NTTAA
National Technology Transfer and Advancement Act (NTTAA)
Public Law 104-113
National Technology Transfer and Advancement Act of 1995
This law was introduced by Rep. Connie Morella, R-MD, as H.R. 2196. Following is the version presented to the President for signing on March 7, 1996
H.R.2196
One Hundred Fourth Congress
of the United States of America
AT THE SECOND SESSION
Begun and held at the City of Washington on Wednesday,
the third day of January, one thousand nine hundred and ninety-six.
An Act to amend the Stevenson-Wydler Technology Innovation Act of 1980 with respect to inventions made under cooperative research and development agreements, and for other purposes.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the `National Technology Transfer and Advancement Act of 1995'.
SEC. 2. FINDINGS.
The Congress finds the following:
(1) Bringing technology and industrial innovation to the
marketplace is central to the economic, environmental, and
social well-being of the people of the United States.
(2) The Federal Government can help United States business to
speed the development of new products and processes by entering
into cooperative research and development agreements which make
available the assistance of Federal laboratories to the private
sector, but the commercialization of technology and industrial
innovation in the United States depends upon actions by business.
(3) The commercialization of technology and industrial
innovation in the United States will be enhanced if companies,
in return for reasonable compensation to the Federal
Government, can more easily obtain exclusive licenses to
inventions which develop as a result of cooperative research
with scientists employed by Federal laboratories.
SEC. 3. USE OF FEDERAL TECHNOLOGY.
Subparagraph (B) of section 11(e)(7) of the Stevenson-Wydler
Technology Innovation Act of 1980 (15 U.S.C. 3710(e)(7)(B)) is
amended to read as follows:
`(B) A transfer shall be made by any Federal agency under
subparagraph (A), for any fiscal year, only if the amount so
transferred by that agency (as determined under such subparagraph)
would exceed $10,000.'.
SEC. 4. TITLE TO INTELLECTUAL PROPERTY ARISING FROM COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS.
Subsection (b) of section 12 of the Stevenson-Wydler Technology
Innovation Act of 1980 (15 U.S.C. 3710a(b)) is amended to read as
follows:
`(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, 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, United States Code, 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, United States
Code.
`(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, United States Code.
`(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 14(a)(1)(B); and
`(C) for scientific research and development consistent with
the research and development missions and objectives of the
laboratory.'.
SEC. 5. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED BY FEDERAL LABORATORIES.
Section 14 of the Stevenson-Wydler Technology Innovation Act of
1980 (15 U.S.C. 3710c) is amended--
(1) by amending subsection (a)(1) to read as follows:
`(1) Except as provided in paragraphs (2) and (4), any royalties or
other payments received by a Federal agency from the licensing and
assignment of inventions under agreements entered into by Federal
laboratories under section 12, and from the licensing of inventions
of Federal laboratories under section 207 of title 35, United
States Code, or under any other provision of law, shall be retained
by the laboratory which produced the invention and shall be
disposed of as follows:
`(A)(i) The head of the agency or laboratory, or such
individual's designee, shall pay each year the first $2,000,
and thereafter at least 15 percent, of the royalties or other
payments to the inventor or coinventors.
`(ii) An agency or laboratory may provide appropriate
incentives, from royalties, or other payments, to laboratory
employees who are not an inventor of such inventions but who
substantially increased the technical value of such inventions.
`(iii) The agency or laboratory shall retain the royalties
and other payments received from an invention until the agency
or laboratory makes payments to employees of a laboratory under
clause (i) or (ii).
`(B) The balance of the royalties or other payments shall be
transferred by the agency to its laboratories, with the
majority share of the royalties or other payments from any
invention going to the laboratory where the invention occurred.
The royalties or other payments so transferred to any
laboratory may be used or obligated by that laboratory during
the fiscal year in which they are received or during the
succeeding fiscal year--
`(i) to reward scientific, engineering, and technical
employees of the laboratory, including developers of
sensitive or classified technology, regardless of whether
the technology has commercial applications;
`(ii) to further scientific exchange among the
laboratories of the agency;
`(iii) for education and training of employees consistent
with the research and development missions and objectives
of the agency or laboratory, and for other activities that
increase the potential for transfer of the technology of
the laboratories of the agency;
`(iv) for payment of expenses incidental to the
administration and licensing of intellectual property by
the agency or laboratory with respect to inventions made at
that laboratory, including the fees or other costs for the
services of other agencies, persons, or organizations for
intellectual property management and licensing services; or
`(v) for scientific research and development consistent
with the research and development missions and objectives
of the laboratory.
`(C) All royalties or other payments retained by the agency
or laboratory after payments have been made pursuant to
subparagraphs (A) and (B) that is unobligated and unexpended at
the end of the second fiscal year succeeding the fiscal year in
which the royalties and other payments were received shall be
paid into the Treasury.';
(2) in subsection (a)(2)--
(A) by inserting `or other payments' after `royalties'; and
(B) by striking `for the purposes described in clauses
(i) through (iv) of paragraph (1)(B) during that fiscal
year or the succeeding fiscal year' and inserting in lieu
thereof `under paragraph (1)(B)';
(3) in subsection (a)(3), by striking `$100,000' both places
it appears and inserting `$150,000';
(4) in subsection (a)(4)--
(A) by striking `income' each place it appears and
inserting in lieu thereof `payments';
(B) by striking `the payment of royalties to inventors'
in the first sentence thereof and inserting in lieu thereof
`payments to inventors';
(C) by striking `clause (i) of paragraph (1)(B)' and
inserting in lieu thereof `clause (iv) of paragraph (1)(B)';
(D) by striking `payment of the royalties,' in the second
sentence thereof and inserting in lieu thereof `offsetting
the payments to inventors,'; and
(E) by striking `clauses (i) through (iv) of'; and
(5) by amending paragraph (1) of subsection (b) to read as
follows:
`(1) by a contractor, grantee, or participant, or an employee
of a contractor, grantee, or participant, in an agreement or
other arrangement with the agency, or'.
