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§ 19.1 Definitions.
As used in this part:
(a) “Department invention” means an invention covered by a patent or patent application assigned to the Government as represented by the Secretary of Agriculture or in the custody of the Secretary for administrative purposes.
(b) “To the point of practical application" means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine and under such conditions as to establish that the invention is being worked and that its benefits are reasonably accessible to the public.
(c) “To practice an invention" means to make, use, or sell any embodiment of the invention, or to use the process where the invention is a process.
(d) “Secretary” means the Secretary of Agriculture or his designee.
(e) “Administrator" means the Administrator of the Agricultural Research Service or his designee.
(f) "Government” means the Government of the United States of America.
(g) "Appeals Board” means a board appointed by the Secretary to hear an appeal made pursuant to this part.
(h) "Licensee" means the person, firm, or entity granted a license under a Department invention. & 19.2 Purpose and policy.
This part sets forth the procedures for licensing Department inventions. Department inventions serve the interests of the Government by being developed to the point of practical application. It is the policy of the Department of Agriculture to encourage this by all suitable means, including the granting of licenses. Any Department invention will normally be made available to responsible applicants. Licenses will be granted on terms and conditions considered to be the most favorable to the public interest. The public interest will in most instances be best served by the granting of nonexclusive royalty-free licenses, but in other instances the incentive offered by an exclusive license may be needed for speedy development and commercial adoption of the Department invention. In selecting licensees and types of licenses, due consideration will be given to the impact on general policies of the Gov
ernment and the Department of Agriculture (e.g., rural area development, environmental quality, export market development). § 19.3 Types of licenses.
· Either nonexclusive or exclusive licenses under Department inventions may be issued by the Administrator. The Administrator, in the case of each Department invention made available for licensing, shall determine in accordance with this part which type shall be granted. The Administrator shall have published, in the FEDERAL REGISTER and the Official Gazette of the U.S. Patent Office, lists of Department inventions available for each type of license, including abstracts and technical information where appropriate, and shall keep such lists current. The listing of a Department invention as available for an exclusive license shall not preclude consideration of an application for a nonexclusive license for such invention if an exclusive license is not yet in effect. $ 19.4 Nonexclusive licenses.
(a) A Department invention shall be made available for nonexclusive licenses if the Administrator determines (1) that the invention has already been developed to, or substantially to, the point of practical application, and (2) that the incentive of an exclusive license is unnecessary to complete the development of the invention.
(b) The period of a nonexclusive license shall be the life of the patent, unless revoked as provided in this part.
(c) The license shall extend to subsidiaries and affiliates of the licensee, but shall be nontransferable except to the successor of that part of the licensee's business to which the invention pertains.
(d) The license shall reserve to the Administrator the right to require the licensee to submit reports not more often than annually on his efforts to practice the invention. The reports shall contain information within his knowledge, or which he may acquire under normal business practices, pertaining to the commerical use being made of the invention, and such other information relating to the license and invention as the Administrator determines pertinent.
(e) No royalties shall be charged on nonexclusive licenses.
$ 19,5 Exclusive licenses.
(a) Basic requirements. A Department invention shall be made available for an exclusive license only if
(1) The Administrator determines that:
(i) The invention has not already been developed to, or substantially to, the point of practical application,
(ii) The invention is not likely to be developed to such point by the Government or by means of nonexclusive licenses under the invention, and
(iii) The granting of an exclusive license will substantially accelerate its development to the point of practical application; or
(2) The Administrator determines that an invention made available for nonexclusive licenses at least 1 year previously, on the basis that it had been developed substantially to the point of practical application, has not been brought to the point of practical application, and that the granting of an exclusive license is necessary to completion of the development of the invention.
(3) With respect to both subparagraphs (1) and (2) of this paragraph, the following must also be complied with before the Administrator issues an exclusive license:
(i) At least 60 days notice by publication in the FEDERAL REGISTER and the Official Gazette of the Patent Office must have been given of the availability of the Department invention for an exclusive license;
(ii) At least 30 days notice by publication in the FEDERAL REGISTER and the Official Gazette of the Patent Office must have been given of the initial selection of the licensee, and final decision must have been rendered with respect to any application or protest filed pursuant to this part as a result thereof.
