717.02 Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C)
This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA.
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Section Frequency Chart
35 U.S.C. 102(b)(2)(C) provides that disclosures shall not be prior art under 35 U.S.C. 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
- If the prior art exception under 35 U.S.C. 102(b)(2)(C) is properly invoked, the commonly owned or joint research agreement reference is not available as prior art under 35 U.S.C. 102(a)(2) for both anticipation and obviousness rejections.
35 U.S.C. 102(c) provides that a joint research agreement can establish that disclosed subject matter and a claimed invention are deemed owned by the same person or subject to an obligation of assignment to the same person if the following three conditions are satisfied in order to apply the provisions of 35 U.S.C. 102(b)(2)(C):
- A. 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.
- B. The claimed invention must have been made as a result of activities undertaken within the scope of the joint research agreement.
- C. 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.
717.02(a) Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C)
This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA.
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I. COMMON OWNERSHIP
In order to invoke common ownership to disqualify a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention.
- The statement should either be on or begin on a separate sheet and must not be directed to other matters.
A. Definition of Common Ownership
The term "commonly owned" is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by the same person(s) or organization(s)/business entity(ies).
- If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist.
- Common ownership requires that the person(s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention.
B. Requirements to Establish Common Ownership
The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed invention in order to disqualify that subject matter as prior art by invoking a prior art exception.
- A statement of present common ownership is not sufficient.
II. JOINT RESEARCH AGREEMENT
In order to invoke a joint research agreement to establish that the 35 U.S.C. 102(b)(2)(C) exception applies to a disclosure, the applicant (or patent owner) 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 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.
If an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement.
If the applicant disqualifies the subject matter relied upon by the examiner by invoking the exception under 35 U.S.C. 102(b)(2)(C) and by following the procedures set forth in the rules, the examiner will treat the application under examination and the disqualified subject matter in the 35 U.S.C. 102(a)(2) reference as if they are “owned by the same person or subject to an obligation of assignment to the same person” for purposes of 35 U.S.C. 102(b)(2)(C).
