Federal Register / Vol. 85, No. 250 / Wednesday, December 30, 2020 / Proposed Rules 86515 

statutes and Executive orders with 

respect to this rulemaking. 

Executive Orders 12866, 13563, and 

13771 

This proposed rule has been drafted 

in accordance with Executive Order 

12866, section 1(b), ‘‘The Principles of 

Regulation,’’ and Executive Order 

13563, ‘‘Improving Regulation and 

Regulatory Review.’’ The 

Administrative Committee has 

determined that this proposed rule is 

not a significant regulatory action as 

defined under section 3(f) of Executive 

Order 12866. Thus, this proposed rule 

has not been reviewed by the Office of 

Management and Budget (OMB), and it 

is exempt under OMB guidance from 

the requirements of Executive Order 

13771 (see Office of Mgmt. & Budget, 

Guidance Implementing Executive 

Order 13771, Titled ‘‘Reducing 

Regulation and Controlling Regulatory 

Costs’’ (2017)). 

Regulatory Flexibility Act 

This proposed rule will not have a 

significant impact on small entities 

because it imposes no requirements on 

the public. Members of the public can 

access Federal Register publications for 

free through GPO’s website, https://

www.govinfo.gov/. 

Federalism 

This proposed rule has no federalism 

implications under Executive Order 

13132. It does not impose compliance 

costs on state or local governments or 

preempt state law. 

List of Subjects in 1 CFR Part 12 

Code of Federal Regulations, 

Compilation of Presidential Documents, 

Federal Register, Government 

publications, Public papers of 

Presidents of U.S., U.S. Government 

Manual. 

For the reasons discussed in the 

preamble, under the authority at 44 

U.S.C. 1506, the Administrative 

Committee of the Federal Register 

proposes to amend 1 CFR part 12 as 

follows: 

PART 12—OFFICIAL DISTRIBUTION 

WITHIN FEDERAL GOVERNMENT 

■ 1. The authority citation for part 12 

continues to read as follows:

Authority: 44 U.S.C. 1506; sec. 6, E.O. 

10530, 19 FR 2709; 3 CFR, 1954–1958 Comp., 

p. 189.

■ 2. Amend § 12.1 by: 

■ a. Revising paragraph (a), 

■ b. Redesignating paragraphs (b) 

through (e) as (d) through (g), and

■ c. Adding new paragraphs (b) and (c). 

The revision and additions read as 

follows: 

§ 12.1 Federal Register.

(a) The Federal Register, issued under

the authority of the Administrative 

Committee, is officially maintained 

online and is available on at least one 

Government Publishing Office website. 

(b) Requests for subscriptions to the

Federal Register may be made as 

follows: 

(1) Requests from a Member of

Congress or any other office of the 

United States for a specific issue or a 

subscription may be submitted via a 

Government Publishing Office website 

or by email to an email address 

provided on that website. 

(2) Official subscription requests:

(i) May be made in the current year

for that year or for the upcoming year, 

(ii) Will expire at the end of each

calendar year, and

(iii) Will not automatically continue

into a new calendar year.

(c) Notifications regarding procedures

for requesting official copies of specific 

issues or print subscriptions are 

available: 

(1) On a Government Publishing

Office website dedicated to official 

subscriptions, 

(2) On www.federalregister.gov, and

(3) In the front matter of the Federal

Register, which is the text that precedes 

the main text of the daily issue of the 

Federal Register. 

* * * * * 

Oliver A. Potts, 

Secretary, Administrative Committee of the 

Federal Register. 

[FR Doc. 2020–28663 Filed 12–29–20; 8:45 am] 

BILLING CODE 1301–00–P 

DEPARTMENT OF TRANSPORTATION 

Federal Aviation Administration 

14 CFR Part 39 

[Docket No. FAA–2020–1022; Project 

Identifier AD–2020–01101–T] 

RIN 2120–AA64 

Airworthiness Directives; The Boeing 

Company Airplanes 

AGENCY: Federal Aviation 

Administration (FAA), DOT. 

ACTION: Notice of proposed rulemaking 

(NPRM). 

SUMMARY: The FAA proposes to adopt a 

new airworthiness directive (AD) for 

certain The Boeing Company Model 

757–200, –200CB, and –300 series 

airplanes. This proposed AD was 

prompted by a report indicating the 

passenger service units (PSUs) and life 

vest panels became separated from their 

attachments during several survivable 

accident sequences. This proposed AD 

would require installing lanyard 

assemblies on the PSUs, and, for certain 

airplanes, on the life vest panels and 

video panels as applicable. The FAA is 

proposing this AD to address the unsafe 

condition on these products. 

