What are the requirements for establishing a prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?

To establish a prior art exception under AIA 35 U.S.C. 102(b)(2)(C), applicants must file a proper submission. According to MPEP 717.02(c), this can be done in two ways:

1. Common ownership: A clear and conspicuous statement that the claimed invention and the subject matter disclosed were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment to, the same person.
2. Joint research agreement:
   • An amendment to the specification to disclose the names of the parties to the joint research agreement, if not already disclosed, in accordance with 37 CFR 1.71(g).
   • A clear and conspicuous statement that 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, within the meaning of 35 U.S.C. 100(h), which was in effect on or before the effective filing date of the claimed invention, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.

It’s important to note that the reference must only qualify as prior art under 35 U.S.C. 102(a)(2) and must have been used in an anticipation rejection under 35 U.S.C. 102(a)(2) or obviousness rejection under 35 U.S.C. 103.

To learn more:

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

To learn more:

• AIA 35 U.S.C. 102(b)(2)(C)