-CITE-

35 USC CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH

FEDERAL ASSISTANCE 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-MISC1-

Sec.

200. Policy and objective.

201. Definitions.

202. Disposition of rights.

203. March-in rights.

204. Preference for United States industry.

205. Confidentiality.

206. Uniform clauses and regulations.

207. Domestic and foreign protection of federally owned

inventions.

208. Regulations governing Federal licensing.

209. Licensing federally owned inventions.

210. Precedence of chapter.

211. Relationship to antitrust laws.

212. Disposition of rights in educational awards.

AMENDMENTS

2000 - Pub. L. 106-404, Sec. 4(b), Nov. 1, 2000, 114 Stat. 1744,

substituted "Licensing federally owned inventions" for

"Restrictions on licensing of federally owned inventions" in item

209.

1984 - Pub. L. 98-620, title V, Sec. 501(15), Nov. 8, 1984, 98

Stat. 3368, added item 212.

1982 - Pub. L. 97-256, title I, Sec. 101(5), Sept. 8, 1982, 96

Stat. 816, redesignated chapter 38, as added by Pub. L. 96-517,

Sec. 6(a), Dec. 12, 1980, 94 Stat. 3018, comprising sections 200 to

211, as chapter 18, and transferred chapter 18, as so redesignated,

to end of this part from end of part IV.

-SECREF-

CHAPTER REFERRED TO IN OTHER SECTIONS

This chapter is referred to in title 15 sections 278k, 3705,

5308; title 30 section 1226; title 42 section 15441; title 49

section 309.

-End-

-CITE-

35 USC Sec. 200 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 200. Policy and objective

-STATUTE-

It is the policy and objective of the Congress to use the patent

system to promote the utilization of inventions arising from

federally supported research or development; to encourage maximum

participation of small business firms in federally supported

research and development efforts; to promote collaboration between

commercial concerns and nonprofit organizations, including

universities; to ensure that inventions made by nonprofit

organizations and small business firms are used in a manner to

promote free competition and enterprise without unduly encumbering

future research and discovery; to promote the commercialization and

public availability of inventions made in the United States by

United States industry and labor; to ensure that the Government

obtains sufficient rights in federally supported inventions to meet

the needs of the Government and protect the public against nonuse

or unreasonable use of inventions; and to minimize the costs of

administering policies in this area.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3018;

amended Pub. L. 106-404, Sec. 5, Nov. 1, 2000, 114 Stat. 1745.)

-MISC1-

AMENDMENTS

2000 - Pub. L. 106-404 substituted "enterprise without unduly

encumbering future research and discovery;" for "enterprise;".

EFFECTIVE DATE

Chapter effective July 1, 1981, but implementing regulations

authorized to be issued earlier, see section 8(f) of Pub. L.

96-517, set out as an Effective Date of 1980 Amendment note under

section 41 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in title 10 section 2320; title 41

section 418a.

-End-

-CITE-

35 USC Sec. 201 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 201. Definitions

-STATUTE-

As used in this chapter -

(a) The term "Federal agency" means any executive agency as

defined in section 105 of title 5, and the military departments

as defined by section 102 of title 5.

(b) The term "funding agreement" means any contract, grant, or

cooperative agreement entered into between any Federal agency,

other than the Tennessee Valley Authority, and any contractor for

the performance of experimental, developmental, or research work

funded in whole or in part by the Federal Government. Such term

includes any assignment, substitution of parties, or subcontract

of any type entered into for the performance of experimental,

developmental, or research work under a funding agreement as

herein defined.

(c) The term "contractor" means any person, small business

firm, or nonprofit organization that is a party to a funding

agreement.

(d) The term "invention" means any invention or discovery which

is or may be patentable or otherwise protectable under this title

or any novel variety of plant which is or may be protectable

under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).

(e) The term "subject invention" means any invention of the

contractor conceived or first actually reduced to practice in the

performance of work under a funding agreement: Provided, That in

the case of a variety of plant, the date of determination (as

defined in section 41(d) (!1) of the Plant Variety Protection Act

(7 U.S.C. 2401(d))) must also occur during the period of contract

performance.

(f) The term "practical application" means to manufacture in

the case of a composition or product, to practice in the case of

a process or method, or to operate in the case of a machine or

system; and, in each case, under such conditions as to establish

that the invention is being utilized and that its benefits are to

the extent permitted by law or Government regulations available

to the public on reasonable terms.

(g) The term "made" when used in relation to any invention

means the conception or first actual reduction to practice of

such invention.

(h) The term "small business firm" means a small business

concern as defined at section 2 of Public Law 85-536 (15 U.S.C.

632) and implementing regulations of the Administrator of the

Small Business Administration.

(i) The term "nonprofit organization" means universities and

other institutions of higher education or an organization of the

type described in section 501(c)(3) of the Internal Revenue Code

of 1986 (26 U.S.C. 501(c)) and exempt from taxation under section

501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any

nonprofit scientific or educational organization qualified under

a State nonprofit organization statute.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3019;

amended Pub. L. 98-620, title V, Sec. 501(1), (2), Nov. 8, 1984, 98

Stat. 3364; Pub. L. 99-514, Sec. 2, Oct. 22, 1986, 100 Stat. 2095;

Pub. L. 107-273, div. C, title III, Sec. 13206(a)(12), Nov. 2,

2002, 116 Stat. 1904.)

-REFTEXT-

REFERENCES IN TEXT

The Plant Variety Protection Act, referred to in subsec. (d), is

Pub. L. 91-577, Dec. 24, 1970, 84 Stat. 1542, as amended, which is

classified principally to chapter 57 (Sec. 2321 et seq.) of Title

7, Agriculture. For complete classification of this Act to the

Code, see Short Title note set out under section 2321 of Title 7

and Tables.

Section 41 of the Plant Variety Protection Act (7 U.S.C.

2401(d)), referred to in subsec. (e), was subsequently amended, and

no longer defines the term "date of determination".

-MISC1-

AMENDMENTS

2002 - Subsec. (a). Pub. L. 107-273 struck out "United States

Code," after "section 105 of title 5," and ", United States Code"

after "section 102 of title 5".

1986 - Subsec. (i). Pub. L. 99-514 substituted "Internal Revenue

Code of 1986" for "Internal Revenue Code of 1954".

1984 - Subsec. (d). Pub. L. 98-620, Sec. 501(1), inserted "or any

novel variety of plant which is or may be protectable under the

Plant Variety Protection Act (7 U.S.C. 2321 et seq.)" after

"title".

Subsec. (e). Pub. L. 98-620, Sec. 501(2), inserted ": Provided,

That in the case of a variety of plant, the date of determination

(as defined in section 41(d) of the Plant Variety Protection Act (7

U.S.C. 2401(d))) must also occur during the period of contract

performance" after "agreement".

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in title 36 section 2113; title 49

section 309.

-FOOTNOTE-

(!1) See References in Text note below.

-End-

-CITE-

35 USC Sec. 202 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 202. Disposition of rights

-STATUTE-

(a) Each nonprofit organization or small business firm may,

within a reasonable time after disclosure as required by paragraph

(c)(1) of this section, elect to retain title to any subject

invention: Provided, however, That a funding agreement may provide

otherwise (i) when the contractor is not located in the United

States or does not have a place of business located in the United

States or is subject to the control of a foreign government, (ii)

in exceptional circumstances when it is determined by the agency

that restriction or elimination of the right to retain title to any

subject invention will better promote the policy and objectives of

this chapter (iii) when it is determined by a Government authority

which is authorized by statute or Executive order to conduct

foreign intelligence or counter-intelligence activities that the

restriction or elimination of the right to retain title to any

subject invention is necessary to protect the security of such

activities or, (iv) when the funding agreement includes the

operation of a Government-owned, contractor-operated facility of

the Department of Energy primarily dedicated to that Department's

naval nuclear propulsion or weapons related programs and all

funding agreement limitations under this subparagraph on the

contractor's right to elect title to a subject invention are

limited to inventions occurring under the above two programs of the

Department of Energy. The rights of the nonprofit organization or

small business firm shall be subject to the provisions of paragraph

(c) of this section and the other provisions of this chapter.

