42 U.S.C. § 5908 — Patents and inventions

Page 6635 TITLE 42—THE PUBLIC HEALTH AND WELFARE § 5908 1 So in original. Probably should be a comma. § 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 De- partment, 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, de- velopment, or demonstration work and the in- vention is related to the work he was em- ployed 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 Govern- ment of the use of Government facilities, equipment, materials, allocated funds, infor- mation 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 con- tract 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 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 Sec- retary 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 Department of invention, etc., made in course of contract Each contract entered into by the Department with any person shall contain effective provi- sions under which such person shall furnish promptly to the Department a written report containing full and complete technical informa- tion concerning any invention, discovery, im- provement, 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 Department if he determines that the interests of the United States and the general public will be best served by such waiver. The Department shall maintain a publicly available, periodically updated record of waiver determinations. In making such deter- minations, the Secretary shall have the fol- lowing objectives: (1) Making the benefits of the energy re- search, development, and demonstration pro- gram widely available to the public in the shortest practicable time. (2) Promoting the commercial utilization of such inventions. (3) Encouraging participation by private per- sons in the Department’s energy research, de- velopment, and demonstration program. (4) Fostering competition and preventing undue market concentration or the creation or maintenance of other situations incon- sistent with the antitrust laws. (d) Considerations applicable at time of con- tracting for waiver determination by Sec- retary In determining whether a waiver to the con- tractor 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 tech- nology is needed to secure the participation of the particular contractor; (3) the extent to which the contractor’s com- mercial 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 devel- oped 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 di- rectly benefit the work to be performed under the contract; (7) the extent to which the field of tech- nology to be funded under the contract has been developed at the contractor’s private ex- pense; (8) the extent to which the Government in- tends to further develop to the point of com- mercial utilization the results of the contract effort; (9) the extent to which the contract objec- tives are concerned with the public health, public safety, or public welfare; (10) the likely effect of the waiver on com- petition and market concentration; and (11) in the case of a nonprofit educational in- stitution, the extent to which such institution has a technology transfer capability and pro- gram, approved by the Secretary as being con- sistent with the applicable policies of this sec- tion. (e) Considerations applicable to identified inven- tion for waiver determination by Secretary In determining whether a waiver to the con- tractor or inventor or rights to an identified in- vention will best serve the interests of the United States and the general public, the Sec- retary shall specifically include as consider- Page 6636 TITLE 42—THE PUBLIC HEALTH AND WELFARE § 5908 ations paragraphs (4) through (11) of subsection (d) as applied to the invention and— (1) the extent to which such waiver is a rea- sonable 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 in- vention vested in United States Whenever title to an invention is vested in the United States, there may be reserved to the con- tractor or inventor— (1) a revocable or irrevocable nonexclusive, paid-up license for the practice of the inven- tion throughout the world; and (2) the rights to such invention in any for- eign 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 spe- cifically requested by the Department 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, § 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 li- censes, consider the small business status of the applicant. (k) Protection of invention, etc., rights by Sec- retary The Secretary is authorized to take all suit- able and necessary steps to protect any inven- tion 