TITLES OF UNITED STATES CODE AND UNITED STATES CODE ANNOTATED
1. General Provisions.
2. The Congress.
3. The President.
4. Flag and Seal, Seat of Government, and the States.
5. Government Organization and Employees.
6. Surety Bonds (See Title 31, Money and Finance).
7. Agriculture.
8. Aliens and Nationality.
9. Arbitration.
10. Armed Forces.
11. Bankruptcy.
12. Banks and Banking.
13. Census.
14. Coast Guard.
15. Commerce and Trade.
16. Conservation.
17. Copyrights.
18. Crimes and Criminal Procedure.
19. Customs Duties.
20. Education.
21. Food and Drugs.
22. Foreign Relations and Intercourse.
23. Highways.
24. Hospitals and Asylums.
25. Indians.
26. Internal Revenue Code.
27. Intoxicating Liquors.
28. Judiciary and Judicial Procedure.
29. Labor.
30. Mineral Lands and Mining.
31. Money and Finance.
32. National Guard.
33. Navigation and Navigable Waters.
34. Navy (See Title 10, Armed Forces).
35. Patents.
36. Patriotic Societies and Observances.
37. Pay and Allowances of the Uniformed Services.
38. Veterans' Benefits.
39. Postal Service.
40. Public Buildings, Property, and Works.
41. Public Contracts.
42. The Public Health and Welfare.
43. Public Lands.
44. Public Printing and Documents.
45. Railroads.
46. Shipping.
47. Telegraphs, Telephones, and Radiotelegraphs.
48. Territories and Insular Possessions.
49. Transportation.
50. War and National Defense.
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UNITED STATES CODE ANNOTATED
Title 35
Patents §§ 141 to 280
Regulations 
Bayh-Dole Act
Official Revision and Codification of the Laws Relating to Patents Under Arrangement of Official Code of the Laws of the United States with Annotations from Federal and State Courts
ST. PAUL, MINN. WEST PUBLISHING CO.
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35 foll. § 188
REGULATIONS
37 CFR § 5.25
Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181 within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 [35 U.S.C.A. 185] will be made.
(c) The granting of a retroactive license does not excuse any violation of the export regulations contained in 22 CFR Parts 121-130 (International Traffic in Arms Regulations of the Department of State), 15 CFR Part 379 (Regulations of Office of Export Administration, International Trade Administration, Department of Commerce) and 10 CFR Part 810 (Foreign Atomic Energy Programs of the Department of Energy) which may have occurred because of the failure to obtain an appropriate license prior to export.
GENERAL
§ 5.31. Effect of modification, rescission or license
Any consent, rescission or license under the provisions of this part does not lessen the responsibilities of the principals in respect to any Government contract or the requirements of any other Government agency.
§ 5.32. Papers in English language
All papers submitted in connection with petitions must be in the English language, or be accompanied by an English translation and a translator's certificate as to the true, faithful and exact character of the translation.
§ 5.33. Correspondence
All correspondence in connection with this part, including petitions, should be addressed to "Commissioner of Patents and Trademarks (Attention Licensing and Review), Washington, D.C. 20231."
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CHAPTER 18-PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec.
200. Policy and objective.
201. Definitions.
202. Disposition of rights.
203. March-in rights.
204. Preference for United States industry.
205. Confidentiality.
206. Uniform clauses and regulations.
207. Domestic and foreign protection of federally owned inventions.
208. Regulations governing Federal licensing.
209. Restrictions on licensing of federally owned inventions.
210. Precedence of chapter.
211. Relationship to antitrust laws.
Historical Note
1982 Amendment. Pub.L. 97-256, Title I,  § 101(5), Sept. 8, 1982, 96 Stat. 816, redesignated chapter 38, as added by Pub.L. 96-517,§ 6(a), Dec. 12, 1980, 94 Stat. 3018, comprising sections 200 to 211, as chapter 18, and transferred chapter 18, as so redesignated, to the end of this part from the end of part IV.
§ 200. Policy and objective
It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations, including universities; to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise; to promote the commercialization and public availability of inventions made in the United States by United States industry and labor; to ensure that the Government obtains sufficient rights in federally supported inventions to met the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and to minimize the costs of administering policies in this area.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3019.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title. Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Cross References
Preemption and precedence of provisions of this chapter, see section 210 of this title.
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West's Federal Practice Manual
Patents, see § 1564.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
§ 201. Definitions
As used in this chapter-
(a) The term "Federal agency" means any executive agency as defined in section 105 of title 5, United States Code, and the military departments as defined by section 102. of title 5, United States Code.
(b) The term "funding agreement" means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental developmental, or research work under a funding agreement as herein defined.
(c) The term "contractor" means any person, small business firm, or nonprofit organization that is a party to a funding agreement.
(d) The term "invention" means any invention or discovery which is or may be patentable or otherwise protectable under this title.
(e) The term "subject invention" means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.
(f) The term "practical application" means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms.
(g) The term "made" when used in relation to any invention means the conception or first actual reduction to practice of such invention.
(h) The term "small business firm" means a small business concern as defined at section 2 of Public Law 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration.
(i) The term "nonprofit organization" means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational
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educational organization qualified under a State nonprofit organization statute.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3019.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations author- ized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of- this title. Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. & Adm.News, p. 6460.
Cross References
Process defined, see section 100 of this title.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
§ 202. Disposition of rights
(a) Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any subject invention: Provided, however, That a funding agreement may provide otherwise (i) when the funding agreement is for the operation of a Government-owned research or production facility, (ii) in exceptional circumstances when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter or (iii) when it is determined by a Government authority which is authorized by statute or Executive order to conduct foreign intelligence or counter-intelligence activities that the restriction or elimination of the right to retain title to any subject invention is necessary to protect the security of such activities. The rights of the nonprofit organization or small business firm shall be subject to the provisions of paragraph (c) of this section and the other provisions of this chapter.
