MPEP 2136.01
Status of U.S. Application as a Reference

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2136.01    Status of U.S. Application as a Reference [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]

I.    WHEN THERE IS NO COMMON ASSIGNEE OR INVENTOR, A U.S. APPLICATION MUST ISSUE AS A PATENT OR BE PUBLISHED AS A SIR OR AS AN APPLICATION PUBLICATION BEFORE IT IS AVAILABLE AS PRIOR ART UNDER Pre-AIA 35 U.S.C. 102(e)

In addition to U.S. patents and SIRs, certain U.S. application publications and certain international application publications are also available as prior art under pre-AIA 35 U.S.C. 102(e) as of their effective U.S. filing dates (which will include certain international filing dates). See MPEP § 706.02(a).

II.    WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL Pre-AIA 35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE

Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible to provisionally reject a later application over an earlier filed, and unpublished, application under pre-AIA 35 U.S.C. 102(e) when there is a common assignee or inventor. In re Irish, 433 F.2d 1342, 167 USPQ 764 (CCPA 1970). In addition, a provisional pre-AIA 35 U.S.C. 102(e) rejection may be made if the earlier filed copending U.S. application has been published as redacted (37 CFR 1.217 ) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application. Such a provisional rejection "serves to put applicant on notice at the earliest possible time of the possible prior art relationship between copending applications" and gives applicant the fullest opportunity to overcome the rejection by amendment or submission of evidence. In addition, since both applications are pending and usually have the same assignee, more options are available to applicant for overcoming the provisional rejection than if the other application were already issued. Ex parte Bartfeld, 16 USPQ2d 1714 (Bd. Pat. App. & Int. 1990) aff’d on other grounds, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Note that provisional rejections over pre-AIA 35 U.S.C. 102(e) are only authorized when there is a common inventor or assignee, otherwise the copending application prior to publication must remain confidential. MPEP § 706.02(f)(2) and MPEP § 706.02(k) discuss the procedures to be used in provisional rejections over pre-AIA 35 U.S.C. 102(e) and pre-AIA 35 U.S.C. 102(e) /103.

For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under 35 U.S.C. 103(a) using prior art under pre-AIA 35 U.S.C. 102(e) is not proper if the application contains evidence that the application and the prior art reference were owned by the same person, or subject to an obligation of assignment to the same person, at the time the invention was made. The changes to pre-AIA 35 U.S.C. 102(e) in the Intellectual Property and High Technology Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)) did not affect 35 U.S.C. 103(c) as amended on November 29, 1999. See MPEP § 706.02(l)(1) through § 706.02(l)(3) for information relating to rejections under pre-AIA 35 U.S.C. 103 and evidence of common ownership.

In addition, certain non-commonly owned references may be disqualified from being applied in a rejection under pre-AIA 35 U.S.C. 103(a) due to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453; 118 Stat. 3596 (2004)), which was enacted on December 10, 2004 and was effective for all patents granted on or after December 10, 2004. The CREATE Act amended pre-AIA 35 U.S.C. 103(c) 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 certain conditions are met. Pre-AIA 35 U.S.C.103(c), 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), and which is being relied upon in a rejection under 35 U.S.C. 103. It does not apply to or affect subject matter which is applied in a rejection under pre-AIA 35 U.S.C. 102 or a double patenting rejection (see 37 CFR 1.78(c) and MPEP § 804). In addition, if the subject matter qualifies as prior art under any other subsection of pre-AIA 35 U.S.C. 102 (e.g., pre-AIA 35 U.S.C. 102(a) or (b) ) it will not be disqualified as prior art under pre-AIA 35 U.S.C. 103(c). See also MPEP § 706.02(l)(1) through § 706.02(l)(3) for information relating to rejections under pre-AIA 35 U.S.C. 103 and evidence of joint research agreements.