APPENDIX D Methodology The recommendations in this report, though differing in some instances from those of our Study Group 6-Pre-Contract Planning, are based on the work and study performed by that Group during the study phase of our efforts. That Study Group established a special task subgroup on Patents and Proprietary Data, with Mr. Leonard Rawicz, Assistant General Counsel for Patent Matters, National Aeronautics and Space Administration, serving as coordinator. The subgroup, in turn, was further divided into three task forces-Task Force #1 on the allocation of rights to inventions made in the performance of Government research and development contracts, Task Force #2 on private patent rights in Government procurement, and Task Force #3 on data. The membership of these task forces was as follows: 1 TASK FORCE #1 James L. Whittaker (Chairman) Senior Patent Counsel Radio Corporation of America William O. Quesenberry Norman J. Latker Chief, Patent Branch, BAL Office of the General Counsel Department of Health, Education, and Welfare John C. Green Research Staff PTC Research Institute James E. Denny Director, Office of Government Inventions and Patents United States Patent Office 1 The employment shown for each member is as of the date his task force submitted its report. R. Tenny Johnson Civil Aeronautics Board L. Lee Humphries Aerospace and Systems Group Attorney, Antitrust Division Joel Davidow (Alternate) Maurice H. Klitzman International Business Machines O. A. Neumann Executive Secretary FCST Committee on Government Patent Policy TASK FORCE #2 Edward O. Ansell (Chairman) Corporate Patent Counsel William J. Stellman Suite 2200 20 North Wacker Drive Chicago, Illinois 60606 Joseph E. Rusz Patents Division Office of Judge Advocate General Department of the Air Force Samuel C. Yeaton Vice President and Director of Patents Sperry Gyroscope Company Maxwell C. Freudenberg Patent Counsel Defense Supply Agency Vito J. DiPietro Trial Attorney-Patent Section Roland A. Anderson Assistant General Counsel for Patents Atomic Energy Commission John N. Hazelwood Patent Counsel The Garrett Corporation Edwin C. Mulcahy Assistant General Counsel Pharmaceutical Manufacturers Association TASK FORCE #3 Lawrence Glassman (Chairman) Chief, Patents Opinions Branch Patent Division Office of the General Counsel U.S. Army Materiel Command Wilson A. Gebhardt The Bendix Corporation Derek Lawrence Patent Counsel Aircraft Engine Group Patent Liaison Department of the Navy Hughes Aircraft Company Harold P. Deeley Patent Attorney Office of General Counsel Federal Aviation Administration Department of Transportation Walter J. Jason Patent Counsel McDonnell Douglas Corp. Marvin F. Matthews Patent Counsel NASA Manned Spacecraft Center These task forces studied, met, debated, and ultimately submitted reports to Study Group 6 with their findings and recommendations. On the basis of these reports and a two-day public meeting held in Washington, D.C., on July 29-30, 1971, at which presentations were made by representatives of industry, the university community, Government agencies, professional societies, and publishing houses, Study Group 6 prepared and submitted recommendations in the patents and data areas to the Commission as part of its final report. An oral presentation of these was also made to the Commission. After this presentation, the Study Group's recommendations were further considered by the Commission at several meetings. Thus our final conclusions and recommendations emerged. Though we have not adopted certain of the Study Group's recommendations, to varying degrees most of their recommendations are incorporated in ours. APPENDIX E List of Recommendations 1. Implement the revised Presidential Statement of Government Patent Policy promptly and uniformly. 2. Enact legislation to make clear the authority of all agencies to issue exclusive licenses under patents held by them. 3. Supplement the Presidential policy by the adoption of uniform procedures for application of the rights reserved to the Government under the policy. 4. Amend 28 U.S.C. § 1498 to make authorization and consent automatic in all cases except where an agency expressly withholds its authorization and consent as to a specific patent. 5. Amend agency regulations and clauses to provide that all contractual warranties against patent infringement be provided by specific contractual language and not by implication. 6. Authorize all agencies to settle patent infringement claims out of available appropriations prior to the filing of suit. 7. Grant all agencies express statutory authority to acquire patents, applications for patents, and licenses or other interests thereunder. 8. Give the United States District Courts concurrent jurisdiction with the Court of Claims for suits brought pursuant to 28 U.S.C. § 1498 subject to the jurisdictional amount under the Tucker Act. 9. Amend or repeal statutes limiting agency flexibility concerning rights in technical data. 10. Undertake, through the Federal Council for Science and Technology in coordination with the Office of Federal Procurement Policy, to develop and evaluate the implementation of a statement of Government policy on rights in technical data supplied under Government contracts. Give specific consideration to the relationships between prime contractors and subcontractors. 11. Authorize agencies to acquire information and data. 12. Undertake, through the Federal Council for Science and Technology in coordination with the Office of Federal Procurement Policy, to develop and evaluate the implementation of a statement of Government policy on the treatment of data submitted with proposals or other related communications. 13. Establish a remedy for the misuse of information supplied to the Government in confidence. 14. Amend or repeal statutes limiting agency flexibility in dealing with the publication of works developed under Government contracts. 15. Enact legislation giving all agencies authority to acquire private copyrights or interests therein. 16. Establish an interagency task force under the lead of the Office of Federal Procurement Policy to develop and evaluate the implementation of a statement of Government copyright policy. APPENDIX F Acronyms AEC APA BOB CFR DOD DOT F.2d GAO GPO GSA NASA NASA PR NASA PRD OMB P.L. R&D U.S.C. U.S.P.Q. Atomic Energy Commission Administrative Procedure Act Armed Services Procurement Regulation Code of Federal Regulations Department of Transportation General Services Administration National Aeronautics and Space Administration National Aeronautics and Space Administration Procurement Regulations Office of Management and Budget Research and Development United States Code United States Patent Quarterly |