U.S.C. TITLE 35 - PATENTS
PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL
ASSISTANCE
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§ 202. Disposition of rights
- (c)
- (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.
- (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 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.
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§ 203. March-in rights
- (1. (FOOTNOTE 1) 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
- (FOOTNOTE 1) So in original. Probably should be ''(1)''.
- (a) 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;
- (b) action is necessary to alleviate health or safety needs which
are not reasonably satisfied by the contractor, assignee, or their
licensees;
- (c) 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
- (d) 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.
- (2) 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, '', (FOOTNOTE 2) as appropriate,
the determination of the Federal agency. In cases described in paragraphs
(a) and (c), the agency's determination shall be held in abeyance pending
the exhaustion of appeals or petitions filed under the preceding sentence.
(FOOTNOTE 2) So in original. Quotation marks and comma probably should not
appear.
(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)
§ 204. Preference for United States industry
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.
(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3023.)
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§ 207. Domestic and foreign protection of federally owned inventions
- (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 patent applications, patents, or other forms
of protection obtained, 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; 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.