Part C-Executive Orders

Two Executive Orders relating to patent policy were issued by President Truman. The first concerns the filing for patents when inventions arise out of scientific and technical research carried on by or for the Government. The second deals more specifically with the problem of a uniform patent policy when inventions are made by government employees.

EXECUTIVE ORDER 9865

(Code of Federal Regulations, Title 3-The President, 1943-48. Compilation, pp. 651–652.)

(As amended by sec. 5 of Executive Order 10096)

1

PROVIDING FOR THE PROTECTION ABROAD OF INVENTIONS RESULTING FROM RESEARCH FINANCED BY THE GOVERNMENT

Whereas the Government of the United States now has and will hereafter acquire title to, or the right to file foreign patent applica tions for, numerous inventions arising out of scientific and technical research carried on by or for the Government; and

Whereas it is in the interest of the United States to acquire patent protection abroad on certain inventions resulting from Governmentfinanced research; and

Whereas it is in the interest of the Government to foster, promote, and develop the foreign commerce of the United States:

Now, therefore, by virtue of the authority vested in me as President of the United States by the Constitution and statutes, and as Commander in Chief of the Army and Navy, and in the interest of the foreign affairs functions of the United States and the internal management of the Government, it is hereby ordered as follows:

1. All Government departments and agencies shall, whenever practicable, acquire the right to file foreign patent applications on inventions resulting from research conducted or financed by the Government.

2. All Government departments and agencies which have or may hereafter acquire title to inventions, or the right to file patent applications abroad thereon, shall fully and continuously inform the [De

1 Sec. 5 of Executive Order 10096:

"5. The functions and duties of the Secretary of Commerce and the Department of Commerce under the provisions of Executive Order No. 9865 of June 14, 1947, are hereby transferred to the Chairman and the whole or any part of such functions and duties may be delegated by him to any Government agency or officer: Provided, That said Executive Order No. 9865 shall not be deemed to be amended or affected by any provision of this Executive order other than this paragraph 5.

*

"THE WHITE HOUSE, January 23, 1950."

*

"HARRY S. TRUMAN.

partment of Commerce] Chairman of the Government Patents Board concerning such inventions, except as provided in section 6 hereof, and shall make recommendations to the [Department of Commerce] Chairman of the Government Patents Board as to which of such inventions should receive patent protection by the United States abroad and the foreign jurisdictions in which such patent protection should be sought. The recommendations of such departments and agencies shall indicate the immediate or future industrial, commercial or other value of the invention concerned, including its value to public health. 3. The [Department of Commerce] Chairman of the Government Patents Board shall determine whether, and in what foreign jurisdictions, the United States should seek patents for such inventions and to the extent of appropriations available therefor, shall procure patent protection for such inventions, taking all action, consistent with existing law, necessary to acquire and maintain patent rights abroad. Such determinations of the [said Department] Chairman of the Government Patents Board shall be made after full consultation, with United States industry and commerce, with the Department of State, and with other Government agencies familiar with the technical, scientific, industrial, commercial or other economic or social factors affecting the invention involved, and after consideration of the availability of valid patent protection in the countries determined to be immediate or potential markets for, or producers of, products, processes, or services covered by or relating to the invention.

4. The [Department of Commerce] Chairman of the Government Patents Board shall administer foreign patents acquired by the United States under the terms of this order and shall issue licenses thereunder in accordance with law under such rules and regulations as the [Secretary of Commerce] Chairman of the Government Patents Board shall prescribe. Nationals of the United States shall be granted licenses on a nonexclusive royalty-free basis except in such cases as the [Secretary] Chairman shall determine and proclaim it to be inconsistent with the public interest to issue such licenses on a nonexclusive royalty-free basis.

5. The Department of State, in consultation with the [Department of Commerce] Chairman of the Government Patents Board, shall negotiate arrangements among governments under which each government and its nationals shall have access to the foreign patents of the other participating governments. Patents relating to matters of public health may be licensed by the [Secretary of Commerce] Chairman of the Government Patents Board, with the approval of the Secretary of State, to any country or its national upon such terms and conditions as are in accordance with law and as the [Secretary of Commerce] Chairman of the Government Patents Board determines to be appropriate, regardless of whether such country is a party to the arrangements provided for in this section.

6. There shall be exempted from the provisions of this order (a) all inventions within the jurisdiction of the Atomic Energy Commission except in such cases as the said Commissions specifically authorizes the inclusion of an invention under the terms of this order; and (b) all other inventions officially classified as secret or confidential for reasons of the national security. Nothing in this order shall supersede the

declassification policies and procedures established by Executive Orders Nos. 9568 of June 8, 1945, 9604 of August 25, 1945, and 9809 of December 12, 1946.

