(b) Enumerated authority
(1)
Under an agreement entered into pursuant to subsection (a)(1), the laboratory may grant, or agree to grant in advance, to a collaborating party patent licenses or assignments, or options thereto, in any invention made in whole or in part by a laboratory employee under the agreement, or, subject to
section 209 of title 35, may grant a license to an invention which is federally owned, for which a patent application was filed before the signing of the agreement, and directly within the scope of the work under the agreement, for reasonable compensation when appropriate. The laboratory shall ensure, through such agreement, that the collaborating party has the option to choose an exclusive license for a pre-negotiated field of use for any such invention under the agreement or, if there is more than one collaborating party, that the collaborating parties are offered the option to hold licensing rights that collectively encompass the rights that would be held under such an exclusive license by one party. In consideration for the Government’s contribution under the agreement, grants under this paragraph shall be subject to the following explicit conditions:
(A) A nonexclusive, nontransferable, irrevocable, paid-up license from the collaborating party to the laboratory to practice the invention or have the invention practiced throughout the world by or on behalf of the Government. In the exercise of such license, the Government shall not publicly disclose trade secrets or commercial or financial information that is privileged or confidential within the meaning of
section 552(b)(4) of title 5 or which would be considered as such if it had been obtained from a non-Federal party.
(B)
If a laboratory assigns title or grants an exclusive license to such an invention, the Government shall retain the right—
(i) to require the collaborating party to grant to a responsible applicant a nonexclusive, partially exclusive, or exclusive license to use the invention in the applicant’s licensed field of use, on terms that are reasonable under the circumstances; or
(ii) if the collaborating party fails to grant such a license, to grant the license itself.
(C)
The Government may exercise its right retained under subparagraph (B) only in exceptional circumstances and only if the Government determines that—
(i) the action is necessary to meet health or safety needs that are not reasonably satisfied by the collaborating party;
(ii) the action is necessary to meet requirements for public use specified by Federal regulations, and such requirements are not reasonably satisfied by the collaborating party; or
(iii) the collaborating party has failed to comply with an agreement containing provisions described in subsection (c)(4)(B).
This determination is subject to administrative appeal and judicial review under section 203(2) of title 35.
(2) Under agreements entered into pursuant to subsection (a)(1), the laboratory shall ensure that a collaborating party may retain title to any invention made solely by its employee in exchange for normally granting the Government a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government for research or other Government purposes.
(3)
Under an agreement entered into pursuant to subsection (a)(1), a laboratory may—
(A) accept, retain, and use funds, personnel, services, and property from a collaborating party and provide personnel, services, and property to a collaborating party;
(B) use funds received from a collaborating party in accordance with subparagraph (A) to hire personnel to carry out the agreement who will not be subject to full-time-equivalent restrictions of the agency;
(C) to the extent consistent with any applicable agency requirements or standards of conduct, permit an employee or former employee of the laboratory to participate in an effort to commercialize an invention made by the employee or former employee while in the employment or service of the Government; and
(D) waive, subject to reservation by the Government of a nonexclusive, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government, in advance, in whole or in part, any right of ownership which the Federal Government may have to any subject invention made under the agreement by a collaborating party or employee of a collaborating party.
(4) A collaborating party in an exclusive license in any invention made under an agreement entered into pursuant to subsection (a)(1) shall have the right of enforcement under chapter 29 of title 35.
(5)
A Government-owned, contractor-operated laboratory that enters into a cooperative research and development agreement pursuant to subsection (a)(1) may use or obligate royalties or other income accruing to the laboratory under such agreement with respect to any invention only—
(A) for payments to inventors;
(B) for purposes described in clauses (i), (ii), (iii), and (iv) of
section 3710c(a)(1)(B) of this title; and
(C) for scientific research and development consistent with the research and development missions and objectives of the laboratory.
