42 U.S.C. § 2182 — Inventions conceived during Commission

Page 5478 TITLE 42—THE PUBLIC HEALTH AND WELFARE § 2182 report containing a complete description thereof unless such invention or discovery is described in an application for a patent filed with the Under Secretary of Commerce for Intellectual Property and Director of the United States Pat- ent and Trademark Office by such person within the time required for the filing of such report. The report covering any such invention or dis- covery shall be filed on or before the one hun- dred and eightieth day after such person first discovers or first has reason to believe that such invention or discovery is useful in such produc- tion or utilization. (d) Report to Commission by Under Secretary of Commerce for Intellectual Property and Di- rector of the United States Patent and Trade- mark Office The Under Secretary of Commerce for Intel- lectual Property and Director of the United States Patent and Trademark Office shall notify the Commission of all applications for patents heretofore or hereafter filed which, in his opin- ion, disclose inventions or discoveries required to be reported under subsection (c), and shall provide the Commission access to all such appli- cations. (e) Confidential information; circumstances per- mitting disclosure Reports filed pursuant to subsection (c) of this section, and applications to which access is pro- vided under subsection (d) of this section, shall be kept in confidence by the Commission, and no information concerning the same given without authority of the inventor or owner unless nec- essary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commission. (Aug. 1, 1946, ch. 724, title I, § 151, as added Aug. 30, 1954, ch. 1073, § 1, 68 Stat. 943; amended Pub. L. 87–206, §§ 7–9, Sept. 6, 1961, 75 Stat. 477; renum- bered title I, Pub. L. 102–486, title IX, § 902(a)(8), Oct. 24, 1992, 106 Stat. 2944; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(18)], Nov. 29, 1999, 113 Stat. 1536, 1501A–585.) Editorial Notes PRIOR PROVISIONS Provisions similar to this section were contained in section 1811(a) of this title, prior to the general amend- ment and renumbering of act Aug. 1, 1946, by act Aug. 30, 1954. AMENDMENTS 1999—Subsecs. (c), (d). Pub. L. 106–113 substituted ‘‘Under Secretary of Commerce for Intellectual Prop- erty and Director of the United States Patent and Trademark Office’’ for ‘‘Commissioner of Patents’’. 1961—Pub. L. 87–206, § 7, substituted provision con- cerning inventions relating to atomic weapons and fil- ing of reports for provision relating to military utiliza- tion in section catchline. Subsec. (c). Pub. L. 87–206, § 8, struck out designation as cl. (1) of provision relating to production or utiliza- tion of special nuclear material or atomic energy and cls. (2) and (3) relating to utilization of special nuclear material in an atomic weapon and utilization of atomic energy in an atomic weapon, respectively, and sub- stituted ‘‘the one hundred and eightieth day’’ for ‘‘whichever of the following is the later: either the ninetieth day after completion of such invention or dis- covery; or the ninetieth day’’. Subsec. (e). Pub. L. 87–206, § 9, added subsec. (e). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents. EMERGENCY RELIEF FROM POSTAL SITUATION AFFECTING ATOMIC ENERGY CASES Excusal of delayed fees or actions affected by postal situation beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970, see note set out under section 111 of Title 35, Patents. § 2182. Inventions conceived during Commission contracts; ownership; waiver; hearings Any invention or discovery, useful in the pro- duction or utilization of special nuclear mate- rial or atomic energy, made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission, shall be vested in, and be the property of, the Commission, except that the Commission may waive its claim to any such invention or dis- covery under such circumstances as the Com- mission may deem appropriate, consistent with the policy of this section. No patent for any in- vention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Com- merce for Intellectual Property and Director of the United States Patent and Trademark Office (unless the Commission advises the Under Sec- retary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office that its rights have been de- termined and that accordingly no statement is necessary) a statement under oath setting forth the full facts surrounding the making or concep- tion of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or ar- rangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission. The Under Secretary of Commerce for Intellec- tual Property and Director of the United States Patent and Trademark Office shall as soon as the application is otherwise in condition for al- lowance forward copies of the application and the statement to the Commission. The Under Secretary of Commerce for Intel- lectual Property and Director of the United States Patent and Trademark Office may pro- ceed with the application and issue the patent to the applicant (if the invention or discovery is otherwise patentable) unless the Commission, within 90 days after receipt of copies of the ap- plication and statement, directs the Under Sec- retary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to issue the patent to the Page 5479 TITLE 42—THE PUBLIC HEALTH AND WELFARE § 2183 Commission (if the invention or discovery is otherwise patentable) to be held by the Commis- sion as