How 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…

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What 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…

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What 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…

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How 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…

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How 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,…

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How 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…

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What 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:…

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What 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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