For 103/obviousness (but not obvious-type double patenting) reasons, does an application published by the same inventor/owner count as prior art against future applications of the inventor/owner based on (a) the effective filing date or (b) publication date of the earlier application? Does it change from pre-AIA to post-AIA? And are international applications treated differently?

For example, if I file an application on January 1 2015 which publishes on July 1 2017, can the examiner cite that application against me in a 103 rejection on an application filed June 1 2017 (i.e. citing the earlier app's effective filing date of Jan 1 2015) or not?

Based on my interpretation of 35 USC 102, it seems that one's own prior applications are treated differently (count as prior art as of pub date) relative to others' prior-filed applications (count as prior art as of EFD).

A pre-AIA Patently-O article makes the following statement (emphasis mine) in regards to CIP applications, which neither contradicts nor explicitly confirms my interpretation:

Thus, for the claims with new matter any patent issued or document published more than one-year before the CIP filing date would count as prior art under 35 U.S.C. 102(b).


1 Answer 1

  1. For the case of post-AIA US (i.e. applications filed on/after Mar 16, 2013), same inventor's prior application is not prior art until 1 year after publication date.
  2. Pre-AIA, not sure?
  3. In other jurisdictions, same inventor's prior application generally counts as prior art for novelty purposes as of date of filing (an in-built way to avoid double-patenting), but not for obviousness until publication (no 1-year grace period like the US).

See here and here.

A further question would be, do common assignees get the same benefit of common inventors?

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