What 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 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 MoreWhat are inventor-originated prior public disclosures?
Inventor-originated prior public disclosures are another type of prior art exception under the America Invents Act (AIA). These disclosures refer to public disclosures made by the inventor or a joint inventor before the effective filing date of the claimed invention. The MPEP section 2153 mentions this concept: See MPEP § 2153.02 for prior art exceptions…
Read MoreWhat is the significance of naming inventors in publications and patent applications?
The naming of inventors in publications and patent applications is crucial for determining whether a disclosure qualifies for the grace period inventor-originated disclosure exception. The MPEP provides specific guidance: “This means that in circumstances where an application names additional persons as joint inventors relative to the persons named as authors in the publication (e.g., the…
Read MoreHow can an applicant identify grace period inventor-originated disclosures?
Applicants can identify grace period inventor-originated disclosures in several ways: Include a statement in the patent application specification upon filing. The MPEP 2153.01(a) states: “Applicants can include a statement identifying any grace period inventor-originated disclosures in the specification upon filing. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a).” Provide a copy of the grace period…
Read MoreHow can an applicant establish that a disclosure falls under the grace period inventor-originated disclosure exception?
An applicant can establish that a disclosure falls under the grace period inventor-originated disclosure exception in several ways: Apparent from the disclosure itself: If the disclosure was made one year or less before the effective filing date, names the inventor or a joint inventor as an author, and does not name additional persons as authors,…
Read MoreHow does the “grace period non-inventor disclosure exception” work in patent law?
The “grace period non-inventor disclosure exception” is a provision in 35 U.S.C. 102(b)(1)(B) that protects inventors from certain disclosures made by others within one year of their patent application filing. This exception is explained in MPEP 2153: “[A] disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art…
Read MoreWhat is a grace period inventor-originated disclosure?
A grace period inventor-originated disclosure is a type of prior art exception under the America Invents Act (AIA). This exception allows inventors to disclose their invention within a certain period before filing a patent application without having that disclosure count as prior art against their own application. The MPEP section 2153 refers to this concept:…
Read MoreWhat is the time frame for the grace period inventor-originated disclosure exception?
The grace period inventor-originated disclosure exception applies to disclosures made one year or less before the effective filing date of the claimed invention. Importantly, the MPEP notes: “The one-year grace period in AIA 35 U.S.C. 102(b)(1)(A) is extended to the next succeeding business day if the end of the one-year grace period otherwise falls on…
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