717.02 Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) [R-10.2019]

Created On
byChhabra Law Firm

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP §§ 2146 – 2146.03 for the examination of applications not subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

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. See MPEP § 717.02(a) for more information on invoking this prior art exception and MPEP § 717.02(b) for more information on evaluating when the exception applies and is properly invoked.

In applying the provisions of 35 U.S.C. 102(b)(2)(C), 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:

  • 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. 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).
  • B. 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).
  • 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. See 35 U.S.C. 102(c)(3).

Joint research agreement subject matter under 35 U.S.C. 102(c) is treated under 37 CFR 1.104(c)(4)(ii), and joint research agreement subject matter under pre-AIA 35 U.S.C. 103(c) is treated under 37 CFR 1.104(c)(5)(ii).

The provisions of 35 U.S.C. 102(c) generally track those of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP § 2146. The major differences between 35 U.S.C. 102(c)) and the CREATE Act are the following:

  • A. The new provision (35 U.S.C. 102(c)) is keyed to the effective filing date of the claimed invention, while the CREATE Act (pre-AIA 35 U.S.C. 103(c)) focused on the date that the claimed invention was made; and
  • B. The CREATE Act provisions (pre-AIA 35 U.S.C. 103(c)) only applied to obviousness rejections and not to anticipation rejections.