(b) Matter for consideration in selecting licensee. The Administrator, in selecting an exclusive licensee, shall take into consideration any factors deemed pertinent by him, including:
(1) Capability of applicants;
(3) Whether applicants' businesses are located in a low-income rural area, labor-surplus area, or in an area designated by the Government as economically depressed;
(4) Whether the applicants have previously demonstrated interest in the
invention by obtaining a nonexclusive license on it; and
(5) Whether applicants are U.S. citizens, or, in the case of a corporation, whether at least 51 percent of the stock is owned by U.S. citizens, and whether it is controlled by such citizens.
(c) Terms and conditions. The following shall be applicable with respect to exclusive licenses:
(1) The license may be granted to practice an invention in a limited or unlimited field of use either throughout the United States of America, its territories and possessions, or in only a part thereof.
(2) The period for the license will be negotiated; however, it will not extend for more than 5 years, except in unusual cases as determined by the Administrator. The period of the license shall not include the terminal portion of the patent, as determined by the Administrator.
(3) The license shall require the licensee to develop the invention, and thereafter to offer its benefits for the remaining period of the license to the public in accordance with a plan approved by the Administrator. Such plan may include fixing by the Administrator of the maximum price of sale.
(4) The license may require the payment of royalties when determined by the Administrator to be in the public interest.
(5) The license shall be subject to an irrevocable, nontransferable, royaltyfree right of the Government to practice the invention by or on behalf of the Government, or any foreign government, international organization, or group of nations, pursuant to any treaty or agreement.
(6) The license shall reserve to the Government the right to 'require the granting of a sublicense on terms that are reasonable in the circumstances, including royalty-free, as determined by the Administrator to the extent that the invention is required for public use by Government regulations or as may be necessary to fulfill health needs, or for other public purposes stipulated in the license.
(7) The license shall be subject to any rights of third parties established or derived directly or indirectly from a nonexclusive license previously granted under the invention.
(8) The license shall be nontransferable except to the successor of that part
of the licensee's business to which the cision shall be final and conclusive unless invention pertains.
appealed as provided in this part. (9) The licensee, subject to approval (e) Exception to exclusivity. Unless of the Administrator, may grant sub- the exclusive license specifically limits licenses, subject to the conditions of the the authority of the Administrator to do license. Each sublicense shall refer to the so, the Administrator may issue a nonrights retained by the Government under exclusive license under a Department inthe license and a copy of each sublicense vention which is the subject of an shall be furnished to the Administrator. exclusive license if he determines it in
(10) The license shall require the li- the public interest in connection with: censee to submit reports not more often (1) Settlement of an interference with than annually on his efforts to practice respect to such invention; or the invention. The reports shall contain (2) Obtaining the release of a claim of information within his knowledge, or infringement with respect to such inwhich he may acquire under normal busi- vention; or ness practices, pertaining to the com- (3) An exchange for a license to the mercial use being made of the invention, Government under adversely held patand such other information relating to ents, including improvement patents the license and invention as the Admin- and inventions, relating to such invenistrator determines pertinent.
tion. (d) After initial selection of an ex- (f) Litigation. An exclusive licensee clusive licensee, notice thereof shall be shall, during the period of the license, published in the FEDERAL REGISTER and have the right to sue at his own exthe Official Gazette of the U.S. Patent pense infringers of the licensed patent. Office. Such notice shall include identifi- The licensee may join the Government, cation of the Department invention, upon its consent, as a party complainant identification of the contemplated li- in such a suit, but without expense to the censee, the period of the contemplated Government, and the licensee shall pay license, a summary statement of the all costs, and any final judgment or determs and conditions of the contem- cree that may be rendered against itself plated license, and a statement that the or the Government as a result of such license will be granted unless:
suit. If, as a result of any litigation, the (1) A nonexclusive licensee of the in- licensed patent is declared invalid, the vention files a protest with the Admin- licensee shall be relieved from any furistrator within 30 days after such ther obligation under the license. publication, stating that he has already brought or is likely to bring the inven
§ 19.6 Application for licenses. tion to the point of practical applica- (a) Nonexclusive licenses. An application without an exclusive license, and tion for a nonexclusive license under a submitting documentation in support Department invention shall be addressed thereof; or
to the Administrator, and shall include: (2) An application for nonexclusive
(1) The name and address of the license on such invention is filed with applicant; the Administrator within 30 days after
(2) The identity of the invention; such publication and such application
(3) A request for a nonexclusive li
cense on such invention; and states that the applicant is likely to bring
(4) The purpose for which the license the invention to the point of practical
is desired. application without an exclusive license,
(b) Exclusive licenses. An application and contains documentation in support
for an exclusive license under a Departthereof; or
ment invention shall be addressed to the (3) A protest is filed by any person
Administrator, and shall include: with the Administrator within 30 days
(1) The name and address of the apafter such publication, setting forth
plicant, the type of business engaged in, reasons why it would not be in the public
and information as to the nationality of interest to grant the proposed exclusive
the applicant, or, in the case of corpolicense.
