The US Congress has passed Bill S 2192 ENR, which creates a clearer standard on permitted disclosure in the course of joint development.
Senator Leahy, in promoting the bill in June, noted that the law will prevent further decisions such as OddzOn Products, Inc v Just Toys, Inc, 43 USPQ 2d 1641 (Fed Cir 1997). That is, it will promote the public policy goal of confidential disclosures in a joint development relationship without the fear of those disclosures being cited as prior art against a joint patent. The amendment creates the legislative concept of a “joint research agreement”, and provides that information created by parties to a joint research agreement will be considered information belonging to the same person, provided that, (i) the joint research agreement was in effect prior to the invention date, (ii) the invention was created pursuant to the joint research agreement, and (iii) the application discloses, or is amended to disclose, the parties to the joint research agreement.
For J. Krimm, “Bill Aims to Protect Joint Patents”, Washington Post, November 23, 2004, page E05, see:
For the text of the Cooperative Research and Technology Enhancement (CREATE) Act of 2004, 108th S 2192, as passed by the US Congress, visit:
http://thomas.loc.gov and search for Bill S 2192.
Summary by: Nicholas J. Whalen