How did the CREATE Act affect pre-AIA 35 U.S.C. 103(c)?
The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) significantly expanded the scope of pre-AIA 35 U.S.C. 103(c). The MPEP states:
“The CREATE Act amended pre-AIA 35 U.S.C. 103(c) to provide that 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.”
This amendment allowed for the disqualification of prior art not only based on common ownership but also on joint research agreements, provided certain conditions are met.
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