THE WHITE HOUSE, June 14, 1947.

HARRY S. TRUMAN.

EXECUTIVE ORDER 10096

(Code of Federal Regulations, Title 3-The President, 1949-53. Compilation on pp. 292–294.)

PROVIDING FOR A UNIFORM PATENT POLICY FOR THE GOVERNMENT WITH RESPECT TO INVENTIONS MADE BY GOVERNMENT EMPLOYEES AND FOR THE ADMINISTRATION OF SUCH POLICY

Whereas inventive advances in scientific and technological fields frequently result from governmental activities carried on by Government employees; and

Whereas the Government of the United States is expending large sums of money annually for the conduct of these activities; and

Whereas these advances constitute a vast national resource; and Whereas it is fitting and proper that the inventive product of functions of the Government, carried out by Government employees, should be available to the Government; and

Whereas the rights of Government employees in their inventions should be recognized in appropriate instances; and

Whereas the carrying out of the policy of this order requires appropriate administrative arrangements:

Now, therefore, by virtue of the authority vested in me by the Constitution and statutes, and as President of the United States and Commander in Chief of the armed forces of the United States, in the interest of the establishment and operation of a uniform patent policy for the Government with respect to inventions made by Government employees, it is hereby ordered as follows:

1. The following basic policy is established for all Government agencies with respect to inventions hereafter made by any Government employee:

(a) The Government shall obtain the entire right, title, and interest in and to all inventions made by any Government employee (1) during working hours, or (2) 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) which bear a direct relation to or are made in consequence of the official duties of the inventor.

(b) In any case where the contribution of the Government, as measured by any one or more of the criteria set forth in paragraph (a) last above, to the invention is insufficient equitably to justify a requirement of assignment to the Government of the entire right, title and interest to such invention, or in any case where the Government has insufficient interest in an invention to obtain entire right, title and interest therein (although the Government could obtain same

under par. (a), above), the Government agency concerned subject to the approval of the Chairman of the Government Patents Board (provided for in par. 3 of this order and hereinafter referred to as the Chairman), shall leave title to such invention in the employee, subject, however, to the reservation to the Government of a nonexclusive, irrevocable, royalty-free license in the invention with power to grant licenses for all governmental purposes, such reservation, in the terms thereof, to appear where practicable, in any patent, domestic or foreign, which may issue on such invention.

(c) In applying the provisions of paragraphs (a) and (b), above, to the facts and circumstances relating to the making of any particular invention, it shall be presumed that an invention made by an employee who is employed or assigned (i) to invent or improve or perfect any art, machine, manufacture, or composition of matter (ii) to conduct or perform research, development work, or both, (iii) to supervise, direct, coordinate, or review Government financed or conducted research, development work, or both, or (iv) to act in a liaison capacity among governmental or nongovernmental agencies or individuals engaged in such work, or made by an employee included within any other category of employees specified by regulations issued pursuant to section 4(b) hereof, falls within the provisions of paragraph (a), above, and it shall be presumed that any invention made by any other employee falls within the provisions of paragraph (b), above. Either presumption may be rebutted by the facts or circumstances attendant upon the conditions under which any particular, invention is made and, notwithstanding the foregoing, shall not preclude a determination that the invention falls within the provisions of paragraph (d) next below.

(d) In any case wherein the Government neither (1) pursuant to the provision of paragraph (a) above, obtains entire right, title, and interest in and to an invention nor (2) pursuant to the provisions of paragraph (b) above, reserves a nonexclusive, irrevocable, royalty-free license in the invention with power to grant licenses for all governmental purposes, the Government shall leave the entire right, title, and interest in and to the invention in the Government employee subject to law.

(e) Actions taken, and rights acquired, under the foregoing provisions of this section, shall be reported to the Chairman in accordance with procedures established by him.

2. Subject to considerations of national security, or public health, safety or welfare, the following basic policy is established for the collection, and dissemination to the public, of information concerning inventions resulting from Government research and development activities:

(a) When an invention is made under circumstances defined in paragraph 1(a) of this order giving the United States the right to title thereto, the Government agency concerned shall either prepare and file an application for patent therefor in the United States Patent Office or make a full disclosure of the invention promptly to the Chairman, who may, if he determines the Government interest so requires, cause application for patent to be filed or cause the invention to be fully disclosed by publication thereof: Provided, however, That, consistent with present practice of the Department of Agriculture, no application for patent shall, without the approval of the Secretary of