[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 – 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

In order to invoke common ownership to except a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by or subject to an obligation of assignment to the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as “Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B” would be sufficient to establish common ownership.

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by or subject to an obligation of assignment to the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as “Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B” would be sufficient to establish common ownership.

There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).

The question of whether common ownership exists not later than the effective filing date of the claimed invention is to be determined on the facts of the particular case in question. Actual ownership of the disclosed subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the disclosed subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence not later than the effective filing date of the claimed invention in order for the 35 U.S.C. 102(b)(2)(C) exception to apply to the disclosed subject matter. A moral or unenforceable obligation would not provide the basis for common ownership.

The question of whether common ownership exists not later than the effective filing date of the claimed invention is to be determined on the facts of the particular case in question. Actual ownership of the disclosed subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the disclosed subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence not later than the effective filing date of the claimed invention in order for the 35 U.S.C. 102(b)(2)(C) exception to apply to the disclosed subject matter. A moral or unenforceable obligation would not provide the basis for common ownership.

Applications and subject matter disclosed in references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by or subject to an obligation of assignment to the same person. The statement must be signed in accordance with 37 CFR 1.33(b). Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organization(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.

Applications and subject matter disclosed in references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by or subject to an obligation of assignment to the same person. The statement must be signed in accordance with 37 CFR 1.33(b). Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organization(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:

This statement alone is sufficient to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). Once common ownership is established, the subject matter disclosed in Patent A may not be used in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 against the claims of Application X. Patent A, however, could still be used as the basis for a double patenting rejection, if appropriate. See MPEP § 804 for more information on double patenting rejections.

The applicant may, but is not required to, present evidence (e.g., assignment records, affidavits or declarations by the common owner, or court decisions) supporting the existence of the common ownership, in addition to the above-mentioned statement concerning common ownership.

Applicant(s) or patent owner(s) may submit, in addition to the statement regarding common ownership, the following objective evidence:

• (A) Reference to assignments, which are recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3, and which convey the entire rights in the applications or patents to the same person(s) or organization(s);
• (B) Copies of unrecorded assignments, which convey the entire rights in the applications or patents to the same person(s) or organization(s), and which are filed in each of the applications;
• (C) An affidavit or declaration by the common owner, which is filed in the application or patent, and which states that there is common ownership, states facts which explain why the affiant or declarant believes there is common ownership, and is properly signed (i.e., signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization); and
• (D) Other evidence, which is submitted in the application or patent, and which establishes common ownership.

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the subject matter disclosed in 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 35 U.S.C. 102(c), which 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.

In order to invoke common ownership to except a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by or subject to an obligation of assignment to the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as “Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B” would be sufficient to establish common ownership.

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C), then the disclosure to which the exception applies must be owned by or subject to an obligation of assignment to the same entities that owned the application not later than the effective filing date of the claimed invention. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time of the effective filing date of the claimed invention in Application X. In addition, assume that Companies A and B seek to invoke the prior art exception for a disclosure in Patent Z under 35 U.S.C. 102(b)(2)(C). The relevant disclosure in Patent Z must have been co-owned, or have been under an obligation of assignment to both companies, not later than the effective filing date of the claimed invention in Application X in order for the prior art exception to be properly invoked. A statement such as “Application X and Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B” would be sufficient to establish common ownership.

For applications owned by a joint venture of two or more entities, both the application and the disclosure to which the exception applies must have been owned by, or subject to an obligation of assignment to, the joint venture not later than the effective filing date of the claimed invention in the application. For example, if Company A and Company B formed a joint venture, Company C, both Application X and the relevant disclosure in Patent Z must have been owned by, or subject to an obligation of assignment to, Company C not later than the effective filing date of the claimed invention in Application X in order for the relevant disclosure in Patent Z to be properly excepted as prior art under 35 U.S.C. 102(b)(2)(C). If Company A by itself always owned the relevant disclosure in Patent Z and Company C by itself always owned Application X, then the 35 U.S.C. 102(b)(2)(C) exception would not apply to the relevant disclosure in Patent Z.

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:

This statement alone is sufficient to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). Once common ownership is established, the subject matter disclosed in Patent A may not be used in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 against the claims of Application X. Patent A, however, could still be used as the basis for a double patenting rejection, if appropriate. See MPEP § 804 for more information on double patenting rejections.

The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).

The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(a)(2), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).

If the applicant excepts as prior art the subject matter relied upon by the examiner by invoking the exception under 35 U.S.C. 102(b)(2)(C) and by following the procedures set forth in the rules, the examiner will treat the application under examination and the excepted subject matter in the 35 U.S.C. 102(a)(2) reference as if they are “owned by the same person or subject to an obligation of assignment to the same person” for purposes of 35 U.S.C. 102(b)(2)(C).

In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) 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 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) 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 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) 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 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the subject matter disclosed in 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 35 U.S.C. 102(c), which 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.

Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).

Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).

Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).

Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).

For applications owned by a joint venture of two or more entities, both the application and the disclosure to which the exception applies must have been owned by, or subject to an obligation of assignment to, the joint venture not later than the effective filing date of the claimed invention in the application. For example, if Company A and Company B formed a joint venture, Company C, both Application X and the relevant disclosure in Patent Z must have been owned by, or subject to an obligation of assignment to, Company C not later than the effective filing date of the claimed invention in Application X in order for the relevant disclosure in Patent Z to be properly excepted as prior art under 35 U.S.C. 102(b)(2)(C). If Company A by itself always owned the relevant disclosure in Patent Z and Company C by itself always owned Application X, then the 35 U.S.C. 102(b)(2)(C) exception would not apply to the relevant disclosure in Patent Z.

