How does the prior art exception under 35 U.S.C. 102(b)(2)(C) affect joint research agreements?

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.

The prior art exception under 35 U.S.C. 102(b)(2)(C) can be particularly relevant for joint research agreements. According to MPEP 717.02(a):

The exception under AIA 35 U.S.C. 102(b)(2)(C) applies if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

This means that if parties to a joint research agreement jointly own the subject matter disclosed and the claimed invention, or if both are subject to an obligation of assignment to the same entity, the prior art exception can be invoked. This encourages collaboration between different entities without fear of creating prior art that could be used against each other’s patent applications.