(6)
(A) In the case of a laboratory that is part of the National Nuclear Security Administration, a designated official of that Administration may waive any license retained by the Government under paragraph (1)(A), (2), or (3)(D), in whole or in part and according to negotiated terms and conditions, if the designated official finds that the retention of the license by the Government would substantially inhibit the commercialization of an invention that would otherwise serve an important national security mission.
(B) The authority to grant a waiver under subparagraph (A) shall expire on the date that is five years after October 30, 2000. The expiration under the preceding sentence of authority to grant a waiver under subparagraph (A) shall not affect any waiver granted under that subparagraph before the expiration of such authority.
(C) Not later than February 15 of each year, the Administrator for Nuclear Security shall submit to Congress a report on any waivers granted under this paragraph during the preceding year.
(d) Definitions
(1) the term “cooperative research and development agreement” means any agreement between one or more Federal laboratories and one or more non-Federal parties under which the Government, through its laboratories, provides personnel, services, facilities, equipment, intellectual property, or other resources with or without reimbursement (but not funds to non-Federal parties) and the non-Federal parties provide funds, personnel, services, facilities, equipment, intellectual property, or other resources toward the conduct of specified research or development efforts which are consistent with the missions of the laboratory; except that such term does not include a procurement contract or cooperative agreement as those terms are used in sections 6303, 6304, and 6305 of title 31;
(2)
the term “laboratory” means—
(A) a facility or group of facilities owned, leased, or otherwise used by a Federal agency, a substantial purpose of which is the performance of research, development, or engineering by employees of the Federal Government;
(B) a group of Government-owned, contractor-operated facilities (including a weapon production facility of the Department of Energy) under a common contract, when a substantial purpose of the contract is the performance of research and development, or the production, maintenance, testing, or dismantlement of a nuclear weapon or its components, for the Federal Government; and
(C) a Government-owned, contractor-operated facility (including a weapon production facility of the Department of Energy) that is not under a common contract described in subparagraph (B), and the primary purpose of which is the performance of research and development, or the production, maintenance, testing, or dismantlement of a nuclear weapon or its components, for the Federal Government,
but such term does not include any facility covered by Executive Order No. 12344, dated February 1, 1982, pertaining to the naval nuclear propulsion program;
(3) the term “joint work statement” means a proposal prepared for a Federal agency by the director of a Government-owned, contractor-operated laboratory describing the purpose and scope of a proposed cooperative research and development agreement, and assigning rights and responsibilities among the agency, the laboratory, and any other party or parties to the proposed agreement; and
(4) the term “weapon production facility of the Department of Energy” means a facility under the control or jurisdiction of the Secretary of Energy that is operated for national security purposes and is engaged in the production, maintenance, testing, or dismantlement of a nuclear weapon or its components.
References in Text
Section 203(2) of title 35, referred to in subsec. (b)(1)(C), was redesignated section 203(b) of title 35 by Pub. L. 107–273, div. C, title III, § 13206(a)(14)(A)(i), Nov. 2, 2002, 116 Stat. 1905.
Executive Order No. 12344, referred to in subsec. (d)(2), is set out as a note under section 2511 of Title 50, War and National Defense.
Amendments
2000—Subsec. (a). Pub. L. 106–398, § 1 [div. C, title XXXI, § 3196(a)], substituted “joint work statement or, if permitted by the agency, in an agency-approved annual strategic plan,” for “joint work statement,” in introductory provisions.
Subsec. (b)(1). Pub. L. 106–404, in first sentence, inserted “or, subject to section 209 of title 35, may grant a license to an invention which is federally owned, for which a patent application was filed before the signing of the agreement, and directly within the scope of the work under the agreement,” after “under the agreement,”.
Subsec. (b)(6). Pub. L. 106–398, § 1 [div. C, title XXXI, § 3196(b)], added par. (6).
Subsec. (c)(5)(C), (D). Pub. L. 106–398, § 1 [div. C, title XXXI, § 3196(c)], redesignated subpar. (D) as (C), struck out “with a small business firm” after “enter into” and inserted “if” after “statement” in cl. (i), added cls. (iv) and (v), and struck out former subpar. (C) which related to the duties of an agency which has contracted with a non-Federal entity to operate a laboratory with respect to review and approval of joint work statements and agreements under this section and with respect to providing the entity with model cooperative research and development agreements.
