When Your Own Patent Application Becomes Prior Art: U.S. common ownership, Japanese applicant identity, and Korean expanded novelty—a guide in both directions

Executive Summary: An earlier patent application within a corporate portfolio can threaten a later application, but the available protection depends on which jurisdiction’s rules apply. This article uses 35 U.S.C. § 102(b)(2)(C) to explain Japan’s Article 29bis and South Korea’s Article 29(3), then reverses the comparison to help Japanese and Korean attorneys navigate U.S. practice. The U.S. exception focuses on common ownership or enforceable obligations to assign the relevant subject matter to the same person by the claimed invention’s effective filing date; qualifying joint research agreements offer an additional route. Japan and Korea instead recognize exceptions based on complete identity of the relevant applicant or inventor groups, with applicant identity assessed at the applicable statutory checkpoint. Partial overlap and corporate affiliation alone do not establish the required identity. The article also distinguishes the Japanese and Korean identity or substantial-identity inquiries from the broader anticipation and obviousness uses of U.S. earlier-application prior art, while expressly leaving the Korean treaty-priority applicant-timing question unresolved. Through practical scenarios and prosecution guidance, it explains why excluding an earlier disclosure does not necessarily resolve public-prior-art, double-patenting, or competing-claim objections. Effective coordination therefore requires a shared factual record of disclosure support, filing and publication dates, inventorship, applicant identity, ownership, and assignment obligations—followed by a separate application of each country’s law.

Introduction

 

A corporate portfolio can produce an unexpected rejection: an earlier application from the same organization is cited against a later one. U.S. counsel may immediately ask whether 35 U.S.C. § 102(b)(2)(C) removes the reference through common ownership. Japanese and Korean counsel may instead ask whether the applicants or inventors are the same. Each question is sensible at home. Trouble begins when one becomes the assumed answer abroad.

The closest Japanese and South Korean counterparts are the identity provisions associated with Japan’s Patent Act Article 29bis, also numbered Article 29-2, and Korea’s Patent Act Article 29(3). They address a comparable problem: an earlier application becomes available to the public only after a later application has been filed. Their legal mechanisms, however, differ. Understanding those differences helps U.S. attorneys instruct Japanese and Korean associates—and helps Japanese and Korean attorneys recognize opportunities and risks in U.S. prosecution. 35 U.S.C. § 102(a)(2), (b)(2)(C); Patent Act, Act No. 121 of Apr. 13, 1959, art. 29-2, as amended (Japan) [hereinafter Japanese Patent Act]; Patent Act, Act No. 4207, Jan. 13, 1990, art. 29(3), as amended (S. Kor.) [hereinafter Korean Patent Act].

Consider Application A, whose specification describes a sensor arrangement that Application B later claims. A’s own claims concern a different invention. Initially, assume different inventors, one corporate applicant and owner throughout, and A’s publication after B’s filing. Assume correct inventorship and independent development where the inventors differ; inventor-origin relief is unavailable unless expressly introduced. Also assume a qualifying counterpart of A in each country and a later relevant filing date for B. A U.S. application alone does not automatically become an earlier-application reference in every jurisdiction.

Three questions organize the comparison: Does A qualify as a reference? Does a relationship between the inventions or applicants prevent its use? Do the claims create a separate double-patenting or first-to-file problem? Keeping these questions separate is the foundation of coordinated advice. For convenience, this article uses “prior art” broadly to include these special earlier-application grounds. Japanese Article 29bis and Korean Article 29(3), however, are distinct from ordinary public-prior-art and inventive-step analysis. Japan Pat. Off., Examination Guidelines for Patent and Utility Model in Japan, pt. III, ch. 3, §§ 1–3.2 (July 2026) [hereinafter JPO Guidelines]; Ministry of Intell. Prop., Patent Examination Guidelines, pt. III, ch. 4, § 6.3, at 356–57 (Feb. 2026) (S. Kor.) [hereinafter Korean Guidelines].

