The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jan 27th, 2023, 8:26am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Obviousness
(Moderators: Forum Admin, JimIvey, JSonnabend)
   102(a)
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: 102(a)  (Read 1837 times)
russell
Newbie
*




   


Posts: 2
102(a)
« on: Mar 15th, 2006, 4:24pm »
Quote Quote Modify Modify

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 Quote Modify 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 Quote Modify 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 Quote Modify 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
*****




  jamesdivey  
WWW

Posts: 2584
Re: 102(a)
« Reply #4 on: Mar 15th, 2006, 9:55pm »
Quote Quote Modify 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
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board