(b)(1) The rights of the Government under subsection (a) shall

not be exercised by a Federal agency unless it first determines

that at least one of the conditions identified in clauses (i)

through (iv) of subsection (a) exists. Except in the case of

subsection (a)(iii), the agency shall file with the Secretary of

Commerce, within thirty days after the award of the applicable

funding agreement, a copy of such determination. In the case of a

determination under subsection (a)(ii), the statement shall include

an analysis justifying the determination. In the case of

determinations applicable to funding agreements with small business

firms, copies shall also be sent to the Chief Counsel for Advocacy

of the Small Business Administration. If the Secretary of Commerce

believes that any individual determination or pattern of

determinations is contrary to the policies and objectives of this

chapter or otherwise not in conformance with this chapter, the

Secretary shall so advise the head of the agency concerned and the

Administrator of the Office of Federal Procurement Policy, and

recommend corrective actions.

(2) Whenever the Administrator of the Office of Federal

Procurement Policy has determined that one or more Federal agencies

are utilizing the authority of clause (i) or (ii) of subsection (a)

of this section in a manner that is contrary to the policies and

objectives of this chapter, the Administrator is authorized to

issue regulations describing classes of situations in which

agencies may not exercise the authorities of those clauses.

(3) At least once every 5 years, the Comptroller General shall

transmit a report to the Committees on the Judiciary of the Senate

and House of Representatives on the manner in which this chapter is

being implemented by the agencies and on such other aspects of

Government patent policies and practices with respect to federally

funded inventions as the Comptroller General believes appropriate.

(4) If the contractor believes that a determination is contrary

to the policies and objectives of this chapter or constitutes an

abuse of discretion by the agency, the determination shall be

subject to the (!1) section 203(b).

(c) Each funding agreement with a small business firm or

nonprofit organization shall contain appropriate provisions to

effectuate the following:

(1) That the contractor disclose each subject invention to the

Federal agency within a reasonable time after it becomes known to

contractor personnel responsible for the administration of patent

matters, and that the Federal Government may receive title to any

subject invention not disclosed to it within such time.

(2) That the contractor make a written election within two

years after disclosure to the Federal agency (or such additional

time as may be approved by the Federal agency) whether the

contractor will retain title to a subject invention: Provided,

That in any case where publication, on sale, or public use, has

initiated the one year statutory period in which valid patent

protection can still be obtained in the United States, the period

for election may be shortened by the Federal agency to a date

that is not more than sixty days prior to the end of the

statutory period: And provided further, That the Federal

Government may receive title to any subject invention in which

the contractor does not elect to retain rights or fails to elect

rights within such times.

(3) That a contractor electing rights in a subject invention

agrees to file a patent application prior to any statutory bar

date that may occur under this title due to publication, on sale,

or public use, and shall thereafter file corresponding patent

applications in other countries in which it wishes to retain

title within reasonable times, and that the Federal Government

may receive title to any subject inventions in the United States

or other countries in which the contractor has not filed patent

applications on the subject invention within such times.

(4) With respect to any invention in which the contractor

elects rights, the Federal agency shall have a nonexclusive,

nontransferrable, irrevocable, paid-up license to practice or

have practiced for or on behalf of the United States any subject

invention throughout the world: Provided, That the funding

agreement may provide for such additional rights, including the

right to assign or have assigned foreign patent rights in the

subject invention, as are determined by the agency as necessary

for meeting the obligations of the United States under any

treaty, international agreement, arrangement of cooperation,

memorandum of understanding, or similar arrangement, including

military agreement relating to weapons development and

production.

(5) The right of the Federal agency to require periodic

reporting on the utilization or efforts at obtaining utilization

that are being made by the contractor or his licensees or

assignees: Provided, That any such information as well as any

information on utilization or efforts at obtaining utilization

obtained as part of a proceeding under section 203 of this

chapter shall be treated by the Federal agency as commercial and

financial information obtained from a person and privileged and

confidential and not subject to disclosure under section 552 of

title 5.

(6) An obligation on the part of the contractor, in the event a

United States patent application is filed by or on its behalf or

by any assignee of the contractor, to include within the

specification of such application and any patent issuing thereon,

a statement specifying that the invention was made with

Government support and that the Government has certain rights in

the invention.

(7) In the case of a nonprofit organization, (A) a prohibition

upon the assignment of rights to a subject invention in the

United States without the approval of the Federal agency, except

where such assignment is made to an organization which has as one

of its primary functions the management of inventions (provided

that such assignee shall be subject to the same provisions as the

contractor); (B) a requirement that the contractor share

royalties with the inventor; (C) except with respect to a funding

agreement for the operation of a

Government-owned-contractor-operated facility, a requirement that

the balance of any royalties or income earned by the contractor

with respect to subject inventions, after payment of expenses

(including payments to inventors) incidental to the

administration of subject inventions, be utilized for the support

of scientific research or education; (D) a requirement that,

except where it proves infeasible after a reasonable inquiry, in

the licensing of subject inventions shall be given to small

business firms; and (E) with respect to a funding agreement for

the operation of a Government-owned-contractor-operated facility,

requirements (i) that after payment of patenting costs, licensing

costs, payments to inventors, and other expenses incidental to

the administration of subject inventions, 100 percent of the

balance of any royalties or income earned and retained by the

contractor during any fiscal year up to an amount equal to 5

percent of the annual budget of the facility, shall be used by

the contractor for scientific research, development, and

education consistent with the research and development mission

and objectives of the facility, including activities that

increase the licensing potential of other inventions of the

facility; provided that if said balance exceeds 5 percent of the

annual budget of the facility, that 75 percent of such excess

shall be paid to the Treasury of the United States and the

remaining 25 percent shall be used for the same purposes as

described above in this clause (D); and (ii) that, to the extent

it provides the most effective technology transfer, the licensing

of subject inventions shall be administered by contractor

employees on location at the facility.

(8) The requirements of sections 203 and 204 of this chapter.

(d) If a contractor does not elect to retain title to a subject

invention in cases subject to this section, the Federal agency may

consider and after consultation with the contractor grant requests

for retention of rights by the inventor subject to the provisions

of this Act and regulations promulgated hereunder.

(e) In any case when a Federal employee is a coinventor of any

invention made with a nonprofit organization, a small business

firm, or a non-Federal inventor, the Federal agency employing such

coinventor may, for the purpose of consolidating rights in the

invention and if it finds that it would expedite the development of

the invention -

(1) license or assign whatever rights it may acquire in the

subject invention to the nonprofit organization, small business

firm, or non-Federal inventor in accordance with the provisions

of this chapter; or

(2) acquire any rights in the subject invention from the

nonprofit organization, small business firm, or non-Federal

inventor, but only to the extent the party from whom the rights

are acquired voluntarily enters into the transaction and no other

transaction under this chapter is conditioned on such

acquisition.

(f)(1) No funding agreement with a small business firm or

nonprofit organization shall contain a provision allowing a Federal

agency to require the licensing to third parties of inventions

owned by the contractor that are not subject inventions unless such

provision has been approved by the head of the agency and a written

justification has been signed by the head of the agency. Any such

provision shall clearly state whether the licensing may be required

in connection with the practice of a subject invention, a

specifically identified work object, or both. The head of the

agency may not delegate the authority to approve provisions or sign

justifications required by this paragraph.