1996—Subsec. (b). Pub. L. 104–113 amended subsec. (b) generally, to require that laboratory ensure that collaborating party be provided option of choosing exclusive license for pre-negotiated field of use for any invention under agreement or that collaborating party be offered option of holding licensing rights that collectively encompass rights that would be held under such exclusive license by one party, to set forth explicit conditions that grants under par. (1) were to be subject to, and to require laboratory to ensure that collaborating party might retain title to any invention made solely by its employee in exchange for normally granting Government nonexclusive, nontransferable, irrevocable, paid-up license to practice invention by or on behalf of Government for research or for other Government purposes.
1993—Subsec. (d)(2)(B). Pub. L. 103–160, § 3160(1), inserted “(including a weapon production facility of the Department of Energy)” after “facilities” and “, or the production, maintenance, testing, or dismantlement of a nuclear weapon or its components,” after “research and development”.
Subsec. (d)(2)(C). Pub. L. 103–160, § 3160(2), inserted “(including a weapon production facility of the Department of Energy)” after “facility” and “, or the production, maintenance, testing, or dismantlement of a nuclear weapon or its components,” after “research and development”.
Subsec. (d)(4). Pub. L. 103–160, § 3160(3)–(5), added par. (4).
1992—Subsec. (c)(5)(C)(i). Pub. L. 102–484, § 3135(a)(1), substituted “Except as provided in subparagraph (D), any agency” for “Any agency”.
Subsec. (c)(5)(D). Pub. L. 102–484, § 3135(a)(2), added subpar. (D).
Subsec. (d)(1). Pub. L. 102–245 inserted “intellectual property,” after “equipment,” in two places.
1991—Subsec. (d)(2). Pub. L. 102–25 substituted “naval” for “Naval” in concluding provisions.
1989—Subsec. (a). Pub. L. 101–189, § 3133(a)(1)(A), inserted “, and, to the extent provided in an agency-approved joint work statement, the director of any of its Government-owned, contractor-operated laboratories” after “Government-operated Federal laboratories” in introductory provisions.
Subsec. (a)(2). Pub. L. 101–189, § 3133(a)(1)(B), (C), substituted “(in the case of a Government-owned, contractor-operated laboratory, subject to subsection (c) of this section) for” for “for Government-owned” and struck out “of Federal employees” before “that may be voluntarily”.
Subsec. (b). Pub. L. 101–189, § 3133(a)(2)(A), (C), inserted “, and, to the extent provided in an agency-approved joint work statement, a Government-owned, contractor-operated laboratory,” after “Government-operated Federal laboratory” in introductory provisions and inserted concluding provisions “A Government-owned, contractor-operated laboratory that enters into a cooperative research and development agreement under subsection (a)(1) of this section may use or obligate royalties or other income accruing to such laboratory under such agreement with respect to any invention only (i) for payments to inventors; (ii) for the purposes described in section 3710c(a)(1)(B)(i), (ii), and (iv) of this title; and (iii) for scientific research and development consistent with the research and development mission and objectives of the laboratory.”
Subsec. (b)(2). Pub. L. 101–189, § 3133(a)(2)(B), substituted “a laboratory employee” for “a Federal employee”.
Subsec. (c)(3)(A). Pub. L. 101–189, § 3133(a)(3), substituted “standards of conduct for its employees” for “employee standards of conduct”.
Subsec. (c)(5)(A). Pub. L. 101–189, § 3133(a)(4), inserted “presented by the director of a Government-operated laboratory” after “any such agreement”.
Subsec. (c)(5)(B). Pub. L. 101–189, § 3133(a)(5), inserted “by the director of a Government-operated laboratory” after “an agreement presented”.
Subsec. (c)(5)(C). Pub. L. 101–189, § 3133(a)(6), added subpar. (C).
Subsec. (c)(7). Pub. L. 101–189, § 3133(a)(7), added par. (7).
Subsec. (d)(2). Pub. L. 101–189, § 3133(a)(8)(B), amended par. (2) generally. Prior to amendment, par. (2) read as follows: “the term ‘laboratory’ means a facility or group of facilities owned, leased, or otherwise used by a Federal agency, a substantial purpose of which is the performance of research, development, or engineering by employees of the Federal Government.”
Subsec. (d)(3). Pub. L. 101–189, § 3133(a)(8)(A), (C), added par. (3).
Subsec. (g). Pub. L. 101–189, § 3133(b), added subsec. (g).
1988—Subsec. (a)(2). Pub. L. 100–519, § 301(1), substituted “or other intellectual property developed at the laboratory and other inventions or other intellectual property” for “at the laboratory and other inventions”.
Subsec. (b)(4), (5). Pub. L. 100–519, § 301(2), added par. (4) and redesignated former par. (4) as (5).
Review of Cooperative Research and Development Agreement Procedures
Pub. L. 106–404, § 8, Nov. 1, 2000, 114 Stat. 1746, provided that:
“(a) Review.—
Within 90 days after the date of the enactment of this Act [Nov. 1, 2000], each Federal agency with a federally funded laboratory that has in effect on that date of the enactment one or more cooperative research and development agreements under section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (
15 U.S.C. 3710a) shall report to the Committee on National Security of the National Science and Technology Council and the Congress on the general policies and procedures used by that agency to gather and consider the views of other agencies on—
“(1) joint work statements under section 12(c)(5)(C) or (D) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a(c)(5)(C) or (D)); or
“(2) in the case of laboratories described in section 12(d)(2)(A) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a(d)(2)(A)), cooperative research and development agreements under such section 12,
with respect to major proposed cooperative research and development agreements that involve critical national security technology or may have a significant impact on domestic or international competitiveness.
“(b) Procedures.—
Within 1 year after the date of the enactment of this Act [Nov. 1, 2000], the Committee on National Security of the National Science and Technology Council, in conjunction with relevant Federal agencies and national laboratories, shall—
“(1) determine the adequacy of existing procedures and methods for interagency coordination and awareness with respect to cooperative research and development agreements described in subsection (a); and
“(2)
establish and distribute to appropriate Federal agencies—
“(A) specific criteria to indicate the necessity for gathering and considering the views of other agencies on joint work statements or cooperative research and development agreements as described in subsection (a); and
“(B) additional procedures, if any, for carrying out such gathering and considering of agency views with respect to cooperative research and development agreements described in subsection (a).
Procedures established under this subsection shall be designed to the extent possible to use or modify existing procedures, to minimize burdens on Federal agencies, to encourage industrial partnerships with national laboratories, and to minimize delay in the approval or disapproval of joint work statements and cooperative research and development agreements.
“(c) Limitation.— Nothing in this Act [see Short Title of 2000 Amendment note set out under
section 3701 of this title], nor any procedures established under this section shall provide to the Office of Science and Technology Policy, the National Science and Technology Council, or any Federal agency the authority to disapprove a cooperative research and development agreement or joint work statement, under section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (
15 U.S.C. 3710a), of another Federal agency.”
Magnetic Levitation Technology
The Secretary of the Army, in cooperation with the Secretary of Transportation, authorized to conduct research and development activities on magnetic levitation technology using contracts or cooperative research and development agreements under this section, see section 417 of Pub. L. 101–640, set out as a note under section 2313 of Title 33, Navigation and Navigable Waters.
