Obligation to point out the inventor and invention dates of each claim not commonly owned

In a recent first office action rejection, the examiner wrote the following:

“This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).

I’m confused by this examiner statement. (Otherwise, this particular office action is exceptionally well written). What I don’t understand is the “obligation.” After receiving this (or even before) are the patent applicants under a duty to describe the ownership structure and invention dates?

49 thoughts on “Obligation to point out the inventor and invention dates of each claim not commonly owned

  1. 49

    Fantastic Wikipedia reference Just. I had no idea there was so much meat in a mere “Dash”. I don’t dare to look at Wiki on “dot”. I did indeed confuse dash with hyphen. Never again. BTW there are lots of parentheses in EPO claims. We always have to add metric units (so EPO Exrs doing searches can easily and quickly compare numerical values like with like)

  2. 48

    Dear Max,

    I was also thinking of an em dash for use in claims to demarcate a parenthetical phrase:

    link to en.wikipedia.org

    Come to think of it, I don’t recall seeing parentheses in a claim, but I’d bet there must be plenty.

    * * * * *

    Dear step back,

    It is always nice to know one is appreciated.
    You’ve brightened my day once again.
    Thank you.
    All the best…

  3. 46

    Dear Just-an-ordinary-…,

    I suspect I know who you are in real life and you know who I am … but let’s keep it our secret, OK?

    Don’t let Babel Boy and the other alliterative types (MM, etc.) throw you. Meandering Mind ploys are exactly their game.

    If you study In re Bilski closely, you will see that the majority uses meandering mind ploys as well. Terms like “fundamental principles” and “patent eligible”? What swamp did those phrases rise up from? What ever happened to “statutory subject matter”? Heavens no, we shouldn’t use that phraseology. It might compel us to read the actual words of the statutes (35 USC 100, 100(b), 273, … Lions and tigers and bears, oh my!)

    Keep up the good fight.
    Stay young and keep on inventing. The world needs more people like you and fewer like BB, MM and PP. (BB and MM are jointly known as BM of course.)

  4. 45

    Dear Just, once again we agree. There should be more dashes in claims. I’m putting them in all the time. Claims arriving from the USA frequently include word strings which need a dash but don’t have one, with dire consequences for clarity when they are read by an EPO Examiner reading English as a forteign language or a patent translator putting the issued claims into his/her first language namely the language of a validation country in Europe. It does seem that US attorneys have an aversion to the dash. Can’t think of a good example right now but consider “press forming the part cured polymer material” as opposed to “press-forming the part-cured polymer material”

  5. 44

    Dear Max,

    You are too kind, flattery will get you everywhere.

    I appreciate that you have toned down your insensitivity toward self-employed American inventors. Please keep at it. I too have toned down my passionate opinions and promise to keep at it.

    To me, inventing is my business – I’ve worked with and learned over forty years from some of the brightest attorneys and most renowned inventors in my business (including American & European attorneys and inventors). What makes me proudest of my long tortured career is that most of my attorneys have been brighter then me and have had better judgment.

    Imagine, trying to make a living inventing your heart out over decades playing strictly by the rules (who am I to judge the rules?) and finally successfully patenting a huge potential winner under one set of patent statutes, and, when you finally get to a Federal Court, the Federal Circuit Court of Appeals and the Supreme Court, with a most prestigious, historically-successful law firm backing up your patented invention with all their might and resources, to then learn that the patent field has changed so substantially as a result of disingenuous despicable lobbying dishonestly perpetrated by companies like Cisco and others in league with the sell-out-America, greed-driven agenda of the international “Coalition for Patent Fairness” and their ilk, PTO management who have no inkling of what the inventive mind can create, couldn’t give a scheiße in any case, and wouldn’t know how to manage a paper route, and patent-incompetents, who have neither the time nor inclination to comprehend the subtleties of a fresh approach to an old problem, sitting on patent court benches when they should be sitting on park benches studying the patent statutes and the Constitution, and porky-pig Congressmen who would sell out their mothers for big business’s contributions, hookers and other favors from lobbyists – well, it is a bit discouraging (is that all one sentence?; come to think of it, I don’t recall ever seeing a dash “–” in a patent claim; I wonder why?).

    However, if it was an easy business, it would not hold my interest.
    I like to fight – it keeps me young at heart. Stay well, gute Gesundheit und Glück

  6. 43

    Hello conventional Inventor, aka JAOI(TM), in answer to your question above, yes I do permit you to use all means at your disposal to decide what weight to put on my written submissions to this blog. With anonymous postings on the internet, we agree that’s the only sensible way to proceed. Our shared faith is that what we write will chime in with the knowledge our readers have accumulated from other sources. Now me, I’m aiming at a reader who is a professional practising patent attorney with enough specialist knowledge of world patent law usefully to assimilate what I write. Now you, as a client of M&C, do have relevant knowledge (and you’re more intelligent than some of the attorneys posting here), which is why feedback from your good self is interesting for me.