(b)(1) Any determination under (ii) of paragraph (a) of this section shall be in writing and accompanied by a written statement of facts justifying the determination. A copy of each such determination and justification shall be sent to the Comptroller General of the United States within thirty days after the award of the applicable funding agreement. In the case of determinations applicable to funding agreements with small business firms copies shall also be sent to the Chief Counsel for Advocacy of the Small Business Administration.
(2) If the Comptroller General believes that any pattern of determinations by a Federal agency is contrary to the policy and objectives of this chapter or that an agency's policies or practices are otherwise not in conformance with this chapter, the Comptroller General shall so advise the head of the agency. The head of the agency shall advise the Comptroller General in writing within one hundred and twenty days of what action, if any, the
T. 35 U.S.C.A. §§ 141-280-10
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agency has taken or plans to take with respect to the matters raised by the Comptroller General.
(3) At least once each year, the Comptroller General shall transmit a report to the Committees on the Judiciary of the Senate and House of Representatives on the manner in which this chapter is being implemented by the agencies and on such other aspects of Government patent policies and practices with respect to federally funded inventions as the Comptroller General believes appropriate.
(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
(1) A requirement that the contractor disclose each subject invention to the Federal agency within a reasonable time after it is made and that the Federal Government may receive title to any subject invention not reported to it within such time.
(2) A requirement that the contractor make an election to retain title to any subject invention within a reasonable time after disclosure and that the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such time.
(3) A requirement that a contractor electing rights file patent applications within reasonable times and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times.
(4) With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world, and may, if provided in the funding agreement, have additional rights to sublicense any foreign government or international organization pursuant to any existing or future treaty or agreement.
(5) The right of the Federal agency to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees: Provided, That any such information may be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5 of the United States Code.
(6) An obligation on the part of the contractor, in the event a United States patent application is filed by or on its behalf or by any assignee of the contractor, to include within the specification of such application and any patent issuing thereon, a statement specifying that the invention was made with Government support and that the Government has certain rights in the invention.
(7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assign-
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ment is made to an organization which has as one of its primary functions the management of inventions and which is not, itself, engaged in or does not hold a substantial interest in other organizations engaged in the manufacture or sale of products or the use of processes that might utilize the invention or be in competition with embodiments of the invention (provided that such assignee shall be subject to the same provisions as the contractor); (B) a prohibition against the granting of exclusive licenses under United States Patents or Patent Applications in a subject invention by the contractor to persons other than small business firms for a period in excess of the earlier of five years from first commercial sale or use of the invention or eight years from the date of the exclusive license excepting that time before regulatory agencies necessary to obtain premarket clearance unless, on a case-by-case basis, the Federal agency approves a longer exclusive license. If exclusive field of use licenses are granted, commercial sale or use in one field of use shall not be deemed commercial sale or use as to other fields of use, and a first commercial sale or use with respect to a product of the invention shall not be deemed to end the exclusive period to different subsequent products covered by the invention; (C) a requirement that the contractor share royalties with the inventor; and (D) a requirement that the balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research or education.
(8) The requirements of sections 203 and 204 of this chapter.
(d) If a contractor does not elect to retain title to a subject invention in cases subject to this section, the Federal agency may consider and after consultation with the contractor grant requests for retention of rights by the inventor subject to the provisions of this Act and regulations promulgated hereunder.
(e) In any case when a Federal employee is a coinventor of any invention made under a funding agreement with a nonprofit organization or small business firm, the Federal agency employing such coinventor is authorized to transfer or assign whatever rights it may acquire in the subject invention from its employee to the contractor subject to the conditions set forth in this chapter.
(f)(1) No funding agreement with a small business firm or nonprofit organization shall contain a provision allowing a Federal agency to require the licensing to third parties of inventions owned by the contractor that are not subject inventions unless such provision has been approved by the head of the agency and a written justification has been signed by the head of the agency. Any such provision shall clearly state whether the licensing may be required in connection with the practice of a subject invention, a specifically identified work object, or both. The head of the agency may not delegate the authority to approve provisions or sign justifications required by this paragraph.
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(2) A Federal agency shall not require the licensing of third parties under any such provision unless the head of the agency determines that the use of the invention by others is necessary for the practice of a subject invention or for the use of a work object of the funding agreement and that such action is necessary to achieve the practical application of the subject invention or work object. Any such determination shall be on the record after an opportunity for an agency hearing. Any action commenced for judicial review of such determination shall be brought within sixty days after notification of such determination.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3020.)
Historical Note
References in Text. This Act, referred to in subsec. (d), probably means Pub.L. 96-517, Dec. 12, 1980, 94 Stat. 3015, which enacted chapters 18 (sections 200 to 211) and 30 (sections 301 to 307) of this title, amended sections 41, 42, and 154 of this title, section 1113 of Title 15, Commerce and Trade, sections 101 and 117 of Title 17, Copyrights, and sections 2186, 2457, and 5908 of Title 42, The Public Health and Welfare, and enacted provisions set out as notes under sections 14 and 41 of this title. For complete classification of this Act to the Code, see Short Title of 1980
Amendment note set out under section 41 of this title and Table volume.
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. & Adm.News, p. 6460.
Cross References
Authority of Office of Federal Procurement Policy to issue regulations applicable to Federal agencies to implement this section, see section 206 of this title. Confidentiality of information disclosing invention, see section 205 of this title. Restrictions on licensing of federally owned inventions, see section 209 of this title.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
Library References
Patents :key symbol:90(1, 7), 221.
C.J.S. Patents §§ 84 et seq., 280.
§ 203. March-in rights
With respect to any subject invention in which a small business firm or nonprofit organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder to require the contractor, an assignee or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such-
(a) action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective
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steps to achieve practical application of the subject invention in such field of use;
(b) action is necessary to alleviate health or safety needs which are not reasonably satisfied by the contractor, assignee, or their licensees;
(c) action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee, or licensees; or
(d) action is not necessary because the agreement required by section 204 has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of its agreement obtained pursuant to section 204.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3022.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Cross References
Authority of Office of Federal Procurement Policy to issue regulations applicable to Federal agencies to implement this section, see section 206 of this title. Confidentiality of information disclosing invention, see section 205 of this title.
