Common Ownership Exception to AIA § 102(a)(2) Prior Art

MAIN, USPTO

It has been more than three years since the America Invents Act (“AIA”) went into effect. By this time, you are likely familiar with what constitutes patent-defeating events, or “prior art,” under 35 U.S.C. § 102. Section 102(a) has two distinct parts: § 102(a)(1) contains the “public” events, such as publications and matter in public use and on sale; and § 102(a)(2) contains the “secret” events that become “public” by subsequent publication.

Although you may have those general rules down, the exceptions to prior art can be quite tricky to understand. For example, the common ownership exception in § 102(b)(2)(C) is not entirely clear by looking at the text of the statute alone:

(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. 

The AIA carried forward the common ownership exception from pre-AIA § 103(c)(1) as § 102(b)(2)(C) but changed it in several important respects, which are broken down in detail below.

First, unlike the pre-AIA exception, the AIA disqualifies commonly owned subject matter as prior art under §§ 102 and 103. This change makes the exception applicable to both anticipation and obviousness rejections rather than obviousness rejections only.

Second, the common ownership must only exist “not later than the effective date of the claimed invention.” Under pre-AIA rules, common ownership must have existed at the time that the claimed invention was made. This change is illustrated by the timeline above, where common ownership arises on the same day as the filing date of the claimed invention.

A third key feature of the AIA common ownership exception is not entirely clear from the face of the statute but can be found in the USPTO’s examination guidelines. According to the guidelines, the common ownership exception applies only to prior art under § 102(a)(2) – it does not remove as prior art public disclosures under § 102(a)(1).  Specifically, the common ownership exception applies only to U.S. patents, U.S. patent application publications, or WIPO published applications but only if they did not issue or publish before the effective filing date of the claimed invention. This change is also illustrated by the timeline above.

And with that, you are now well on your way to understanding and using the AIA prior art exceptions!

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