51 U.S.C. § 20135 — Property rights in inventions

Page 32 TITLE 51—NATIONAL AND COMMERCIAL SPACE PROGRAMS § 20133 prospective, as the Administrator deems appro- priate. If any such investigation develops any data reflecting that the individual who is the subject of the investigation is of questionable loyalty, the matter shall be referred to the Fed- eral Bureau of Investigation for the conduct of a full field investigation, the results of which shall be furnished to the Administrator. (Pub. L. 111–314, § 3, Dec. 18, 2010, 124 Stat. 3338.) HISTORICAL AND REVISION NOTES Revised Section Source (U.S. Code) Source (Statutes at Large) 20132 .......... 42 U.S.C. 2455(a). Pub. L. 85–568, title III, § 304(a), July 29, 1958, 72 Stat. 433; 1978 Reorg. Plan No. 2, § 102, eff. Jan. 1, 1979, 43 F.R. 36037, 92 Stat. 3783. The words ‘‘Director of the Office of Personnel Man- agement’’ are substituted for ‘‘Civil Service Commis- sion’’ because of section 102 of Reorganization Plan No. 2 of 1978 (5 App U.S.C.). Statutory Notes and Related Subsidiaries ACCESS TO RESTRICTED DATA Pub. L. 85–568, title III, § 304(b), July 29, 1958, 72 Stat. 434, provided that: ‘‘The Atomic Energy Commission may authorize any of its employees, or employees of any contractor, prospective contractor, licensee, or prospective licensee of the Atomic Energy Commission or any other person authorized to have access to Re- stricted Data by the Atomic Energy Commission under subsection 145 b. of the Atomic Energy Act of 1954 (42 U.S.C. 2165(b)), to permit any member, officer, or em- ployee of the Council [National Aeronautics and Space Council], or the Administrator [of the National Aero- nautics and Space Administration], or any officer, em- ployee, member of an advisory committee, contractor, subcontractor, or officer or employee of a contractor or subcontractor of the Administration [National Aero- nautics and Space Administration], to have access to Restricted Data relating to aeronautical and space ac- tivities which is required in the performance of his du- ties and so certified by the Council or the Adminis- trator, as the case may be, but only if (1) the Council or Administrator or designee thereof has determined, in accordance with the established personnel security procedures and standards of the Council or Administra- tion, that permitting such individual to have access to such Restricted Data will not endanger the common de- fense and security, and (2) the Council or Adminis- trator or designee thereof finds that the established personnel and other security procedures and standards of the Council or Administration are adequate and in reasonable conformity to the standards established by the Atomic Energy Commission under section 145 of the Atomic Energy Act of 1954 (42 U.S.C. 2165). Any indi- vidual granted access to such Restricted Data pursuant to this subsection may exchange such Data with any individual who (A) is an officer or employee of the De- partment of Defense, or any department or agency thereof, or a member of the armed forces, or a con- tractor or subcontractor of any such department, agen- cy, or armed force, or an officer or employee of any such contractor or subcontractor, and (B) has been au- thorized to have access to Restricted Data under the provisions of section 143 of the Atomic Energy Act of 1954 (42 U.S.C. 2163).’’ [Atomic Energy Commission abolished and functions transferred by sections 5814 and 5841 of Title 42, The Public Health and Welfare. See also Transfer of Func- tions notes set out under those sections.] [National Aeronautics and Space Council, together with functions of Council, abolished by section 3(a)(4) of Reorg. Plan No. 1 of 1973, effective July 1, 1973, set out in the Appendix to Title 5, Government Organiza- tion and Employees.] § 20133. Permission to carry firearms As the Administrator deems necessary in the public interest, the Administrator may— (1) direct officers and employees of the Ad- ministration to carry firearms while in the conduct of their official duties; and (2) authorize employees of contractors and subcontractors of the Administration who are engaged in the protection of property owned by the United States, and located at facilities owned by or contracted to the United States, to carry firearms while in the conduct of their official duties. (Pub. L. 111–314, § 3, Dec. 18, 2010, 124 Stat. 3338.) HISTORICAL AND REVISION NOTES Revised Section Source (U.S. Code) Source (Statutes at Large) 20133 .......... 