MPEP 706.02(l)
Rejections Under Pre-AIA 35 U.S.C. 103(a) Using Prior Art Under Only Pre-AIA 35 U.S.C. 102 (e), (f), or (g)

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

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706.02(l)    Rejections Under Pre-AIA 35 U.S.C. 103(a) Using Prior Art Under Only Pre-AIA 35 U.S.C. 102 (e), (f), or (g) [R-08.2017]

[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) and MPEP § 2159. See MPEP § 717.02 et seq., 2154.02(c) and 2156 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.

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  • (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, 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) applies only to consideration of prior art for purposes of obviousness under 35 U.S.C. 103. It does not apply to or affect subject matter which is applied in a rejection under 35 U.S.C. 102 or a double patenting rejection. 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).

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). Absent such disqualification, the appropriate rejection under pre-AIA 35 U.S.C. 103(a) with applying prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) should be made. See MPEP § 706.02(l)(2) 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. The term "another" as used in pre-AIA 35 U.S.C. 103 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 § 706.02(l)(2).

For a discussion of the three conditions of 35 U.S.C. 102(c) 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), see MPEP § 2156. See also MPEP § 717.02 et seq.

  FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999, AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004

Prior to November 29, 1999, pre-AIA 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as "prior art" only under subsections pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under pre-AIA 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made. See MPEP § 706.02(l)(1) for information regarding when prior art under pre-AIA 35 U.S.C. 102(e) is disqualified under pre-AIA 35 U.S.C. 103(c).

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-AIA 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) or pre-AIA 35 U.S.C. 102(g), 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) or pre-AIA 35 U.S.C. 102(g) was not commonly owned at the time of the invention, the subject matter is not disqualified as prior art under pre-AIA 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.") Therefore, in these applications, information learned from or transmitted to persons outside the organization is not disqualified as prior art.

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 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g). Applicants in such cases have an obligation pursuant to 37 CFR 1.56 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 rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or pre-AIA 35 U.S.C. 102(g). 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) - (d) priority based upon the foreign filed applications is appropriate and 35 U.S.C. 119(a) - (d) priority can be accorded based upon each of the foreign filed applications.

For rejections under pre-AIA 35 U.S.C. 103(a) using prior art under pre-AIA 35 U.S.C. 102(f) or (g) in applications pending on or after December 10, 2004, see MPEP § 706.02(l)(1).