The document is a slide presentation prepared by legal and intellectual property professionals for the AUTM conference, focusing on the Cooperative Research and Technology Enhancement (CREATE) Act of 2004. The presentation examines the background leading to the Act, notably legal precedents such as In re Bass and Oddzon Products v. Just Toys, and amendments to the U.S. patent statutes, which collectively highlighted challenges related to the treatment of collaborative research and confidential information as prior art in patent applications. The CREATE Act was designed to extend certain “safe harbor” provisions, allowing parties to joint research agreements (JRAs) to avoid some prior art issues even when there is no common ownership, thereby facilitating collaborative innovation.
The presentation highlights that the CREATE Act is a “double-edged sword,” offering significant benefits such as enhanced opportunities to secure patents from collaborative work and promoting closer partnerships between universities and external entities. However, it also introduces considerable risks and complexities for university research administrators and technology transfer offices. These challenges include potential unintended consequences in granting rights to collaborators, management of agreements that fall within the broad definition of JRAs, compliance with internal policies and federal obligations, and ensuring consistent alignment with institutional research and commercialization goals. The slides discuss practical strategies for managing these risks, such as careful drafting of agreements, proactive education of researchers, and ongoing communication among stakeholders. The presentation concludes by referencing the role of the Council on Governmental Relations (COGR) in developing guidelines and materials to help universities navigate the complexities introduced by the CREATE Act.
