How did the CREATE Act affect pre-AIA 35 U.S.C. 103(c)?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse CREATE Act Amended Pre-AIA 35 U.S.C. 103(c) MPEP 2146.01 Pre-AIA 35 U.S.C. 103(c) Applies Only to Obviousness Rejection MPEP 2146.01 Amendment to Pre-AIA 35 U.S.C. 103(c) Now Applies to Pending Applications MPEP 2146.01 Pre-AIA 35 U.S.C. 103(c) Cannot Overcome Double Patenting Rejection MPEP 2146.01 Prohibited Definition of Joint Research Agreement for Pre-AIA Patentability MPEP 2146.01 Same Owner Prior Art Disqualified Against Invention MPEP 2146.01 Same Assignee Does Not Disqualify Prior Art MPEP 2146.01 Anticipatory Prior Art Not Affected by Pre-AIA 103(c) MPEP 2146.01 Permitted Requirement for Establishing Common Ow...