​​Patently Strategic - Patent Strategy for Startups

Common Ownership: Whose prior art is it anyway?

May 23, 2022 Aurora Patent Consulting | Ashley Sloat, Ph.D. Season 2 Episode 3
Common Ownership: Whose prior art is it anyway?
​​Patently Strategic - Patent Strategy for Startups
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​​Patently Strategic - Patent Strategy for Startups
Common Ownership: Whose prior art is it anyway?
May 23, 2022 Season 2 Episode 3
Aurora Patent Consulting | Ashley Sloat, Ph.D.

In this month's episode, our experts help to demystify the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution. 

Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora leads this discussion along with our all star patent panel, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice. And if this all sounds like a foreign language or if you’re wondering why you might care, we include a primer that will help you quickly get up-to-speed on key concepts like inventorship, ownership, assignments, prior art, and terminal disclaimers.

One of the recurring themes of this podcast is helping inventors avoid sharp corners and we’ve found that these concepts in particular trip up a lot of newer inventors and the resulting problems that come from misunderstandings around these core concepts can be difficult to untangle.

Ashley is joined today by our always exceptional group of IP experts including:

⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist at Aurora
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ David Jackrel, President of Jackrel Consulting

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-common-ownership

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/

⦿ Twitter: https://twitter.com/AuroraPatents

⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/

⦿ Facebook: https://www.facebook.com/aurorapatents/

⦿ Instagram: https://www.instagram.com/aurorapatents/ 


And as always, thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

Show Notes Transcript Chapter Markers

In this month's episode, our experts help to demystify the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution. 

Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora leads this discussion along with our all star patent panel, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice. And if this all sounds like a foreign language or if you’re wondering why you might care, we include a primer that will help you quickly get up-to-speed on key concepts like inventorship, ownership, assignments, prior art, and terminal disclaimers.

One of the recurring themes of this podcast is helping inventors avoid sharp corners and we’ve found that these concepts in particular trip up a lot of newer inventors and the resulting problems that come from misunderstandings around these core concepts can be difficult to untangle.

Ashley is joined today by our always exceptional group of IP experts including:

⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist at Aurora
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ David Jackrel, President of Jackrel Consulting

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-common-ownership

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/

⦿ Twitter: https://twitter.com/AuroraPatents

⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/

⦿ Facebook: https://www.facebook.com/aurorapatents/

⦿ Instagram: https://www.instagram.com/aurorapatents/ 


And as always, thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

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Good day and welcome to the Patently Strategic Podcast, where we discuss all

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things at the intersection of business, technology and patents.

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This podcast is a monthly discussion amongst experts in the field of patenting.

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It is for inventors, founders and IP professionals alike, established or

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aspiring. And in today's episode, our experts help to demystify the

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concept of common ownership and how it can be leveraged to disqualify prior

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art that might otherwise cause a rejection during prosecution. Dr.

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Ashley Sloat, President and director of Patent Strategy here at Aurora, leads this

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discussion along with our all star patent panel, digging into common

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ownership exceptions, joint research exceptions, and terminal

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Disclaimer practice. And if this all sounds like a foreign language,

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or if you're wondering why you might care, do stay tuned for a primer

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that will help you quickly get up to speed on key concepts like inventorship,

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ownership assignments, prior art, and terminal disclaimers.

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One of the recurring themes of this podcast is helping inventors avoid sharp

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corners, and we've found that these concepts in particular trip up a lot of

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newer inventors, and the resulting problems that come from misunderstandings around

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these core concepts can be very difficult to untangle later.

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Ashley is joined today by are always exceptional group of IP experts,

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including David Cohen, principal at Cohen Sciences,

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Shelley Couturier, patent strategist and search specialist at Aurora,

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Amy Fiene petted attorney at Vancot, and adjunct professor at

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BYU, and David Jackerel, President of Jacque Consulting.

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Now about that primer. After giving the group discussion a second listen,

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we realize that there might be some gaps for some folks in the audience,

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and when that happens, we like to front load the episode with some extra context.

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I'm joined now by Ashley, who's going to help answer a few questions to get

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everyone on the same page before we dive into the thick of all of this.

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To understand the implications of common ownership, it's helpful to know how

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ownership is defined in the patent world, and also how it relates to

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inventorship. Inventorship and ownership are really two sides

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of a very similar coin as it pertains to patenting and who owns the idea

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and has the exclusive rights to practice it. Understanding how

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these concepts differ is critical to protecting your IP and avoiding

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costly legal disputes down the road. All right,

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Ashley, so toward the end of season one, we did an entire episode on inventorship

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that listeners should definitely check out, but at a

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high level, what is inventorship?

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Absolutely. So the US Constitution grants

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patents to inventors, and so what that means is

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that without additional legal frameworks,

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a patent will be issued to an inventor, and inventorship

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is dependent upon who conceived of the

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invention or who conceived of the idea.

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And even more so, taking it one step deeper.

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The claims of a patent define the meets and bounds

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of what is being protected. So if somebody contributed

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to one of those claims, they are determined to

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be an inventor. So just peer reduction to practice.

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So peer implementation does not necessarily make

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you an inventor, but it can if that implementation

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resulted in inventive concepts.

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So, for example, just the way you actually implemented

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the manufacturing process actually did result in

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it being inventive over existing methods,

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then you would be listed as an inventor even though you were taking somebody else's

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idea and implementing it. And so I guess to say it

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in another way, just because a company is paying

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inventors to invent for them or paying employees to invent for them,

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make new products, make new inventions, that does not necessarily mean

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that the company has the rights

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to the technology. It does rest in the inventors

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until the inventors assign their rights to the

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entity. Okay, that makes sense. So we'll get

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into the topic of this podcast, Common ownership in a little bit.

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Before we do that, could you explain what ownership is?

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So ownership is the entity

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that has the authority to file patent applications, at least under

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the America and Ben Sat, and take action in that pending application.

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So I think the most important aspect of that is that it's the

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owner that can enjoy all the rights of

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the patent, the right to exclude the right to prevent

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others from making, using, selling, offering for sale, or importing the claimed

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invention. Now, the inventor can be the

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owner. And that's the first

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instinct is that the inventor is the owner. But if the inventor assigns

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their ownership in the technology or in the package to

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a company, then the company becomes the owner. Or you could even assign it to

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another person, right? You could assign it to anybody, probably not your dog,

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but you could probably assign it to anybody or any entity. And then that entity

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now becomes the owner and has the right to kind of direct events

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related to that IP. And this is really important. There's been tons of Tesla

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around things not being done properly

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and entities or people thinking they own something and then coming to find

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out that they actually don't own it because things weren't done properly. So it's

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definitely an often confused balance between inventorship

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and ownership. All right, so in a situation like with an independent

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inventor, that's obviously pretty cut and dry, you have

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the idea to see you own the idea. But it also seems like

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things could get a little bit more complicated when you start talking about companies with

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employees or contractors who are doing the inventing.

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And it sounds like you were alluding to this earlier for sure. But if I'm

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understanding this correctly, the implication is that just

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because I own a company and pay employees or contractors who come up with ideas,

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that doesn't automatically give me ownership and the rights of the IP.

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Correct? Correct. As I said,

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the inventory owner are the same person without any kind of legal

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framework behind that. Just because you're paying the employee does

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not necessarily mean that you then have ownership

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of the idea. Ideally, our employees

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will assign their rights to a company so that the company can

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actually own the intellectual property and then do what it wants

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with it, and then they can then license the patent rights

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and do things like that. But ultimately,

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without some kind of legal framework, a legal tool,

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the inventor is going to be the owner. So then if employee

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inventors or contractors didn't assign their rights to the company,

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those inventors could profit from the invention even if no longer working

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for the company. Right. Like they could license the patents without sharing the royalties with

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the company. They could even become a competitor and sell a competing

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product. Absolutely. And like I said, there's been a lot of keys around that,

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too, even where it gets kind of grey

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as an employee who left a company,

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and they obviously conceived of ideas

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at the company, but then maybe they conceived of ideas afterwards,

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but maybe there's a continuum of ideas there

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at the company versus what they did independently. And then

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so how do you establish what was done at the company versus what was

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done independently and make sure that's clean and that you don't

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end up with an issue of someone trying to benefit from something that the company

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paid for and they were contractually obligated to assign

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versus somebody having a right to their thing that they did independent

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of the company. And so just making sure those lines are clear,

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there's been a lot of kids all around that where things were maybe

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not as clear as they needed to be, or there was some Gray area there.

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So very high level. What's the process then, for transferring those rights?

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It starts, at minimum, with employment agreements.

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Right. Every employment agreement should have a work for hire provision

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and or an assignment provision where it says something to be

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effective. The employee hereby assigned or

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has an obligation to assign any rights

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and intellectual property that was created

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as a result of their employment with the company. And so it needs

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to start there honestly, because when the second thing doesn't

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work out, which I'll tell you about in a second, when that second tool doesn't

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work out, we fall back on the employment contract. So the

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employment contract really has

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to have an assignment provision in there. So I would say this is highly important,

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even for super small companies where it's just you and your buddy.

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You should make an entity and assign the entity.

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So worst case scenario, you and your buddy don't

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get along anymore. At least there's an entity that has

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the rights and that you can then equally somehow separate from that company or

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get benefits from that company. It's kind of separate from the individual.

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So in the world where, God forbid,

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you don't have an employment assignment,

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an assignment provision in your employment contract, what we will always do

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is an assignment for the patent

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rights. So when you file a patent application, there's essentially like,

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one to two page assignment that basically says the

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inventors assign their rights to this entity.

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And it's pretty much common assignment language.

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There are some special assignments that you can do, but most of them are pretty

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boilerplate. And it basically just says that the inventors assign their rights

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to this entity, or they assign their rights to this other person or whatever the

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case may be, or this entity assigns their rights to another

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entity. So the assignment is kind of the legal

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tool that's used by a lot of practitioners like myself to make

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sure that the inventors rights are assigned to an entity. We will do it almost

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95% of the time. The other 5% being inventors who

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don't have an entity don't want to assign because it's just them.

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But even in those scenarios, I would actually recommend that inventors

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put their IP and their company into an entity

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just to kind of create a firewall between personal and business assets.

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And so I think it's honestly good practice, no matter your size.

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Okay, so inventorship is the conception of the idea, and ownership is by

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default. Ownership is possessing the rights and benefits of the granted

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patent, and assignment is how we get those rights from one to the other.

