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35 U.S.C. 103(c) as Amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Public Law 108-453) Enacted December 10, 2004 Slide Set (HTML text version)

35 U.S.C. 103(c) as Amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Public Law 108-453) Enacted December 10, 2004

35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453)

  • CREATE Act revised 35 U.S.C. 103(c) as follows:
    • Former 35 U.S.C. 103(c) was re-designated as 35 U.S.C. 103(c)(1)
    • New subsections 35 U.S.C. 103(c)(2) and (3) were established
  • Effective Date: December 10, 2004
    • Applies to any patent granted on or after December 10, 2004
  • CREATE Act allows certain multiple patent application owners to be treated as a common owner for the purposes of 35 U.S.C. 103(c)'s exclusion of prior art only under 35 U.S.C. 102(e), (f) or (g) in making a rejection under 35 USC 103(a).
    • Avoids the need to form joint ventures to perform related research in order to obtain benefit under the prior version of 35 U.S.C. 103(c).
  • The USPTO has published an interim rule entitled “Changes to Implement the Cooperative Research and Technology Enhancement Act of 2004,” 70 FR 1818 (January 11, 2005)
  • In order to be treated as common owners under the CREATE Act, the following are required:
    • 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;
    • The claimed invention was made as a result of activities undertaken within the scope of the agreement; and
    • The application for patent for the claimed invention discloses, or is amended to disclose, the names of the parties to the agreement.

35 U.S.C. 103(c)(1) as Amended by the CREATE Act (P.L. 108-453)

35 U.S.C. 103(c)(1) (formerly 35 U.S.C. 103(c)):
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

35 U.S.C. 103(c)(2) (NEW)as Amended by the CREATE Act (P.L. 108-453)

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–

  • 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;
  • the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement ; and
  • the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement . (emphasis added)

35 U.S.C. 103(c)(3)(NEW) as Amended by the CREATE Act (P.L. 108-453)

35 U.S.C. 103(c)(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. (Emphasis added.)

35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453)

Effective Date Information :

  • The revised 35 U.S.C. 103(c) applies to any reissue patent granted on or after its date of enactment.
    • The recapture doctrine may prevent the presentation of claims in reissue applications that were amended or cancelled (e.g., to avoid a rejection under 35 U.S.C. 103(a) based upon subject matter that may now be disqualified under the CREATE Act) from the application which resulted in the patent being reissued.
  • The 1999 change of “subsection (f) or (g)” to “one or more of subsections (e), (f), or (g)” in 35 U.S.C. 103(c) is now also applicable to applications filed prior to November 29, 1999 that were pending on December 10, 2004.
    • The CREATE Act also includes the amendment to 35 U.S.C. 103(c) made by § 4807 of the American Inventors Protection Act of 1999 (see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999)), which only applied to applications filed on or after November 29, 1999.
  • Applicant may overcome a rejection under 35 U.S.C. 103(a) based upon subject matter (i.e., a patent document, publication, or other evidence) which only qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) by invoking 35 U.S.C. 103(c) as amended by the CREATE Act.
    • Applicant cannot rely on the provisions of 35 U.S.C. 103(c) to overcome the following rejections:
    • Obviousness double patenting rejections; and
    • Rejections under 35 U.S.C. 102.

35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by interim rule (70 FR 1818)

  1. To overcome a rejection by invoking the joint research agreement provisions of 35 U.S.C. 103(c), applicant must:
  2. Provide a statement signed by either the applicant or the assignee of the entire interest (37 CFR 3.71(b));
  3. Amend the specification* to disclose the names of the parties to the joint research agreement (see 37 CFR 1.71(g) and 1.77(b)(4)); and
  4. Amend the specification* (see 37 CFR 1.71(g)) to also either:
    • Set forth the date the joint research agreement was executed and a concise statement of the field of the claimed invention; or
    • Specify where (i.e., by reel and frame number) this information is recorded in the Office's assignment records
    *Unless the specification discloses the required information.
  • The statement must provide that:
    • The prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement as defined by 35 U.S.C. 103(c);
    • The joint research agreement was in effect on or before the date the claimed invention was made; and
    • The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.
    (37 CFR 1.104(c)(4))
  • The statement must be provided on a separate sheet which may not be directed to any other matters (37 CFR 1.4(c)).
  • If the applicant disqualifies the subject matter used in a rejection under 35 U.S.C. 103(a) in accordance with 35 U.S.C. 103(c) as amended by the CREATE Act and the interim rule,
    • During examination, the application and the prior art will be treated as if they are commonly owned for purposes of 35 U.S.C. 103(c)(1).
    • See 37 CFR 1.104(c)(4)
  • A subsequent new double patenting rejection based upon the disqualified prior art may apply. See new 37 CFR 1.109(b)
  • Applicant may file a terminal disclaimer under new 37 CFR 1.321(d) to overcome the double patenting rejection.
    • Note: the disclaimer requires the parties of the joint research agreement to commonly enforce their patents in addition to a common term requirement.
  • Requirements for a terminal disclaimer under new 37 CFR 1.321(d):
    • The owners of both the rejected application and the disqualified patent or application under 35 U.S.C. 103(c) must:
      • Waive the right to separately enforce and license the patents
      • Agree that the patents shall be enforceable only during the period that the patents are not separately enforced or licensed
      • Agree that such waiver is binding upon the owner, its successors, or assigns of all the parties
        See 37 CFR 1.321(d)(4)
      • Comply with 37 CFR 1.321(b)(2)-(b)(4). 37 CFR 1.321(d)(1)
      • Signed by applicant in accordance with 37 CFR 1.321(b)(1) or patentee in accordance with 37 CFR 1.321(a)(1), as applicable
        37 CFR 1.321(d)(2)
      • Signed by patentee or applicant, or an attorney or agent of record, of the disqualified patent or patent application.
        1.321(d)(3)

