Common ownership of a prior art reference at the time of invention cannot be established for the purposes of disqualifying that reference under § 103(c) by later filed assignment documents alone. Here, for example, an assignment of a prior art reference that occurred after the filing date of the application at issue was found to be insufficient to establish that the reference and the application were commonly owned at the time of invention. “[E]vidence of common ownership by assignment after the application filing date does not establish common ownership or an obligation to assign ownership at the time of the invention.” It may therefore be necessary to submit further evidence such as a declaration or employment agreement to establish that a prior art reference was commonly owned when it was not assigned until after the filing date of the application at issue.
Background / Facts: The application on appeal here from interference proceedings at the PTO is directed to methods of detecting modified bases in nucleic acids. The senior party to the interference sought to have the interference proceedings terminated by establishing that the junior party’s application would have been obvious over certain prior art that was asserted to be applicable to the junior party’s application but not the senior party’s application under the provisions of § 103(c).
Issue(s): Whether the senior party’s proffered evidence of assignment documents was sufficient to establish that the prior art was commonly owned by it.
Holding(s): No. “It appears that the Board might have misapplied § 103(c) by reasoning that the assessment of common ownership may be based on evidence of common ownership by assignment, even if the assignment occurred after the application filing date. 35 U.S.C. § 103(c) provides that § 102(e) prior art does not preclude patentability if ‘the subject matter [of the prior art] and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.’ [] Accordingly, evidence of common ownership by assignment after the application filing date does not establish common ownership or an obligation to assign ownership at the time of the invention.”