The Cooperative Research and Technology Act of 2004 (“CREATE”) prevents the U.S. Patent Office from rejecting as manifest a claim based on information shared by search partners when a joint search agreement was in effect on or before the day of the invention. The CREATE Act defines a “joint research agreement” as “a written contract, grant or cooperation agreement” that applies “to the carrying out of experimental, development or research work in the field of the claimed invention” and requires that the claimed invention be made as a result of activities carried out under the joint research agreement. If there is a common agreement, a patent applicant may prevent confidential disclosures from being used as prior art by disclosing the names of the parties to the joint agreement in the patent application. As with the determination of common ownership, the applicant may provide evidence of the existence of the joint search agreement, but is not required to do so. In addition, the Office will not request confirmatory evidence in the absence of independent evidence that raises doubts as to the existence of the joint search agreement. However, a problematic situation arises when each of the research partners files appropriate patents for similar inventions and one patent is cited as state of the art against the other. Of course, the applicant can invoke the CREATE law with the rejected patent to disqualify the cited reference. In this case, however, the Patent Office may again reject the patent on the grounds that research partners are attempting to obtain two patents for the same invention.
In this situation, the research partner may, with the patent refused, overcome the second refusal by filing a “terminal revelation” limiting the duration of his patent to that of the cited patent of the other research partner and committing not to enforce the resulting patent separately from the cited patent. In a way, the duration and application of the two patents at issue must be linked. To avail themselves of a joint search agreement for the prior art disclosure exception, the applicant (or the applicant`s registered representative) must declare that the disclosure of the subject matter on which the rejection is based and the claimed invention was made by or on behalf of parties to a joint search agreement in accordance with AIA 35 U.S.C 102(c). The declaration must also affirm that the agreement was in force on or before the actual filing date of the claimed invention and that the claimed invention was made as a result of activities carried out under the joint search agreement. By referring to the provisions of pre-AIA 35 U.S.C 103(c), the plaintiff, his attorney, or representative may make a similar statement to disqualify the cited prior art with respect to the question of obviousness. If the names of the parties to the joint search agreement are not already included in the application, the application must be amended to include the names of the parties to the joint search agreement, in accordance with 37 CFR 1.71(g). As noted above, the exception granted to AIA 35 U.S.C 102(b)(2)(C) does not apply to a disclosure that is considered prior art under AIA 35 U.S.C. .