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| 81.003 GRANTING OF PATENT LICENSES |
| (DOE Patents Available for Licensing) |
| FEDERAL AGENCY |
| OFFICE OF GENERAL COUNSEL, DEPARTMENT OF ENERGY |
| AUTHORIZATION |
| Public Law 96-517, 35 U.S.C. 207, 208, 209; Atomic Energy Act of 1954, Sections 156 and 161(g), as amended, Public Law 83-703, 68 Stat. 919, 42 U.S.C. 2186 and 2201; Department of Energy Organization Act of 1977, as amended, Public Law 95-91, 42 U.S.C. 7101. |
| OBJECTIVES |
| To encourage widespread utilization of inventions covered by DOE owned patents. |
| TYPES OF ASSISTANCE |
| Dissemination of Technical Information. |
| USES AND USE RESTRICTIONS |
| Nonexclusive, revocable licenses are granted by Department of Energy (DOE) to responsible applicants with plans for development and/or marketing on approximately 1,500 DOE owned United State patents. Exclusive and partially exclusive licenses may also be granted. Similar licenses on approximately 200 DOE owned foreign patents may be accorded to United State citizens and corporations, and to others under terms and conditions which depend upon particular facts. Licenses for use or sale in the United State may normally be granted only to licensees that agree to manufacture in the United State Copies of U.S. patents may be obtained from the United State Patent and Trademark Office, Department of Commerce, Washington, DC 20231, for a modest fee. |
| Applicant Eligibility |
| Individuals, firms, or corporations with satisfactory plans and intentions to commercialize the invention may apply. |
| Beneficiary Eligibility |
| Individuals, firms, and corporations will benefit. |
| Credentials/Documentation |
| Satisfactory plans for development and/or marketing of the invention. In the case of corporations, the State of incorporation. This program is excluded from coverage under OMB Circular No. A-87. |
| Preapplication Coordination |
| This program is excluded from coverage under OMB Circular No. A-102 and E.O. 12372. |
| Application Procedure |
| By letter to the Assistant General Counsel for Technology Transfer and Intellectual Property, DOE, Washington, DC 20585, identifying the patent by its number, together with information as to: (1) The nature and type of the applicant's business; (2) the purpose for which the license is desired together with documentation as to the applicant's plan for development and/or marketing of the invention to achieve that purpose; (3) the geographical areas in which the applicant will practice the invention; (4) the applicant's willingness to render periodic reports on the use of the licensed subject matter; (5) the applicant's status as a small business firm, minority business, or other; and (6) remittance of a $25 processing fee for each license requested. This program is excluded from coverage under OMB Circular No. A-110. |
| Award Procedure |
| Patent licenses are issued by the Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, DOE. |
| Deadlines |
| None. |
| Range of Approval/Disapproval Time |
| Normally three months for nonexclusive licenses; somewhat longer for exclusive licenses. |
| Appeals |
| Applicants denied a license and revoked licensees have the right to appeal in accordance with 10 CFR 781 by filing notice of appeal within 30 days. Appeals board is designated upon filing of notice of appeal. |
| Renewals |
| Licenses may be renewed upon reapplication, contingent on satisfactory performance. |
| Formula and Matching Requirements |
| None. |
| Length and Time Phasing of Assistance |
| None. |
| Reports |
| Annual reports are required to be submitted as to the extent of utilization and royalties due, if applicable. |
| Audits |
| If license is royalty bearing, DOE has the right to inspect the books of account as necessary to determine accuracy of statement. |
| Records |
| None except where the specific license provides for payment of royalty. |
| Account Identification |
| 89-0228-0-1-276. |
| Obligations |
| (Salaries) FY 07 $0; FY 08 est $0 and FY 09 est $0. |
| Range and Average of Financial Assistance |
| None. |
| PROGRAM ACCOMPLISHMENTS |
| 2 licenses were granted in FY 2007; 8 (estimates) are expected to be granted in FY 2008 and 8 (estimates) are expected to be granted in FY 2009. |
| REGULATIONS, GUIDELINES, AND LITERATURE |
| Licensing of government owned inventions (37 CFR 404). 10 CFR 781, DOE Patent Licensing Regulations; "DOE Invention Licensing Program" describes the program and is available at http://www.osti.gov/gencoun/. |
| Regional or Local Office |
| None. |
| Headquarters Office |
| John T. Lucas, Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, DOE, Washington, DC 20585. Telephone: (202) 586-2802. |
| Web Site Address |
| http://www.doe.gov |
| RELATED PROGRAMS |
| 11.900, Patent and Trademark Technical Information Dissemination. |
| EXAMPLES OF FUNDED PROJECTS |
| None. |
| CRITERIA FOR SELECTING PROPOSALS |
| Nonexclusive licenses - satisfactory plan for development and/or marketing of the invention. Exclusive licenses in addition, a determination in accordance with 35 U.S.C. 209(c) that exclusivity is reasonable and necessary for commercialization. |
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General Services Administration Office of Chief Acquisition Officer Regulatory and Federal Assistance Division (VIR) |
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