DATES: The FAA must receive comments 

on this proposed AD by February 12, 

2021. 

ADDRESSES: You may send comments, 

using the procedures found in 14 CFR 

11.43 and 11.45, by any of the following 

methods: 

• Federal eRulemaking Portal: Go to

https://www.regulations.gov. Follow the 

instructions for submitting comments. 

• Fax: 202–493–2251.

• Mail: U.S. Department of

Transportation, Docket Operations, M– 

30, West Building Ground Floor, Room 

W12–140, 1200 New Jersey Avenue SE, 

Washington, DC 20590. 

• Hand Delivery: Deliver to Mail

address above between 9 a.m. and 5 

p.m., Monday through Friday, except

Federal holidays.

For service information identified in 

this NPRM, contact Boeing Commercial 

Airplanes, Attention: Contractual & Data 

Services (C&DS), 2600 Westminster 

Blvd., MC 110–SK57, Seal Beach, CA 

90740–5600; phone: 562–797–1717; 

internet: https://

www.myboeingfleet.com. You may view 

this referenced service information at 

the FAA, Airworthiness Products 

Section, Operational Safety Branch, 

2200 South 216th St., Des Moines, WA. 

For information on the availability of 

this material at the FAA, call 206–231– 

3195. It is also available on the internet 

at https://www.regulations.gov by 

searching for and locating Docket No. 

FAA–2020–1022. 

Examining the AD Docket 

You may examine the AD docket on 

the internet at https://

www.regulations.gov by searching for 

and locating Docket No. FAA–2020– 

1022; or in person at Docket Operations 

between 9 a.m. and 5 p.m., Monday 

through Friday, except Federal holidays. 

The AD docket contains this NPRM, any 

comments received, and other 

information. The street address for 

Docket Operations is listed above. 

Comments will be available in the AD 

docket shortly after receipt. 

FOR FURTHER INFORMATION CONTACT: 

Scott Craig, Aerospace Engineer, Cabin 

Safety and Environmental Systems 

Section, FAA, Seattle ACO Branch, 2200 

86516 Federal Register / Vol. 85, No. 250 / Wednesday, December 30, 2020 / Proposed Rules 

South 216th St., Des Moines, WA 98198; 

phone and fax: 206–231–3566; email: 

michael.s.craig@faa.gov. 

SUPPLEMENTARY INFORMATION: 

Comments Invited 

The FAA invites you to participate in 

this rulemaking by submitting written 

comments, data, or views about this 

proposal. The most helpful comments 

reference a specific portion of the 

proposal, explain the reason for any 

recommended change, and include 

supporting data. To ensure the docket 

does not contain duplicate comments, 

commenters should submit only one 

copy of the comments. Send your 

comments to an address listed under the 

ADDRESSES section. Include ‘‘Docket No. 

FAA–2020–1022; Project Identifier AD– 

2020–01101–T’’ at the beginning of your 

comments. 

Except for Confidential Business 

Information (CBI) as described in the 

following paragraph, and other 

information as described in 14 CFR 

11.35, the FAA will post all comments 

received, without change, as well as a 

report summarizing each substantive 

public contact with FAA personnel 

concerning this proposed rulemaking. 

Before acting on this proposal, the FAA 

will consider all comments received by 

the closing date for comments. The FAA 

will consider comments filed after the 

comment period has closed if it is 

possible to do so without incurring 

expense or delay. The FAA may change 

this NPRM because of those comments. 

Confidential Business Information 

CBI is commercial or financial 

information that is both customarily and 

actually treated as private by its owner. 

Under the Freedom of Information Act 

(FOIA) (5 U.S.C. 552), CBI is exempt 

from public disclosure. If your 

comments responsive to this NPRM 

contain commercial or financial 

information that is customarily treated 

as private, that you actually treat as 

private, and that is relevant or 

responsive to this NPRM, it is important 

that you clearly designate the submitted 

comments as CBI. Please mark each 

page of your submission containing CBI 

as ‘‘PROPIN.’’ The FAA will treat such 

marked submissions as confidential 

under the FOIA, and they will not be 

placed in the public docket of this 

NPRM. Submissions containing CBI 

should be sent to the person identified 

in the FOR FURTHER INFORMATION

CONTACT section. Any commentary that 

the FAA receives which is not 

specifically designated as CBI will be 

placed in the public docket for this 

rulemaking. 

