Patent Office Simplifies Protection of Joint Developments
The Patent Laws have changed (HTML) to simplify protection of multiparty research. If I were giving advice, I would suggest adding a new section to any Joint Development Agreement or R&D contract to include: “This Agreement is a “Joint Research Agreement” for the purposes of 35 U.S.C. § 103(c).”
This change will improve the ability of companies to protect intellectual property developed with third party researchers. This is going to come in handy when corporations collaborate with universities or other research institutions by removing prior art (published less than one year prior to the filing date of the patent application) held by one of the researchers if they are bound by a “Joint Research Agreement. This is particularly useful when two parties with experience in an area come together to solve a problem which may be considered obvious in view of the parties prior work.
From 70 Fed Reg 1818:
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amends the patent laws to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: 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. The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the CREATE Act.
The 35 U.S.C. § 103(c) provides:
(1) 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.
(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.
This change will improve the ability of companies to protect intellectual property developed with third party researchers. This is going to come in handy when corporations collaborate with universities or other research institutions by removing prior art (published less than one year prior to the filing date of the patent application) held by one of the researchers if they are bound by a “Joint Research Agreement. This is particularly useful when two parties with experience in an area come together to solve a problem which may be considered obvious in view of the parties prior work.
From 70 Fed Reg 1818:
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amends the patent laws to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: 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. The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the CREATE Act.
The 35 U.S.C. § 103(c) provides:
(1) 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.
(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.
posted by SWBarns at
9:11 AM
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