such election. It is our opinion that in a university situation it is unreasonable to expect that in all cases a patent application can be filed within 12 months after the conception of the invention. Reduction to practice can be very time-consuming because of the possible lengthy delays in funding and because university priorities are different from those in private industry. These provisions should be changed to allow the election and the filing of patent applications within six months following the conception or reduction to practice, whichever occurs last. (4) In Paragraph IV(a), the Government's license to a subject invention should be for governmental purposes only rather than to "make, use, and sell." (5) It is understandable that the Government should have the right to disclose, eventually, invention disclosures under the IPA (Paragraph V(c), Page 8). However, provision should be made to allow the filing of a U. S. Patent Application prior to any such governmental disclosure. (6) We recommend the changing of wording on Page 9 in Paragraph VII(b to specify that the Grantee shall furnish promptly a copy of each U. S. Pate Application with data filing and serial number, and shall promptly obtain ar deliver a copy to the Agency an assignment form, etc. The information required here can be obtained only from the Patent Office and the University reporting is subject to the timing of that office. (7) Provision for the extension of the period of exclusivity in rare cases should be made. (8) Paragraph IX (c) should specify that royalty-free sales to the Government shall be provided for in licenses, to be handled by licensees. It would be completely unthinkable to try and have universities administer royalties by licensee and by consumer and rebate to the Government those royalties on sales to governmental agencies. (9) The IPA should provide in Paragraph IX(e) that licenses be made subject to the conditions of the royalty-free license to the Government and not subject to the conditions of the IPA itself. Any specific conditions which need to be provided for in licenses in order to meet the terms of the IPA should be stated briefly and concisely in the IPA for inclusion in licenses. Thus, the necessity of making the IPA a part of every license would be avoided, along with a great deal of paper work. (10) The provisions of Paragraph IX(f) are contrary to public policy as applied in the Small Business Administration and other agencies of the Federal Government and the states. Individuals are encouraged to benefit from the application of Federal funds in innumerable cases when the public benefits in the long run. Government-supported inventions should not be an exception to this established public policy. Many thanks, again, for this opportunity to respond to the proposed GSA Institutional Agreement. PURDUE RESEARCH FOUNDATION WEST LAFAYETTE, INDIANA 47907 OFFICE OF PATENT MANAGEMENT October 6, 1976 Mr. Philip G. Read Director of Federal Procurement Federal Supply Services General Services Administration Washington, D. C. 20406 Subject: Proposed Institutional Patent Agreement Dear Mr. Read: Comments on the proposed Agreement follow: 1. Paragraph I stipulates that "This Agreement shall not apply to Subject Inventions in cases where the Institution is a subcontractor under a prime contract." We are unable to reconcile this statement with paragraph II(b) which states that "Contract" means any contract (agreement, grant, or other arrangement) or subcontract---" The Agreement should permit the Institution to retain rights to inventions under subcontracts. Such a change would encourage interinstitutional research. 2. Paragraph V(c) stipulates that "The Institution agrees 3. With respect to paragraph IX (b) stipulating that the period of exclusivity shall not exceed five (5) years from first commercial sale or eight (8) years from the date of the exclusive license,.whichever occurs first, the eight-year limitation will be a problem when extensive premarket clearance of a product or device is required by the government. This paragraph should be modified to exclude from the eight-year limitation that time required by the government for premarket government clearance. 4. Paragraph İX(F). Some inventions have a very limited specialized market although they could make significant contributions. The public could best be served by licensing the technology to the inventor. Universities are probably more concerned than the government about conflict of interest. Prudent management dictates that the Universities be able to license where the use of the technology will be maximized. If this is the inventor, then such should be permitted without first having to contact a number of companies. For most inventions, the inventor would not have the capital to develop the technology. Paragraph IX(f) should be modified to permit licensing the technology to the inventor without having to obtain permission from the agency when good management dictates licensing to the inventor. The Institutional Agreement is the best approach to enhance technology transfer. The principle ingredient in technology transfer is the inventor. Without