Senate Passes Legislation to Protect Research Collaborations

A bill designed to encourage collaborative research among universities and between universities and industry passed the Senate last Friday. The Cooperative Research and Technology Enhancement (CREATE) Act of 2004 will allow researchers and inventors who work for different organizations to share information without losing the ability to file a patent.

Passage of the bill has been supported by the Association of American Universities (AAU), the American Council on Education and the National Association of State Universities and Land-Grant Colleges. These proponents argue the need for the amendment to federal patent and trademark law stems from a 1997 court decision (OddzOn Products Inc. v. Just Toys) that deemed information shared among collaborators may be deemed a prior art, which could invalidate a patent unless there is a single owner of the invention.

The CREATE Act, AAU contends, solves the problem by treating inventions as if they have a single owner as long as a formal, written joint research agreement in place between collaborators before the invention is made. The bill adds language that treats inventions of a common owner similarly to inventions made by a single person, if:

(1) 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; (2) the claimed invention was made as a result of activities undertaken within the scope of the agreement; and, (3) the application for patent for the claimed invention discloses, or is amended to disclose, the names of the parties to the agreement.

S. 2192, sponsored by Sen. Orrin Hatch of Utah, is virtually identical to H.R. 2391, which the House passed at the end of April. The full text of S. 2192, CREATE, is available at: http://thomas.loc.gov/cgi-bin/bdquery/z?d108:s.02192: