The Effect of the Leahy-Smith America Invents Act on Collaborative Research

August 27, 2012

By: N. Scott Pierce

Journal of the Patent and Trademark Office Society

ABSTRACT

Requirement under subsection 102(f) of Title 35 of the United States Code that a person “himself invent the subject matter sought to be patented” has been removed by the Leahy-Smith America Invents Act (AIA) of 2011. At least one commentator proposes amending the new Act to add back this provision in order to prevent unauthorized copiers from patenting obvious variants of non-public inventions derived from an original inventor. However, judicial precedent prior to OddzOn Prods., Inc. v. Just Toys, Inc. generally does not sanction obviousness considerations under subsection 102(f). If a provision equivalent to subsection 102(f) is incorporated into the AIA that does block obvious variants of derived subject matter, then the Act should also be amended to provide that subject matter that qualifies only under that provision should not be prior art to a claimed invention, it is owned by the same person, subject to a common obligation of assignment, or subject to a joint research agreement.
 

This article was published in the Journal of Patent & Trademark Office Society, Volume 94, Number 2.

 To view the entire article, please click on the PDF tab above.

Overview

August 27, 2012

By: N. Scott Pierce

Journal of the Patent and Trademark Office Society

ABSTRACT

Requirement under subsection 102(f) of Title 35 of the United States Code that a person “himself invent the subject matter sought to be patented” has been removed by the Leahy-Smith America Invents Act (AIA) of 2011. At least one commentator proposes amending the new Act to add back this provision in order to prevent unauthorized copiers from patenting obvious variants of non-public inventions derived from an original inventor. However, judicial precedent prior to OddzOn Prods., Inc. v. Just Toys, Inc. generally does not sanction obviousness considerations under subsection 102(f). If a provision equivalent to subsection 102(f) is incorporated into the AIA that does block obvious variants of derived subject matter, then the Act should also be amended to provide that subject matter that qualifies only under that provision should not be prior art to a claimed invention, it is owned by the same person, subject to a common obligation of assignment, or subject to a joint research agreement.
 

This article was published in the Journal of Patent & Trademark Office Society, Volume 94, Number 2.

 To view the entire article, please click on the PDF tab above.

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