Page images
PDF
EPUB

C. The use and practice of these inven exclusive rights throughout the world in and tions and discoveries should stimulate inven. to any inventions made in the course of or tors, meet the needs of the government, under the contract. In exceptional circumrecogaize the equities of the contractor, stances the contractor may acquire greater and serve the public interost.

rights than & non-exclusive license at tho D. The public interest in a dynamic and time of contracting, where the head of tho omcient economy requires that efforts be department or agency certifies that such made to encourage the expeditious develop action will best serve the public interest. ment and civilian use of these inventions. Greater rights may also be acquired by the Both the need for incentives to draw forth contractor after the invention has been

identifed, where the invention when made to promote bealthy competition in industry in the course of or under the contract is not must be weighed in the disposition of patent & primary object of the contract, provided rights under government contracts. Where the acquisition of such greater rights is conexclusive rights are acquired by the contrac- sistent with the intent of this Section 1(a) tor, he remains subject to the provisions of and 18 a necessary incentive to call forth the antitrust laws.

private risk capital and expense to bring the E. The publc interest 18 also served by invention to tho point of practical applicasharing of benefits of government-financed tion. research and development with foreign coun. (b) In other situations, whoro tho purtries to a degree consistent with our inter- pose of the contract is to build upon ex• national programs and with the objectives ofisting knowledge or technology to develop U.S. foreign policy.

information, products, processes, or methods F. There is growing importance attaching for use by the government, and the work to the acquisition of foreign patent rights in called for by the contract is in a hold of furtherance of the interests of U.S. Industry technology in which the contractor has acand the government.

quired technical compotanco (demonstrated G. The prudent administration of govern- by factors such as know-how, experience, and ment research and development calls for a patent position) directly related to an area government-wide policy on the disposition in which the contractor has an established of inventions made under government con

non-governmental commercial position, the tracts reflecting common principles and ob

contractor shall normally acquire tho prin. jectives, to the extent consistent with the

cipal or exclusive rights throughout tho missions of the respective agencies. The

world in and to any resulting inventions, policy must recognize the need for dezbility

subject to the government acquiring at least to accommodate special situations.

an irrevocable non-exclusivo royalty free 4Policy

cense throughout the world for governmental Section 1. The following basic policy is as- purposes. tablished for all government agencies with (c) Where the commercial Interests of the respect to inventions or discoveries made in contrtactor are not sumiciently established to the course of or under any contract of any be covered by the criteria specified in Section government agency, subject to specific state 1(b), above, the determination of rights utes governing the disposition of patent shall be made by the agency after the invenrights of certain government agencies. tion has been identified, in a manner doemod (a) Where

most likely to serve the public interest as ex(1) a principal purpose of the contract pressed in this policy statement, taking paris to create, develop or improve products, ticularly into account the intentions of the processes, or methods which are intended for

contractor to bring the invention to the point commercial use (or which are otherwise in of commercial application and the guidelines tended to be made available for use) by of Section 1(a) hereof, provided that the the general public at home or abroad, or agency may prescribe by regulation special which will be required for such use by gov. situations where the public interest in the ernmental regulations; or

availability of the inventions would best bo (2) a principal purpose of the contract is served by permitting the contractor to acfor exploration into fields which directly quire at the time of contracting greater concern the public health or public wel rights than a non-exclusive Ucense. In any fare; or

case the government shall acquire at least & (3) the contract is in & field of science non-exclusive royalty free license throughout or technology in which there has been little the world for governmental purposes. significant experience outside of work (d) In the situations specified in Sections funded by the government, or where the 1(b) and 1(c), when two or more potential government has been the principal developer contractors are judged to have presented of the field, and the acquisition of exclusive proposals of equivalent merit, willingness to rights at the time of contracting might con- grant the government principal or exclusvo fer on the contractor & preferred or domi rights in resulting inventions will be an addi. nant position; or

tional factor in the evaluaton of the pro(4) the services of the contractor are

posals. (1) for the operation of a government

(e) Where the principal or exclusvo (axowned research or production facility; or cept as against the government) rights in (11) for coordinating and directing the

an invention remain in the contractor, be work of others,

should agree to provide written reports at the government shall normally acquire or reasonable intervals, when requested by the reserve the right to acquire the principal or government, on the commercial use that is

