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

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

A person shall exist entitled to a patent unless—

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

(ii) the claimed invention was described in a patent issued nether 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 some other inventor and was effectively filed before the constructive filing date of the claimed invention.

For each of these provisions at that place are exceptions based on common inventorship or common ownership. Simply at that place is a key distinction: Under 35 U.S.C. § 102(a)(ane), the exceptions only apply to disclosures made 1 year or less from the constructive filing engagement of the claimed invention. In contrast, under 35 U.Due south.C. § 102(a)(2), no such limitation exists.

Exceptions to (a)(one) Type Prior Art

The exceptions to (a)(i) type prior art are divers in 35 U.South.C. § 102(b)(1), and they include a disclosure made one twelvemonth or less before the constructive filing engagement of a claimed invention if:

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

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed past the inventor or a joint inventor or another who obtained the subject thing disclosed directly or indirectly from the inventor or a articulation 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 i year before the effective filing appointment of the claimed invention, by an inventor, joint inventor or someone who received the data from an inventor, the public disclosure may be disqualified as prior art.

Here is an instance: Inventor Jim filed a patent application for a claimed gelatin stapler widget on June xx, 2018. However, almost a year earlier, on July i, 2017, Inventor Jim posted a video online that showed the claimed gelatin stapler widget. While reviewing the claimed gelatin stapler widget patent awarding, Examiner Dwight found the video Inventor Jim posted on July i, 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 constructive filing date of the claimed invention, Inventor Jim tin can assert that the video is butterfingers as prior art under 35 United statesC. § 102(b)(1).

Exceptions to (a)(2) Type Prior Fine art

The exceptions to (a)(2) type prior fine art are defined in 35 United statesC. § 102(b)(two) every bit whatsoever 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 field matter was effectively filed nether subsection (a)(two), been publicly disclosed past the inventor or a joint inventor or another who obtained the subject thing disclosed direct or indirectly from the inventor or a joint inventor; or

(C) the bailiwick thing disclosed and the claimed invention, non later than the effective filing date of the claimed invention, were endemic by the aforementioned person or discipline to an obligation of assignment to the same person.

Thus, in contrast to the exceptions to (a)(1) blazon prior art, the exceptions to (a)(2) type prior fine art besides involve common ownership . This means that if the claimed invention and the prior art reference were usually owned – including by subsidiaries – at the effective filing date of the claimed invention, the reference may be butterfingers every bit prior art.

Hither is an example: Inventor Karen filed a patent application for a claimed paper widget on June twenty, 2018 that is owned by Subsidiary Utica. However, on July one, 2016, Inventor Pam filed a patent awarding that disclosed a similar paper widget, and is owned by Subsidiary Scranton. While reviewing the claimed newspaper widget patent application, Examiner Dwight establish Inventor Pam'south patent application of July 1, 2016, and cited it every bit prior fine art confronting Inventor Karen's patent awarding. 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 awarding and Inventor Karen'due south patent awarding 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 fine 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 engagement of the prior art reference precedes the electric current application'southward filing date, it is proficient practice to double check (a) whether the reference was authored by the named inventor on the application, and (b) whether the reference is was unremarkably owned by the assignee of the pending awarding.