ration, whether at least 51 percent of the The Administrator shall make a decision stock is owned by citizens of the United with respect to any such application or States, and whether it is controlled by protest under subparagraphs (1), (2), such citizens; and (3) of this paragraph, which de- (2) The identity of the invention;
(3) A request for an exclusive license the article, this cannot be done, the on such invention;
article shall have fixed to it or to the (4) The purpose for which the license package wherein one or more of them is desired;
are contained, a label containing a like (5) A description of applicant's capa- notice. bilities to undertake the industrial and market development required to develop
§ 19.8 Revocation of licenses. the invention to the point of practical (a) Licenses and sublicenses thereapplication;
under may be revoked at any time by the (6) The time and expenditure which Administrator if the Administrator the applicant estimates is required to de- determines that: velop the invention to the point of prac- (1) The licensee or a sublicensee has tical application, and a statement of the made any false report or committed a applicant's intention to invest that sum breach of any covenant, agreement, or of money in development of the inven- requirement contained in the license or tion if the license is granted;
in this part; or (7) The amount which the applicant (2) Satisfactory progress has not been considers to be a fair return on his ex- made in developing the invention to the penditure under the license;
point of practical application; or (8) The period of exclusive license (3) There has been nonuse of the which the applicant believes to be the license. minimum necessary to give a reasonable
§ 19.9 Reissuance. expectation of said fair return; (9) Whether the applicant would be
A license, including a revoked or exwilling to accept an exclusive license to pired license, may be reissued upon the practice the invention in a limited field licensee showing to the satisfaction of of use and for a geographical area less
the Administrator that he has developed than the entire United States of the invention, or is likely to develop the America, its territories and possessions.
invention, to the point of practical appliIf so, define the geographic portion
cation within a reasonable period. Reand/or limited field of use; and
quests must be made to the Administrator (10) Any other facts which the appli
prior to or within 30 days after the excant believes would show it to be in the piration or revocation of the license, or interests of the Government to grant an
such longer period as the Administrator exclusive license to the applicant.
may fix for good cause shown in writing. (c) Fees. Each application for an
The Administrator may require, as a exclusive license must be accompanied
condition of the reissuance, that the by a certified or cashier's check, or bank
licensee develop the invention to the or other recognized money order, in point of practical application within a the amount of One Hundred Dollars specified period. ($100.00). Such fee is for the purpose of § 19.10 Disputes. partially covering administrative expenses of issuing the license. The fee will
Any dispute arising under a license be refunded in full if the applicant is
which is not disposed of by mutual agreenot granted the license.
ment shall be decided by the Administra
tor who shall reduce his decision to writ§ 19.7 Advertising and marking.
ing and mail or otherwise furnish a copy (a) No advertising shall refer to the thereof to the licensee. His decision shall license, the Department of Agriculture,
be final and conclusive, unless within 30 or the Government.
days after receipt thereof, or such longer (b) An exclusive license shall require period as the Secretary may determine, the licensee to mark the article made the licensee mails or otherwise furnishes under the license by fixing thereon the to the Administrator a written appeal word "patent" or the abbreviation addressed to the Secretary of "pat.”, together with the number or Agriculture. numbers of such patent or patents as may be applicable. Likewise, where
§ 19.11 Decisions on refusal to issue or applicable, the words "patent applied
reissue licenses and revocations. for" or the abbreviation “pat. appl.”
