|
|
Author |
Topic: 102(a) (Read 1837 times) |
|
russell
Newbie
Posts: 2
|
Question on 102(a).
Commonly owned application rejected over prior published application under 102(a). One common inventor, not identical inventorship. Application published prior to filing of rejected application.
MPEP 706.02(a)II C says if 102 (a) to apply reference to apply must be published earlier that effective filing date and
"must not be applicant's own work." Does "applicant" mean identical inventorship" only or can the phrase include common ownership.
|
|
 IP Logged |
|
|
|
Isaac
Senior Member
Posts: 3472
|
 |
Re: 102(a)
« Reply #1 on: Mar 15th, 2006, 4:46pm » |
 Quote  Modify
|
Ownership would not be relevant.
|
|
IP Logged |
Isaac
|
|
|
russell
Newbie
Posts: 2
|
|
Re: 102(a)
« Reply #2 on: Mar 15th, 2006, 7:37pm » |
Quote Modify
|
I assume what you are saying is that you need common inventorship. Anyway, that is what my thinking is at present. That would mean that I am at the end of my rope, so to speak.
|
|
IP Logged |
|
|
|
SciGuy
Junior Member
Posts: 57
|
|
Re: 102(a)
« Reply #3 on: Mar 15th, 2006, 9:54pm » |
Quote Modify
|
on Mar 15th, 2006, 7:37pm, russell wrote:I assume what you are saying is that you need common inventorship. Anyway, that is what my thinking is at present. That would mean that I am at the end of my rope, so to speak.
|
|
I assume the is some improvement or other new matter in the 2nd app and that is why you are seeking a patent. Regardless, it might not be over. Given that (1) the 2nd app is commonly owned with the 1st, (2) they disclose common art, and (3) there is at least one common inventor, you might be able to either (a) file a continuing application (probably a continuation-in-part) off of the 1st app or (b) claim priority of the 1st in the 2nd app. Also, the 1st must still be pending.
|
| « Last Edit: Mar 15th, 2006, 10:25pm by SciGuy » |
IP Logged |
|
|
|
JimIvey
Moderator
Senior Member
 
Posts: 2584
|
|
Re: 102(a)
« Reply #4 on: Mar 15th, 2006, 9:55pm » |
Quote Modify
|
Maybe Russel is thinking of the "by others" in 102(a). I always thought that was extraneous language. How could you publicly describe or use your invention before you've made your invention? So, I think it would be a practical impossibility to publicly disclose your invention in an enabling prior art manner before you've actually made you invention.
I'm also a little confused by the question -- there's no common inventorship of a publication or a public use, there's no "inventor" of a publication or a public use. There may not even be a "owner" in the sense of an owner of a patent application.
I wouldn't stress too much about the "by others" part of 102(a). If there's a publication or public use by anybody of something that your claim(s) cover(s) and you can't swear behind it, you're going to have to deal with it -- period.
Regards.
|
|
IP Logged |
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
|
|
|
|
|
Forums
Help
Search
Members
Calendar
Login
Register
Reply
Send Topic
Print