Funding agreements to contain provisions to effectuate requirements of this section, see section 202 of this title.
Restrictions on licensing of federally owned inventions, see section 209 of this title.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
Library References
Patents :key symbol:221.
C.J.S. Patents § 280.
§ 204. Preference for United States industry
Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit organization shall grant to any person the exclusive right to use or sell any subject invention in the United States unless such person agrees that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by the Federal agency under whose funding agreement the invention was made upon a showing by the small business firm, nonprofit organization, or assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to
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manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible. (Added Pub.L. 86-517, § 6(a), Dec. 12, 1980, 94 Stat. 3023.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Cross References
Authority of Office of Federal Procurement Policy to issue regulations applicable to Federal agencies to implement this section, see section 206 of this title.
Funding agreements to contain provisions to effectuate requirements of this section, see section 202 of this title.
Grant by Federal agency of nonexclusive, partially exclusive, or exclusive license because of waiver or breach of agreement to use or sell under this section, see section 203 of this title.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
Library References
Patents :key symbol:221.
C.J.S. Patents § 280.
§ 205. Confidentiality
Federal agencies are authorized to withhold from disclosure to the public information disclosing any invention in which the Federal Government owns or may own a right, title, or interest (including a nonexclusive license) for a reasonable time in order for a patent application to be filed. Furthermore, Federal agencies shall not be required to release copies of any document which is part of an application for patent filed with the United States Patent and Trademark Office or with any foreign patent office. (Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3023.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
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Library References C.J.S. Patents §§ 99 to 101, 109.
Patents :key symbol:97.
§ 206. Uniform clauses and regulations
The Office of Federal Procurement Policy, after receiving recommendations of the Office of Science and Technology Policy, may issue regulations which may be made applicable to Federal agencies implementing the provisions of sections 202 through 204 of this chapter and the Office of Federal Procurement Policy shall establish standard funding agreement provisions required under this chapter.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3023.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
Library References C.J.S. Patents § 275 et seq.
Patents :key symbol:220.
§ 207. Domestic and foreign protection of federally owned inventions
Each Federal agency is authorized to-
(1) apply for, obtain, and maintain patents or other forms of protection in the United States and in foreign countries on inventions in which the Federal Government owns a right, title, or interest;
(2) grant nonexclusive, exclusive, or partially exclusive licenses under federally owned patent applications, patents, or other forms of protection obtained, royalty-free or for royalties or other consideration, and on such terms and conditions, including the grant to the licensee of the right of enforcement pursuant to the provisions of chapter 29 of this title as determined appropriate in the public interest;
(3) undertake all other suitable and necessary steps to protect and administer rights to federally owned inventions on behalf of the Federal Government either directly or through contract; and
(4) transfer custody and administration, in whole or in part, to another Federal agency, of the right, title, or interest in any federally owned invention.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3023.)
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Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq. Licensing of National Aeronautics and Space Administration inventions, see 14 CFR 1245.200 et seq.
Library References
Patents :key symbol:90(1, 7), 221.
C.J.S. Patents §§ 84 et seq., 280.
§ 208. Regulations governing Federal licensing
The Administrator of General Services is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention, other than inventions owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3024.)
Historical Note
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq. Licensing of federally-owned inventions, see 38 CFR 1.666; 41 CFR 101-4.100 et seq. Licensing of National Aeronautics and Space Administration inventions, see 14 CFR 1245.200 et seq.
Library References
Patents :key symbol:220.
C.J.S. Patents § 275 et seq.
§ 209. Restrictions on licensing of federally owned inventions
(a) No Federal agency shall grant any license under a patent or patent application on a federally owned invention unless the person requesting the license has supplied the agency with a plan for development and/or marketing of the invention, except that any such plan may be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5 of the United States Code.
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(b) A Federal agency shall normally grant the right to use or sell any federally owned invention in the United States only to a licensee that agrees that any products embodying the invention or produced through the use of the invention will be manufactured substantially in the United States.
(c)(1) Each Federal agency may grant exclusive or partially exclusive licenses in any invention covered by a federally owned domestic patent or patent application only if, after public notice and opportunity for filing written objections, it is 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.
(2) A Federal agency shall not grant such exclusive or partially exclusive license under paragraph (1) of this subsection if it determines 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.
(3) First preference in the exclusive and partially exclusive licensing of federally owned inventions shall go to small business firms submitting plans that are determined by the agency to be within the capabilities of the firms and equally likely, if executed, to bring the invention to practical application as any plans submitted by applicants that are not small business firms.
(d) After consideration of whether the interests of the Federal Government or United States industry in foreign commerce will be enhanced, any Federal agency may grant exclusive or partially exclusive licenses in any invention covered by a foreign patent application or patent, after public notice and opportunity for filing written objections, except that a Federal agency shall not grant such exclusive or partially exclusive license if it determines 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.
(e) The Federal agency shall maintain a record of determinations to grant exclusive or partially exclusive licenses.
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(f) Any grant of a license shall contain such terms and conditions as the Federal agency determines appropriate for the protection of the interests of the Federal Government and the public, including provisions for the following:
(1) periodic reporting on the utilization or efforts at obtaining utilization that are being made by the licensee with particular reference to the plan submitted: Provided, That any such information may be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5 of the United States Code;
(2) the right of the Federal agency to terminate such license in whole or in part if it determines that the licensee is not executing the plan submitted with its request for a license and the licensee cannot otherwise demonstrate to the satisfaction of the Federal agency that it has taken or can be expected to take within a reasonable time, effective steps to achieve practical application of the invention;
(3) the right of the Federal agency to terminate such license in whole or in part if the licensee is in breach of an agreement obtained pursuant to paragraph (b) of this section; and
(4) the right of the Federal agency to terminate the license in whole or in part if the agency determines that such action is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license and such requirements are not reasonably satisfied by the licensee.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3024.)
