The Catholic University of America

Summary of Federal Laws

Compliance Partners

Associate Provost for Research

Research

The Cooperative Research and Technology Enhancement Act of 2004 (Create Act)

35 USC § 103; Pub. L. 108-453, 118 Stat. 3596 (2004).

This new law amends the Patent Act to provide that sharing of confidential information under a joint research agreement that was in effect on or before the date the claimed invention was made will not be the basis of an obviousness determination under patent law. This clarification to the law removes an impediment to patentability of inventions resulting from collaborative research between universities and businesses.

The CREATE Act amends 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) 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 of the CREATE Act is online and includes a discussion of a 1984 amendment to Section 103 that was intended to clarify that nonpublic information obtained from a team research effort should not be considered as invalidating prior art.

In 1997 the Federal Circuit, in a highly criticized decision (OddzOn Products, Inc. v. Just Toys, Inc. 122 Fed. 3 1396 (Fed. Cir. 1997)) held that information qualifying as prior art under Subsections 102(f) or 102(g) of Title 35 can be used to dismiss a patent application as obvious. This dismissal could occur even if that information was confidential, shared among consenting parties, or undocumented. The intent of the CREATE Act is to address the negative results of this decision and to create a safe harbor to protect collaborative research. The Act, once signed, will apply to patents granted on or after Dec. 10, 2004.

Final Rule: Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004

70 Fed. Reg. 54259 (Sept. 14, 2005) This final rule revises the rules of patent practice in CFR Title 37 to implement the CREATE Act. The rule is effective on date of publication and applicable to any patent granted on or after December 10, 2004.

Resources

U.S. Patent and Trademark Office

1998 Journal of Law and Technology Article by Philip McGarrigle (38 IDEA 673) critiquing the Oddz On decision and explaining the problems the decision posed under patent law

 

 

links updated 3/30/12 SZG