(2) A Federal agency shall not require the licensing of third

parties under any such provision unless the head of the agency

determines that the use of the invention by others is necessary for

the practice of a subject invention or for the use of a work object

of the funding agreement and that such action is necessary to

achieve the practical application of the subject invention or work

object. Any such determination shall be on the record after an

opportunity for an agency hearing. Any action commenced for

judicial review of such determination shall be brought within sixty

days after notification of such determination.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3020;

amended Pub. L. 98-620, title V, Sec. 501(3)-(8), Nov. 8, 1984, 98

Stat. 3364-3366; Pub. L. 102-204, Sec. 10, Dec. 10, 1991, 105 Stat.

1641; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4732(a)(12)], Nov. 29, 1999, 113 Stat. 1536, 1501A-583; Pub. L.

106-404, Sec. 6(1), Nov. 1, 2000, 114 Stat. 1745; Pub. L. 107-273,

div. C, title III, Sec. 13206(a)(13), Nov. 2, 2002, 116 Stat.

1905.)

-REFTEXT-

REFERENCES IN TEXT

This Act, referred to in subsec. (d), probably means Pub. L.

96-517, Dec. 12, 1980, 94 Stat. 3015, which enacted sections 200 to

211 and 301 to 307 of this title, amended sections 41, 42, and 154

of this title, section 1113 of Title 15, Commerce and Trade,

sections 101 and 117 of Title 17, Copyrights, and sections 2186,

2457, and 5908 of Title 42, The Public Health and Welfare, and

enacted provisions set out as notes under sections 13 and 41 of

this title. For complete classification of this Act to the Code,

see Tables.

-MISC1-

AMENDMENTS

2002 - Subsec. (b)(4). Pub. L. 107-273, Sec. 13206(a)(13)(A),

substituted "section 203(b)" for "last paragraph of section

203(2)".

Subsec. (c)(4). Pub. L. 107-273, Sec. 13206(a)(13)(B)(i),

substituted "additional rights," for "additional rights;".

Subsec. (c)(5). Pub. L. 107-273, Sec. 13206(a)(13)(B)(ii), struck

out "of the United States Code" after "section 552 of title 5".

2000 - Subsec. (e). Pub. L. 106-404 amended subsec. (e)

generally. Prior to amendment, subsec. (e) read as follows: "In any

case when a Federal employee is a coinventor of any invention made

under a funding agreement with a nonprofit organization or small

business firm, the Federal agency employing such coinventor is

authorized to transfer or assign whatever rights it may acquire in

the subject invention from its employee to the contractor subject

to the conditions set forth in this chapter."

1999 - Subsec. (a). Pub. L. 106-113, in first sentence,

substituted "(iv)" for "iv)" and struck out a second period at end.

1991 - Subsec. (b)(3). Pub. L. 102-204 substituted "every 5

years" for "each year".

1984 - Subsec. (a). Pub. L. 98-620, Sec. 501(3), substituted

"when the contractor is not located in the United States or does

not have a place of business located in the United States or is

subject to the control of a foreign government" for "when the

funding agreement is for the operation of a Government-owned

research or production facility", struck out "or" before "(ii)",

which was executed by striking out "or" before "(iii)" as the

probable intent of Congress, and added cl. (iv).

Subsec. (b)(1). Pub. L. 98-620, Sec. 501(4), gave to the

Department of Commerce oversight of agency use of the exceptions to

small business or nonprofit organization invention ownership.

Subsec. (b)(2). Pub. L. 98-620, Sec. 501(4), substituted

provisions authorizing the Administrator of the Office of Federal

Procurement Policy to issue regulations describing situations in

which agencies may not exercise the authorities of clauses (i) or

(ii) of subsec. (a), whenever the Administrator has determined that

one or more agencies are utilizing such authority in violation of

this chapter for provisions which gave to the Comptroller General

oversight of agency actions under this chapter.

Subsec. (b)(4). Pub. L. 98-620, Sec. 501(4A), added par. (4).

Subsec. (c)(1). Pub. L. 98-620, Sec. 501(5), substituted

provisions requiring disclosure of each invention within a

reasonable time after it becomes known to contractor personnel

responsible for the administration of patent matters for provision

requiring disclosure of each invention within a reasonable time

after it is made.

Subsec. (c)(2). Pub. L. 98-620, Sec. 501(5), substituted

provisions requiring the contractor to make a written election

within two years after disclosure to the Federal agency (or such

additional time as may be approved by the Federal agency) whether

the contractor will retain title to a subject invention for

provision requiring election to retain title within a reasonable

time after disclosure, and inserted provision authorizing the

Federal agency to shorten the period for election under certain

circumstances.

Subsec. (c)(3). Pub. L. 98-620, Sec. 501(5), substituted

provisions requiring a contractor electing rights in a subject

invention to file a patent application prior to any statutory bar

date that may occur under this title due to publication, on sale,

or public use, and thereafter to file corresponding patent

applications in other countries in which it wishes to retain title

within reasonable times for provisions requiring the contractor to

file patent applications within a reasonable time.

Subsec. (c)(4). Pub. L. 98-620, Sec. 501(5), substituted

provision that the funding agreement may provide for such

additional rights, including the right to assign or have assigned

foreign patent rights in the subject invention, as are determined

by the agency as necessary for meeting the obligations of the

United States under any treaty, international agreement,

arrangement of cooperation, memorandum of understanding, or similar

arrangement, including any military agreement relating to weapons

development and production for provision that the agency could, if

provided in the funding agreement, have additional rights to

sublicense any foreign government or international organization

pursuant to any existing or future treaty or agreement.

Subsec. (c)(5). Pub. L. 98-620, Sec. 501(6), substituted "as well

as any information on utilization or efforts at obtaining

utilization obtained as part of a proceeding under section 203 of

this chapter shall be treated" for "may be treated".

Subsec. (c)(7)(A). Pub. L. 98-620, Sec. 501(7), struck out

provision which made an exception for organizations which were not

themselves engaged in or did not hold a substantial interest in

other organizations engaged in the manufacture or sales of products

or the use of processes that might utilize the invention or be in

competition with embodiments of the invention.

Subsec. (c)(7)(B). Pub. L. 98-620, Sec. 501(8), redesignated cl.

(C) as (B). Former cl. (B), relating to a prohibition against the

granting of exclusive licenses under United States Patents or

Patent Applications in a subject invention by the contractor to

persons other than small business firms for periods in excess of

certain specified periods and relating to commercial sales, was

struck out.

Subsec. (c)(7)(C). Pub. L. 98-620, Sec. 501(8), added cl. (C).

Former cl. (C) redesignated (B).

Subsec. (c)(7)(D). Pub. L. 98-620, Sec. 501(8), added cl. (D).

Former cl. (D) redesignated (E).

Subsec. (c)(7)(E). Pub. L. 98-620, Sec. 501(8), redesignated

former cl. (D) as (E) and inserted provisions placing a limit on

the amount of royalties that the contract operators of

Government-owned laboratories are entitled to retain after paying

patent administrative expenses and a share of the royalties to

inventors, requiring payment of amounts in excess of such limits to

the United States Treasury, and requiring that, to the extent it

provides the most effective technology transfer, the licensing of

subject inventions shall be administered by contractor employees on

location at the facility.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,

1999, see section 1000(a)(9) [title IV, Sec. 4731] of Pub. L.

106-113, set out as a note under section 1 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 203, 206, 210 of this

title; title 15 section 3710c; title 42 section 7261a.

-FOOTNOTE-

(!1) So in original. The word "the" probably should not appear.

-End-

-CITE-

35 USC Sec. 203 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 203. March-in rights

-STATUTE-

(a) With respect to any subject invention in which a small

business firm or nonprofit organization has acquired title under

this chapter, the Federal agency under whose funding agreement the

subject invention was made shall have the right, in accordance with

such procedures as are provided in regulations promulgated

hereunder to require the contractor, an assignee or exclusive

licensee of a subject invention to grant a nonexclusive, partially

exclusive, or exclusive license in any field of use to a

responsible applicant or applicants, upon terms that are reasonable

under the circumstances, and if the contractor, assignee, or

exclusive licensee refuses such request, to grant such a license

itself, if the Federal agency determines that such -

(1) action is necessary because the contractor or assignee has

not taken, or is not expected to take within a reasonable time,

effective steps to achieve practical application of the subject

invention in such field of use;

(2) action is necessary to alleviate health or safety needs

which are not reasonably satisfied by the contractor, assignee,

or their licensees;

(3) action is necessary to meet requirements for public use

specified by Federal regulations and such requirements are not

reasonably satisfied by the contractor, assignee, or licensees;

or

(4) action is necessary because the agreement required by

section 204 has not been obtained or waived or because a licensee

of the exclusive right to use or sell any subject invention in

the United States is in breach of its agreement obtained pursuant

to section 204.