Historical Note
References in Text. Antitrust laws, referred to in subsecs. (c)(2) and (d), are classified generally to chapter 1 (section 1 et seq.) of Title 15, Commerce and Trade.
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of
Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. & Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
Library References
Patents :key symbol:221.
C.J.S. Patents § 280.
§ 210. Precedence of chapter
(a) This chapter shall take precedence over any other Act which would require a disposition of rights in subject inventions of small business firms or nonprofit organizations contractors in a manner that is inconsistent with this chapter, including but not necessarily limited to the following: 
278

CH. 18 FEDERALLY ASSISTED INVENTIONS 35 § 210
(1) section 10(a) of the Act of June 29, 1935, as added by title I of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 Stat. 1085);
(2) section 205(a) of the Act of August 14, 1946 U.S.C. 1624(a); 60 Stat. 1090);
(3) section 501(c) of the Federal Mine Safety and Health Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742);
(4) section 106(c) of the National Traffic and Motor Vehicle Safety Act of 1966 (15 U.S.C. 1395(c); 80 Stat. 721);
(5) section 12 of the National Science Foundation Act of 1950 (42 U.S.C. 1871(a); 82 Stat. 360);
(6) section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182; 68 Stat. 943);
(7) section 305 of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457);
(8) section 6 of the Coal Research Development Act of 1960 (30 U.S.C. 666; 74 Stat. 337);
(9) section 4 of the Helium Act Amendments of 1960 (50 U.S.C. 167b; 74 Stat. 920);
(10) section 32 of the Arms Control and Disarmament Act of 1961 (22 U.S.C. 2572; 75 Stat. 634);
(11) subsection (e) of section 302 of the Appalachian Regional Development Act of 1965 (40 U.S.C.App. 302(e); 79 Stat. 5);
(12) section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 U.S.C. 5901 1; 88 Stat. 1878);
(13) section 5(d) of the Consumer Product Safety Act (15 U.S.C. 2054(d); 86 Stat. 1211);
(14) section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58 Stat. 191);
(15) section 8001(c)(3) of the Solid Waste Disposal Act (42 U.S.C. 6981(c); 90 Stat. 2829);
(16) section 219 of the Foreign Assistance Act of 1961 (22 U.S.C. 2179; 83 Stat. 806);
(17) section 427(b) of the Federal Mine Health and Safety Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155);
(18) section 306(d) of the Surface Mining and Reclamation Act of 1977 (30 U.S.C. 1226(d); 91 Stat. 455);
(19) section 21(d) of the Federal Fire Prevention and Control Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548);
(20) section 6(b) of the Solar Photovoltaic Energy Research Development and Demonstration Act of 1978 (42 U.S.C. 5585(b); 92 Stat. 2516);
(21) section 12 of the Native Latex Commercialization and Economic Development Act of 1978 (7 U.S.C. 178(j) 2, 92 Stat. 2533); and
279
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35 § 210
PATENTABILITY; GRANT OF PATENTS PT. II
(22) section 408 of the Water Resources and Development Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360).
The Act creating this chapter shall be construed to take precedence over any future Act unless that Act specifically cites this Act and provides that it shall take precedence over this Act.
(b) Nothing in this chapter is intended to alter the effect of the laws cited in paragraph (a) of this section or any other laws with respect to the disposition of rights in inventions made in the performance of funding agreements with persons other than nonprofit organizations or small business firms.
(c) Nothing in this chapter is intended to limit the authority of agencies to agree to the disposition of rights in inventions made in the performance of work under funding agreements with persons other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued on August 23, 1971 (36 Fed.Reg. 16887), agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such persons to retain ownership of inventions. Any disposition of rights in inventions made in accordance with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized.
(d) Nothing in this chapter shall be construed to require the disclosure of intelligence sources or methods or to otherwise affect the authority granted to the Director of Central Intelligence by statute or Executive order for the protection of intelligence sources or methods.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3026.)
1 So in original. Should be "5908".
2 So in original. Should be "178j".
Historical Note
References in Text. The Act and this Act, referred to in subsec. (a), means Pub.L. 96-517, Dec. 12, 1980, 94 Stat. 3015, which enacted chapters 18 (sections 200 to 211) and 30 (sections 301 to 307) of this title, amended sections 41, 42, and 154 of this title, section 1113 of Title 15, Commerce and Trade, sections 101 and 117 of Title 17, Copyrights, and sections 2186, 2457, and 5908 of Title 42, The Public Health and Welfare, and enacted provisions set out as notes under sections 14 and 41 of this title. For complete classification of this Act to the Code, see Short Title of 1980 Amendment note set out under section 41 of this title and Tables volume.
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
280

CH. 18 FEDERALLY ASSISTED INVENTIONS 35 § 211
§ 211. Relationship to antitrust laws
Nothing in this chapter shall be deemed to convey to any person immunity from civil or criminal liability, or to create any defenses to actions, under any antitrust law.
(Added Pub.L. 96-517, § 6(a), Dec. 12, 1980, 94 Stat. 3027.)
Historical Note
References in Text. Antitrust laws and antitrust law, referred to in the catchline and text, are classified generally to chapter 1 (section 1 et seq.) of Title 15, Commerce and Trade.
Effective Date. Section effective July 1, 1981, but implementing regulations authorized to be issued earlier see section 8(f) of Pub.L. 96-517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Legislative History. For legislative history and purpose of Pub.L. 96-517, see 1980 U.S. Code Cong. and Adm.News, p. 6460.
Code of Federal Regulations
Allocation of rights to inventions made in performance of National Science Foundation-assisted research, policies, procedures, and clauses governing, see 45 CFR 650.1 et seq.
Library References
Municipal Corporations :key symbol:12(13). 
C.J.S. Municipal Corporations § 24.