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 as defense agency of United States for purpose of maintaining secrecy of inventions The Department 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, institu- tion, or other entity; (2) the term ‘‘contract’’ means any contract, grant, agreement, understanding, or other ar- rangement, which includes research, develop- ment, or demonstration work, and includes any assignment, substitution of parties, or subcontract executed or entered into there- under; (3) the term ‘‘made’’, when used in relation to any invention, means the conception or first actual reduction to practice of such in- vention; (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 De- partment. (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 At- torney General, the Secretary of Commerce, and other officials as the President may designate, shall submit to the President and the appro- priate congressional committees a report con- cerning the applicability of existing patent poli- cies affecting the programs under this chapter, along with his recommendations for amend- ments or additions to the statutory patent pol- icy, including his recommendations on manda- tory licensing, which he deems advisable for car- rying out the purposes of this chapter. (Pub. L. 93–577, § 9, Dec. 31, 1974, 88 Stat. 1887; Pub. L. 96–517, § 7(c), Dec. 12, 1980, 94 Stat. 3027; Pub. L. 109–58, title X, § 1009(b)(7), Aug. 8, 2005, 119 Stat. 935.) Editorial Notes 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, § 1, 68 Stat. 919, which is classified prin- cipally to chapter 23 (§ 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. AMENDMENTS 2005—Subsec. (a). Pub. L. 109–58, § 1009(b)(7)(B), sub- stituted ‘‘Secretary’’ for ‘‘Administrator’’ in introduc- tory and concluding provisions. Pub. L. 109–58, § 1009(b)(7)(A), substituted ‘‘Depart- ment’’ for ‘‘Administration’’ in introductory provi- sions. Subsec. (b). Pub. L. 109–58, § 1009(b)(7)(A), substituted ‘‘Department’’ for ‘‘Administration’’ in two places. Subsec. (c). Pub. L. 109–58, § 1009(b)(7)(B), substituted ‘‘Secretary’’ for ‘‘Administrator’’ wherever appearing in introductory provisions. Pub. L. 109–58, § 1009(b)(7)(A), substituted ‘‘Depart- ment’’ for ‘‘Administration’’ in two places in introduc- tory provisions. Subsec. (c)(3). Pub. L. 109–58, § 1009(b)(7)(C), sub- stituted ‘‘Department’s’’ for ‘‘Administration’s’’. Subsec. (d). Pub. L. 109–58, § 1009(b)(7)(B), substituted ‘‘Secretary’’ for ‘‘Administrator’’ in introductory pro- visions and par. (11). Subsec. (e). Pub. L. 109–58, § 1009(b)(7)(B), substituted ‘‘Secretary’’ for ‘‘Administrator’’ in introductory pro- visions. Subsec. (f)(2). Pub. L. 109–58, § 1009(b)(7)(A), sub- stituted ‘‘Department’’ for ‘‘Administration’’. Subsecs. (j), (k). Pub. L. 109–58, § 1009(b)(7)(B), sub- stituted ‘‘Secretary’’ for ‘‘Administrator’’. Subsec. (l). Pub. L. 109–58, § 1009(b)(7)(A), substituted ‘‘Department’’ for ‘‘Administration’’. Subsec. (m)(5). Pub. L. 109–58, § 1009(b)(7)(A), sub- stituted ‘‘Department’’ for ‘‘Administration’’. Subsec. (n). Pub. L. 109–58, § 1009(b)(7)(B), substituted ‘‘Secretary with’’ for ‘‘Administrator with’’. 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 exclu- sive licenses, and record of determinations. Subsec. (h). Pub. L. 96–517 struck out subsec. (h) which related to required terms and conditions in waiv- Page 6637 TITLE 42—THE PUBLIC HEALTH AND WELFARE § 5912 er 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. Statutory Notes and Related Subsidiaries 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. § 5909. Relationship to antitrust laws (a) Nothing in this chapter shall be deemed to convey to any individual, corporation, or other business organization immunity from civil or criminal liability, or to create defenses to ac- tions, under the antitrust laws. (b) As used in this section, the term ‘‘antitrust law’’ means— (1) the Act entitled ‘‘An Act to protect trade and commerce against unlawful restraints and monopolies’’, approved July 2, 1890 (15 U.S.C. 1 et seq.), as amended; (2) the Act entitled ‘‘An Act to supplement existing laws against unlawful restraints and monopolies, and for other purposes’’, approved October 15, 1914 (15 U.S.C. 12 et seq.) as amend- ed; (3) the Federal Trade Commission Act (15 U.S.C. 41 et seq.), as amended; (4) sections 73 and 74 of the Act entitled ‘‘An Act to reduce taxation, to provide revenue for the Government, and for other purposes’’, ap- proved August 27, 1894 (15 U.S.C. 8 and 9), as amended; and (5) the Act of