Any decision by the Administrator together with the number or numbers of pursuant to § 19.5(d) in connection with such applications shall be marked on issuance of an exclusive license, any the article. When, from the character of revocation by the Administrator of a
license or a sublicense pursuant to g 19.8, resentative for Trade Negotiations. The and any decision by the Administrator regulations are to assist in carrying out refusing a request pursuant to $ 19.9 for bilateral agreements negotiated pursuant reissuance of a license, shall be reduced to section 204 of the Agricultural Act of to writing. The Administrator shall mail 1956, as amended, with governments of or otherwise furnish a copy of his deci- foreign countries limiting the export sion to the applicant, licensee, sub- from the respective countries and the licensee, or protestant. His decision shall importation into the United States of be final and conclusive, unless within 30 meat. By E.O. 11539, dated June 30, days after receipt thereof, or such 1970, the Secretary of Agriculture was longer period as the Secretary may deter- authorized, with the concurrence of the mine, the applicant, licensee, sublicensee, Secretary of State and the Special Repor protestant mails or otherwise fur- resentative for Trade Negotiations, to nishes to the Administrator a written issue regulations governing the entry or appeal addressed to the Secretary of withdrawal from warehouse for conAgriculture.
sumption in the United States of meat $ 19.12 Appeals.
to carry out such bilateral agreements
and to request the Commissioner of Any person filing an appeal pursuant Customs to implement such action. to $ 19.10 or $ 19.11 shall be afforded an
$ 20.2 Definitions. opportunity to be heard before an Appeals Board, and to offer evidence in The following terms shall have the support of his appeal. The procedures to
meaning set forth in this section: be followed in any such matter shall be
(a) "Meat” means fresh, chilled, or determined by the Secretary of Agricul
frozen cattle meat (item 106.10 of the ture. The Appeals Board shall make find
Tariff Schedules of the United States) ings of fact and recommendations with
and fresh, chilled, or frozen meat of respect to disposition of the appeal. The
goats and sheep, except lambs (item decision on the appeal shall be made by
106.20 of the Tariff Schedules of the the Secretary of Agriculture, and such
United States). decision shall be final and conclusive.
(b) "United States" means the 50
States of the United States, the District $ 19.13 Mailing address.
of Columbia, and Puerto Rico. All applications, requests for informa
8 20.3 Restrictions. tion, appeals, and any other matter relating to this part, should be mailed to
(a) Transshipment. No meat which is the Administrator, Agricultural Research
the product of Australia, New Zealand,
or Ireland may be entered, or withdrawn Service, U.S. Department of Agriculture, Washington, D.C. 20250.
from warehouse, for consumption in the
United States during the remainder of PART 20-LIMITATION ON IMPORTS
the calendar year 1970, except direct
shipments of such meat destined to the OF MEAT
United States on an original through Subpart-Section 204 Import
bill of lading. Appendix A? hereto sets Regulations
forth a letter to the Commissioner of Sec.
Customs dated July 1, 1970, from the 20.1 General.
Secretary of Agriculture requesting that 20.2 Definitions.
this limitation be placed in effect. 20.3 Restrictions.
(b) Imports from Honduras. No more 20.4 Effective date.
than 15.3 million pounds of meat which AUTHORITY: The provisions of this subpart
is the product of Honduras may be enissued pursuant to section 204 of the Agri- tered, or withdrawn from warehouse, for cultural Act of 1956, as amended (7 U.S.C. consumption in the United States during 1854, and E.O. 11539.
the calendar year 1970. Appendix B? SOURCE: The provisions of this Part 20
hereto sets forth a letter to the Commisappear at 35 F.R. 10837, July 7, 1970, unless sioner of Customs dated July 17, 1970, otherwise noted.
from the Secretary of Agriculture, con§ 20.1 General.
curred in by the Secretary of State and
the Special Représentative for Trade The regulations set forth in this sub
Negotiations, requesting this limitation part are issued by the Secretary of Agri
be placed in effect. culture, with the, concurrence of the Secretary of State and the Special Rep- 1 See footnote on page 247.