II 

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, and Mr. FEINGOLD) introduced the following bill; which was read twice and referred to the Committee on the Judiciary 

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’’. 

6 SEC. 2. COLLABORATIVE EFFORTS ON CLAIMED INVEN7 TIONS. 

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

9 amended to read as follows: 
2

•S 2192 IS 

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

2 which qualifies as prior art only under one or more of sub3 sections (e), (f), and (g) of section 102 of this title, shall 

4 not preclude patentability under this section where the 

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

6 the claimed invention was made, owned by the same per7 son or subject to an obligation of assignment to the same 

8 person. 

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

10 developed by another person and a claimed invention shall 

11 be deemed to have been owned by the same person or sub12 ject to an obligation of assignment to the same person if— 

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

14 behalf of parties to a joint research agreement that 

15 was in effect on or before the date the claimed in16 vention was made; 

17 ‘‘(B) the claimed invention was made as a re18 sult of activities undertaken within the scope of the 

19 joint research agreement; and 

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

21 invention discloses or is amended to disclose the 

22 names of the parties to the joint research agree23 ment. 

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

25 research agreement’ means a written contract, grant, or 
3

•S 2192 IS 

1 cooperative agreement entered into by two or more per2 sons or entities for the performance of experimental, devel3 opmental, or research work in the field of the claimed in4 vention.’’. 

5 SEC. 3. EFFECTIVE DATE. 

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

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

8 of the enactment of this Act. 

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

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

11 United States Patent and Trademark Office rendered be12 fore the date of the enactment of this Act, and shall not 

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

14 the United States Patent and Trademark Office or a court 

15 on the date of the enactment of this Act to have that par16 ty’s rights determined on the basis of the provisions of 

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

18 the date of the enactment of this Act.

Æ