"governmental purposes", and therefore, that phrase no longer appears in the Policy Statement. SECTION 1(i) (i) Whenever the principal or exclusive rights in an invention are acquired by the Government, there may be reserved to the contractor a revocable or irrevocable nonexclusive royalty-free license for the practice of the invention throughout the world; an agency may reserve the right to revoke such license so that it might grant an exclusive license when it determines that some degree of exclusivity may be necessary to encourage further development and commercialization of the invention. Where the Government has a right to acquire the principal or exclusive rights to an invention and does not elect to secure a patent in a foreign country, the Government may permit the contractor to acquire such rights in any foreign country in which he elects to secure a patent, subject to the Government's rights set forth in Section 1(h). Comments.-The license rights of the Government and the contractor originally set forth in Sections 1 (a), (b), (c), (e), (f), (g), and (h) are now set forth in Sections 1 (h) and (i). Section 1(i) covers the situation where the principal or exclusive rights are acquired by the Government. Section 1(i) defines the rights that may be retained by the contractor where the Government acquires the principal or exclusive rights. The language does not require an agency to give the contractor an irrevocable license, as those agencies interested in conducting a licensing program, including the granting of limited exclusive licenses, wanted to retain authority to revoke the contractor's nonexclusive license if he failed to work the invention and others were willing to do so on an exclusive license basis. SECTION 2 Section 2.-Under regulations prescribed by the Administrator of General Services, Government-owned patents shall be made available and the technological advances covered thereby brought into being in the shortest time possible through dedication or licensing, either exclusive or nonexclusive, and shall be listed in official Government publications or otherwise. Comments.-Section 2 has been amended to insure that the licensing recommended in this section is interpreted as being broad enough to include some form of exclusive as well as nonexclusive rights. The Harbridge House Study clearly showed that there are circumstances under which some degree of exclusivity will be necessary in order to achieve commercial utilization of some inventions. A provision has been added for the Administrator of General Services to issue Government-wide comprehensive patent licensing regulations for essential uniformity of policies, procedures, and practices by Federal agencies. SECTION 3 Section 3. The Federal Council for Science and Technology in consultation with the Department of Justice shall prepare at least annually a report concerning the effectiveness of this policy, including recommendations for revision or modification as necessary in light of the practices and determinations of the agencies in the disposition of patent rights under their contracts. [A Patent Advisory Panel is to be established under] The Federal Council for Science and Technology shall continue to (a) develop by mutual consultation and coordination with the agencies common guidelines for the implementation of this policy, consistent with existing statutes, and to provide overall guidance as to disposition of inventions and patents in which the Government has any right or interest; and (b) [encourage the acquisition of data by] acquire data from the Government agencies on the disposition of patent rights to inventions resulting from federally financed research and development and on the use and practice of such inventions to serve as basis for policy review and development; and (c) make recommendations for advancing the use and exploitation of Government-owned domestic and foreign patents. Each agency shall record the basis for its actions with respect to inventions and appropriate contracts under this statement. Comments. Responsibility for administering the policy statement has been placed directly on the Federal Council for Science and Technology; the acquisition of data from agencies is specifically required with respect to the disposition of patent rights to inventions; and the requirement is placed on each agency to establish necessary records of its actions under the policy statement. SECTION 4(a) (a) Government agency-includes any executive department, independent commission, board, office, agency, administration, authority, Government corporation, or other Government establishment of the executive branch of the Government of the United States of America. Comments.