Patentability Under Joint Research Agreements

The Cooperative Research and Technology Enhancement Act, also known as the CREATE Act, was enacted on December 10, 2004. Under the Act, an invention made by parties to a joint research agreement that was in effect before the date of the invention generally cannot be subject to an "obviousness" attack using prior art of one of the parties.

Three prerequisites must be met to benefit from the Act:

1. the prior art and the claimed invention must have been made by or on behalf of parties to a joint research agreement as defined by the Act;

2. the joint research agreement must have been in effect on or before the date of the invention; and

3. the invention must have been made as a result of activities undertaken within the scope of the joint research agreement.

If your invention was made under a joint research agreement, you may wish to alert your patent attorney so that appropriate action can be taken if a patent examiner attacks the invention using a prior art reference that can be disqualified under the Act.