Discussion 

The FAA has received a report 

indicating the PSUs and life vest panels 

became separated from their 

attachments during several survivable 

accident sequences. In addition, there is 

no secondary means of retention 

(lanyards) for the PSU to the airplane 

structure. The FAA has determined that 

video panels may also become separated 

from their attachments during 

survivable accident sequences. This 

condition, if not addressed, could result 

in the PSUs, life vest panels, and video 

panels becoming detached and falling 

into the cabin, which could lead to 

passenger injuries and impede egress 

during an evacuation. 

Related Service Information Under 1 

CFR Part 51 

The FAA reviewed Boeing Special 

Attention Requirements Bulletin 757– 

25–0315 RB, Revision 1, dated May 20, 

2020. The service information describes 

procedures for installing lanyard 

assemblies on the PSUs, life vest panels, 

and video panels as applicable. This 

service information is reasonably 

available because the interested parties 

have access to it through their normal 

course of business or by the means 

identified in the ADDRESSES section. 

FAA’s Determination 

The FAA is proposing this AD 

because the agency evaluated all the 

relevant information and determined 

the unsafe condition described 

previously is likely to exist or develop 

in other products of the same type 

design. 

Proposed AD Requirements 

This proposed AD would require 

accomplishment of the actions 

identified in Boeing Special Attention 

Requirements Bulletin 757–25–0315 RB, 

Revision 1, dated May 20, 2020, 

described previously, except as 

discussed under ‘‘Differences Between 

this Proposed AD and the Service 

Information,’’ and except for any 

differences identified as exceptions in 

the regulatory text of this proposed AD. 

For information on the procedures 

and compliance times, see this service 

information at https://

www.regulations.gov by searching for 

and locating Docket No. FAA–2020– 

1022. 

Explanation of Requirements Bulletin 

The FAA worked in conjunction with 

industry, under the Airworthiness 

Directive Implementation Aviation 

Rulemaking Committee (AD ARC), to 

enhance the AD system. One 

enhancement is a process for annotating 

which steps in the service information 

are ‘‘required for compliance’’ (RC) with 

an AD. Boeing has implemented this RC 

concept into Boeing service bulletins. 

In an effort to further improve the 

quality of ADs and AD-related Boeing 

service information, a joint process 

improvement initiative was worked 

between the FAA and Boeing. The 

initiative resulted in the development of 

a new process in which the service 

information more clearly identifies the 

actions needed to address the unsafe 

condition in the ‘‘Accomplishment 

Instructions.’’ The new process results 

in a Boeing Requirements Bulletin, 

which contains only the actions needed 

to address the unsafe condition (i.e., 

only the RC actions). 

Differences Between This Proposed AD 

and the Service Information 

Since Boeing Special Attention 

Requirements Bulletin 757–25–0315 RB, 

Revision 1, dated May 20, 2020, was 

issued, the FAA has determined that 

airplane having variable number NB451 

is also affected by the unsafe condition. 

Therefore, we have included variable 

number NB451 in this AD. This 

difference has been coordinated with 

Boeing. 

Costs of Compliance 

The FAA estimates that this proposed 

AD affects 363 airplanes of U.S. registry. 

The FAA estimates the following costs 

to comply with this proposed AD: 

ESTIMATED COSTS FOR REQUIRED ACTIONS

Action Labor cost Parts cost Cost per 

product 

Cost on U.S. 

operators 

Install Lanyard Assemblies ........... Up to 75 work-hours × $85 per hour = Up to $6,375 Up to $45,750 Up to $52,125 Up to 

$18,921,375. 

Federal Register / Vol. 85, No. 250 / Wednesday, December 30, 2020 / Proposed Rules 86517 

Authority for This Rulemaking 

Title 49 of the United States Code 

specifies the FAA’s authority to issue 

rules on aviation safety. Subtitle I, 

section 106, describes the authority of 

the FAA Administrator. Subtitle VII: 

Aviation Programs, describes in more 

detail the scope of the Agency’s 

authority. 

The FAA is issuing this rulemaking 

under the authority described in 

Subtitle VII, Part A, Subpart III, Section 

44701: General requirements. Under 

that section, Congress charges the FAA 

with promoting safe flight of civil 

aircraft in air commerce by prescribing 

regulations for practices, methods, and 

procedures the Administrator finds 

necessary for safety in air commerce. 

