Joint Research Needs Written Agreement and Patent Disclosure

The Cooperative Research and Technology Enhancement ("CREATE") Act of 2004 (see I/P Updates June 24, 2004) was enacted on December 10, 2004 and eliminates the type of secret prior art addressed in OddzOn Products, Inc. v. Just Toys, Inc. (Fed. Cir. 1997) for joint research projects, as long as

1. the invention was made as a result of activities undertaken within the scope of a written joint research agreement in effect on the date the invention was made; and
2. any patent application for the invention discloses or is amended to disclose the names of the parties to the joint research agreement.

The OddzOn decision held that information from related research projects qualifying as prior art under 35 USC 102(f) or 102(g) can be used to invalidate a patent for obviousness, even if that information was confidential, shared among consenting parties, or otherwise undocumented. Although many entities attempted to maneuver around this problem by assigning intellectual property rights to a single entity, it was viewd as a trap for the unwary that negatively affected collaboration.