  7. 42

    … is sitting on his hands

    USA invented globalised capitalism, but can’t deal with the consequences. It’s a Frankenstein type scenario, dig? Globalise yr patent system, mofos.

  8. 41

    I’m curious.

    The Examiner made a request for information. Let’s suppose that the request has merit (there is indeed more than one inventor and more than one claim).

    Did the applicant timely file an IDS? Let’s for the sake of discussion say she did.

    I notice that the § 1.56 duty “is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was… submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.” 37 C.F.R. § 1.56(a). I also notice that the manner prescribed does NOT require individual inventor/separate claim mapping.

    Since the Examiner requested the information under 1.56 and the duty under 1.56 is deemed satisfied with an IDS (regardless of multiple inventor issues), should the Examiner have requested the information under 37 C.F.R. 1.105 rather than 1.56?

  9. 40

    Hands up all those who admire a multi-page tortuous mathematical proof more than an elegant ten liner. Hands up all those who prefer a million word tax statute to one with an order of magnitude less words. Hands up all those who prefer, in their patent statute, a thousand word definition of “novel” to a <100 word definition. Now tell me: What possible reason (other than the one I postulate above and which JAOI confirms, namely, confuse the aliens, and bill more hours) could explain that preference. Just interested, that's all.

  10. 39

    Dear Babel Boy,

    Please explain why you continue to call me a troll?
    Do you have any basis for your repeating this slur?

  11. 38

    Dear Your Honorable Holmes Jr.,

    Thank you. Coming from you, it makes me feel special, not so ordinary.

  12. 37

    Stand back, folks. Just an Ordinary Troll is off his meds again. He’s already blathering about “Libel Law.” (Upper case original.)

    Judging from Troll’s past disgusting comments on this blog, his foul mouth will kick in pretty soon.

    Katie, bar the door, please.

  13. 35

    What’s wrong with the U.S. patent statutes and unconstitutional interpretations thereof is that they are changing almost daily dancing to the tunes of domestic and foreign anti-American propagandist, some anonymous and some no so anonymous, who want to dummy down U.S. patent system, like disingenuous despicable Cisco and others in league with the sell-out-America, greed-driven agenda of the “Coalition for Patent Fairness” and their ilk, PTO management who wouldn’t know how to manage a paper route, and patent-incompetents sitting on court benches when they should be sitting on park benches studying the Constitution.

    Did I leave anybody out? Oh, yes, I did, please forgive me …

    – those porky-pig crooks in Congress that dance to special interests of international big business and their lobbyist-pimps.

    With all due disrespect, of course.

  14. 34

    My understanding of this PTO form paragraph is that it applies where there are joint development agreements slicing up ownership of the various contributions of inventors working for different companies or providing for multiple ownership of patent claims.

    In the US, 102(e) prior art is novelty-only (no 103 rejection) only in the case where there is common ownership between the claim under consideration and the prior art; whereever there is differing ownership, 103 rejections can apply using 102(e) prior art.

    Your duty of disclosure applies to revealing unusual ownership differences among claims in a single patent application.

  15. 33

    A simple 103 analysis is hardly cut and dry. I can point to at least 10 cases off the top of my head. Cut and dry. LOL. On that me and babel might find common ground.

    Jaoi, you don’t understand the word “right”. Until you get that down you have no room to talk.

  16. 32

    Babel Boy,

    I was referring specifically to use of 103(c). I’ve never had any particular difficulty in determining whether I could use that section, nor have I ever met any other practitioner who had great difficulty. Disqualifying commonly owned prior art using 103(c) is a fairly simple task.

    If you’re a patent attorney and you can’t determine the effective prior art date of a prior art reference, you’re in the wrong business.

    I’m in agreement with your comments on Bilski.

    But the notion that it is an “indisputable fact” that provisions of our statute are “mind-bogglingly complex” is simply silly.

    I just disputed it. Ipso facto, it’s disputable.

  17. 31

    As I said before:
    “I’d think there is ample evidence right here on this blog to demonstrate that there is no-one anywhere under the sun who is bright enough to deal with all of the Kafkaesque complexities of American patent jurisprudence.”

    to which I might add

    …, including the judiciary, and anyone who thinks otherwise is delusional.

  18. 30

    Dear Mr. Boy,

    With all due respect, you don’t even understand basic Libel Law. It is no wonder that you are lost when it comes to sophisticated intellectual property law.

  19. 29

    Man, whoever suggests that American patent law is “cut and dried” is not even vaguely in touch with the case law, particularly over the last 10 years.