This regulation is within the scope of 

that authority because it addresses an 

unsafe condition that is likely to exist or 

develop on products identified in this 

rulemaking action. 

Regulatory Findings 

The FAA determined that this 

proposed AD would not have federalism 

implications under Executive Order 

13132. This proposed AD would not 

have a substantial direct effect on the 

States, on the relationship between the 

national Government and the States, or 

on the distribution of power and 

responsibilities among the various 

levels of government. 

For the reasons discussed above, I 

certify this proposed regulation: 

(1) Is not a ‘‘significant regulatory 

action’’ under Executive Order 12866, 

(2) Will not affect intrastate aviation 

in Alaska, and 

(3) Will not have a significant 

economic impact, positive or negative, 

on a substantial number of small entities 

under the criteria of the Regulatory 

Flexibility Act. 

List of Subjects in 14 CFR Part 39 

Air transportation, Aircraft, Aviation 

safety, Incorporation by reference, 

Safety. 

The Proposed Amendment 

Accordingly, under the authority 

delegated to me by the Administrator, 

the FAA proposes to amend 14 CFR part 

39 as follows: 

PART 39—AIRWORTHINESS 

DIRECTIVES 

■ 1. The authority citation for part 39 

continues to read as follows: 

Authority: 49 U.S.C. 106(g), 40113, 44701. 

§ 39.13 [Amended] 

■ 2. The FAA amends § 39.13 by adding 

the following new airworthiness 

directive (AD): 

The Boeing Company: Docket No. FAA– 

2020–1022; Project Identifier AD–2020– 

01101–T. 

(a) Comments Due Date 

The FAA must receive comments by 

February 12, 2021. 

(b) Affected ADs 

None. 

(c) Applicability 

This AD applies to The Boeing Company 

Model 757–200, –200CB, and –300 series 

airplanes, certificated in any category, as 

identified in Boeing Special Attention 

Requirements Bulletin 757–25–0315 RB, 

Revision 1, dated May 20, 2020, and airplane 

having variable number NB451. 

(d) Subject 

Air Transport Association (ATA) of 

America Code 25, Equipment/furnishings. 

(e) Unsafe Condition 

This AD was prompted by a report 

indicating the passenger service units (PSUs) 

and life vest panels became separated from 

their attachments during several survivable 

accident sequences. The FAA is issuing this 

AD to address the PSUs, life vest panels, and 

video panels becoming detached and falling 

into the cabin, which could lead to passenger 

injuries and impede egress during an 

evacuation. 

(f) Compliance 

Comply with this AD within the 

compliance times specified, unless already 

done. 

(g) Required Actions 

Except as specified by paragraph (h) of this 

AD: At the applicable times specified in the 

‘‘Compliance’’ paragraph of Boeing Special 

Attention Requirements Bulletin 757–25– 

0315 RB, Revision 1, dated May 20, 2020, do 

all applicable actions identified in, and in 

accordance with, the Accomplishment 

Instructions of Boeing Special Attention 

Requirements Bulletin 757–25–0315 RB, 

Revision 1, dated May 20, 2020. 

Note 1 to paragraph (g): Guidance for 

accomplishing the actions required by this 

AD can be found in Boeing Special Attention 

Service Bulletin 757–25–0315, Revision 1, 

dated May 20, 2020, which is referred to in 

Boeing Special Attention Requirements 

Bulletin 757–25–0315 RB, Revision 1, dated 

May 20, 2020. 

(h) Exceptions to Service Information 

Specifications 

(1) Where Boeing Special Attention 

Requirements Bulletin 757–25–0315 RB, 

Revision 1, dated May 20, 2020, uses the 

phrase ‘‘the Revision 1 date of Requirements 

Bulletin 757–25–0315 RB,’’ this AD requires 

using ‘‘the effective date of this AD.’’ 

(2) For airplane variable number NB451, do 

the applicable actions for Group 4 identified 

in, and in accordance with, the 

Accomplishment Instructions of Boeing 

Special Attention Requirements Bulletin 

757–25–0315 RB, Revision 1, dated May 20, 

2020. 

(i) Parts Installation Limitation 

As of the applicable time specified in 

paragraph (i)(1) or (2) of this AD, no person 

may install on any airplane any PSU, life vest 

panel, or video panel without an updated 

lanyard assembly installed. 

