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ARTICLE · 24 JULY 2019

Overcoming Rejections Based on Your Own References

Squire Patton Boggs LLP
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While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference.

United StatesIntellectual Property
Benjamin Ford
Benjamin Ford

While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar... because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is "it depends."

When making a prior art rejection in the US, a patent examiner distinguishes between prior art that is available under 35 U.S.C. § 102 (a)(1) and 35 U.S.C. § 102 (a)(2). Section 102 (a) provides as follows:

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

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