(b) A determination pursuant to this section or section 202(b)(4)

shall not be subject to the Contract Disputes Act (41 U.S.C. Sec.

601 et seq.). An administrative appeals procedure shall be

established by regulations promulgated in accordance with section

206. Additionally, any contractor, inventor, assignee, or exclusive

licensee adversely affected by a determination under this section

may, at any time within sixty days after the determination is

issued, file a petition in the United States Court of Federal

Claims, which shall have jurisdiction to determine the appeal on

the record and to affirm, reverse, remand or modify, as

appropriate, the determination of the Federal agency. In cases

described in paragraphs (1) and (3) of subsection (a), the agency's

determination shall be held in abeyance pending the exhaustion of

appeals or petitions filed under the preceding sentence.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3022;

amended Pub. L. 98-620, title V, Sec. 501(9), Nov. 8, 1984, 98

Stat. 3367; Pub. L. 102-572, title IX, Sec. 902(b)(1), Oct. 29,

1992, 106 Stat. 4516; Pub. L. 107-273, div. C, title III, Sec.

13206(a)(14), Nov. 2, 2002, 116 Stat. 1905.)

-REFTEXT-

REFERENCES IN TEXT

The Contract Disputes Act of 1978, referred to in subsec. (b), is

Pub. L. 95-563, Nov. 1, 1978, 92 Stat. 2383, as amended, which is

classified principally to chapter 9 (Sec. 601 et seq.) of Title 41,

Public Contracts. For complete classification of this Act to the

Code see Short Title note set out under section 601 of Title 41 and

Tables.

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273 redesignated par. (1) as subsec. (a) and

former subpars. (a) to (d) as pars. (1) to (4), respectively,

redesignated former par. (2) as subsec. (b), struck out quotation

marks and comma before "as appropriate", and substituted

"paragraphs (1) and (3) of subsection (a)" for "paragraphs (a) and

(c)".

1992 - Par. (2). Pub. L. 102-572 substituted "United States Court

of Federal Claims" for "United States Claims Court".

1984 - Pub. L. 98-620 designated existing provisions as par. (1)

and added par. (2).

EFFECTIVE DATE OF 1992 AMENDMENT

Amendment by Pub. L. 102-572 effective Oct. 29, 1992, see section

911 of Pub. L. 102-572, set out as a note under section 171 of

Title 28, Judiciary and Judicial Procedure.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 202, 206, 210 of this

title; title 15 section 3710a.

-End-

-CITE-

35 USC Sec. 204 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 204. Preference for United States industry

-STATUTE-

Notwithstanding any other provision of this chapter, no small

business firm or nonprofit organization which receives title to any

subject invention and no assignee of any such small business firm

or nonprofit organization shall grant to any person the exclusive

right to use or sell any subject invention in the United States

unless such person agrees that any products embodying the subject

invention or produced through the use of the subject invention will

be manufactured substantially in the United States. However, in

individual cases, the requirement for such an agreement may be

waived by the Federal agency under whose funding agreement the

invention was made upon a showing by the small business firm,

nonprofit organization, or assignee that reasonable but

unsuccessful efforts have been made to grant licenses on similar

terms to potential licensees that would be likely to manufacture

substantially in the United States or that under the circumstances

domestic manufacture is not commercially feasible.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3023.)

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 202, 203, 206 of this

title.

-End-

-CITE-

35 USC Sec. 205 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 205. Confidentiality

-STATUTE-

Federal agencies are authorized to withhold from disclosure to

the public information disclosing any invention in which the

Federal Government owns or may own a right, title, or interest

(including a nonexclusive license) for a reasonable time in order

for a patent application to be filed. Furthermore, Federal agencies

shall not be required to release copies of any document which is

part of an application for patent filed with the United States

Patent and Trademark Office or with any foreign patent office.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3023.)

-End-

-CITE-

35 USC Sec. 206 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 206. Uniform clauses and regulations

-STATUTE-

The Secretary of Commerce may issue regulations which may be made

applicable to Federal agencies implementing the provisions of

sections 202 through 204 of this chapter and shall establish

standard funding agreement provisions required under this chapter.

The regulations and the standard funding agreement shall be subject

to public comment before their issuance.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3023;

amended Pub. L. 98-620, title V, Sec. 501(10), Nov. 8, 1984, 98

Stat. 3367.)

-MISC1-

AMENDMENTS

1984 - Pub. L. 98-620 amended section generally. Prior to

amendment, section read as follows: "The Office of Federal

Procurement Policy, after receiving recommendations of the Office

of Science and Technology Policy, may issue regulations which may

be made applicable to Federal agencies implementing the provisions

of sections 202 through 204 of this chapter and the Office of

Federal Procurement Policy shall establish standard funding

agreement provisions required under this chapter."

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 203 of this title.

-End-

-CITE-

35 USC Sec. 207 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 207. Domestic and foreign protection of federally owned

inventions

-STATUTE-

(a) Each Federal agency is authorized to -

(1) apply for, obtain, and maintain patents or other forms of

protection in the United States and in foreign countries on

inventions in which the Federal Government owns a right, title,

or interest;

(2) grant nonexclusive, exclusive, or partially exclusive

licenses under federally owned inventions, royalty-free or for

royalties or other consideration, and on such terms and

conditions, including the grant to the licensee of the right of

enforcement pursuant to the provisions of chapter 29 of this

title as determined appropriate in the public interest;

(3) undertake all other suitable and necessary steps to protect

and administer rights to federally owned inventions on behalf of

the Federal Government either directly or through contract,

including acquiring rights for and administering royalties to the

Federal Government in any invention, but only to the extent the

party from whom the rights are acquired voluntarily enters into

the transaction, to facilitate the licensing of a federally owned

invention; and

(4) transfer custody and administration, in whole or in part,

to another Federal agency, of the right, title, or interest in

any federally owned invention.

(b) For the purpose of assuring the effective management of

Government-owned inventions, the Secretary of Commerce is

authorized to -

(1) assist Federal agency efforts to promote the licensing and

utilization of Government-owned inventions;

(2) assist Federal agencies in seeking protection and

maintaining inventions in foreign countries, including the

payment of fees and costs connected therewith; and

(3) consult with and advise Federal agencies as to areas of

science and technology research and development with potential

for commercial utilization.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3023;

amended Pub. L. 98-620, title V, Sec. 501(11), Nov. 8, 1984, 98

Stat. 3367; Pub. L. 106-404, Sec. 6(2), Nov. 1, 2000, 114 Stat.

1745.)

-MISC1-

AMENDMENTS

2000 - Subsec. (a)(2). Pub. L. 106-404, Sec. 6(2)(A), substituted

"inventions" for "patent applications, patents, or other forms of

protection obtained".

Subsec. (a)(3). Pub. L. 106-404, Sec. 6(2)(B), inserted ",

including acquiring rights for and administering royalties to the

Federal Government in any invention, but only to the extent the

party from whom the rights are acquired voluntarily enters into the

transaction, to facilitate the licensing of a federally owned

invention" after "or through contract".

1984 - Pub. L. 98-620 designated existing provisions as subsec.

(a) and added subsec. (b).

-EXEC-

EX. ORD. NO. 9424. ESTABLISHMENT OF A REGISTER OF GOVERNMENT

INTERESTS IN PATENTS

Ex. Ord. No. 9424, Feb. 18, 1944, 9 F.R. 1959, provided:

1. The Secretary of Commerce shall cause to be established in the

United States Patent Office [now Patent and Trademark Office] a

separate register for the recording of all rights and interests of

the Government in or under patents and applications for patents.

2. The several departments and other executive agencies of the

Government, including Government-owned or Government-controlled

corporations, shall forward promptly to the Commissioner of Patents

[now Under Secretary of Commerce for Intellectual Property and

Director of the United States Patent and Trademark Office] for

recording in the separate register provided for in paragraph 1

hereof all licenses, assignments, or other interests of the

Government in or under patents or applications for patents, in

accordance with such rules and regulations as may be prescribed

pursuant to paragraph 4 hereof; but the lack of recordation in such

register of any right or interest of the Government in or under any

patent or application therefor shall not prejudice in any way the

assertion of such right or interest by the Government.

3. The register shall be open to inspection except as to such

entries or documents which, in the opinion of the department or

agency submitting them for recording, should be maintained in

secrecy: Provided, however, That the right of inspection may be

restricted to authorized representatives of the Government pending

the final report to the President by the National Patent Planning

Commission under Executive Order No. 8977 of December 12, 1941, and

action thereon by the President.

4. The Commissioner of Patents [now Under Secretary of Commerce

for Intellectual Property and Director of the United States Patent

and Trademark Office], with the approval of the Secretary of

Commerce, shall prescribe such rules and regulations as he may deem

necessary to effectuate the purposes of this order.

EX. ORD. NO. 9865. PATENT PROTECTION ABROAD OF INVENTIONS RESULTING

FROM RESEARCH FINANCED BY THE GOVERNMENT

Ex. Ord. No. 9865, June 14, 1947, 12 F.R. 3907, as amended by Ex.

Ord. No. 10096, Jan. 23, 1950, 15 F.R. 389, provided:

1. All Government departments and agencies shall, whenever

practicable, acquire the right to file foreign patent applications

on inventions resulting from research conducted or financed by the

Government.

2. All Government departments and agencies which have or may

hereafter acquire title to inventions or the right to file patent

applications abroad thereon, shall fully and continuously inform

the Chairman of Government Patents Board [now Secretary of

Commerce. See Ex. Ord. No. 10930 set out as a note below]

concerning such inventions, except as provided in section 6 hereof,

and shall make recommendations to the Chairman of Government

Patents Board as to which of such inventions should receive patent

protection by the United States abroad and the foreign

jurisdictions in which such patent protection should be sought. The

recommendations of such departments and agencies shall indicate the

immediate or future industrial, commercial or other value of the

invention concerned, including its value to public health.

3. The Chairman of Government Patents Board shall determine

whether, and in what foreign jurisdictions, the United States

should seek patents for such inventions, and, to the extent of

appropriations available therefor, shall procure patent protection

for such inventions, taking all action, consistent with existing

law, necessary to acquire and maintain patent rights abroad. Such

determinations of the said Department shall be made after full

consultation with United States industry and commerce, with the

Department of State, and with other Government agencies familiar

with the technical, scientific, industrial, commercial or other

economic or social factors affecting the invention involved, and

after consideration of the availability of valid patent protection

in the countries determined to be immediate or potential markets

for, or producers of, products, processes, or services covered by

or relating to the invention.

4. The Chairman of Government Patents Board shall administer

foreign patents acquired by the United States under the terms of

this order and shall issue licenses thereunder in accordance with

law under such rules and regulations as he shall prescribe.

Nationals of the United States shall be granted licenses on a

nonexclusive royalty free basis except in such cases as he shall

determine and proclaim it to be inconsistent with the public

interest to issue such licenses on a nonexclusive royalty free

basis.

5. The Department of State, in consultation with the Chairman of

Government Patents Board, shall negotiate arrangements among

governments under which each government and its nationals shall

have access to the foreign patents of the other participating

governments. Patents relating to matters of public health may be

licensed by the Chairman of Government Patents Board, with the

approval of the Secretary of State, to any country or its nationals

upon such terms and conditions as are in accordance with law and as

the Chairman of Government Patents Board determines to be

appropriate, regardless of whether such country is a party to the

arrangements provided for in this section.

6. There shall be exempted from the provisions of this order (a)

all inventions within the jurisdiction of the Atomic Energy

Commission except in such cases as the said Commission specifically

authorizes the inclusion of an invention under the terms of this

order; and (b) all other inventions officially classified as secret

or confidential for reasons of the national security. Nothing in

this order shall supersede the declassification policies and

procedures established by Executive Orders Nos. 9568 of June 8,

1945, 9604 of August 25, 1945, and 9809 of December 12, 1946.

[Atomic Energy Commission abolished and all functions transferred

to Administrator of Energy Research and Development Administration

(unless otherwise specifically provided) by section 5814 of Title

42, The Public Health and Welfare. Energy Research and Development

Administration terminated and functions vested by law in

Administrator thereof transferred to Secretary of Energy (unless

otherwise specifically provided) by sections 7151(a) and 7293 of

Title 42.]

EX. ORD. NO. 10096. UNIFORM GOVERNMENT PATENT POLICY FOR INVENTIONS

BY GOVERNMENT EMPLOYEES

Ex. Ord. No. 10096, Jan. 23, 1950, 15 F.R. 389, as amended by Ex.

Ord. No. 10695, Jan. 16, 1957, 22 F.R. 365; Ex. Ord. No. 10930,

Mar. 24, 1961, 26 F.R. 2583, provided:

NOW, THEREFORE, by virtue of the authority vested in me by the

Constitution and statutes, and as President of the United States

and Commander in Chief of the armed forces of the United States, in

the interest of the establishment and operation of a uniform patent

policy for the Government with respect to inventions made by

Government employees, it is hereby ordered as follows:

1. The following basic policy is established for all Government

agencies with respect to inventions hereafter made by any

Government employee:

(a) The Government shall obtain the entire right, title, and

interest in and to all inventions made by any Government employee

(1) during working hours, or (2) with a contribution by the

Government of facilities, equipment, materials, funds, or

information, or of time or services of other Government employees

on official duty, or (3) which bear a direct relation to or are

made in consequence of the official duties of the inventor.

(b) In any case where the contribution of the Government, as

measured by any one or more of the criteria set forth in paragraph

(a) last above, to the invention, is insufficient equitably to

justify a requirement of assignment to the Government of the entire

right, title and interest to such invention, or in any case where

the Government has insufficient interest in an invention to obtain

entire right, title and interest therein (although the Government

could obtain some under paragraph (a), above), the Government

agency concerned, subject to the approval of the Chairman of the

Government Patents Board [now Secretary of Commerce. See Ex. Ord.

No. 10930 set out as a note below] (provided for in paragraph 3 of

this order and hereinafter referred to as the Chairman), shall

leave title to such invention in the employee, subject, however, to

the reservation to the Government of a non-exclusive, irrevocable,

royalty-free license in the invention with power to grant licenses

for all governmental purposes, such reservation, in the terms

thereof, to appear, where practicable, in any patent, domestic or

foreign, which may issue on such invention.

(c) In applying the provisions of paragraphs (a) and (b), above,

to the facts and circumstances relating to the making of any

particular invention, it shall be presumed that an invention made

by an employee who is employed or assigned (i) to invent or improve

or perfect any art, machine, manufacture, or composition of matter,

(ii) to conduct or perform research, development work, or both,

(iii) to supervise, direct, coordinate, or review Government

financed or conducted research, development work, or both, or (iv)

to act in a liaison capacity among governmental or nongovernmental

agencies or individuals engaged in such work, or made by an

employee included within any other category of employees specified

by regulations issued pursuant to section 4(b) hereof, falls within

the provisions of paragraph (a), above, and it shall be presumed

that any invention made by any other employee falls within the

provisions of paragraph (b), above. Either presumption may be

rebutted by the facts or circumstances attendant upon the

conditions under which any particular invention is made and,

notwithstanding the foregoing, shall not preclude a determination

that the invention falls within the provisions of paragraph (d)

next below.