(1) For airplanes that have PSUs, life vest 

panels, or video panels without the updated 

lanyard assemblies installed as of the 

effective date of this AD: After modification 

of the airplane as required by paragraph (g) 

of this AD. 

(2) For airplanes that do not have PSUs, 

life vest panels, or video panels without the 

updated lanyard assemblies installed as of 

the effective date of this AD: As of the 

effective date of this AD. 

(j) Alternative Methods of Compliance 

(AMOCs) 

(1) The Manager, Seattle ACO Branch, 

FAA, has the authority to approve AMOCs 

for this AD, if requested using the procedures 

found in 14 CFR 39.19. In accordance with 

14 CFR 39.19, send your request to your 

principal inspector or local Flight Standards 

District Office, as appropriate. If sending 

information directly to the manager of the 

certification office, send it to the attention of 

the person identified in paragraph (k)(1) of 

this AD. Information may be emailed to: 9- 

ANM-Seattle-ACO-AMOC-Requests@faa.gov. 

(2) Before using any approved AMOC, 

notify your appropriate principal inspector, 

or lacking a principal inspector, the manager 

of the local flight standards district office/ 

certificate holding district office. 

(3) An AMOC that provides an acceptable 

level of safety may be used for any repair, 

modification, or alteration required by this 

AD if it is approved by The Boeing Company 

Organization Designation Authorization 

(ODA) that has been authorized by the 

Manager, Seattle ACO Branch, FAA, to make 

those findings. To be approved, the repair 

method, modification deviation, or alteration 

deviation must meet the certification basis of 

the airplane, and the approval must 

specifically refer to this AD. 

(k) Related Information 

(1) For more information about this AD, 

contact Scott Craig, Aerospace Engineer, 

Cabin Safety and Environmental Systems 

Section, FAA, Seattle ACO Branch, 2200 

South 216th St., Des Moines, WA 98198; 

phone and fax: 206–231–3566; email: 

michael.s.craig@faa.gov. 

(2) For service information identified in 

this AD, contact Boeing Commercial 

Airplanes, Attention: Contractual & Data 

Services (C&DS), 2600 Westminster Blvd., 

MC 110–SK57, Seal Beach, CA 90740–5600; 

phone: 562–797–1717; internet: https://

www.myboeingfleet.com. You may view this 

referenced service information at the FAA, 

Airworthiness Products Section, Operational 

Safety Branch, 2200 South 216th St., Des 

Moines, WA. For information on the 

availability of this material at the FAA, call 

206–231–3195. 

86518 Federal Register / Vol. 85, No. 250 / Wednesday, December 30, 2020 / Proposed Rules 

Issued on November 6, 2020. 

Lance T. Gant, 

Director, Compliance & Airworthiness 

Division, Aircraft Certification Service. 

[FR Doc. 2020–28823 Filed 12–29–20; 8:45 am] 

BILLING CODE 4910–13–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 1 

[Docket No. PTO–P–2020–0015] 

RIN 0651–AD46 

Disclaimer Practice in Patents and 

Patent Applications 

AGENCY: United States Patent and 

Trademark Office, Department of 

Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO) proposes to 

amend the rules of practice to expand 

when certain types of patent applicants 

and patentees may, subject to other 

conditions, obtain or enforce a second 

patent for an invention that is similar 

(i.e., patentably indistinct) to a first 

patent. Ordinarily, in examination 

before the USPTO, any application for a 

second patent covering such similar 

invention would be rejected. The 

proposed rule change is limited to the 

situation where owners of the first and 

second patents or patent applications 

are different but have an agreement to 

conduct research together (i.e., a joint 

research agreement). For this limited 

situation, the proposed rule change 

would increase the ability to file a 

document, called a terminal disclaimer, 

that ties the rights of a second patent to 

the first patent. Specifically, a terminal 

disclaimer causes the second patent to 

limit its enforceable patent term to end 

no later than the first patent’s term and 

limits when the second patent can be 

enforced. The proposed rule change 

would expand when a terminal 

disclaimer is permitted to be filed in the 

joint research agreement situation by 

eliminating the requirement that the 

second patent or patent application be 

filed later than the first patent or patent 

application. The USPTO also proposes 

to amend its rules of practice to 

explicitly state existing practices in the 

rules regarding when certain affidavits 

and declarations, as well as terminal 

disclaimers, may be filed. 

DATES: Comments must be received by 

March 22, 2021 to ensure consideration. 

