MPEP Q & A 222: What are the Three Conditions That Must be Satisfied …?

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Question:

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, 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 in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. What are these three conditions?

Answer:

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, 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 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.
    • 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.
  • Second, the claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
  • 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.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2156 of the MPEP.  The following is a brief summary of section 2156.

2156 Joint Research Agreements

This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

This section covers joint research agreements. AIA 35 U.S.C. 102(c) discusses common ownership under joint research agreements. This portion of the statute provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, 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 in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. The three conditions are covered in this section.