281
AMERICAN LAW DIVISIÓN

UNITED STATES CODE ANNOTATED
Title 35 Patents §§ 141 to 280
1993 Cumulative Annual Pocket Part
Replacing 1992 pocket part in back of 1984 bound volume
Includes the Laws of the 102nd CONGRESS, SECOND SESSION (1992) For close of Notes of Decisions See page III For Later Laws and Cases Consult USCA Interim Pamphlet Service
CRS - AMERICAN LAW DIVISION
CR
MAY 11 1993
WEST PUBLISHING CO. ST. PAUL, MINN.
166 U.S.C.A.-1
1993 P.P.
166


PART II-PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS [Continued]
CHAPTER 18-PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec. 212. Disposition of rights in educational awards.
HISTORICAL AND STATUTORY NOTES
1984 Amendment
Pub.L. 98-620, Title V, § 501(15), Nov. 8, 1984, 98 Stat. 3368, added item 212.
§ 200. Policy and objective
LAW REVIEW COMMENTARIES
Federal circuit: A case study in specialized courts. Rochelle Cooper Dreyfuss, 64 N.Y.U.L.Rev. 1 (1989).
§ 201. Definitions
As used in this chapter-
[See main volume for text of (a) to (c)]
(d) The term "invention" means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
(e) The term "subject invention" means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance.
[See main volume for text of (f) to (i)]
(As amended Pub.L. 98-620, Title V, § 501(1), (2), Nov. 8, 1984, 98 Stat. 3364.)
HISTORICAL AND STATUTORY NOTES
References in Text
The Plant Variety Protection Act, referred to in subsec. (d), is Pub.L. 91-577, Dec. 24, 1970, 84 Stat. 1542, as amended, which is classified princi- pally to chapter 57 (section 2321 et seq.) of Title 7, Agriculture. For complete classification of this Act to the Code, see Short Title note set out under section 2321 of Title 7 and Tables.
1984 Amendment
Subsec. (d). Pub.L. 98-620, § 501(1), inserted "or any novel variety of plant which is or may be protectable under the Plant Variety Protection
Act (7 U.S.C. 2321 et seq.)" immediately after "title".
Subsec. (e). Pub.L. 98-620, § 501(2), inserted "Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance" immediately after "agreement".
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708.
§ 202. Disposition of rights
(a) Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any subject invention: Provided, however, That a funding agreement may provide otherwise (i) when the contractor is not located in the United States or does not have a place of business located in the United States or is subject to the control
26

PATENTS
35 § 202
of a foreign government, (ii) in exceptional circumstances when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter (iii) when it is determined by a Government authority which is authorized by statute or Executive order to conduct foreign intelligence or counter-intelligence activities that the restriction or elimination of the right to retain title to any subject invention is necessary to protect the security of such activities or,1 iv) when the funding agreement includes the operation of a Government-owned, contractor-operated facility of the Department of Energy primarily dedicated to that Department's naval nuclear propulsion or weapons related programs and all funding agreement limitations under this subparagraph on the contractor's right to elect title to a subject invention are limited to inventions occurring under the above two programs of the Department of Energy .. 2 The rights of the nonprofit organization or small business firm shall be subject to the provisions of paragraph (c) of this section and the other provisions of this chapter.
(b)(1) The rights of the Government under subsection (a) shall not be exercised by a Federal agency unless it first determines that at least one of the conditions identified in clauses (i) through (iii) of subsection (a) exists. Except in the case of subsection (a)(iii), the agency shall file with the Secretary of Commerce, within thirty days after the award of the applicable funding agreement, a copy of such determination. In the case of a determination under subsection (a)(ii), the statement shall include an analysis justifying the determination. In the case of determinations applicable to funding agreements with small business firms, copies shall also be sent to the Chief Counsel for Advocacy of the Small Business Administration. If the Secretary of Commerce believes that any individual determination or pattern of determinations is contrary to the policies and objectives of this chapter or otherwise not in conformance with this chapter, the Secretary shall so advise the head of the agency concerned and the Administrator of the Office of Federal Procurement Policy, and recommend corrective actions.
(2) Whenever the Administrator of the Office of Federal Procurement Policy has determined that one or more Federal agencies are utilizing the authority of clause (i) or (ii) of subsection (a) of this section in a manner that is contrary to the policies and objectives of this chapter, the Administrator is authorized to issue regulations describing classes of situations in which agencies may not exercise the authorities of those clauses.
(3) At least once every 5 years, the Comptroller General shall transmit a report to the Committees on the Judiciary of the Senate and House of Representatives on the manner in which this chapter is being implemented by the agencies and on such other aspects of Government patent policies and practices with respect to federally funded inventions as the Comptroller General believes appropriate.
(4) If the contractor believes that a determination is contrary to the policies and objectives of this chapter or constitutes an abuse of discretion by the agency, the determination shall be subject to the last paragraph of section 203(2).
(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
(1) That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time.
(2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States, the period for election may be shortened by the Federal agency to a date that is not more than sixty days prior to the end of the statutory period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
27

35 § 202
PATENTS
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times.
(4) With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world: Provided, That the funding agreement may provide for such additional rights;3 including the right to assign or have assigned foreign patent rights in the subject invention, as are determined by the agency as necessary for meeting the obligations of the United States under any treaty, international agreement, arrangement of cooperation, memorandum of understanding, or similar arrangement, including military agreement relating to weapons development and production.
(5) The right of the Federal agency to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees: Provided, That any such information as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5 of the United States Code.
[See main volume for text of (6)]
(7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assignment is made to an organization which has as one of its primary functions the management of inventions (provided that such assignee shall be subject to the same provisions as the contractor); (B) a requirement that the contractor share royalties with the inventor; (C) except with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, a requirement that the balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research or education; (D) a requirement that, except where it proves infeasible after a reasonable inquiry, in the licensing of subject inventions shall be given to small business firms; and (E) with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, requirements (i) that after payment of patenting costs, licensing costs, payments to inventors, and other expenses incidental to the administration of subject inventions, 100 percent of the balance of any royalties or income earned and retained by the contractor during any fiscal year up to an amount equal to 5 percent of the annual budget of the facility, shall be used by the contractor for scientific research, development, and education consistent with the research and development mission and objectives of the facility, including activities that increase the licensing potential of other inventions of the facility; provided that if said balance exceeds 5 percent of the annual budget of the facility, that 75 percent of such excess shall be paid to the Treasury of the United States and the remaining 25 percent shall be used for the same purposes as described above in this clause (D); and (ii) that, to the extent it provides the most effective technology transfer, the licensing of subject inventions shall be administered by contractor employees on location at the facility.
