MPEP 717.01(d)
U.S. Patent or Application Publication Claiming Same Invention

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

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717.01(d)    U.S. Patent or Application Publication Claiming Same Invention [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

When a rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or patent owner may file a petition for a derivation proceeding pursuant to 37 CFR 42.401 et seq. of this title. See 37 CFR 1.130(c). Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties. Thus, the provisions of 37 CFR 1.130 are not available in certain situations to avoid the issuance of two patents containing patentably indistinct claims to two different parties. See In re Deckler, 977 F.2d 1449, 1451–52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 "clearly contemplate—where different inventive entities are concerned—that only one patent should issue for inventions which are either identical to or not patentably distinct from each other" ) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192 USPQ 486, 490 (CCPA 1977)). See the Trial Practice Guide for information on derivation proceedings.

The provisions of 37 CFR 1.130, however, would be available if: (1) The rejection is based upon a disclosure other than a U.S. patent or U.S. patent application publication (such as non-patent literature or a foreign patent document); (2) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application did not claim an invention that is the same or substantially the same as the applicant’s claimed invention; or (3) the rejection is based upon a U.S. patent or U.S. patent application and the patent or pending application that does claim an invention that is the same or substantially the same as the applicant’s claimed invention, but the affidavit or declaration under 37 CFR 1.130 does not contend that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent (e.g., an affidavit or declaration under 37 CFR 1.130 would be available if instead of alleging derivation the affidavit or declaration under 37 CFR 1.130 contends that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor).