2013 US Code
Title 35 - Patents
Part II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS (§§ 100 - 212)
Chapter 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE (§§ 200 - 212)
Section 209 - Licensing federally owned inventions
Publication Title | United States Code, 2012 Edition, Supplement 1, Title 35 - PATENTS |
Category | Bills and Statutes |
Collection | United States Code |
SuDoc Class Number | Y 1.2/5: |
Contained Within | Title 35 - PATENTS PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE Sec. 209 - Licensing federally owned inventions |
Contains | section 209 |
Date | 2013 |
Laws in Effect as of Date | January 16, 2014 |
Positive Law | Yes |
Disposition | standard |
Source Credit | Added Pub. L. 96-517, §6(a), Dec. 12, 1980, 94 Stat. 3024; amended Pub. L. 106-404, §4(a), Nov. 1, 2000, 114 Stat. 1743; Pub. L. 107-273, div. C, title III, §13206(a)(15), Nov. 2, 2002, 116 Stat. 1905; Pub. L. 112-29, §20(i)(3), Sept. 16, 2011, 125 Stat. 335. |
Statutes at Large References | 94 Stat. 3024 114 Stat. 1743 116 Stat. 1905 125 Stat. 335 |
Public Law References | Public Law 96-517, Public Law 106-404, Public Law 107-273, Public Law 112-29 |
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(a)
(1) granting the license is a reasonable and necessary incentive to—
(A) call forth the investment capital and expenditures needed to bring the invention to practical application; or
(B) otherwise promote the invention's utilization by the public;
(2) the Federal agency finds that the public will be served by the granting of the license, as indicated by the applicant's intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention's utilization by the public, and that the proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application, as proposed by the applicant, or otherwise to promote the invention's utilization by the public;
(3) the applicant makes a commitment to achieve practical application of the invention within a reasonable time, which time may be extended by the agency upon the applicant's request and the applicant's demonstration that the refusal of such extension would be unreasonable;
(4) granting the license will not tend to substantially lessen competition or create or maintain a violation of the Federal antitrust laws; and
(5) in the case of an invention covered by a foreign patent application or patent, the interests of the Federal Government or United States industry in foreign commerce will be enhanced.
(b)
(c)
(d)
(1) retaining a nontransferable, irrevocable, paid-up license for any Federal agency to practice the invention or have the invention practiced throughout the world by or on behalf of the Government of the United States;
(2) requiring periodic reporting on utilization of the invention, and utilization efforts, by the licensee, but only to the extent necessary to enable the Federal agency to determine whether the terms of the license are being complied with, except that any such report 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; and
(3) empowering the Federal agency to terminate the license in whole or in part if the agency determines that—
(A) the licensee is not executing its commitment to achieve practical application of the invention, including commitments contained in any plan submitted in support of 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;
(B) the licensee is in breach of an agreement described in subsection (b);
(C) termination 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; or
(D) the licensee has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under the license agreement.
(e)
(f)
(Added Pub. L. 96–517, §6(a), Dec. 12, 1980, 94 Stat. 3024; amended Pub. L. 106–404, §4(a), Nov. 1, 2000, 114 Stat. 1743; Pub. L. 107–273, div. C, title III, §13206(a)(15), Nov. 2, 2002, 116 Stat. 1905; Pub. L. 112–29, §20(i)(3), Sept. 16, 2011, 125 Stat. 335.)
AMENDMENTS2011—Subsec. (d)(1). Pub. L. 112–29 substituted "nontransferable" for "nontransferrable".
2002—Subsecs. (d)(2), (f). Pub. L. 107–273 struck out "of the United States Code" after "title 5".
2000—Pub. L. 106–404 amended section catchline and text generally, restructuring and revising provisions setting forth criteria, terms, and conditions relating to granting of licenses on federally owned inventions.
EFFECTIVE DATE OF 2011 AMENDMENTAmendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
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