14242

being made or is intendod to bo made of in Soction 4. Defnitions: As used in this ventions made under government contracts. policy statement, the stated terms in singu

(1) Where the principal or exclusive (ex lar and plural are deaned as follows for tho cept as against the government) rights in an purposes bereof: invention remain in the contractor, unless (a) Government agency-includes any the contractor, his licensee, or his assignee Executive department, indopondent commis. has taken effective steps within three years slon, board, omco, agency, administration, after & patent issues on the invention to authority, or other government establishbring the invention to the point of practical

ment of the Executive Branch of the Gov. appucation or has made the invention avall

ernment of the United States of America. able for licensing royalty free or on terms

(b) "Invention" or "Invention or disthat are reasonable in the circumstances, or

covery" includes any art, machine. manu. can show cause why he should retain the principal or exclusive rights for a further

facture, design, or composition of matter, period of time, the government shall havo

or any new and useful improvement thereof,

or any variety of plant, which is or may be the right to require the granting of a license

patentable under the Patent Laws of the to an applicant on a non-exclusive royalty

United States of America or any foreign free basis.

country. (8) Where the principal or exclusive (except as against the government) rights to an

(c) Contractor means any individual, partinvention are acquired by the contractor, the

nership, public or private corporation, as80

clation, institution, or other entity which is government shall have the right to require

& party to the contract. the granting of a Ucense to an applicant roy

(d) Contract means any actual or proalty free or on terms that are reasonable in

posed contract, agreement, grant, or other the circumstances to the extent that the

arrangement, or sub-contract entered into invention is required for public use by gove,

witb or for the beneat of the government ernmental regulations or as may be neces

whero a purpose of the contract 18 the consary to fulal health needs, or for other pub

duct of experimental, developmental, or relic purposes stipulated in the contract.

search work. (b) Where the government may acquire

(e) "Made" when used in relation to any the principal rights and does not elect to

invention or discovery means the conception secure a patent in a foreign country, the con

or Arst actual reduction to practice of such tractor may file and retain the principal or

invention in the course of or under the exclusive foreign rights subject to retention

contract. by the government of at least a royalty free

(1) Governamental purpose means the right license for governmental purposes and on be

of the Government of the United States (inball of any foreign government pursuant to

cluding any agency thereof, state, or domesany existing or future treaty or agreement

tic municipal government) to practice and with the United States.

have practiced (made or have made, used or Section 2. Government-owned patents shall

bave used, sold or have sold) throughout be made avallable and the technological ad

the world by or on behall of the Government vances covered thereby brought into being in

of the United States. the shortest time possible through dedication

(8) "To the point of practical applicaor licensing and shall be listed in omcial

tion" means to manufacture in the case of government publications or otherwise

& composition or product, to practice in the Section 3. The Federal Council for Science and Technology in consultation with the

case of a process, or to operate in the case

of a machine and under such conditions as Department of Justice shall prepare at least

to establish that the invention is being annually & report concerning the efective

worked and that its benefits are reasonably ness of this policy, including recommenda

accessible to the public. tions for revision or modification as necessary in light of the practices and determina The PRESIDING OFFICER. The tions of the agencies in the disposition of question is on agreeing to the amendpatent rights under their contracts. A

ment of the Senator from Pennsylvania. patent advisory panel is to be established