SEC. 6. EMPLOYEE ACTIVITIES.
Section 15(a) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710d(a)) is amended--T (1) by striking `the right of ownership to an invention under this Act' and inserting in lieu thereof `ownership of or the right of ownership to an invention made by a Federal employee'; andT (2) by inserting `obtain or' after `the Government, to'.
SEC. 7. AMENDMENT TO BAYH-DOLE ACT.
Section 210(e) of title 35, United States Code, is amended by striking `, as amended by the Federal Technology Transfer Act of 1986,'.
SEC. 8. NATIONAL INSTITUTE OF STANDARDS AND TECHNOLOGY ACT AMENDMENTS.
The National Institute of Standards and Technology Act (15 U.S.C.
271 et seq.) is amended--
(1) in section 10(a)--
(A) by striking `nine' and inserting in lieu thereof
`15'; and
(B) by striking `five' and inserting in lieu thereof `10';
(2) in section 15--
(A) by striking `Pay Act of 1945; and' and inserting in
lieu thereof `Pay Act of 1945;'; and
(B) by inserting `; and (h) the provision of
transportation services for employees of the Institute
between the facilities of the Institute and nearby public
transportation, notwithstanding section 1344 of title 31,
United States Code' after `interests of the Government'; and
(3) in section 19--
(A) by inserting `, subject to the availability of
appropriations,' after `post-doctoral fellowship program';
and
(B) by striking `nor more than forty' and inserting in
lieu thereof `nor more than 60'.
SEC. 9. RESEARCH EQUIPMENT.
Section 11(i) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710(i)) is amended by inserting `loan, lease, or' before `give'.
SEC. 10. PERSONNEL.
The personnel management demonstration project established under section 10 of the National Bureau of Standards Authorization Act for Fiscal Year 1987 (15 U.S.C. 275 note) is extended indefinitely.
SEC. 11. FASTENER QUALITY ACT AMENDMENTS.
[section not included here]
SEC. 12. STANDARDS CONFORMITY.
(a) USE OF STANDARDS- Section 2(b) of the National Institute of
Standards and Technology Act (15 U.S.C. 272(b)) is amended--
(1) in paragraph (2), by striking `, including comparing
standards' and all that follows through `Federal Government';
(2) by redesignating paragraphs (3) through (11) as
paragraphs (4) through (12), respectively; and
(3) by inserting after paragraph (2) the following new
paragraph:
`(3) to compare standards used in scientific investigations,
engineering, manufacturing, commerce, industry, and educational
institutions with the standards adopted or recognized by the
Federal Government and to coordinate the use by Federal
agencies of private sector standards, emphasizing where
possible the use of standards developed by private, consensus
organizations;'.
(b) CONFORMITY ASSESSMENT ACTIVITIES- Section 2(b) of the
National Institute of Standards and Technology Act (15 U.S.C.
272(b)) is amended--
(1) by striking `and' at the end of paragraph (11), as so
redesignated by subsection (a)(2) of this section;
(2) by striking the period at the end of paragraph (12), as
so redesignated by subsection (a)(2) of this section, and
inserting in lieu thereof `; and'; and
(3) by adding at the end the following new paragraph:
`(13) to coordinate Federal, State, and local technical
standards activities and conformity assessment activities, with
private sector technical standards activities and conformity
assessment activities, with the goal of eliminating unnecessary
duplication and complexity in the development and promulgation
of conformity assessment requirements and measures.'.
(c) TRANSMITTAL OF PLAN TO CONGRESS- The National Institute of
Standards and Technology shall, within 90 days after the date of
enactment of this Act, transmit to the Congress a plan for
implementing the amendments made by this section.
(d) UTILIZATION OF CONSENSUS TECHNICAL STANDARDS BY FEDERAL
AGENCIES; REPORTS-
(1) IN GENERAL- Except as provided in paragraph (3) of this
subsection, all Federal agencies and departments shall use
technical standards that are developed or adopted by voluntary
consensus standards bodies, using such technical standards as a
means to carry out policy objectives or activities determined
by the agencies and departments.
(2) CONSULTATION; PARTICIPATION- In carrying out paragraph
(1) of this subsection, Federal agencies and departments shall
consult with voluntary, private sector, consensus standards
bodies and shall, when such participation is in the public
interest and is compatible with agency and departmental
missions, authorities, priorities, and budget resources,
participate with such bodies in the development of technical
standards.
(3) EXCEPTION- If compliance with paragraph (1) of this
subsection is inconsistent with applicable law or otherwise
impractical, a Federal agency or department may elect to use
technical standards that are not developed or adopted by
voluntary consensus standards bodies if the head of each such
agency or department transmits to the Office of Management and
Budget an explanation of the reasons for using such standards.
Each year, beginning with fiscal year 1997, the Office of
Management and Budget shall transmit to Congress and its
committees a report summarizing all explanations received in
the preceding year under this paragraph.
(4) DEFINITION OF TECHNICAL STANDARDS- As used in this
subsection, the term `technical standards' means
performance-based or design-specific technical specifications
and related management systems practices.
SEC. 13. SENSE OF CONGRESS.
It is the sense of the Congress that the Malcolm Baldrige National Quality Award program offers substantial benefits to United States industry, and that all funds appropriated for such program should be spent in support of the goals of the program. Speaker of the House of Representatives. Vice President of the United States and President of the Senate.