§ 207. — Domestic and foreign protection of 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: 35USC207]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 18--PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec. 207. Domestic and foreign protection of federally owned
inventions
(a) Each Federal agency is authorized to--
(1) apply for, obtain, and maintain patents or other forms of
protection in the United States and in foreign countries on
inventions in which the Federal Government owns a right, title, or
interest;
(2) grant nonexclusive, exclusive, or partially exclusive
licenses under federally owned inventions, royalty-free or for
royalties or other consideration, and on such terms and conditions,
including the grant to the licensee of the right of enforcement
pursuant to the provisions of chapter 29 of this title as determined
appropriate in the public interest;
(3) undertake all other suitable and necessary steps to protect
and administer rights to federally owned inventions on behalf of the
Federal Government either directly or through contract, including
acquiring rights for and administering royalties to the Federal
Government in any invention, but only to the extent the party from
whom the rights are acquired voluntarily enters into the
transaction, to facilitate the licensing of a federally owned
invention; and
(4) transfer custody and administration, in whole or in part, to
another Federal agency, of the right, title, or interest in any
federally owned invention.
(b) For the purpose of assuring the effective management of
Government-owned inventions, the Secretary of Commerce is authorized
to--
(1) assist Federal agency efforts to promote the licensing and
utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and
maintaining inventions in foreign countries, including the payment
of fees and costs connected therewith; and
(3) consult with and advise Federal agencies as to areas of
science and technology research and development with potential for
commercial utilization.
(Added Pub. L. 96-517, Sec. 6(a), Dec. 12, 1980, 94 Stat. 3023; amended
Pub. L. 98-620, title V, Sec. 501(11), Nov. 8, 1984, 98 Stat. 3367; Pub.
L. 106-404, Sec. 6(2), Nov. 1, 2000, 114 Stat. 1745.)
Amendments
2000--Subsec. (a)(2). Pub. L. 106-404, Sec. 6(2)(A), substituted
``inventions'' for ``patent applications, patents, or other forms of
protection obtained''.
Subsec. (a)(3). Pub. L. 106-404, Sec. 6(2)(B), inserted ``,
including acquiring rights for and administering royalties to the
Federal Government in any invention, but only to the extent the party
from whom the rights are acquired voluntarily enters into the
transaction, to facilitate the licensing of a federally owned
invention'' after ``or through contract''.
1984--Pub. L. 98-620 designated existing provisions as subsec. (a)
and added subsec. (b).
Ex. Ord. No. 9424. Establishment of a Register of Government Interests
in Patents
Ex. Ord. No. 9424, Feb. 18, 1944, 9 F.R. 1959, provided:
1. The Secretary of Commerce shall cause to be established in the
United States Patent Office [now Patent and Trademark Office] a separate
register for the recording of all rights and interests of the Government
in or under patents and applications for patents.
2. The several departments and other executive agencies of the
Government, including Government-owned or Government-controlled
corporations, shall forward promptly to the Commissioner of Patents [now
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office] for recording in the
separate register provided for in paragraph 1 hereof all licenses,
assignments, or other interests of the Government in or under patents or
applications for patents, in accordance with such rules and regulations
as may be prescribed pursuant to paragraph 4 hereof; but the lack of
recordation in such register of any right or interest of the Government
in or under any patent or application therefor shall not prejudice in
any way the assertion of such right or interest by the Government.
3. The register shall be open to inspection except as to such
entries or documents which, in the opinion of the department or agency
submitting them for recording, should be maintained in secrecy:
Provided, however, That the right of inspection may be restricted to
authorized representatives of the Government pending the final report to
the President by the National Patent Planning Commission under Executive
Order No. 8977 of December 12, 1941, and action thereon by the
President.
4. The Commissioner of Patents [now Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office], with the approval of the Secretary of Commerce, shall
prescribe such rules and regulations as he may deem necessary to
effectuate the purposes of this order.
Ex. Ord. No. 9865. Patent Protection Abroad of Inventions Resulting From
Research Financed by the Government
Ex. Ord. No. 9865, June 14, 1947, 12 F.R. 3907, as amended by Ex.
