§ 5908. Patents and inventions

Footnotes

1. 1 So in original. Probably should be a comma.

Legislative history

Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.

1. 1974

   Pub. L. 93–577 § 9 · 88 Stat. 1878

   Enacted · 42 U.S.C. § 5908

   Pub. L. 93–577, § 9, Dec. 31, 1974, 88 Stat. 1887

   Source evidence

   Code source credit
   Pub. L. 93–577, § 9, Dec. 31, 1974, 88 Stat. 1887

   Enacted provision · exact public law section
   Sec. 9. (a) Whenever any invention is made or conceived in the 42 USC 5908. course of or under any contract of the Administration, other than nuclear energy research, development, and demonstration pursuant to the Atomic Energy Act of 1954 (42 U.S.C. 2011 et seq.) and the Administrator determines that— (1) the person who made the invention was employed or assigned to perform research, development, or demonstration work and the invention is related to the work he was employed or assigned to perform, or that it was within the scope of his employment duties, whether or not it was made during working hours, or with a contribution by the Government of the use of Government facilities, equipment, materials, allocated funds, information proprietary to the Government, or services of Government employees during working hours; or (2) the person who made the invention was not employed or assigned to perform research, development, or demonstration work, but the invention is nevertheless related to the contract or to the work or duties he was employed or assigned to perform, and was made during working hours, or with a contribution from the Government of the sort referred to in clause (1). title to such invention shall vest in the United States, and if patents on such invention are issued they shall be issued to the United States, unless in particular circumstances the Administrator waives all or any part of the rights of the United States to such invention in conformity with the provisions of this section. (b) Each contract entered into by the Administration with any person Report. shall contain effective provisions under which such person shall furnish promptly to the Administration a written report containing full and complete technical information concerning any invention, discovery, improvement, or innovation which may be made in the course of or under such contract. (c) Under such regulations in conformity with the provisions of Waiver of rights. this section as the Administrator shall prescribe, the Administrator may waive all or any part of the rights of the United States under this section with respect to any invention or class of inventions made or which may be made by any person or class of persons in the course of or under any contract of the Administration if he determines that the interests of the United States and the general public will best be served by such waiver. The Administration shall maintain a publicly available, periodically updated record of waiver determinations. In making such determinations, the Administrator shall have the following objectives: (1) Making the benefits of the energy research, development, and demonstration program widely available to the public in the shortest practicable time. (2) Promoting the commercial utilization of such inventions. (3) Encouraging participation by private persons in the Administration’s energy research, development, and demonstration program. (4) Fostering competition and preventing undue market concentration or the creation or maintenance of other situations inconsistent with the antitrust laws. (d) In determining whether a waiver to the contractor at the time of contracting will best serve the interests of the United States and the general public, the Administrator shall specifically include as considerations— (1) the extent to which the participation of the contractor will expedite the attainment of the purposes of the program; (2) the extent to which a waiver of all or any part of such rights in any or all fields of technology is needed to secure the participation of the particular contractor; (3) the extent to which the contractor’s commercial position may expedite utilization of the research, development, and demonstration program results; (4) the extent to which the Government has contributed to the field of technology to be funded under the contract; (5) the purpose and nature of the contract, including the intended use of the results developed thereunder; (6) the extent to which the contractor has made or will make substantial investment of financial resources or technology developed at the contractor’s private expense which will directly benefit the work to be performed under the contract; (7) the extent to which the field of technology to be funded under the contract has been developed at the contractor’s private expense; (8) the extent to which the Government intends to further develop to the point of commercial utilization the results of the contract effort; (9) the extent to which the contract objectives are concerned with the public health, public safety, or public welfare; (10) the likely effect of the waiver on competition and market concentration; and (11) in the case of a nonprofit educational institution, the extent to which such institution has a technology transfer capability and program, approved by the Administrator as being consistent with the applicable policies of this section. (e) In determining whether a waiver to the contractor or inventor of rights to an identified invention will best serve the interests of the United States and the general public, the Administrator shall specifically include as considerations paragraphs (4) through (11) of subsection (d) as applied to the invention and— (1) the extent to which such waiver is a reasonable and necessary incentive to call forth private risk capital for the development and commercialization of the invention; and (2) the extent to which the plans, intentions, and ability of the contractor or inventor will obtain expeditious commercialization of such invention. (f) Whenever title to an invention is vested in the United States, there may be reserved to the contractor or inventor— (1) a revocable or irrevocable nonexclusive, paid-up license for the practice of the invention throughout the world; and (2) the rights to such invention in any foreign country where the United States has elected not to secure patent rights and the contractor elects to do so, subject to the rights set forth in paragraphs (2), (3), (6), and (7) of subsection (h): Provided, That when specifically requested by the Administration and three years after issuance of such a patent, the contractor shall submit the report specified in subsection (h) (1) of this section. (g) (1) Subject to paragraph (2) of this subsection, the Administrator Licenses, regulations. shall determine and promulgate regulations specifying the terms and conditions upon which licenses may be granted in any invention to which title is vested in the United States. (2) Pursuant to paragraph (1) of this subsection, the Administrator Hearing. may grant exclusive or partially