What are the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement?

What are the requirements for invoking the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement?

To invoke the AIA 35 U.S.C. 102(b)(2)(C) exception based on a joint research agreement, specific requirements must be met. According to MPEP 717.02(b), the following conditions apply:

1. Timing of the agreement: The joint research agreement must have been in effect on or before the effective filing date of the claimed invention.
2. Statement requirement: The applicant must file a statement on the record that the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to the joint research agreement.
3. Amendment to the specification: The application must be amended to disclose the names of the parties to the joint research agreement.
4. Development and invention criteria: The subject matter disclosed must have been developed, and the claimed invention must have been made, by or on behalf of one or more parties to the joint research agreement.

The MPEP further states: “If the requirements have not been met, the examiner will treat the inquiry as a request for information under 37 CFR 1.105.” This means that if the applicant fails to meet these requirements, the examiner may request additional information to properly evaluate the exception claim.

To learn more:

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

To learn more:

• 35 U.S.C. 102(b)(2)(C)