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Cooperative Research and Technology Enhancement Act of 2004
CREATE COMMENTS
Cooperative Research and Technology Enhancement Act of 2004 ("CREATE") Becomes Law
The "CREATE Act" became law on December 10, 2004. According to Senator Hatch, this act "makes a narrow, but important change in our patent laws to ensure that the American public will benefit from the results of collaborative research efforts that combine the erudition of great public universities with the entrepreneurial savvy of private enterprises" by removing some types of so-called "secret prior art" as roadblocks to certain patents.
CREATE allows patent applicants under certain circumstances to remove the effect of subject matter alleged to be evidence of obviousness (prior art) in three situations: (1) where a collaborator's published application or patent is cited under 35 USC 102(e) (material described by a collaborator in an application filed before the applicant's application, but issued later); (2) where a collaborator "did not invent" the claimed subject matter under 35 USC 102(f); or (3) where a collaborator made certain non-public material before the applicant under 35 USC 102(g). (The act may not be used to overcome novelty ("anticipation") rejections.)
The U.S. Patent and Trademark Office has published proposed rules implementing CREATE (Federal Register, Vol, 70, No. 7, 1/11/05), and final rules will be published later in 2005. Patent applications will have to contain certain information in order for the advantages of CREATE to be triggered, including the names of parties to a research agreement and a concise statement of the field of the claimed invention. The rules will provide for a new "double patenting" rejection, for example where the claims of a pending application filed by a university are not distinct enough from the patent claims of a collaborator. The procedure for overcoming certain of these rejections is yet to be finalized by the PTO, but likely will require that subsequent patents not be enforced serially by the patentholders.
More information is available on the web, for example at www.promotetheprogress.com/mindmaps/createact.
Printed from: http://www.techtransfer.umich.edu/news_events/news/article_98.php