(d) In any case wherein the Government neither (1) pursuant to

the provisions of paragraph (a) above, obtains entire right, title

and interest in and to an invention nor (2) pursuant to the

provisions of paragraph (b) above, reserves a non-exclusive,

irrevocable, royalty-free license in the invention with power to

grant licenses for all governmental purposes, the Government shall

leave the entire right, title and interest in and to the invention

in the Government employee, subject to law.

(e) Actions taken, and rights acquired, under the foregoing

provisions of this section, shall be reported to the Chairman in

accordance with procedures established by him.

2. Subject to considerations of national security, or public

health, safety, or welfare, the following basic policy is

established for the collection, and dissemination to the public, of

information concerning inventions resulting from Government

research and development activities:

(a) When an invention is made under circumstances defined in

paragraph 1(a) of this order giving the United States the right to

title thereto, the Government agency concerned shall either prepare

and file an application for patent therefor in the United States

Patent Office [now Patent and Trademark Office] or make a full

disclosure of the invention promptly to the Chairman, who may, if

he determines the Government interest so requires, cause

application for patent to be filed or cause the invention to be

fully disclosed by publication thereof: Provided, however, That,

consistent with present practice of the Department of Agriculture,

no application for patent shall, without the approval of the

Secretary of Agriculture, be filed in respect of any variety of

plant invented by any employee of that Department.

(b) [Revoked. Ex. Ord. No. 10695, Jan. 16, 1957, 22 F.R. 365]

3. (a) [Revoked. Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583]

(b) The Government Patents Board shall advise and confer with the

Chairman concerning the operation of those aspects of the

Government's patent policy which are affected by the provisions of

this order or of Executive Order No. 9865 [set out above], and

suggest modifications or improvements where necessary.

(c) [Revoked. Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583]

(d) The Chairman shall establish such committees and other

working groups as may be required to advise or assist him in the

performance of any of his functions.

(e) The Chairman of the Government Patents Board and the Chairman

of the Interdepartmental Committee on Scientific Research and

Development (provided for by Executive Order No. 9912 of December

24, 1947), shall establish and maintain such mutual consultation as

will effect the proper coordination of affairs of common concern.

4. With a view to obtaining uniform application of the policies

set out in this order and uniform operations thereunder, the

Chairman is authorized and directed:

(a) To consult and advise with Government agencies concerning the

application and operation of the policies outlined herein;

(b) After consultation with the Government Patents Board, to

formulate and submit to the President for approval such proposed

rules and regulations as may be necessary or desirable to implement

and effectuate the aforesaid policies, together with the

recommendations of the Government Patents Board thereon;

(c) To submit annually a report to the President concerning the

operation of such policies, and from time to time such

recommendations for modification thereof as may be deemed

desirable;

(d) To determine with finality any controversies or disputes

between any Government agency and its employees, to the extent

submitted by any party to the dispute, concerning the ownership of

inventions made by such employees or rights therein; and

(e) To perform such other or further functions or duties as may

from time to time be prescribed by the President or by statute.

5. The functions and duties of the Secretary of Commerce and the

Department of Commerce under the provisions of Executive Order No.

9865 of June 14, 1947 [set out above] are hereby transferred to the

Chairman and the whole or any part of such functions and duties may

be delegated by him to any Government agency or officer: Provided,

That said Executive Order No. 9865 shall not be deemed to be

amended or affected by any provision of this Executive order other

than this paragraph 5.

6. Each Government agency shall take all steps appropriate to

effectuate this order, including the promulgation of necessary

regulations which shall not be inconsistent with this order or with

regulations issued pursuant to paragraph 4(b) hereof.

7. As used in this Executive order, the next stated terms, in

singular and plural, are defined as follows for the purposes

hereof:

(a) "Government agency" includes any executive department and any

independent commission, board, office, agency, authority, or other

establishment of the Executive Branch of the Government of the

United States (including any such independent regulatory commission

or board, any such wholly-owned corporation, and the Smithsonian

Institution), but excludes the Atomic Energy Commission.

(b) "Government employee" includes any officer or employee,

civilian or military, of any Government agency, except such

part-time consultants or employees as may be excluded by

regulations promulgated pursuant to paragraph 4(b) hereof.

(c) "Invention" includes any art, machine, manufacture, design,

or composition of matter, or any new and useful improvement

thereof, or any variety of plant, which is or may be patentable

under the patent laws of the United States.

EX. ORD. NO. 10695. TRANSFER OF RECORDS TO DEPARTMENT OF COMMERCE

Section 2 of Ex. Ord. 10695, Jan. 16, 1957, 22 F.R. 365, provided

that: "The Chairman of the Government Patents Board is hereby

authorized to transfer to the Department of Commerce any or all of

the records heretofore prepared by the Board pursuant to paragraph

2(b) of Executive Order No. 10096 [set out above]."

EX. ORD. NO. 10930. ABOLITION OF GOVERNMENT PATENTS BOARD

Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583, provided:

By virtue of the authority vested in me as President of the

United States, it is ordered as follows:

Section 1. The Government Patents Board, established by section

3(a) of Executive Order No. 10096 of January 23, 1950 [set out

above], and all positions established thereunder or pursuant

thereto are hereby abolished.

Sec. 2. All functions of the Government Patents Board and of the

Chairman thereof under the said Executive Order No. 10096, except

the functions of conference and consultation between the Board and

the Chairman, are hereby transferred to the Secretary of Commerce,

who may provide for the performance of such transferred functions

by such officer, employee, or agency of the Department of Commerce

as he may designate.

Sec. 3. The Secretary of Commerce shall make such provision as

may be necessary and consonant with law for the disposition or

transfer of property, personnel, records, and funds of the

Government Patents Board.

Sec. 4. Except to the extent that they may be inconsistent with

this order, all determinations, regulations, rules, rulings,

orders, and other actions made or issued by the Government Patents

Board, or by any Government agency with respect to any function

transferred by this order, shall continue in full force and effect

until amended, modified, or revoked by appropriate authority.

Sec. 5. Subsections (a) and (c) of section 3 of Executive Order

No. 10096 are hereby revoked, and all other provisions of that

order are hereby amended to the extent that they are inconsistent

with the provisions of this order.

John F. Kennedy.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 209 of this title; title

15 sections 3710, 3710a, 3710c.

-End-

-CITE-

35 USC Sec. 208 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 208. Regulations governing Federal licensing

-STATUTE-

The Secretary of Commerce is authorized to promulgate regulations

specifying the terms and conditions upon which any federally owned

invention, other than inventions owned by the Tennessee Valley

Authority, may be licensed on a nonexclusive, partially exclusive,

or exclusive basis.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3024;

amended Pub. L. 98-620, title V, Sec. 501(12), Nov. 8, 1984, 98

Stat. 3367.)

-MISC1-

AMENDMENTS

1984 - Pub. L. 98-620 substituted "Secretary of Commerce" for

"Administrator of General Services".

-End-

-CITE-

35 USC Sec. 209 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 209. Licensing federally owned inventions

-STATUTE-

(a) Authority. - A Federal agency may grant an exclusive or

partially exclusive license on a federally owned invention under

section 207(a)(2) only if -

(1) granting the license is a reasonable and necessary

incentive to -

(A) call forth the investment capital and expenditures needed

to bring the invention to practical application; or

(B) otherwise promote the invention's utilization by the

public;

(2) the Federal agency finds that the public will be served by

the granting of the license, as indicated by the applicant's

intentions, plans, and ability to bring the invention to

practical application or otherwise promote the invention's

utilization by the public, and that the proposed scope of

exclusivity is not greater than reasonably necessary to provide

the incentive for bringing the invention to practical

application, as proposed by the applicant, or otherwise to

promote the invention's utilization by the public;

(3) the applicant makes a commitment to achieve practical

application of the invention within a reasonable time, which time

may be extended by the agency upon the applicant's request and

the applicant's demonstration that the refusal of such extension

would be unreasonable;

(4) granting the license will not tend to substantially lessen

competition or create or maintain a violation of the Federal

antitrust laws; and

(5) in the case of an invention covered by a foreign patent

application or patent, the interests of the Federal Government or

United States industry in foreign commerce will be enhanced.

