The brochure, produced by the Council on Governmental Relations (COGR), serves as an informative guide to the Cooperative Research and Technology Enhancement (CREATE) Act of 2004, focusing on its relevance and application within academic research settings. The CREATE Act was enacted to address limitations in U.S. patent law that had previously classified certain communications and shared knowledge between separate parties in a joint research agreement (JRA) as “prior art,” thus preventing the patenting of inventions emerging from collaborative research. By amending 35 U.S.C. §103(c), the Act enables inventions resulting from JRAs to be patentable by allowing certain knowledge shared among collaborators to be excluded from the prior art considered during patent examination. This legislative change is particularly significant for research universities and institutions, as it facilitates more robust collaborations with industry and other partners by mitigating the risks of inadvertently rendering inventions unpatentable due to information sharing.
The brochure comprehensively examines the Act’s provisions, benefits, and potential pitfalls through a question-and-answer format. It elucidates legal definitions, the types of agreements that qualify as JRAs, practical steps for ensuring compliance or exclusion, and strategic considerations for institutions. Benefits of the CREATE Act highlighted include greater freedom for academic and industry collaborators to exchange technical information and the possibility of patenting incremental innovations that might otherwise be excluded. However, it also cautions about complex issues such as the potential for one JRA party to block another’s use of patented inventions, difficulties in patent enforcement and ownership, and possible tax implications for nonprofit research organizations. The guide emphasizes the need for careful legal and administrative coordination to maximize advantages while avoiding unintended consequences, recommending clear contractual language and ongoing dialogue between attorneys, research administrators, and technology transfer professionals. Overall, the document serves as both a practical reference and a strategic overview for academic research institutions navigating the intersection of collaborative research and patent law under the CREATE Act.
