How can an applicant invoke the joint research agreement provisions to disqualify prior art?

To invoke the joint research agreement provisions and disqualify prior art under pre-AIA 35 U.S.C. 103(c), an applicant must:

• Amend the specification to disclose the names of the parties to the joint research agreement
• Submit a statement that the prior art and the claimed invention were made by or on behalf of parties to a joint research agreement
• Ensure the joint research agreement was in effect on or before the date the claimed invention was made
• State that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement

The MPEP specifies: 37 CFR 1.104(c)(5) sets forth the requirement for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of pre-AIA 35 U.S.C. 103(c)(3), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.

To learn more:

• joint research agreement
• pre-AIA 35 U.S.C. 103(c)
• prior art disqualification
• patent application