(b) Manufacture in United States. - A Federal agency shall

normally grant a license under section 207(a)(2) to use or sell any

federally owned invention in the United States only to a licensee

who agrees that any products embodying the invention or produced

through the use of the invention will be manufactured substantially

in the United States.

(c) Small Business. - First preference for the granting of any

exclusive or partially exclusive licenses under section 207(a)(2)

shall be given to small business firms having equal or greater

likelihood as other applicants to bring the invention to practical

application within a reasonable time.

(d) Terms and Conditions. - Any licenses granted under section

207(a)(2) shall contain such terms and conditions as the granting

agency considers appropriate, and shall include provisions -

(1) retaining a nontransferrable, irrevocable, paid-up license

for any Federal agency to practice the invention or have the

invention practiced throughout the world by or on behalf of the

Government of the United States;

(2) requiring periodic reporting on utilization of the

invention, and utilization efforts, by the licensee, but only to

the extent necessary to enable the Federal agency to determine

whether the terms of the license are being complied with, except

that any such report shall be treated by the Federal agency as

commercial and financial information obtained from a person and

privileged and confidential and not subject to disclosure under

section 552 of title 5; and

(3) empowering the Federal agency to terminate the license in

whole or in part if the agency determines that -

(A) the licensee is not executing its commitment to achieve

practical application of the invention, including commitments

contained in any plan submitted in support of its request for a

license, and the licensee cannot otherwise demonstrate to the

satisfaction of the Federal agency that it has taken, or can be

expected to take within a reasonable time, effective steps to

achieve practical application of the invention;

(B) the licensee is in breach of an agreement described in

subsection (b);

(C) termination is necessary to meet requirements for public

use specified by Federal regulations issued after the date of

the license, and such requirements are not reasonably satisfied

by the licensee; or

(D) the licensee has been found by a court of competent

jurisdiction to have violated the Federal antitrust laws in

connection with its performance under the license agreement.

(e) Public Notice. - No exclusive or partially exclusive license

may be granted under section 207(a)(2) unless public notice of the

intention to grant an exclusive or partially exclusive license on a

federally owned invention has been provided in an appropriate

manner at least 15 days before the license is granted, and the

Federal agency has considered all comments received before the end

of the comment period in response to that public notice. This

subsection shall not apply to the licensing of inventions made

under a cooperative research and development agreement entered into

under section 12 of the Stevenson-Wydler Technology Innovation Act

of 1980 (15 U.S.C. 3710a).

(f) Plan. - No Federal agency shall grant any license under a

patent or patent application on a federally owned invention unless

the person requesting the license has supplied the agency with a

plan for development or marketing of the invention, except that any

such plan shall be treated by the Federal agency as commercial and

financial information obtained from a person and privileged and

confidential and not subject to disclosure under section 552 of

title 5.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3024;

amended Pub. L. 106-404, Sec. 4(a), Nov. 1, 2000, 114 Stat. 1743;

Pub. L. 107-273, div. C, title III, Sec. 13206(a)(15), Nov. 2,

2002, 116 Stat. 1905.)

-REFTEXT-

REFERENCES IN TEXT

The Federal antitrust laws, referred to in subsecs. (a)(4) and

(d)(3)(D), are classified generally to chapter 1 (Sec. 1 et seq.)

of Title 15, Commerce and Trade.

-MISC1-

AMENDMENTS

2002 - Subsecs. (d)(2), (f). Pub. L. 107-273 struck out "of the

United States Code" after "title 5".

2000 - Pub. L. 106-404 amended section catchline and text

generally, restructuring and revising provisions setting forth

criteria, terms, and conditions relating to granting of licenses on

federally owned inventions.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in title 15 sections 3710, 3710a.

-End-

-CITE-

35 USC Sec. 210 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 210. Precedence of chapter

-STATUTE-

(a) This chapter shall take precedence over any other Act which

would require a disposition of rights in subject inventions of

small business firms or nonprofit organizations contractors in a

manner that is inconsistent with this chapter, including but not

necessarily limited to the following:

(1) section 10(a) of the Act of June 29, 1935, as added by

title I of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 Stat.

1085);

(2) section 205(a) of the Act of August 14, 1946 (7 U.S.C.

1624(a); 60 Stat. 1090);

(3) section 501(c) of the Federal Mine Safety and Health Act of

1977 (30 U.S.C. 951(c); 83 Stat. 742);

(4) section 30168(e) of title 49;

(5) section 12 of the National Science Foundation Act of 1950

(42 U.S.C. 1871(a); (!1) 82 Stat. 360);

(6) section 152 of the Atomic Energy Act of 1954 (42 U.S.C.

2182; 68 Stat. 943);

(7) section 305 of the National Aeronautics and Space Act of

1958 (42 U.S.C. 2457);

(8) section 6 of the Coal Research Development Act of 1960 (30

U.S.C. 666; 74 Stat. 337);

(9) section 4 of the Helium Act Amendments of 1960 (50 U.S.C.

167b; 74 Stat. 920);

(10) section 32 of the Arms Control and Disarmament Act of 1961

(22 U.S.C. 2572; 75 Stat. 634);

(11) section 9 of the Federal Nonnuclear Energy Research and

Development Act of 1974 (42 U.S.C. 5908; 88 Stat. 1878);

(12) section 5(d) of the Consumer Product Safety Act (15 U.S.C.

2054(d); 86 Stat. 1211);

(13) section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58

Stat. 191); (!1)

(14) section 8001(c)(3) of the Solid Waste Disposal Act (42

U.S.C. 6981(c); 90 Stat. 2829);

(15) section 219 of the Foreign Assistance Act of 1961 (22

U.S.C. 2179; 83 Stat. 806);

(16) section 427(b) of the Federal Mine Health and Safety Act

of 1977 (30 U.S.C. 937(b); 86 Stat. 155);

(17) section 306(d) of the Surface Mining and Reclamation Act

of 1977 (30 U.S.C. 1226(d); 91 Stat. 455); (!1)

(18) section 21(d) of the Federal Fire Prevention and Control

Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548);

(19) section 6(b) of the Solar Photovoltaic Energy Research

Development and Demonstration Act of 1978 (42 U.S.C. 5585(b); 92

Stat. 2516);

(20) section 12 of the Native Latex Commercialization and

Economic Development Act of 1978 (7 U.S.C. 178j; 92 Stat. 2533);

and

(21) section 408 of the Water Resources and Development Act of

1978 (42 U.S.C. 7879; 92 Stat. 1360).

The Act creating this chapter shall be construed to take precedence

over any future Act unless that Act specifically cites this Act and

provides that it shall take precedence over this Act.

(b) Nothing in this chapter is intended to alter the effect of

the laws cited in paragraph (a) of this section or any other laws

with respect to the disposition of rights in inventions made in the

performance of funding agreements with persons other than nonprofit

organizations or small business firms.

(c) Nothing in this chapter is intended to limit the authority of

agencies to agree to the disposition of rights in inventions made

in the performance of work under funding agreements with persons

other than nonprofit organizations or small business firms in

accordance with the Statement of Government Patent Policy issued on

February 18, 1983, agency regulations, or other applicable

regulations or to otherwise limit the authority of agencies to

allow such persons to retain ownership of inventions except that

all funding agreements, including those with other than small

business firms and nonprofit organizations, shall include the

requirements established in section 202(c)(4) and section 203 of

this title. Any disposition of rights in inventions made in

accordance with the Statement or implementing regulations,

including any disposition occurring before enactment of this

section, are hereby authorized.

