35 U.S.C. 103 Conditions of patentability; non-obvious subject matter.

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1. (c)
   1. (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) ofsection 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
   2. (2) For purposes of this subsection, 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 —
      1. (A) 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. (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
      3. (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
   3. (3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention "were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person." This amendment to 35 U.S.C. 103 (c) was made pursuant to section 4807 of the American Inventors Protection Act of 1999 (AIPA); see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999). The changes to 35 U.S.C. 102 (e) in the Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)) did not affect the exclusion under 35 U.S.C. 103 (c) as amended on November 29, 1999. Subsequently, the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) (Pub. L. 108-453, 118 Stat. 3596 (2004)) further amended 35 U.S.C. 103 (c) 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. (A) 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. (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
3. (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement (hereinafter "joint research agreement disqualification").

These changes to 35 U.S.C. 103 (c) apply to all patents (including reissue patents) granted on or after December 10, 2004. The amendment to 35 U.S.C. 103 (c) made by the AIPA to change "subsection (f) or (g)" to "one of more of subsections (e), (f), or (g)" applies to applications filed on or after November 29, 1999. It is to be noted that, for all applications (including reissue applications), if the application is pending on or after December 10, 2004, the 2004 changes to 35 U.S.C. 103 (c), which effectively include the 1999 changes, apply; thus, the November 29, 1999 date of the prior revision to 35 U.S.C. 103 (c) is no longer relevant. In a reexamination proceeding, however, one must look at whether or not the patent being reexamined was granted on or after December 10, 2004 to determine whether 35 U.S.C. 103 (c), as amended by the CREATE Act, applies. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed on or after November 29, 1999, it is the 1999 changes to 35 U.S.C. 103 (c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of 35 U.S.C. 103 (c). See MPEP § 706.02(l)(1) for additional information regarding disqualified prior art under 35 U.S.C. 102 (e)/103. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to 35 U.S.C. 103 (c) are applicable. Therefore, only prior art under 35 U.S.C. 102 (f) or (g) used in a rejection under 35 U.S.C. 103 (a) may be disqualified under the commonly assigned/owned prior art provision of 35 U.S.C. 103 (c).

35 U.S.C. 103 (c), as amended by the CREATE Act, applies only to subject matter which qualifies as prior art under 35 U.S.C. 102 (e), (f), or (g), and which is being relied upon in a rejection under 35 U.S.C. 103. If the rejection is anticipation under 35 U.S.C. 102 (e), (f), or (g), 35 U.S.C. 103 (c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. Likewise, 35 U.S.C. 103 (c) cannot be relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78 (c) and MPEP § 804. See MPEP § 706.02(l) - § 706.02(l)(3).