(ii) The likelihood is that the invention will be more expeditiously developed to the point of practical application by the intentions and plans of the requesting party than by the activities of the Government.

(e) Criteria for a determination for the retention of greater rights [determination]-Deferred clause. When the request for [the greater rights] a determination for the retention of greater rights relates to an invention reported under the Patent Rights clause of § 1-9.107-5 (c) or § 1-9.107-6(b),

(1) The requesting party may retain greater rights where the agency finds:

(i) The invention does not come within the criteria

of § 1-9.107-3 (a) (1) through (4); and

(ii) The likelihood is that the invention will be more expeditiously developed to the point of practical application by the intentions and plans of the requesting party than by the activities of the Government.

(2) The requesting party may retain greater rights when an agency finds that the invention comes within the criteria of § 1-9.107-3 (a) (1) through (4); and

(i) The [acquisition] retention of [the] greater rights is a necessary incentive to call forth risk capital and expense to bring the invention to the point of practical application; or (ii) The Government's contribution to the invention is small compared to that of the contractor.

(f) Agency determination-Domestic rights.

(1) The agency shall notify the party requesting a [greater rights] determination for the retention of greater rights of its decision. If the agency's [greater rights] determination is not coextensive with the party's request, the agency shall inform the party of the reasons on which the final action is based. [The agency's greater rights determination is final and is not subject to the Disputes clause of the applicable contract.]

(2) Where the determination [includes a requirement that the requesting party have] provides for the requesting party to retain title, the determination shall require that a domestic patent application be filed on the invention, by the requesting party, and the following provisions shall apply:

(i) The application shall be filed within 6 months from the date of the determination, or such longer period as may be authorized in writing by the agency for good cause shown in writing by the requesting party;

(ii) For each patent application filed, the party shall:

(A) Within 2 months after such filing or within 2 months after the date of a determination, if such patent application previously has been filed, deliver to the agency a copy of the application as filed, including the filing date and serial number;

(B) Include the following statement in the second paragraph of the specification of the application and any resulting patent: "The Government has rights in this invention pursuant to Contract No. (or Grant No. --------)

awarded by (identify the agency).";

(C) Within 6 months after such filing, or within 6 months after submission of the invention disclosure if the patent application has been previously filed, deliver to the agency a duly executed and approved [, executed, and recorded] instrument prepared by the Government fully confirmatory of all the rights to which the Government is entitled, and provide the agency an irrevocable power to inspect and make copies of the patent application filed; (D) Provide the agency with a copy of the patent within 2 months after a patent is issued on the application; and (E) Not less than 30 days before expiration of the response period for any action required by the Patent and Trademark Office, notify the agency of any decision not to continue prosecution of the application and deliver to the agency executed instruments granting the Government a power of attorney to prosecute the application; and

(iii) If the [applicant] requesting party fails to file an application within the prescribed time periods, decides not to continue prosecution of the application, or no longer desires to retain title, he shall convey to the Government, upon request, his entire right, title, and interest in the invention, and to any corresponding patent application or patent. The conveyance shall be made by delivering to the agency duly executed instruments (prepared by the Government) and, if applicable, such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention and any corresponding patent application, and to enable the Government to prosecute the application.

(3) [The determination of greater rights, whether requested by the contractor or by the employee-inventor,] Where the determination provides for the requesting party to retain title, the determination shall be subject to a license to the Government, and the licensing and the commercial use reporting requirements of paragraph (c) "Minimum rights [granted to] acquired by the Government," of the Patent Rights clauses of § 19.107-5. The determination normally shall also be subject to any

other reservation or condition deemed to be appropriate by the agency.

(g) Agency determination-Foreign rights.

(1) A contractor's request for a determination that he retain greater foreign rights [determination] in an invention under the Patent Rights clauses of either § 1-9.107-5 (a) or (c) or § 1-9.107-6(a) or (b) may accompany a request for a determination [ef] that he retain greater domestic rights [of] under § 1-9.109-6( [f]a), or may be submitted independently thereof. The request shall contain the following information:

(i) The prime contract number and the subcontract number, if applicable, under which the invention was made and identification of the agency's contracting office;

(ii) A brief description of the invention or a copy of the invention disclosure;

(iii) The countries in which the requesting party intends to file a patent application; and

(iv) Other information required by the agency.

(2) If the Government determines not to file a patent application on a Subject Invention of the contractor in any foreign country, the agency may authorize the requesting party to file a patent application on the invention in such foreign country and to [aequire] retain the entire right, title, and interest therein if it determines such authorization to be in the public interest, subject to the license to the Government provided in paragraph (c) of the Patent Rights clause in § 1-9.107-5 (a) or S1-9.107-6(a).

(3) Where the determination includes a requirement that the requesting party file and prosecute a foreign patent application on the invention, the following provisions shall apply:

(i) The requesting party shall file and prosecute a patent application on the invention in (identify the foreign countries) in accordance with applicable statutes and regulations and within one of the following periods:

(A) Eight months from the date the corresponding United States patent application is filed by or on behalf of the requesting party; or if such an application is not filed, 6 months from the date of this agreement;

(B) Six months from the date a license is granted by the Commissioner of Patents and Trademarks to file foreign aplications where such filing has been prohibited by security rea

sons; or

(C) Such longer period as may be approved by the

agency;

(ii) The requesting party shall notify the agency promptly of each foreign application filed and upon written request of the agency shall furnish an English [translation] version of the foreign application without additional compensation; and (iii) If the requesting party files or causes to be filed a patent application on Subject Invention in any foreign country, or if a patent is obtained on such application, the party shall notify the agency, not less than 60 days before the expiration period for any action required by the foreign patent office, of any decision not to continue prosecution of the application or not to pay any maintenance fee covering the invention, and within. such period shall deliver to the agency:

(A) Executed instruments granting to the Government power of attorney in the application;

(B) An English [translation] version of the applica

tion, if not previously provided, to the agency; and

(C) Upon request, a conveyance of the party's entire right [], title, and interest in the invention in the foreign country, and to any corresponding patent application.

[Comments by interested parties invited. The original draft of this regulation was made available to Government agencies, industry associations, and others for purposes of review in May 1972. The evaluation of the comments received and the further analysis of the entire matter by the Implementation Subcommittee of the Committee on Government Patent Policy resulting in a great many changes in the regulation. In view of the magnitude of the changes, interested parties are invited to comment on this regulation in its present form on or before November 5, 1973. Comments should be submitted to the General Services Administration (AMC), Washington, D. C. 20405. The comments received will be evaluated in the interest of determining whether revisions are necessary and desirable prior to the mandatory effective date of the regulations.]

Effective date. This amendment is effective [March 4, 1974] June 9, 1975, but may be observed earlier.

Dated: [August 29, 1973] May 1, 1975.

APPENDIX D

DRAFT BILL
ENTITLED

"FEDERAL INTELLECTUAL PROPERTY POLICY ACT

OF 1976"

(Forwarded August 20, 1976 to the Office of Management and Budget and to the Director of the Office of Science and Technology Policy for official clearance.)

Draft Bill, "Federal Intellectual Property Policy
Act of 1976"

93

Draft Section-by-Section Analysis of Draft Bill

120