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This is a pretty solid baseline, but I'd also like to give the audience a

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high level overview of common ownership, which is really at the heart of

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this episode. To do that, we have to have an understanding of

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what prior art is and how prior art leads to section 102 and

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103 rejections from the patent office.

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I know this could be an entire episode of its own, but what is prior

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art, and how does it pertain to these rejections?

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Great question. So prior art is any evidence that

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is generally known to the public. So that could be websites,

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Journal articles, materials from trade

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shows, even dissertations material

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from books, obviously, patent documents. Right. Issue patents

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or patent publications. I mean, really, anything that,

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like, says publicly available. Again, there's definitely been case law

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around what,

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you know, how generally available to the public it has to

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be to actually count as public art. But suffice

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it to say a dissertation that you can prove that was

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never checked out at the library still counts as

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a prior art to your patent. So, I mean, it's pretty strong.

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Basically, if it's out there, when an examiner gets

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your patent application, he or she basically reviews

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the claims and does a search through the prior art through all

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these different databases. And if they find something

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that they believe is related to the claims that are on file, they'll basically

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give you a rejection in the office action. And so the rejection is

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around the ideas of industrial applicability,

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which almost everything has utility. Right. So that's a pretty low benchmark

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there. But then novelty and inventiveness and so they

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basically will give you rejections based on those grounds and a

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few others, of course. But for prior art, it's mostly these two.

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And so these novelty and inventiveness

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or non obviousness, as we call it in the US.

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These are in the US Code as 102 and 103,

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Sections 102. And so

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it's usually through these two avenues that the patent examiner

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will reject your application, and then it becomes kind of a bartering process

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or a back and forth argument process to

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prove to the examiner that your claims, your invention

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is indeed new and non obvious over

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any prior references that they found. That takes

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us nicely to common ownership. What is common ownership and what's the

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interplay with prior art? Yeah. So this topic

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00:13:01,886 --> 00:13:05,458
is pretty thick. And honestly, I feel like you could look

213
00:13:05,484 --> 00:13:08,918
this up in several different places and have a slightly different interpretation

214
00:13:09,014 --> 00:13:12,574
no matter who you read. But suffice it to say

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that we're going to

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00:13:16,456 --> 00:13:19,802
focus on the America and Ben's Act, we're not going to focus on

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00:13:19,876 --> 00:13:23,634
pre AIA because further complaints the topic.

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But suffice it to say that there are situations in which you've

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00:13:27,306 --> 00:13:30,830
created your own prior art. Right. So that prior art

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could be either public disclosures or like

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00:13:34,864 --> 00:13:38,822
you've presented at some pitch event, or it could be a

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00:13:38,836 --> 00:13:42,758
Journal article that you published or some kind of sales activity that

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you did. So that's one kind of disclosure

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00:13:46,450 --> 00:13:50,274
that could create a problem for you. And so in those situations,

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if the examiner finds that material and obviously if you know of those things,

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00:13:53,692 --> 00:13:57,820
you should disclose it to the Patent office. So let's say they see this

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00:13:58,990 --> 00:14:02,834
activity, and if it falls within a one year

228
00:14:02,932 --> 00:14:06,746
Grace period, within one year of your filing date,

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there is an exception. Under 102,

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the prior art rejection would be one. And the exception

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00:14:16,630 --> 00:14:20,638
is a Grace period exception of up to one year for disclosures

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00:14:20,674 --> 00:14:23,998
that you've made. Right. You've essentially made your own prior art. But there's

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00:14:24,034 --> 00:14:28,640
additional prior art under 102, a two that

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00:14:29,030 --> 00:14:32,238
in this situation, if you again, have created your own art, but in this case,

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00:14:32,264 --> 00:14:36,294
it would be a patent application. Let's say we're part of a company and

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00:14:36,332 --> 00:14:40,098
we patent lots of things and we patent lots of iterations of

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00:14:40,124 --> 00:14:43,782
things. So let's say that prior to our

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00:14:43,796 --> 00:14:47,658
filing date, we had filed patent applications directed to a

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00:14:47,684 --> 00:14:51,750
first generation product. And let's say later

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00:14:51,860 --> 00:14:55,462
after that filing, after that original

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00:14:55,486 --> 00:14:58,762
pen application publishes, we file another patent

242
00:14:58,786 --> 00:15:01,940
application. That's an improvement of that technology.

243
00:15:03,170 --> 00:15:06,934
And so in that case, again, examiner may find this prior publication

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00:15:07,042 --> 00:15:11,394
patent publication inside it as a rejection under your

245
00:15:11,432 --> 00:15:14,538
later file patent application. In that

246
00:15:14,564 --> 00:15:18,646
scenario, you may be able to use a common ownership

247
00:15:18,838 --> 00:15:22,374
exception, basically showing the Patent Office that these two

248
00:15:22,412 --> 00:15:26,398
patent applications are commonly owned. Now, most generally

249
00:15:26,434 --> 00:15:30,320
speaking, that prior art

250
00:15:30,830 --> 00:15:35,214
patent publication needs to be within one year of

251
00:15:35,372 --> 00:15:39,142
your filing date. There are some probably rare, crazy rare

252
00:15:39,166 --> 00:15:43,258
circumstances where it could be greater than that. But once you get greater

253
00:15:43,294 --> 00:15:47,586
than that one year exception, now that prior art falls under 102,

254
00:15:47,588 --> 00:15:51,118
a one, and it's no longer available for the common ownership

255
00:15:51,214 --> 00:15:55,198
exceptions, this is where it gets really muddy. And so that's why essentially

256
00:15:55,294 --> 00:15:59,518
suffice it to stay in a really easy way. There's two exceptions

257
00:15:59,614 --> 00:16:03,298
under 102. A one, it's a one year Grace period.

258
00:16:03,454 --> 00:16:07,270
Under 122, it's essentially a common ownership exception,

259
00:16:07,390 --> 00:16:11,310
with most likely within a one year time frame.

260
00:16:11,750 --> 00:16:15,714
And that's the most common ways you're going to come across that. And so in

261
00:16:15,752 --> 00:16:19,422
order to disqualify that prior art

262
00:16:19,556 --> 00:16:22,998
due to a common ownership exception, you have

263
00:16:23,024 --> 00:16:26,454
to be able to prove that the

264
00:16:26,492 --> 00:16:30,570
prior published patent application or issued patent and

265
00:16:30,680 --> 00:16:34,842
at the time of filing and your later filed patent application at

266
00:16:34,856 --> 00:16:38,718
the time of filing were under common ownership. And that could be under

267
00:16:38,804 --> 00:16:42,238
an obligation to assign based on contract language

268
00:16:42,274 --> 00:16:45,500
from your employment contract or could be due to an actual

269
00:16:45,890 --> 00:16:49,182
assignment that was filed in some examiners to

270
00:16:49,196 --> 00:16:53,000
request additional information. We had one case a number of years back where

271
00:16:54,170 --> 00:16:58,030
we had an assignment on file, but the assignment wasn't filed

272
00:16:58,090 --> 00:17:01,614
as of the filing date. It was filed a few days

273
00:17:01,652 --> 00:17:05,038
later with the Patent Office. Just the logistics of getting inventors

274
00:17:05,074 --> 00:17:09,190
to sign things. And so we actually had to go improve from employment

275
00:17:09,250 --> 00:17:12,738
contracts that they were under an obligation to assign as

276
00:17:12,764 --> 00:17:15,870
of the filing date. So, again, that's where having both of those pieces of

277
00:17:15,980 --> 00:17:19,582
proof is helpful. So that's

278
00:17:19,606 --> 00:17:23,000
kind of the thick and the thin of it, if you will,

279
00:17:23,630 --> 00:17:27,538
a lot of dots to connect to get there. But I think that's

280
00:17:27,574 --> 00:17:31,450
super helpful. Toward the end of the upcoming discussion,

281
00:17:31,570 --> 00:17:35,590
you and the panel talk about terminal disclaimers and double patenting.

282
00:17:35,770 --> 00:17:38,610
Could you briefly explain both? Yeah. I mean,

283
00:17:38,660 --> 00:17:42,318
usually double patenting leads to terminal Disclaimer filing, but not

284
00:17:42,344 --> 00:17:45,570
always. But there are two types of double patenting.

285
00:17:46,010 --> 00:17:49,902
And basically what it comes down to is the

286
00:17:49,916 --> 00:17:54,380
whole part of the patent system is that you publicly disclose your technology

287
00:17:55,490 --> 00:17:59,754
in favor of getting a monopoly, a limited monopoly from the government to

288
00:17:59,792 --> 00:18:03,462
benefit from that invention. But then it promotes the progress of the useful art.

289
00:18:03,536 --> 00:18:06,162
People can read about your invention and build upon it. Right. But you still have

290
00:18:06,176 --> 00:18:10,350
that monopoly of the base invention. But there are some

291
00:18:10,400 --> 00:18:13,640
cases where maybe through

292
00:18:14,270 --> 00:18:18,294
continuation practice in the US, or because

293
00:18:18,332 --> 00:18:22,398
you're iterating on a technology that a later

294
00:18:22,484 --> 00:18:26,118
filed application is very similar to

295
00:18:26,144 --> 00:18:29,898
an earlier filed application, or maybe just even claim sets arising from the

296
00:18:29,924 --> 00:18:33,678
same disclosure are highly similar. Right. You could

297
00:18:33,704 --> 00:18:37,690
end up with really similar claim sets or really similar fences

298
00:18:37,750 --> 00:18:41,218
around your invention, but maybe slightly different. And the Patent Office doesn't

299
00:18:41,254 --> 00:18:44,682
want you extending your 20 year monopoly by doing

300
00:18:44,816 --> 00:18:47,962
these different things to kind of extend that 20 year time frame.

