[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR401.13]

[Page 619-620]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER IV--ASSISTANT SECRETARY FOR TECHNOLOGY POLICY, DEPARTMENT OF 
                                COMMERCE
 
PART 401--RIGHTS TO INVENTIONS MADE BY NONPROFIT ORGANIZATIONS AND SMALL BUSINESS FIRMS UNDER GOVERNMENT GRANTS, CONTRACTS, AND COOPERATIVE AGREEMENTS--Table of Contents
 
Sec. 401.13  Administration of patent rights clauses.

    (a) In the event a subject invention is made under funding 
agreements of more than one agency, at the request of the contractor or 
on their own initiative the agencies shall designate one agency as 
responsible for administration of the rights of the government in the 
invention.
    (b) Agencies shall promptly grant, unless there is a significant 
reason not to, a request by a nonprofit organization under paragraph 
(k)(2) of the clauses prescribed by either OMB Circular A-124 or OMB 
Bulletin 81-22 inasmuch as 35 U.S.C. 202(c)(7) has since been amended to 
eliminate the limitation on the duration of exclusive licenses. 
Similarly, unless there is a significant reason not to, agencies shall 
promptly approve an assignment by a nonprofit organization to an 
organization which has as one of its primary functions the management of 
inventions when a request for approval has been necessitated under 
paragraph (k)(1) of the clauses prescribed by either OMB Circular A-124 
or OMB Bulletin 81-22 because the patent management organization is 
engaged in or holds a substantial interest in other organizations 
engaged in the manfacture or sale of products or the use of processes 
that might utilize the invention or be in competition with embodiments 
of the invention. As amended, 35 U.S.C. 202(c)(7) no longer contains 
this limitation. The policy of this subsection should also be followed 
in connection with similar approvals that may be required under 
Institutional Patent Agreements, other patent rights clauses, or waivers 
that predate Chapter 18 of Title 35, United States Code.
    (c) The President's Patent Policy Memorandum of February 18, 1983, 
states that agencies should protect the confidentiality of invention 
disclosure, patent applications, and utilization reports required in 
performance or in consequence of awards to the extent permitted by 35 
U.S.C. 205 or other applicable laws. The following requirements should 
be followed for funding agreements covered by and predating this part 
401.
    (1) To the extent authorized by 35 U.S.C. 205, agencies shall not 
disclose to third parties pursuant to requests under the Freedom of 
Information Act (FOIA) any information disclosing a subject invention 
for a reasonable time in order for a patent application to be filed. 
With respect to subject inventions of contractors that are small 
business firms or nonprofit organizations, a reasonable time shall be 
the time during which an initial patent application may be filed under 
paragraph (c) of the standard clause found at Sec. 401.14(a) or such 
other clause may be used in the funding agreement. However, an agency 
may disclose such subject inventions under the FOIA, at its discretion, 
after a contractor has elected not to retain title or after the time in 
which the contractor is required to make an election if the contractor 
has not made an election within that time. Similarly, an agency may 
honor a FOIA request at its discretion if it finds that the same 
information has previously been published by the inventor, contractor, 
or otherwise. If the agency plans to file itself when the contractor has 
not elected title, it may, of course, continue to avail itself of the 
authority of 35 U.S.C. 205.
    (2) In accordance with 35 U.S.C. 205, agencies shall not disclose or 
release for a period of 18 months from the filing date of the patent 
application to third parties pursuant to requests under the Freedom of 
Information Act, or otherwise, copies of any document which the agency 
obtained under this clause which is part of an application

[[Page 620]]

for patent with the U.S. Patent and Trademark Office or any foreign 
patent office filed by the contractor (or its assignees, licensees, or 
employees) on a subject invention to which the contractor has elected to 
retain title. This prohibition does not extend to disclosure to other 
government agencies or contractors of government agencies under an 
obligation to maintain such information in confidence.
    (3) A number of agencies have policies to encourage public 
dissemination of the results of work supported by the agency through 
publication in government or other publications of technical reports of 
contractors or others. In recognition of the fact that such publication, 
if it included descriptions of a subject invention could create bars to 
obtaining patent protection, it is the policy of the executive branch 
that agencies will not include in such publication programs copies of 
disclosures of inventions submitted by small business firms or nonprofit 
organizations, pursuant to paragraph (c) of the standard clause found at 
Sec. 401.14(a), except that under the same circumstances under which 
agencies are authorized to release such information pursuant to FOIA 
requests under paragraph (c)(1) of this section, agencies may publish 
such disclosures.
    (4) Nothing in this paragraph is intended to preclude agencies from 
including in the publication activities described in the first sentence 
of paragraph (c)(3), the publication of materials describing a subject 
invention to the extent such materials were provided as part of a 
technical report or other submission of the contractor which were 
submitted independently of the requirements of the patent rights 
provisions of the contract. However, if a small business firm or 
nonprofit organization notifies the agency that a particular report or 
other submission contains a disclosure of a subject invention to which 
it has elected title or may elect title, the agency shall use reasonable 
efforts to restrict its publication of the material for six months from 
date of its receipt of the report or submission or, if earlier, until 
the contractor has filed an initial patent application. Agencies, of 
course, retain the discretion to delay publication for additional 
periods of time.
    (5) Nothing in this paragraph is intended to limit the authority of 
agencies provided in 35 U.S.C. 205 in circumstances not specifically 
described in this paragraph.

[52 FR 8554, Mar. 18, 1987, as amended at 60 FR 41812, Aug. 14, 1995]