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.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE. 
This Act may be cited as the ‘‘Cooperative Research 
and Technology Enhancement (CREATE) Act of 2004’’. 
SEC. 2. COLLABORATIVE EFFORTS ON CLAIMED INVEN-
TIONS. 
Section 103(c) of title 35, United States Code, is 
amended to read as follows: 
‘‘(c)(1) Subject matter developed by another person, 
which qualifies as prior art only under one or more of sub-
sections (e), (f), and (g) of section 102 of this title, shall 
not preclude patentability under this section where the sub-
ject matter and the claimed invention were, at the time the 
claimed invention was made, owned by the same person or 
subject to an obligation of assignment to the same person. 
‘‘(2) For purposes of this subsection, subject matter de-
veloped by another person and a claimed invention shall 
be deemed to have been owned by the same person or subject 
to an obligation of assignment to the same person if—
‘‘(A) the claimed invention was made by or on 
behalf of parties to a joint research agreement that 
was in effect on or before the date the claimed inven-
tion was made; 
‘‘(B) the claimed invention was made as a result 
of activities undertaken within the scope of the joint 
research agreement; and
‘‘(C) the application for patent for the claimed 
invention discloses or is amended to disclose the 
names of the parties to the joint research agreement. 
‘‘(3) For purposes of paragraph (2), the term ‘joint 
research agreement’ means a written contract, grant, or co-
operative agreement entered into by two or more persons 
or entities for the performance of experimental, develop-
mental, or research work in the field of the claimed inven-
tion.’’. 
SEC. 3. EFFECTIVE DATE. 
(a) IN GENERAL.—The amendments made by this Act 
shall apply to any patent granted on or after the date of 
the enactment of this Act. 
(b) SPECIAL RULE.—The amendments made by this 
Act shall not affect any final decision of a court or the 
United States Patent and Trademark Office rendered before 
the date of the enactment of this Act, and shall not affect 
the right of any party in any action pending before the 
United States Patent and Trademark Office or a court on 
the date of the enactment of this Act to have that party’s 
rights determined on the basis of the provisions of title 35, 
United States Code, in effect on the day before the date of 
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
involving universities, the public sector, and private en-
terprises.’’.
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 or-
dered to be printed