Representative Smith (R Texas) talks on the Congressional floor about three recent Bills that have passed the House and are awaiting action in the Senate. Rep. Smith recently gave a speech to the ABA IP Section discussing the bills and other IP matters.
One of the recently passed Bills is the “Cooperative Research and Technology Enhancement (CREATE).” Under the Bill’s proposed amendments, 35 U.S.C. 102(f) references will not be considered prior art or as evidence of obviousness under section 103. (Section 102(f) references show the subject matter to be patented was not invented by the one applying for the patent.)
In addition, section 103(c) would be amended so that subject matter developed by another person and prior art under 102(e) or (g) will not preclude patentability if the subject matter and the clamed invention were, “at the time of the earliest filing date for which benefit is sought . . . owned by the same person or subject to an obligation of assignment to the same person.” The new law would not be retroactively applied.
The parallel Senate Bill S.2192 was introduced by Senator Hatch (R Utah). You can read Senator Hatch’s introduction of the Bill. According to co-sponsor Senator Leahy, this Bill will circumvent the ruling in OddzOn Products, Inc. v. Just Toys, Inc. (Fed. Cir. 1997) (holding that non-public information may be used as prior art under certain circumstances), thus allowing more collaboration. Philip McGarrigle published an article in IDEA discussing the OddzOn Products. Brian Murphy disagreed with OddzOn Products in the Fordham IP Law Journal. Additionally, James Gambrell discusses the use of section 102(f)/103 prior art in the Federal Circuit Bar Journal.