301
00:18:48,106 --> 00:18:51,982
And so when they feel like two patents

302
00:18:52,066 --> 00:18:54,510
could protect essentially the same invention,

303
00:18:54,890 --> 00:18:58,390
what they give you is a double patenting invention. And sometimes it's a statutory

304
00:18:58,450 --> 00:19:02,226
one, which is not good, that basically says, like, this is the same thing,

305
00:19:02,408 --> 00:19:06,562
not okay. In a non statutory double patenting

306
00:19:06,586 --> 00:19:09,882
situation, they say that this is an obvious variation of

307
00:19:09,896 --> 00:19:13,398
this other one. And so you're basically trying to patent the same thing twice in

308
00:19:13,424 --> 00:19:16,914
a slightly different way. And so maybe a slightly different scope, but still not

309
00:19:16,952 --> 00:19:20,994
okay. And so what they basically say is that for

310
00:19:21,032 --> 00:19:24,690
the later filed patent,

311
00:19:25,070 --> 00:19:28,618
any patent term that extends beyond

312
00:19:28,714 --> 00:19:32,526
the term of the earlier filed one needs

313
00:19:32,588 --> 00:19:35,766
to be like, you basically are saying that it doesn't matter to me,

314
00:19:35,828 --> 00:19:37,280
and you can take that away.

315
00:19:39,050 --> 00:19:42,414
So let's say that the parent package was going to expire on

316
00:19:42,452 --> 00:19:46,326
today and the layer file patent was going to

317
00:19:46,448 --> 00:19:49,722
expire ten days later.

318
00:19:49,856 --> 00:19:53,250
Your terminal Disclaimer basically says, I'm okay with you taking away those

319
00:19:53,300 --> 00:19:56,574
ten days. If you give me these two patents, you can take away those extra

320
00:19:56,612 --> 00:20:00,620
ten days. And so that's what terminal Disclaimer essentially does.

321
00:20:01,370 --> 00:20:03,654
And so it's a way of just saying to the patent up, I said,

322
00:20:03,692 --> 00:20:07,102
I want these two patents. I'm okay with them having the same patent term.

323
00:20:07,246 --> 00:20:10,366
Fantastic. Thanks, Ashley. And with that, we will kick

324
00:20:10,378 --> 00:20:14,120
it over to the panel. So today I was going to talk about

325
00:20:15,350 --> 00:20:18,810
prior art and common ownership

326
00:20:19,190 --> 00:20:24,378
and all of that good stuff. Where that kind of started is I had some

327
00:20:24,404 --> 00:20:28,590
cases come up where it just seems like more and more nowadays people are sharing

328
00:20:29,150 --> 00:20:32,922
and selling stuff and doing things that they shouldn't do

329
00:20:33,116 --> 00:20:36,898
before we can help them. And so I was kind of curious

330
00:20:36,934 --> 00:20:40,242
about the common ownership piece. I think David Jack, I think you and I had

331
00:20:40,256 --> 00:20:43,902
talked about it at some point, too, and just were like, what are all the

332
00:20:43,916 --> 00:20:47,466
provisions around that? And so it was kind of an interesting little journey through

333
00:20:47,528 --> 00:20:51,282
some of the stuff I came to find.

334
00:20:51,476 --> 00:20:54,738
And so kind of started out with common ownership, but then kind of went through

335
00:20:54,764 --> 00:20:59,346
some joint research stuff and then kind of ended on some interesting

336
00:20:59,528 --> 00:21:02,722
terminal Disclaimer practice stuff that I think terminal

337
00:21:02,746 --> 00:21:06,646
Disclaimers we kind of take for granted. I think it's

338
00:21:06,658 --> 00:21:09,078
just like, you see one of those come up and you're like, oh, just follow

339
00:21:09,104 --> 00:21:13,146
terminal Disclaimer, no big deal. And there's actually some more interesting

340
00:21:13,268 --> 00:21:16,986
things that I think we don't always think about

341
00:21:17,048 --> 00:21:20,718
when we're doing that. And so that's kind of an interesting end to

342
00:21:20,744 --> 00:21:24,114
all of this. I'm going to go over obviously some of the things that we

343
00:21:24,212 --> 00:21:27,366
readily know around inventorship and ownership. But part of

344
00:21:27,368 --> 00:21:30,918
the reason I put these two up here at the beginning is that I feel

345
00:21:30,944 --> 00:21:34,414
like there's been a growing misunderstanding,

346
00:21:34,522 --> 00:21:37,698
at least from clients, of what inventorship means

347
00:21:37,784 --> 00:21:42,654
versus what ownership means. I have some clients who are

348
00:21:42,692 --> 00:21:47,058
concerned when you're talking about they

349
00:21:47,084 --> 00:21:50,358
think that because they are the owner of the company, then they start

350
00:21:50,384 --> 00:21:53,826
to be confused around why you would list people who worked on the technology

351
00:21:53,948 --> 00:21:57,174
as inventors, because then they're like, well, then I don't own

352
00:21:57,212 --> 00:22:00,114
the technology. And you're like, well, no, you do.

353
00:22:00,272 --> 00:22:04,266
You can. Your company can as long as it's assigned to the company

354
00:22:04,448 --> 00:22:07,818
or you have different companies

355
00:22:07,904 --> 00:22:12,200
making agreements with technology firms. And again,

356
00:22:12,890 --> 00:22:16,554
their company owns the technology because they paid a firm for it.

357
00:22:16,652 --> 00:22:19,998
But then they're not understanding that individuals at that company who

358
00:22:20,024 --> 00:22:23,482
contributed substantively to their technology should be listed

359
00:22:23,506 --> 00:22:27,222
as an inventor, and it doesn't take away your ownership. And so we've had

360
00:22:27,236 --> 00:22:31,146
some really weird things lately around that, and so just kind

361
00:22:31,148 --> 00:22:34,170
of wanted to start off with that distinction.

362
00:22:35,450 --> 00:22:38,674
As we all know, vendorship is who conceived

363
00:22:38,722 --> 00:22:42,066
of the invention and reduction to practice might not

364
00:22:42,188 --> 00:22:46,602
matter, especially if it's really just somebody

365
00:22:46,676 --> 00:22:50,550
receiving technical drawings and making it. Whereas if you're

366
00:22:50,930 --> 00:22:54,114
conceiving as you're reducing to practice, then of course,

367
00:22:54,212 --> 00:22:57,778
then that reduction to practice counts in terms of inventorship. And there's

368
00:22:57,814 --> 00:23:01,534
obviously a lot of great area in there. And then from an ownership

369
00:23:01,582 --> 00:23:05,442
perspective. So with the America Invented Act

370
00:23:05,576 --> 00:23:09,042
in 2012, the original applicant is presumed to be the

371
00:23:09,056 --> 00:23:12,238
owner. So that's like the person you list on the application data sheet.

372
00:23:12,274 --> 00:23:16,410
Right. Preaia, it was presumed to be the inventors.

373
00:23:16,790 --> 00:23:20,250
But then still today, you could transfer ownership

374
00:23:20,870 --> 00:23:24,690
appropriately to whatever entity that you deem appropriate

375
00:23:27,030 --> 00:23:29,998
so that all the inventors could own the technology.

376
00:23:30,084 --> 00:23:33,710
But then you can have them assign it to an entity so the entity

377
00:23:33,770 --> 00:23:36,960
owns it and can make decisions for that patent application.

378
00:23:38,370 --> 00:23:42,082
So then from a general overview for going deeper into the

379
00:23:42,096 --> 00:23:45,634
ownership side of things, obviously a brief overview or review

380
00:23:45,732 --> 00:23:48,658
of AIA 102 prior art,

381
00:23:48,804 --> 00:23:52,534
and then some of the common ownership exceptions. And if anybody has any

382
00:23:52,572 --> 00:23:55,860
experience with this or feedback, love to hear it, because it is,

383
00:23:57,030 --> 00:24:00,410
I think, just as we find with every area, lots of Gray

384
00:24:00,530 --> 00:24:04,510
area joint research exceptions, I don't have a time experience with

385
00:24:04,620 --> 00:24:08,362
a lot of joint research endeavors and then

386
00:24:08,376 --> 00:24:11,880
some interesting terminal Disclaimer practice that kind of stems from these.

387
00:24:13,290 --> 00:24:17,026
Yeah. So for AIA, prior art under 102 A,

388
00:24:17,208 --> 00:24:20,340
the first part of it, 102 A, one is all around

389
00:24:21,690 --> 00:24:25,630
publications, patented, printed publication on public use

390
00:24:25,680 --> 00:24:28,942
or sale prior to the effective filing date of the

391
00:24:28,956 --> 00:24:32,242
claimed invention, which the effective filing date now as of

392
00:24:32,256 --> 00:24:35,878
AIA is the date of the filing of your earliest application

393
00:24:36,024 --> 00:24:38,410
that claims that includes the invention.

394
00:24:39,810 --> 00:24:43,260
And so it's really anything in the world. And then

395
00:24:45,030 --> 00:24:49,018
invention was described in a patent issued or an application that

396
00:24:49,044 --> 00:24:53,162
was published or deemed published in which it names

397
00:24:53,186 --> 00:24:56,842
another inventor. And again, was effectively filed before the effective filing date of

398
00:24:56,856 --> 00:24:59,974
the claimed invention. So kind of basically, it's the whole

399
00:25:00,072 --> 00:25:02,400
on sale, in use,

400
00:25:02,970 --> 00:25:06,514
published, printed. And again,

401
00:25:06,552 --> 00:25:09,898
you can go a whole discussion around what

402
00:25:09,924 --> 00:25:12,960
is considered prior. There's been lots of discussion around that, right.

403
00:25:13,290 --> 00:25:16,522
Was it actually available to the public? Was a dissertation that sat on a

404
00:25:16,536 --> 00:25:19,918
library shelf that never got touched, never got checked out? Is that

405
00:25:19,944 --> 00:25:22,798
prior art? So obviously, a whole discussion around that that we're not going to go

406
00:25:22,824 --> 00:25:26,218
into today. So the exceptions that

407
00:25:26,244 --> 00:25:31,354
relate to these so you have for

408
00:25:31,512 --> 00:25:35,566
exceptions for this one are under

409
00:25:35,628 --> 00:25:39,322
B. One. So these are the issues when you have a

410
00:25:39,336 --> 00:25:42,758
client that within a year of their effective

411
00:25:42,794 --> 00:25:46,260
filing date, they have sold it,

412
00:25:46,830 --> 00:25:50,494
published it, or somebody got

413
00:25:50,532 --> 00:25:53,926
it from them and published it or sold it

414
00:25:53,988 --> 00:25:57,526
before the effective filing date. So basically says disclosure is made

415
00:25:57,588 --> 00:26:00,902
one year or less before the effective filing

416
00:26:00,926 --> 00:26:04,474
date of the claimed invention shall not be prior art if the disclosure was made

417
00:26:04,512 --> 00:26:07,942
by the inventor or joint inventor or obtained from

418
00:26:08,016 --> 00:26:11,726
the inventor or joint inventor or the subject matter disclosed

419
00:26:11,798 --> 00:26:15,322
had been publicly disclosed by the inventor or a joint inventor or

420
00:26:15,336 --> 00:26:18,360
another who obtained it. So again,

421
00:26:18,690 --> 00:26:21,670
it's coming directly from the inventor in some way, shape or form,

422
00:26:21,720 --> 00:26:25,380
but one year or less before the effective filing date.

