Patent Policy

sonable period of time by the granting of a nonexclusive license;

(2) exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the in

vestment of risk capital to bring the invention to practical application; and

(3) the proposed terms and scope of exclusivity are not greater than reasonably necessary to provide the incentive for bringing the invention to practical ap

plication.

11 TITLE IV—ALLOCATION OF RIGHTS—FEDERAL

EMPLOYEES

13 SEC. 401. ALLOCATION OF RIGHTS.

14 (a) Except as otherwise provided in subsections (b) and 15 (c), the Government shall obtain the entire right, title, and 16 interest in and to all inventions made by any Federal em17 ployee if the agency determines that

(1) the invention was made during working hours;

(2) the invention was made with a contribution by the Government of facilities, equipment, materials, funds, or information, or of time or services of other Government employees on official duty; or

(3) the invention bears a direct relation to the duties of the Federal employee-inventor, or are made

in consequence of his employment.

(b) Where the interest of the Government is insufficient 2 to require acquisition of title by the Government but the in3 vention bears an indirect relation to the duties of the Federal 4 employee-inventor, the employee shall have the option of ac5 quiring title to such invention, subject, however, to the reser6 vation by the Government of a nonexclusive, irrevocable, 7 royalty-free license in the invention with the power to grant 8 licenses for all governmental purposes. The Government 9 shall obtain title to any invention for which this option is not 10 exercised.

11 (c) In all situations not falling within subsections (a) and 12 (b), a Federal employee shall be entitled to retain the entire 13 right, title, and interest in and to any invention made by the 14 employee.

15 SEC. 402. PRESUMPTION OF OWNERSHIP.

(a) In applying the criteria of section 401 to the facts 17 and circumstances relating to the making of any particular 18 invention, it shall be presumed that an invention falls within 19 the criteria of section 401(a) when made by a Federal em20 ployee who is employed or assigned to—

(1) invent, improve, or perfect any article, machine, manufacture process, or composition of matter;

(2) conduct or perform research or development work, or both;

(3) supervise, direct, coordinate, or review federal

ly financed or conducted research or development

work, or both; or

(4) act in a liaison capacity among Federal or non-Federal agencies or individuals engaged in such work.

(b) The presumption established by subsection (a) may 8 be rebutted by the facts or circumstances of the conditions 9 under which any particular invention is made.

10 SEC. 403. REVIEW.

Federal agency determinations regarding the respective 12 rights of the Government and the Federal employee-inventor 13 are to be reviewed by the Secretary in accordance with rules, 14 regulations, and procedures adopted by the Secretary when15 ever

(1) the Federal agency fails to obtain title under the provisions of section 401(a); or

(2) the Federal employee-inventor who claims to be aggrieved by the determination requests such a

review.

21 SEC. 404. INCENTIVES AWARDS PROGRAM.

22 (a) Subject to the provisions of this section, the agency 23 is authorized, upon its own initiative or upon application of 24 any person, to make a monetary award or otherwise offer 25 recognition, in such amount and upon such terms as it shall

1 deem appropriate, to any Federal employee-inventor for any

2 scientific or technical invention determined by the agency to

3 have significant value.

(b) Awards shall be granted pursuant to the provisions 5 of chapter 45 of title 5 and chapter 57 of title 1 of the United

6 States Code, and in accordance with regulations issued there7 under except as modified by this Act.

(1) the extent to which the invention advances the

state of the art;

(2) the amount expended by the employee-inven

tor for development of such invention;

(3) the importance of the invention in terms of its value and benefits to the Government and the United States;

(4) the extent to which the invention has achieved utilization by the public; and

(5) the amount of any compensation previously received by the employee-inventor for or on account of

the use of such invention by the United States.

(d) If more than one applicant under subsection (a)

23 claims an interest in the same contribution, the agency shall

24 ascertain the respective interest of such applicants, and shall 25 apportion any award to be made with respect to such inven

1 tion among such applicants in such proportions as it shall 2 determine to be equitable.

3 (e) No award may be made under subsection (a) with 4 respect to any invention unless the applicant surrenders, by 5 such means as the agency shall determine to be effective, all 6 claims which such applicant may have to receive any com7 pensation (other than the award made under this section) for 8 the use of such invention or any element thereof at any time 9 by or on behalf of the United States or by or on behalf of any 10 foreign government pursuant to any treaty or agreement with 11 the United States, within the United States or at any other 12 place.

13 (f) No award may be made under subsection (a) in any 14 amount exceeding $100,000, unless the agency has transmit15 ted to the appropriate committees of the Congress a full and 16 complete report concerning the amount and terms of, and the 17 basis for, such proposed award, and 30 calendar days of reg18 ular session of the Congress have expired after receipt of 19 such report by such committees.

(g) A cash award and expense for honorary recognition

21 of a Federal employee-inventor shall be paid from the funds 22 appropriated for the sponsoring Federal agency.

« Previous Continue »

Books

Patent Policy: Hearings Before the Subcommittee on Science ..., Part 1