What are the requirements for invoking the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C)?

To invoke the joint research agreement provisions of 35 U.S.C. 102(b)(2)(C), an applicant must:

1. Amend 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).
2. Submit the required statement to invoke the prior art exception. According to the MPEP, this statement must include:

A statement to the effect that the subject matter disclosed in the prior art and the claimed invention were made by or on the behalf of 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.

The statement should be on a separate sheet and must be signed in accordance with 37 CFR 1.33(b). The joint research agreement must be in effect on or before the effective filing date of the claimed invention, but is not required to be in effect on or before the prior art date of the reference.

To learn more:

• Joint Research Agreement
• Prior Art Exception
• AIA
• Patent Application