A patent applicant or patent owner who lobbies for the subject matter to be disqualified will have the burden of proving that prior art is disqualified under pre-AIA 35 U.S.C. 103(c). Unless such disqualification occurs, such a rejection under U.S. Section 103(a) prior to AIA 35 U.S.C. 103(a) must be made using prior art under the United States prior art. C. 102 (e), (f) or (g). See MPEP § 2146.02 for more information on the determination of prior art exclusions on the basis of joint ownership or joint search agreements. In order for the examiner to resolve this issue, the applicant or patent owner may submit a declaration pursuant to 35 U.S.C no later than the date of actual filing of the claimed invention. 102 (b) (2) (C) and 37 CFR 1,104 (c) (4) (i) that the subject matter and the claimed invention were the property of the same person or were subject to an obligation to assign to the same person no later than the actual filing date of the claimed invention.

Alternatively, the applicant or patent owner may submit a declaration to 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter has been developed and that the claimed invention was made by or on behalf of one or more parties to a joint search agreement in force no later than the date of actual filing of the claimed invention and that the claimed invention was made at the continuation of activities carried out under the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. For a discussion of the three requirements of AEOI 35 U.S.C. 102(c), which must be completed in order for a claimed invention and a disclosed subject matter that might otherwise be considered prior art to be treated as the property of the same person in the application of the provisions of the Joint Search Agreement under AIA 35 U.S.C. 102(b)(2)(C) or subject to an obligation to assign it to the same person, see MPEP § 2156. See also MPEP § 717.02 et seq. This preliminary rejection under 35 U.S.C. 102(a)(2) could be overcome by: (1) evidence under 37 CFR 1,130(a) that the subject matter disclosed in the coandive application was obtained directly or indirectly from the inventor or co-inventor of that application and is therefore not consistent with prior art as defined in 35 U.S.C.

102(b)(2)(A); (2) a statement under 37 CFR 1,130(b) of a prior disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a declaration under Section 35 of the United States.C. 102 (b) (2) (C), which shows that the subject matter disclosed in the combined application and the claimed invention were either the property of the same person or were subject to the obligation to assign it to the same person or to a joint search agreement no later than the date of actual filing of the claimed invention. – for the purposes of the United States research agreement.C prior to paragraph (c) of the AEOI, the term “joint research agreement” means a written contract, grant or cooperation 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 Federal Register notice warns that the proposed amendments “do not meet the requirement in the period prior to AIA 35 U.S.C. 103(c), or in Section 35 U.S.C. 102(c), eliminate the fact that the claimed invention of the application or patent in which the final disclaimer is filed was made as a result of activities carried out under the joint search agreement`. The affidavit or statement is not required to prove that disclosure by the inventor, co-inventor, or any other person who received the disclosed material directly or indirectly from an inventor or co-inventor was an “authoritative” disclosure of the subject matter within the meaning of 35 U.S.S.C. 112(a).

See MPEP § 2155.04. (B) The patent application or patent of the claimed invention is disclosed or amended to disclose the names of the parties to the joint research agreement in accordance with § 1.71 (g). The double patent may exist when a patent or reference application and the patent examined are filed by inventive companies that have at least one inventor in common, by a joint applicant and/or by a co-owner/assignee. If the patent under review was granted on or after December 10, 2004, a double patent may also exist if the inventions claimed under the reference and review procedure are the result of activities conducted under a joint research agreement pursuant to Section 35 U.S..C 102(c) or prior to AIA 35 U.S.C. 103(c)(2) and (3), as the case may be, and whether proof of the joint search agreement has been proved in the patent under examination or in the review procedure. A double rejection of patents cannot be carried out on this basis if the patent under examination is filed before 10 September. December 2004. See MPEP § 804.04. The exclusion of prior art under 35 U.S.C. 102(b)(2)(C) or prior to AIA 35 U.S.C. 103(c) cannot be used to overcome a double patent rejection, whether legal or non-statutory.