ADDRESSES: For reasons of government 

efficiency, comments must be submitted 

through the Federal eRulemaking Portal 

at https://www.regulations.gov. To 

submit comments via the portal, one 

should enter docket number PTO–P– 

2020–0015 on the homepage and click 

‘‘search.’’ The site will provide search 

results listing all documents associated 

with this docket. Commenters can find 

a reference to this notice and click on 

the ‘‘Comment Now!’’ icon, complete 

the required fields, and enter or attach 

their comments. Attachments to 

electronic comments will be accepted in 

Adobe® portable document format or 

Microsoft Word® format. Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

Visit the Federal eRulemaking Portal 

for additional instructions on providing 

comments via the portal. If electronic 

submission of comments is not feasible 

due to a lack of access to a computer 

and/or the internet, please contact the 

USPTO using the contact information 

below for special instructions. 

FOR FURTHER INFORMATION CONTACT: 

Susy Tsang-Foster, Senior Legal 

Advisor, Office of Patent Legal 

Administration, Office of the Deputy 

Commissioner for Patent Examination 

Policy, by email at Susy.Tsang-Foster@

uspto.gov; or Robert Clarke, Editor, 

Manual of Patent Examining Procedure, 

Office of the Deputy Commissioner for 

Patent Examination Policy, by email at 

Robert.Clarke@uspto.gov. 

SUPPLEMENTARY INFORMATION: Patent 

applications and patents are subject to 

the doctrine of nonstatutory double 

patenting to prevent both the unjust 

timewise extension of the right to 

exclude and multiple infringement suits 

by different parties. These situations 

may arise from the granting of multiple 

patents with patentably indistinct 

claims where the patents have a 

common owner, applicant, or inventor 

or where the patents are not commonly 

owned but are subject to a joint research 

agreement. Double patenting analysis is 

not limited to situations in which the 

reference patents or applications, whose 

claims form the basis for the 

nonstatutory double patenting rejection, 

are prior art as defined in 35 U.S.C. 102. 

The reference may have an effectively 

filed date that is before, the same as, or 

after the effective filing date of a 

claimed invention in an application 

under examination or patent under 

reexamination (i.e., the subject patent 

application or patent). Thus, the 

reference need not be ‘‘prior art’’ to the 

claimed invention in the subject 

application or patent for its claims to be 

relied upon in a nonstatutory double 

patenting rejection. For more 

information on the nonstatutory double 

patenting doctrine, see section 804 of 

the Manual of Patent Examining 

Procedure (Ninth Edition, Revision 

10.2019, June 2020). 

I. Background: A. Joint Research 

Agreements: The Cooperative Research 

and Technology Enhancement Act of 

2004 (CREATE Act), Public Law 108– 

453, 118 Stat. 3596, was passed to 

promote cooperative research between 

universities, the public sector, and 

private enterprises. The CREATE Act 

amended 35 U.S.C. 103(c), effective on 

December 10, 2004, to provide that 

subject matter developed by another 

person and a claimed invention shall be 

treated as owned by the same person or 

subject to an obligation of assignment to 

the same person for purposes of 

excluding prior art usable in 

obviousness rejections 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 legislative history recognized that 

the CREATE Act would result in two or 

more patents being issued to patentably 

indistinct inventions, and called upon 

the nonstatutory double patenting 

doctrine to protect the public from 

multiple enforcement actions based on 

patents issued due to the passage of the 

CREATE Act. See H.R. Rep. No. 108– 

425, at 6 (2003) (stating that a terminal 

disclaimer is required ‘‘when double 

patenting is determined to exist for two 

or more claimed inventions’’ for any 

application for which the applicant 

takes advantage of the ‘‘safe harbor’’ 

provision in [pre-AIA] 35 U.S.C. 103(c) 

as amended by the CREATE Act). 

Consistent with the legislative history, 

the nonstatutory double patenting 

doctrine was expanded to include 

rejections based on patents or patent 

applications that were disqualified as 

prior art under pre-AIA 35 U.S.C. 

103(c). 

A prior art exception, similar to the 

prior art exclusion in the CREATE Act, 

was enacted in 35 U.S.C. 102(b)(2)(C) 

and 102(c) by the Leahy-Smith America 

Invents Act, Public Law 112–29, 125 

Stat. 284 (2011). Consistent with this 

prior art exception, the nonstatutory 

double patenting doctrine was further