exclusive licenses in any invention only if, after notice and opportunity for hearing, it is determined that— (A) the interests of the United States and the general public will best be served by the proposed license, in view of the applicant’s intentions, plans, and ability to bring the invention to the point of practical or commercial applications; (B) the desired practical or commercial applications have not been achieved, or are not likely expeditiously to be achieved, under any nonexclusive license which has been granted, or which may be granted, on the invention; (C) exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth risk capital and expenses to bring the invention to the point of practical or commercial applications; and (D) the proposed terms and scope of exclusivity are not substantially greater than necessary to provide the incentive for bringing the invention to the point of practical or commercial applications and to permit the licensee to recoup its costs and a reasonable profit thereon: Provided, That, the Administrator shall not grant such exclusive or partially exclusive license if he determines that the grant of such license will tend substantially to lessen competition or result in undue concentration in any section of the country in any line of commerce to which the technology to be licensed relates. The Administration shall maintain a publicly available, periodically updated record of determinations to grant such licenses. (h) Each waiver of rights or grant of an exclusive or partially Waiver, terms and conditions. exclusive license shall contain such terms and conditions as the Administrator may determine to be appropriate for the protection of the interests of the United States and the general public, including provisions for the following: (1) Periodic written reports at reasonable intervals, and when specifically requested by the Administration, on the commercial use that is being made or is intended to be made of the invention. (2) At least an irrevocable, nonexclusive, paid-up license to make, use, and sell the invention throughout the world by or on behalf of the United States (including any Government agency) and States and domestic municipal governments, unless the Administrator determines that it would not be in the public interest to acquire the license for the States and domestic municipal governments. (3) The right in the United States to sublicense any foreign government pursuant to any existing or future treaty or agreement if the Administrator determines it would be in the national interest to acquire this right. (4) The reservation in the United States of the rights to the invention in any country in which the contractor does not file an application for patent within such time as the Administration shall determine. (5) The right in the Administrator to require the granting of a nonexclusive, exclusive, or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances, (A) to the extent that the invention is required for public use by governmental regulations, or (B) as may be necessary to fulfill health, safety, or energy needs, or (C) for such other purposes as may be stipulated in the applicable agreement. (6) The right in the Administrator to terminate such waiver or license in whole or in part unless the recipient of the waiver or license demonstrates to the satisfaction of the Administrator that he has taken effective steps, or within a reasonable time thereafter is expected to take such steps, necessary to accomplish substantial utilization of the invention. (7) The right in the Administrator, commencing three years after the grant of a license and four years after a waiver is effective as to an invention, to require the granting of a nonexclusive or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances, and in appropriate circumstances to terminate the waiver or license in whole or in part, following a hearing upon notice thereof to the public, upon a petition by an interested person justifying such hearing— (A) if the Administrator determines, upon review of such material as he deems relevant, and after the recipient of the waiver or license, or other interested person, has had the opportunity to provide such relevant and material information as the Administrator may require, that such waiver or license has tended substantially to lessen competition or to result in undue concentration in any section of the country in any line of commerce to which the technology relates; or (B) unless the recipient of the waiver or license demonstrates to the satisfaction of the Administrator at such hearing that he has taken effective steps, or within a reasonable time thereafter is expected to take such steps, necessary to accomplish substantial utilization of the invention. (i) The Administrator shall provide an annual periodic notice to Publication in Federal Register. the public in the Federal Register, or other appropriate publication, of the right to have a hearing as provided by subsection (h) (7) of this section, and of the availability of the records of determinations provided in this section. (j) The Administrator shall, in granting waivers or licenses, consider the small business status of the applicant. (k) The Administrator is authorized to take all suitable and necessary steps to protect any invention or discovery to which the United States holds title, and to require that contractors or persons who acquire rights to inventions under this section protect such inventions. (l) The Administration shall be considered a defense agency of the United States for the purpose of chapter 17 of title 35 of the United States Code. 35 USC 181. (m) As used in this section— Definitions. (1) the term “person” means any individual, partnership, corporation, association, institution, or other entity; (2) the term “contract” means any contract, grant, agreement, understanding, or other arrangement, which includes research, development, or demonstration work, and includes any assignment, substitution of parties, or subcontract executed or entered into thereunder; (3) the term “made”, when used in relation to any invention, means the conception or first actual reduction to practice of such invention; (4) the term “invention” means inventions or discoveries, whether patented or unpatented; and (5) the term “contractor” means any person having a contract with or on behalf of the Administration, (n) Within twelve months after the date of the enactment of this Report, Submittal to President and congressional committees. Act, the Administrator with the participation of the Attorney General, the Secretary of Commerce, and other officials as the President may designate, shall submit to the President and the appropriate congressional committees a report concerning the applicability of existing patent policies affecting the programs under this Act, along with his recommendations for amendments or additions to the statutory patent policy, including his recommendations on mandatory licensing, which he deems advisable for carrying out the purposes of this Act.