Mr. MCCLELLAN. Mr. President, I under the Federal Council for Science and Technology to

want to make a very brief statement (a) develop by mutual consultation and

utual consultation and which is not directed to the merits of coordination with the agencies common guidelines for the implementation of this The Subcommittee on Patents of the policy, consistent with existing statutes, and Committee on the Judiciary has underto provide over-all guidance as to disposition taken to carry out the assurances that I of inventions and patents in which the gove

gave the Senate last year when these ornment has any right or interest; and (b) encourage the acquisition of data by

issues were being considered. government agencies on the disposition of

I said then that bills were pending patent rights to inventions resulting from and that we would undertake to process federally-onanced research and development the bulls with due deliberation and speed. and on the use and practice of such inven We have done that. tions, to serve as basis for policy review and

In that connection, unless one has development; and (c) make rocommendations for advancing

served on the committee, heard the testithe use and exploitation of governmento

mony, and studied the matter, he would owned domestic and foreign patents. most likely not become fully advised and

14243

informed as to the complexities involved permit the Senate to make a sound judgin trying to write a patent policy and give ment, and second, to urge, consistent the subject matter the attention that we with prudent consideration, the prompthave given it.

est possible action by the subcommittee The subcommittee reported & bil to and then by the full committee. the Committee on the Judiciary by & The Senator from Michigan this divided vote.

morning offered a substitute for the MCThe report of the subcommittee was Clellan bill. If any Senator should bemade on April 11 of this year. The sub lieve that the failure of the Committee committee was trying to get the bill on the Judiciary this morning to report reported so that it could be considered a patent bill on this basic problem is the at this session of Congress. .

fault of any member of the committee, I believe that the measure was sched. the fault would lie with the Senator uled to come before the full committee from Michigan, not with the Senator on four occasions. As I recall, on two from Arkansas. occasions there was not a quorum pres. In committee, I supported the Senator ent. However, there was a quorum on from Louisiana on the amendment in the two occasions, the last one being today. bill, and I hope that Congress will reject

The committee discussed the bill. I the pending amendment. Until the basic had hoped that the bill would be reported question is resolved as to the wisest today, or that & substitute would be re

method of handling discoveries made in ported for the bill it the committee

connection with research financed by all should adopt a substitute in order to get

the people, I believe it should be made the measure on the calendar in order to

very clear in the bill that such discovmake sure that we would act on the bill

eries shall be retained for the benefit of in this session of Congress.

the people. That is the reach of the There were members of the Commit

amendment which the committee has tee on the Judiciary who felt that they

added, and which is now sought to be would like to have more time in which

stricken. I hope that the Senate will to study the issue and would like the

not strike the amendment, but that it matter to go over without a vote today.

will be retained. Their wishes were acceded to.

Mr. LONG of Louisiana. Mr. PresiI want the RECORD to show that dent, I shall make my statement on the there was no disposition to use any dila

pending amendment now, because other tory tactics and none are being used.

Senators have spoken to a relatively We have a very complicated and dificult

small Senate attendance; and I do not issue that Congress should resolve.

wish to take advantage of the situation We are trying to present the issues to

by waiting for more Senators to come to the Senate in the nature of a bill re

the Chamber before I state my views on ported by the Committee on the Judi

the subject. I hope that the Senate will ciary in accord with the due process

be able to vote after the quorum call. procedures of the Senate so that the

There is great doubt about what ConSenate can definitely work its will and

gress will do with regard to the proposal determine what the policy shall be.

for an overall, one-patent policy. When That is the status of the matter, and the executive branch attempted to estabnone of us desires to delay it unduly. lish & one-patent policy to apply to all Mr. HART. Mr. President, the Sena

agencies that were not bound by law-I tor from Arkansas has reported precisely

believe the majority of them were bound and accurately the evolution of the pat

by law, under their patent policies, to ent bill, first in the subcommittee, and in give private patents only in isolated cirthe full committee as of today. I have cumstances-nevertheless, the policy not been present in the Chamber during

that evolved would permit private patall the discussion, but I have not heard ents in some cases and not in others. any suggestion that the chairman of the Those were agencies that were not Patent Subcommittee is responsible for

bound by law. I know of no agency that delaying the action by the Committee on

does not grant private patents because the Judiciary in this area.

