Company A and University B have a joint research agreement (JRA) prior to the actual filing date for the claimed invention X`, owned by Company A. Professor BB of University B has notified A. University B of a patent application for invention X, which has an effective filing date of November 12, 2014. Company A has filed a patent application in which invention X is disclosed and claimed, which is an obvious variant of invention X. The actual filing date for the invention claimed in Company A`s application is December 12, 2014. The X` invention was made as a result of the activities carried out under the AIJ. University B retains ownership of invention X and Company A retains ownership of the X` invention, without the invention being transferred to a common owner. Company A could avail itself of the provisions of the joint research agreement of 35 U.C 102 (c), with the exception of the object revealed in the notification of University B as a state of the art, referring to the 35 U waiver.C 102 (b) (2) (C) and meeting the requirements of 37 CFR 1.71 (g). Non-legal refusals of dual sponsorship can be overcome in certain circumstances by providing, in accordance with the provisions of 37 CFR 1.321 (c), the final part of the duration of the subsequent patent, and in disclaimers, the provision that the patent is enforceable only for and during the period during which the patent is normally constituted by the application or patent constituting the basis of the rejection , eliminating the problem of extending the lifespan of patents. The receipts of non-legal dual sponsorships can also be overcome in cases under a common research agreement, in certain circumstances, by rejecting the current part of the subsequent patent term and by incorporating into the disclaimers the provisions of 37 CFR 1.321 (d).
The examiner should proceed with both a double patent refusal on the basis of common ownership and a refusal on the basis of the state of the art if the facts support both refusals. Until the applicant has demonstrated that a reference as a state of the art is disqualified as a state of the art in accordance with the state of the art definition in the 1935s U.S.C 1990s 102 (c) and prior to AIA 35 U.S.C 103 (c) (2) and (3), the examiner should not apply dual patenting on the basis of a joint research agreement. See mpep 706.07 (a), 717.02 (c) and 804, subsection VI, for information on when an Office action involving a further double patent refusal on the basis of a reference established in years 35 U.S.C 102 c) and before AIA 35 U.S.C. 103 (c) (2) and (3) may be final. Potential references may be excluded as a state of the art at 35 U.S.C 102 (a) (2) by the three derogatory provisions of 35 U.S.C. 102 (b) (2). 35 U.S.C. 102 (b) (2) (A) limits the use of an inventor`s own works as a state of the art when the inventor`s own work is disclosed in a patent publication, a U.S.
application or an application published by the inventor or co-inventor. 35 U.S.C. 102 (b) (2) (B) with the exception of the object of the state of the art that was actually filed by another following the public announcement of the inventor, inventor, inventor or other person who received the object, directly or indirectly, from the common inventor or inventor.