Kevin E. Flynn, a patent attorney in the Durham office of The Eclipse Group, encouraged attendees at last month’s annual meeting of the American Intellectual Property Law Association (“AIPLA”) in Washington, D.C., to carefully consider the impact of the recently implemented CREATE Act on collaborative development efforts between unaffiliated parties.

Flynn urged parties considering a joint research agreements (“JRA”) to expressly address the rights and obligations of each party to enforce patents and disclose confidential information to the United States Patent and Trademark Office as may be required to obtain patent protection. Absent a written agreement between the parties addressing such issues, signing a joint research agreement could lead to unintended and undesired results. The undesired results can include authorizing your research partner to disclose your confidential material to the public through patent filings or risking that you will obtain a patent that you cannot enforce without the cooperation of your research partner.

Flynn and Dr. Shannon Mrksich were invited to address intellectual property attorneys from around the world about the tradeoffs associated with seeking a safe harbor under the CREATE Act.

The Eclipse Group was founded in 2002 to bring together intellectual property attorneys with the ability to deliver timely, cost-effective, accurate, and understandable advice to clients.