IB 

Union Calendar No. 245

108TH CONGRESS 

2D SESSION H. R. 2391

[Report No. 108–425] 

To amend title 35, United States Code, to promote research among 

universities, the public sector, and private enterprise. 

IN THE HOUSE OF REPRESENTATIVES 

JUNE 9, 2003

Mr. SMITH of Texas (for himself, Mr. BERMAN, Mr. CONYERS, Mr. COBLE, 

Mr. GOODLATTE, Mr. GREEN of Wisconsin, Ms. HART, Mr. BOUCHER, 

Ms. LOFGREN, Mr. WEXLER, and Ms. BALDWIN) introduced the following 

bill; which was referred to the Committee on the Judiciary 

FEBRUARY 24, 2004

Additional sponsors: Mr. FORBES, Mr. KIND, and Mr. HYDE

FEBRUARY 24, 2004 

Reported with amendments, committed to the Committee of the Whole House 

on the State of the Union, and ordered to be printed 

[Strike out all after the enacting clause and insert the part printed in italic] 

[For text of introduced bill, see copy of bill as introduced on June 9, 2003] 

A BILL

To amend title 35, United States Code, to promote research 

among universities, the public sector, and private enterprise.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,
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1 SECTION 1. SHORT TITLE. 

2 This Act may be cited as the ‘‘Cooperative Research 

3 and Technology Enhancement (CREATE) Act of 2004’’. 

4 SEC. 2. COLLABORATIVE EFFORTS ON CLAIMED INVEN5 TIONS. 

6 Section 103(c) of title 35, United States Code, is 

7 amended to read as follows: 

8 ‘‘(c)(1) Subject matter developed by another person, 

9 which qualifies as prior art only under one or more of sub10 sections (e), (f), and (g) of section 102 of this title, shall 

11 not preclude patentability under this section where the sub12 ject matter and the claimed invention were, at the time the 

13 claimed invention was made, owned by the same person or 

14 subject to an obligation of assignment to the same person. 

15 ‘‘(2) For purposes of this subsection, subject matter de16 veloped by another person and a claimed invention shall 

17 be deemed to have been owned by the same person or subject 

18 to an obligation of assignment to the same person if—

19 ‘‘(A) the claimed invention was made by or on 

20 behalf of parties to a joint research agreement that 

21 was in effect on or before the date the claimed inven22 tion was made; 

23 ‘‘(B) the claimed invention was made as a result 

24 of activities undertaken within the scope of the joint 

25 research agreement; and 
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1 ‘‘(C) the application for patent for the claimed 

2 invention discloses or is amended to disclose the 

3 names of the parties to the joint research agreement. 

4 ‘‘(3) For purposes of paragraph (2), the term ‘joint 

5 research agreement’ means a written contract, grant, or co6 operative agreement entered into by two or more persons 

7 or entities for the performance of experimental, develop8 mental, or research work in the field of the claimed inven9 tion.’’. 

10 SEC. 3. EFFECTIVE DATE. 

11 (a) IN GENERAL.—The amendments made by this Act 

12 shall apply to any patent granted on or after the date of 

13 the enactment of this Act. 

14 (b) SPECIAL RULE.—The amendments made by this 

15 Act shall not affect any final decision of a court or the 

16 United States Patent and Trademark Office rendered before 

17 the date of the enactment of this Act, and shall not affect 

18 the right of any party in any action pending before the 

19 United States Patent and Trademark Office or a court on 

20 the date of the enactment of this Act to have that party’s 

21 rights determined on the basis of the provisions of title 35, 

22 United States Code, in effect on the day before the date of 

23 the enactment of this Act.

Amend the title so as to read: ‘‘A bill to amend title 

35, United States Code, to promote cooperative research 
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involving universities, the public sector, and private enterprises.’’. 

Union Calendar No. 245

108TH CONGRESS 

2D SESSION H. R. 2391

[Report No. 108–425] 

A BILL

To amend title 35, United States Code, to promote 

research among universities, the public sector, and private enterprise. 

FEBRUARY 24, 2004

Reported with amendments, committed to the Committee 

of the Whole House on the State of the Union, and ordered to be printed