For applications owned by a joint venture of two or more entities, both the application and the disclosure to which the exception applies must have been owned by, or subject to an obligation of assignment to, the joint venture not later than the effective filing date of the claimed invention in the application. For example, if Company A and Company B formed a joint venture, Company C, both Application X and the relevant disclosure in Patent Z must have been owned by, or subject to an obligation of assignment to, Company C not later than the effective filing date of the claimed invention in Application X in order for the relevant disclosure in Patent Z to be properly excepted as prior art under 35 U.S.C. 102(b)(2)(C). If Company A by itself always owned the relevant disclosure in Patent Z and Company C by itself always owned Application X, then the 35 U.S.C. 102(b)(2)(C) exception would not apply to the relevant disclosure in Patent Z.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

The question of whether common ownership exists not later than the effective filing date of the claimed invention is to be determined on the facts of the particular case in question. Actual ownership of the disclosed subject matter and the claimed invention by the same individual(s) or organization(s) or a legal obligation to assign both the disclosed subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence not later than the effective filing date of the claimed invention in order for the 35 U.S.C. 102(b)(2)(C) exception to apply to the disclosed subject matter. A moral or unenforceable obligation would not provide the basis for common ownership.

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. Company A and University B have a joint research agreement (JRA), which goes into effect on January 2, 2015. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because the JRA was not in effect until January 2, 2015, which is after the effective filing date of Company A’s invention (December 12, 2014).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

In order to invoke common ownership to except a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

Applications and subject matter disclosed in references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by or subject to an obligation of assignment to the same person. The statement must be signed in accordance with 37 CFR 1.33(b). Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organization(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.

In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) 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 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the subject matter disclosed in 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 35 U.S.C. 102(c), which 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.

There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).

There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).

There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).

There is no requirement that the entire disclosure in the 35 U.S.C. 102(a)(2) reference be commonly owned. If subject matter disclosed that was relied upon as the basis for the rejection(s) was commonly owned, then it may be proper to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). For example, if the rejections in an Office action are only based upon the disclosure for the first embodiment, then only the first embodiment of the 35 U.S.C. 102(a)(2) reference needs to be commonly owned. Therefore, using the facts from the example in the above paragraph, the statement establishing common ownership could state, “Application X and the first embodiment of Patent Z were, not later than the effective filing date of the claimed invention in Application X, commonly owned by Companies A and B.” This statement would be sufficient to establish common ownership of Application X and the first embodiment of Patent Z. In this case, the examiner may still apply Patent Z’s disclosure that is not applicable to the first embodiment (e.g., a disclosure unique to another embodiment) as prior art under 35 U.S.C. 102(a)(2).

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g)(1). Specifically, 37 CFR 1.71(g)(1) provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement as required by 35 U.S.C. 102(c).

If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g)(1). Specifically, 37 CFR 1.71(g)(1) provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement as required by 35 U.S.C. 102(c).

37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to establish that the prior art exception under 35 U.S.C. 102(b)(2)(C) applies in view of a joint research agreement.

37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to establish that the prior art exception under 35 U.S.C. 102(b)(2)(C) applies in view of a joint research agreement.

If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or international patent application publication under the PCT, which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter in the patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.

If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection based upon subject matter disclosed in a U.S. patent, U.S. patent application publication, or international patent application publication under the PCT, which qualifies as prior art only under 35 U.S.C. 102(a)(2), and the examiner withdraws the rejection, the examiner may need to issue an Office action containing a new double patenting rejection based upon the excepted subject matter in the patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’, which is owned by Company A. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of the claimed invention in Company A’s application is December 12, 2014. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) and complying with the requirements of 37 CFR 1.71(g).

Company A and University B have a joint research agreement (JRA) in place prior to the effective filing date of claimed invention X’. The JRA is limited to activities for invention Y and invention X’ was not made as a result of activities undertaken within the scope of the JRA. Professor BB from University B communicates invention X to Company A. University B filed a patent application on invention X, which has an effective filing date of November 12, 2014. Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. The effective filing date of claimed invention X’ in Company A’s application is December 12, 2014. University B retains ownership of invention X, and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 102(c) to except the subject matter disclosed in University B’s application as prior art by invoking the exception under 35 U.S.C. 102(b)(2)(C) because claimed invention X’ was not made as a result of the activities undertaken within the scope of the JRA.

Applications and subject matter disclosed in references (whether patents, patent applications, or patent application publications) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the disclosed subject matter were, not later than the effective filing date for the claimed invention, owned by or subject to an obligation of assignment to the same person. The statement must be signed in accordance with 37 CFR 1.33(b). Such a statement is sufficient to establish common ownership of, or an obligation for assignment to, the same person(s) or organization(s) for purposes of 35 U.S.C. 102(b)(2)(C). The applicant(s), patent owner(s), or the representative(s) have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient because of their paramount obligation of candor and good faith to the USPTO.

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s or patent owner’s representation. For example, the independent evidence may show the lack of common ownership of (or the existence of an obligation to commonly assign) the application being examined and the applied subject matter in the U.S. patent, U.S. patent application publication reference, or international patent application publication under the Patent Cooperation Treaty (PCT). In such cases, the examiner should explain why the accuracy of the representation is doubted. In addition, the examiner may require objective evidence of common ownership of (or the existence of an obligation to assign) the application being examined and the applied subject matter not later than the effective filing date of the claimed invention in the application being examined. Examiners should note that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention.

37 CFR 1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.

37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted. It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to establish that the prior art exception under 35 U.S.C. 102(b)(2)(C) applies in view of a joint research agreement.

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the subject matter disclosed in 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 35 U.S.C. 102(c), which 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. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). As with establishing common ownership, the applicant or patent owner may, but is not required to, present evidence supporting the existence of the joint research agreement.

For invoking the joint research agreement provisions in pre-AIA applications, see MPEP §§ 2146 – 2146.03.