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Issue 05/1 | January 5, 2005
Changes to Patent Laws Encourage Sharing of Confidential Information Between Research Collaborators

On December 10, 2004, President Bush signed legislation amending 35 U.S.C. § 103. The Cooperative Research and Technology Enhancement Act, or Create Act, is designed to encourage collaboration among inventors in separate research organizations. The Act allows the sharing of confidential information among research partners without creating a bar to the patentability of their joint inventions.

Before the Create Act, a collaborator's confidential information, if shared with a second collaborator, could be a bar to the patentability of the joint inventions of the collaboration. The Create Act eliminates confidential information of one collaborator from qualifying as "prior art" against a patent filed by the collaboration. The Act addresses the collaborative efforts of all types of organizations, including universities, the public sector, or private institutions.

The Create Act is intended to avoid the impact on collaborative research of a 1997 Federal Circuit decision, OddzOn Products Inc. v. Just Toys Inc., 122 F.3d 1396, 43 USPQ2d 1641 (Fed. Cir. 1997). In that case, the Federal Circuit affirmed a finding of invalidity of a design patent (346,001) for a foam football-shaped ball. The court held that two confidential ball designs (not those of the inventor), which inspired the inventor of the OddzOn design, qualified as invalidating prior art under 35 U.S.C. §103.

The Act applies to information that would be prior art under 35 U.S.C. §103 in conjunction with §102(e), (f) or (g). As amended, 35 U.S.C. § 103 provides that subject matter developed by one collaborative entity and the subject matter of the collaboration's claimed invention shall be deemed to have been owned by the same party, if:

  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 agreement; and
  3. the application for patent for the claimed invention discloses, or is amended to disclose, the names of the parties to the agreement.

The effective date of the Create Act is December 10, 2004. The Act applies to all patents granted on or after the effective date, but does not affect final decisions of a court or the Patent and Trademark Office rendered before December 10, 2004.

The complete text of the Create Act is shown below.

SECTION 1. SHORT TITLE.

This Act may be cited as the 'Cooperative Research and Technology Enhancement (CREATE) Act of 2004'.

SEC. 2. COLLABORATIVE EFFORTS ON CLAIMED INVENTIONS.

Section 103(c) of title 35, United States Code, is amended to read as follows:

(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 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) 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

(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;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(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) 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.'.

SEC. 3. EFFECTIVE DATE.

(a) IN GENERAL- The amendments made by this Act shall apply to any patent granted on or after the date of the enactment of this Act.

(b) SPECIAL RULE- The amendments made by this Act shall not affect any final decision of a court or the United States Patent and Trademark Office rendered before the date of the enactment of this Act, and shall not affect the right of any party in any action pending before the United States Patent and Trademark Office or a court on the date of the enactment of this Act to have that party's rights determined on the basis of the provisions of title 35, United States Code, in effect on the day before the date of the enactment of this Act.

To discuss these topics further, please feel free to contact the author Patrick Gattari, (gattari@mbhb.com), at McDonnell Boehnen Hulbert & Berghoff, LLP in Chicago, USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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