The USPTO has released an interim rule of practice that implements provisions of the CREATE Act that amended 35 U.S.C. 103(c). (Published at 70 FR 1818). The purpose of the Act is to promote cooperative research, such as between a university and start-up company by excluding prior art from obviousness (103) consideration if the prior art arose from a joint research agreement.

To overcome a rejection under 35 U.S.C. 103(a)based upon subject matter (whether a patent document, publication, or other evidence)which qualifies as prior art under only one or more of 35 U.S.C.102(e),(f)or (g) via the CREATE Act, the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement within the meaning of 35 U.S.C.103(c)(3), and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. 35 U.S.C.103(c)(3) 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.

In addition to providing a statement, the applicant must also:

(1) Amend the specification to disclose the names of the parties to the joint research agreement;and

(2) either amend the specification to 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 assignment records of the Office.

The new rules cannot be used to overcome rejections based on anticipation. Likewise, the PTO indicated that the new rules will likely not apply to reissue applications that were initially granted prior to December 10, 2004.  The PTO is asking for comments before issuance of the final rule.  Send comments to: ab76comments@uspto.gov by February 10, 2005.

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