Chapter §7A.06 Common Ownership Under Joint Research Agreements

• Jurisdiction: United States

§7A.06 Common Ownership Under Joint Research Agreements

Section 3 of the AIA preserved pre-AIA exclusions or shields of certain commonly owned (or deemed commonly owned) subject matter from being treated as prior art. The AIA expanded the exclusions such that they are applicable to the analysis of novelty under 35 U.S.C. §102 as well as nonobviousness under 35 U.S.C. §103. The AIA's legislative history provides that:

[T]he intent behind the CREATE Act to promote joint research activities is preserved by including a prior art exception for subject matter invented by parties to a joint research agreement. The Act also provides that its enactment of new section 102(c) of title 35 is done with the same intent to promote joint research activities that was expressed in the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453), and that section 102(c) shall be administered in a manner consistent with such intent. ¹⁸³

The following background explains the treatment of CREATE Act subject matter in the AIA.

In 1984, Congress amended the patentability requirement of nonobviousness (35 U.S.C. §103) so as to exclude "commonly owned" inventions from the prior art used in nonobviousness analyses.¹⁸⁴ The intent of the 1984 legislation was to shield commonly owned inventions from being rendered obvious by the prior work of other inventors in the same company or firm. In essence, Congress gave corporations the right to patent obvious variants of in-house efforts qualifying as prior art under 35 U.S.C. §102(f) (1984) or 35 U.S.C. §102(g) (1984). In the American Inventors Protection Act of 1999, Congress further expanded the nonobviousness prior art shield to encompass commonly owned prior art under 35 U.S.C. §102(e) (1994).¹⁸⁵ These prior art shields became subsection (c) of 35 U.S.C. §103.

The Cooperative Research and Technology Enhancement (CREATE) Act of 2004 expanded the §103(c) exclusions even more broadly to encompass §§102(e), (f), and (g) prior art that had been earlier generated by the parties to a "joint research agreement" involving the assignees of inventor(s) named in a patent application.¹⁸⁶ Congress was particularly concerned with removing barriers to patenting for collaborative teams encompassing universities and for-profit corporations of the type encouraged by the Bayh-Dole Act of 1980.¹⁸⁷

The AIA expanded the concepts underlying the CREATE Act prior art shield to encompass prior art used in the analysis of novelty under 35...