42 U.S.C. 2456. Pub. L. 85–568, title III, § 304(e), July 29, 1958, 72 Stat. 435. § 20134. Arrest authority Under regulations prescribed by the Adminis- trator and approved by the Attorney General, employees of the Administration and of its con- tractors and subcontractors authorized to carry firearms under section 20133 of this title may ar- rest without warrant for any offense against the United States committed in their presence, or for any felony cognizable under the laws of the United States if they have reasonable grounds to believe that the person to be arrested has com- mitted or is committing such felony. Persons granted authority to make arrests by this sec- tion may exercise that authority only while guarding and protecting property owned or leased by, or under the control of, the United States under the administration and control of the Administration or one of its contractors or subcontractors, at facilities owned by or con- tracted to the Administration. (Pub. L. 111–314, § 3, Dec. 18, 2010, 124 Stat. 3339.) HISTORICAL AND REVISION NOTES Revised Section Source (U.S. Code) Source (Statutes at Large) 20134 .......... 42 U.S.C. 2456a. Pub. L. 85–568, title III, § 304(f), as added Pub. L. 100–685, title II, § 206, Nov. 17, 1988, 102 Stat. 4090. § 20135. Property rights in inventions (a) DEFINITIONS.—In this section: (1) CONTRACT.—The term ‘‘contract’’ means any actual or proposed contract, agreement, understanding, or other arrangement, and in- cludes any assignment, substitution of parties, or subcontract executed or entered into there- under. (2) MADE.—The term ‘‘made’’, when used in relation to any invention, means the concep- tion or first actual reduction to practice of such invention. (3) PERSON.—The term ‘‘person’’ means any individual, partnership, corporation, associa- tion, institution, or other entity. Page 33 TITLE 51—NATIONAL AND COMMERCIAL SPACE PROGRAMS § 20135 (b) EXCLUSIVE PROPERTY OF UNITED STATES.— (1) IN GENERAL.—An invention shall be the exclusive property of the United States if it is made in the performance of any work under any contract of the Administration, and the Administrator determines that— (A) the person who made the invention was employed or assigned to perform research, development, or exploration work and the invention is related to the work the person was employed or assigned to perform, or was within the scope of the person’s employment duties, whether or not it was made during working hours, or with a contribution by the Government of the use of Government facili- ties, equipment, materials, allocated funds, information proprietary to the Government, or services of Government employees during working hours; or (B) the person who made the invention was not employed or assigned to perform re- search, development, or exploration work, but the invention is nevertheless related to the contract, or to the work or duties the person 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 subparagraph (A). (2) PATENT TO UNITED STATES.—If an inven- tion is the exclusive property of the United States under paragraph (1), and if such inven- tion is patentable, a patent therefor shall be issued to the United States upon application made by the Administrator, unless the Admin- istrator waives all or any part of the rights of the United States to such invention in con- formity with the provisions of subsection (g). (c) CONTRACT PROVISIONS FOR FURNISHING RE- PORTS OF INVENTIONS, DISCOVERIES, IMPROVE- MENTS, OR INNOVATIONS.—Each contract entered into by the Administrator with any party for the performance of any work shall contain effec- tive provisions under which the party shall fur- nish promptly to the Administrator a written report containing full and complete technical information concerning any invention, dis- covery, improvement, or innovation which may be made in the performance of any such work. (d) PATENT APPLICATION.—No patent may be issued to any applicant other than the Adminis- trator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Pat- ent and Trademark Office (hereafter in this sec- tion referred to as the ‘‘Director’’) to have sig- nificant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or with- in 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the cir- cumstances under which the invention was made and stating the relationship (if any) of the in- vention to the performance of any work under any contract of the Administration. Copies of each such statement and the application to which it relates shall be transmitted forthwith by the Director to the Administrator. (e) ISSUANCE OF PATENT TO APPLICANT.