What are the requirements for invoking the joint research agreement exception?
What are the requirements for invoking the joint research agreement exception? To invoke the joint research agreement (JRA) exception and disqualify certain prior art, specific requirements must be met. According to MPEP 2156, these requirements include: The subject matter disclosed must have been developed and the claimed invention made by, or on behalf of, one…
Read MoreHow does pre-AIA 35 U.S.C. 103(c) affect double patenting rejections?
Pre-AIA 35 U.S.C. 103(c) does not affect double patenting rejections. The MPEP clearly states: “In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP § 804.” This means that even if certain subject…
Read MoreHow 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 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 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 does the CREATE Act affect provisional rejections under pre-AIA 35 U.S.C. 103(a)?
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) affects provisional rejections under pre-AIA 35 U.S.C. 103(a) by potentially disqualifying certain prior art references. The MPEP states: For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under pre-AIA 35 U.S.C. 103(a) using…
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…
Read MoreHow does common ownership affect patent examination under pre-AIA 35 U.S.C. 103(c)?
Common ownership plays a crucial role in patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides guidance on this: “Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s)…
Read MoreWhat is the burden of establishing disqualification under pre-AIA 35 U.S.C. 103(c)?
The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) lies with the applicant. The MPEP states: “The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject…
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