How does a joint research agreement affect the AIA first inventor to file provisions?

How does a joint research agreement affect the AIA first inventor to file provisions?

A joint research agreement (JRA) can have significant implications for the America Invents Act (AIA) first inventor to file provisions. Specifically:

• It can help prevent collaborators’ disclosures from being used as prior art against each other.
• It affects how the USPTO applies the 35 U.S.C. 102(b)(2)(C) exception to prior art.

According to MPEP 2156: “If the provisions of 35 U.S.C. 102(c) are met, common ownership or obligation of assignment to the same person of a claimed invention and a prior art disclosure may be established by showing that the disclosure was developed and made by or on behalf of parties to a joint research agreement.” This means that disclosures made under a JRA may not be considered prior art for determining obviousness, even under the first inventor to file system.

To learn more:

• Joint Research Agreement
• AIA
• First Inventor to File
• Prior Art Exception