2. 1980

   Pub. L. 96–517 § 7(c) · 94 Stat. 3015

   Struck · 42 U.S.C. § 5908(g)

   Pub. L. 96–517 struck out subsec. (g) which related to licenses for inventions, promulgation of regulations specifying terms and conditions, criteria and procedures for grant of exclusive or partially exclusive licenses, and record of determinations

   Source evidence

   Code amendment note
   Subsec. (g). Pub. L. 96–517 struck out subsec. (g) which related to licenses for inventions, promulgation of regulations specifying terms and conditions, criteria and procedures for grant of exclusive or partially exclusive licenses, and record of determinations.

   Enacted provision · exact public law section
   (c) The Federal Nonnuclear Energy Research and Development Act of 1974 is amended by repealing paragraphs (g), (h), and (i) of section 9 (42 U.S.C. 5908 (g), (h), and (i); 88 Stat. 1889–1891).

   Effective date note
   Amendment by Pub. L. 96–517 effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as a note under section 41 of Title 35, Patents.

3. 1980

   Pub. L. 96–517 § 7(c) · 94 Stat. 3015

   Struck · 42 U.S.C. § 5908(h)

   Pub. L. 96–517 struck out subsec. (h) which related to required terms and conditions in waiver of rights or grant of exclusive or partially exclusive license

   Source evidence

   Code amendment note
   Subsec. (h). Pub. L. 96–517 struck out subsec. (h) which related to required terms and conditions in waiver of rights or grant of exclusive or partially exclusive license.

   Enacted provision · exact public law section
   (c) The Federal Nonnuclear Energy Research and Development Act of 1974 is amended by repealing paragraphs (g), (h), and (i) of section 9 (42 U.S.C. 5908 (g), (h), and (i); 88 Stat. 1889–1891).

   Effective date note
   Amendment by Pub. L. 96–517 effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as a note under section 41 of Title 35, Patents.

4. 1980

   Pub. L. 96–517 § 7(c) · 94 Stat. 3015

   Struck · 42 U.S.C. § 5908(i)

   Pub. L. 96–517 struck out subsec. (i) which related to publication in the Federal Register by the Administrator of waiver or license termination hearing requirements and availability of records

   Source evidence

   Code amendment note
   Subsec. (i). Pub. L. 96–517 struck out subsec. (i) which related to publication in the Federal Register by the Administrator of waiver or license termination hearing requirements and availability of records.

   Enacted provision · exact public law section
   (c) The Federal Nonnuclear Energy Research and Development Act of 1974 is amended by repealing paragraphs (g), (h), and (i) of section 9 (42 U.S.C. 5908 (g), (h), and (i); 88 Stat. 1889–1891).

   Effective date note
   Amendment by Pub. L. 96–517 effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as a note under section 41 of Title 35, Patents.

