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within the criteria of Subsection (a) of Section 322. Thus, for example, if an employee is assigned to conduct research and development work, it is presumed that any invention he makes will be disposed of under the criteria of Section 322.(a), reserving to the Federal Government the right to obtain the entire right, title and interest to such invention.
Subsection (a) (2), however, establishes a presumption that an invention made by an employee whose duties fall outside those listed in Subsection (a) (1) falls within the criteria of Subsection (b) of Section 322 reserving to the employee the entire right, title and interest to such invention subject to certain license rights in the Government.
Subsection (b) provides that either presumption of Subsections (a) (1) and (2) may be rebutted by the facts or circumstances attendant upon the conditions under which any particular invention is made.
Sec. 324 Review of Federal Agency determinations.
Section 324 provides for review of Federal agency determinations regarding the respective rights of the Federal Government and a Federal employee-inventor in situations when the Federal agency determines not to acquire all right, title and interest in an invention or where an employee-inventor when aggrieved by a determination requests review.
Sec. 325 Reassignment of rights.
Section 325 establishes a right in the Federal agency to adjust the rights acquired from a Federal employee-inventor on the basis of evidence that the granting of greater rights to the employeeinventor is necessary to correct an inequitable allocation of rights.
Sec. 326 Incentive Awards Program,
Subsections (a) and (b) provide to the Federal agencies the right to establish an incentive awards program which is intended to monetarily reward or recognize Federal employee-inventors, stimulate inventive creativeness, and encourage disclosures of inventions which in turn will enhance the possibility of utilization through the Federal licensing program established under Title IV.
Subsection (c) and (d) establish the amount of such awards and the procedures under which they shall be granted.
Subsection (e) provides that a cash award is to be considered in addition to the regular pay of the recipient. Further, acceptance of the reward constitutes an agreement that any use by the Federal Government of an invention for which the award is made does not form the basis of a further claim of any nature against the Federal Government by the recipient, his heirs, or assigns.
Subsection (f) designates the fund or appropriation from which the awards should be made.
Subsection (g) makes discretionary the implementation of the awards program of this section.
Sec. 327 Income sharing from patent licenses.
Section 327 establishes the right in a Federal agency to share with the Federal employee-inventor the income received by such Agency from income bearing patent licenses for an invention.
Sec. 328 Conflict of interest.
Section 328 provides that determinations concerning a Federal employee's promotion of his invention is subject to the regulations of the Civil Service Commission. The intent is to ensure that a Federal employee will not be prohibited from promoting his own invention if consistent with the Civil Service Commission regulations governing conflict of interests.
TITLE IV-DOMESTIC AND FOREIGN PROTECTION AND LICENSING OF FEDERALLY-OWNED INVENTIONS
Sec. 401 Authorities of Federal Agencies.
Section 401 provides the authorities necessary to effectively administer the licensing of Federally-owned inventions.
Subsection (a) authorizes the Federal agencies to apply for, obtain and maintain patents in selected countries on inventions in which the Federal Government owns a right, title and interest.
Subsection (b) authorizes the Agencies to promote the licensing of inventions covered by Federally-owned patents or patent applications.
Subsection (c) authorizes the agencies to grant licenses under Federally-owned patents and patent applications on appropriate terms, including the right in the licensee to sue for infringement.
Subsection (d) authorizes the Agencies to conduct market surveys, acquire technical information and demonstrate the practicability of a Federally-owned invention for the purpose of determining and enhancing its marketability.
Subsection (e) provides to the Agencies the right to defer release of information disclosing an invention the Federal Government owns a right, title or interest in for a reasonable time until a patent application has been filed.
Subsection (f) authorizes the Agencies to utilize all other suitable and necessary steps to protect and administer rights to inventions on behalf of the Federal Government either directly or through contract.
Subsection (g) authorizes the Agencies to transfer custody and administration of a Federally-owned invention to the Department of Commerce or other Federal agency for the purpose of administering the authorities set forth in Subsections (a) through (d) without regard to the property transfer procedures required by the Federal Property and Administrative Services Act of 1949.
Subsection (h) authorizes the Agencies to designate the Department of Commerce as the recipient of funds received from fees, royalties or other management of Federally-owned inventions.
Authorities of the Department of Commerce in cooperation with other Federal Agencies.