1. The U.S. starting point: a historical relationship in rights

 

Section 102(b)(2)(C) operates on disclosures that otherwise qualify under § 102(a)(2). The latter encompasses specified U.S. patents, U.S. application publications, and qualifying international application publications, provided the statutory conditions are met. The reference must name another inventor, and the relevant subject matter must have an earlier effective filing date. Under the AIA, a qualifying published PCT application designating the United States need not enter the U.S. national stage or be published in English to have this effect. U.S. Pat. & Trademark Off., Manual of Patent Examining Procedure §§ 2154.01(a), (c) (9th ed., rev. 01.2024, Nov. 2024) [hereinafter MPEP].

Reference dating and claim dating require separate analyses. Section 102(d) addresses when the reference’s relied-on subject matter was effectively filed; § 100(i) addresses the effective filing date of the claimed invention under examination. An earlier priority document must actually support the relevant inquiry. A date printed on a publication’s cover does not establish either proposition by itself. 35 U.S.C. § 100(i); 35 U.S.C. § 102(d); MPEP § 2152.01; MPEP § 2154.01(b).

Once § 102(a)(2) applies, subsection (b)(2)(C) asks whether, no later than the claimed invention’s effective filing date, the disclosed subject matter and claimed invention were commonly owned or subject to obligations of assignment to the same person. The focus is the legal relationship covering the relevant subject matter. It is neither the appearance of identical applicant names nor the fact that both applications now belong to the same business group. 35 U.S.C. § 102(b)(2)(C).

The alignment must be complete. If X and Y jointly own the relevant disclosure but X alone owns the claimed invention, X’s participation on both sides does not establish the required common ownership. The same complete owner or owner group must hold the necessary rights on both sides. Conversely, the company need not own every unrelated embodiment appearing elsewhere in the reference. A qualifying obligation must be enforceable; an expectation that an inventor will eventually assign is insufficient. MPEP § 717.02(a)(I)(A)–(B).

The exception removes the disclosure’s § 102(a)(2) status for both anticipation and obviousness. It has no one-year limit. But it does not remove an independent public-prior-art basis under § 102(a)(1), and it does not eliminate double patenting. Exclusion also does not necessarily prevent the disclosure from serving as evidence of enablement or inherency. MPEP § 717.02(b)(II). These limits explain why “we own both applications” can be a useful starting point but an incomplete response. MPEP § 2154.02(c); 35 U.S.C. § 102(a)(1), (b)(1).

Attorneys familiar with pre-AIA § 103(c) should also reset their analysis. That provision principally addressed obviousness and looked to the relevant relationship when the invention was made. The AIA provision excludes qualifying § 102(a)(2) subject matter and uses the claimed invention’s effective filing date. Mixing the two regimes can produce the wrong deadline and the wrong understanding of the available relief. MPEP § 2146; MPEP § 2154.02(c).

2. Translating the U.S. rule into Japanese Article 29bis

 

Japan’s Article 29bis reaches inventions disclosed in a qualifying earlier patent or utility-model application that is published after the later filing. Its reach extends beyond what the earlier applicant claimed: the relevant original description, claims, and drawings can matter. Thus, deleting an overlapping claim from A does not necessarily resolve an Article 29bis objection against B. Japanese Patent Act art. 29-2; JPO Guidelines, pt. III, ch. 3, §§ 1–3.1.2.

The familiar U.S. question about rights becomes two Japanese identity inquiries. Article 29bis does not bar the later invention where the relevant inventors are the same; its proviso also protects the later application where the applicants are the same at the later application’s filing. Either route can be sufficient. Common ownership and a duty to assign may supply useful background, but neither should be substituted for the applicable Japanese identity test. Japanese Patent Act art. 29-2; JPO Guidelines, pt. III, ch. 3, §§ 1–3.1.2.

For joint applicants, the complete applicant group must coincide. A shared parent company or one overlapping co-applicant does not establish identity. Yet applicant identity is a legal inquiry, not a comparison of character strings. The JPO’s July 2026 guidance expressly recognizes that a name change leaves the applicant unchanged and that general succession, such as a merger, can take legal effect without a completed notification to the JPO. Counsel should establish who the applicant legally was at the relevant time, including the effect of any succession. JPO Guidelines, pt. III, ch. 3, § 3.1.2(2) & nn.1–2, at 3–4.

The inventor inquiry likewise concerns the invention being compared. The application records provide a starting point, but a difference in listed names should prompt examination of the actual inventorship rather than an automatic conclusion that relief is unavailable. This is especially important when an earlier application contains several inventions and the later claim concerns only one of them. JPO Guidelines, pt. III, ch. 3, § 3.1.1(2)–(3), at 3.

