[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: 37CFR401.15]

[Page 624-625]
 
              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. 401.15  Deferred determinations.

    (a) This section applies to requests for greater rights in subject 
inventions made by contractors when deferred determination provisions 
were included in the funding agreement because one of the exceptions at 
Sec. 401.3(a) was applied, except that the Department of Energy is 
authorized to process deferred determinations either in accordance with 
its waiver regulations or this section. A contractor requesting greater 
rights should include with its request information on its plans and 
intentions to bring the invention to practical application. Within 90 
days after receiving a request and supporting information, or sooner if 
a statutory bar to patenting is imminent, the agency should seek to make 
a determination. In any event, if a bar to patenting is imminent, unless 
the agency plans to file on its own, it shall authorize the contractor 
to file a patent application pending a determination by the agency. Such 
a filing shall normally be at the contractor's own risk and expense. 
However, if the agency subsequently refuses to allow the contractor to 
retain title and elects to proceed with the patent application under 
government ownership, it shall reimburse the contractor for the cost of 
preparing and filing the patent application.
    (b) If the circumstances of concerns which originally led the agency 
to invoke an exception under Sec. 401.3(a) are not applicable to the 
actual subject invention or are no longer valid because of subsequent 
events, the agency should allow the contractor to retain title to the 
invention on the same conditions as would have applied if the standard 
clause at Sec. 401.14(a) had been used originally, unless it has been 
licensed.
    (c) If paragraph (b) is not applicable the agency shall make its 
determination based on an assessment whether its own plans regarding the 
invention will better promote the policies and objectives of 35 U.S.C. 
200 than will contractor ownership of the invention. Moreover, if the 
agency is concerned only about specific uses or applications of the 
invention, it shall consider leaving title in the contractor with 
additional conditions imposed upon the contractor's use of the invention 
for such applications or with expanded government license rights in such 
applications.
    (d) A determination not to allow the contractor to retain title to a 
subject invention or to restrict or condition its title with conditions 
differing from

[[Page 625]]

those in the clause at Sec. 401.14(a), unless made by the head of the 
agency, shall be appealable by the contractor to an agency official at a 
level above the person who made the determination. This appeal shall be 
subject to the procedures applicable to appeals under Sec. 401.11 of 
this part.