USPTO Implements Rules for Cooperative Research and Technology Enhancement (CREATE) Act

The USPTO has issued a set of final rules to implement the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) that amended Section 103(c) of the Patent Act.

The CREATE Act removes from prior art consideration subject matter that was developed by another person if: (1) the claimed invention was made pursuant to a joint research agreement between the applicant and the other person in effect as of the date of the invention; (2) the claimed invention was within the scope of the joint research agreement; (3) the application discloses the names of the parties to the joint research agreement; and the subject matter only qualifies as prior art under Section 102(e), (f), or (g). 

The newly implemented rules do not require a statement of the field of the claimed invention or a statement of the the date of execution of the JRA.  A processing fee of $130 will be required, however. 37 C.F.R. 1.71(g).  The applicant must also provide a “statement of compliance.”

The final rule is effective September 14, 2005.


I wrote a short article with Baltazar Gomez on the CREATE Act that was published Spring 2005.  Let me know ( if you would like a copy of the article.