See MPEP §§ 717.02et ff. and 2154.02(c) for more information on 35 U.S.C. 102(b)(2)(C) and MPEP § 2146 for more information on U.S. 35 U.S.C. 103(c). See MPEP § 2258 for more information on double patent refusals in appeal proceedings. Subsection II below describes the situations in which a double rejection of patentability would be appropriate. See in particular Section II.B. for the analysis necessary to determine the accuracy of an unegal rejection of a dual patent.

The examiner should proceed with both a double rejection of patentability on the basis of co-ownership and a rejection on the basis of prior art if the facts support both rejections. Until the notifier has demonstrated that a reference is disqualified as prior art under the Joint Search Agreement under 35 U.S.C. 102(c) and prior to AIA 35 U.S.C. 103(c)(2) and (3), the examiner shall NOT request a double rejection on the basis of a joint search agreement. See MPEP §§ 706.07(a), 717.02(c) and 804, Subsection VI., for more information on when an Act of the Office involving a subsequent further rejection of a double patent double patent on the basis of a reference to a joint search agreement within the meaning of Section 35 U.S.C. 102(c) and before AIA 35 U.S.C. 103(c)(2) and (3) may be finalized. For pre-AEOI applications filed on or after November 29, 1999, and for pre-AEOI applications pending on or after December 10, 2004, a generally assigned or held patent or pending AIA 35 U.S.C application. 102(e) may be disqualified as prior art in a rejection before AIA 35 U.S.C. 103(a). See before AIA 35 U.S.C. 103(c)(1).

For pre-AEOI applications pending on or after December 10, 2004, a patent or application may be disqualified as a pre-35 U.S.C. 102(e) rejection in a pre-AIA 35 U.S.C. 103(a) prior art rejection if there is evidence of a joint search agreement under the . U.S. C 103(c)(2) and (3) is included in the application (or patent under examination) to be examined (or patent under examination). and the conflicting claims resulted from a joint search agreement in force no later than the date of grant of the subsequent claimed invention. See MPEP § 2146et ff. for more information. The exclusion of prior art under U.S. Article 103(c) (c) of the United States .C pre-AEOI period 35 may also apply in post-grant proceedings of the Office if the application has become the patent under review or review meets the above conditions.

The filing of a definitive disclaimer containing each of the conflicting non-legal duplicate patent references is also necessary to avoid the problem of separate application of patents on patentable indistinct inventions by the parties to a joint research agreement. 37 CFR 1.321(d) sets out the requirements for a final disclaimer if the claimed invention results from activities conducted under a joint research agreement. An examiner may be aware of two or more competing applications filed by the same inventive unit, another inventive unit with a common inventor, a joint applicant and/or a joint owner/assignor, or that claim an invention resulting from activities carried out under a joint search agreement within the meaning of 35 U.S.C. 102c) or prior to AIA 35 U.S.C. 103(c)(2) and (3) Were. this would raise the issue of double patenting if one of the applications became a patent. While this issue can be addressed without violating the confidential status of applications (35 U.S.C. 122), the courts have sanctioned the practice of drawing the applicant`s attention to the potential problem of double patenting when one of the applications becomes a patent by allowing the examiner to proceed with a “provisional” rejection on the grounds of double patenting.

In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a provisional refusal may be examined by both the applicant and the examiner without waiting for the grant of the first patent. The evidence required to prove that the subject matter of a disclosure has already been disclosed or comes from an inventor or co-inventor requires a case-by-case analysis. 37 CFR 1.104(c)(4)(ii) deals with joint search agreements and provides for subject matter that would otherwise be considered prior art under 35 U.S.C. 102(a)(2) and a claimed invention are treated as joint property within the meaning of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if: (1) the applicant for or owner of the patent declares that the subject matter has been developed and that the claimed invention is being developed by or on behalf of one or more parties to a joint search agreement (within the meaning of Section 35 U.S.C.