423
00:26:25,890 --> 00:26:29,374
The 102 B.

424
00:26:29,412 --> 00:26:32,160
Two, which is exceptions for one,

425
00:26:34,290 --> 00:26:37,622
are that disclosures appearing in applications

426
00:26:37,646 --> 00:26:41,594
and patents shall not be prior art. The subject matter was disclosed,

427
00:26:41,642 --> 00:26:43,930
again, directly or indirectly by the inventor.

428
00:26:44,790 --> 00:26:48,370
Actually, they're very similar, as you can see, to the first one you just described.

429
00:26:48,810 --> 00:26:53,150
And then also this one brings in the common ownership.

430
00:26:53,270 --> 00:26:57,094
So the subject matter disclosed not later than the effective filing date

431
00:26:57,132 --> 00:27:00,610
of the claimed dimension was owned by the same person

432
00:27:00,660 --> 00:27:04,030
or subject to an obligation of assignment to the same person.

433
00:27:04,200 --> 00:27:07,354
So although this one does not say one

434
00:27:07,392 --> 00:27:10,822
year or less through lots of scouring talking to some other people,

435
00:27:10,896 --> 00:27:14,698
this also applies to a one year timeline. So if it's more

436
00:27:14,724 --> 00:27:18,574
than that, you're out of luck. The other

437
00:27:18,612 --> 00:27:21,670
interesting thing that I've seen personally, we haven't dealt with this a ton,

438
00:27:21,720 --> 00:27:25,342
but we do on occasion have it is that as just all

439
00:27:25,356 --> 00:27:29,338
things do with the Patent Office, it varies heavily by examiner. We have

440
00:27:29,484 --> 00:27:33,118
had some cases where you can essentially just say make

441
00:27:33,144 --> 00:27:36,862
a statement in a response that as of the effective filing date,

442
00:27:36,996 --> 00:27:40,620
these two, this prior art reference and the current application

443
00:27:41,370 --> 00:27:46,118
were coowned or subject to an assignment or obligation

444
00:27:46,154 --> 00:27:49,946
of assignment to the same company. But we've actually had an examiner

445
00:27:50,078 --> 00:27:53,638
that in one case, as you

446
00:27:53,664 --> 00:27:57,098
do sometimes you don't have all the signed paperwork at the time of filing

447
00:27:57,134 --> 00:28:00,650
just because things happen. Inventors are slow at returning documents,

448
00:28:00,710 --> 00:28:04,510
all that kind of stuff. We've had it where we file an application

449
00:28:04,680 --> 00:28:08,498
and then a few weeks later, a few days later, you filed the assignment.

450
00:28:08,654 --> 00:28:11,770
And so the assignment then is recorded a few weeks later,

451
00:28:11,820 --> 00:28:15,382
a few months later with USPTO, and we actually had an examiner at

452
00:28:15,396 --> 00:28:19,030
some point basically say look at the assignment record

453
00:28:19,080 --> 00:28:22,510
and say, well, as of the assignment record in the Uscto,

454
00:28:23,370 --> 00:28:26,758
it wasn't co owned. And so we actually had to go back to

455
00:28:26,784 --> 00:28:30,480
the client and find their

456
00:28:32,310 --> 00:28:36,058
company agreements with these inventors that actually showed that they

457
00:28:36,084 --> 00:28:39,300
indeed had an obligation to assign. And so

458
00:28:39,630 --> 00:28:43,318
I think I have some practical tips at the end, but I think that

459
00:28:43,344 --> 00:28:46,930
just further goes to the point of stressing two

460
00:28:46,980 --> 00:28:50,794
clients when at all possible to have agreements in place,

461
00:28:50,892 --> 00:28:55,322
because I think it's so easy to start working with somebody, especially in contractors

462
00:28:55,406 --> 00:28:58,562
and tech groups and things like that, before having agreements.

463
00:28:58,646 --> 00:29:01,942
But then you get into this situation where the examiner doesn't take your statement at

464
00:29:01,956 --> 00:29:05,880
face value, they want more information and you don't have it.

465
00:29:08,590 --> 00:29:12,386
Good point. Yeah. And so this kind of goes to

466
00:29:12,508 --> 00:29:15,654
some of the cases that I found around common ownership with the P tab,

467
00:29:15,702 --> 00:29:17,440
the patent trial, and the appeal board.

468
00:29:19,270 --> 00:29:22,482
So a lot of times you can make that statement of owned or subject

469
00:29:22,506 --> 00:29:25,926
to an obligation of assignment to the same person or entity

470
00:29:25,998 --> 00:29:30,314
as of the fact of filing date. But then the PTAB has at

471
00:29:30,352 --> 00:29:33,938
various points required objective evidence of

472
00:29:33,964 --> 00:29:38,130
such assignments, such as assignment documents, corporate records, employee agreements,

473
00:29:38,190 --> 00:29:41,798
contracts, and even employee pay stubs to prove that there was

474
00:29:41,824 --> 00:29:46,598
indeed common ownership. So I think, again, that just goes towards not

475
00:29:46,624 --> 00:29:50,382
playing Lucy Goosey with having contracts

476
00:29:50,406 --> 00:29:54,422
in place. I know it's easy to do, but it

477
00:29:54,436 --> 00:29:57,758
can be really important. As you'll see, too, I go through some actually here the

478
00:29:57,784 --> 00:30:01,050
next slide talks about common ownership

479
00:30:01,110 --> 00:30:04,554
and how it does not necessarily include subsidiaries.

480
00:30:04,722 --> 00:30:08,234
There was a PTAB case where

481
00:30:08,392 --> 00:30:11,154
Crops and AG owned Bayer Crop Signs,

482
00:30:11,202 --> 00:30:14,406
Envy and Biogen Idec NA,

483
00:30:14,598 --> 00:30:17,978
so basically at a parent company and then two subsidiaries. And so when

484
00:30:18,004 --> 00:30:22,194
the examiner looked at the case originally, he construed the commonly

485
00:30:22,242 --> 00:30:25,550
owned to include that the assignees were

486
00:30:25,600 --> 00:30:29,102
wholly owned subsidiaries of a common owner. So again,

487
00:30:29,176 --> 00:30:32,954
all of them kind of works together, in his

488
00:30:32,992 --> 00:30:36,950
view, had kind of ownership over the patent portfolio.

489
00:30:38,050 --> 00:30:41,570
But they were trying to argue that

490
00:30:41,620 --> 00:30:44,802
there wasn't common ownership because I don't believe they wanted they didn't

491
00:30:44,826 --> 00:30:48,054
want the terminal Disclaimer, they didn't want to lose some of that patent term.

492
00:30:48,162 --> 00:30:52,190
And so there was Lehman's patents that were rejected for double patenting over

493
00:30:52,240 --> 00:30:56,262
two Straws patents. The Lehman's patents were co assigned

494
00:30:56,406 --> 00:31:01,242
to both Bear Crop Science and the Biogenic companies, which were the subsidiaries.

495
00:31:01,386 --> 00:31:04,938
And the Straws patents were assigned to the parent company, the Bear Crop Science,

496
00:31:04,974 --> 00:31:08,754
AG. And so what the teacher had determined

497
00:31:08,802 --> 00:31:12,090
was that the Lehmans and Strash patents were not commonly

498
00:31:12,150 --> 00:31:15,710
owned because under US law,

499
00:31:15,820 --> 00:31:19,070
a parent company does not own or have

500
00:31:19,120 --> 00:31:22,958
legal title to its subsidiaries patents, even when

501
00:31:22,984 --> 00:31:26,838
the subsidiary company is incorporated in a US jurisdiction.

502
00:31:26,994 --> 00:31:30,210
So there is like, you would still have to seemingly

503
00:31:30,270 --> 00:31:33,818
assign patents or license patents between the subsidiaries to

504
00:31:33,844 --> 00:31:37,094
create some kind of co ownership relationship.

505
00:31:37,252 --> 00:31:41,680
And so in this case, they were subsidiary companies,

506
00:31:42,250 --> 00:31:45,614
and that parent company did not have right to those patents. And so for that

507
00:31:45,652 --> 00:31:49,540
reason, a requirement for

508
00:31:50,110 --> 00:31:53,090
Terminal Disclaimer or double patenting,

509
00:31:53,590 --> 00:31:57,522
basically, they would still have to build a show non obviousness

510
00:31:57,666 --> 00:32:01,346
over those patents. But there was no requirement then to have to do a

511
00:32:01,348 --> 00:32:04,706
terminal Disclaimer. And one of

512
00:32:04,708 --> 00:32:08,682
the interesting things that the PTAB has said is the legal authority and evidence

513
00:32:08,826 --> 00:32:12,400
for patent owners that Patine owners must rely on to support their position

514
00:32:13,210 --> 00:32:16,566
that an overlap in ownership does not exist between Lehman's

515
00:32:16,578 --> 00:32:20,886
and Strash Pants is more persuasive than the examiner's public policy justification.

516
00:32:21,078 --> 00:32:24,410
So the examiner was kind of saying, well, look, the whole point of this,

517
00:32:24,460 --> 00:32:28,218
he's kind of saying this was like an easy, like a loophole to skirt

518
00:32:28,374 --> 00:32:32,178
the whole issue that you don't want companies extending

519
00:32:32,214 --> 00:32:36,026
their patent term unfairly by having

520
00:32:36,088 --> 00:32:39,870
these really highly similar patent applications

521
00:32:39,930 --> 00:32:43,038
or patents issuing. So the effect of your 20 year term

522
00:32:43,074 --> 00:32:46,778
becomes a 25 year term. And they said, we understand your

523
00:32:46,804 --> 00:32:50,150
public policy justification, and we don't necessarily disagree with that.

524
00:32:50,200 --> 00:32:52,830
But the patent owner,

525
00:32:53,010 --> 00:32:56,138
basically they were right in the sense that based

526
00:32:56,164 --> 00:32:59,238
on US law, that overlap in ownership

527
00:32:59,274 --> 00:33:02,920
does not technically exist. I thought that's interesting.