[See main volume for text of (8); (d) to (f)]
(As amended Pub.L. 98-620, Title V, § 501(3)-(8), Nov. 8, 1984, 98 Stat. 3364-3366; Pub.L. 102-204, § 10, Dec. 10, 1991, 105 Stat. 1641.)
1 So in original. An open parenthesis probably should have been inserted here.
28

PATENTS
35 § 202
2 So in original. Directory language of Pub.L. 98-620 resulted in two periods following "Department of Energy".
8 So in original. A comma was probably intended.
HISTORICAL AND STATUTORY NOTES
1991 Amendments
Subsec. (b)(3). Pub.L. 102-204 substituted "every 5 years" for "each year".
1984 Amendment
Subsec. (a)(i). Pub.L. 98-620, § 501(3), substituted "when the contractor is not located in the United States or does not have a place of business located in the United States or is subject to the control of a foreign government" for "when the funding agreement is for the operation of a Government-owned research or production facility".
Subsec. (a)(iv). Pub.L. 98-620, § 501(3), added cl. (iv).
Subsec. (b)(1). Pub.L. 98-620, § 501(4), gave to the Department of Commerce oversight of agency use of the exceptions to small business or nonprofit organization invention ownership.
Subsec. (b)(2). Pub.L. 98-620, § 501(4), substituted provisions authorizing the Administrator of the Office of Federal Procurement Policy to issue regulations describing situations in which agencies may not exercise the authorities of sub- sec. (a)(i), (ii), whenever the Administrator has determined that one or more agencies are utilizing such authority in violation of this chapter for provisions which gave to the Comptroller General oversight 'of agency actions under this chapter.
Subsec. (b)(4). Pub.L. 98-620, § 501(4)(A), added par. (4).
Subsec. (c)(1). Pub.L. 98-620, § 501(5), substituted provisions requiring disclosure of each invention within a reasonable time after it be- comes known to contractor personnel responsible for the administration of patent matters for provision requiring disclosure of each invention within a reasonable time after it is made.
Subsec. (c)(2). Pub.L. 98-620, § 501(5), substituted provisions requiring the contractor to make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention for provision requiring election to retain title within a reasonable time after disclosure, and added provision authorizing the Federal agency to shorten the period for election under certain circumstances.
Subsec. (c)(3). Pub.L. 98-620, § 501(5), substituted provisions requiring a contractor electing rights in a subject invention to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and thereafter to file corresponding patent applications in other countries in which it wishes to retain title within reasonable times for provisions requiring the contractor to file patent applications within a reasonable time.
Subsec. (c)(4). Pub.L. 98-620, § 501(5), substituted provision that the funding agreement may provide for such additional rights, including the right to assign or have assigned foreign patent rights in the subject invention, as are determined by the agency as necessary for meeting the obligations of the United States under any treaty, international agreement, arrangement of cooperation, memorandum of understanding, or similar arrangement, including any military agreement relating to weapons development and production for provision that the agency could, if provided in the funding agreement, have additional rights to sublicense any foreign government or international organization pursuant to any existing or future treaty or agreement.
Subsec. (c)(5). Pub.L. 98-620, § 501(6), substituted "as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated" for "may be treated".
Subsec: (c)(7)(A). Pub.L. 98-620, § 501(7), struck out provision which made an exception for organizations which were not themselves engaged in or did not hold a substantial interest in other organizations engaged in the manufacture or sales of products or the use of processes that might utilize the invention or be in competition with embodiments of the invention.
Subsec. (c)(7)(B). Pub.L. 98-620, § 501(8), re- designated former cl. (C) as (B). Former cl. (B), relating to a prohibition against the granting of exclusive licenses under United States Patents or Patent Applications in a subject invention by the contractor to persons other than small business firms for periods in excess of certain specified periods, and relating to commercial sales, was struck out.
Subsec. (c)(7)(C). Pub.L. 98-620, § 501(8), added cl. (C). Former cl. (C) was redesignated (B).
Subsec. (c)(7)(D). Pub.L. 98-620, § 501(8), added cl. (D). Former cl. (D) was redesignated (E).
Subsec. (c)(7)(E). Pub.L. 98-620, § 501(8), re- designated former cl. (D) as (E), and in cl. (E) as so redesignated added provisions placing a limit on the amount of royalties that the contract operators of Government-owned laboratories are entitled to retain after paying patent administrative expenses and a share of the royalties to inventors, requiring payment of amounts in excess of such limits to the United States Treasury, and requiring that, to the extent it provides the most effective technology transfer, the licensing of subject inventions shall be administered by contractor employees on location at the facility.
Effective Date of 1991 Amendment
Amendment by Pub.L. 102-204 effective on Dec. 10, 1991, except as otherwise provided, see section 13 of Pub.L. 102-204, set out as a note under section 41 of this title.
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708. See, also, Pub.L. 102-204, 1991 U.S. Code Cong. and Adm. News, p. 1320.
29

35 § 202
PATENTS
LAW REVIEW COMMENTARIES
The exercise of patent rights through multiple Brian D. Coggio, and Norman C. Dulak (1985) 11 exclusive field-of-use licensing. S. Leslie Misrock, Rutgers Computer & Tech Law J. 383.
NOTES OF DECISIONS
Minimum sharing formula 2 Right of action 1
Platzer v. Sloan-Kettering Institute for Cancer Research, S.D.N.Y.1992, 787 F.Supp. 360.
1. Right of action
No private cause of action exists under provision of Bayh-Dole Act granting nonprofit organizations exclusive title to inventions developed through federal funding and requiring that such federal contractors share royalties with inventor.
