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…

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How 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…

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How 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…

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What 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…

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What 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…

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How 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…

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How 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…

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