TITLE 37 - PATENTS, TRADEMARKS, AND COPYRIGHTS

CHAPTER IV - ASSISTANT SECRETARY FOR TECHNOLOGY POLICY, DEPARTMENT OF COMMERCE

SUBCHAPTER B - COPYRIGHT ROYALTY BOARD RULES AND PROCEDURES

PART 404 - LICENSING OF GOVERNMENT OWNED INVENTIONS

404.7 - Exclusive and partially exclusive licenses.

  (a)(1) Exclusive or partially exclusive domestic licenses may be granted on federally owned inventions three months after notice of the invention's availability has been announced in the Federal Register, or without such notice where the Federal agency determines that expeditious granting of such a license will best serve the interest of the Federal Government and the public; and in either situation, only if; (i) Notice of a prospective license, identifying the invention and the prospective licensee, has been published in the Federal Register, providing opportunity for written objections within at least a 15-day period; (ii) After expiration of the period in 404.7(a)(1)(i) and consideration of any written objections received during the period, the Federal agency has determined that; (A) The interests of the Federal Government and the public will best be served by the proposed license, in view of the applicant's intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention's utilization by the public; (B) The desired practical application has not been achieved, or is 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 the investment of risk capital and expenditures to bring the invention to practical application or otherwise promote the invention's utilization by the public; and (D) The proposed terms and scope of exclusivity are not greater than reasonably necessary to provide the incentive for bringing the invention to practical application or otherwise promote the invention's utilization by the public; (iii) The Federal agency has not determined 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, or to create or maintain other situations inconsistent with the antitrust laws; and (iv) The Federal agency has given first preference to any small business firms submitting plans that are determined by the agency to be within the capabilities of the firms and as equally likely, if executed, to bring the invention to practical application as any plans submitted by applicants that are not small business firms.

  (2) In addition to the provisions of 404.5, the following terms and conditions apply to domestic exclusive and partially exclusive licenses; (i) The license shall be subject to the irrevocable, royalty-free right of the Government of the United States to practice and have practiced the invention on behalf of the United States and on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

  (ii) The license shall reserve to the Federal agency the right to require the licensee to grant sublicenses to responsible applicants, on reasonable terms, when necessary to fulfill health or safety needs.

  (iii) The license shall be subject to any licenses in force at the time of the grant of the exclusive or partially exclusive license.

  (iv) The license may grant the licensee the right of enforcement of the licensed patent pursuant to the provisions of Chapter 29 of Title 35, United States Code, or other statutes, as determined appropriate in the public interest.

  (b)(1) Exclusive or partially exclusive licenses may be granted on a federally owned invention covered by a foreign patent, patent application, or other form of protection, provided that; (i) Notice of a prospective license, identifying the invention and the prospective licensee, has been published in the Federal Register, providing opportunity for written objections within at least a 15-day period and following consideration of such written objections received during the period.

  (ii) The agency has considered whether the interests of the Federal Government or United States industry in foreign commerce will be enhanced; and (iii) The Federal agency has not determined that the grant of such license will tend substantially to lessen competition or result in undue concentration in any section of the United States in any line of commerce to which the technology to be licensed relates, or to create or maintain other situations inconsistent with antitrust laws.

  (2) In addition to the provisions of 404.5 the following terms and conditions apply to foreign exclusive and partially exclusive licenses: (i) The license shall be subject to the irrevocable, royalty-free right of the Government of the United States to practice and have practiced the invention on behalf of the United States and on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

  (ii) The license shall be subject to any licenses in force at the time of the grant of the exclusive or partially exclusive license.

  (iii) The license may grant the licensee the right to take any suitable and necessary actions to protect the licensed property, on behalf of the Federal Government.

  (c) Federal agencies shall maintain a record of determinations to grant exclusive or partially exclusive licenses.

[50 FR 9802, Mar. 12, 1985, as amended at 66 FR 34546, June 29, 2001]