2. Minimum sharing formula
Provision of Bayh-Dole Act requiring that non-profit organizations receiving federal funding share royalties with inventor does not impose sharing ratio or minimum share requirement. Platzer v. Sloan-Kettering Institute for Cancer Research, S.D.N.Y.1992, 787 F.Supp. 360.
§ 203. March-in rights
(1.)1 With respect to any subject invention in which a small business firm or nonprofit organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder to require the contractor, an assignee or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such-
[See main volume for text of (a) to (d)]
(2) A determination pursuant to this section or section 202(b)(4) shall not be subject to the Contract Disputes Act (41 U.S.C. § 601 et seq.). An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this section may, at any time within sixty days after the determination is issued, file a petition in the United States Claims Court, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse, remand or modify, ",2 as appropriate, the determination of the Federal agency. In cases described in paragraphs (a) and (c), the agency's determination shall be held in abeyance pending the exhaustion of appeals or petitions filed under the preceding sentence.
(As amended Pub.L. 98-620, Title V, § 501(9), Nov. 8, 1984, 98 Stat. 3367.)
1 So in original. Probably should read "(1)".
2 So in original. Quotation marks and second comma probably should not appear.
HISTORICAL AND STATUTORY NOTES
References in Text
The Contract Disputes Act, referred to in par. (2), is Pub.L. 95-563, Nov. 1, 1978, 92 Stat. 2383, as amended, which is classified principally to chapter 9 (section 601 et seq.) of Title 41, Public Contracts. For complete classification of this Act to the Code, see Short Title note set out under section 601 of Title 41 and Tables.
1984 Amendment
Par. (1). Pub.L. 98-620 designated existing provisions as par. (1).
Par. (2). Pub.L. 98-620 added par. (2).
Change of Name
References to United States Claims Court deemed to refer to United States Court of Federal Claims and references to Claims Court deemed to refer to Court of Federal Claims, see section 902(b) of Pub.L. 102-572, set out as a note under section 171 of Title 28, Judiciary and Judicial Procedure.
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708.
§ 206. Uniform clauses and regulations
The Secretary of Commerce may issue regulations which may be made applicable to Federal agencies implementing the provisions of sections 202 through 204 of this chapter and shall establish standard funding agreement provisions required under this chapter. The regulations and the standard funding agreement shall be subject to public comment before their issuance.
(As amended Pub.L. 98-620, Title V, § 501(10), Nov. 8, 1984, 98 Stat. 3367.)
30

PATENTS
35 § 210
HISTORICAL AND STATUTORY NOTES
1984 Amendment
Pub.L. 98-620 substituted "The Secretary of Commerce" for "The Office of Federal Procurement Policy, after receiving recommendations of the Office of Science and Technology Policy," and "shall establish" for "the Office of Federal Procurement Policy shall establish", respectively, and added provisions that the regulations and the standard funding agreement shall be subject to public comment before their issuance.
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708.
§ 207. Domestic and foreign protection of federally owned inventions
(a) Each Federal agency is authorized to-
[See main volume for text of (1) to (4)]
(b) For the purpose of assuring the effective management of Government-owned inventions, the Secretary of Commerce is authorized to-
(1) assist Federal agency efforts to promote the licensing and utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and maintaining inventions in foreign countries, including the payment of fees and costs connected therewith; and
(3) consult with and advise Federal agencies as to areas of science and technology research and development with potential for commercial utilization. (As amended Pub.L. 98-620, Title V, § 501(11), Nov. 8, 1984, 98 Stat. 3367.)
HISTORICAL AND STATUTORY NOTES
1984 Amendment
Legislative History
Subsec. (a). Pub.L. 98-620, designated existing provisions as subsec. (a).
Subsec. (b). Pub.L. 98-620, added subsec. (b).
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708.
LAW REVIEW COMMENTARIES
The exercise of patent rights through multiple exclusive field-of-use licensing. S. Leslie Misrock, Brian D. Coggio, and Norman C. Dulak (1985) 11 Rutgers Computer & Tech.Law J. 383.
1
§ 208. Regulations governing Federal licensing
The Secretary of Commerce is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention, other than inventions owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis.
(As amended Pub.L. 98-620, Title V, § 501(12), Nov. 8, 1984, 98 Stat. 3367.)
HISTORICAL AND STATUTORY NOTES
1984 Amendment
Pub.L. 98-620 substituted "Secretary of Commerce" for "Administrator of General Services".
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708.
§ 209. Restrictions on licensing of federally owned inventions
LAW REVIEW COMMENTARIES
The exercise of patent rights through multiple exclusive field-of-use licensing. S. Leslie Misrock, Rutgers Computer & Tech.Law J. 383. Brian D. Coggio, and Norman C. Dulak (1985) 11
§ 210. Precedence of chapter
[See main volume for text of (a) and (b)]
(c) Nothing in this chapter is intended to limit the authority of agencies to agree to the disposition of rights in inventions made in the performance of work under funding agreements with persons other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued
31

35 § 210
PATENTS
on February 18, 1983, agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such persons to retain ownership of inventions except that all funding agreements, including those with other than small business firms and nonprofit organizations, shall include the requirements established in paragraph 202(c)(4) and section 203 of this title.1 Any disposition of rights in inventions made in accordance with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized.
[See main volume for text of (d)]
(e) The provisions of the Stevenson-Wydler Technology Innovation Act of 1980, as amended by the Federal Technology Transfer Act of 1986, shall take precedence over the provisions of this chapter to the extent that they permit or require a disposition of rights in subject inventions which is inconsistent with this chapter. 
(As amended Pub.L. 98-620, Title V, § 501(13), Nov. 8, 1984, 98 Stat. 3367; Pub.L. 99-502, § 9(c), Oct. 20, 1986, 100 Stat. 1796.)
