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

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.

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 Except that “concealed” products and process do not constitute prior art

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

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

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

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

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 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 3/05 6/05 9/ | | |-  ----| | |-  | Your invention File pat app. | Your invention File pat app. 3d party 3d party invention invention

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can be so-called “secret” prior art Can be embodied in personal communications, inventor notebooks, confidential s, unpublished patent applications, etc., even if unknown to the public

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

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

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

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

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.

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