Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 Paragraph 706.02(l)(2) is titled “Establishing Common Ownership or Joint
2 Research Agreement.” It defines “common ownership” as 100% identity in
3 ownership:
4 The term “commonly owned” is intended to mean that
5 the subject matter which would otherwise be prior art to
6 the claimed invention and the claimed invention are
7 entirely or wholly owned by the same person(s) or
8 organization(s)/business entity(ies) at the time the
9 claimed invention was made. If the person(s) or
10 organization(s) owned less than 100 percent of the
11 subject matter which would otherwise be prior art to the
12 claimed invention, or less than 100 percent of the
13 claimed invention, then common ownership would not
14 exist. Common ownership requires that the person(s) or
15 organization(s)/business entity(ies) own 100 percent of
16 the subject matter and 100 percent of the claimed
17 invention.
18 MPEP ¶ 706(l)(2).
19 Patentee argues that common ownership as used in § 1.321(c) should
20 be interpreted to include any one who has an ownership interest in both the
21 first and second patents. However, this interpretation is inconsistent with the
22 reason for the common ownership requirement - to avoid harassment by
23 infringement suits on multiple patents. Patentee’s brief does not address this
24 reason. This reason was noted by the CCPA in upholding the common
25 ownership provision as a valid exercise of the Director’s (then
26 Commissioner’s) rule-making authority.
27 Patentee also refers to the first paragraph of 35 U.S.C. § 253 which
28 provides in relevant part (emphasis added):
29 A patentee, whether of the whole or any sectional interest
30 therein, may, on payment of the fee required by law,
31 make disclaimer of any complete claim, stating therein
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