[Congressional Record Volume 150, Number 135 (Saturday, November 20, 2004)]
[House]
[Page H10219]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
COOPERATIVE RESEARCH AND TECHNOLOGY ENHANCEMENT (CREATE) ACT OF 2004
Mr. SENSENBRENNER. Mr. Speaker, I ask unanimous consent to take from
the Speaker's table the Senate bill (S. 2192) to amend title 35, United
States Code, to promote cooperative research involving universities,
the public sector, and private enterprises, and ask for its immediate
consideration in the House.
The Clerk read the title of the Senate bill.
The SPEAKER pro tempore. Is there objection to the request of the
gentleman from Wisconsin?
There was no objection.
The Clerk read the Senate bill, as follows:
S. 2192
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.
Mr. SENSENBRENNER. Mr. Speaker, S. 2192 will help to spur the
development of new technologies by making it easier for collaborative
inventors who represent more than one organization to obtain the
protection of the U.S. patent system for their inventions.
Members should note that the text of S. 2192 is identical to that of
H.R. 2391, which received approximately 2 years of process. The House
passed H.R. 2391 by voice vote on March 10 of this year.
The bill achieves this goal by limiting the circumstances in which
confidential information, which is voluntarily exchanged by individual
research team members, may be asserted to bar the patenting of the
team's new inventions.
Today, industries that rely on intellectual property, like
pharmaceuticals, biotechnology, and nano-technology serve as key
catalysts to the U.S. economy, employing tens of thousands of
Americans. More often than not, the innovations they develop are not
done solely by researchers ``in-house'' but rather, in concert with
other researchers who may be located at universities, non-profit
institutions, or other private enterprises.
Carl E. Gulbrandsen, the managing director of the Wisconsin Alumni
Research Foundation, provided an assessment of the value of university
research contributions when he testified before the Intellectual
Property Subcommittee last Congress that:
In 2000, non-profits and universities spent a record $28.1
billion on research and development much of which involved
collaborations among private, public, and non-profit
entities.
Sales of products developed from inventions transferred from these
research centers resulted in revenues that approached $42 billion that
year, a portion of which was then reinvested in additional research.
As significant as this research activity is, the tangible benefits of
its application are also worth noting. Innovations like magnetic
resonance imaging and the sequencing of the human genome through a
process known as automated polymerase chain reaction technology were
both made possible through collaborative research.
Mr. Speaker, in 1984, Congress acted to provide incentives for
innovation by encouraging researchers within organizations to share
information. That year, we amended the Patent Act to restrict the use
of background scientific or technical information shared among
researchers in an effort to deny a patent in instances where the
subject matter and the claimed invention were under common ownership or
control.
S. 2192 will provide a similar statutory ``safe harbor'' for
inventions that result from the collaborative activities of private,
public, and non-profit entities. In so doing, the bill responds to the
1997 OddzON Products, Inc. V. Just Toys, Inc. decision of the Federal
Circuit Court of Appeals by clarifying that prior inventions of team
members will not serve as an absolute bar to the patenting of the
team's new invention when the parties conduct themselves in accordance
with the terms of the bill.
In the future, research collaborations between academia and industry
will be even more critical to the efforts of U.S. industry to maintain
our technological preeminence. By enacting S. 2192, Congress will help
to foster improved communication among researchers, provide additional
certainty and structure for those who engage in collaborative research,
reduce patent litigation incentives, and facilitate innovation and
investment.
S. 2192 is the product of the collaborative efforts of a number of
individuals and leading professional patent and research organizations.
Among those who contributed substantially to the development of the
bill are the USPTO, the Wisconsin Alumni Research Foundation, the
American Council on Education, the American University Technology
Managers, the Biotechnology Industry Organization, and the American
Intellectual Property Law Association.
Mr. Speaker, S. 2192 will ensure that tomorrow's collaborative
researchers can enjoy the full measure of the benefits of the patent
law. I urge the Members to support the bill.
The Senate bill was ordered to be read a third time, was read the
third time, and passed, and a motion to reconsider was laid on the
table.
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