How does a joint research agreement affect prior art exceptions under 35 U.S.C. 102(b)(2)(C)?

How does a joint research agreement affect prior art exceptions under 35 U.S.C. 102(b)(2)(C)?

A joint research agreement can significantly impact prior art exceptions under 35 U.S.C. 102(b)(2)(C). The MPEP 717.02(a) states:

“If the subject matter of the rejection qualifies as prior art under AIA 35 U.S.C. 102(a)(2) and is only prior art under 35 U.S.C. 102(a)(2), the subject matter disclosed and the claimed invention are deemed commonly owned if […] the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement.”

This means that if the subject matter disclosed in the prior art and the claimed invention were developed under a joint research agreement, they can be considered commonly owned. To invoke this exception:

• The joint research agreement must have been in effect on or before the effective filing date of the claimed invention.
• The claimed invention must have been made as a result of activities within the scope of the joint research agreement.
• The application must disclose or be amended to disclose the names of the parties to the joint research agreement.

Meeting these conditions can help overcome certain prior art rejections based on the joint research agreement exception.

To learn more:

• joint research agreement
• prior art exceptions
• 35 U.S.C. 102(b)(2)(C)
• common ownership

To learn more:

• 35 U.S.C. 102(b)(2)(C)