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U.S. Code as of:
01/19/04
Section 5908. Patents and inventions
(a) Vesting of title to invention and issuance of patents to United
States; prerequisites
Whenever any invention is made or conceived in the course of or
under any contract of the Secretary, other than nuclear energy
research, development, and demonstration pursuant to the Atomic
Energy Act of 1954 (42 U.S.C. 2011 et seq.) and the Secretary
determines that -
(1) the person who made the invention was employed or assigned
to perform research, development, or demonstration work and the
invention is related to the work he was employed or assigned to
perform, or that it was within the scope of his employment
duties, whether or not it was made during working hours, or with
a contribution by the Government of the use of Government
facilities, equipment, materials, allocated funds, information
proprietary to the Government, or services of Government
employees during working hours; or
(2) the person who made the invention was not employed or
assigned to perform research, development, or demonstration work,
but the invention is nevertheless related to the contract or to
the work or duties he was employed or assigned to perform, and
was made during working hours, or with a contribution from the
Government of the sort referred to in clause (1).)1(!
title to such invention shall vest in the United States, and if
patents on such invention are issued they shall be issued to the
United States, unless in particular circumstances the Secretary
waives all or any part of the rights of the United States to such
invention in conformity with the provisions of this section.
(b) Contract as requiring report to Secretary of invention, etc.,
made in course of contract
Each contract entered into by the Secretary with any person shall
contain effective provisions under which such person shall furnish
promptly to the Secretary a written report containing full and
complete technical information concerning any invention, discovery,
improvement, or innovation which may be made in the course of or
under such contract.
(c) Waiver by Secretary of rights of United States; regulations
prescribing procedures; record of waiver determinations;
objectives
Under such regulations in conformity with the provisions of this
section as the Secretary shall prescribe, the Secretary may waive
all or any part of the rights of the United States under this
section with respect to any invention or class of inventions made
or which may be made by any person or class of persons in the
course of or under any contract of the Secretary if he determines
that the interests of the United States and the general public will
be best served by such waiver. The Secretary shall maintain a
publicly available, periodically updated record of waiver
determinations. In making such determinations, the Secretary shall
have the following objectives:
(1) Making the benefits of the energy research, development,
and demonstration program widely available to the public in the
shortest practicable time.
(2) Promoting the commercial utilization of such inventions.
(3) Encouraging participation by private persons in the
Secretary's energy research, development, and demonstration
program.
(4) Fostering competition and preventing undue market
concentration or the creation or maintenance of other situations
inconsistent with the antitrust laws.
(d) Considerations applicable at time of contracting for waiver
determination by Secretary
In determining whether a waiver to the contractor at the time of
contracting will best serve the interests of the United States and
the general public, the Secretary shall specifically include as
considerations -
(1) the extent to which the participation of the contractor
will expedite the attainment of the purposes of the program;
(2) the extent to which a waiver of all or any part of such
rights in any or all fields of technology is needed to secure the
participation of the particular contractor;
(3) the extent to which the contractor's commercial position
may expedite utilization of the research, development, and
demonstration program results;
(4) the extent to which the Government has contributed to the
field of technology to be funded under the contract;
(5) the purpose and nature of the contract, including the
intended use of the results developed thereunder;
(6) the extent to which the contractor has made or will make
substantial investment of financial resources or technology
developed at the contractor's private expense which will directly
benefit the work to be performed under the contract;
(7) the extent to which the field of technology to be funded
under the contract has been developed at the contractor's private
expense;
(8) the extent to which the Government intends to further
develop to the point of commercial utilization the results of the
contract effort;
(9) the extent to which the contract objectives are concerned
with the public health, public safety, or public welfare;
(10) the likely effect of the waiver on competition and market
concentration; and
(11) in the case of a nonprofit educational institution, the
extent to which such institution has a technology transfer
capability and program, approved by the Secretary as being
consistent with the applicable policies of this section.
(e) Considerations applicable to identified invention for waiver
determination by Secretary
In determining whether a waiver to the contractor or inventor or
rights to an identified invention will best serve the interests of
the United States and the general public, the Secretary shall
specifically include as considerations paragraphs (4) through (11)
of subsection (d) of this section as applied to the invention and -
(1) the extent to which such waiver is a reasonable and
necessary incentive to call forth private risk capital for the
development and commercialization of the invention; and
(2) the extent to which the plans, intentions, and ability of
the contractor or inventor will obtain expeditious
commercialization of such invention.
(f) Rights subject to reservation where title to invention vested
in United States
Whenever title to an invention is vested in the United States,
there may be reserved to the contractor or inventor -
(1) a revocable or irrevocable nonexclusive, paid-up license
for the practice of the invention throughout the world; and
(2) the rights to such invention in any foreign country where
the United States has elected not to secure patent rights and the
contractor elects to do so, subject to the rights set forth in
paragraphs (2), (3), (6), and (7) of subsection (h) of this
section: Provided, That when specifically requested by the
Secretary and three years after issuance of such a patent, the
contractor shall submit the report specified in subsection (h)(1)
of this section.
(g) to (i) Repealed. Pub. L. 96-517, Sec. 7(c), Dec. 12, 1980, 94
Stat. 3027
(j) Small business status of applicant for waiver or licenses
The Secretary shall, in granting waivers or licenses, consider
the small business status of the applicant.
(k) Protection of invention, etc., rights by Secretary
The Secretary is authorized to take all suitable and necessary
steps to protect any invention or discovery to which the United
States holds title, and to require that contractors or persons who
acquire rights to inventions under this section protect such
inventions.
(l) Department of Energy as defense agency of United States for
purpose of maintaining secrecy of inventions
The Department of Energy shall be considered a defense agency of
the United States for the purpose of chapter 17 of title 35.
(m) Definitions
As used in this section -
(1) the term "person" means any individual, partnership,
corporation, association, institution, or other entity;
(2) the term "contract" means any contract, grant, agreement,
understanding, or other arrangement, which includes research,
development, or demonstration work, and includes any assignment,
substitution of parties, or subcontract executed or entered into
thereunder;
(3) the term "made", when used in relation to any invention,
means the conception or first actual reduction to practice of
such invention;
(4) the term "invention" means inventions or discoveries,
whether patented or unpatented; and
(5) the term "contractor" means any person having a contract
with or on behalf of the Secretary.
(n) Report concerning applicability of existing patent policies to
energy programs; time for submission to President and appropriate
Congressional committees
Within twelve months after December 31, 1974, the Secretary with
the participation of the Attorney General, the Secretary of
Commerce, and other officials as the President may designate, shall
submit to the President and the appropriate congressional
committees a report concerning the applicability of existing patent
policies affecting the programs under this chapter, along with his
recommendations for amendments or additions to the statutory patent
policy, including his recommendations on mandatory licensing, which
he deems advisable for carrying out the purposes of this chapter.
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