5. 2005

   Energy Policy Act of 2005

   Pub. L. 109–58 § 1009(b)(7)(B) · 119 Stat. 594

   Substituted · 42 U.S.C. § 5908(a)

   Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory and concluding provisions

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory and concluding provisions.

   Enacted provision · exact public law section
   (B) by striking “Administrator” each place it appears and inserting “Secretary”; and

6. 2005

   Energy Policy Act of 2005

   Pub. L. 109–58 § 1009(b)(7)(A) · 119 Stat. 594

   Substituted · 42 U.S.C. § 5908(a)

   Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in introductory provisions

   Target inherited from the preceding amendment note.

   Source evidence

   Code amendment note
   Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in introductory provisions.

   Enacted provision · exact public law section
   (A) by striking “Administration” each place it appears and inserting “Department”;

7. 2005

   Energy Policy Act of 2005

   Pub. L. 109–58 § 1009(b)(7)(A) · 119 Stat. 594

   Substituted · 42 U.S.C. § 5908(b)

   Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in two places

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in two places.

   Enacted provision · exact public law section
   (A) by striking “Administration” each place it appears and inserting “Department”;

8. 2005

   Energy Policy Act of 2005

   Pub. L. 109–58 § 1009(b)(7)(B) · 119 Stat. 594

   Substituted · 42 U.S.C. § 5908(c)

   Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” wherever appearing in introductory provisions

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” wherever appearing in introductory provisions.

   Enacted provision · exact public law section
   (B) by striking “Administrator” each place it appears and inserting “Secretary”; and

9. 2005

   Energy Policy Act of 2005

   Pub. L. 109–58 § 1009(b)(7)(A) · 119 Stat. 594

   Substituted · 42 U.S.C. § 5908(c)

   Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in two places in introductory provisions

   Target inherited from the preceding amendment note.

   Source evidence

   Code amendment note
   Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in two places in introductory provisions.

   Enacted provision · exact public law section
   (A) by striking “Administration” each place it appears and inserting “Department”;

10. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(C) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(c)(3)

    Pub. L. 109–58, § 1009(b)(7)(C), substituted “Department’s” for “Administration’s”

    Source evidence

    Code amendment note
    Subsec. (c)(3). Pub. L. 109–58, § 1009(b)(7)(C), substituted “Department’s” for “Administration’s”.

    Enacted provision · exact public law section
    (C) in subsection (c)(3), by striking “Administration’s” and inserting “Department’s”.

11. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(B) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(d)

    Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory provisions and par. (11)

    Source evidence

    Code amendment note
    Subsec. (d). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory provisions and par. (11).

    Enacted provision · exact public law section
    (B) by striking “Administrator” each place it appears and inserting “Secretary”; and

12. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(B) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(e)

    Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory provisions

    Source evidence

    Code amendment note
    Subsec. (e). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory provisions.

    Enacted provision · exact public law section
    (B) by striking “Administrator” each place it appears and inserting “Secretary”; and

13. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(A) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(f)(2)

    Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”

    Source evidence

    Code amendment note
    Subsec. (f)(2). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”.

    Enacted provision · exact public law section
    (A) by striking “Administration” each place it appears and inserting “Department”;

14. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(B) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(j); 42 U.S.C. § 5908(k)

    Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator”

    Source evidence

    Code amendment note
    Subsecs. (j), (k). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator”.

    Enacted provision · exact public law section
    (B) by striking “Administrator” each place it appears and inserting “Secretary”; and

15. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(A) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(l)

    Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”

    Source evidence

    Code amendment note
    Subsec. (l). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”.

    Enacted provision · exact public law section
    (A) by striking “Administration” each place it appears and inserting “Department”;

16. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(A) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(m)(5)

    Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”

    Source evidence

    Code amendment note
    Subsec. (m)(5). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”.

    Enacted provision · exact public law section
    (A) by striking “Administration” each place it appears and inserting “Department”;

17. 2005

    Energy Policy Act of 2005

    Pub. L. 109–58 § 1009(b)(7)(B) · 119 Stat. 594

    Substituted · 42 U.S.C. § 5908(n)

    Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary with” for “Administrator with”

    Source evidence

    Code amendment note
    Subsec. (n). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary with” for “Administrator with”.

    Enacted provision · exact public law section
    (B) by striking “Administrator” each place it appears and inserting “Secretary”; and

17 of 17 references resolved to an enrolled provision