his dedicated effort, the invention is seldom successfully commercialized. By leaving title with the Institution, the inventor retains a vital interest. SOCIETY OF UNIVERSITY PATENT ADMINISTRATORS SUPA PRESIDENT Mr. Ray Woodrow Princeton University P. O. Box 36 Princeton, N. J. PAST PRESIDENT VICE PRESIDENT EASTERN REGION Mr. Lawrence Gilbert Patent Administrator Boston University 881 Commonwealth Avenue Boston, Ma. 02215 VICE PRESIDENT CENTRAL REGION Dr. Ralph L. Davis Patent Manager Purdue Research Fdn. West Lafayette, Ind. 47907 VICE PRESIDENT WESTERN REGION Mr. Clarence W. Martin Director Patent & Product Dev. University of Utah Salt Lake City, Utah 84112 SECRETARY. TREASURER Dr. Earl J. Freise Assistant Director Office of Research & Sponsored Programs Northwestern Univ. Evanston, Ill. 60201 Your letter of August 3, 1976 asked for our comments on the proposed FPR Revision covering University Patent Policy prepared by the Ad Hoc Subcommittee of the Committee on Government Patent Policy. Because of the exigencies of time and communication problems, I am not able to give you an official position endorsed by the members of the Society of University Patent Administrators. However, I have received copies of the comments submitted by a number of those members, and they have been used in preparing what I have to say in the following. Enclosed herewith is a copy of my recent testimony before the House Subcommittee on Domestic and International Planning and Analysis. Towards the latter part of that testimony you will note that I have endorsed the concept of an Institutional Patent Agreement with reasonable and minimum requirements. The following comments on the proposed FPR Revision are, I believe, consistent with my prepared testimony and also with later comments during the hearing. 1. to add subsection (6) to 1-9.107-4 (a) During the hearing after the testimony discussed above, I took vigorous exception to making the IPA permissive and not mandatory (except of course where agency statutes do not permit it). Other FPR's are mandatory, why not the IPA? We need to go in the direction of one government, not a multiplicity of governments. Exactly the same invention can be made under a contract or grant from any agency, so it should be in the public interest that it be handled the same way. Exactly the same comments apply to the provision that individual contracts can be excluded from the IPA, There are no guidelines given except the "public interest" later under 3 (G). Consistent with what I said in my testimony, that IPAS should have reasonable and minimum provisions, let the university administer the inventions, and then crack down if something particularly unfortunate happens. It is impossible to tell in advance of a contract what kind of inventions will be made, if any, so it is impossible to judge whether the IPA should or should not be applied. 3 (D) I recommend deletion of the word "normally". Because of the fact that most inventions when they come out of a university are far from the point of commercial production and marketing, most inventions must be licensed exclusively, albeit for a limited period and even for a limited application, if the necessary investment is to be attracted. I Scope of Agreement It is not clear why the Agreement must expire after three years. There seems to be little gained, and a considerable amount of renegotiation and change of references will be added. on 30 days notice is provided in XIII. Termination The last part of the first sentence would be deleted if comments under 1 above are accepted. I object vigorously to the second sentence and the pertinent part of VIII with regard to subcontractor rights. These provisions completely overlook the equity of the inventors who are subcontractor employees as well as the equity of the subcontractor itself. The prime contractor has little or no equity. If the subcontractor has a valid IPA, it should get the same treatment as in a prime contract. IV Minimum Rights Acquired by the Government (a) In place of the phrase "make, use, and sell" in the fourth line, a phrase "practice and have practiced" as contained in ASPR 7-302.23 would be much preferable. For some inventions, potential licensees could be greatly turned off by having to compete with the Government in the marketing and sale of a product. (a) With regard to the extension of the license to state and local governments, see my testimony. They have no equity. Administratively, the problem is an impenetrable maze. (b) B In the hearing after my testimony I also referred to the very serious concern, to the extent of refusal, of potential licensee's to agree to license others if an "invention is required for use by governmental regulations or as may be necessary to fulfill public health or safety needs, or for other public purposes stipulated in the applicable contract". The problem is not so much that these are not worthy reasons, but rather that the decision may be made at a low level and without full consideration of all the facts and circumstances. Some assurances should be given that the decision will be made at a high level, with an opportunity for a hearing. |