | |||
Enacted on November 29, 1999, the American | Enacted on November 29, 1999, the American | ||
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to 35 U.S.C. 103(c). | to 35 U.S.C. 103(c). | ||
II.JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER 35 U.S.C. 103(c) | |||
BY THE CREATE ACT | |||
The CREATE Act (Pub. L. 108-453, 118 Stat. 3596 | The CREATE Act (Pub. L. 108-453, 118 Stat. 3596 | ||
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that: | that: | ||
- subject matter developed by another person, | |||
which qualifies as prior art only under one or | |||
more of subsections (e), (f), and (g) of 35 | |||
U.S.C. 102 shall not preclude patentability | |||
under 35 U.S.C. 103 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, 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 35 U.S.C. 103(c), 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 | The effective date provision of the CREATE Act | ||
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being reissued. | being reissued. | ||
'''706.02(l)(2)Establishing Common Ownership or Joint Research Agreement''' | |||
In order to be disqualified as prior art under | In order to be disqualified as prior art under | ||
35 U.S.C. 103(c), the subject matter which would oth | 35 | ||
U.S.C. 103(c), the subject matter which would oth | |||
erwise be prior art to the claimed invention and the | erwise be prior art to the claimed invention and the | ||
claimed invention must be commonly owned, or subject | claimed invention must be commonly owned, or subject | ||
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103 prior art disqualified under 35 U.S.C. 103(c). | 103 prior art disqualified under 35 U.S.C. 103(c). | ||
I. DEFINITION OF COMMON OWNERSHIP | |||
The term "commonly owned" is intended to mean | The term "commonly owned" is intended to mean | ||
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time the invention was made for | time the invention was made for | ||
purposes of obviating | purposes of obviating | ||
a 35 U.S.C. 102(e)/35 U.S.C. 103, 35 | a | ||
U.S.C. 102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 U.S.C. | 35 U.S.C. 102(e)/35 U.S.C. 103, 35 | ||
U.S.C. | |||
102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 U.S.C. | |||
103 rejection may be established irrespective of | 103 rejection may be established irrespective of | ||
whether the invention was made in the United States | whether the invention was made in the United States | ||
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35 U.S.C. 365. | 35 U.S.C. 365. | ||
II.EVIDENCE REQUIRED TO ESTABLISH | |||
COMMON OWNERSHIP | |||
It is important to recognize just what constitutes | It is important to recognize just what constitutes | ||
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the following objective evidence: | the following objective evidence: | ||
(A) Reference to assignments recorded in the U.S. | (A)Reference to assignments recorded in the U.S. | ||
Patent and Trademark Office in accordance with | Patent and Trademark Office in accordance with | ||
37 CFR Part 3 which convey the entire rights in the | 37 | ||
CFR Part 3 which convey the entire rights in the | |||
applications to the same person(s) or organization(s); | applications to the same person(s) or organization(s); | ||
(B) Copies of unrecorded assignments which convey | (B)Copies of unrecorded assignments which convey | ||
the entire rights in the applications to the same | the entire rights in the applications to the same | ||
person(s) or organization(s) are filed in each of the | person(s) or organization(s) are filed in each of the | ||
applications; | applications; | ||
(C) An affidavit or declaration by the common | (C)An affidavit or declaration by the common | ||
owner is filed which states that there is common ownership | owner is filed which states that there is common ownership | ||
and states facts which explain why the affiant | and states facts which explain why the affiant | ||
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organization; and | organization; and | ||
(D) Other evidence is submitted which establishes | (D)Other evidence is submitted which establishes | ||
common ownership of the applications. | common ownership of the applications. | ||
III.EVIDENCE REQUIRED TO ESTABLISH | |||
A JOINT RESEARCH AGREEMENT | |||
Once an examiner has established a prima faciecase of obviousness under 35 U.S.C. 103(a), the burden | Once an examiner has established a prima faciecase of obviousness under 35 U.S.C. 103(a), the burden | ||
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{{Statute|37 CFR 1.71. Detailed description and specification of the invention.}} | {{Statute|37 CFR 1.71. Detailed description and specification of the invention.}} | ||
{{Ellipsis}} | {{Ellipsis}} | ||
(g) | (g)(1) The specification may disclose or be amended to disclose | ||
the names of the parties to a joint research agreement (35 | |||
U.S.C. 103(c)(2)(C)). | |||
(2)An amendment under paragraph (g)(1) of this section | |||
must be accompanied by the processing fee set forth § 1.17(i) 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 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. | |||
(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 and § 1.323 for the amendment to be effective. | |||
|} | |} | ||
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{{Statute|37 CFR 1.104. Nature of examination.}} | {{Statute|37 CFR 1.104. Nature of examination.}} | ||
{{Ellipsis}} | {{Ellipsis}} | ||
(c) Rejection of claims. | (c)Rejection of claims. | ||
(4)Subject matter which is developed by another person | |||
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) | which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) | ||
may be used as prior art under 35 U.S.C. 103 against a claimed | may be used as prior art under 35 U.S.C. 103 against a claimed | ||
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claimed invention were commonly owned by the same person or | claimed invention were commonly owned by the same person or | ||
subject to an obligation of assignment to the same person at the | subject to an obligation of assignment to the same person at the | ||
time the claimed invention was made. | time the claimed invention was made. | ||
(i)Subject matter developed by another person and a | |||
claimed invention shall be deemed to have been commonly owned | |||
by the same person or subject to an obligation of assignment to the | |||
same person in any application and in any patent granted on or | |||
after December 10, 2004, if: | |||
(A)The claimed invention and the subject matter | |||
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. | |||
(ii)For purposes of paragraph (c)(4)(i) of this section, | |||
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. | |||
(iii)To overcome a rejection under 35 U.S.C. 103(a) | |||
based upon subject matter which qualifies as prior art under only | |||
one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. | |||
103(c)(2), the applicant must provide 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 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that | |||
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. | |||
|} | |} | ||
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The following examples are provided for illustration | The following examples are provided for illustration | ||
only: | only: | ||
'''Example 1''' | '''Example 1''' | ||
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claimed invention was not made as a result of the | claimed invention was not made as a result of the | ||
activities undertaken within the scope of the JRA. | activities undertaken within the scope of the JRA. | ||
'''706.02(l)(3)Examination Procedure With Respect to 35 U.S.C. 103(c)''' | |||
Applications and patents will be considered to be | Applications and patents will be considered to be | ||
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pertaining to establishing common ownership. | pertaining to establishing common ownership. | ||
I. DOUBLE PATENTING REJECTIONS | |||
* Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier pplication. | * Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier pplication. |