How does Pre-AIA 35 U.S.C. 103(c) affect joint research agreements?
How does Pre-AIA 35 U.S.C. 103(c) affect joint research agreements?
Pre-AIA 35 U.S.C. 103(c) has significant implications for joint research agreements. The MPEP 2146 provides guidance on this matter:
“Pre-AIA 35 U.S.C. 103(c) applies to subject matter developed by another person which qualifies as prior art only under one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g) and which is subject to a joint research agreement.”
This means that if subject matter arises from a joint research agreement and would otherwise be considered prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g), it may be disqualified as prior art for obviousness determinations under certain conditions. To benefit from this provision:
- The claimed invention must have been made by or on behalf of parties to a joint research agreement.
- The agreement must have been in effect on or before the date the claimed invention was made.
- The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
- The application for patent must disclose or be amended to disclose the names of the parties to the joint research agreement.
This provision encourages collaborative research by reducing the risk of one party’s work being used as prior art against another party’s patent application within the scope of their joint research agreement.
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