(a)(1) Exclusive, co-exclusive or partially exclusive domestic
licenses may be granted on Government owned inventions, only if;
(i) Notice of a prospective license, identifying the invention and
the prospective licensee, has been published in the Federal Register,
providing opportunity for filing written objections within at least a
15-day period;
(ii) After expiration of the period in Sec. 404.7(a)(1)(i) and
consideration of any written objections received during the period, the
Federal agency has determined that;
(A) The public will be served by the granting of the license, in
view of the applicant's intentions, plans and ability to bring the
invention to the point of practical application or otherwise promote the
invention's utilization by the public.
(B) Exclusive, co-exclusive or partially exclusive licensing is a
reasonable and necessary incentive to call forth the investment capital
and expenditures needed to bring the invention to practical application
or otherwise promote the invention's utilization by the public; and
(C) 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;
(iii) The Federal agency has not determined that the grant of such a
license will tend substantially to lessen competition or create or
maintain a violation of the Federal antitrust laws; and
(iv) The Federal agency has given first preference to any small
business firms submitting plans that are determined by the agency to be
within the capability of the firms and as having equal or greater
likelihood as those from other applicants to bring the invention to
practical application within a reasonable time.
(2) In addition to the provisions of Sec. 404.5, the following
terms and conditions apply to domestic exclusive, co-exclusive and
partially exclusive licenses:
(i) The license shall be subject to the irrevocable, royalty-free
right of the Government of the United States to practice or have
practiced the invention on behalf of the United States and on behalf of
any foreign government or international organization pursuant to any
existing or future treaty or agreement with the United States.
(ii) The license shall reserve to the Federal agency the right to
require the licensee to grant sublicenses to responsible applicants, on
reasonable terms, when necessary to fulfill health or safety needs.
(iii) The license shall be subject to any licenses in force at the
time of the grant of the exclusive, co-exclusive or partially exclusive
license.
(b)(1) Exclusive, co-exclusive or partially exclusive foreign
licenses may be granted on a Government owned invention provided that;
(i) Notice of the prospective license, identifying the invention and
prospective licensee, has been published in the
[[Page 739]]
Federal Register, providing opportunity for filing written objections
within at least a 15-day period and following consideration of such
objections received during the period;
(ii) The agency has considered whether the interests of the Federal
Government or United States industry in foreign commerce will be
enhanced; and
(iii) The Federal agency has not determined that the grant of such a
license will tend substantially to lessen competition or create or
maintain a violation of the Federal antitrust laws.
(2) In addition to the provisions of Sec. 404.5, the following
terms and conditions apply to foreign exclusive, co-exclusive and
partially exclusive licenses:
(i) The license shall be subject to the irrevocable, royalty-free
right of the Government of the United States to practice and have
practiced the invention on behalf of the United States and on behalf of
any foreign government or international organization pursuant to any
existing or future treaty or agreement with the United States.
(ii) The license shall be subject to any licenses in force at the
time of the grant of the exclusive, co-exclusive or partially exclusive
license.
(iii) The license may grant the licensee the right to take any
suitable and necessary actions to protect the licensed property, on
behalf of the Federal Government.
(c) Federal agencies shall maintain a record of determinations to
grant exclusive, co-exclusive or partially exclusive licenses.
[71 FR 11513, Mar. 8, 2006]