For a joint invention, the complete inventor groups must coincide. Identity may be apparent from the application records or established substantively through evidence of actual inventorship, but one overlapping inventor does not establish the same-inventor exception. This differs from U.S. practice, under which a reference naming only one or more inventors from the later inventive entity, and no outside inventor, may be treated as inventor-origin disclosure without requiring a declaration under § 1.130. JPO Guidelines, pt. III, ch. 3, § 3.1.1(1)–(3), at 3; MPEP § 717.01(III)(B).

Article 29bis also reaches substantial identity. Certain minor differences may leave the inventions substantially the same, so merely finding an added limitation does not necessarily defeat the objection. The analysis remains distinct from ordinary inventive step under Article 29(2). An earlier unpublished application does not acquire the full role of public prior art in an ordinary inventive-step combination merely because Article 29bis applies. JPO Guidelines, pt. III, ch. 3, § 3.2, at 4; Japanese Patent Act art. 29(1)–(2).

Finally, Article 39 separately governs competing applications claiming the same invention. Success on applicant or inventor identity under Article 29bis therefore does not establish that both applications may issue with the same claims. Japanese Patent Act art. 39.

3. Translating the U.S. rule into Korean Article 29(3)

 

Korean Article 29(3) addresses the later invention’s identity with disclosure in a qualifying earlier patent application. Article 29(4) provides the corresponding rule for an earlier utility-model application. The exceptions again turn on the same inventor or the same applicant. For an ordinary Korean direct filing without a priority claim, and for the domestic-priority situation addressed in § 5, applicant identity is assessed at the later Korean application’s filing. Treaty-priority applications require a separate analysis under Article 54; this article does not state their applicant-identity checkpoint. The general resemblance to Japan is useful, but the Korean provisions and examination instructions should be applied independently. Korean Patent Act arts. 29(3)–(4), 54(1), 55(3); Korean Guidelines, at 352, 665.

Reference qualification also requires attention to the filing route. Korean Articles 29(5)–(7) address international applications and exclude specified applications deemed withdrawn for failure to provide the required Korean translation. Japan has a comparable exclusion for foreign-language international applications deemed withdrawn for missing translations. Thus, one PCT publication can have different prior-art consequences across jurisdictions; the U.S. rule does not supply a universal national-phase test. Korean Guidelines, pt. III, ch. 4, at 343–45, 353–54; Japanese Patent Act art. 184-13; JPO Guidelines, pt. III, ch. 3, § 6.1.4.

Korean guidance requires complete identity when there are joint applicants. For inventorship, the examiner begins with the application documents and expects the complete inventor sets to coincide for joint inventions. Evidence can nevertheless establish actual identity despite an apparent discrepancy. An amendment adding names after a rejection may require proof that the added persons are true inventors; changing the record is not itself a substantive answer. Korean Guidelines, pt. III, ch. 4, § 4(1)–(2), at 351–52.

The Korean concept commonly described as expanded novelty includes substantial identity. Minor additions, deletions, or changes involving well-known techniques, without a new effect, may fall within it. The February 2026 Guidelines expressly distinguish that situation from a difference that exceeds this limited level but would nevertheless have been obvious. Ordinary obviousness alone does not establish identity under Article 29(3). Korean Guidelines, pt. III, ch. 4, § 6.3, at 356–57.

For the U.S. reader, this distinction changes the response strategy. Suppose A omits a meaningful feature in B, and the examiner could supply that feature only through a conventional obviousness analysis. In U.S. prosecution, an unexcluded § 102(a)(2) reference may remain a serious § 103 obstacle. In Korea, the first question is whether the difference stays within substantial identity; the examiner cannot simply replace that requirement with ordinary inventive step. Publicly available references remain a separate matter under Article 29(1) and (2). Korean Patent Act art. 29(1)–(4); Korean Guidelines, pt. III, ch. 4, at 343–45.