Ord. No. 10096, Jan. 23, 1950, 15 F.R. 389, provided:
1. All Government departments and agencies shall, whenever
practicable, acquire the right to file foreign patent applications on
inventions resulting from research conducted or financed by the
Government.
2. All Government departments and agencies which have or may
hereafter acquire title to inventions or the right to file patent
applications abroad thereon, shall fully and continuously inform the
Chairman of Government Patents Board [now Secretary of Commerce. See Ex.
Ord. No. 10930 set out as a note below] concerning such inventions,
except as provided in section 6 hereof, and shall make recommendations
to the Chairman of Government Patents Board as to which of such
inventions should receive patent protection by the United States abroad
and the foreign jurisdictions in which such patent protection should be
sought. The recommendations of such departments and agencies shall
indicate the immediate or future industrial, commercial or other value
of the invention concerned, including its value to public health.
3. The Chairman of Government Patents Board shall determine whether,
and in what foreign jurisdictions, the United States should seek patents
for such inventions, and, to the extent of appropriations available
therefor, shall procure patent protection for such inventions, taking
all action, consistent with existing law, necessary to acquire and
maintain patent rights abroad. Such determinations of the said
Department shall be made after full consultation with United States
industry and commerce, with the Department of State, and with other
Government agencies familiar with the technical, scientific, industrial,
commercial or other economic or social factors affecting the invention
involved, and after consideration of the availability of valid patent
protection in the countries determined to be immediate or potential
markets for, or producers of, products, processes, or services covered
by or relating to the invention.
4. The Chairman of Government Patents Board shall administer foreign
patents acquired by the United States under the terms of this order and
shall issue licenses thereunder in accordance with law under such rules
and regulations as he shall prescribe. Nationals of the United States
shall be granted licenses on a nonexclusive royalty free basis except in
such cases as he shall determine and proclaim it to be inconsistent with
the public interest to issue such licenses on a nonexclusive royalty
free basis.
5. The Department of State, in consultation with the Chairman of
Government Patents Board, shall negotiate arrangements among governments
under which each government and its nationals shall have access to the
foreign patents of the other participating governments. Patents relating
to matters of public health may be licensed by the Chairman of
Government Patents Board, with the approval of the Secretary of State,
to any country or its nationals upon such terms and conditions as are in
accordance with law and as the Chairman of Government Patents Board
determines to be appropriate, regardless of whether such country is a
party to the arrangements provided for in this section.
6. There shall be exempted from the provisions of this order (a) all
inventions within the jurisdiction of the Atomic Energy Commission
except in such cases as the said Commission specifically authorizes the
inclusion of an invention under the terms of this order; and (b) all
other inventions officially classified as secret or confidential for
reasons of the national security. Nothing in this order shall supersede
the declassification policies and procedures established by Executive
Orders Nos. 9568 of June 8, 1945, 9604 of August 25, 1945, and 9809 of
December 12, 1946.
[Atomic Energy Commission abolished and all functions transferred to
Administrator of Energy Research and Development Administration (unless
otherwise specifically provided) by section 5814 of Title 42, The Public
Health and Welfare. Energy Research and Development Administration
terminated and functions vested by law in Administrator thereof
transferred to Secretary of Energy (unless otherwise specifically
provided) by sections 7151(a) and 7293 of Title 42.]
Ex. Ord. No. 10096. Uniform Government Patent Policy for Inventions by
Government Employees
Ex. Ord. No. 10096, Jan. 23, 1950, 15 F.R. 389, as amended by Ex.
Ord. No. 10695, Jan. 16, 1957, 22 F.R. 365; Ex. Ord. No. 10930, Mar. 24,
1961, 26 F.R. 2583, provided:
NOW, THEREFORE, by virtue of the authority vested in me by the
Constitution and statutes, and as President of the United States and
Commander in Chief of the armed forces of the United States, in the
interest of the establishment and operation of a uniform patent policy
for the Government with respect to inventions made by Government
employees, it is hereby ordered as follows:
1. The following basic policy is established for all Government
agencies with respect to inventions hereafter made by any Government
employee:
(a) The Government shall obtain the entire right, title, and
interest in and to all inventions made by any Government employee (1)
during working hours, or (2) with a contribution by the Government of
facilities, equipment, materials, funds, or information, or of time or
services of other Government employees on official duty, or (3) which
bear a direct relation to or are made in consequence of the official
duties of the inventor.
