What statement must an applicant provide to invoke a joint research agreement exception?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
To invoke a joint research agreement exception, the applicant or their representative must provide a statement that includes the following:
- The disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under AIA 35 U.S.C. 102(c).
- The agreement was in effect on or before the effective filing date of the claimed invention.
- The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.
The MPEP states: “In order to invoke a joint research agreement to except a disclosure as prior art, the applicant (or the applicant’s representative of record) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under AIA 35 U.S.C. 102(c). The statement must also assert that the agreement was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.“