The document, published by the Council on Governmental Relations (COGR), serves as a practical guide to the Cooperative Research and Technology Enhancement (CREATE) Act of 2004, with a particular focus on the Act’s implications for academic research institutions. The CREATE Act amended U.S. patent law to address challenges arising when collaborative research between separate parties resulted in technical disclosures that constituted “prior art,” potentially precluding patentability of subsequent inventions originating from joint research agreements (JRAs). The Act enables collaborators to exclude certain internal disclosures from being considered prior art, thereby facilitating the patenting of joint inventions that previously might have failed to meet the requirements of novelty or non-obviousness due to information shared within the collaboration.
The brochure provides comprehensive guidance, in a question-and-answer format, on both the legal background and operational facets of the CREATE Act, including definitions and requirements for JRAs, practical strategies for implementing the Act in research agreements, and the potential benefits and risks for academic organizations. Key advantages include enhanced ability to patent incremental improvements and increased willingness to exchange information among collaborators. However, the guide also addresses potential hazards, such as unintentional restrictions on patent rights, blocking positions created by collaborators, and possible tax implications for academic institutions. The document emphasizes that thoughtful consideration and clear communication among research administrators, legal counsel, and technology transfer offices are crucial to maximize the benefits and minimize the risks associated with the CREATE Act. Sample contract clauses and a full text of the Act are also provided to assist institutions in the application of these principles.