Example:

  • Company A and University B have a joint research agreement (JRA) in place prior to invention X'.
  • Professor BB from University B communicates invention X to Company A. University B files a patent application on invention X on November 12, 2004.
  • Company A files an application disclosing and claiming invention X', an obvious variant of invention X, on December 13, 2004.
  • University B retains ownership of invention X and Company A retains ownership of invention X'.
  • Company A files an information disclosure statement citing the University B's patent application publication of invention X.
  • Examiner makes a rejection of the claims of invention X' under 35 USC 103(a) as being obvious in view of the application publication of invention X.
  • Company A properly invokes the prior art disqualification under 35 U.S.C. 103(c) as amended by the CREATE Act.
  • Examiner makes an obvious double patenting rejection of the claims of invention X' in view of the claims of invention X.
    • The Office action can be made final (provided that no other new ground of rejection that was not necessitated by amendment is introduced) regardless of whether the claims themselves have been amended.
  • Company A files a proper terminal disclaimer under new 37 CFR 1.321(d) to overcome the double patenting rejection.
    • Note: Both parties of the JRA must agree to commonly enforce their patents in addition to a common term requirement.
  • Examiner may allow the application of invention X', assuming no other issues need to be resolved in the application.

Brief Summary of Changes made by the interim rule (70 FR 1818)(Jan. 11, 2005):

  • Section 1.71 : Section 1.71 is amended to add new § 1.71(g). Section 1.71(g) specifically provides for amendments to the specification to provide information necessary to invoke the “safe harbor” provision of 35 U.S.C. 103(c) applies.
  • Section 1.77 : Section 1.77 is amended to provide for the names of the parties to a joint research agreement in the preferred arrangement of the specification.
  • Section 1.104 : Section 1.104(c)(4) is amended for consistency with the amendment to 35 U.S.C. 103(c).
  • Section 1.109 : Section 1.109 is added to set forth the conditions under which the Office will make a double patenting rejection. Section 1.109(a) contains the provisions of § 1.130(b) (with a few changes for clarity). Section 1.109(b) provides for double patenting situations which may arise as a result of the CREATE Act.
  • Section 1.130 : Section 1.130(b) is reserved.
  • Section 1.321 : Section 1.321(d) is added to provide the terminal disclaimer requirements for the double patenting situations which arise as a result of the CREATE Act.
  • Section 3.11 : Section 3.11(c) is added to provide that the Office will record a joint research agreement or an excerpt of a joint research agreement as provided in 37 CFR part 3.
  • Section 3.31 : Section 3.31(g) is added to set forth the requirements for the cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by § 3.11(c).

Additional Information

For more information, please contact:

  • The Office of Patent Legal Administration at (571) 272-7704 or
    e-mail to Patent Practice@USPTO.gov , or contact:
    • Robert A. Clarke at (571) 272-7735
    • Jeanne M. Clark at (571) 272-7714

CREATE Act More Information Posted at http://www.uspto.gov/web/offices/pac/dapp/createmoreinfo.html

United States Patent and Trademark Office
Bullet Changes to Implement the Cooperative Research and Technology Enhancement Act of 2004 70 Fed. Reg. 1818 (11Jan2005) [PDF]
Bullet Text of Legislation: Cooperative Research and Technology Enhancement (CREATE) Act of 2004 [PDF] (posted 19Jan2005)
Bullet CREATE Act of 2004 Questions and Answers, including 103(c) (updated 03Mar2005)
Bullet Comments on the Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act), Interim Rule (February 2005) (added 03Mar2005)
Slide Set: 35 U.S.C. 103(c) as Amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Public Law 108-453) Enacted December 10, 2004 [PPT] [text version] [Download Zipped Version] [ZIP]

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Last Modified: 4/5/2010 1:32:57 PM