Article 36 supplies the separate first-to-file inquiry for competing claims. The Korean Guidelines expressly contemplate applying that provision even when inventor or applicant identity prevents rejection under the expanded-novelty provisions. The lesson is the same as in Japan: clearing the earlier disclosure and clearing the earlier claims are separate tasks. Korean Patent Act art. 36; Korean Guidelines, pt. III, ch. 5, § 4.2(2), at 367–68.

4. Reading the comparison in reverse: what Japanese and Korean counsel should ask in the United States

 

Replace applicant matching with an inquiry into rights

 

An instruction stating that “the applicants are different” does not finish the U.S. analysis. Different lawful applicants may have enforceable duties to assign the relevant inventions to one company. Conversely, matching applicant names today may conceal ownership that became aligned only after the controlling deadline. U.S. counsel needs the dated instruments and underlying obligations, not merely a current bibliographic report.

Corporate structure warrants particular attention. If one subsidiary owns A and another owns B, a common ultimate parent is not, without more, the same owner of both relevant inventions. The practical question is whether actual title or enforceable assignment duties establish the relationship required by § 102(b)(2)(C). This is an application of the complete-ownership rule, not an additional exception for affiliated companies. MPEP § 717.02(a)(I)(A)–(B).

Separate inventor identity, attribution, and ownership

 

Three U.S. routes are particularly relevant to this comparison. With exactly the same inventive entity, the reference fails § 102(a)(2)’s “another inventor” requirement. Where the inventive entities differ, § 102(b)(2)(A) may still apply if the disclosed subject matter originated with an inventor of the claimed invention. Section 102(b)(2)(C), in turn, addresses ownership or assignment obligations. Counsel should identify which route the facts support. MPEP §§ 2154.01(a), (c); 35 U.S.C. § 102(b)(2)(A); MPEP § 717.01(III)(B).

Partial overlap requires care. USPTO guidance treats a difference in inventive entity as sufficient for the threshold, even where the lists overlap. Attribution may then resolve the issue. Indeed, where the reference names only a subset of the later inventors and no outsider, the USPTO ordinarily recognizes inventor-origin relief without requiring a declaration. That practice should not be compressed into a general rule that any shared inventor removes the reference. 35 U.S.C. § 102(b)(2)(A); MPEP § 717.01(III)(B).

Attribution also has a derivation boundary. Section 1.130 may be unavailable where the rejection relies on a U.S. patent or U.S. application publication naming another inventor, the patented or pending application claims the same or substantially the same invention, and the declaration alleges that an inventor named in that earlier case derived the claimed invention from an inventor of the later case. Counsel should assess derivation proceedings and, where appropriate, inventorship correction rather than assume an attribution declaration is available. Claim overlap alone does not establish this limitation. 37 C.F.R. § 1.130(c) (2026); MPEP § 717.01(II)(A).

Anticipate an obviousness rejection

 

An instruction explaining why B is not identical to A may be persuasive in an expanded-novelty analysis yet leave a U.S. § 103 rejection unanswered. Foreign counsel should tell the U.S. associate both why the disclosure differs and whether facts support excluding it. The two arguments can be complementary: one attacks the rejection’s technical premise; the other removes the asserted § 102(a)(2) basis.

Consider the joint-research route

 

Section 102(c) creates an additional U.S. opportunity by deeming the relevant inventions commonly owned for this purpose. It requires a qualifying written joint research agreement effective by the claimed invention’s effective filing date; the disclosed subject matter must have been developed, and the claimed invention made, by or on behalf of parties to that agreement. The claimed invention must result from activities within its scope, and the application must identify the parties. 35 U.S.C. § 100(h); 35 U.S.C. § 102(c); MPEP § 2156.

Section 100(h) covers a written contract, grant, or cooperative agreement for experimental, developmental, or research work in the claimed invention’s field. The document need not bear the title “Joint Research Agreement”; its substance must meet the statutory definition. 35 U.S.C. § 100(h).

This provision does not transfer title. It permits qualifying collaboration between distinct owners to receive the specified prior-art treatment. A research relationship or confidentiality agreement alone does not prove all the elements. Nor does a qualifying U.S. agreement independently substitute for applicant or inventor identity in Japan or Korea. The collaborators should analyze those identity routes on their own facts.

