II 

Calendar No. 484

108TH CONGRESS 

2D SESSION S. 2192

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

involving universities, the public sector, and private enterprises. 

IN THE SENATE OF THE UNITED STATES 

MARCH 10, 2004

Mr. HATCH (for himself, Mr. LEAHY, Mr. KOHL, Mr. FEINGOLD, and Mr. 

GRASSLEY) introduced the following bill; which was read twice and referred to the Committee on the Judiciary 

APRIL 29, 2004

Reported by Mr. HATCH without amendment 

A BILL

To amend title 35, United States Code, to promote cooperative research involving universities, the public sector, and 

private enterprises.

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

3 SECTION 1. SHORT TITLE. 

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

5 and Technology Enhancement (CREATE) Act of 2004’’. 
2

S 2192 RS 

1 SEC. 2. COLLABORATIVE EFFORTS ON CLAIMED INVEN2 TIONS. 

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

4 amended to read as follows: 

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

6 which qualifies as prior art only under one or more of sub7 sections (e), (f), and (g) of section 102 of this title, shall 

8 not preclude patentability under this section where the 

9 subject matter and the claimed invention were, at the time 

10 the claimed invention was made, owned by the same per11 son or subject to an obligation of assignment to the same 

12 person. 

13 ‘‘(2) For purposes of this subsection, subject matter 

14 developed by another person and a claimed invention shall 

15 be deemed to have been owned by the same person or sub16 ject to an obligation of assignment to the same person if— 

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

18 behalf of parties to a joint research agreement that 

19 was in effect on or before the date the claimed in20 vention was made; 

21 ‘‘(B) the claimed invention was made as a re22 sult of activities undertaken within the scope of the 

23 joint research agreement; and 

24 ‘‘(C) the application for patent for the claimed 

25 invention discloses or is amended to disclose the 
3

S 2192 RS 

1 names of the parties to the joint research agree2 ment. 

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

4 research agreement’ means a written contract, grant, or 

5 cooperative agreement entered into by two or more per6 sons or entities for the performance of experimental, devel7 opmental, or research work in the field of the claimed in8 vention.’’. 

9 SEC. 3. EFFECTIVE DATE. 

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

11 Act shall apply to any patent granted on or after the date 

12 of the enactment of this Act. 

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

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

15 United States Patent and Trademark Office rendered be16 fore the date of the enactment of this Act, and shall not 

17 affect the right of any party in any action pending before 

18 the United States Patent and Trademark Office or a court 

19 on the date of the enactment of this Act to have that par20 ty’s rights determined on the basis of the provisions of 

21 title 35, United States Code, in effect on the day before 

22 the date of the enactment of this Act. 
Calendar No. 484

108TH CONGRESS 

2D SESSION S. 2192

A BILL

To amend title 35, United States Code, to promote 

cooperative research involving universities, the public sector, and private enterprises. 

APRIL 29, 2004

Reported without amendment