It’s an inventor’s worst nightmare: your unique, one-of-a-kind idea has already been invented and patented by someone else. You’ve invested time and money in reducing the invention to practice and filing a patent application, and you receive the bad news via an office action from the Examiner. All is not lost, though. You may actually have some options, if you know what to look for in the office action and your application.
If you receive an office action with a rejection under Section 102(a)(2) citing an earlier-filed (“prior”) patent application as prior art, you must first determine if the rejection was proper. Study the file wrapper and bibliographic information on the cited prior art to confirm it is:
- a prior filed patent application that was published or issued as a patent;
- has an effective filing date that is before the effective filing date of your patent application; and
- has at least one inventor that is different on both patent applications.
Defeating such a prior art citation by an Examiner can be effective if you can show that:
- the cited prior patent application was a non-published application that did not issue as a patent;
- your application’s effective filing date was earlier, or
- all of the named inventors are identical on both applications.
Such a rejection can also be effectively overcome if you present evidence that:
- the subject matter of the earlier-filed patent application was obtained from the inventor or someone who obtained it from the inventor (called “derivation proceedings”);
- you (the inventor) made a public disclosure of your invention and less than one year passed before you filed your patent application, and the cited prior patent application was filed after your public disclosure; or
- both patent applications are owned by (or subject to an obligation to assign) to the same person or entity before your application was filed.
There may be other available strategies to overcome a section 102(a)(2) rejection, but these are the strongest approaches to consider as a starting point when faced with this rejection type.