(b) In any case where the contribution of the Government, as
measured by any one or more of the criteria set forth in paragraph (a)
last above, to the invention, is insufficient equitably to justify a
requirement of assignment to the Government of the entire right, title
and interest to such invention, or in any case where the Government has
insufficient interest in an invention to obtain entire right, title and
interest therein (although the Government could obtain some under
paragraph (a), above), the Government agency concerned, subject to the
approval of the Chairman of the Government Patents Board [now Secretary
of Commerce. See Ex. Ord. No. 10930 set out as a note below] (provided
for in paragraph 3 of this order and hereinafter referred to as the
Chairman), shall leave title to such invention in the employee, subject,
however, to the reservation to the Government of a non-exclusive,
irrevocable, royalty-free license in the invention with power to grant
licenses for all governmental purposes, such reservation, in the terms
thereof, to appear, where practicable, in any patent, domestic or
foreign, which may issue on such invention.
(c) In applying the provisions of paragraphs (a) and (b), above, to
the facts and circumstances relating to the making of any particular
invention, it shall be presumed that an invention made by an employee
who is employed or assigned (i) to invent or improve or perfect any art,
machine, manufacture, or composition of matter, (ii) to conduct or
perform research, development work, or both, (iii) to supervise, direct,
coordinate, or review Government financed or conducted research,
development work, or both, or (iv) to act in a liaison capacity among
governmental or nongovernmental agencies or individuals engaged in such
work, or made by an employee included within any other category of
employees specified by regulations issued pursuant to section 4(b)
hereof, falls within the provisions of paragraph (a), above, and it
shall be presumed that any invention made by any other employee falls
within the provisions of paragraph (b), above. Either presumption may be
rebutted by the facts or circumstances attendant upon the conditions
under which any particular invention is made and, notwithstanding the
foregoing, shall not preclude a determination that the invention falls
within the provisions of paragraph (d) next below.
(d) In any case wherein the Government neither (1) pursuant to the
provisions of paragraph (a) above, obtains entire right, title and
interest in and to an invention nor (2) pursuant to the provisions of
paragraph (b) above, reserves a non-exclusive, irrevocable, royalty-free
license in the invention with power to grant licenses for all
governmental purposes, the Government shall leave the entire right,
title and interest in and to the invention in the Government employee,
subject to law.
(e) Actions taken, and rights acquired, under the foregoing
provisions of this section, shall be reported to the Chairman in
accordance with procedures established by him.
2. Subject to considerations of national security, or public health,
safety, or welfare, the following basic policy is established for the
collection, and dissemination to the public, of information concerning
inventions resulting from Government research and development
activities:
(a) When an invention is made under circumstances defined in
paragraph 1(a) of this order giving the United States the right to title
thereto, the Government agency concerned shall either prepare and file
an application for patent therefor in the United States Patent Office
[now Patent and Trademark Office] or make a full disclosure of the
invention promptly to the Chairman, who may, if he determines the
Government interest so requires, cause application for patent to be
filed or cause the invention to be fully disclosed by publication
thereof: Provided, however, That, consistent with present practice of
the Department of Agriculture, no application for patent shall, without
the approval of the Secretary of Agriculture, be filed in respect of any
variety of plant invented by any employee of that Department.
(b) [Revoked. Ex. Ord. No. 10695, Jan. 16, 1957, 22 F.R. 365]
3. (a) [Revoked. Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583]
(b) The Government Patents Board shall advise and confer with the
Chairman concerning the operation of those aspects of the Government's
patent policy which are affected by the provisions of this order or of
Executive Order No. 9865 [set out above], and suggest modifications or
improvements where necessary.
(c) [Revoked. Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583]
(d) The Chairman shall establish such committees and other working
groups as may be required to advise or assist him in the performance of
any of his functions.
(e) The Chairman of the Government Patents Board and the Chairman of
the Interdepartmental Committee on Scientific Research and Development
(provided for by Executive Order No. 9912 of December 24, 1947), shall
establish and maintain such mutual consultation as will effect the
proper coordination of affairs of common concern.
