First-to-File Practice: Commonly Owned Applications

24 August 2012 PharmaPatents Blog

This is the fourth article in my First-to-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art, and the proposed requirements for invoking the “grace period shielding disclosure” exception to prior art. Here, I look at the expanded prior art exception for commonly owned patent applications.

New 35 USC § 102(b)(2)(C)

One of the few first-to-file provisions that may benefit applicants is found in new 35 USC § 102(b)(2)(C) which relates to disclosures in commonly owned patent applications that were filed–but not published–before the effective filing date of the patent application at issue:

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
* * * * *
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
* * * * *
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
* * * * *
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

Similar to current § 103(c), applications made pursuant to joint research agreements can qualify as “commonly owned” for the purposes of this exception under new § 102(c):

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed 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 in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

While current § 103(c) only prevents commonly owned applications from being cited in obviousness rejections, new § 102(b)(2)(C) prevents such applications from being cited in either anticipation or obviousness rejections.

The Proposed Rules for Commonly Owned Applications

The USPTO has proposed revisions to 37 CFR § 1.104(c) to implement this expanded prior art exception:

(4)(i) Subject matter that qualifies as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant provides a statement that the prior art and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(ii) Subject matter that qualifies as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes 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:
(A) The applicant provides a statement that the prior art was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement . . . that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

These requirements are similar to the requirements for invoking current § 103(c), except with regard to the critical date. Current § 103(c) requires common ownership as of the time that the claimed invention of the application at issue was made, and requires a joint research agreement to have been in effect by the date that the claimed invention of the application at issue was made. In contrast, the new exception may allow applicants to avoid the prior art effect of an earlier filed, unpublished application by creating common ownership before filing a patent application for an invention that already has been made. While the joint research agreement exception still requires the invention to have been made as a result of activities undertaken within the scope of the joint research agreement, it appears to be more flexible as to when the agreement needs to have been formally in effect.

Commonly Owned Applications Still Citable for Other Purposes

The USPTO’s proposed examination guidelines explain that commonly owned applications still may be cited for other purposes including:

  • statutory double patenting or obviousness-type double patenting
  • as evidence of the state of the art to support an enablement rejection
  • as prior art under § 102(a)(1) if the application was published before the effective filing date of the application at issue

 A Familiar – But Broader Prior Art Exception

When I characterized the new grace period inventor disclosure exception as the most familiar prior art exception under the AIA, I must have forgotten about the newly expanded exception for commonly owned applications. While there are differences in the requirements for invoking new §102(b)(2)(C), it appears that most applications that would have been able to benefit from § 103(c) will be able to benefit from the new exception, and some applications that might not have qualified under § 103(c) nevertheless may qulify under new §102(b)(2)(C). Moreover, by moving this exception from § 103 to § 102, its impact may be much greater, as it will prevent both anticipation and obviousness rejections. Thus, this is one of the few ways in which certain applications could be better off if examined under the first-to-file version of the law.

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