5. Which date controls which question?

 

Consider this U.S. chronology: A is effectively filed on January 10; B’s provisional is filed on June 1; the relevant rights become commonly owned for the first time on September 1; B’s nonprovisional is filed the following May 1; and A publishes after that nonprovisional filing. Assume B’s asserted claim is fully entitled to June 1 and that no earlier common assignment obligation existed. The September acquisition is too late for § 102(b)(2)(C), although it precedes the nonprovisional filing. 35 U.S.C. § 100(i); 35 U.S.C. § 102(b)(2)(C).

Change only one fact: a September assignment implements an enforceable obligation already covering both inventions before June 1. The result may change because the statute recognizes assignment obligations. Execution and recordation dates are evidence, but they do not necessarily identify when the qualifying duty arose. Different claims in B can also require different effective-filing-date analyses; a claim first supported in the nonprovisional cannot simply borrow the provisional’s date. MPEP § 2152.01; MPEP § 717.02(a)(I)(B).

For ordinary direct filings without priority in Japan and Korea, applicant identity is assessed when the later application is filed. If A’s applicant is X and B’s applicant is Y at that time, a subsequent acquisition making them identical does not establish identity at the earlier checkpoint. The same-inventor route remains a separate possibility. For domestic priority, both statutes expressly limit the relevant retroactive effect to the earlier-application rule’s main clause rather than its applicant-identity proviso; the later filing remains the applicant-identity checkpoint in the situations addressed here. Japanese Patent Act art. 41(2); JPO Guidelines, pt. III, ch. 3, § 6.2, at 11; Korean Patent Act art. 55(3); Korean Guidelines, at 352, 665.

Korean treaty-priority applications require a separate analysis. Article 54(1) deems the qualifying foreign filing date to be the Korean filing date for purposes of Articles 29 and 36. Article 55(3), by contrast, expressly applies domestic-priority retroactivity to the main clauses of Articles 29(3) and (4). That textual difference makes the treaty-priority question consequential. This article does not resolve the applicant-identity checkpoint for a Korean treaty-priority application; its ordinary-filing and domestic-priority examples should not be applied to that category. Korean Patent Act arts. 54(1), 55(3); Korean Guidelines, at 641, 665.

Japan makes the distinction particularly concrete. The JPO’s applicant-identity table uses the later Japanese filing time for an ordinary Paris-priority application and the later filing time for an application claiming domestic priority. Suppose B has a March foreign priority date, A’s applicant becomes the same company as B’s in June, and B is filed in Japan in September. Applicant identity can be established at September even though a U.S. claim entitled to March would require the qualifying rights relationship by March. Assume a legally effective applicant change and satisfaction of the other requirements. JPO Guidelines, pt. III, ch. 3, § 6.2, at 11.

Special application types change the Japanese checkpoint: a qualifying PCT application uses the international filing date, while a divisional or converted application uses the original application’s filing time. Korea likewise treats a qualifying PCT application as filed on the international filing date; national-phase entry does not reset that filing date. That international-filing rule does not resolve the separate effect of a Korean treaty-priority claim on applicant identity. JPO Guidelines, pt. III, ch. 3, § 6.2, at 11; Japanese Patent Act art. 184-3(1); Korean Patent Act art. 199(1); Korean Guidelines, at 479–80.

Divisional practice supplies another warning against using one date for every question. In Korea, a divisional application, a splitting-off application under Article 52-2, or a converted application used as the earlier Article 29(3) reference receives its actual filing date for that purpose, although the original application may independently qualify. Japan likewise limits the retroactive filing effect of a division when the divisional serves as the other application under Article 29bis. Those reference rules should not be generalized into a universal rule for a later divisional’s identity deadline. Japanese Patent Act art. 44(2); JPO Guidelines, pt. III, ch. 3, § 6.1.1; Korean Patent Act arts. 52(2)(1), 52-2(2), 53(2)(1); Korean Guidelines, pt. III, ch. 4, § 3(1), at 346.

The practical record should therefore distinguish disclosure support, reference dates, claim dates, publication, and changes in applicants or rights. A single spreadsheet column labeled “priority date” cannot answer all five questions.

6. Six portfolio scenarios

 

The following variations return to A and B. Except where a change is stated, assume qualifying earlier-filed, later-published references, correct inventorship, no available inventor-origin exception, and ordinary filings without priority complications. A favorable exception result concerns the identified ground; it does not establish patentability overall.

