In order to avail itself of a common research agreement, with the exception of a disclosure, the applicant (or the applicant`s representative) must indicate that the disclosure of the purpose on which the denial is based and the claimed invention was made by or on behalf of parties to a common research agreement pursuant to AIA 35 U.S.C 102 C). The statement also confirms that the agreement was in force at the actual filing date of the claimed invention or before the actual filing date of the claimed invention and that the claimed invention is due to activities carried out under the joint research agreement. Referring to the provisions of pre-AIA 35 U.S.C 103 (c), the applicant or his or her lawyer or agent may make a similar statement in order to disqualify the state of the art invoked with respect to the question of evidence. If the names of the parties to the joint search agreement are not already mentioned in the application, the request must be amended to include the names of the parties to the joint search agreement covered in paragraph 37 CFR 1.71 (g). AIA 35 U.C. 102 (c) contains three conditions that must be met for the disclosed object to be fulfilled, which could also be considered the state of the art, and that a claimed invention be treated as if it were in the possession of the same person or was subject to an obligation to mandate the same person in the application of the common ownership rules of AIA 35 U.S.C 102 (b) (2) (C) as part of a joint research agreement. First, the disclosed object must have been developed and the claimed invention must have been manufactured by one or more parties to a joint research agreement in force on or before the actual filing date of the claimed invention or in the name of a joint research agreement. See 35 U.S.C. 102 (c) (1). The AIA defines the term “common research agreement” as a written contract, grant or cooperation agreement between two or more individuals or entities to conduct experimental, development-intensive or research-intensive work in the field of the claimed invention.
See 35 U.S.C. 100 (h). Second, the claimed invention must be motivated by activities carried out under the joint research agreement. See 35 U.S.C 102 (c) (2). Third, the patent application for the claimed invention must reveal the names of the parties to the joint research agreement or be amended to be disclosed. See 35 U.S.C 102 (c) (3). Joint Research Agreement subject according to AIA 35 U.S.C 102 and 103 is treated under 37 CFR 1.104 (c) (5) (ii), Joint Research Agreement Object after AIA 35 U.S.C 102 and 103 is treated under 37 CFR 1.104 (c),5) ii). If these conditions are met, the joint technical research agreement is not available as a state of the art in accordance with AIA 35 U.S.C U.S.a) (2). As in the case of the conclusion of a common property, the applicant may provide evidence of the existence of the joint research agreement, but it is not necessary to present it. In addition, the Agency will not require confirming evidence, as there is no independent evidence that raises doubts about the existence of the joint research agreement. As noted above, the exception aIA 35 U.S.C 102 (b) (2) (C) does not apply to a disclosure that is considered the state of the art in accordance with AI 35 U.S.C 102 (a)1) (Disclosures before the actual filing date of the claimed invention). Therefore, if the date of issuance or publication of a U.S.
patent document predates the actual filing date of the claimed invention, it may be in place in accordance with AIA 35 U. C S. 102a (a) (1), regardless of whether the claimed invention was the result of a joint research agreement and that the disclosure came from a party to the agreement. . The provisions of AIA 35 U.S.C. 102 (c) generally follow the provisions of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). See MPEP 2146.01. The main differences between AIA 35 U.S.C 102 (c) and CREATE Act are that (1) the determination of the AIA is due to the actual filing date of the claimed invention, while the CREATE Act focuses on the date on which the claimed invention was produced; and (2) The provisions of the CREATE Act apply only to refusals of evidence and not to refusals of anticipation.