Section 402 provides the authorities necessary to effectively administer the licensing of Federally-owned inventions by the Department of Commerce either in cooperation with other Federal agencies or solely based on a transfer of administration of a Federally-owned invention to the Department of Commerce.
Subsection (a) authorizes the Department of Commerce to coordinate a program for assisting all Federal agencies in carrying out the authorities provided by Section 401.
Subsection (b) authorizes the Department of Commerce to publish notices of all Federally-owned inventions available for licensing.
Subsection (c) authorizes the Department of Commerce to evaluate inventions referred to it by Federal agencies in order to identify those inventions with the greatest commercial potential.
Subsection (d) authorizes the Department of Commerce, with the concurrence of the Agency involved, to assist the Federal agencies in seeking and maintaining protection on inventions in any country, including the payment of fees and costs connected therewith.
Subsection (e) authorizes the Department of Commerce to accept custody and administration of Federally-owned inventions from other Federal agencies without regard to the property transfer procedures of the Federal Property and Administrative Services Act of 1949.
Subsection (f) authorizes the Department of Commerce to receive funds from fees, royalties or other management of Federally-owned inventions authorized by this Act provided such funds will be used only for the purposes specified by this Act.
Subsection (g) authorizes the Department of Commerce to undertake all of the above functions either directly or through contract.
Sec. 403 Authorities of the General Services Administration.
Section 403 authorizes the Administrator of General Services to promulgate regulations specifying the terms and conditions under which Federally-owned inventions may be licensed.
Sec. 404 Grants of an exclusive or partially exclusive license.
Section 404 sets out the terms and conditions under which a Federal agency may grant an exclusive or partially exclusive license.
Subsection (a) provides that an exclusive or partially exclusive license under a domestic patent or patent application shall be granted only after notice and an opportunity to object has been afforded to the public, and a determination that such licensing is a necessary incentive to call forth the investment of risk capital to bring the invention to practical application, and that the terms and scope of exclusivity are not greater than reasonably necessary to provide such incentive. However, no such license should be granted in the event an Agency determines that the license will “tend substantially to lessen competition or result in undue concentration in any section of the country in any line of commerce to which the technology to be licensed relates, or to create or maintain other situations inconsistent with the antitrust laws." The quoted language is derived from “The Federal Nonnuclear Energy Research and Development Act of 1974" and is discussed in the conference report on S. 1283.
Subsection (b) provides to the Federal agencies the authority to grant an exclusive or partially exclusive license under any foreign patent or patent application after notice to the public and opportunity for objection and a determination that such licensing will enhance the interest of the Federal Government or United States industry in foreign commerce. However, such license shall not be granted in the event an Agency determines that the license will “tend to substantially lessen competition or result in undue concentration in any section of the country in any line of commerce in which the technology to be licensed relates, or to create or maintain other situations inconsistent with the antitrust laws." Subsection (c) requires that the Federal agencies maintain a record of determinations to grant exclusive or partially exclusive licenses.
Subsection (d) requires that the grant of an exclusive or partially exclusive license contain at least (1) a requirement for periodic reports on commercial utilization, (2) the standard paidup license to the Federal Government, (3) the right in the Federal agency to terminate such license if the licensee is not taking effective steps towards utilization of the licensed invention, and (4) the right of the Federal agency after petition, notice to the public, and hearing three years after the grant of the license, to terminate or modify such license on a determination that such license “has tended substantially to lessen competition or result in undue concentration in any section of the country in any line of commerce to which the technology licensed relates, or to create or maintain other situations inconsistent with the antitrust laws."
Chapter 1-Other Related Provisions
Sec. 511 Definitions.
Section 511 sets out the definitions, for the purpose of this Act, for the terms, "Federal agency," "Federal employee," "contract," “contractor," "invention," "subject invention," "practical application," "person," "made," and "antitrust law."
Sec. 512 Relationship to Antitrust Laws.
Section 512 is intended to remove any implication that the Act provides immunity from the antitrust laws.
Chapter 2-Amendment to Other Acts
Sec. 521 Identified Acts amended.
Section 521 is intended to amend or repeal parts of other acts covering similar subject matter.
Acts which have been identified as covering similar subject matter are:
“The Agricultural Research and Marketing Act of August