Double Patenting Joint Research Agreement

A factual situation similar to that of Faster was entrusted to a federal circuit panel at In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed). Cir. 1986). Kaplan had obtained a patent on a process for manufacturing chemicals in the presence of an organic solvent. Among the organic solvents revealed and claimed to be useful were tetraglym and sulfolan. An example not claimed in the patent was specifically directed at a mixture of these two solvents. The claims in the application to Kaplan and Walker, the application to the Agency, related essentially to the same chemical process, but required the use of the mixture of tetraglym solvents and sulfolane. In annulring the refusal of dual patentability, the Tribunal found that the mere fact that the broad patent claim that requires an organic solvent does not in itself justify a double repudiation of patentability. The Court also pointed out that the refusal of the double patent had misused the disclosure of the joint invention (mixture of solvents) in the specification of the Kaplan patent as prior art. Applications or patents are “common property” referred to in 35 U.S.C 102 (b) (2) (C) or pre-AIA 35 U.S.C 103(c) (1) if, at the time of presentation or execution of the claimed invention, they belonged wholly or wholly to the same person(s) or entity(ies).

If the person(s) or organizations possessed less than 100 per cent of the subject matter that would otherwise be the technical condition of the claimed invention, or less than 100 per cent of the claimed invention, then the best common property is not. Common ownership requires that the person(s) or commercial entity(ies) own 100% of the subject matter and 100% of the claimed invention. See MPEP § 717.02 (a), subsection I, and MPEP § 2146.02 for a detailed definition of common ownership. 35 U.S.C. 102(b)(2)(C) provides that disclosures are not the property of the same person. C 35 U.S.C 102 (a) (2), where the claimed subject matter and invention were the property of the same person no later than the effective date of filing of the claimed invention or were subject to an obligation to assign to the same person. If the 35 U.S. prior art exception.C 102(b)(2)(C) is duly invoked, the subject matter disclosed in the Oder Joint Search Agreement reference is not available as prior art in 35 U.S.C 102(a)(2) for both refusals of anticipation and refusals of evidence. See MPEP § 717.02 (a) for more information on the invocation of this exception on the state of the art and MPEP § 717.02 (b) for more information on the assessment of the date of application of the derogation and the duly invoked request. Processing create joint research inventions raises issues of double patenting.

These are replaced by the amended version 37 C.F.R. § 1.109: In order to promote uniform practice, any official act involving a rejection on the basis of a double non-governmental patent based on the fact that the original application rejects the claims in a divisional application in which the divisional application was filed because the examiner was filed after US$35. It was restricted…