MPEP Q & A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed

 Applicant May Submit as Objective Evidence That Common Ownership Existed

Question:

Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed?

Answer:

The applicant may submit the following evidence:

  • (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s);
  • (B) Copies of unrecorded assignments which convey the entire rights in the application and the commonly owned applied art to the same person(s) or organization(s) are filed in each of the applications;
  • (C) An affidavit or declaration by the common owner which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; and
  • (D) Other evidence which establishes common ownership of the application and the commonly owned applied art.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 717.02(b) of the MPEP.  The following is a brief summary of section 717.02(b).

717.02(b)   Evaluating Whether the  Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked

This section covers details on evaluating whether the prior art exception under AIA 35 U.S.C. 102(b)(2)(c) is properly invoked.  It includes a discussion on when the exception can be used as well as when the exception does not apply.  In addition, it covers evidence required to establish common ownership and evidence required to establish a joint research agreement.


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