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CREATE Act issued, undergoing revisionsJanuary 31, 2005

The CREATE Act, 35 U.S.C. 103(c), which sets a new standard for obviousness, was signed into law Dec. 10, 2004. Under this Act, certain ‘secret’ prior art that is the work of researchers from different research organizations will be disqualified as prior art as long as certain conditions are met. Specifically, there must be a pre-existing agreement for the research collaboration and: the agreement covers the inventive activities; the patent application includes an express statement disclosing the names of the parties; the agreement is written; the filed of the claimed invention is within the scope of the agreement; and a terminal disclaimer is filed (if needed).Overall, the CREATE Act excludes secret prior art from the determination of patentability in an application when the art and claimed invention arise under an established joint research relationship between different entities.Additionally, the act is retroactive, meaning that it applies to reissuing patents or pending applications as of Dec. 10, 2004. However, on Jan. 11, 2005, the United States Patent and Trademark Office issued an interim rule for immediate implementation. The interim rule lays the roadmap for practice under the CREATE Act, including mechanisms for amending the specification of an application in accordance with the Act and filing a terminal disclaimer to overcome obviousness-type double-patenting that arises.Comments on the interim rule will be accepted through Feb. 10, 2005. No public hearing will be held. Send comments to: ab76comments@uspto.govTo view the official document, log on to

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