[Congressional Bills 108th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2391 Reported in House (RH)]

                                                 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 Representatives 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 INVENTIONS.

    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 subsections (e), (f), 
and (g) of section 102 of this title, shall not preclude patentability 
under this section where the subject 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 developed 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 invention 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 cooperative agreement 
entered into by two or more persons or entities for the performance of 
experimental, developmental, or research work in the field of the 
claimed invention.''.

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 enterprises.''.




                                                 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 ordered to be printed