Question 1

What is the significance of the effective filing date in invoking the AIA 35 U.S.C. 102(b)(2)(C) exception?

Accepted Answer

What is the significance of the effective filing date in invoking the AIA 35 U.S.C. 102(b)(2)(C) exception?

The effective filing date plays a crucial role in invoking the AIA 35 U.S.C. 102(b)(2)(C) exception. According to MPEP 717.02(b):

"The effective filing date is the filing date of the earliest application for which the application is entitled to a right of priority or benefit under 35 U.S.C. 119, 120, 121, 365, or 386, except as provided in 35 U.S.C. 154(d)."

The significance of the effective filing date is twofold:

For common ownership, the subject matter disclosed and the claimed invention must have been 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.
For joint research agreements, the agreement must have been in effect on or before the effective filing date of the claimed invention.

Therefore, applicants must ensure that the ownership or joint research agreement conditions are met by the effective filing date to successfully invoke the exception.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 2

What is the relationship between AIA 35 U.S.C. 102(b)(2)(C) and joint research agreements?

Accepted Answer

What is the relationship between AIA 35 U.S.C. 102(b)(2)(C) and joint research agreements?

AIA 35 U.S.C. 102(b)(2)(C) includes provisions for joint research agreements (JRAs) that can disqualify certain prior art. This relationship is important for collaborative research efforts. Key points include:

Subject matter disclosed and claimed invention must have been made by or on behalf of parties to a JRA.
The JRA must be in effect on or before the effective filing date of the claimed invention.
The claimed invention must have been made as a result of activities within the scope of the JRA.
The application must disclose or be amended to disclose the names of the parties to the JRA.

As stated in MPEP 717.02:

If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art under AIA 35 U.S.C. 102(a)(2) if 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. [...] AIA 35 U.S.C. 102(c) provides that a joint research agreement can establish common ownership under AIA 35 U.S.C. 102(b)(2)(C) under certain conditions.

This provision encourages collaborative research by providing a mechanism to avoid certain prior art rejections for inventions resulting from joint research efforts.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 3

What is the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?

Accepted Answer

The prior art exception under AIA 35 U.S.C. 102(b)(2)(C) allows certain disclosures to be excluded as prior art if they meet specific criteria. According to MPEP 717.02(c), this exception applies when:

The subject matter disclosed 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, 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.

It's important to note that this exception only applies to prior art under 35 U.S.C. 102(a)(2) and not to prior art under 35 U.S.C. 102(a)(1).

To learn more:

AIA
prior art exception
common ownership
joint research agreement

Question 4

What is the effect of a Joint Research Agreement on patent rejections?

Accepted Answer

A Joint Research Agreement (JRA) can affect patent rejections in the following ways:

It can except certain subject matter as prior art under 35 U.S.C. 102(b)(2)(C) and 102(c) for applications subject to AIA.
It can disqualify certain references as prior art under pre-AIA 35 U.S.C. 103(c).
When a rejection is overcome due to a JRA, the examiner may need to make a new double patenting rejection in the next Office action.

As stated in MPEP 706.07(a): "When a reference's subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action."

To learn more:

Question 5

What is the 35 U.S.C. 102(b)(2)(C) exception?

Accepted Answer

The 35 U.S.C. 102(b)(2)(C) exception is a prior art exception that can be invoked to disqualify certain disclosures as prior art under 35 U.S.C. 102(a)(2). As stated in the MPEP:

It is important to recognize that the 35 U.S.C. 102(b)(2)(C) exception can only be invoked in regard to a disclosure that is applied in a rejection as prior art under 35 U.S.C. 102(a)(2) (disclosures in a U.S. patent, U.S. patent application, or WIPO published international application effectively filed before the effective filing date of the claimed invention).

This exception applies to commonly owned subject matter or subject matter resulting from a joint research agreement.

To learn more:

Question 6

What are the time periods for submitting an amendment to disclose parties to a joint research agreement?

Accepted Answer

According to 37 CFR 1.71(g)(2), an amendment to disclose the names of the parties to a joint research agreement must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if not filed within one of the following time periods:

Within three months of the filing date of a national application;
Within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application;
Before the mailing of a first Office action on the merits; or
Before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.

If the amendment is filed after the date the issue fee is paid, additional requirements apply as stated in 37 CFR 1.71(g)(3):

If an amendment under paragraph (g)(1) of this section 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. 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.

To learn more:

Joint Research Agreement
Patent Application
Amendment
AIA

Question 7

What are the requirements for recording a joint research agreement with the USPTO?

Accepted Answer

Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:

Identify the document as a 'joint research agreement' in the description of interest conveyed
Indicate the name of the owner of the application or patent
Indicate the name of each other party to the joint research agreement
Indicate the date the joint research agreement was executed

The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.

Remember that A patent cover sheet may not refer to trademark applications or registrations. Separate cover sheets must be used for patents and trademarks.

For more information on joint research agreement, visit: joint research agreement.

For more information on patent assignment, visit: patent assignment.

