What is the significance of the “as of the effective filing date” phrase in Pre-AIA 35 U.S.C. 103(c)?
What is the significance of the “as of the effective filing date” phrase in Pre-AIA 35 U.S.C. 103(c)? The phrase “as of the effective filing date” in Pre-AIA 35 U.S.C. 103(c) is crucial for determining the applicability of the common ownership or joint research agreement exception. According to MPEP 2146.02: “The phrase ‘as of the…
Read MoreHow did the CREATE Act affect pre-AIA 35 U.S.C. 103(c)?
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) significantly expanded the scope of pre-AIA 35 U.S.C. 103(c). The MPEP states: “The CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person…
Read MoreHow can common ownership or a Joint Research Agreement help overcome a 35 U.S.C. 102(a)(2) rejection?
Common ownership or evidence of a Joint Research Agreement can be used to overcome a 35 U.S.C. 102(a)(2) rejection by establishing entitlement to the 35 U.S.C. 102(b)(2)(C) exception. This exception removes certain disclosures from being considered prior art. MPEP 2152.06 states: “Establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a…
Read MoreWhat is the Common Ownership Exception under AIA 35 U.S.C. 102(b)(2)(C)?
What is the Common Ownership Exception under AIA 35 U.S.C. 102(b)(2)(C)? The Common Ownership Exception, as outlined in MPEP 2154.02(c), is a prior art exception under AIA 35 U.S.C. 102(b)(2)(C). This exception states that disclosures shall not be considered prior art under AIA 35 U.S.C. 102(a)(2) if: The subject matter disclosed and the claimed invention…
Read MoreHow does the AIA joint research agreement provision differ from the CREATE Act?
The AIA joint research agreement provision (AIA 35 U.S.C. 102(c)) and the CREATE Act have two major differences: The AIA provision is based on the effective filing date of the claimed invention, while the CREATE Act focuses on the date the claimed invention was made. The CREATE Act provisions only apply to obviousness rejections, whereas…
Read MoreWhat is a joint research agreement under 35 U.S.C. 102(c)?
A joint research agreement under 35 U.S.C. 102(c) is a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. It allows certain prior art to be excepted or disqualified under specific conditions. The…
Read MoreWhat is the CREATE Act and how does it affect patent applications?
The Cooperative Research and Technology Enhancement (CREATE) Act, enacted in 2004, amended pre-AIA 35 U.S.C. 103(c) to allow disqualification of certain prior art in obviousness rejections if the claimed invention resulted from a joint research agreement. It affects how prior art is treated in certain situations involving collaborations between different entities. The MPEP explains: The…
Read MoreHow does a joint research agreement affect prior art exceptions under 35 U.S.C. 102(b)(2)(C)?
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…
Read MoreHow does the prior art exception under 35 U.S.C. 102(b)(2)(C) affect joint research agreements?
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…
Read MoreWhat is the effect of a Joint Research Agreement on patent rejections?
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,…
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