General. The following hypothetical examples teach this concept:
Hypothetical Example No. 1. Richard, Daniel and Orville work together in a corporate research department. Richard and Daniel file a U.S. patent application on an obvious improvement to an original invention that all three invented. Orville becomes angry, leaves and files a protest against the pending application under 37 CFR 1.291 and asserts that the original invention should be used as prior art in an obviousness rejection of the improvement invention. Because the original invention was commonly owned at the time the improvement invention was made, an obviousness rejection cannot be made and a patent is issued to Richard and Daniel.
Hypothetical Example No. 2. Benjamin prepares a confidential description of his invention. Two years later, Benjamin and Thomas file a U.S. patent application on an obvious improvement of Benjamin's invention, assign their invention to their new company (as they were obligated to do on the date their invention was made) and mention Benjamin's invention in their application. Because the invention of Benjamin and that of Benjamin and Thomas were not commonly owned on the date Benjamin and Thomas's invention was made, their claims are rejected as being obvious in view of Benjamin's invention.
Hypothetical Example No. 3. Dorothea and Amelia invent a widget and assign U.S. patent rights to their company but individually retain foreign filing rights. They invent an obvious improvement and file a U.S. patent application on it. The original invention is prior art upon which an obviousness rejection of the improvement invention can be based because 100 percent of both the widget and the obvious improvement were not commonly owned when the improvement was made.
Hypothetical Example No. 4. Marie and Sarah invent an obvious improvement to an invention they invented while they were in college. After the fact, they assign the original invention to the company to which they had an obligation to assign the improvement. The original invention is prior art upon which an obviousness rejection of the improvement invention can be based because both the original invention and the obvious improvement were not commonly owned when the improvement was made.
Case Law. The following examples from U.S. case law teach this concept:
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