of a law that firmly binds it not to grant As one who has served on the subcom patents on Government research, which mittee, and who finds himself in dis disagrees with the language of the act agreement with the chairman as to the under which it is operating, and those more prudent way to respond to this acts were all proposed by the committees basic problem, I should like the RECORD

that brought that legislation before the to indicate that the efforts of the Sena Senate. tor from Arkansas throughout have

An effort to write general legislation been, first, to develop a record that will on those matters has resulted in a bill sponsored by the Senator from Arkansas situation in which someone uses Govern(Mr. MCCLELLAN] which recognizes that ment money to develop a fine safety dein one area a patent would be appropri- vice and then, under his patent rights, ate, in another area it would not.

denies it entirely to the public or charges In another area it would ordinarily be an outrageous price for it. The Senator appropriate for the Government to take from New Hampshire did not respond to title. But even that could be subject to the question. exception, based on various considera- Frankly, the answer is that under the tions of economy and equity that might pending bill without the committee be involved in the particular circum- amendment such a result could occur. stances.

The committee does not wish to see that When this problem is separated from happen. the others, no problem exists, unless Mr. President, reference has been made someone wishes to read into the bill to the tabling of two amendments which something that is not there. In other I have offered to existing patent laws or words, in my judgment, the opposition to to laws that do not provide what happens the committee action and to the judg- to patenis, as the case may be. The ment of the committee derives from the Senate has been consistent in this rethought that this might be used as a spect: So long as I have been a Member precedent in some other area.

of the Senate, for 17 years, and prior to I inquired of responsible officers of the that time, as far back as I have been Ford Motor Co., General Motors Corp., able to research the matter, the Senate. and Chrysler Corp., whether the judg has accepted the judgment of a commitment of the committee in this field tee that has initiated a research program causes them any problem. The answer I as to what should happen to the fruit of received was, "No, it does not.” They do that research. That is the way most not oppose what the committee recom Senators have voted consistently through mends.

the years, and I hope the Senate will acOnly in instances where the Secretary cept the judgment of the committee in of Commerce were to employ a contrac this instance. I notice that the distintor to do research in the safety field, guished chairman himself has voted that where the Government investment would way consistently. be small compared with that of private Mr. AIKEN. I would like the Senaindustry, or when the Government con tor from Louisiana to interpret the lantribution is not substantial, would it be guage of paragraph (c), on page 42, subject to private patents. That situa- which reads as follows: tion would be appropriate for this in- (c) Whenever the federal contribution for dustry. This industry, perhaps more any research or development activity authan any other, does its own private re thorized by this Act encouraging motor search. When it does that research,

vehicle safety is more than minimal, the each manufacturer makes practically all

Secretary shall include in any contract, of his research freely available to the

grant, or other arrangements. other manufacturers, for use in produc Does the Senator from Louisiana have ing better automobiles. And that will & definition for “more than minimal"? continue to be so.

Mr. LONG of Louisiana. That lanIn preponderant measure, even the pri guage was discussed, and it was agreed vate research done by this industry is in that the matter should depend on the effect in the public domain, available to circumstances. That is an area in which all manufacturers. This makes sense the Secretary would have latitude in dewhen we consider the Government policy termining what he would regard to be a to be that if the Government spends minimal expenditure and what he would money on something, everyone should be regard as substantial. permitted to use it, with no incentive to Actually, I do not recall at this time withhold it.

precisely who suggested the language. A parts manufacturer may contem Two phrases were discussed. It was sugplate manufacturing and charging $100 gested that rather than have a straitfor a better safety belt that costs $15 jacket amendment, some latitude should to produce. If he wishes to do that, he be left for the Secretary. The chairman should do it with his own money. But felt that there should be latitude in inif the Government wishes to develop stances where the Federal Government something, it should be available for made a small contribution compared with everyone to put on his automobile on a the contribution which private industry competitive basis.

makes. So two terms were discussed. I asked the Senator from New Hamp- One was the word “minimal"; the other shire (Mr. COTTON) his opinion about a was “substantial."