528
00:33:03,370 --> 00:33:07,082
I'm sure there's also cases, and actually the next one is a

529
00:33:07,096 --> 00:33:10,670
little bit different, but kind of similar where common

530
00:33:10,720 --> 00:33:14,618
ownership does not necessarily include exclusive licenses either.

531
00:33:14,704 --> 00:33:18,642
So there was a court case with the Federal Circuit Immunex, the Sandals,

532
00:33:18,726 --> 00:33:22,098
and so the parties, the patent

533
00:33:22,134 --> 00:33:25,806
owner, Roche, an exclusive license alleged

534
00:33:25,878 --> 00:33:29,920
Infringer, and the infringer was Sandaw's. So again,

535
00:33:30,250 --> 00:33:33,470
Rosha is a patent owner, license is Immunex.

536
00:33:33,970 --> 00:33:37,514
Roche and Munich are kind of in a relationship, some kind of

537
00:33:37,552 --> 00:33:41,934
potential co common ownership, and then the infringer of Sandoz.

538
00:33:42,102 --> 00:33:46,298
And so there was an accord and satisfaction agreement between Rush and

539
00:33:46,324 --> 00:33:49,658
Immunex. And so what Santa was trying

540
00:33:49,684 --> 00:33:53,622
to argue was that, again, there was common ownership

541
00:33:53,766 --> 00:33:58,958
because of this agreement with terminal Disclaimer and

542
00:33:59,104 --> 00:34:03,210
different patent terms and so invalidity

543
00:34:03,270 --> 00:34:07,002
because of that. So Rush had but what

544
00:34:07,016 --> 00:34:10,614
the Federal Circuit had determined was that as part of their

545
00:34:10,652 --> 00:34:12,810
accord and satisfaction agreement,

546
00:34:13,550 --> 00:34:17,202
Immunex, originally as the exclusive license, had all rights to

547
00:34:17,216 --> 00:34:20,742
sue. However, if Immunex had decided at any one point in

548
00:34:20,756 --> 00:34:24,726
time to not sue, then that interest

549
00:34:24,848 --> 00:34:28,662
fell to Roche, and Immunex could not rectify the

550
00:34:28,676 --> 00:34:31,350
infringement or frustrate Roche's efforts in that regard.

551
00:34:31,400 --> 00:34:34,926
So once the rights to sue fell to Roche, there was nothing in

552
00:34:34,928 --> 00:34:38,274
Munich could do to change it, right? Because they decided not

553
00:34:38,312 --> 00:34:42,114
to, and Roche decided to do it. So the National Circuit said because that

554
00:34:42,152 --> 00:34:46,158
Roche could still retain their rights in the event that Munich decided not to

555
00:34:46,184 --> 00:34:49,458
act, that they still had

556
00:34:49,604 --> 00:34:56,482
some control over the patents basically

557
00:34:56,556 --> 00:35:00,914
this differentiated from seed play versus Bebop,

558
00:35:01,022 --> 00:35:04,418
where the licenser retained right to sue

559
00:35:04,574 --> 00:35:08,738
basically didn't really exist because the licensee

560
00:35:08,774 --> 00:35:12,074
could nullify their right by granting the alleged a royalty

561
00:35:12,122 --> 00:35:15,394
free sub license. So it was one of those

562
00:35:15,432 --> 00:35:19,034
things where because Roche could have the right to sue,

563
00:35:19,202 --> 00:35:22,774
they still fully owned it. So there was no common ownership because

564
00:35:22,812 --> 00:35:26,714
Roche completely still had ownership of the pens. They just had this license

565
00:35:26,762 --> 00:35:30,074
with them, but they still had full control in the event that in Munich

566
00:35:30,122 --> 00:35:32,820
decided not to pursue it.

567
00:35:33,510 --> 00:35:36,442
And so again, it just really comes down to the devil in details about how

568
00:35:36,456 --> 00:35:40,310
these agreements are structured. If your licensee

569
00:35:40,370 --> 00:35:44,134
has full control and even if they decide not

570
00:35:44,172 --> 00:35:47,362
to take control, you still have no rights to do anything about it

571
00:35:47,376 --> 00:35:51,214
or as a licenser decide to control. But they can

572
00:35:51,252 --> 00:35:55,378
frustrate that by doing some kind of license, then you

573
00:35:55,404 --> 00:35:58,858
really don't own the patent anymore. I think

574
00:35:58,884 --> 00:36:02,866
that was kind of their takeaway. And so I think it's just again,

575
00:36:02,928 --> 00:36:06,778
it's not as cut and dried. I mean, I think most clients that we work

576
00:36:06,804 --> 00:36:10,238
with are pretty cut and dried. Right. It's one company that's having a license,

577
00:36:10,274 --> 00:36:14,434
but it can get sticky. I know we even have a client that has

578
00:36:14,592 --> 00:36:18,118
a US company and then a Belgian company,

579
00:36:18,204 --> 00:36:21,478
and we assign most of their patents to their Belgian company because they

580
00:36:21,504 --> 00:36:25,190
get tax benefits in Belgium.

581
00:36:25,370 --> 00:36:29,350
But then that creates a problem now because if

582
00:36:29,460 --> 00:36:33,178
some of them are retained by the US company and

583
00:36:33,204 --> 00:36:37,058
they have some with their Belgian company, you then have to be able to prove

584
00:36:37,154 --> 00:36:40,150
common ownership between those entities.

585
00:36:41,010 --> 00:36:45,490
If you were to want to overcome some kind of obviousness type double patenting

586
00:36:48,970 --> 00:36:50,750
kind of screwy.

587
00:36:53,090 --> 00:36:56,890
And then so the other common ownership is under joint research agreements.

588
00:36:57,070 --> 00:37:01,062
So the subject matter was developed in joint research agreement and

589
00:37:01,076 --> 00:37:04,594
the claimed invention wasn't made as a result of the agreement.

590
00:37:04,762 --> 00:37:08,590
And the application for patent discloses the names of the parties

591
00:37:08,650 --> 00:37:12,394
to the joint research agreement. So that can also be a common ownership.

592
00:37:12,562 --> 00:37:15,790
And so what they have regarded as joint research agreements,

593
00:37:15,850 --> 00:37:20,050
obviously a written contract, some kind of grant, some kind of cooperative agreement,

594
00:37:20,230 --> 00:37:23,838
and obviously it can be in the experimental field, developmental research

595
00:37:23,924 --> 00:37:27,114
work. And I think some of the interesting things

596
00:37:27,152 --> 00:37:30,690
that come out of this and now it's more complicated. Right. Because it's not

597
00:37:30,740 --> 00:37:34,534
just one company or a company with subsidiaries

598
00:37:34,642 --> 00:37:38,386
or a company with license fees. Now you have like two parties

599
00:37:38,458 --> 00:37:42,906
or more who effectively own it. Right. That has some parts of

600
00:37:43,028 --> 00:37:47,002
the pie who

601
00:37:47,136 --> 00:37:51,406
potentially could be at odds with one another at any given point. And so

602
00:37:51,528 --> 00:37:55,586
from a terminal Disclaimer practice, again, to overcome that obviousness

603
00:37:55,658 --> 00:37:58,966
type double patenting and

604
00:37:58,968 --> 00:38:02,770
you do a terminal Disclaimer, you are basically waiving the right to

605
00:38:02,820 --> 00:38:06,458
separately enforce any patent granted

606
00:38:06,494 --> 00:38:10,318
on that application. You have the disclaimed patent and

607
00:38:10,344 --> 00:38:13,982
the Disclaimer patent. And if those are ever sold

608
00:38:14,126 --> 00:38:17,278
separately, you can't enforce them, something that gets really

609
00:38:17,304 --> 00:38:21,502
sticky from a joint research perspective, because if company A all

610
00:38:21,516 --> 00:38:25,634
of a sudden decides that they're going to pursue more heavily

611
00:38:25,802 --> 00:38:29,206
Company X from this joint research,

612
00:38:29,388 --> 00:38:34,006
and Company B decides that they're going to more heavily pursue technology

613
00:38:34,128 --> 00:38:37,920
Y from the joint research, and they kind of go their separate ways,

614
00:38:38,550 --> 00:38:42,302
and those were terminally displayed to one another. Now you're kind of breaking

615
00:38:42,326 --> 00:38:46,226
that link between them, and you might not be able to enforce those patents

616
00:38:46,418 --> 00:38:50,350
at some later date. And so under the Create

617
00:38:50,400 --> 00:38:53,866
Act of 2004, two patent applications of different

618
00:38:53,928 --> 00:38:57,902
ownership are considered commonly owned. If the invention issue was made pursuant

619
00:38:57,926 --> 00:39:02,054
to a joint research agreement, the invention was within the scope of the agreement

620
00:39:02,222 --> 00:39:05,242
and the parties of the agreement of the applicants of the application. So,

621
00:39:05,256 --> 00:39:09,660
again, this goes towards having really good agreements in place of what

622
00:39:10,110 --> 00:39:13,402
each company brought to the table, what each

623
00:39:13,476 --> 00:39:17,314
company created as a part of this

624
00:39:17,472 --> 00:39:21,398
development. Because otherwise, if that's not clearly,

625
00:39:21,494 --> 00:39:25,226
clearly spelled out, I think it could have really problematic,

626
00:39:25,358 --> 00:39:28,802
you know, what happens with their existing portfolio

627
00:39:28,946 --> 00:39:31,800
that they bring to the table versus something that they share together.

628
00:39:33,750 --> 00:39:37,582
And so from kind of going back to

629
00:39:37,596 --> 00:39:40,774
this whole terminal Disclaimer, it's been

630
00:39:40,812 --> 00:39:44,230
kind of a crazy route through some of this stuff, kind of coming across different

631
00:39:44,280 --> 00:39:47,410
things. But some of the terminal Disclaimer practice that

632
00:39:47,460 --> 00:39:51,022
kind of came across, which is that the one way test,

633
00:39:51,096 --> 00:39:54,598
which I think is what most examiners do is very much the default is whether

634
00:39:54,624 --> 00:39:58,826
the asserted patent is obvious over or anticipated

635
00:39:58,898 --> 00:40:02,350
by an earlier issued patent. I think that's

636
00:40:03,210 --> 00:40:06,598
when you're prosecuting, that's kind of commonly what you see. Right. But then

637
00:40:06,624 --> 00:40:10,558
there is a rarer two way test where for

638
00:40:10,584 --> 00:40:15,480
whatever reason, a second filed patent application issues before

639
00:40:16,350 --> 00:40:19,546
an earlier filed patent application.