Contract Provisions
Section 3133(d) of Pub. L. 101–189, as amended by Pub. L. 101–510, div. A, title VIII, § 828(a), Nov. 5, 1990, 104 Stat. 1607, provided that:
“(1)
Not later than 150 days after the date of enactment of this Act [Nov. 29, 1989], each agency which has contracted with a non-Federal entity to operate a Government-owned laboratory shall propose for inclusion in that laboratory’s operating contract, to the extent not already included and subject to paragraph (6), appropriate contract provisions that—
“(A) establish technology transfer, including cooperative research and development agreements, as a mission for the laboratory under section 11(a)(1) of the Stevenson-Wydler Technology Innovation Act of 1980 [
15 U.S.C. 3710(a)(1)];
“(B) describe the respective obligations and responsibilities of the agency and the laboratory with respect to this part [part C (§§ 3131–3133) of title XXXI of div. C of
Pub. L. 101–189, see Short Title of 1989 Amendment note under
section 3701 of this title] and section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 [
15 U.S.C. 3710a];
“(C)
require that, except as provided in paragraph (2), no employee of the laboratory shall have a substantial role (including an advisory role) in the preparation, negotiation, or approval of a cooperative research and development agreement if, to such employee’s knowledge—
“(i)
such employee, or the spouse, child, parent, sibling, or partner of such employee, or an organization (other than the laboratory) in which such employee serves as an officer, director, trustee, partner, or employee—
“(I) holds a financial interest in any entity, other than the laboratory, that has a substantial interest in the preparation, negotiation, or approval of the cooperative research and development agreement; or
“(II) receives a gift or gratuity from any entity, other than the laboratory, that has a substantial interest in the preparation, negotiation, or approval of the cooperative research and development agreement; or
“(ii) a financial interest in any entity, other than the laboratory, that has a substantial interest in the preparation, negotiation, or approval of the cooperative research and development agreement, is held by any person or organization with whom such employee is negotiating or has any arrangement concerning prospective employment;
“(D) require that each employee of the laboratory who negotiates or approves a cooperative research and development agreement shall certify to the agency that the circumstances described in subparagraph (C)(i) and (ii) do not apply to such employee;
“(E) require the laboratory to widely disseminate information on opportunities to participate with the laboratory in technology transfer, including cooperative research and development agreements; and
“(F) provides for an accounting of all royalty or other income received under cooperative research and development agreements.
“(2) The requirements described in paragraph (1)(C) and (D) shall not apply in a case where the negotiating or approving employee advises the agency that reviewed the applicable joint work statement under section 12(c)(5)(C)(i) of the Stevenson-Wydler Technology Innovation Act of 1980 [15 U.S.C. 3710a(c)(5)(C)(i)] in advance of the matter in which he is to participate and the nature of any financial interest described in paragraph (1)(C), and where the agency employee determines that such financial interest is not so substantial as to be considered likely to affect the integrity of the laboratory employee’s service in that matter.
“(3) Not later than 180 days after the date of enactment of this Act [Nov. 29, 1989], each agency which has contracted with a non-Federal entity to operate a Government-owned laboratory shall submit a report to the Congress which includes a copy of each contract provision amended pursuant to this subsection.
“(4)
No Government-owned, contractor-operated laboratory may enter into a cooperative research and development agreement under section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 [
15 U.S.C. 3710a] unless—
“(A) that laboratory’s operating contract contains the provisions described in paragraph (1)(A) through (F); or
“(B) such laboratory agrees in a separate writing to be bound by the provisions described in paragraph (1)(A) through (F).
“(5) Any contract for a Government-owned, contractor-operated laboratory entered into after the expiration of 150 days after the date of enactment of this Act [Nov. 29, 1989] shall contain the provisions described in paragraph (1)(A) through (F).
“(6) Contract provisions referred to in paragraph (1) shall include only such provisions as are necessary to carry out paragraphs (1) and (2) of this subsection.”
[Pub. L. 101–510, div. A, title VIII, § 828(b), Nov. 5, 1990, 104 Stat. 1607, provided that:
“Paragraph (6) of 3133(d) of such Act [
Pub. L. 101–189, set out above], as added by subsection (a), shall apply only to contracts entered into after the date of enactment of this Act [Nov. 5, 1990].”
]