§ 209. — Licensing federally owned inventions.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC209]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 18--PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec. 209. Licensing federally owned inventions
(a) Authority.--A Federal agency may grant an exclusive or partially
exclusive license on a federally owned invention under section 207(a)(2)
only if--
(1) granting the license is a reasonable and necessary incentive
to--
(A) call forth the investment capital and expenditures
needed to bring the invention to practical application; or
(B) otherwise promote the invention's utilization by the
public;
(2) the Federal agency finds that the public will be served by
the granting of the license, as indicated by the applicant's
intentions, plans, and ability to bring the invention to practical
application or otherwise promote the invention's utilization by the
public, and that 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;
(3) the applicant makes a commitment to achieve practical
application of the invention within a reasonable time, which time
may be extended by the agency upon the applicant's request and the
applicant's demonstration that the refusal of such extension would
be unreasonable;
(4) granting the license will not tend to substantially lessen
competition or create or maintain a violation of the Federal
antitrust laws; and
(5) in the case of an invention covered by a foreign patent
application or patent, the interests of the Federal Government or
United States industry in foreign commerce will be enhanced.
(b) Manufacture in United States.--A Federal agency shall normally
grant a license under section 207(a)(2) to use or sell any federally
owned invention in the United States only to a licensee who agrees that
any products embodying the invention or produced through the use of the
invention will be manufactured substantially in the United States.
(c) Small Business.--First preference for the granting of any
exclusive or partially exclusive licenses under section 207(a)(2) shall
be given to small business firms having equal or greater likelihood as
other applicants to bring the invention to practical application within
a reasonable time.
(d) Terms and Conditions.--Any licenses granted under section
207(a)(2) shall contain such terms and conditions as the granting agency
considers appropriate, and shall include provisions--
(1) retaining a nontransferrable, irrevocable, paid-up license
for any Federal agency to practice the invention or have the
invention practiced throughout the world by or on behalf of the
Government of the United States;
(2) requiring periodic reporting on utilization of the
invention, and utilization efforts, by the licensee, but only to the
extent necessary to enable the Federal agency to determine whether
the terms of the license are being complied with, except that any
such report shall be treated by the Federal agency as commercial and
financial information obtained from a person and privileged and
confidential and not subject to disclosure under section 552 of
title 5; and
(3) empowering the Federal agency to terminate the license in
whole or in part if the agency determines that--
(A) the licensee is not executing its commitment to achieve
practical application of the invention, including commitments
contained in any plan submitted in support of its request for a
license, and the licensee cannot otherwise demonstrate to the
satisfaction of the Federal agency that it has taken, or can be
expected to take within a reasonable time, effective steps to
achieve practical application of the invention;
(B) the licensee is in breach of an agreement described in
subsection (b);
(C) termination is necessary to meet requirements for public
use specified by Federal regulations issued after the date of
the license, and such requirements are not reasonably satisfied
by the licensee; or
(D) the licensee has been found by a court of competent
jurisdiction to have violated the Federal antitrust laws in
connection with its performance under the license agreement.
(e) Public Notice.--No exclusive or partially exclusive license may
be granted under section 207(a)(2) unless public notice of the intention
to grant an exclusive or partially exclusive license on a federally
owned invention has been provided in an appropriate manner at least 15
days before the license is granted, and the Federal agency has
considered all comments received before the end of the comment period in
response to that public notice. This subsection shall not apply to the
licensing of inventions made under a cooperative research and
development agreement entered into under section 12 of the Stevenson-
Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a).
(f) Plan.--No Federal agency shall grant any license under a patent
or patent application on a federally owned invention unless the person
requesting the license has supplied the agency with a plan for
development or marketing of the invention, except that any such plan
shall be treated by the Federal agency as commercial and financial
information obtained from a person and privileged and confidential and
not subject to disclosure under section 552 of title 5.
(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3024; amended
Pub. L. 106-404, Sec. 4(a), Nov. 1, 2000, 114 Stat. 1743; Pub. L. 107-
273, div. C, title III, Sec. 13206(a)(15), Nov. 2, 2002, 116 Stat.
1905.)
References in Text
The Federal antitrust laws, referred to in subsecs. (a)(4) and
(d)(3)(D), are classified generally to chapter 1 (Sec. 1 et seq.) of
Title 15, Commerce and Trade.
Amendments
2002--Subsecs. (d)(2), (f). Pub. L. 107-273 struck out ``of the
United States Code'' after ``title 5''.
2000--Pub. L. 106-404 amended section catchline and text generally,
restructuring and revising provisions setting forth criteria, terms, and
conditions relating to granting of licenses on federally owned
inventions.
Section Referred to in Other Sections
This section is referred to in title 15 sections 3710, 3710a.
