MPEP § 2146 — Pre-AIA 35 U.S.C. 103(c)

Ninth Edition, Revision 01.2024 · last revised R-01.2024

[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. 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.]

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(a). 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 subsection of pre-AIA 35 U.S.C. 102 other than (e), (f), or (g) (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) applying prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) should be made. See MPEP § 2146.02 for information pertaining to establishing prior art disqualifications 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 § 2146.02.

Prior to November 29, 1999, pre-AIPA 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as prior art only under 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 subsection II, below, for a discussion of pre-AIPA 35 U.S.C. 103(c) for applications filed prior to November 29, 1999.

Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103(a) via pre-AIA 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” This amendment to pre-AIA 35 U.S.C. 103(c) was made pursuant to section 4807 of the American Inventors Protection Act of 1999 (AIPA); see Public Law 106-113, 113 Stat. 1501, 1501A-591 (1999). 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 the prior art disqualification under pre-AIA 35 U.S.C. 103(c) as amended on November 29, 1999. Subsequently, the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Public Law 108-453, 118 Stat. 3596 (2004)) further 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 three conditions are met:

• (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 (hereinafter “joint research agreement disqualification”).

These changes to pre-AIA 35 U.S.C. 103(c) apply to all patents (including reissue patents) granted on or after December 10, 2004 that are subject to pre-AIA 35 U.S.C. 102. The amendment to pre-AIA 35 U.S.C. 103(c) made by the AIPA to change “subsection (f) or (g)” to “one of more of subsections (e), (f), or (g)” applies to applications filed on or after November 29, 1999. It is to be noted that, for all applications (including reissue applications), if the application is pending on or after December 10, 2004, the 2004 changes to pre-AIA 35 U.S.C. 103(c), which effectively include the 1999 changes, apply; thus, the November 29, 1999 date of the prior revision to pre-AIA 35 U.S.C. 103(c) is no longer relevant. In a reexamination proceeding, however, one must look at whether or not the patent being reexamined was granted on or after December 10, 2004 to determine whether pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, applies. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed on or after November 29, 1999, it is the 1999 changes to pre-AIPA 35 U.S.C. 103(c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of pre-AIA 35 U.S.C. 103(c). See MPEP § 2146.01 for additional information regarding disqualified prior art under pre-AIA 35 U.S.C. 102(e)/103. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to pre-AIA 35 U.S.C. 103(c) are applicable. Therefore, only prior art under pre-AIA 35 U.S.C. 102(f) or (g) used in a rejection under pre-AIA 35 U.S.C. 103(a) may be disqualified under the commonly assigned/owned prior art provision pre-AIA of 35 U.S.C. 103(c).

Pre-AIA 35 U.S.C. 103(c), as amended by the CREATE Act, applies 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(a). If the rejection is anticipation under pre-AIA 35 U.S.C. 102(e), (f), or (g), pre-AIA 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. Likewise, pre-AIA 35 U.S.C. 103(c) cannot be relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78(c) and MPEP § 804.

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-AIPA 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-AIPA 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.”).

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(a) 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(a) 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 § 2146.01.