For more information on recordation, visit: recordation.

Question 8

What are the requirements for invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C)?

Accepted Answer

To invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C), an applicant must:

Amend the specification to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g).
Submit the required statement to invoke the prior art exception. According to the MPEP, this statement must include:

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. 100(h), 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 be on a separate sheet and must be signed in accordance with 37 CFR 1.33(b). The joint research agreement must be in effect on or before the effective filing date of the claimed invention, but is not required to be in effect on or before the prior art date of the reference.

To learn more:

Question 9

What are the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement?

Accepted Answer

What are the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement?

To invoke the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement, specific requirements must be met. According to MPEP 717.02(b), the following conditions apply:

Timing of the agreement: The joint research agreement must have been in effect on or before the effective filing date of the claimed invention.
Statement requirement: The applicant must file a statement on the record that the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to the joint research agreement.
Amendment to the specification: The application must be amended to disclose the names of the parties to the joint research agreement.
Development and invention criteria: The subject matter disclosed must have been developed, and the claimed invention must have been made, by or on behalf of one or more parties to the joint research agreement.

The MPEP further states: "If the requirements have not been met, the examiner will treat the inquiry as a request for information under 37 CFR 1.105." This means that if the applicant fails to meet these requirements, the examiner may request additional information to properly evaluate the exception claim.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 10

What are the requirements for establishing a prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?

Accepted Answer

To establish a prior art exception under AIA 35 U.S.C. 102(b)(2)(C), applicants must file a proper submission. According to MPEP 717.02(c), this can be done in two ways:

Common ownership: A clear and conspicuous statement that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment to, the same person.
Joint research agreement:
- An amendment to the specification to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g).
- A clear and conspicuous statement that 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, within the meaning of 35 U.S.C. 100(h), 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.

It's important to note that the reference must only qualify as prior art under 35 U.S.C. 102(a)(2) and must have been used in an anticipation rejection under 35 U.S.C. 102(a)(2) or obviousness rejection under 35 U.S.C. 103.

To learn more:

AIA 35 U.S.C. 102(b)(2)(C)

Question 11

How should a joint research agreement be recorded with the USPTO?

Accepted Answer

To record a joint research agreement with the USPTO, follow these steps based on 37 CFR 3.11(c) and 37 CFR 3.31(g):

Prepare either a copy of the joint research agreement or an excerpt of it.
Complete a cover sheet that includes:
- Identification of the document as a "joint research agreement" in the space for describing the interest conveyed
- The name of the owner of the application or patent
- The name of each other party to the joint research agreement
- The date the joint research agreement was executed
Submit the document and cover sheet to the USPTO for recordation.

As stated in MPEP 302.07: "If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a 'joint research agreement' (in the space provided for the description of the interest conveyed if using Form PTO-1595)."

Question 12

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

Accepted Answer

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:

35 U.S.C. 102(b)(2)(C)

Question 13

How does the prior art exception under 35 U.S.C. 102(b)(2)(C) affect joint research agreements?

russ.krajec@blueironip.com · Accepted Answer

How does the prior art exception under 35 U.S.C. 102(b)(2)(C) affect joint research agreements?

The prior art exception under 35 U.S.C. 102(b)(2)(C) can be particularly relevant for joint research agreements. According to MPEP 717.02(a):

The exception under AIA 35 U.S.C. 102(b)(2)(C) applies if 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.

This means that if parties to a joint research agreement jointly own the subject matter disclosed and the claimed invention, or if both are subject to an obligation of assignment to the same entity, the prior art exception can be invoked. This encourages collaboration between different entities without fear of creating prior art that could be used against each other's patent applications.

To learn more:

AIA 35 U.S.C. 102(b)(2)(C)

Question 14

How does the prior art exception affect double patenting rejections?

Accepted Answer

The prior art exception under 35 U.S.C. 102(b)(2)(C) can have implications for double patenting rejections. According to MPEP 717.02(c):

Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application.
Double patenting rejections may arise as a result of the joint research agreement exception.
For double patenting analysis, the U.S. application or patent and the subject matter excepted under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) will be treated as if commonly owned.

The MPEP further states: Congress recognized that deeming a joint research agreement as common ownership would result in situations in which there would be double patenting rejections between applications not owned by the same party.

To overcome double patenting rejections, applicants may file a terminal disclaimer in accordance with 37 CFR 1.321.

To learn more:

Question 15

How does the AIA affect the treatment of common ownership in patent applications?

Accepted Answer

The America Invents Act (AIA) has significantly changed how common ownership is treated in patent applications. While MPEP 715.01(b) primarily deals with pre-AIA law, it provides guidance on the transition:

For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c).

This reference to MPEP § 2154.02(c) indicates that for AIA applications, different rules apply regarding common ownership. Key differences include:

The focus shifts from the time of invention to the effective filing date
The concept of 'joint research agreement' is expanded
There are new provisions for overcoming rejections based on common ownership

It's crucial for inventors and patent professionals to understand these changes and how they affect the examination process for applications filed under the AIA.

