[Code of Federal Regulations]
[Title 15, Volume 1, Parts 0 to 299]
[Revised as of January 1, 2001]
From the U.S. Government Printing Office via GPO Access
[CITE: 15CFR295.8]

[Page 458-459]
 
                  TITLE 15--COMMERCE AND FOREIGN TRADE
 
 CHAPTER II--NATIONAL INSTITUTE OF STANDARDS AND TECHNOLOGY, DEPARTMENT 
                               OF COMMERCE
 
PART 295--ADVANCED TECHNOLOGY PROGRAM--Table of Contents
 
                           Subpart A--General
 
Sec. 295.8  Intellectual property rights; publication of research results.

    (a)(1) Patent rights. Title to inventions arising from assistance 
provided by the Program must vest in a company or companies incorporated 
in the United States. Joint ventures shall provide to NIST a copy of 
their written agreement which defines the disposition of ownership 
rights among the members of the joint venture, and their contractors and 
subcontractors as appropriate, that complies with the first sentence of 
this paragraph. The United States will reserve a nonexclusive, 
nontransferable, irrevocable, paid-up license to practice or have 
practiced for or on behalf of the United States any such intellectual 
property, but shall not, in the exercise of such license, publicly 
disclose proprietary information related to the license. Title to any 
such intellectual property shall not be transferred or passed, except to 
a company incorporated in the United States, until the expiration of the 
first patent obtained in connection with such intellectual property. 
Nothing in this paragraph shall be construed to prohibit the licensing 
to any company of intellectual property rights arising from assistance 
provided under this section.
    (2) Patent procedures. Each award by the Program shall include 
provisions assuring the retention of a governmental use license in each 
disclosed invention, and the government's retention of march-in rights. 
In addition, each award by the Program will contain procedures regarding 
reporting of subject inventions by the funding Recipient to the Program, 
including the

[[Page 459]]

subject inventions of members of the joint venture (if applicable) in 
which the funding Recipient is a participant, contractors and 
subcontractors of the funding Recipient. The funding Recipient shall 
disclose such subject inventions to the Program within two months after 
the inventor discloses it in writing to the Recipient's designated 
representative responsible for patent matters. The disclosure shall 
consist of a detailed, written report which provides the Program with 
the following: the title of the present invention; the names of all 
inventors; the name and address of the assignee (if any); an 
acknowledgment that the United States has rights in the subject 
invention; the filing date of the present invention, or, in the 
alternative, a statement identifying that the Recipient determined that 
filing was not feasible; an abstract of the disclosure; a description or 
summary of the present invention; the background of the present 
invention or the prior art; a description of the preferred embodiments; 
and what matter is claimed. Upon issuance of the patent, the funding 
Recipient or Recipients must notify the Program accordingly, providing 
it with the Serial Number of the patent as issued, the date of issuance, 
a copy of the disclosure as issued, and if appropriate, the name, 
address, and telephone number(s) of an assignee.
    (b) Copyrights: Except as otherwise specifically provided for in an 
Award, funding recipients under the Program may establish claim to 
copyright subsisting in any data first produced in the performance of 
the award. When claim is made to copyright, the funding recipient shall 
affix the applicable copyright notice of 17 U.S.C. 401 or 402 and 
acknowledgment of Government sponsorship to the data when and if the 
data are delivered to the Government, are published, or are deposited 
for registration as a published work in the U.S. Copyright Office. The 
funding recipient shall grant to the Government, and others acting on 
its behalf, a paid up, nonexclusive, irrevocable, worldwide license for 
all such data to reproduce, prepare derivative works, perform publicly 
and display publicly, and for data other than computer software to 
distribute to the public by or on behalf of the Government.
    (c) Publication of research results: The decision on whether or not 
to publish research results will be made by the funding recipient(s). 
Unpublished intellectual property owned and developed by any business or 
joint research and development venture receiving funding or by any 
member of such a joint venture may not be disclosed by any officer or 
employee of the Federal Government except in accordance with a written 
agreement between the owner or developer and the Program. The licenses 
granted to the Government under Sec. 295.8(b) shall not be considered a 
waiver of this requirement.

[55 FR 30145, July 24, 1990. Redesignated and amended at 59 FR 667, 669, 
Jan. 6, 1994; 63 FR 64414, Nov. 20, 1998]