    For instance, we’ve just had a monumental CAFC case that asks the simple question: what is patentable?. This case, which cancels numerous prior cases and is going to affect the viability of 15,000 existing patents, generated, what?, 5, opinions, the majority of which borders on bizarre. Real simple, this stuff.

    Sure, looking at the statues individually, one of limited or no appreciation of the real complexities might be deceived into thinking it’s all pretty easy. But try to understand the statutory/judicial concepts of anticipation, inventorship, obviousness, ownership, enablement, priority, and patentable subject matter all within the context of specific facts and shifting case law, and you’ve got what some scholars refer to as the most complex body of American law. Cut and dried. Ha.

  20. 28

    I’m well aware of who’s agitating for “reform” of our patent system.

    I voted for Obama. So sorry to contravene your preconceived notions about those who aren’t buying your “the European patent system is perfection” sales pitch.

    I’m still unclear on how you can declare the “mind-boggling complexity” of our 103(c) to be an “indisputable fact” when the vast majority of the European, and Japanese, patent attorneys I deal with it understand it just fine. Your inability to get it doesn’t justify changing it.

    Seriously, what don’t you understand? Are you incapable of following a simple flow chart?

  21. 27


    Re: “… you’re entitled to your opinion. Do you permit me to give it the weight I think it deserves?”

    Mit allen Mitteln. Und umgekehrt?, in Ordnung?

  22. 26

    What I’m not getting Somebody is simply why the US Statute renders such simple issues “is it novel” and “is it obvious” so complicated. Europe says it all in a few words. Is anything worthwhile gained, from the full multi-page majesty of 102 and 103? I just happen to like the maxim “Keep it Simple”.

    Of course your associates say they understand. If they say anything else, it will cost them yet more money. They are paying you to progress their cases, no? And you do, don’t you?

  23. 25

    Quite some people, Somebody, are urging change in the US patents system, making the bizarre suggestion that it’s somehow “broken”, Be that as it may, I don’t think anybody at all (last of all, me) is contending that the US system should be changed just to please me. Actually, I like the system the way it is cos I can make more money that way. But if it comforts you to think that it’s aliens who are generating the pressure to change the US patent system, feel free. You’re like that McCain voter quoted the other night “Why am I voting for McCain? Because all the foreigners want Obama.” JAOI, from my side, you’re entitled to your opinion. Do you permit me to give it the weight I think it deserves?

  24. 24

    “Suppose that nobody except an American has any hope of understanding US patent law.”

    Why would you suppose this? In every situation in which I’ve faced commonly owned 102(e) prior art, I’ve mentioned to my associate, usually Japanese or European, the possibility of disqualifying it under 103(c). They all understand it.

    Max, what is it that you’re not getting?

  25. 22

    It’s cut and dried, Max. To all of us who deal with it every day. Determining inventorship and the effective prior art date of published applications and patents is pretty much routine stuff. The PTO even has a handy-dandy 102(e) flow chart on its website to remind all of us. Not that we need reminding.

    Using 103(c) to disqualify 102(e) art is fairly simple. You ask the questions that need to be asked, you do the analysis that is required, and you arrive at a conclusion as to whether it (i.e. disqualification) can, or can’t, be done. If that’s beyond the capabilities of the members of your vaunted profession over there, that’s your problem.

    But we’re not going to change our system just to make you feel better about your inadequacies.

  26. 21

    Well, Jaoi (and nice to hear from you again) I thought you might. I deal with the complexity as best I can. And I’m not sure I said it was my own mind that was boggled. But be that as it may, I did stop short of repeating the earlier (American?) correspondent’s “inanity”. There may be method in it, hence my question.”Dry” you write, Somebody. If you mean “decided” why don’t you write “cut and dried” like everybody else? Or maybe you mean “dry” as in “the law is a dry and dusty subject”? Or maybe you’re not quite sure what you mean.

  27. 20

    JAOI, I’d think there is ample evidence right here on this blog to demonstrate that there is no-one anywhere under the sun who is bright enough to deal with all of the Kafkaesque complexities of American patent jurisprudence.

  28. 19

    My bad, I just blew through it and thought it was talking about 103c. I personally don’t use this FP. Actually I don’t use many FP’s at all in most OA’s except the ol’ faithful restriction and the basic 112/102/103 ones to introduce the rejection. I should probably use more.

    I always did wonder about how the vast inventor schemes running through the claims would affect 102g art though. For that matter, I don’t understand why 102g/103 defenses don’t routinely arise in litigation.

