How to deal with your own priority documents as prior art in U.S. patent examination.

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Release time:2021-04-20

When applying for a U.S. patent, when you receive your own priority document as an existing technology to evaluate the novelty and creativity of OA, you must first analyze why the examiner uses the priority document as an existing technology, which generally leads to the following situations:

1. Failure to submit a translation of the priority document;

2. Failure to submit a copy of the priority;

3. The inventor of the US application is inconsistent with the priority inventor.

In particular, the above-mentioned third point is easily ignored, and there are cases where one or several inventors are lost.

35 U.S.C. 102(a)(1) or 102(a)(2) rejection based on printed publications or patents [R-10.2019]

[Editor's note: This MPEP section applies onlyThe First InventorReview and file an application under the terms of the AIA (as described in 35 U.S.C. § 35). 100 (note) and MPEP § 2159. See MPEP § 2139 and subsequent versions. Review of application 102 subject to AIA 35 U.S.C.]

In addition to persuasively believing that the claim is patent distinguishable from the prior art, or amending the claim to overcome the prior art rejection, at 35 U.S.C. 102(a)(1) or 102(a)(2) can be overcome by the following methods:

1. Make up the translation of the priority document;

2. Make up the priority copy or DAS code;

3. Change the inventor so that the U.S. application includes all inventors who have priority.

In addition, an affidavit affidavit or declaration declaration may be filed under 37 CFR 1.130 to prove that applicable references or disclosures not more than one year before the effective filing date of the claimed invention are not prior art.

According to 37 CFR 1.130(a), an affidavit or ownership statement can be submitted so that the disclosure does not belong to prior art, because the disclosure is made by the inventor or co-inventor, or the disclosed subject matter is directly or indirectly obtained from the inventor or co-inventor.

According to 37 CFR 1.130 (B), if the disclosed subject matter has been publicly disclosed by the inventor or co-inventor or another person who obtained the subject matter, a written affidavit or prior public disclosure statement can be submitted to disqualify the intrusive disclosure as prior art. Information disclosed, directly or indirectly, from the inventor or co-inventor (1) prior to the date of the intervention disclosure on which the rejection is based, or (2) prior to the date of the publication of the subject matter in the United States patent, United States patent application or WIPO on which the rejection is based, is validly filed. See MPEP §§ 717 and 2155; or

Establishment of evidence of joint ownership or establishment of joint research agreement to overcome 35 U.S.C. 102(a)(2) rejection or U.S.C. 35 103 rejections based on prior art of 35 U.S.C. 102(a)(2) 102 of rights by establishing 35 U.S.C. (B)(2)(C) exception. See MPEP §§ 717.02 and 2154.02(c).

After being treated in the above manner, the next review opinion will not use the priority document as an existing technology to evaluate novelty and creativity, or directly issue an authorization notice.

Relevant law:

2152.06 Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection Based on a Printed Publication or Patent [R-10.2019]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2139 et seq. for examination of applications subject to pre-AIA 35 U.S.C. 102.]

In addition to persuasively arguing that the claims are patentably distinguishable over the prior art or amending the claims to overcome the prior art rejection, a rejection under 35 U.S.C. 102(a)(1) or 102(a)(2) can be overcome by:

(A) Submitting a benefit claim under 35 U.S.C. 120 within the time period set in 37 CFR 1.78 by providing the required reference to a prior application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a), or filing a grantable petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78. See MPEP § 211et seq.; or

(B) Submitting a benefit claim under 35 U.S.C. 119(e) within the time period set in 37 CFR 1.78 by providing the required reference to a prior provisional application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or filing a grantable petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78. See MPEP § 211et seq.; or

(C) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) within the time period set in 37 CFR 1.55 by identifying a prior foreign application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or filing a grantable petition to accept a delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 - 216. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)); or

(D) Filing an affidavit or declaration under 37 CFR 1.130 to establish that an applied reference or disclosure that was not made more than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception listed in 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit or declaration of attribution may be submitted to disqualify a disclosure as prior art because it was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Under 37 CFR 1.130(b), an affidavit or declaration of prior public disclosure may be submitted to disqualify an intervening disclosure as prior art if the subject matter disclosed had 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 joint inventor (1) before the date the intervening disclosure was made on which the rejection is based, or (2) before the date the subject matter in the U.S. patent, U.S. patent application publication, or WIPO published application on which the rejection is based was effectively filed. See MPEP §§ 717 and 2155; or

(E) Establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a 35 U.S.C. 102(a)(2) rejection or a 35 U.S.C. 103 rejection based on prior art under 35 U.S.C. 102(a)(2) by establishing entitlement to the 35 U.S.C. 102(b)(2)(C) exception. See MPEP §§ 717.02 and 2154.02(c).