USPTO Revises CREATE Act Implementation Rules

Effective September 14, 2005, for any patent granted on or after December 10, 2004, the United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the CREATE Act.
The changes in this final rule apply to

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:

1. 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;
2. the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
3. 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 Office previously published an interim rule to revise the rules of practice in title 37 of the Code of Federal Regulations (CFR) to implement the CREATE Act. This final rule further revises the rules of practice in title 37, CFR, to implement the CREATE Act in light of comments that were received from the public.

Many of those comments requested clarification of § 1.109, including clarification of when double patenting under § 1.109(b) would apply. In response, Section 1.109 has been removed and this final rule includes guidelines concerning double patenting involving CREATE Act situations. For example, the guidelines clearly set forth that double patenting rejections based on applications or patents to parties of a joint research agreement will only be made after the CREATE Act exclusion has been invoked. In addition, the guidelines do not require that the invention of the disqualified patent be made as a result.

Several of those comments also questioned whether the Office has the authority to restrict licensing practice in the provisions of § 1.321(d) introduced in the interim rule. In addition, the comments expressed concern that the provisions of § 1.321(d) went beyond what is required by the CREATE Act and its legislative history.

In response to these comments, the USPTO has amended Section 1.321(d) to remove several requirements set forth in the interim rule. First, terminal disclaimers no longer are required to have any restriction on licensing to overcome an obvious double patenting rejection based on prior art of a party to a joint research agreement. Second, the requirement that the owner of the disqualified application or patent sign the terminal disclaimer is removed. Therefore, the removal of these requirements from the provisions of § 1.321(d) has simplified the process of filing the terminal disclaimer while still maintaining the goals of the CREATE Act and its legislative history.

The final rule eliminates the requirements under Section 1.71(g) that the application disclose (1) The date the joint research agreement was executed; and (2) a concise statement of the field of the claimed invention.

The final rule also discusses when an Action may be made final under these rules. If an amendment under § 1.71(g) is submitted in an application under final rejection to overcome a rejection under 35 U.S.C. 103(a) based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(e), the examiner may refuse to enter the amendment under § 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (§ 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).

If an amendment under § 1.71(g) is submitted to overcome a rejection under 35 U.S.C. 103(a) based upon a U.S. patent or U.S. patent application publication which qualifies as prior art only under 35 U.S.C. 102(e), and the examiner withdraws the rejection under 35 U.S.C. 103(a), the examiner may need to issue an Office action containing a new double patenting rejection based upon the disqualified patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in § 1.97(c) with the fee set forth in § 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.