640
00:40:19,668 --> 00:40:22,922
So they're kind of even though one was filed earlier, for whatever reason it ends

641
00:40:22,946 --> 00:40:26,698
up issuing later. This has

642
00:40:26,724 --> 00:40:30,022
to be because the PTO is responsible for the delay in the issuance of the

643
00:40:30,036 --> 00:40:33,574
first filed application. And so in those cases, there may be some kind of

644
00:40:33,672 --> 00:40:36,874
more interesting terminal Disclaimer practice because they

645
00:40:36,912 --> 00:40:40,860
still may be obvious over one another, but one technically has an earlier date.

646
00:40:41,190 --> 00:40:44,890
Then how do you rectify that? Because you can't.

647
00:40:45,390 --> 00:40:48,662
I'd have to do more homework. Honestly, on the two way test, I think it's

648
00:40:48,686 --> 00:40:51,838
quite rare, but I don't know how they

649
00:40:51,864 --> 00:40:55,306
rectified in that situation because you have one that

650
00:40:55,368 --> 00:40:59,146
issues and you can't cut

651
00:40:59,208 --> 00:41:02,218
short. I guess you could cut short that one.

652
00:41:02,364 --> 00:41:05,458
In theory, you would cut short that one relative to the other one if they

653
00:41:05,484 --> 00:41:08,714
were coowned then part of this joint research agreement.

654
00:41:08,882 --> 00:41:11,962
But then the examiner would have to be aware of this other one, assuming that

655
00:41:11,976 --> 00:41:16,102
that one was published. Right. So I think it's a weird chicken or egg thing.

656
00:41:16,176 --> 00:41:20,438
I don't know. And if the PTO is responsible

657
00:41:20,474 --> 00:41:23,494
for the delay, there could be a patent term adjustment, right,

658
00:41:23,592 --> 00:41:24,240
right.

659
00:41:27,250 --> 00:41:30,650
Yeah. But then there's also the

660
00:41:30,700 --> 00:41:34,394
safe harbor, which I guess it makes sense. I just never really thought about

661
00:41:34,432 --> 00:41:38,238
it. But when you have an obvious type double

662
00:41:38,274 --> 00:41:42,134
patenting rejection, that this

663
00:41:42,172 --> 00:41:45,602
wouldn't apply for divisional applications. Right. Because a divisional I mean,

664
00:41:45,616 --> 00:41:48,482
in theory, it's kind of a different invention anyway. So the office has already kind

665
00:41:48,496 --> 00:41:52,022
of said these are different, and because they're different, pursue it

666
00:41:52,036 --> 00:41:55,526
in a separate application. But if you ever got

667
00:41:55,648 --> 00:41:58,730
an obvious type double patenting rejection individual,

668
00:41:58,900 --> 00:42:02,454
it's improper. There's a safe harbor provision

669
00:42:02,502 --> 00:42:05,882
around terminal disclaimers with that because probably because the

670
00:42:05,896 --> 00:42:08,922
patent office has already said this is different, pursue it separately,

671
00:42:09,066 --> 00:42:13,134
and then for an examiner to come back and say they're obvious variations

672
00:42:13,182 --> 00:42:16,310
of one another would kind of be against what they've already stated, I suppose.

673
00:42:18,010 --> 00:42:21,362
But yeah, I feel like practitioners are

674
00:42:21,376 --> 00:42:25,418
getting smarter and smarter around avoiding restriction requirements in

675
00:42:25,444 --> 00:42:28,922
general. And so I feel like I can count the number of times I've done

676
00:42:28,936 --> 00:42:32,798
a divisional, probably because I feel like you try to avoid the

677
00:42:32,824 --> 00:42:36,918
issue altogether. But anyways,

678
00:42:37,074 --> 00:42:39,878
so, yeah, a lot of weird things. I guess kind of the things that came

679
00:42:39,904 --> 00:42:43,540
up in terms of practice is that

680
00:42:44,230 --> 00:42:47,618
when at all possible, ensuring the assignment is filed the same day

681
00:42:47,644 --> 00:42:51,878
as the application. I know that's really difficult sometimes, but I think what

682
00:42:51,904 --> 00:42:54,998
we had learned with one of our clients was just any way that you can

683
00:42:55,024 --> 00:42:58,514
button up things to make it lock tight in terms

684
00:42:58,552 --> 00:43:02,534
of when things were owned and not

685
00:43:02,572 --> 00:43:06,446
having to delve into contracts and agreements that

686
00:43:06,448 --> 00:43:09,686
you have to look through and redact or put on file and stuff,

687
00:43:09,808 --> 00:43:13,754
the better. And then we've actually had this come up for

688
00:43:13,792 --> 00:43:16,610
multiple reasons lately. I don't know what it is,

689
00:43:16,660 --> 00:43:20,190
but verifying that clients have agreements

690
00:43:20,250 --> 00:43:24,414
in place around who owns the iPad.

691
00:43:24,522 --> 00:43:27,942
Obviously, this poses problems only just from an ownership perspective,

692
00:43:28,026 --> 00:43:31,600
from how do you assign it when you're doing these

693
00:43:32,470 --> 00:43:36,462
activities? But then longer term, if there's ever a common ownership

694
00:43:36,606 --> 00:43:40,082
play to be made, you have to know who should have

695
00:43:40,096 --> 00:43:43,514
owned it at that time as well. We've had clients that have entered into

696
00:43:43,552 --> 00:43:47,978
development agreements with firms that they're paying with

697
00:43:48,004 --> 00:43:51,926
the internal understanding that because they paid

698
00:43:51,988 --> 00:43:55,682
a firm to develop the technology for them, that they own it. But then

699
00:43:55,696 --> 00:43:59,260
you have the firm come back and say, well, look, we use our base technology

700
00:44:00,310 --> 00:44:03,602
to develop this for you. And because

701
00:44:03,676 --> 00:44:07,658
of that, we own it, or we own a portion of it, and that

702
00:44:07,684 --> 00:44:11,210
could have all been sold had they had an agreement in place

703
00:44:11,260 --> 00:44:14,882
that said, this is your base tech. This is what we ask you to

704
00:44:14,896 --> 00:44:17,918
do. This is what we develop together. And because we paid you for it,

705
00:44:17,944 --> 00:44:22,130
we own it. It was our idea. You just reduced it to practice or whatever

706
00:44:22,180 --> 00:44:25,840
the case may be. So some sticky things

707
00:44:27,130 --> 00:44:30,374
and this doesn't come up crazy often, but I think it's something

708
00:44:30,472 --> 00:44:34,022
when you're starting to do reports for clients around

709
00:44:34,096 --> 00:44:37,430
diligence or licensing or things like that,

710
00:44:37,600 --> 00:44:41,320
make sure you clearly label when

711
00:44:42,670 --> 00:44:46,578
patents have been terminally disclaimed and which are the Disclaimer

712
00:44:46,614 --> 00:44:49,898
patents, because there's an individual that I've been

713
00:44:49,924 --> 00:44:53,874
working with for another client. And he said it's a really interesting negotiation

714
00:44:53,982 --> 00:44:57,758
piece. He said, you'll see, that really savvy sellers and

715
00:44:57,784 --> 00:45:01,218
buyers that if for whatever reason the seller didn't disclose

716
00:45:01,254 --> 00:45:05,426
the terminal disclaimers or forgot to or didn't realize it, whatever the case may be,

717
00:45:05,608 --> 00:45:08,978
the buyer who knows these terminal disclaimers will

718
00:45:09,004 --> 00:45:13,058
kind of keep it to themselves until like the 9th hour and

719
00:45:13,084 --> 00:45:16,362
then throw them on the table and be like there's terminal

720
00:45:16,386 --> 00:45:19,646
disclaimers. And if some of

721
00:45:19,648 --> 00:45:23,702
the Disclaimer patents are in a different family now,

722
00:45:23,776 --> 00:45:27,618
for that buyer to be able to enforce the patents that they're purchasing,

723
00:45:27,774 --> 00:45:31,254
they also need a license or something, or you'll be able to purchase

724
00:45:31,302 --> 00:45:35,018
those other patents. And now because it's the 9th hour, they can get them

725
00:45:35,104 --> 00:45:38,318
at dirt cheap because the clocks run out right

726
00:45:38,344 --> 00:45:41,474
on the agreement or everybody's kind of over it.

727
00:45:41,512 --> 00:45:45,602
So I think the more that we remember

728
00:45:45,796 --> 00:45:48,998
or include those details around terminal disclaimers, I think

729
00:45:49,024 --> 00:45:52,566
it's better for everybody. It allows

730
00:45:52,698 --> 00:45:56,090
to hopefully get more maximum value for their portfolios.

731
00:45:56,710 --> 00:46:00,758
And this is an interesting thing that I had. Again, I think at

732
00:46:00,784 --> 00:46:04,646
least I've always kind of felt in some regard. I mean, I don't take it

733
00:46:04,768 --> 00:46:08,462
in a cavalier sense, but a lot of times these

734
00:46:08,476 --> 00:46:11,598
terminal disclaimers come up for me, at least in continuations,

735
00:46:11,634 --> 00:46:15,038
right where they're already essentially have the same patent term because they're all stemming from

736
00:46:15,064 --> 00:46:18,842
the same priority date. So PPA, the patent term adjustment may

737
00:46:18,856 --> 00:46:21,638
play into that a little bit, but you're looking at like 70 days difference,

738
00:46:21,724 --> 00:46:26,142
90 days or whatever. But in cases where it's

739
00:46:26,166 --> 00:46:29,514
more substantial than that, some practice

740
00:46:29,562 --> 00:46:33,110
tips that I read were really making sure that every

741
00:46:33,160 --> 00:46:37,098
single claim was rejected for an obviousness

742
00:46:37,134 --> 00:46:40,614
type double patenting. And if some weren't,

743
00:46:40,782 --> 00:46:44,762
consider letting those pass to issue and then

744
00:46:44,896 --> 00:46:48,470
consider going back at another, but at the Apple for the other ones

745
00:46:48,520 --> 00:46:53,774
to try to argue that they're distinct or

746
00:46:53,812 --> 00:46:57,102
change them a little bit to make them more distinct so that you can avoid

747
00:46:57,126 --> 00:47:00,882
the terminal Disclaimer, maybe have different claims

748
00:47:00,906 --> 00:47:04,190
of varying. I just thought that was interesting. Again,

749
00:47:04,360 --> 00:47:07,850
I think a lot of practitioners, myself included, until I thought more about

750
00:47:07,900 --> 00:47:11,486
this was just a terminal Disclaimer. It's only 90

751
00:47:11,548 --> 00:47:15,278
days. Like what's the big deal? But as those terms start

752
00:47:15,304 --> 00:47:19,418
to differ more drastically, thinking about it more and not

753
00:47:19,444 --> 00:47:22,778
being afraid to make some arguments back or

754
00:47:22,804 --> 00:47:26,262
letting some of them pass the issue anyways,

755
00:47:26,286 --> 00:47:28,562
I know that's kind of all over the place. A lot of different kind of

756
00:47:28,576 --> 00:47:32,378
topics but kind of all related. So if

757
00:47:32,404 --> 00:47:36,134
anybody has any thoughts or personal experiences, I have a question. I mean,

758
00:47:36,172 --> 00:47:39,050
thanks for this. This actually, it's a great topic. I think it's really interesting.