4. With a view to obtaining uniform application of the policies set
out in this order and uniform operations thereunder, the Chairman is
authorized and directed:
(a) To consult and advise with Government agencies concerning the
application and operation of the policies outlined herein;
(b) After consultation with the Government Patents Board, to
formulate and submit to the President for approval such proposed rules
and regulations as may be necessary or desirable to implement and
effectuate the aforesaid policies, together with the recommendations of
the Government Patents Board thereon;
(c) To submit annually a report to the President concerning the
operation of such policies, and from time to time such recommendations
for modification thereof as may be deemed desirable;
(d) To determine with finality any controversies or disputes between
any Government agency and its employees, to the extent submitted by any
party to the dispute, concerning the ownership of inventions made by
such employees or rights therein; and
(e) To perform such other or further functions or duties as may from
time to time be prescribed by the President or by statute.
5. The functions and duties of the Secretary of Commerce and the
Department of Commerce under the provisions of Executive Order No. 9865
of June 14, 1947 [set out above] are hereby transferred to the Chairman
and the whole or any part of such functions and duties may be delegated
by him to any Government agency or officer: Provided, That said
Executive Order No. 9865 shall not be deemed to be amended or affected
by any provision of this Executive order other than this paragraph 5.
6. Each Government agency shall take all steps appropriate to
effectuate this order, including the promulgation of necessary
regulations which shall not be inconsistent with this order or with
regulations issued pursuant to paragraph 4(b) hereof.
7. As used in this Executive order, the next stated terms, in
singular and plural, are defined as follows for the purposes hereof:
(a) ``Government agency'' includes any executive department and any
independent commission, board, office, agency, authority, or other
establishment of the Executive Branch of the Government of the United
States (including any such independent regulatory commission or board,
any such wholly-owned corporation, and the Smithsonian Institution), but
excludes the Atomic Energy Commission.
(b) ``Government employee'' includes any officer or employee,
civilian or military, of any Government agency, except such part-time
consultants or employees as may be excluded by regulations promulgated
pursuant to paragraph 4(b) hereof.
(c) ``Invention'' includes any art, machine, manufacture, design, or
composition of matter, or any new and useful improvement thereof, or any
variety of plant, which is or may be patentable under the patent laws of
the United States.
Ex. Ord. No. 10695. Transfer of Records to Department of Commerce
Section 2 of Ex. Ord. 10695, Jan. 16, 1957, 22 F.R. 365, provided
that: ``The Chairman of the Government Patents Board is hereby
authorized to transfer to the Department of Commerce any or all of the
records heretofore prepared by the Board pursuant to paragraph 2(b) of
Executive Order No. 10096 [set out above].''
Ex. Ord. No. 10930. Abolition of Government Patents Board
Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583, provided:
By virtue of the authority vested in me as President of the United
States, it is ordered as follows:
Section 1. The Government Patents Board, established by section 3(a)
of Executive Order No. 10096 of January 23, 1950 [set out above], and
all positions established thereunder or pursuant thereto are hereby
abolished.
Sec. 2. All functions of the Government Patents Board and of the
Chairman thereof under the said Executive Order No. 10096, except the
functions of conference and consultation between the Board and the
Chairman, are hereby transferred to the Secretary of Commerce, who may
provide for the performance of such transferred functions by such
officer, employee, or agency of the Department of Commerce as he may
designate.
Sec. 3. The Secretary of Commerce shall make such provision as may
be necessary and consonant with law for the disposition or transfer of
property, personnel, records, and funds of the Government Patents Board.
Sec. 4. Except to the extent that they may be inconsistent with this
order, all determinations, regulations, rules, rulings, orders, and
other actions made or issued by the Government Patents Board, or by any
Government agency with respect to any function transferred by this
order, shall continue in full force and effect until amended, modified,
or revoked by appropriate authority.
Sec. 5. Subsections (a) and (c) of section 3 of Executive Order No.
10096 are hereby revoked, and all other provisions of that order are
hereby amended to the extent that they are inconsistent with the
provisions of this order.
John F. Kennedy.
Section Referred to in Other Sections
This section is referred to in section 209 of this title; title 15
sections 3710, 3710a, 3710c.