Summary Of Joint Research
Agreement Topic
Anthony
Zuppero,
2631 Buena Tierra Rd., Pollock Pines, CA 95726
530 647 1975,
azuppero@gmail.com
Nov 6, 2008
A "Joint Research Agreement" (JRA) permits
collaborating inventors with differing affiliations to patent
improvements that
would otherwise be rejected as obvious. Without the agreement, the
claims of
one patent application to one inventor could be rejected as "obvious"
on the basis of one or
more elements or concepts written by other collaborators. With a Joint
Research
Agreement, only others, non-collaborators,
would be prevented from patenting the otherwise obvious claims.
A patent claim must be "new, useful and
nonobvious" by law, or the claim of the patent application will be
rejected. "New" means you must
be the first to invent. "Useful" means a legal use not violating
the laws of nature. The "nonobvious"
part is peculiar and
more difficult to overcome.
One way the U.S. Patent Office (USPTO) holds a claim to be
obvious occurs when a "Person Having Ordinary Skill in The Art" (often
called a PHOSITA) can invent the same invention using common knowledge
and
skills. More obtusely, the USPTO can impose an obviousness rejection if
a
PHOSITA can simply put together concepts from publicly available
documents to
make the claimed invention. The USPTO assumes that there is at least
one
PHOSITA who would be aware of any publicly available documents anywhere
if those
publications would make the claimed invention obvious. Collaborating
inventors
from different universities or companies might be barred simply by
various
publications of the authors.
As a result, joint, collaborative research can face serious
obviousness barriers against separate patents.
The patent law was recently changed to promote joint
research and expressly allow collaborating inventors to be immune from
"obviousness" rejections. The CREATE
Act, effective 10 December 2004
(just a little over 3 years ago), defines a "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, that was in effect on or before the date the
claimed
invention (under examination or reexamination) was made.
...
MPEP
706.02(l)(2) III
Joint Research Agreement = =
=
- written
contract,
- grant,
OR
- cooperative
agreement
entered
into by two or more
for
the performance of
- experimental,
- developmental
OR
- research
work
in
the field of the claimed invention,
that
was in effect
- on or
before the
- date
the claimed invention was made.
The actual law 35 U.S.C. 103(c)(3)
reads:
35
U.S.C. 103
Conditions for patentability; non-obvious subject matter.
***
35 U.S.C. 103(c) ...
(2) For purposes of this subsection, subject
matter developed by another person and a claimed invention shall be
deemed to
have been owned by the same person or subject to an obligation of
assignment to
the same person if —
(A) the
claimed invention was made by or on behalf of parties to a joint
research
agreement that was in effect on or before the date the claimed invention
was made;
(B) the
claimed invention was made as a result of activities undertaken within
the
scope of the joint research agreement; and
(C) the
application for patent for the claimed invention discloses or is
amended to
disclose the names of the parties to the joint research agreement.
(3)
For
purposes of paragraph (2), the term “joint
research agreement” means 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.