¶ 7.20.05    103(a) Rejection Using Prior Art Under 102(e), (f), or (g) That Is Attempted To Be Disqualified Under 35 U.S.C. 103(c) Using the Joint Research Agreement Provisions

Applicant has attempted to disqualify reference [1] under 35 U.S.C. 103(c)  by showing that the invention was subject to a joint research agreement at the time this invention was made. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under 35 U.S.C. 103(c). See 37 CFR 1.71(g)  and 1.104(c)  and MPEP § 706.02(l).

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132  that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention "by another," or by antedating the applied art under 37 CFR 1.131.

Examiner Note:

    • 1. This form paragraph must be included in all actions containing rejections under 35 U.S.C. 103(a)  where an attempt has been made to disqualify the reference under 35 U.S.C. 103(c)  using the joint research agreement provisions but the disqualification attempt is ineffective.
    • 2. In bracket 1, identify the reference which is sought to be disqualified under 35 U.S.C. 103(c).
    • 3. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 103(c)  or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.104(c)(4).