US Congress has passed an Act that should benefit parties in collaborative research agreements when patenting inventions that arise from joint research. The Cooperative Research and Technology Enhancement (CREATE) Act of 2004 redefines the statutory term 'owned by the same person' so that it includes parties working under joint R&D agreements, and also means that subject matter previously considered as prior art can be excluded when considering patent applications if it arose from a collaboration. The Act applies to any patent granted after the date of enactment (20 November 2004), provided that the research collaboration was in effect before the invention; the invention clearly results from research activities carried out as part of the collaboration; and that all parties to the agreement are named in the patent application. The Act also covers inventions detailed in pending patent applications if the inventions were made under the joint R&D agreement, as well as patents re-issued after the date of enactment. The Act has several immediate implications: researchers working in collaborative projects are advised to make amendments to their research agreements to ensure that they qualify for the benefits of the Act; pending patents can be amended to disclose the names of all parties in the collaboration; and broadening re-issues of patents might be granted if the issued patent claims were restricted by prior art that is now excluded.

Subject matter previously considered as prior art can be excluded when considering patent applications if it arose from a collaboration.