14244

To me, as a lawyer, “minimal" relates to the Latin phrase "de minimis." I the contribution is minor and of no great consequence, an exception might be made.

So we more or less agreed that we would write into the bill the word "minimal," and would say in the committee report that by “minimal" we meant "not substantial.”

That could be perhaps 10 percent or more than 10 percent of the overall investment.

Mr. AIKEN. Or less than 10 percent.

Mr. LONG of Louisiana. That would be discretionary with the Secretary. I wish to say to the Senator that without that the Secretary would be permitted simply to grant the private patent rights in all cases. But he would have this discretion, and I believe that the committee has spelled out what we meant.

The Government expenditure relative to that of industry might go as high as 20 percent, but that is in the judgment of the Secretary

Mr. AIKEN. The Secretary of Commerce?

Mr. LONG of Louisiana. The Senator is correct.

Mr. AIKEN. I am sure it is the pur. pose of the amendment that if the Federal Government contributes & very substantial part of the cost, any result therefrom should be made available to the general public.

However, if the Federal Government contributes, for instance, 10 percent of the cost, and the owner of the research establishment contributes the other 90 percent of the cost, I would think

Mr. LONG of Louisiana. The Secretary could enforce patent rights.

Mr. AIKEN. Whoever contributes the majority of the cost.

Mr. LONG of Louisiana. The Senator is familiar with the problem.

he Secretary can deny making & contract with anybody for any reason. I he is going to make a contract I would be willing to concede now that it would be in his discretion, on a 10-percent contribution, as to whether or not it is substantial.

If he wanted to go beyond that on the circumstances of the case, that would be in his discretion. I believe that is the reason the chairman of the committee did not want us to spell out any particular percentage, but rather permit it to vary. He could, perhaps, negotiate, but the Senator realizes that the contractor must pay for most of the research himself.

The words “minimal" and "substantial" are used in the bill and the report and

protect & research organization from inadvertency where someone is using Federal facilities to some extent, although he intended to have patent rights himself and the Federal Government had thereby made an indirect contribution.

Mr. AIKEN. I believe that the discussion of the Senator from Louisiana 18 very helpful. I understand i this legis. lation is adopted, including paragraph (c), then in the future arrangements depend on the judgment and integrity of the Secretary.

Mr. LONG of Louisana. To a very considerable extent.

I am sure the Senator realizes that he could not enter into a contract granting private patent rights where the Government is going to pay 50 percent or even 40 percent of the overall cost and waive the Government's interest in the matter.

Mr. AIKEN. I think it is helpful to mention 40 percent or 10 percent, or whatever the Senator mentioned. He mentioned those various percentages.

Mr. LONG of Louisiana. The Secretary is not bound by that. But this legislative history, I think, will give him some idea as to his general area of discretion.

Mr. AIKEN. If he were to go too far, he would be subject to censure.

Mr. LONG of Louisiana. The Senator is correct.

Mr. COTTON. Mr. President, will the Senator yield?

Mr. LONG of Louisiana. I yield.

Mr. COTTON. The Senator indicated that the response by the Senator from New Hampshire to a question he asked was not responsive.

I wish to make it clear that in the contingency to which the Senator refers—and I must say in view of the cross licensing by the automobile companies it is rather remote the contingency of having someone overcharged for safety devices, we rely on competition to prevent that.

The Senator from New Hampshire thought one of the most discouraging pieces of testimony that the committee heard was when an automobile company executive testified that safety could not be sold to the public; that you could sell speed; that you could sell power; that you could sell style, but that you could not sell safety.

In the first place, I do not agree with that and I hope that that will not prove to be the case. I hope that the splendid work which has been done by the chairman of the committee and the committee and the Congress will make the public safety minded.

« PreviousContinue »