June 19, 1936, chapter 592 (15 U.S.C. 13, 13a, 13b, and 21a). (Pub. L. 93–577, § 10, Dec. 31, 1974, 88 Stat. 1891.) Editorial Notes REFERENCES IN TEXT Act of July 2, 1890, referred to in subsec. (b)(1), is act July 2, 1890, ch. 647, 26 Stat. 209, known as the Sherman Act, which is classified to sections 1 to 7 of Title 15, Commerce and Trade. For complete classification of this Act to the Code, see Short Title note set out under section 1 of Title 15 and Tables. Act of October 15, 1914, referred to in subsec. (b)(2), is act Oct. 15, 1914, ch. 323, 38 Stat. 730, known as the Clay- ton Act, which is classified generally to sections 12, 13, 14 to 19, 21, and 22 to 27 of Title 15, and sections 52 and 53 of Title 29, Labor. For further details and complete classification of this Act to the Code, see References in Text note set out under section 12 of Title 15 and Ta- bles. The Federal Trade Commission Act (15 U.S.C. 41 et seq.), as amended, referred to in subsec. (b)(3), is act Sept. 26, 1914, ch. 311, 38 Stat. 717, which is classified generally to subchapter I (§ 41 et seq.) of chapter 2 of Title 15. For complete classification of this Act to the Code, see section 58 of Title 15 and Tables. Act of June 19, 1936, chapter 592, referred to in subsec. (b)(5), is act June 19, 1936, ch. 592, 49 Stat. 1526, popu- larly known as the Robinson-Patman Antidiscrimina- tion Act and also as the Robinson-Patman Price Dis- crimination Act, which enacted sections 13a, 13b, and 21a of Title 15, Commerce and Trade, and amended sec- tion 13 of Title 15. For complete classification of this Act to the Code, see Short Title note set out under sec- tion 13 of Title 15 and Tables. § 5910. Repealed. Pub. L. 104–66, title II, § 2021(i), Dec. 21, 1995, 109 Stat. 727 Section, Pub. L. 93–577, § 11, Dec. 31, 1974, 88 Stat. 1892; Pub. L. 95–91, title III, § 301(a), title VII, §§ 703, 707, Aug. 4, 1977, 91 Stat. 577, 606, 607; 1977 Reorg. Plan No. 1, § 5E, 42 F.R. 56101, 91 Stat. 1634, related to environmental evaluations by Administrator of Environmental Pro- tection Agency. § 5911. Acquisition of essential materials (a) The President may, by rule or order, re- quire the allocation of, or the performance under contracts or orders (other than contracts of employment) relating to, supplies of mate- rials and equipment if he finds that— (1) such supplies are scarce, critical, and es- sential to carry out the purposes of this chap- ter; and (2) such supplies cannot reasonably be ob- tained without exercising the authority grant- ed by this section. (b) A rule or order under subsection (a) shall be considered to be a major rule subject to chap- ter 8 of title 5. (Pub. L. 93–577, § 12, Dec. 31, 1974, 88 Stat. 1892; Pub. L. 109–58, title X, § 1009(b)(8), Aug. 8, 2005, 119 Stat. 935.) Editorial Notes AMENDMENTS 2005—Subsec. (b). Pub. L. 109–58 amended subsec. (b) generally. Prior to amendment, subsec. (b) read as fol- lows: ‘‘The President shall transmit any rule or order proposed under subsection (a) of this section (bearing an identification number) to each House of Congress on the date on which it is proposed. If such proposed rule or order is transmitted to the Congress such proposed rule or order shall take effect at the end of the first pe- riod of thirty calendar days of continuous session of Congress after the date on which such proposed rule or order is transmitted to it unless, between the date of transmittal and the end of the thirty day period, either House passes a resolution stating in substance that such House does not favor such a proposed rule or order.’’ § 5912. Water resource assessments (a) Assessments by Water Resources Council of water resource requirements and water sup- ply availability for nonnuclear energy tech- nologies; preparation requirements The Water Resources Council shall undertake assessments of water resource requirements and water supply availability for any nonnuclear en- ergy technology and any probable combinations of technologies which are the subject of Federal research and development efforts authorized by this chapter, and the commercial development of which could have significant impacts on water resources. In the preparation of its assess- ment, the Council shall— (1) utilize to the maximum extent prac- ticable data on water supply and demand available in the files of member agencies of the Council; (2) collect and compile any additional data it deems necessary for complete and accurate as- sessments; (3) give full consideration to the constraints upon availability imposed by treaty, compact,