2156 Joint Research Agreements [R-01.2024]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 and MPEP § 2146 for examination of applications subject to pre-AIA 35 U.S.C. 102 and 35 U.S.C. 103.]

AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2), and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person (i.e., deemed common ownership) in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. First, 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 a joint research agreement that was in effect on or before the effective filing date of the claimed invention. See 35 U.S.C. 102(c)(1). The AIA defines the term “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. See 35 U.S.C. 100(h). Second, the claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement. See 35 U.S.C. 102(c)(2). Third, the application for patent for the claimed invention must disclose, or be amended to disclose, the names of the parties to the joint research agreement. See 35 U.S.C. 102(c)(3). Joint research agreement subject matter under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(4)(ii). If these conditions are met, the joint research agreement subject matter is not available as prior art under AIA 35 U.S.C. 102(a)(2). See MPEP § 717.02(b), subsection IV, for the requirements to establish a joint research agreement, including when the processing fee under 37 CFR 1.71(g)(2) is required.

The provisions of AIA 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 2146.01. The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: (1) the AIA provision is keyed to the effective filing date of the claimed invention, while the CREATE Act focuses on the date that the claimed invention was made; and (2) the CREATE Act provisions only apply to obviousness rejections and not to anticipation rejections.

In order to invoke a joint research agreement to except a disclosure as prior art, the applicant (or the applicant's representative) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were made by or on behalf of parties to a joint research agreement under AIA 35 U.S.C. 102(c). The statement must also assert that the agreement 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 either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b). See MPEP § 717.02(a), subsection II. If the names of the parties to the joint research agreement are not already stated in the application, it is necessary to amend the application to include the names of the parties to the joint research agreement in accordance with 37 CFR 1.71(g). The amendment to include the names of the parties must be accompanied by a processing fee set in 37 CFR 1.17(i) unless it is filed within one of the time periods set forth in 37 CFR 1.17(g)(2). See MPEP § 717.02(b), subsection IV. An amendment limited to adding the names of the parties to the joint research agreement does not constitute new matter.

As is the case with establishing common ownership, the applicant may, but is not required to, present evidence supporting the existence of the joint research agreement. Furthermore, the Office will not request corroborating evidence in the absence of independent evidence which raises doubt as to the existence or nature of the joint research agreement.

As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception does not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C. 102(a)(1) (public disclosures and certain non-public sales (see MPEP § 2133.03) made before the effective filing date of the claimed invention). Thus, if the issue date or publication date of a U.S. patent document is before the effective filing date of the claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), regardless of the fact that the claimed invention resulted from a joint research agreement and the disclosure was by a party to the agreement.

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