—Upon any application as to which any such statement has been transmitted to the Administrator, the Director may, if the invention is patentable, issue a patent to the applicant unless the Ad- ministrator, within 90 days after receipt of the application and statement, requests that the patent be issued to the Administrator on behalf of the United States. If, within such time, the Administrator files such a request with the Di- rector, the Director shall transmit notice there- of to the applicant, and shall issue such patent to the Administrator unless the applicant with- in 30 days after receipt of the notice requests a hearing before the Patent Trial and Appeal Board on the question whether the Adminis- trator is entitled under this section to receive the patent. The Board may hear and determine, in accordance with rules and procedures estab- lished for interference and derivation cases, the question so presented, and its determination shall be subject to appeal by the applicant or by the Administrator to the United States Court of Appeals for the Federal Circuit in accordance with procedures governing appeals from deci- sions of the Patent Trial and Appeal Board in other proceedings. (f) SUBSEQUENT TRANSFER OF PATENT IN CASE OF FALSE REPRESENTATIONS.—Whenever a patent has been issued to an applicant in conformity with subsection (e), and the Administrator thereafter has reason to believe that the state- ment filed by the applicant in connection with the patent contained a false representation of a material fact, the Administrator, within 5 years after the date of issuance of the patent, may file with the Director a request for the transfer to the Administrator of title to the patent on the records of the Director. Notice of any such re- quest shall be transmitted by the Director to the owner of record of the patent, and title to the patent shall be so transferred to the Admin- istrator unless, within 30 days after receipt of notice, the owner of record requests a hearing before the Patent Trial and Appeal Board on the question whether any such false representation was contained in the statement filed in connec- tion with the patent. The question shall be heard and determined, and the determination shall be subject to review, in the manner pre- scribed by subsection (e) for questions arising thereunder. A request made by the Adminis- trator under this subsection for the transfer of title to a patent, and prosecution for the viola- tion of any criminal statute, shall not be barred by the failure of the Administrator to make a request under subsection (e) for the issuance of the patent to the Administrator, or by any no- tice previously given by the Administrator stat- ing that the Administrator had no objection to the issuance of the patent to the applicant. (g) WAIVER OF RIGHTS TO INVENTIONS.—Under such regulations in conformity with this sub- 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 inven- tions made or which may be made by any person or class of persons in the performance of any work required by any contract of the Adminis- tration if the Administrator determines that the interests of the United States will be served thereby. Any such waiver may be made upon Page 34 TITLE 51—NATIONAL AND COMMERCIAL SPACE PROGRAMS § 20136 such terms and under such conditions as the Ad- ministrator shall determine to be required for the protection of the interests of the United States. Each such waiver made with respect to any invention shall be subject to the reservation by the Administrator of an irrevocable, non- exclusive, nontransferable, royalty-free license for the practice of such invention throughout the world by or on behalf of the United States or any foreign government pursuant to any treaty or agreement with the United States. Each pro- posal for any waiver under this subsection shall be referred to an Inventions and Contributions Board which shall be established by the Admin- istrator within the Administration. Such Board shall accord to each interested party an oppor- tunity for hearing, and shall transmit to the Ad- ministrator its findings of fact with respect to such proposal and its recommendations for ac- tion to be taken with respect thereto. (h) PROTECTION OF TITLE.