the agent of and on behalf of the United States. If the Commission files such a direction with the Under Secretary of Commerce for Intellec- tual Property and Director of the United States Patent and Trademark Office, and if the appli- cant’s statement claims, and the applicant still believes, that the invention or discovery was not made or conceived in the course of or under any contract, subcontract or arrangement entered into with or for the benefit of the Commission entitling the Commission to the title to the ap- plication or the patent the applicant may, with- in 30 days after notification of the filing of such a direction, request a hearing before the Patent Trial and Appeal Board. The Board shall have the power to hear and determine whether the Commission was entitled to the direction filed with the Under Secretary of Commerce for Intel- lectual Property and Director of the United States Patent and Trademark Office. The Board shall follow the rules and procedures established for interference and derivation cases and an ap- peal may be taken by either the applicant or the Commission from the final order of the Board to the United States Court of Appeals for the Fed- eral Circuit in accordance with the procedures governing the appeals from the Patent Trial and Appeal Board. If the statement filed by the applicant should thereafter be found to contain false material statements any notification by the Commission that it has no objections to the issuance of a patent to the applicant shall not be deemed in any respect to constitute a waiver of the provi- sions of this section or of any applicable civil or criminal statute, and the Commission may have the title to the patent transferred to the Com- mission on the records of the Under Secretary of Commerce for Intellectual Property and Direc- tor of the United States Patent and Trademark Office in accordance with the provisions of this section. A determination of rights by the Com- mission pursuant to a contractual provision or other arrangement prior to the request of the Under Secretary of Commerce for Intellectual Property and Director of the United States Pat- ent and Trademark Office for the statement, shall be final in the absence of false material statements or nondisclosure of material facts by the applicant. (Aug. 1, 1946, ch. 724, title I, § 152, as added Aug. 30, 1954, ch. 1073, § 1, 68 Stat. 944; amended Pub. L. 87–206, § 10, Sept. 6, 1961, 75 Stat. 477; Pub. L. 87–615, § 11, Aug. 29, 1962, 76 Stat. 411; Pub. L. 97–164, title I, § 162(2), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98–622, title II, § 205(b), Nov. 8, 1984, 98 Stat. 3388; renumbered title I, Pub. L. 102–486, title IX, § 902(a)(8), Oct. 24, 1992, 106 Stat. 2944; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(19)], Nov. 29, 1999, 113 Stat. 1536, 1501A–585; Pub. L. 112–29, § 7(d)(1), Sept. 16, 2011, 125 Stat. 315.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 substituted ‘‘Patent Trial and Ap- peal Board’’ for ‘‘Board of Patent Appeals and Inter- ferences’’ in two places and inserted ‘‘and derivation’’ after ‘‘established for interference’’. 1999—Pub. L. 106–113 substituted ‘‘Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office’’ for ‘‘Com- missioner of Patents’’ wherever appearing. 1984—Pub. L. 98–622, in third par., substituted ‘‘the Board of Patent Appeals and Interferences’’ for ‘‘a Board of Patent Interferences’’ and ‘‘the Board of Pat- ent Interferences’’. 1982—Pub. L. 97–164 substituted ‘‘United States Court of Appeals for the Federal Circuit’’ for ‘‘Court of Cus- toms and Patent Appeals’’ in third par. 1962—Pub. L. 87–615 substituted ‘‘allowance’’ for ‘‘al- lowances’’ before ‘‘forward copies of the application’’ in first par. 1961—Pub. L. 87–206 clarified language concerning Commission’s patent rights on inventions made or con- ceived under contract, subcontract, or arrangement with Commission, striking out language extending Commission’s patent rights to other relationships and activities in connection with Commission contracts, provided for waiver of patent rights consistent with the policy of this section and for finality of determinations of Commission, and dispensed with need for statement to Commissioner of Patents under certain cir- cumstances. 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. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622, effective three months after Nov. 8, 1984, see section 207 of Pub. L. 98–622, set out as a note under section 41 of Title 35, Patents. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–164 effective Oct. 1, 1982, see section 402 of Pub. L. 97–164, set out as a note under section 171 of Title 28, Judiciary and Judicial Proce- dure. § 2183. Nonmilitary utilization (a) Declaration of public interest The Commission may, after giving the patent owner an opportunity for a hearing, declare any patent to be affected with the public interest if (1) the invention or discovery covered by the patent is of primary importance in the produc- tion or utilization of special nuclear material or atomic energy; and (2) the licensing of such in- vention or discovery under this section is of pri- mary importance to effectuate the policies and purposes of this chapter. (b) Action by Commission Whenever any patent has been declared af- fected with the public interest, pursuant to sub- section (a)— (1) the Commission is licensed to use the in- vention or discovery covered by such patent in performing any of its powers under this chap- ter; and