-The words "Government corporation" were added to the definition of Government agency to insure that the license reserved to the United States under Section 1(h) would include a Government corporation. SECTION 4(b) | (b) States-means the States of the United States, the District of Columbia, Puerto Rico, the Virgin Islands, American Samoa, Guam, and the Trust Territory of the Pacific Islands. Comments. This definition has been added to clarify the meaning of the word "State" appearing in revised Section 1(h). The definition was added since it was considered useful in defining the scope of the license coverage running to the States. SECTION 4(f) [(f) Governmental purpose-means the right of the Government of the United States (including any agency thereof, State, or domestic municpal government) to practice and have practiced (make or have made, use or have used, sell or have sold) throughout the world by or on behalf of the Government of the United States.] Comments. The term "governmental purposes" appears in Section 1(h) of the 1963 Presidential Policy Statement. Since Section 1(h) has been revised and no longer contains this phrase, the definition has been canceled. Section 4 paragraphs (b), (c), (d), and (e) have been renumbered (c), (d), (e), and (f), respectively. Part B-Federal Patent Regulations Following the issuance of the 1971 Presidential patent policy statement, regulations were promulgated by the Administrator of General Services in August 1973. After unsuccessful court challenge and the invitation for extensive public comments the regulations were revised and reissued in May 1975. These regulations are intended to provide for standard patent rights clauses for use by all the Government agencies. Title 41-Public Contracts and Property Management (Published Federal Register, vol. 40, No. 89, May 7, 1975) PART 1-9-PATENTS, DATA, AND COPYRIGHTS ALLOCATION OF RIGHTS IN INVENTIONS This amendment of the Federal Procurement Regulations makes changes in Subpart 1-9.1, Patents, which was published in the Federal Procurement Regulations (38 FR 23782, September 4, 1973). The regulations were developed in cooperation with the Committee on Government Patent Policy, Federal Council for Science and Technology. The regulations implement the revised Presidential Statement on Government Patent Policy (36 FR 16887, August 26, 1971). As originally published, interested parties were invited to submit comments. This opportunity to comment was considered appropriate, since the draft which was originally furnished for comment was extensively modified and enlarged. On February 28, 1974, the effective date provision of the regulations was canceled. The regulations now have been revised in the light of the comments received and a new effective date has been established. The table of contents for Part 1-9 is amended by the addition of the following new entries: 1-9.109-5 Conveyance of invention rights acquired by the Government. 1-9.109-6 Retention of greater rights. (25) Subpart 1-9.1 is revised as follows: SUBPART 1-9.1-PATENTS § 1-9.100 Scope of subpart. This subpart sets forth policies, procedures, and contract clauses with respect to inventions made in the course of or under a contract or subcontract entered into with or for the benefit of the Government where a purpose is the conduct of experimental, developmental, or research work. The policies, procedures, and contract clauses may also be used in grants, agreements, and other arrangements as agencies deem appropriate. §§ 1-9.101-1-9.106 [Reserved] § 1-9.107 Patent rights under contracts for research and development. § 1-9.107-1 General. (a) Introduction. On August 23, 1971, the President issued a Statement of Government Patent Policy (36 FR 16887, August 26, 1971) applicable to all executive departments and agencies, revising a prior Statement of Policy (28 FR 10943, October 12, 1963). Essentially, the goals of this statment are to provide criteria for determining the allocation of rights in inventions resulting from federally sponsored research and development contracts, to promote their expeditious development so that the public can benefit from early civilian use of the inventions, and to ensure their continued availability. In applying this regulation, agency heads must weigh both the need for incentives to draw forth private initiatives, and the need to promote healthy competition in industry. Consistent with the FPR system, agencies may implement and supplement this subpart. (b) Applicable statutes. Except to the extent that agencies are governed by specific statutes or by any treaty or agreement between the United States and any foreign country that are inconsistent with this subpart, agencies shall follow the provisions of this subpart, including the use of the prescribed clauses. Modifications to the prescribed clauses are permissible to the extent that these clauses are inconsistent with the requirements of statutes, treaties, or agreements. (c) Co-sponsored, cost sharing, or joint venture research. The provisions of this subpart are not mandatorily applicable to co-sponsored, cost sharing, or joint venture research when the agency determines that in the course of the work under the contract the contractor will be required to make a substantial contribution of funds, facilities, or equipment to the principal purpose of the contract. However, agencies are encouraged to follow the provisions of this subpart to the extent practicable. (d) Background patent rights. Nothing in this subpart is intended to preclude the use of appropriate contract provisions concerning rights in contractor's background patents. § 1-9.107-2 [Reserved] |