    On that note, a hypothetical. If Inventor A, an employee of Inventor B, invents a new device. Inventor B then comes along and adds a well known piece to the new device before Inventor A gets a chance to publish or anything of the sort, and files an application. Inventor A is under contract to assign all rights to Inventor B, his boss. Inventor B lists only himself on the application. Inventor A makes a big stink about the inventorship and tries to get in on the patent rights since the invention is a huge success.

    Who is the proper inventor? If the inventor is inventor A, then would the patent be shown to be invalid over 102g/103? Or, would Inventor A merely have to be added in on inventorship and be forced to assign all of his portion to Inventor B?

  29. 18

    I agree with somebody; and I’d add:

    If I were a patent attorney, whether American, European or otherwise, I’d be embarrassed to admit not being bright enough to deal with the complexities of American patent jurisprudence.

  30. 17

    “Mind-boggling complexity is an indisputable fact.”

    Your mind must boggle easily. It’s all pretty cut and dry to the rest of us.

  31. 16

    Mind-boggling complexity is an indisputable fact. The interesting question, Babel, is the perception in the Congress, whether or not it is in the national interest of the USA to preserve in perpetuity that level of complexity. Suppose that nobody except an American has any hope of understanding US patent law. Does that not bring home advantage to those playing at home? One does not willingly concede “home advantage” right?.

  32. 15

    “Now, Claim 1 is actually prior art to claim 2 under 102(g) since it is by a different inventive entity.” Patent Leather

    What you’re rightly pointing out, PL, is another example of the mind-boggling inanity of the first to invent system.

  33. 14

    I’ve seen that standard paragraph no less than one thousand times… If common ownership was not present prior to filing, there may be some issues. I recommend doing nothing (except immediately hiring a good patent attorney).

  34. 13

    The e, f and g prohibitions are unconstitutional under the first and fifth amendments of the U.S. constitution, in my opinion. Don’t rely upon them.

  35. 12

    “The issue is owndership, not inventorship.”

    Keep punching up those form paragraphs, 6k. You’re bound to stumble upon one that’s actually applicable at some point.


  36. 11

    I have wondered about this too, but I think it applies to the following scenario: You file an application the following claims:
    claim 1 invented by A
    claim 2 invented by A,B
    Before inventing, B had no agreement or understanding to assign his invention to anyone. Also, before B invented, A actually reduced his invention (claim 1) to practice.

    Now, Claim 1 is actually prior art to claim 2 under 102(g) since it is by a different inventive entity.

    A similar situation may arise with regard to 102(f) based on the Oddz On Products case if for some reason A is not considered an inventor of claim 2.

    These are limited situations, and if they don’t apply, then I think there is no obligation to otherwise point out such inventorship issues/dates.

  37. 9

    ” recently got one of these for an application that names a SINGLE inventor.

    Posted by: anonymousAgent | Nov 06, 2008 at 11:37 AM

    I’ve also seen this on an application with only one inventor. Is the form paragraph is automatically included unless the Examiner deletes it?”

    The issue is owndership, not inventorship.

  38. 8

    “If the applicant does disqualify the 102(e) art, and the examiner issues a new ground of rejection, the Office Action cannot be made final.”

    Which is the stup idest thing evar. You should have to have established owndership BEFORE the OA issues in order for this to apply. If you wait until after the OA it should be final since it’s the applicant’s “fault” that there had to be a new grounds of rejection. Like with an IDS submission after first OA.

  39. 7

    I’ve also seen this on an application with only one inventor. Is the form paragraph is automatically included unless the Examiner deletes it?

  40. 5

    “If the applicant does disqualify the 102(e) art, and the examiner issues a new ground of rejection, the Office Action cannot be made final.”

    Except where Applicants’ amendment several office actions ago necessitated the finality.

  41. 4

    The PTO is not under any obligation to provide any explanation. The form paragraph is inserted into the Office Action because the examiner, when relying on 102(e) art, is supposed to anticipate that applicant might disqualify the art under 103(c). If the applicant does disqualify the 102(e) art, and the examiner issues a new ground of rejection, the Office Action cannot be made final. In other words, the form paragraph is a reminder to the examiners, not the practitioners.

  42. 3

    Isn’t it rather nice of the USPTO to remind prosecuting attorneys of potential (whenever not “commonly owned”) booby traps? What I don’t understand is: why should OPLA feel itself under any obligation to provide any “explanation”?

  43. 2

    That is official USPTO form language. The Examiner is just doing his/her job.

    Personally, I read the form language as saying that requirements for 103(c) are being presumed — and therefore no 103(a) rejection should be given. I spoke with Office of Patent Legal Affairs (OPLA) at one point but I still didn’t get their supposed explanation.

  44. 1

    It’s a form paragraph that examiners insert into their Office Actions if they are using 102(e) art. Sometimes it gets inserted when it’s not needed.

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