1 So in original. Directory language of Pub.L. 98-620 resulted in two periods after "section 203 of this title".
HISTORICAL AND STATUTORY NOTES
References in Text
The Stevenson-Wydler Technology Innovation Act of 1980, referred to in subsec. (e), is Pub.L. 96-480, Oct. 21, 1980, 94 Stat. 2311, which is classified generally to chapter 63 (section 3701 et seq.) of Title 15, Commerce and Trade. For complete classification of this Act to the Code, see Short Title note set out under section 3701 of Title 15 and Tables.
The Federal Technology Transfer Act of 1986, referred to in subsec. (e), is Pub.L. 99-502, Oct. 20, 1986, 100 Stat. 1785. For complete classification of this Act to the Code, see Short Title of 1986 Amendment note set out under section 3701 of Title 15, Commerce and Trade.
1986 Amendment
Subsec. (e). Pub.L. 99-502, § 9(c), added sub- sec. (e).
1984 Amendment
Subsec. (c). Pub.L. 98-620 substituted "February 18, 1983, agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such persons to retain ownership of inventions except that all funding agreements, including those with other than small business firms and nonprofit organizations, shall include the requirements established in paragraph 202(c)(4) and section 203 of this title" for "August 23, 1971 (36 Fed.Reg. 16887), agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such persons to retain ownership of inventions".
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708. See, also, Pub.L. 99-502, 1986 U.S. Code Cong. and Adm. News, p. 3442.
§ 212. Disposition of rights in educational awards
No scholarship, fellowship, training grant, or other funding agreement made by a Federal agency primarily to an awardee for educational purposes will contain any provision giving the Federal agency any rights to inventions made by the awardee.
(Added Pub.L. 98-620, Title V, § 501(14), Nov. 8, 1984, 98 Stat. 3368.)
HISTORICAL AND STATUTORY NOTES
Legislative History
For legislative history and purpose of Pub.L. 98-620, see 1984 U.S. Code Cong. and Adm. News, p. 5708.
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PATENTS
35 § 251 Note 73
PART III-PATENTS AND PROTECTION OF PATENTS RIGHTS
CHAPTER 25-AMENDMENT AND CORRECTION OF PATENTS
§ 251. Reissue of defective patents
LAW REVIEW COMMENTARIES
Biotechnology Patent Protection Act. David Beier and Robert H. Benson, 68 Den.U.L.Rev. 173 (1991)
Doctrine of equivalents in patent law: Questions that Pennwalt did not answer. Martin J.
Adelman and Gary L. Francione, 137 U.Pa. L.Rev. 673 (1989).
New world of patents created by the Court of Appeals for the Federal Circuit. Martin J. Adel- man, 20 U.Mich.J.L.Ref. 979 (1987).
LIBRARY REFERENCES
Patent reexamination reexamined. William G. Conger, Detroit Coll.L.Rev. 523 (1986).
NOTES OF DECISIONS
I. GENERALLY
1. Construction
Federal statute, 35 U.S.C.A. § 251, governing reissue of defective patents, is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally; nonetheless, not every event or circumstance that might be labeled "error" is correctable by reissue. In re Weiler, C.A.Fed.1986, 790 F.2d 1576.
3. Purpose
Federal statute, 35 U.S.C.A. § 251, governing the reissue of defective patents, was not enacted as panacea for all patent prosecution problems, nor as grant to patentee of second opportunity to prosecute de novo his original application. In re Weiler, C.A.Fed.1986, 790 F.2d 1576.
12. Surrender of original patent
National Business Systems, Inc. v. AM International Inc., 546 F.Supp. 340 [main volume] affirmed and remanded 743 'F.2d 1227, on remand 607 F.Supp. 1251.
19. Recapture
Recapture rule should not bar patentee from securing a reissue claim that is broader in a material respect than a cancelled claim when the reissue claim is also narrower than the cancelled 'claim in a way that is material to the "error" asserted in seeking reissue patent; crucial issue in assessing significance of the cancellation or narrowing of a claim in prosecution of the original patent on the existence of "error" is the intent of the applicant when he or she cancelled the claim. Patecell. v. U.S., 1989, 16 Cl.Ct. 644.
Il. FACTORS DETERMINING REISSUANCE- GENERALLY
Error 41a
41a. Error
Applicant's acquiescence in restriction requirement in original application, regardless of propriety of underlying restriction requirement, was not an 'error correctable by reissue. In re Watkinson, C.A.Fed.1990, 900 F.2d 230.
"Error" of statute, providing that when any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, patent may be reissued for invention disclosed in original patent, has two parts: error in the patent and error in conduct. Hewlett-Packard Co. v. Bausch & Lomb Inc., C.A.Fed. (Cal.) 1989, 882 F.2d 1556, certiorari denied 110 S.Ct. 1125, 493 U.S. 1076, 107 L.Ed.2d 1031, on remand 746 F.Supp. 1413, .
43. - Broader or narrower claims
Proposed reissue claims to machine for filling containers with fluid sought to enlarge scope of claims of original patent where original claims described "continuously running conveyor means" and reissue application introduced claims to "conveyor means." In re Bennett, C.A.Fed.1985, 766 F.2d 524.
46. - Fraud
Patent and trademark office may consider issues of fraud and inequitable conduct when deciding whether to issue or reissue a patent. Slimfold Mfg. Co., Inc. v. Kinkead Industries, Inc., D.C.Ga.1984, 600 F.Supp. 1015 .:
51. -- Original claims retained in reissue
Claims of reexamination patent, which were not substantively different from those in original patent of apparatus and method for stretch-wrapping loads stacked on pallet with various polymer films, qualified for exception to grant of intervening rights to infringer pursuant to statute, which gives infringer intervening rights, unless invention infringes valid claim of reissued patent that is contained in original patent and which applies to reexamination patent. Kaufman Co., Inc. v. Lantech, Inc., C.A.Fed. (Ohio) 1986, 807 F.2d 970.
III. FACTORS DETERMINING REISSUANCE-IDENTITY OF INVENTION
73. Limitation to same invention
A reissue patent and original patent must be for same invention. Principle Business Enterprises, Inc. v. U.S., 1985, 7 Cl.Ct. 433.
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