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 American 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 generally does not sanction obviousness considerations under subsection 102(f). If an 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 subsection 102(f) should not be prior art to a claimed invention if, by the effective date of the claimed invention, it is owned by the same person, subject to a common obligation of assignment, or subject to a joint research agreement.
- Leahy-Smith America Invents Act,
- CREATE Act,
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