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OUR APP: A US patent application, whose provisional date is Apr. 8, 2004. Assigned to Motorola. Has 5 inventors, A - E.

I received a 103 rejection citing PA1 and PA2.

PA1: A document published in Canada, not a patent. Looks like a publication resulting from a conference. Appears to be published on March 8, 2004 (one month before OUR APP). The "Source" shown on the doc say Motorola, and then gives 2 motorola email addresses, showing names like john.doe@motorola.com. One name is clearly the same as inventor A. The other looks like a different inventor, say inventor F.

So, is PA1 prior art to OUR APP?

  1. Can inventorship be considered the same if you have one common inventor? so then 102B grace period would apply.

  2. Is there a way to use 103c?

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2 Answers 2

Addressing question 2 first, 103(c) only applies to 102(e) art, which only includes patents. If PA1 wasn't a patent, then 102(e) (and therefore, 103(c)) doesn't apply.

For question 1, because it is under 102(a), the inventor is irrelevant. The only thing that matters is whether it was available to the public. So no luck there either.

However, because it is only 102(a), if the date of invention is before the date of publication, you can "swear behind" the reference with a declaration. http://www.uspto.gov/web/offices/pac/mpep/s715.html

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One issue is that 102(a) is conditioned on "by another", meaning other than by the present inventors. If you can establish and submit affidavits showing that the second author did not make only an editorial contribution or no actual contribution.

Also, journal articles do not have inventors - they have authors. Academic authorship does not necessarily imply any particular type or level of contribution.

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