759
00:47:39,160 --> 00:47:42,398
And my question is you talked

760
00:47:42,424 --> 00:47:46,254
about 102 commonly

761
00:47:46,302 --> 00:47:49,538
owned issues under a 102 rejection. Is there any

762
00:47:49,564 --> 00:47:52,480
difference under a 103? No, you're right.

763
00:47:52,810 --> 00:47:55,814
I forgot about that part. Yeah, I didn't include that. But yeah.

764
00:47:55,852 --> 00:47:59,490
So it does apply to 103 as well. But the art cited

765
00:47:59,550 --> 00:48:03,770
as part of the 103 has to be under

766
00:48:03,880 --> 00:48:07,002
one of those 102 sections, which it normally would be, because that's the only sections

767
00:48:07,026 --> 00:48:11,094
of 102. Now with AIA, whereas I think pre AI,

768
00:48:11,202 --> 00:48:15,350
it got a little more interesting. So there's only certain sections

769
00:48:15,790 --> 00:48:19,434
of prior art that would apply to the common ownership.

770
00:48:19,542 --> 00:48:23,680
Okay. But now with obviousness as well, it does apply.

771
00:48:25,210 --> 00:48:29,126
But you still have common ownership exception even for 103

772
00:48:29,188 --> 00:48:33,546
only works within one year Grace period. That went

773
00:48:33,608 --> 00:48:36,858
round because I read so much about this,

774
00:48:37,004 --> 00:48:41,874
and it was like blowing my mind because some

775
00:48:41,972 --> 00:48:45,462
things I read said that if

776
00:48:45,656 --> 00:48:49,918
it's more than one year, stop now, there is no exception.

777
00:48:50,074 --> 00:48:54,210
But then when you really read the statute,

778
00:48:55,190 --> 00:48:58,086
the first part is 102,

779
00:48:58,088 --> 00:49:02,130
a one, and then these are all the exceptions for

780
00:49:02,240 --> 00:49:05,970
under 102. A one exceptions are the 102 B,

781
00:49:06,020 --> 00:49:09,202
one exceptions, which says one year or less, blah,

782
00:49:09,226 --> 00:49:12,978
blah, blah, blah, blah. And then you have 102 a two, and all the

783
00:49:13,004 --> 00:49:16,446
102 B, two exceptions apply for 102 a two,

784
00:49:16,508 --> 00:49:20,590
and there is no statement of a one year period.

785
00:49:20,770 --> 00:49:24,642
And so in my mind, I'm like there's no statement of

786
00:49:24,656 --> 00:49:27,990
a one year period. It seems like if it were longer than that,

787
00:49:28,040 --> 00:49:31,002
it should still apply. I mean, you might be opening yourself up to some kind

788
00:49:31,016 --> 00:49:35,194
of terminal Disclaimer, losing a lot of patent term. But then I was conversing

789
00:49:35,242 --> 00:49:38,682
with an attorney that works at a

790
00:49:38,756 --> 00:49:43,266
firm that we do some shared work with because

791
00:49:43,328 --> 00:49:46,542
a case came up, Ironically, where it had been more than a year, where a

792
00:49:46,556 --> 00:49:50,098
client had a published application and then one that we were filing

793
00:49:50,134 --> 00:49:53,262
or was like an office action. Right. So they were separated by more than a

794
00:49:53,276 --> 00:49:57,018
year. And I said, could this apply in this situation?

795
00:49:57,164 --> 00:50:00,726
And he said that he had delved into it recently a ton

796
00:50:00,788 --> 00:50:04,700
for a separate case and said that the one year applies for everything

797
00:50:06,470 --> 00:50:09,510
based on the MPEP. It seems like it doesn't.

798
00:50:09,830 --> 00:50:13,626
But seemingly how people are interpreting it is that I

799
00:50:13,628 --> 00:50:18,094
don't know. I'd be curious to almost press my luck a little bit examiner

800
00:50:18,202 --> 00:50:22,282
at some point and just be like greater

801
00:50:22,306 --> 00:50:27,270
than one year the supply anyway,

802
00:50:27,380 --> 00:50:30,440
that's my understanding. All one year or less.

803
00:50:31,370 --> 00:50:34,882
So I guess it does make sense. But in the sense of the terminal

804
00:50:34,906 --> 00:50:38,122
Disclaimer, I feel like you should be able to commonly own thing if you're willing

805
00:50:38,146 --> 00:50:42,018
to disclaim a whole bunch of patent terms like what do they care at

806
00:50:42,044 --> 00:50:44,418
that point? You know what I mean? If you had things that were separated by

807
00:50:44,444 --> 00:50:48,378
three years, for example, a published application and then

808
00:50:48,404 --> 00:50:52,170
something that was earlier issued or whatever, and they were separated by three

809
00:50:52,220 --> 00:50:55,400
years, if you're willing to terminally disclaim those,

810
00:50:56,030 --> 00:50:58,580
what does the patent office care that it were three years?

811
00:51:00,110 --> 00:51:01,280
Maybe I'm wrong.

812
00:51:04,290 --> 00:51:07,838
I thought there was no Grace period for a terminal

813
00:51:07,874 --> 00:51:11,302
Disclaimer. If it's a double patenting rejection. Right. But I was mean, I guess more

814
00:51:11,316 --> 00:51:14,662
common ownership if it were commonly owned, why would

815
00:51:14,676 --> 00:51:17,590
they care if you were willing to disclaim?

816
00:51:21,010 --> 00:51:24,470
Maybe I'm missing something, but I think at least in some scenarios,

817
00:51:24,850 --> 00:51:28,302
if the claims are co expensive, then it's

818
00:51:28,326 --> 00:51:31,698
a double patenting rejection. But if you have this priorit reference that doesn't claim

819
00:51:31,734 --> 00:51:34,818
it but just discloses it now, you can't

820
00:51:34,854 --> 00:51:37,878
terminally just claim it anymore because you haven't.

821
00:51:38,034 --> 00:51:41,980
Right. Equivalent claims. That's true.

822
00:51:42,550 --> 00:51:45,582
Yeah, that's true. That's fair. Yeah. Because it's not the claims

823
00:51:45,606 --> 00:51:48,998
at that point. It's just the disclosure of it.

824
00:51:49,144 --> 00:51:49,840
Yeah.

825
00:51:52,250 --> 00:51:55,482
Thank you for all your research on this. It's really helpful because this has

826
00:51:55,496 --> 00:51:58,302
come up for me a couple of times and people I work with are like,

827
00:51:58,436 --> 00:52:02,338
no, we can't. It's been more than a year co owned.

828
00:52:02,434 --> 00:52:06,262
But I have these random tidbits from other practitioners

829
00:52:06,346 --> 00:52:09,222
and from the bar exam,

830
00:52:09,296 --> 00:52:13,390
whatever that it's like some things are prior art for novelty,

831
00:52:13,450 --> 00:52:17,082
but not for obviousness. And I thought

832
00:52:17,156 --> 00:52:20,982
it was this common ownership thing because I remember

833
00:52:21,056 --> 00:52:24,750
working with other practitioners years ago and this is my

834
00:52:24,800 --> 00:52:28,590
issue and I need to go back and look probably more too, but that

835
00:52:28,760 --> 00:52:32,626
something was about to publish and we were scrambling.

836
00:52:32,698 --> 00:52:36,558
Not scrambling whatever. We were working to get

837
00:52:36,644 --> 00:52:39,882
something on file because it was going to be

838
00:52:40,016 --> 00:52:44,070
prior art for novelty, but not for obviousness. So we could still do,

839
00:52:44,180 --> 00:52:47,670
et cetera. That was part of the whole strategy. But now I'm kind of

840
00:52:47,780 --> 00:52:53,014
trying to figure out what that situation was because this was a very experienced

841
00:52:53,062 --> 00:52:56,446
attorney who was telling me this or was setting

842
00:52:56,458 --> 00:52:59,742
the strategy, but I can't remember what

843
00:52:59,756 --> 00:53:03,282
the situation was. Yeah. I took a look. Now, again, more I read

844
00:53:03,356 --> 00:53:07,098
countless blogs, but yeah, I've seen it come up like

845
00:53:07,124 --> 00:53:10,760
we had a client where I always tell clients it's like

846
00:53:11,270 --> 00:53:15,150
a good issue in some regard. Right. When your

847
00:53:15,200 --> 00:53:19,194
own art is the only art being

848
00:53:19,232 --> 00:53:22,818
cited. Right. Because that means that you're kind of occupying your own space.

849
00:53:22,904 --> 00:53:26,094
Right. That like nobody's moving in there. Then also, in the other sense,

850
00:53:26,132 --> 00:53:29,994
it creates a lot of problems because you can't argue against yourself, at least

851
00:53:30,032 --> 00:53:32,190
you shouldn't a whole bunch.

852
00:53:33,950 --> 00:53:38,310
But we've had these situations where the only rejection we get is 103

853
00:53:38,420 --> 00:53:41,782
with our clients prior stuff. And they're

854
00:53:41,806 --> 00:53:45,018
definitely coowned. Usually examiners are pretty on

855
00:53:45,044 --> 00:53:47,720
top of this stuff because usually in the offsettings will say,

856
00:53:48,110 --> 00:53:52,170
I do note that it is commonly owned hint hint.

