1 / 15

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:

goro
Download Presentation

Cooperative Research and Technology Enhancement (CREATE) Act

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  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??

More Related