In the past, research was carried out primarily by employees who had an obligation to assign ownership of their inventions to the same employer. It was often the case that an employee conceived an improvement to another employee’s invention that might be deemed obvious (and, hence, unpatentable) in view of the original invention. To avoid such an unfair situation, U.S. patent law has long provided an exception to the normal requirement that all inventions be nonobvious.
This rule effectively disqualifies confidential information (subject matter) learned from other persons inside an organization (e.g., from other employees of the same corporation or university) from being used as “prior art” upon which an obviousness rejection is based. The rule does not disqualify subject matter that is prior art under the other sections of 35 U.S.C. 102, i.e., subject matter that is public knowledge, in public use in the U.S., on sale in the U.S., or patented or published information. Furthermore, the invention and the subject matter must have been commonly owned or subject to an obligation of assignment to the same entity at the time (before) the invention was made.
More recently, U.S. patent law was changed in recognition of the fact that collaborative research now frequently occurs in situations where researchers have an obligation to assign their inventions to different entities. The Cooperative Research and Technology Enhancement (CREATE) Act of December 10, 2004, protects the patentability of inventions of the employees of collaborating organizations. The CREATE Act is particularly important to those who rely upon collaborative research efforts among universities, non-profit institutions and for-profit companies as a source of patentable inventions.
The CREATE Act now effectively eliminates secret prior art in situations where (1) the claimed invention was made by or for parties to a written joint research agreement that was in place before the claimed invention was made, (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and (3) the patent application in which the invention is claimed discloses (or is amended to disclose) the names of the parties to the joint research agreement. If these conditions are met, a secret invention made by any of the collaborators before the date of the joint research agreement cannot be used in evaluating whether a later collaborative invention satisfies the nonobviousness requirement of the patent laws. In addition, an invention made in the course of the collaborative research cannot be used in evaluating whether another invention made in the course of the collaborative research satisfies the nonobviousness requirement of U.S. patent law.
The CREATE Act defines a joint research agreement (JRA) as a “written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.” A JRA may take the form of a research and development agreement, a Government Cooperative Research and Development Agreement (CRADA) or a material transfer agreement (MTA). If the JRA is recorded with the USPTO, only an excerpt containing each collaborator’s name, the date of the JRA, and a concise statement of the field of invention is necessary.
The CREATE Act is particularly important to organizations like small businesses and universities that benefit from the Bayh-Dole Act and the Small Business Innovation Research (SBIR) and Small Business Technology Transfer Research (STTR) programs. Establishment of a JRA is less difficult than arranging for common ownership or assignment of collaborative inventions before a joint research project begins. This allows small businesses and universities to more easily establish collaborative research programs with innovative partners.
Although the CREATE Act removes a major impediment to patenting the results of collaborative research, it is not a cure all. Research by either party to the JRA outside the scope of the JRA or subsequent to the expiration of the term of the JRA is not protected by the CREATE Act. Moreover, if the scope of the collaborative research is defined too broadly, a party may find itself contributing more than it would have desired to the collaboration. Conversely, if the scope of the collaborative effort is defined too narrowly, inventions made as part of the collaborative research may render unpatentable other inventions a party makes outside the agreement. For this reason, the scope of the collaborative research in a JRA should be sufficient to capture all potentially patentable subject matter arising from the collaboration, but not so broadly as to inadvertently include more than is desired. Moreover, the list of collaborating researchers and the scope of activity actually pursued should be periodically reviewed and the scope of the JRA amended before expansion of the project occurs.
In conclusion, the CREATE Act recognizes the importance of collaborative research among modern research organizations and may be used to protect the patentability of jointly-developed inventions. Care must still be taken, however, in following the requirements of 35 U.S.C. 103. Care must also be taken when U.S. patent applications are filed by different inventive entities on related, commonly-owned inventions because obviousness rejections under 35 U.S.C. 102(e)/103 may still be made.
If you are in need of a joint research agreement, I would be happy to refer you to an attorney with experience in this area of the law.