How can an applicant invoke the joint research agreement provisions to disqualify prior art?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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 joint research agreement Ensure the joint research agreement was in effect on or before the date the claimed invention was made State that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement The MPEP specifies: 37 CFR 1.104(c)(5) sets forth the requirement for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of pre-AIA 35 U.S.C. 103(c)(3), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) MPEP 2146.02 Required Requirement for Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) MPEP 2146.02 Requirement for Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) MPEP 2146.02 Requirement for Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) MPEP 2146.02 Joint Research Agreement for Pre-AIA 35 U.S.C. 103(c) MPEP 2146.02 Requirement for Prior Art Disqualification Statement MPEP 2146.02 Required Requirement for Common Ownership of Prior Art Under Pre...