How does the USPTO evaluate if the prior art exception under AIA 35 U.S.C. 102(b)(2)(C) is properly invoked?

How does the USPTO evaluate if the prior art exception under AIA 35 U.S.C. 102(b)(2)(C) is properly invoked?

The USPTO evaluates whether the prior art exception under AIA 35 U.S.C. 102(b)(2)(C) is properly invoked by examining the evidence provided by the applicant. According to MPEP 717.02(b):

“The applicant may invoke this exception by filing a statement on the record that:

• The subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person; or
• The subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention. The application must also be amended to disclose the names of the parties to the joint research agreement.”

The examiner will then assess the statement and any supporting evidence to determine if the exception applies.

To learn more:

• AIA
• prior art exception
• 35 U.S.C. 102(b)(2)(C)
• USPTO evaluation
• joint research agreement

To learn more:

• 35 U.S.C. 102(b)(2)(C)