One company throughout

 

The inventors differ, but Company X is the sole applicant and owner of both relevant inventions before every applicable deadline. The U.S. route is § 102(b)(2)(C). Japan and Korea reach a favorable result through applicant identity. Although the outcomes align, counsel should preserve different proof: the U.S. historical rights relationship and the Japanese or Korean applicant identity at the controlling time.

Different applicants, common assignment obligations

 

Assume different lawful applicants and inventors, with enforceable obligations covering both relevant inventions to Company X before B’s U.S. effective filing date. The U.S. exception can apply even without matching applicant names. Those obligations alone do not establish the Japanese or Korean identity conditions. A global instruction to “confirm common ownership” would miss the decisive foreign question: who legally was each applicant when the rule requires comparison?

The same sole inventor, different owners

 

Now give both applications the same sole actual and listed inventor, while their owners and applicants differ. Japan and Korea have the same-inventor route. In the United States, A does not satisfy the “another inventor” threshold on these facts, so common ownership is unnecessary to dispose of that § 102(a)(2) theory. The legal explanation matters because it identifies which facts must remain true if claims or inventor lists change.

One overlapping co-applicant

 

Let A name X and Y jointly and B name X alone; let ownership follow those identities and keep the inventors different. Neither complete applicant identity nor complete ownership alignment exists. X’s presence in both applications supplies no general escape. Before changing claims, counsel should still investigate whether the factual premise is accurate—for example, whether an earlier enforceable assignment duty changes the U.S. rights analysis.

A qualifying joint research agreement

 

Give A and B different owners, applicants, and inventors, but assume every § 102(c) requirement is satisfied. The United States can treat the relevant inventions as commonly owned for § 102(b)(2)(C). The agreement itself does not establish the Japanese or Korean identity exceptions. If B differs from A, however, those offices must still apply their respective identity standards; failure of an exception does not dispense with proof of the underlying rejection.

Earlier publication—or competing claims

 

First, change only publication: A becomes public before B’s relevant prior-art cutoff. Ordinary public-prior-art analysis now matters. U.S. common ownership and the Japanese or Korean earlier-application identity rules do not erase that publication. Any grace-period argument requires its own statutory and factual analysis; publication within one year is not universally sufficient. In particular, the Japanese and Korean voluntary-disclosure provisions exclude specified patent-gazette publications. 35 U.S.C. § 102(a)(1), (b)(1); Japanese Patent Act art. 30(2); Korean Patent Act art. 30(1)(1).

Separately, restore publication after B’s filing and introduce claims in A to the same invention claimed in B. The disclosure exception may still succeed, while U.S. double patenting, Japanese Article 39, or Korean Article 36 remains. This second variation demonstrates why a response should identify precisely which rejection has been answered.

7. Establishing the exception during prosecution

 

In the United States, 37 C.F.R. § 1.104(c)(4)(i) provides the mechanism for stating the common-ownership or assignment-obligation facts. The submission should be conspicuous, signed as required by § 1.33(b), and on or beginning on a separate sheet. The USPTO ordinarily accepts the statement without additional evidence, although independent evidence creating material doubt can justify a request for substantiation. 37 C.F.R. § 1.104(c)(4) (2026); MPEP § 717.02(a)–(b).

For an actual-ownership case, an appropriately tailored statement could read:

Applicant states that the subject matter disclosed in paragraphs [identify paragraphs] of [identify reference] and the invention claimed in claims [identify claims] of this application were owned by [identify the complete owner or owner group] not later than [date], the effective filing date of those claimed inventions.

The accompanying request should identify the rejection to be withdrawn and its § 102(a)(2) basis. The sample assumes actual ownership. Where relief depends on an obligation, substitute language accurately identifying that enforceable obligation and its timing. If claims have different effective filing dates, address them expressly. Complete the bracketed fields from the record and tailor the statement to the claims at issue.

For a joint research agreement, § 1.104(c)(4)(ii) requires the corresponding showing, and the application must identify the agreement’s parties. Counsel should confirm the agreement’s effective date, covered activities, relevant development, and resulting invention before making the statement. A declaration under § 1.130 addresses different exceptions, including attribution; it is not the ordinary substitute for the common-ownership statement. 37 C.F.R. §§ 1.104(c)(4)(ii), 1.130 (2026); MPEP § 717.02(b).

