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Overcoming Rejections Based on Your Own References

While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.”

When making a prior art rejection in the US, a patent examiner distinguishes between prior art that is available under 35 U.S.C. § 102 (a)(1) and 35 U.S.C. § 102 (a)(2). Section 102 (a) provides as follows:

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(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.

For each of these provisions there are exceptions based on common inventorship or common ownership. But there is a key distinction: Under 35 U.S.C. § 102(a)(1), the exceptions only apply to disclosures made one year or less from the effective filing date of the claimed invention. In contrast, under 35 U.S.C. § 102(a)(2), no such limitation exists.

Exceptions to (a)(1) Type Prior Art

The exceptions to (a)(1) type prior art are defined in 35 U.S.C. § 102(b)(1), and they include a disclosure made one year or less before the effective filing date of a claimed invention if:

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, 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.

Thus, the exceptions to (a)(1) type prior art involve common inventorship. This means that if there is a public disclosure, not more than one year before the effective filing date of the claimed invention, by an inventor, joint inventor or someone who received the information from an inventor, the public disclosure may be disqualified as prior art.

Here is an example: Inventor Jim filed a patent application for a claimed gelatin stapler widget on June 20, 2018. However, almost a year earlier, on July 1, 2017, Inventor Jim posted a video online that showed the claimed gelatin stapler widget. While reviewing the claimed gelatin stapler widget patent application, Examiner Dwight found the video Inventor Jim posted on July 1, 2017, and cited it as prior art against Inventor Jim’s patent application.

In this case, since Inventor Jim is the one who publicly disclosed the claimed gelatin stapler widget, and the video was not publicly available more than one year before the effective filing date of the claimed invention, Inventor Jim can assert that the video is disqualified as prior art under 35 U.S.C. § 102(b)(1).

Exceptions to (a)(2) Type Prior Art

The exceptions to (a)(2) type prior art are defined in 35 U.S.C. § 102(b)(2) as any disclosures in which:

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or

(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.

Thus, in contrast to the exceptions to (a)(1) type prior art, the exceptions to (a)(2) type prior art also involve common ownership. This means that if the claimed invention and the prior art reference were commonly owned – including by subsidiaries – at the effective filing date of the claimed invention, the reference may be disqualified as prior art.

Here is an example: Inventor Karen filed a patent application for a claimed paper widget on June 20, 2018 that is owned by Subsidiary Utica. However, on July 1, 2016, Inventor Pam filed a patent application that disclosed a similar paper widget, and is owned by Subsidiary Scranton. While reviewing the claimed paper widget patent application, Examiner Dwight found Inventor Pam’s patent application of July 1, 2016, and cited it as prior art against Inventor Karen’s patent application. Unbeknownst to Examiner Dwight, but known to Inventor Karen, Subsidiary Utica and Subsidiary Scranton are both owned by Parent Company NYC Paper, and have been since March 24, 2005.

In this case, since Inventor Pam’s patent application and Inventor Karen’s patent application were both owned by Parent Company NYC Paper on June 20, 2018, Inventor Karen can assert that Inventor Pam’s patent application is disqualified as prior art under 35 U.S.C. § 102(b)(2).

In summary, if your patent application receives a rejection which relies on a prior art reference, even if the filing date of the prior art reference precedes the current application’s filing date, it is good practice to double check (a) whether the reference was authored by the named inventor on the application, and (b) whether the reference is was commonly owned by the assignee of the pending application.

© Copyright 2019 Squire Patton Boggs (US) LLP

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About this Author

Benjamin Ford IP Lawyer Squire Patton Boggs
Associate

Benjamin’s experience includes preparing and prosecuting US and international patent applications. His diverse background enables him to practice in a variety of technological fields, including optics, cellular and network communications, electronics, semiconductors, various manufacturing and control systems, oil and gas services, electrical circuits, medical devices, and printer devices. 

Prior to joining the firm, Benjamin was an associate at a boutique intellectual property law firm in Texas.

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