Inventions under Joint Development Agreements and the New U.S. 'CREATE' Law

摘要

In the copper and other metallurgical arenas, joint technology development arrangements between separate entities such as corporations and universities present a variety of difficult patent issues such as inventorship and ownership. One issue, which can destroy patentability of joint inventions if not properly handled, is prior art manifested in separate inventions by the separate entities. The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amended U.S. patent law in response to the Federal Circuit Court's decision in OddzOn Product, Inc. v. Just Toys, Inc., which had held that certain safe-harbor provisions are not available to inventions made by collaborating researchers employed by different entities unless the invention is owned by the same person or subject to an obligation of assignment to the same person. The CREATE Act expands the safe harbor.