How does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)?
A joint research agreement can have significant effects on patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides an example: “Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement.…
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…
Read MoreHow can an applicant establish common ownership under Pre-AIA 35 U.S.C. 103(c)?
How can an applicant establish common ownership under Pre-AIA 35 U.S.C. 103(c)? To establish common ownership under Pre-AIA 35 U.S.C. 103(c), an applicant must provide evidence or a statement to show that the claimed invention and the prior art reference were owned by the same person or subject to an obligation of assignment to the…
Read MoreHow can an applicant establish common ownership to disqualify prior art under pre-AIA 35 U.S.C. 103(c)?
An applicant can establish common ownership to disqualify prior art under pre-AIA 35 U.S.C. 103(c) by submitting a clear and conspicuous statement that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. This statement must be signed in…
Read MoreWhat 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 MoreWhat is the “create date” in the context of Pre-AIA 35 U.S.C. 103(c)?
What is the “create date” in the context of Pre-AIA 35 U.S.C. 103(c)? The “create date” is a crucial concept in determining the applicability of Pre-AIA 35 U.S.C. 103(c). According to the MPEP 2146, the “create date” refers to the date that the subject matter in question was created. Specifically, the MPEP states: “The ‘create…
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 MoreWhat is the impact of the CREATE Act on double patenting rejections?
The CREATE Act has a significant impact on double patenting rejections in patent examination. The MPEP explains: “Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003).“ As…
Read MoreWhat is the effective date for the changes made by the CREATE Act?
The CREATE Act has a specific effective date for its changes to pre-AIA 35 U.S.C. 103(c). According to the MPEP: “The effective date provision of the CREATE Act provided that its amendments shall apply to any patent (including any reissue patent) granted on or after December 10, 2004, except those patents subject to the current…
Read MoreWhat is considered “commonly owned” under pre-AIA 35 U.S.C. 103(c)?
According to the MPEP, The term “commonly owned” means wholly owned by the same person(s) or organization(s) at the time the invention was made. This definition is crucial for determining whether certain prior art can be disqualified under pre-AIA 35 U.S.C. 103(c). It’s important to note that the common ownership must exist at the time…
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