[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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