USPTO Implements Changes to Patent Act: Cooperative Research

The USPTO has released an interim rule of practice that implements provisions of the CREATE Act that amended 35 U.S.C. 103(c).  (Published at 70 FR 1818).  The purpose of the Act is to promote cooperative research -- such as between a university and start-up company.  The main thrust of the new law is to exclude some prior art from obviousness (103) consideration if the prior art arose from a joint research agreement.

According to the new rules, to overcome a 103(a) rejection by invoking the CREATE Act, an applicant must:

  • Provide a statement that a joint research agreement was in place and that the claimed invention was made as a result of that agreement.
  • Amend the specification to disclose the names of parties to the agreement.
  • Amend the specification to specify the dates of the research agreement (or point to an assignment recorded in the patent office that describes the agreement)

The new rules cannot be used to overcome rejections based on anticipation.  Likewise, the PTO indicated that the new rules will likely not apply to reissue applications that were initially granted prior to December 10, 2004.

The PTO asks for your comments on the design of the final rule.  Please contact by February 10, 2005 with you comments.

The Bar Association of the District of Columbia PTC Section roundtable that will be held at 3:30 PM EST on January 12 will discuss the changes. A telephone hookup remains available for that meeting. For information on either personal attendance or about the telephone hookup, please contact Jean Shim,, who is the registrar for this meeting. The meeting will be held at Suite 500, 3000 K Street NW in Georgetown. (Thanks to Hal Wegner for information on the meeting).