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Cooperative Research and Technology Enhancement (CREATE) Act

Cooperative Research and Technology Enhancement (CREATE) Act. By Paul Fleischut SENNIGER POWERS. U.S. CONSTITUTION. Article 1, Section 8, Clause 8:

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Cooperative Research and Technology Enhancement (CREATE) Act

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  1. Cooperative Research and Technology Enhancement (CREATE) Act By Paul Fleischut SENNIGER POWERS

  2. U.S. CONSTITUTION • Article 1, Section 8, Clause 8: • … to promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

  3. PRIOR ART – 102(a) • Publications and patents prior to invention • Products prior to invention • Processes prior to invention • Except that “concealed” products and process do not constitute prior art

  4. 102(a) 12/04 4/05 9/05 ----|---------------|-----------------------|- | Your File pat app. | invention 3d party process, product, patent, or publication

  5. MORE PRIOR ART – 102(b) Publications more than a year before patent application filing 6/04 8/04 9/05 ----|-------------|-----------------------|- | 3d party File pat app. | publication Your invention

  6. MORE PRIOR ART – 102(b) On sale by inventor more than a year before application filing 6/04 8/04 9/05 ----|-------------|-----------------------|- | You offer File pat app. | product for sale Your invention

  7. MORE PRIOR ART - 102(e)2 Patent applications by others before your invention 3/05 6/05 9/05 ----|-------------|-----------------------|- | Your invention File pat app. | 3d party files patent application

  8. MORE PRIOR ART – 102(g)2 Invention made in the U.S. by another before your invention, who did not abandon, suppress, or conceal the invention 3/05 6/05 9/05 ----|-------------|-----------------------|- | Your invention File pat app. 3d party invention

  9. MORE PRIOR ART – 102(g)2 • This can be so-called “secret” prior art • Can be embodied in personal communications, inventor notebooks, confidential e-mails, unpublished patent applications, etc., even if unknown to the public

  10. OBVIOUSNESS • Section 103 • Not patentable if the differences between the invention and the prior art are such that the invention as a whole would have been obvious to a person of ordinary skill in the art • Section 103(c) • Safe harbor for secret prior art under common ownership

  11. CREATE Act - New 103(c) • Secret prior art can no longer form the basis of an obviousness rejection against a subsequent joint invention IF: • a Joint Research Agreement (JRA) is in place prior to the making of the joint invention • the claimed invention was made pursuant to the JRA • the secret prior art was generated by one of the parties to the JRA under the scope of the JRA • the patent application discloses names of parties to JRA

  12. Pitfalls and Tips • Prior research of those not party to JRA remains prior art vs collaborative invention • list anyone conducting inventive activity • amend JRA if new collaborator joins • with consultants, make clear work is on behalf of parties to JRA

  13. Pitfalls and Tips • Research outside scope of activity in JRA is not shielded by 103(c) • Draft broadly enough to capture full subject matter arising from collaborative efforts • But not so broadly or vaguely to contribute more to the joint effort than desired • Periodically review scope against current activity • Promptly amend scope before expansion of project

  14. Pitfalls and Tips • Timing is crucial • JRA in place before collaborative research • Amending • Review existing JRAs for adherence to 103(c) – consider amending to make clear intended to qualify • Review pending collaborative patent applications and issued patents for adherence to 103(c) – amend applications or submit Certificate of Correction on issued patents to list all JRA parties. • Consider broadening reissue applications if claims of collaborative issued patent were narrowed in response to prior art now exempted under 103(c) safe harbor.

  15. Questions and Comments??

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