How does the Joint Research Agreement affect prior art under AIA?
How does the Joint Research Agreement affect prior art under AIA? The Joint Research Agreement (JRA) plays a significant role in determining prior art under the AIA. According to MPEP 2154.02(c), subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of…
Read MoreWhat statement must an applicant provide to invoke a joint research agreement exception?
To invoke a joint research agreement exception, the applicant or their representative must provide a statement that includes the following: The disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under AIA 35 U.S.C. 102(c). The…
Read MoreWhat are the requirements for invoking a joint research agreement exception under AIA 35 U.S.C. 102(c)?
To invoke a joint research agreement exception under AIA 35 U.S.C. 102(c), three conditions must be met: 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 a joint research agreement that was in effect on or before the…
Read MoreHow does the joint research agreement exception apply to prior art under AIA 35 U.S.C. 102(a)(1)?
The joint research agreement exception under AIA 35 U.S.C. 102(b)(2)(C) does not apply to disclosures that qualify as prior art under AIA 35 U.S.C. 102(a)(1). The MPEP clarifies: “The AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the effective…
Read MoreIs evidence required to support the existence of a joint research agreement?
Generally, evidence supporting the existence of a joint research agreement is not required, but the applicant may choose to provide it. The MPEP states: “As is the case with establishing common ownership, the applicant may, but is not required to, present evidence supporting the existence of the joint research agreement. Furthermore, the Office will not…
Read MoreWhat is the relationship between Joint Research Agreements and the CREATE Act?
The relationship between Joint Research Agreements (JRAs) and the Cooperative Research and Technology Enhancement (CREATE) Act is significant in patent law. As explained in MPEP 2156: “The CREATE Act was designed to promote cooperative research between universities, public sector organizations, and private sector organizations by providing a safe harbor against the use of certain prior…
Read MoreWhat are the time requirements for submitting a joint research agreement amendment?
The time requirements for submitting a joint research agreement amendment are specified in 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…
Read MoreHow do Joint Research Agreements apply to pre-AIA and AIA patent applications?
Joint Research Agreements (JRAs) apply differently to pre-AIA (before March 16, 2013) and AIA (on or after March 16, 2013) patent applications. According to MPEP 2156: For pre-AIA applications: “The joint research agreement provisions of 35 U.S.C. 103(c) as amended by the CREATE Act apply to applications for patent filed on or after December 10,…
Read MoreHow does a joint research agreement affect the AIA first inventor to file provisions?
How does a joint research agreement affect the AIA first inventor to file provisions? A joint research agreement (JRA) can have significant implications for the America Invents Act (AIA) first inventor to file provisions. Specifically: It can help prevent collaborators’ disclosures from being used as prior art against each other. It affects how the USPTO…
Read MoreHow can an applicant invoke the joint research agreement provisions to disqualify prior art?
To invoke the joint research agreement provisions and disqualify prior art under pre-AIA 35 U.S.C. 103(c), an applicant must: Amend the specification to disclose the names of the parties to the joint research agreement Submit a statement that the prior art and the claimed invention were made by or on behalf of parties to a…
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