Test takers report a #30 from the October 2003 (AM) patent bar exam is in the current question pool.
30. A registered practitioner receives an Office action for Application X, a patent application filed after November 29, 1999. The action contains a rejection of all the claims as being obvious under 35 USC 103(a) over Patent A in view of Patent B. Patent A is only available as prior art under 35 USC 102(e). Patent B is available under 35 USC 102(b). The practitioner seeks to disqualify Patent A as prior art under 35 USC 103(c). Which of the following would be sufficient evidence to disqualify Patent A as prior art in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A declaration signed by an employee of Corporation K, who is not empowered to act on behalf of Corporation K, stating that at the time the invention claimed in Application X was made, the claimed invention and Patent A were commonly owned by Corporation K.
(B) A declaration signed by the inventor of Patent A stating that at the time the invention claimed in Application X was made, the invention claimed in Application X and the invention claimed in Patent A were both subject to an obligation of assignment to the same person.
(C) A statement by the inventor Jones, the sole inventor of Application X, saying that at the present time, Application X and Patent A are commonly owned.
(D) A statement by the practitioner stating that Application X and Patent A were, at the time the invention claimed in Application X was made, commonly owned by the same person.
(E) A statement by inventor Jones, the sole inventor of Application X, saying that at the time the invention claimed in Application X was made, Jones owned a majority interest in Patent A.
ANSWER: (B) or (D) is accepted as the correct answer. As to (B) and (D), see MPEP § 706.02(l)(2), under the heading “II. Evidence Required To Establish Common Ownership.” (B) is accepted because applicants, e.g., inventors, have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (D) reproduces the example set forth under the foregoing heading. (A) is incorrect because applicants or the representatives of record have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (C) is incorrect because the statement does not establish common ownership at the time the later invention was made. 35 U.S.C. § 103(c). (E) is incorrect because it does not establish that the prior art invention and the claimed invention are entirely or wholly owned by the same person. MPEP § 706.02(l)(2).
B works only if Pat A inventor is also App X inventor/applicant.
Sol: I do not agree with you. If there is support for your assertion, please provide it so that I can reassess my own understanding. Here is why I think you are incorrect:
The language of 102(c) expressly applies to overcome a reference by ANOTHER PERSON…please see this phrase in context below:
35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.
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(c)(1) Subject matter developed by ANOTHER PERSON, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The requirement is that ‘evidence’ has to be given. As explained in the posted answer, the inventor of a patent can provide evidence about who owns his or her invention.
Furthermore, the rejection is based on a reference available under 102(e); and 102(e) deals with patents and patent apps BY ANOTHER…again, please see the phrase in context below:
(e)the invention was described in — (1) an application for patent, published under section 122(b), BY ANOTHER filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent BY ANOTHER filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language
So, am I correct, or, am I missing a piece of the puzzle?
Hi Sabrina: I agree with Sol. From MPEP 706.02(l)(2) under heading II.EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP: “The applicant(s) or the representative(s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO.”
The key word is applicant. It doesn’t say inventor, it says applicant. So it must be that inventor of A is also applicant of X for answer B to work.
There can only be one correct answer, and in this case it is D.
The inventor of A is not a party to invention X, and therefore his declaration cannot be assumed to have the best knowledge. Answer B fulfills the criteria for overcoming the rejection and is stated by someone who can knowingly make this assertion, and who properly bears the burden of establishing a ground of disqualification for the prior art reference.
Per 706.02(l)(2) :
The burden of establishing that subject matter is disqualified as prior art under 35 U.S.C. 103(c) is intended to be placed and reside upon the person or persons urging that the subject matter is disqualified. For example, a patent applicant urging that subject matter is disqualified as prior art under 35 U.S.C. 103(c), would have the burden of establishing that it was commonly owned at the time the claimed invention was made. The patentee in litigation would likewise properly bear the same burden placed upon the applicant before the U.S. Patent and Trademark Office. To place the burden upon the patent examiner or the defendant in litigation would not be appropriate since evidence as to common ownership at the time the claimed invention was made might not be available to the patent examiner or the defendant in litigation, but such evidence, if it exists, should be readily available to the patent applicant or the patentee.