—The Administrator is authorized to take all suitable and necessary steps to protect any invention or discovery to which the Administrator has title, and to re- quire contractors or persons who retain title to inventions or discoveries under this section to protect the inventions or discoveries to which the Administration has or may acquire a license of use. (i) ADMINISTRATION AS DEFENSE AGENCY.—The Administration shall be considered a defense agency of the United States for the purpose of chapter 17 of title 35. (j) OBJECTS INTENDED FOR LAUNCH, LAUNCHED, OR ASSEMBLED IN OUTER SPACE.—Any object in- tended for launch, launched, or assembled in outer space shall be considered a vehicle for the purpose of section 272 of title 35. (k) USE OR MANUFACTURE OF PATENTED INVEN- TIONS INCORPORATED IN SPACE VEHICLES LAUNCHED FOR PERSONS OTHER THAN UNITED STATES.—The use or manufacture of any pat- ented invention incorporated in a space vehicle launched by the United States Government for a person other than the United States shall not be considered to be a use or manufacture by or for the United States within the meaning of section 1498(a) of title 28, unless the Administration gives an express authorization or consent for such use or manufacture. (Pub. L. 111–314, § 3, Dec. 18, 2010, 124 Stat. 3339; Pub. L. 112–29, § 7(d)(2), Sept. 16, 2011, 125 Stat. 315.) HISTORICAL AND REVISION NOTES Revised Section Source (U.S. Code) Source (Statutes at Large) 20135 .......... 42 U.S.C. 2457. Pub. L. 85–568, title III, § 305, July 29, 1958, 72 Stat. 435; Pub. L. 96–517, § 7(b), Dec. 12, 1980, 94 Stat. 3027; Pub. L. 97–96, § 7, Dec. 21, 1981, 95 Stat. 1210; Pub. L. 97–164, title I, § 162(3), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98–622, title II, § 205(c), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(20)], Nov. 29, 1999, 113 Stat. 1536, 1501A–585. Editorial Notes AMENDMENTS 2011—Subsec. (e). Pub. L. 112–29 substituted ‘‘Patent Trial and Appeal Board’’ for ‘‘Board of Patent Appeals and Interferences’’ in two places and inserted ‘‘and der- ivation’’ after ‘‘established for interference’’. Subsec. (f). Pub. L. 112–29, § 7(d)(2)(A), substituted ‘‘Patent Trial and Appeal Board’’ for ‘‘Board of Patent Appeals and Interferences’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, see section 7(e) of Pub. L. 112–29, set out as a note under section 6 of Title 35, Patents. § 20136. Contributions awards (a) APPLICATIONS.—Subject to the provisions of this section, the Administrator is authorized, on the Administrator’s own initiative or on appli- cation of any person, to make a monetary award, in an amount and on terms the Adminis- trator determines to be warranted, to any per- son (as defined by section 20135(a) of this title) for any scientific or technical contribution to the Administration which is determined by the Administrator to have significant value in the conduct of aeronautical and space activities. Each application made for such an award shall be referred to the Inventions and Contributions Board established under section 20135 of this title. Such Board shall accord to each applicant an opportunity for hearing on the application, and shall transmit to the Administrator its rec- ommendation as to the terms of the award, if any, to be made to the applicant for the con- tribution. In determining the terms and condi- tions of an award the Administrator shall take into account— (1) the value of the contribution to the United States; (2) the aggregate amount of any sums which have been expended by the applicant for the development of the contribution; (3) the amount of any compensation (other than salary received for services rendered as an officer or employee of the Government) pre- viously received by the applicant for or on ac- count of the use of the contribution by the United States; and (4) any other factors the Administrator de- termines to be material. (b) APPORTIONMENT OF AWARDS.—If more than one applicant under subsection (a) claims an in- terest in the same contribution, the Adminis- trator shall ascertain and determine the respec- tive interests of the applicants, and shall appor- tion any award to be made among the applicants in amounts the Administrator determines to be equitable. (c) SURRENDER OF OTHER CLAIMS.—No award may be made under subsection (a) unless the ap- plicant surrenders, by means the Administrator determines to be effective, all claims that the applicant may have to receive any compensation (other than the award made under this section) for the use of the contribution or any element