To learn more:

Question 16

How does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements?

Accepted Answer

How does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements?

The AIA 35 U.S.C. 102(b)(2)(C) exception applies to joint research agreements as follows:

The subject matter disclosed and the claimed invention were made by or on behalf of parties to a joint research agreement.
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 application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

As stated in MPEP 717.02: 'If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, the subject matter disclosed in the prior art reference that was owned by the same person or subject to an obligation of assignment to the same person and the claimed invention shall not be treated as prior art under AIA 35 U.S.C. 102(a)(2).'

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 17

How does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements?

Accepted Answer

How does the AIA 35 U.S.C. 102(b)(2)(C) exception apply to joint research agreements?

The AIA 35 U.S.C. 102(b)(2)(C) exception applies to joint research agreements as follows:

The subject matter disclosed and the claimed invention were made by or on behalf of parties to a joint research agreement.
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 application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

As stated in MPEP 717.02(c): "If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, the subject matter disclosed in the commonly owned or joint research agreement reference is not considered to be prior art under AIA 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections."

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 18

How does a joint research agreement affect prior art exceptions under 35 U.S.C. 102(b)(2)(C)?

Accepted Answer

How does a joint research agreement affect prior art exceptions under 35 U.S.C. 102(b)(2)(C)?

A joint research agreement can significantly impact prior art exceptions under 35 U.S.C. 102(b)(2)(C). The MPEP 717.02(a) states:

"If the subject matter of the rejection qualifies as prior art under AIA 35 U.S.C. 102(a)(2) and is only prior art under 35 U.S.C. 102(a)(2), the subject matter disclosed and the claimed invention are deemed commonly owned if [...] 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."

This means that if the subject matter disclosed in the prior art and the claimed invention were developed under a joint research agreement, they can be considered commonly owned. To invoke this exception:

The joint research agreement must have been in effect on or before the effective filing date of the claimed invention.
The claimed invention must have been made as a result of activities within the scope of the joint research agreement.
The application must disclose or be amended to disclose the names of the parties to the joint research agreement.

Meeting these conditions can help overcome certain prior art rejections based on the joint research agreement exception.

To learn more:

35 U.S.C. 102(b)(2)(C)

Question 19

How do I record a joint research agreement?

Accepted Answer

To record a joint research agreement (JRA) with the USPTO, follow these steps:

Prepare the JRA document or an excerpt of it
Complete a cover sheet, clearly identifying the document as a "joint research agreement"
Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: "If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a 'joint research agreement'."

The cover sheet for a JRA must include:

The name of the owner of the application or patent
The name of each other party to the joint research agreement
The date the joint research agreement was executed

JRAs can be submitted electronically via EPAS, by mail, or by fax, following the same procedures as other assignment documents.

For more information on joint research agreement, visit: joint research agreement.

Question 20

How do examiners handle applications where common ownership or a joint research agreement has not been established?

Accepted Answer

According to MPEP 717.02(c), when examining applications where common ownership or a joint research agreement has not been established, examiners will:

Assume the subject matter disclosed in the reference is not excepted under 35 U.S.C. 102(b)(2)(C)
Examine the application on all grounds other than the possible exception
Consider the applicability of references under 35 U.S.C. 102(a)(2) or 103
Apply the best references against the claimed invention

The MPEP states: When applying any disclosures that only qualify as prior art under 35 U.S.C. 102(a)(2) in a prior art rejection against the claims, the examiner should anticipate that the subject matter disclosed in the reference may be excepted under 35 U.S.C. 102(b)(2)(C) and consider whether other rejections based on alternative prior art should be made in case the subject matter is excepted as prior art.

To learn more:

Question 21

How do examiners handle applications where common ownership or a joint research agreement has been established?

Accepted Answer

When common ownership or a joint research agreement has been established, examiners follow a specific procedure as outlined in MPEP 717.02(c):

Examine the applications on all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2).
Examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection if appropriate in view of the excepted subject matter disclosed in the reference.
Invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).

The MPEP states: If the application being examined has established that the disclosure is excepted as prior art under 35 U.S.C. 102(b)(2)(C) the examiner will: (A) examine the applications as to all grounds, except the disclosure that is excepted as prior art under 35 U.S.C. 102(a)(2); (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate in view of the excepted subject matter disclosed in the reference; and (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).

To learn more:

patent examination
common ownership
joint research agreement
double patenting

Question 22

How can the prior art exception under 35 U.S.C. 102(b)(2)(C) be invoked for joint research agreements?

Accepted Answer

The prior art exception under 35 U.S.C. 102(b)(2)(C) can also be invoked for joint research agreements. The MPEP outlines the requirements:

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 assert that:

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

Additionally, the names of the parties to the joint research agreement must be disclosed in the application.

To learn more:

35 U.S.C. 102(b)(2)(C)

Patent Law FAQ

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MPEP 300 - Ownership and Assignment (3)

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