If the application does not already identify the parties to the joint research agreement, the specification must be amended under § 1.71(g). Unless the amendment falls within one of the no-fee periods specified in § 1.71(g)(2), it must be accompanied by the processing fee under § 1.17(i). An amendment limited to adding the parties’ names does not introduce new matter. 37 C.F.R. §§ 1.71(g)(1)–(2), 1.17(i)(1) (2026); MPEP § 717.02(b)(IV); MPEP § 2156.

Japanese and Korean responses should be organized around the domestic ground. Identify the relied-on disclosure, explain why the reference fails to qualify or why the inventions are not identical or substantially identical, and establish any applicable inventor or applicant exception from the records and necessary evidence. A U.S. ownership statement does not become a universal filing mechanism simply because the same portfolio is involved. Where names differ, explain the legal or factual reason instead of assuming either that the difference is fatal or that an amendment cures it.

Every response should also address the remaining claim-conflict ground. A U.S. terminal disclaimer may resolve an appropriate nonstatutory double-patenting rejection, subject to its requirements. It does not cure statutory same-invention double patenting or ordinary prior-art rejections. Nor should counsel assume an equivalent terminal-disclaimer solution exists for Japanese Article 39 or Korean Article 36. MPEP §§ 804.01–804.02; 37 C.F.R. § 1.321(c)–(d) (2026).

A common-ownership terminal disclaimer ordinarily conditions enforceability on continued common ownership. For qualifying joint-research-agreement cases, a different mechanism requires waiver of separate enforcement. These continuing requirements differ from § 102(b)(2)(C)’s historical ownership checkpoint. MPEP §§ 804.01–804.02; 37 C.F.R. § 1.321(c)–(d) (2026).

8. Coordinating the three analyses

 

The comparison works best when the question, rather than the statutory label, travels between offices.

Question	United States	Japan	South Korea
Principal provision	§ 102(b)(2)(C)	Article 29bis / 29-2	Article 29(3)
Relevant relationship	Common ownership or qualifying assignment duties	Complete identity of legal applicant group OR complete identity of relevant inventor group	Complete identity of applicant group OR complete identity of relevant inventor group
Main timing inquiry	Claimed invention’s effective filing date	Applicant identity at statutory filing checkpoint; see § 5	Applicable statutory checkpoint. Section 5 addresses ordinary and domestic-priority filings. The Korean treaty-priority checkpoint is not stated.
Unexcluded earlier disclosure	May support anticipation or obviousness	Identity or substantial identity of inventions	Identity or substantial identity of inventions
Research agreement alone	§ 102(c), if all statutory conditions are met	No independent substitute for identity conditions	No independent substitute for identity conditions
Separate claim conflict	Statutory / nonstatutory double patenting	Article 39	Article 36

Assumes a qualifying earlier-filed, later-published reference without an independent public-prior-art basis. See 35 U.S.C. § 102(b)(2)(C), (c); Japanese Patent Act arts. 29-2, 39; Korean Patent Act arts. 29(3), 36, 54(1), 55(3); JPO Guidelines, pt. III, ch. 3, §§ 3.1.1–3.1.2, 6.2; Korean Guidelines, at 351–52, 356–57.

For each citation, the instructing attorney should assemble a common factual record: the relied-on passages and challenged claims; support for each relevant date; the filing and publication sequence; complete inventor and applicant histories; and documents establishing ownership, assignment duties, or a research agreement. That record allows each associate to answer a different legal question without reconstructing the facts from a current front page.

The U.S. instruction should request identification of the precise route—reference qualification, attribution, common ownership, or deemed ownership—and the controlling historical deadline. The Japanese and Korean instructions should request identification of the applicable inventor or applicant route, its timing, and any independent claim-conflict issue. Each office should then state what remains after the asserted exception is applied.

Return to the opening portfolio. A single company’s earlier application may be harmless through ownership in the United States and through applicant identity in Japan and Korea. Change the assignment obligations, inventor group, collaboration agreement, or publication date, and those results may separate. Effective cross-border advice begins by asking which fact each statute makes decisive—and supplying evidence of that fact at the time the statute requires.