The recently enacted Cooperative Research and Technology Enhancement (CREATE) Act of 2004, amends Federal patent law in an effort to promote collaborative research, particularly between scientists at separate universities and between industry and university scientists. This new law provides 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. 

During the course of collaborative research, patent applications may be filed which arise from the research.  The filing of these patent applications can become unforeseen prior art when these patent applications or resulting patents become prior art against subsequent patent applications coming out of the collaborative research.

To take advantage of its provisions, you should take steps to: 

  1. prior to entering into a collaborative agreement, consider whether you are willing to potentially give up the opportunity to separately enforce your patent;
  2. review any pending patent applications which may have come out of a collaborative research agreement;
  3. review all collaborative agreements to determine if the agreement will satisfy the criteria set forth in the Act;
  4. amend any relevant pending patent applications or issued patents to include the names of the parties to the agreement;
  5. consider filing a Certificate of Correction to amend patents that have issued as a result of collaborative works; and
  6. record all collaborative research agreements with the United States Patent and Trademark Office.

More details can be found here.

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