857
00:53:53,750 --> 00:53:56,874
And I haven't seen it in those cases where it you know,

858
00:53:56,912 --> 00:53:59,240
we did have the case where it was one year or less.

859
00:54:00,530 --> 00:54:04,042
The examiner definitely gave, like the hint hints. I noticed that some of the inventors

860
00:54:04,066 --> 00:54:06,500
are the same. If you could prove common ownership or whatever.

861
00:54:08,970 --> 00:54:12,698
This is more like, I guess, disclaiming it just because they were the inventors

862
00:54:12,734 --> 00:54:17,766
that publicly. This was I guess that was that case. But I'm

863
00:54:17,778 --> 00:54:21,146
going to go back to and I'll send something out your email if

864
00:54:21,148 --> 00:54:24,462
you find something, David, because now I want to revisit in my throwing

865
00:54:24,486 --> 00:54:28,480
this together. I kind of forgot about the obviousness angle. And if maybe that

866
00:54:28,930 --> 00:54:32,090
has more latitude in terms of time frame,

867
00:54:34,390 --> 00:54:37,926
because maybe that's where the latitude comes from. But again, I was really surprised.

868
00:54:37,998 --> 00:54:40,600
Again, if you go back up here and look at this,

869
00:54:43,550 --> 00:54:46,890
this is the exact MPE language

870
00:54:47,750 --> 00:54:51,246
for exceptions under, and there is

871
00:54:51,308 --> 00:54:54,594
nothing around one year. If you go to the top

872
00:54:54,632 --> 00:54:58,270
one, it says one year or less. But that's not applying

873
00:54:58,330 --> 00:55:02,578
to all of the it

874
00:55:02,604 --> 00:55:06,120
doesn't apply to two because one is separate from two. I don't know.

875
00:55:06,450 --> 00:55:09,874
I had really convinced myself during

876
00:55:09,912 --> 00:55:13,178
this research that there was no one year. But then after talking to Albert,

877
00:55:13,214 --> 00:55:16,114
I was like, okay, maybe I'm missing something.

878
00:55:16,212 --> 00:55:20,002
So I don't know, I feel like I

879
00:55:20,016 --> 00:55:23,702
need to test the waters or something, like just throw out a common ownership

880
00:55:23,786 --> 00:55:27,106
statement at some point and be like, what do

881
00:55:27,108 --> 00:55:30,780
you think, examiner? Let's discuss this because,

882
00:55:31,290 --> 00:55:35,978
I don't know left

883
00:55:36,004 --> 00:55:38,834
you with we solved all the world problems, and now we can't solve a problem

884
00:55:38,872 --> 00:55:42,638
in patent law. Who knew that was

885
00:55:42,664 --> 00:55:43,780
the toughest problem?

886
00:55:48,950 --> 00:55:52,520
So I'll keep my diving into this a little bit because now it's puzzling me.

887
00:55:53,390 --> 00:55:56,970
Well, thank you for taking on such an arcane.

888
00:55:57,770 --> 00:56:00,020
I hope it was clear. I felt it like it was.

889
00:56:02,330 --> 00:56:04,940
I've been trying to avoid this for a long time.

890
00:56:05,930 --> 00:56:11,226
Well, we still didn't solve it fully. Now I

891
00:56:11,228 --> 00:56:14,960
don't know. More questions to answer. I know

892
00:56:15,470 --> 00:56:17,120
what keeps you up at night, right?

893
00:56:19,310 --> 00:56:22,918
Super helpful. Thank you, Ashley. Yeah. Thank you, Ashley.

894
00:56:22,954 --> 00:56:26,180
Yeah, thank you. No worries. I learned a lot.

895
00:56:29,790 --> 00:56:33,960
It's easy in corporate, right? Corporate already has all this stuff set up,

896
00:56:34,470 --> 00:56:37,942
right? Yeah. A small guy is going to

897
00:56:37,956 --> 00:56:39,010
figure it out ourselves.

898
00:56:40,950 --> 00:56:44,362
All right, everybody. Well, have a good rest of your week, and we'll talk to

899
00:56:44,376 --> 00:56:46,680
you later. Thank you, Ashley. Thanks.

900
00:56:47,250 --> 00:56:50,606
Bye bye. All right, so we're

901
00:56:50,618 --> 00:56:53,698
going to insert just a little addendum here. At the end, the group ran into

902
00:56:53,724 --> 00:56:57,610
a question around whether or not the one year time frame or Grace period

903
00:56:57,930 --> 00:57:01,282
applies to the common ownership exception. We hit on this

904
00:57:01,296 --> 00:57:03,442
a little bit in the intro. We just wanted to make it really clear in

905
00:57:03,456 --> 00:57:07,034
case that got lost a little bit. So we researched this issue further

906
00:57:07,082 --> 00:57:10,354
post recording, actually, what did we determine kind of going back

907
00:57:10,392 --> 00:57:13,750
to section 102 of US code. Right. That basically

908
00:57:13,800 --> 00:57:17,494
codifies novelty, the parameters of novelty in the US

909
00:57:17,592 --> 00:57:21,182
in post America and Ben's at there's

910
00:57:21,206 --> 00:57:24,070
basically 102 a one and 102 a two.

911
00:57:24,120 --> 00:57:29,342
And these two sections enumerate

912
00:57:29,366 --> 00:57:33,314
the kinds of prior art that fall into these two categories.

913
00:57:33,422 --> 00:57:37,226
Okay. And with that, there are exceptions

914
00:57:37,358 --> 00:57:40,762
to the prior art for each of these categories. So for

915
00:57:40,776 --> 00:57:44,590
102 a one, there is a Grace period exception of up to one year.

916
00:57:44,640 --> 00:57:48,322
If you do a trade show, some kind

917
00:57:48,336 --> 00:57:52,102
of literature publication, if it's within one year, you can say it

918
00:57:52,116 --> 00:57:55,714
doesn't count because I'm the inventor. I publish it. My bad.

919
00:57:55,872 --> 00:57:59,558
It doesn't count for 102 a two. There is technically

920
00:57:59,654 --> 00:58:03,746
no time limitation. Okay. If you look at the MPEP,

921
00:58:03,938 --> 00:58:07,778
you look at the US Code, there is technically no time limitation

922
00:58:07,874 --> 00:58:11,422
to exceptions. Under is a common

923
00:58:11,496 --> 00:58:15,410
ownership exception, though, right. And that common ownership exception

924
00:58:15,470 --> 00:58:19,354
says that if the prior art document and the

925
00:58:19,392 --> 00:58:22,574
instant patent application are commonly owned,

926
00:58:22,622 --> 00:58:26,038
as at the time of filing, then that prior art

927
00:58:26,064 --> 00:58:29,170
under 102 a two doesn't count. Right.

928
00:58:29,340 --> 00:58:32,482
However, there are going to

929
00:58:32,496 --> 00:58:36,106
be scenarios where art under 102 a

930
00:58:36,108 --> 00:58:40,140
two would also be considered art under 102 a one.

931
00:58:40,650 --> 00:58:43,582
And that's going to be actually the vast majority of the cases. Right. If you

932
00:58:43,596 --> 00:58:46,742
look at what kind of prior artists under each of those categories, the vast majority

933
00:58:46,766 --> 00:58:49,066
of times, if you get a 102 a two, you're going to get a 102

934
00:58:49,068 --> 00:58:52,260
a one. So in that case,

935
00:58:53,430 --> 00:58:56,650
then it has to be within that one year time frame.

936
00:58:57,090 --> 00:59:00,698
Even your common ownership exception has to be within that one year time frame.

937
00:59:00,794 --> 00:59:04,942
There's going to be a really rare sliver of prior art that

938
00:59:05,136 --> 00:59:08,280
is beyond one year and only under.

939
00:59:09,630 --> 00:59:13,526
And in that scenario, the common ownership exception has no time limit.

940
00:59:13,598 --> 00:59:17,086
Right. However, long ago however, like I said, that's going

941
00:59:17,088 --> 00:59:20,434
to be the super rare exception. And I've talked

942
00:59:20,472 --> 00:59:24,262
to tons of practitioners, and most people will tell you that the

943
00:59:24,276 --> 00:59:29,234
common ownership has a one year time frame limit. And that's technically

944
00:59:29,342 --> 00:59:32,758
inaccurate if you look at the EP. But I think where everybody kind

945
00:59:32,784 --> 00:59:36,578
of believes that it's just because it's so rare to find a piece of prior

946
00:59:36,614 --> 00:59:40,438
art from a condom and ownership perspective that wouldn't fall under both of

947
00:59:40,464 --> 00:59:43,858
these sections and thus require a one year time

948
00:59:43,884 --> 00:59:47,338
frame limit. Well, it's a good thing we

949
00:59:47,364 --> 00:59:51,310
have experts like you to sort this all out. Thanks for the clarification.

950
00:59:51,630 --> 00:59:54,650
Happy to do so. All right. That's all for today, folks.

951
00:59:54,710 --> 00:59:58,102
Thanks for listening. And remember to check us out at Aurora Patents.com for

952
00:59:58,116 --> 01:00:02,138
more great podcasts, blogs and videos covering all things patents strategy.

953
01:00:02,234 --> 01:00:04,618
And if you're an agent or attorney and would like to be part of the

954
01:00:04,644 --> 01:00:08,278
discussion or an inventor with a topic you'd like to hear discussed, email us

955
01:00:08,304 --> 01:00:12,110
at podcast@aurorapatins.com do remember that this podcast

956
01:00:12,170 --> 01:00:15,820
does not constitute legal advice and until next time keep calm and patent on.


Intro
What is inventorship?
What is ownership?
Implications of getting this wrong
Transferring rights via assignment
What is prior art?
Novelty and obviousness rejections (Sec 102 and 103)
What is common ownership?
Common ownership exception
Terminal disclaimers and double patenting
Inventorship v. ownership
AIA prior art under 102(a)
AIA prior art exceptions
Common ownership and the PTAB
Common ownership and subsidiaries
Common ownership and exclusive licensees
Common ownership under joint research
Terminal disclaimer for joint research
Terminal disclaimer practice
Common ownership practice suggestions
Implications when buying and selling
Section 103 and common ownership
Addendum: common ownership grace period
Outro