
From the U.S. Code Online via GPO Access
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[Laws in effect as of January 23, 2000]
[Document not affected by Public Laws enacted between
  January 23, 2000 and December 4, 2001]
[CITE: 42USC5908]

 
                 TITLE 42--THE PUBLIC HEALTH AND WELFARE
 
         CHAPTER 74--NONNUCLEAR ENERGY RESEARCH AND DEVELOPMENT
 
Sec. 5908. Patents and inventions


(a) Vesting of title to invention and issuance of patents to United 
        States; prerequisites

    Whenever any invention is made or conceived in the course of or 
under any contract of the Secretary, 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 Secretary 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).\1\
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    \1\ So in original. Probably should be a comma.

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 Secretary waives all or any part 
of the rights of the United States to such invention in conformity with 
the provisions of this section.

(b) Contract as requiring report to Secretary of invention, etc., made 
        in course of contract

    Each contract entered into by the Secretary with any person shall 
contain effective provisions under which such person shall furnish 
promptly to the Secretary 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) Waiver by Secretary of rights of United States; regulations 
        prescribing procedures; record of waiver determinations; 
        objectives

    Under such regulations in conformity with the provisions of this 
section as the Secretary shall prescribe, the Secretary 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 Secretary if he determines that the interests of the 
United States and the general public will be best served by such waiver. 
The Secretary shall maintain a publicly available, periodically updated 
record of waiver determinations. In making such determinations, the 
Secretary 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 
    Secretary'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) Considerations applicable at time of contracting for waiver 
        determination by Secretary

    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 Secretary 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 Secretary as being 
    consistent with the applicable policies of this section.

(e) Considerations applicable to identified invention for waiver 
        determination by Secretary

    In determining whether a waiver to the contractor or inventor or 
rights to an identified invention will best serve the interests of the 
United States and the general public, the Secretary shall specifically 
include as considerations paragraphs (4) through (11) of subsection (d) 
of this section 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) Rights subject to reservation where title to invention vested in 
        United States

    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) of this section: 
    Provided, That when specifically requested by the Secretary and 
    three years after issuance of such a patent, the contractor shall 
    submit the report specified in subsection (h)(1) of this section.

(g) to (i) Repealed. Pub. L. 96-517, Sec. 7(c), Dec. 12, 1980, 94 Stat. 
        3027

(j) Small business status of applicant for waiver or licenses

    The Secretary shall, in granting waivers or licenses, consider the 
small business status of the applicant.

(k) Protection of invention, etc., rights by Secretary

    The Secretary 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) Department of Energy as defense agency of United States for purpose 
        of maintaining secrecy of inventions

    The Department of Energy shall be considered a defense agency of the 
United States for the purpose of chapter 17 of title 35.

(m) Definitions

    As used in this section--
        (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 Secretary.

(n) Report concerning applicability of existing patent policies to 
        energy programs; time for submission to President and 
        appropriate Congressional committees

    Within twelve months after December 31, 1974, the Secretary 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 chapter, 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 chapter.

(Pub. L. 93-577, Sec. 9, Dec. 31, 1974, 88 Stat. 1887; Pub. L. 95-91, 
title III, Sec. 301(a), title VII, Secs. 703, 707, Aug. 4, 1977, 91 
Stat. 577, 606, 607; Pub. L. 96-517, Sec. 7(c), Dec. 12, 1980, 94 Stat. 
3027.)

                       References in Text

    The Atomic Energy Act of 1954, referred to in subsec. (a), is act 
Aug. 1, 1946, ch. 724, as added by act Aug. 30, 1954, ch. 1073, Sec. 1, 
68 Stat. 921, and amended, which is classified generally to chapter 23 
(Sec. 2011 et seq.) of this title. For complete classification of this 
Act to the Code, see Short Title note set out under section 2011 of this 
title and Tables.
    The antitrust laws, referred to in subsec. (c)(4), probably mean the 
laws specified as antitrust laws in section 5909(b) of this title.


                               Amendments

    1980--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.
    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.
    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.


                    Effective Date of 1980 Amendment

    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.

                          Transfer of Functions

    ``Secretary'' and ``Secretary's'', meaning Secretary of Energy, 
substituted for ``Administrator'', ``Administration'', and 
``Administration's'', meaning Energy Research and Development 
Administration and Administrator thereof, in subsecs. (a) to (e), 
(f)(2), (j), (k), (m)(5), and (n), and ``Department of Energy'' 
substituted for ``Administration'' in subsec. (l) pursuant to sections 
301(a), 703, and 707 of Pub. L. 95-91, which are classified to sections 
7151(a), 7293, and 7297 of this title and which terminated Energy 
Research and Development Administration and transferred its functions 
and functions of Administrator thereof (with certain exceptions) to 
Secretary of Energy.

                  Section Referred to in Other Sections

    This section is referred to in sections 5585, 5906, 5907a, 5919, 
6981, 7261a, 10308 of this title; title 7 section 178j; title 15 
sections 2511, 2707, 5104; title 35 section 210.
