Common Ownership: Whose prior art is it anyway?

​​Patently Strategic - Patent Strategy for Startups

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In this month's episode, our experts help to demystify the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution.
Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora leads this discussion along with our all star patent panel, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice. And if this all sounds like a foreign language or if you’re wondering why you might care, we include a primer that will help you quickly get up-to-speed on key concepts like inventorship, ownership, assignments, prior art, and terminal disclaimers.
One of the recurring themes of this podcast is helping inventors avoid sharp corners and we’ve found that these concepts in particular trip up a lot of newer inventors and the resulting problems that come from misunderstandings around these core concepts can be difficult to untangle.
Ashley is joined today by our always exceptional group of IP experts including:
⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist at Aurora
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ David Jackrel, President of Jackrel Consulting
** Resources **
⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-common-ownership

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And as always, thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.

Chapters

1. Intro (00:00:00)

2. What is inventorship? (00:02:08)

3. What is ownership? (00:03:52)

4. Implications of getting this wrong (00:05:23)

5. Transferring rights via assignment (00:07:46)

6. What is prior art? (00:10:13)

7. Novelty and obviousness rejections (Sec 102 and 103) (00:12:08)

8. What is common ownership? (00:12:53)

9. Common ownership exception (00:15:14)

10. Terminal disclaimers and double patenting (00:17:28)

11. Inventorship v. ownership (00:21:21)

12. AIA prior art under 102(a) (00:24:12)

13. AIA prior art exceptions (00:25:28)

14. Common ownership and the PTAB (00:29:07)

15. Common ownership and subsidiaries (00:30:00)

16. Common ownership and exclusive licensees (00:33:06)

17. Common ownership under joint research (00:36:52)

18. Terminal disclaimer for joint research (00:37:28)

19. Terminal disclaimer practice (00:39:49)

20. Common ownership practice suggestions (00:42:44)

21. Implications when buying and selling (00:44:29)

22. Section 103 and common ownership (00:47:38)

23. Addendum: common ownership grace period (00:56:50)

24. Outro (00:59:52)