(d) Nothing in this chapter shall be construed to require the

disclosure of intelligence sources or methods or to otherwise

affect the authority granted to the Director of Central

Intelligence by statute or Executive order for the protection of

intelligence sources or methods.

(e) The provisions of the Stevenson-Wydler Technology Innovation

Act of 1980 shall take precedence over the provisions of this

chapter to the extent that they permit or require a disposition of

rights in subject inventions which is inconsistent with this

chapter.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3026;

amended Pub. L. 98-620, title V, Sec. 501(13), Nov. 8, 1984, 98

Stat. 3367; Pub. L. 99-502, Sec. 9(c), Oct. 20, 1986, 100 Stat.

1796; Pub. L. 103-272, Sec. 5(j), July 5, 1994, 108 Stat. 1375;

Pub. L. 104-113, Sec. 7, Mar. 7, 1996, 110 Stat. 779; Pub. L.

105-393, title II, Sec. 220(c)(2), Nov. 13, 1998, 112 Stat. 3625;

Pub. L. 107-273, div. C, title III, Sec. 13206(a)(16), Nov. 2,

2002, 116 Stat. 1905.)

-REFTEXT-

REFERENCES IN TEXT

The Act and this Act, referred to in subsec. (a), is Pub. L.

96-517, Dec. 12, 1980, 94 Stat. 3015, which enacted sections 200 to

211 and 301 to 307 of this title, amended sections 41, 42, and 154

of this title, section 1113 of Title 15, Commerce and Trade,

sections 101 and 117 of Title 17, Copyrights, and sections 2186,

2457, and 5908 of Title 42, The Public Health and Welfare, and

enacted provisions set out as notes under sections 13 and 41 of

this title. For complete classification of this Act to the Code,

see Tables.

Section 12 of the National Science Foundation Act of 1950 (42

U.S.C. 1871(a); 82 Stat. 360), referred to in subsec. (a)(5), was

amended by Pub. L. 99-159, title I, Sec. 109(c), Nov. 22, 1985, 99

Stat. 889, by striking out subsec. (b) and designating subsec. (a)

as the entire section.

Section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58 Stat.

191), referred to in subsec. (a)(13), was omitted from the Code.

Section 306(d) of the Surface Mining and Reclamation Act,

referred to in subsec. (a)(17), was classified to section 1226(d)

of Title 30, Mineral Lands and Mining, prior to enactment of Pub.

L. 98-409, which enacted a new section 1226 of Title 30. See

section 1226(c) of Title 30.

The Native Latex Commercialization and Economic Development Act

of 1978, referred to in subsec. (a)(20), is Pub. L. 95-592, Nov. 4,

1978, 92 Stat. 2529, as amended, which, as amended by Pub. L.

98-284, May 16, 1984, 98 Stat. 181, is known as the Critical

Agricultural Materials Act and is classified principally to

subchapter II (Sec. 178 et seq.) of chapter 8A of Title 7,

Agriculture. For complete classification of this Act to the Code,

see Short Title note set out under section 178 of Title 7 and

Tables.

Section 408 of the Water Resources and Development Act of 1978

(42 U.S.C. 7879; 92 Stat. 1360), referred to in subsec. (a)(21),

was repealed by Pub. L. 98-242, title I, Sec. 110(a), Mar. 22,

1984, 98 Stat. 101. See section 10308 of Title 42, The Public

Health and Welfare.

The Stevenson-Wydler Technology Innovation Act of 1980, referred

to in subsec. (e), is Pub. L. 96-480, Oct. 21, 1980, 94 Stat. 2311,

as amended, which is classified generally to chapter 63 (Sec. 3701

et seq.) of Title 15, Commerce and Trade. For complete

classification of this Act to the Code, see Short Title note set

out under section 3701 of Title 15 and Tables.

-MISC1-

AMENDMENTS

2002 - Subsec. (a)(11). Pub. L. 107-273, Sec. 13206(a)(16)(A)(i),

substituted "5908" for "5901".

Subsec. (a)(20). Pub. L. 107-273, Sec. 13206(a)(16)(A)(ii),

substituted "178j" for "178(j)".

Subsec. (c). Pub. L. 107-273, Sec. 13206(a)(16)(B), substituted

"section 202(c)(4)" for "paragraph 202(c)(4)" and struck out second

period after "title".

1998 - Subsec. (a)(11) to (22). Pub. L. 105-393 redesignated

pars. (12) to (22) as (11) to (21), respectively, and struck out

former par. (11) which read as follows: "subsection (e) of section

302 of the Appalachian Regional Development Act of 1965 (40 U.S.C.

App. 302(e); 79 Stat. 5);".

1996 - Subsec. (e). Pub. L. 104-113 struck out ", as amended by

the Federal Technology Transfer Act of 1986," after "1980".

1994 - Subsec. (a)(4). Pub. L. 103-272 substituted "section

30168(e) of title 49" for "section 106(c) of the National Traffic

and Motor Vehicle Safety Act of 1966 (15 U.S.C. 1395(c); 80 Stat.

721)".

1986 - Subsec. (e). Pub. L. 99-502 added subsec. (e).

1984 - Subsec. (c). Pub. L. 98-620 substituted "February 18,

1983" for "August 23, 1971 (36 Fed. Reg. 16887)" and inserted

provision that all funding agreements, including those with other

than small business firms and nonprofit organizations, shall

include the requirements established in paragraph 202(c)(4) and

section 203 of this title.

-FOOTNOTE-

(!1) See References in Text note below.

-End-

-CITE-

35 USC Sec. 211 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 211. Relationship to antitrust laws

-STATUTE-

Nothing in this chapter shall be deemed to convey to any person

immunity from civil or criminal liability, or to create any

defenses to actions, under any antitrust law.

-SOURCE-

(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3027.)

-REFTEXT-

REFERENCES IN TEXT

The antitrust laws, referred to in text, are classified generally

to chapter 1 (Sec. 1 et seq.) of Title 15, Commerce and Trade.

-End-

-CITE-

35 USC Sec. 212 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL

ASSISTANCE

-HEAD-

Sec. 212. Disposition of rights in educational awards

-STATUTE-

No scholarship, fellowship, training grant, or other funding

agreement made by a Federal agency primarily to an awardee for

educational purposes will contain any provision giving the Federal

agency any rights to inventions made by the awardee.

-SOURCE-

(Added Pub. L. 98-620, title V, Sec. 501(14), Nov. 8, 1984, 98

Stat. 3368.)

-End-

-CITE-

35 USC PART III - PATENTS AND PROTECTION OF PATENT RIGHTS 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

-HEAD-

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

-MISC1-

Chap. Sec.

25. Amendment and Correction of Patents 251

26. Ownership and Assignment 261

27. Government Interests in Patents 266

28. Infringement of Patents 271

29. Remedies for Infringement of Patent, and Other

Actions 281

30. Prior Art Citations to Office and Ex Parte

Reexamination of Patents 301

31. Optional Inter Partes Reexamination of Patents (!1) 311

AMENDMENTS

2002 - Pub. L. 107-273, div. C, title III, Sec. 13206(a)(17),

Nov. 2, 2002, 116 Stat. 1905, inserted a comma after "Patent" in

item for chapter 29.

1999 - Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A-570, as amended by

Pub. L. 107-273, div. C, title III, Sec. 13202(c)(2), Nov. 2, 2002,

116 Stat. 1902, substituted "Ex Parte Reexamination of Patents" for

"Reexamination of Patents" in item for chapter 30 and added item

for chapter 31.

1982 - Pub. L. 97-256, title I, Sec. 101(7), Sept. 8, 1982, 96

Stat. 816, added item for chapter 30.

-FOOTNOTE-

(!1) So in original. Does not conform to chapter heading.

-End-