In addition to changes to the PTO Fees, Congress has also passed the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004." The Act is now awaiting Presidenet Bush’s signature. The purpose of the Act is to promote collaborative research. As such, some previously considered prior art will be excluded from consideration if it arose from a joint research agreement.
There may be a need for your clients to immediately make amendments in joint research agreements to make sure that they qualify under the new law. Second, currently pending applications may be amended to disclose the names of the parties to the joint agreement. In addition, in some cases, broadening reissues (granted in last two years) may be obtained if the narrowly issued claims were restricted because of now excluded prior art.
— Dennis
The text of the Act is listed below:
AMENDMENTS TO 35 USC 103(c)
“(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.